Costly showdown of a case with a history

Case No. O2012_013 ¦ Order of 29 May 2013 ¦ “Abschreibungsverfügung nach Klagerückzug”

This case pertains to a composition for the treatment of fungal nail infection. The FPC issued a dismissal order after the plaintiff had withdrawn the suit. The allegedly infringing product was a precision applicator available on the market under the brand Excilor®; cf. website screenshot below for illustrative purposes.

http://www.excilor.com/CorporateEN/ (Screenshot 15 June 2013)
http://www.excilor.com/CorporateEN/
(Screenshot 15 June 2013)

The competing product Nailner® is apparently authorized by the plaintiff. The timeline of the case is as follows:

  • On 11 February 2011, the plaintiff had filed the suit (still with the Commercial Court of the canton of Zurich; case HG110024-O). The three defendants provided their answers on 10 May 2011. Reply and rejoinder were filed on 30 August 2011 and 07 November 2011, respectively.
  • On 11 January 2012, the case was transferred to the FPC. A preparatory hearing was conducted on 07 December 2012, and  the parties were provided with the assessment of the reporting judge Dr. Tobias BREMI on 10 December 2012. The parties provided their written comments in due time.
  • Next, the parties were summoned for the main hearing on 25 April 2013.

Nothing out of the ordinary this far. But on 24 April 2013, i.e. only one day prior to the main hearing, the plaintiff had withdrawn the suit. Consequently, the hearing was cancelled (cf. the list of public hearings on this Blog here). Thus, we will not see any decision on the merits anymore. But what about the costs? According to Art. 106 CPC, the costs are charged to the unsuccessful party. If an action is withdrawn, the plaintiff is deemed to be the unsuccessful party. However, the court may diverge from the general principles of allocation and allocate the costs at its own discretion if a party was caused to litigate in good faith (Art. 107 lit. b CPC); or if there are other extraordinary circumstances that would result in an allocation according to the outcome of the case being inequitable (Art. 107 lit. f CPC). Based on these provisions, the plaintiff requested an allocation of costs with a share of 2/3 (plaintiff) to 1/3 (defendants). In brief, the plaintiff argued that prior to the filing of the lawsuit he had not been aware of any issues with respect to the following:

  1. (lack of) right of action;
  2. (lack of) validity of the patent in suit; and
  3. (lack of) infringement of the patent in suit.

The FPC shot this down harshly:

This allegation is against plaintiff’s better knowledge. The defendants had already asserted these issues in prior summary proceedings at the Commercial Court Zurich (HE100006; decided on 11 February 2011). The plaintiff was thus well aware of these issues at that time when the action was brought.

This seems worth being looked at in more detail. The decision of the Commercial Court Zurich in prior summary proceedings was appealed to the Supreme Court; the decision in appeal proceedings is published as 4A_142/2011. Even though the publication number of the patent in suit is not identified in the former decision of the Supreme Court, the wording of the independent claim 1 is literally reproduced. It reads as follows:

Topical application products free of water and film- and lacquer-forming additives for the treatment of onychomycoses and nail care containing
a) one or more active substances
b) one or more C1-C4-alkyl esters of lactic acid, malic acid, tartaric acid or citric acid as carriers and
c) optionally physiologically compatible adjuvants.

A simple Google search of the claim wording reveals the patent in suit: EP 1 143 950 B1. The complete file wrapper is available directly at the EPO. Now, with this information at hand, let’s have a closer look at the three issues (right of action; validity; infringement):

(Lack of) Right of Action

Lack of right of action was not an issue in the decision 4A_142/2011 of the Supreme Court. Apparently, the Commercial Court ZH rejected the request for preliminary injunctive relief already for reasons of lack of prima facie evidence of infringement (see below). However, the issue of lack of right of action may well have been raised by the defendants in summary proceedings as a plea in objection.

BioEqual AG is indicated as patentee in both the European Patent Register and Swissreg. However, from the file wrapper one may well guess that factual ownership might be complicated. BioEqual AG was entered into the European Patent Register as owner with effect as of 22 July 2004; cf. EPO Form 2544 of 12 August 2004. This transfer of ownership was registered on the basis of a declaration of transfer of ownership from IPR-Institute for Pharmaceutical Research AG (in liquidation) to BioEqual AG of 03 June 2004. However, yet another declaration of transfer of ownership is on file which is dated earlier. According to this declaration, IPR-Institute for Pharmaceutical Research AG had already transferred ownership to Dr. Tobias A. THOMMEN by contract of 15 May 2002. Factual ownership of BioEqual AG might thus be doubtful.

(Lack of) Validity of the Patent in Suit

Apparently, a negative limitation (disclaimer) to the wording of claim 1 of the patent in suit was introduced during prosecution, i.e. the feature

free of […] film- and lacquer-forming additives

This amendment was carried out already in the proceedings of international preliminary examination; cf letter of 29 November 2000. Allowability of this initially undisclosed disclaimer might be doubtful in view of the decision G 1/03 of the Enlarged Board of Appeal of the EPO.

(Lack of) Infringement

Apparently, the water content of the allegedly infringing product was already the technical key aspect of the earlier decision 4A_142/2011 of the Supreme Court. Literally, claim 1 of the patent in suit requires the absence of water. Already at that time, it was beyond dispute that the allegedly infringing product contained 2% of water. From the requests of the plaintiff, it becomes clear that the allegedly infringing products still contained water (“not more than 4%”; “with a water content of 2% or 4.7 to 7%, respectively”). These amounts of water might have established the lack of infringement. Moreover, the allegedly infringing composition seemingly comprises a “film-forming agent” (see below) — contrary to the wording of the disclaimer introduced into the independent claim 1 of the patent in suit, as outlined above.

http://www.excilor.com/CorporateEN/styletprecision.html (Partial screenshot 15 June 2013)
http://www.excilor.com/CorporateEN/styletprecision.html
(Partial screenshot 15 June 2013)
The cheque, please …

In view of the foregoing, the FPC did not see any reason to deviate from the general principle of Art. 106 CPC and charged the costs to the plaintiff.

The plaintiff himself had estimated the value in dispute to about CHF 1’700’000,–. Based thereon and in accordance with Art. 1 CostR-PatC, the court fee was fixed to CHF 70’000,–. Court fees of the Commercial Court ZH were fixed to CHF 2’000,–.

All three defendants defended their own case; their costs were compensated independently from each other. In accordance with Art. 3 lit. b in connection with Art. 4 and 5 CostR-PatC, a compensation of about CHF 80’000,– was held reasonable by the FPC. De facto, the costs of defendants (1.) and (3.) were in this range and were fully awarded. Costs of defandant (2.) were much higher, but only CHF 85’000,– were awarded.

Costs for patent attorneys in an advisory capacity were claimed as necessary expenses by defendants (2.) and (3.), according to Art. 3 lit a in connection with Art. 9(2) CostR-PatC. These costs were held reasonable by the FPC and were thus awarded in full.

Including some further, yet minor expenses — this is the bill:

  
  70'000,-- CHF   Court fees of the FPC

   2'000,-- CHF   Court fees of the Commercial Court ZH (HG110024-O)

                  -----------------------------------------------------------

                  Defendant (1.), Doetsch Grether AG:

  81'513,40 CHF   Compensation for legal representation 
                  (incl. fees for 228,95h à CHF 320,--; awarded as requested)

                  -----------------------------------------------------------

                  Defendant (2.), Oystershell NV:

  85'000,-- CHF   Compensation for legal representation
                  (requested: fees for 290h à CHF 700,--; sharply reduced)

  59'830,-- CHF   Compensation for patent attorney
                  (Schaad, Balass, Menzl & Partner AG; awarded as requested)

     418,-- CHF   Expenses (awarded as requested)

   2'095,80 EUR   Expenses (awarded as requested)

                  -----------------------------------------------------------

                  Defendant (3.), JeCare SA:

  78'795,-- CHF   Compensation for legal representation 
                  (incl. fees for 170h à CHF 400,--; awarded as requested)

   4'271,-- CHF   Compensation for patent attorney
                  (E. Blum & Co. AG; awarded as requested)

     940,30 CHF   Expenses (awarded as requested)

   1'653,80 EUR   Expenses (awarded as requested)

 ----------------------------------------------------------------------------

 382'767,70 CHF
+  4'499,52 EUR
 ==============

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_013 ¦ Order of 29 May 2013 ¦ “Abschreibungsverfügung nach Klagerückzug”

BioEqual AG
./.
(1.) Doetsch Grether AG, CH-4002 Basel
(2.) Oystershell NV, BE-9031 Drongen
(3.) JeCare SA, BE-1420 Braine-l’Alleud

Subject(s):

  • Patent Infringement

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Full text of the decision right here:

Download (PDF, 98KB)

Request for recusal of a reporting judge held unfounded (O2012_022 cont’d)

Case No. O2012_022 ¦ Decision of 16 January 2013 ¦ “Auszug aus dem Beschluss Abweisung Ausstandsbegehren”

HEADNOTE

Art. 47 CPC: A request for recusal cannot be based on factual circumstances that are not yet reality and for which it is not yet clear whether they will ever come into existence.
(Non-official translation from German into English language)

Two orders in procedural matters have already been published by the FPC in this case; see this blog here and here. Moreover, a hearing is scheduled for 09 July 2013. It was only known by now that the plaintiff sought for a declaratory judgement of nullity in the field of pharmacy. From the present decision, it is at least clear that this case pertains to the field of androgenic alopecia (a specific kind of hair loss); cf. reasons 3 of the decision. No further details on the merits of the case are publicly available by now.

The reporting judge had provided his assessment of the case on September 16, 2012. With reply of October 26, 2012, the defendant put essentially the following requests on file:

  1. The assessement of the reporting judge shall not be relied on.
  2. A court expert with medical or pharmaceutical background, specifically in the field of androgenic alopecia, shall be appointed.
  3. The parties shall be given the opportunity to comment on the questionnaire.
  4. The reporting judge shall recuse or has to be excluded.

The present excerpt of the decision only deals with the fourth request, i.e. recusal of the reporting judge. It is the first decision being published by the FPC concerning a request for recusal of a judge (based on Art. 47 CPC).

Defendant argued that the reporting judge cannot be expected to be unbiased anymore when it comes to the assessment of the opinion provided by the court expert (since the reporting judge had already provided a written assessment himself); this would contravene the guidelines established by the Supreme Court e.g. in the case no. 4A_3/2012 (r. 2.3).

The Administrative Board of Judges of the FPC is competent to decide on such requests (Art. 11 PR-PatC). The ratio of the decision is clear-cut: It was not established yet whether a court expert will be appointed at all. Thus, the fourth request was held unfounded. Evidently, the fourth request was not construed under the condition of at least the foregoing requests 1. and 2. being granted.

As a sidenote, the Administrative Board of Judges briefly commented on the question whether the defendant should have acted earlier. Apparently, the defendant doubts that the reporting judge is technically competent enough to properly assess the specific questions at stake in the field of androgenic alopecia. However, these doubts were only brought forward when the assessment of the reporting judge was already established, but not when the reporting judge had been appointed. It thus remains to be seen whether the defendant will still be heared with his other request pertaining to the appointment of a court expert. This, however, is a question on the merits of the case which has not to be decided by the Administrative Board of Judges.

This decision of the Administrative Board of Judges is already res judicata.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_022 ¦ Decision of 16 January 2013 ¦ “Auszug aus dem Beschluss Abweisung Ausstandsbegehren”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Administrative Board of Judges of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Second Ordinary Judge)
  • Frank SCHNYDER (Vice President)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Full text of the decision right here:

Download (PDF, 13KB)

(S)-Omeprazole magnesium trihydrate: Lack of inventive step / preliminary injunction denied

Case No. S2012_011 ¦ Decision of 21 November 2012 ¦ “Abweisung des Gesuchs um Erlass vorsorglicher Massnahmen wegen fehlender erfinderischer Tätigkeit”

First patent applications on the blockbuster drug Omeprazole date back to 1978; cf. the review of Correa, Trends in Drug Patenting – Case Studies, 2001, WHO, Medicines Documentation. Upon synthesis, the proton pump inhibitor Omeprazole is a racemic mixture of two mirror-imaged molecules, the so-called R- and S-enantiomers. Both enantiomers are converted to the same active molecule in the body, but since some people metabolise (R)-Omeprazole only slowly, medication with pure (S)-Omeprazole purportedly results in higher dose efficiency and less interindividual variation. The present case pertains to a specific pharmaceutical form of Omeprazole, i.e. (S)-Omeprazole magnesium trihydrate. The structural formula of this compound is as follows:

cas-217087-09-7

The plaintiff requested (i) preliminary injunctive relief on the basis of a European patent; and (ii) that the defendant be obliged to recall already delivered items. Moreover, the plaintiff requested the grant of both interim measures without prior hearing of the defendant (according to Art. 265 CPC). The FPC did not grant interim measures without hearing the defendant. Unfortunately, the decision is silent about the reasoning (emphasis added):

[…] wurde der Beklagten in sinngemässer Abweisung des Gesuchs um Erlass superprovisorischer Massnahmen Frist angesetzt, um das Massnahmegesuch zu beantworten, […].

With respect to the allegedly infringing product, the plaintiff presented an analysis report showing that it contained not only the dihydrate form, but rather also a high amount of the trihydrate form — contrary to the published admission to the market; cf. Swissmedic Journal 12/2011. Note that due to the entry into the market of the allegedly infringing product in suit, the plaintiff’s own product came under pricing pressure: The Federal Office of Public Health informed the plaintiff that it intends to increase the deductible from 10% to 20% if the sales price of the plaintiff’s product was not lowered voluntarily.

As to the merits of the patent in suit, the plaintiff essentially argued as follows: It had surprisingly been found that the magnesium salt of (S)-Omeprazole also exists in the form of a trihydrate (i.e. not only as a dihydrate or in amorphous form). This trihydrate form is more stable and thus easier to store and handle. The defendant presented several lines of defence:

  1. Non-infringement
    It was contested that the allegedly infringing product contained the trihydrate form.
  2. Novelty
    It was argued that the patent in suit on the one hand claims (S)-Omeprazole magnesium trihydrate, but on the other hand admits in the introductory section that this compound is prior art. The defendant argued, that the claimed subject-matter was thus not novel.
  3. Inventive step
    As a last line of defence, it was argued that the claimed subject-matter lacked an inventive step over
    (i) WO 94/27988 A1; or
    (ii) WO 96/01623 A1 in view of Byrn et al., Pharmaceutical Research, 1995, Vol. 12, No. 7, 945-954.1

The decision does not expand further on the question of whether or not the allegedly infringing product in fact contained the trihydrate form (cf. 1., above). With respect to the questions pertaining to validity of the patent in suit (cf. 2. and 3., above), the reporting judge provided an opinion as follows:

Novelty (opinion of the reporting judge)

The mere fact that the trihydrate form is described as prior art in the patent in suit does not take away novelty of the claimed subject-matter. This statement in the patent in suit could also have occured erroneously, and there was no other prima facie evidence on file that the trihydrate form was not novel. Novelty of claim 1 of the patent in suit was thus acknowledged by the reporting judge.

Inventive step (opinion of the reporting judge)

In accordance with the so-called problem-and-solution approach, the closest prior art was identified in a first step. While both WO 94/27988 A1 and WO 96/01623 A1 disclose magnesium salts of (S)-Omeprazole and their medical use, only the latter explicitly discloses crystalline forms of magnesium salts of (S)-Omeprazole. The reporting judge thus identified WO 96/01623 A1 as the closest prior art. The distinguishing feature (the magnesium salt of (S)-Omeprazole being in the form of a trihydrate) led the reporting judge to formulate the objective technical problem to be solved as to provide new and advantageous forms of the magnesium salt of (S)-Omeprazole:

Bereitstellung neuer vorteilhafter Formen von (S)-Omeprazol Magnesiumsalz.

The reporting judge then assessed the publication of Byrn et al. as general knowledge of the person of routine skill in the art. As a matter of routine, such person would thus have analyzed the crystalline forms of the magnesium salt of (S)-Omeprazole in the expectation to find solid forms with improved properties. Moreover, the reporting judge referred to the reasoning of an EPO Board of Appeal in decision T 0777/08: It could not be considered inventive to provide a hydrate form of an already known pharmaceutical compound, unless there is a technical prejudice to be overcome. Such a prejudice had not been evidenced by the plaintiff. The reporting judge thus concluded that the claimed subject-matter does not involve an inventive step.

Comments of the plaintiff on the opinion of the reporting judge ¦ Decision of the FPC

The plaintiff objected that both the formulation of the objective technical problem and the choice of WO 96/01623 A1 as closest prior art is based on an undue ex-post-facto analysis. The magnesium salt should not be included in the objective technical problem to be solved. Taken as a whole, WO 94/27988 A1 would be more appropriate as closest prior art, the plaintiff argued. The FPC held that the prominent example of the crystalline magnesium salt of (S)-Omeprazole in WO 96/01623 A1 indeed can be considered as the closest prior art. Even if one were to consider WO 94/27988 A1 as closest prior art, this would not have changed the game: Since claim 1 of the patent in suit does not claim crystallinity, it is of no relevance whether there is an explicit teaching in WO 94/27988 A1 of the magnesium salt of (S)-Omeprazole being crystalline.

(Author’s note: This is not fully self-explanatory just from the decision as such. It would be interesting to understand the underlying claim construction of the FPC in view of the description of the patent in suit. The decision suggests that a trihydrate is claimed. It is the author’s understanding that the term hydrate describes a compound with associated water of crystallization, and thus crystallinity might well be implied.)

With reference to Byrn et al., the plaintiff outlined that it was explicitly not a routine measure to further investigate hydrate forms of pharmaceuticals. This would only be done as a routine measure when no well described solid forms of the respective compound were available. However, such well described forms were undoubtedly available in the present case. Moreover, Byrn et al. would not provide for any reasonable expectation of improved properties, but rather only states that the properties of different solid forms are not readily predictable. The FPC again referred to Byrn et al. (cf. p. 946, left col., first compl. para.): Even when a well defined solid form of a drug is already known, it is scientifically advisable to do further testing.

[…] from a regulatory standpoint, if a company can establish a specification/test to ensure production of a well defined solid form of the drug substance, then it is not necessary to do all of the physical/chemical testing outlined in the decision trees. From a scientific standpoint, however, such an approach is risky since new forms may appear unpredictably during various stages of the development process.

The FPC thus held that the person of routine skill in the art would have searched for hydrates of the magnesium salt of (S)-Omeprazole and would have arrived at the trihydrate without inventive merit.

Finally, the plaintiff argued that the trihydrate form was not an arbitrary choice but rather provides for the unexpected advantageous properties set forth above. The FPC held that this is not sufficient to acknowledge an inventive step. The decisive criterion is that the person of routine skill in the art was incited by Byrn et al. to search for hydrates of the magnesium salt of (S)-Omeprazole and would have arrived at the trihydrate without inventive merit — irrespective of additional advantageous properties to be expected or not.

(Author’s note: This reasoning of the FPC is quite similar to the case law of the EPO Boards of Appeal on bonus effects. However, this case law frequently refers to “one-way-street” situations; cf. e.g. T 0192/82, headnote II:

[…] The lack of alternatives in this respect might therefore create a “one-way-street” situation leading to predictable advantages which remained obvious in spite of the existence of some unexpected “bonus” effect.

Without in-depth knowledge of the details of the case, it is hard to judge whether the general teaching of Byrn et al. might indeed have created a clear-cut “one-way-street” situation for the person of routine skill in the art to arrive at the trihydrate of the magnesium salt of (S)-Omeprazole or not.

Noteworthy, the FPC did not further assess the advantageous properties of the trihydrate form — contrary to the EPO Board of Appeal decision T 0777/08 referred to by the FPC. According to this decision (p. 11, first para., last sentence),

[i]t must therefore be decided whether there was an incentive for the skilled person to arrive at the present solution in the expectation of achieving these improved characteristics […]

and there was a specific pointer from yet another document that these improved characteristics could be obtained by means of the alleged invention.)

In sum, the FPC dismissed the request for interim measures for reasons of lack of inventive step of the allegedly infringed patent.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2012_011 ¦ Decision of 21 November 2012 ¦ “Abweisung des Gesuchs um Erlass vorsorglicher Massnahmen wegen fehlender erfinderischer Tätigkeit”

(not identified) ./. (not identified)

Subject(s):

  • Patent infringement
  • Preliminary injunction

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Prisca von BALLMOOS (Reporting Judge)
  • Emmanuel JELSCH (Judge)
  • Lic. iur. Susanne ANDERHALDEN (Court Secretary)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

1 Note that this document is hyperlinked here to the freely accessible online file inspection service of the European Patent Office (EPO) in opposition/appeal proceedings T 0777/08. This decision and the publication of Byrn et al. were referred to in the present decision.

Expert opinions not being sealed / no further explanation of prior order of the FPC (O2012_022 cont’d)

Case No. O2012_022 ¦ Order of 31 July 2012 ¦ “Ablehnung Erläuterung”

This order of the FPC relates to a prior order of 03 May 2012, commented in a separate post. The earlier order of the FPC dealt with the presentation of new evidence / nova. In brief, the FPC did not admit the expert opinions from parallel proceedings in other countries into the proceedings – except as evidence for the conclusions drawn in these expert opinions which were explicitly referred to in the writ of the defendant.

Subsequently, the plaintiff requested that the expert opinions were to be sealed until a decision of the whole case has become final, in order to prevent that a member of the board of the FPC or a court expert consults these expert opinions any further. The plaintiff argued that the human nature could otherwise prompt a non-permanent judge or a court expert to revert to these expert opinions – contrary to the gist of the prior order of 03 May 2012.

In reply, the defendant requested an explanation by the FPC as to what extent the expert opinions may still qualify as (i) evidence for statements made in earlier writs of the defendant (except for the writ accompanying the expert opinions); and (ii) counter-evidence for statements made in earlier writs of the plaintiff. With respect to the statements made in the writ accompanying the expert opinions, the defendant argued that the FPC must have access to the expert opinions as such, in order to verify the respective citations. However, the parties evidently had a different understanding of whether or not the expert opinions may still qualify as (counter-) evidence for statements made in other writs of the defendant and the plaintiff.

The FPC now reiterated that the prior order of 03 May 2012 only pertained to the writ accompanying the expert opinions, without any further necessity of explanation. Only if facts (not points of law such as e.g. novelty, inventive step or undue extension of subject matter) would remain under dispute which are legally relevant, a procedure of taking evidence will be conducted in accordance with Art. 150 ff. CPC. If the defendant then would rely on the expert opinions, the FPC would have to judge admissibility of this evidence.

The FPC further held that there is no need to seal the expert opinions. These opinions will not be further consulted anyhow, for the time being: Since it is beyond dispute between the parties that the conclusions of the two expert opinions were correctly cited by the defendant in the writ, there is no need for the FPC to revert to the evidence as such.

Kurz, das Fachrichtervotum wird erstattet werden, ohne dass Einsicht in die beiden Gutachten genommen wird, weil sie weder – über die Noveneingabe hinaus – als Parteivorbringen noch, im gegenwärtigen Stadium, als Beweismittel zu berücksichtigen sind.

Consequently, the requests of both the plaintiff and the defendant were dismissed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_022 ¦ Order of 31 July 2012 ¦ “Ablehnung Erläuterung”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Allocation of costs and compensation when a case has become groundless

Case No. O2012_025 ¦ Decision of 16 July 2012 ¦ “Gegenstandslosigkeit; Kosten- und Entschädigungsfolgen”

This case pertains to EP 1 175 904 B1 of Merck & Co., Inc., claiming the

[u]se of alendronate in the manufacture of a medicament for treating osteoporosis in a human in need of such treatment, where said medicament is orally administered to said human as a unit dosage comprising about 70 mg of the alendronate compound, on an alendronic acid active weight basis, according to a continuous schedule having a once-weekly dosing interval.

Further details about this patent can be derived from the European Patent Register and the complete file wrapper at the European Patent Office (EPO).

The Swiss part of this European patent was challenged in two separate nullity suits before the Commercial Court of the Canton of Zurich (HG080018 and HG080082). The present case, which is based on the later one of these nullity suits, was stayed by the Commercial Court until the earlier one has been decided and become final. It was tranferred to the FPC in January 2012.

A first aspect of this case pertains to restitution under Art. 148 CPC, granted in accordance with widespread cantonal practice in similar circumstances: The FPC (erroneously) decided to not consider the case since the plaintiff had failed to submit the advance payment of litigation costs. However, it turned out that the plaintiff in fact had submitted the advance payment in time; the defendant agreed to the restitution. Accordingly, the initial decision of the FPC to not consider the case was set aside.

Opposition and appeal proceedings were pending with the EPO, too. A decision of an EPO Board of Appeal dismissed the appeal of the patentee / defendant and confirmed the revocation of the patent in its entirety. This decision was issued before the defendant had to submit the counterstatement with the FPC. The present case had thus become groundless (BGE 109 II 165) and was to be dismissed; Art. 242 CPC. Litigation costs were to be allocated at the discretion of the FPC; Art. 107 para. 1 lit. e CPC. The FPC held that the defendant at its sole discretion decided to lodge an appeal against the decision of the Opposition Division of the EPO to revoke the patent in suit. Due to the suspensive effect of such an appeal, the patent remained in force. Moreover, the plaintiff had sufficient reason to believe that the defendant was upon to lodge a claim of infringement. Since appeal proceedings with the EPO may be longsome, the FPC held that the present nullity suit was an adequate measure taken by the plaintiff. Consequently, the FPC (and likewise the Commercial Court of the Canton of Zurich in the case HG080018) decided to impose the litigation costs on the defendant and ordered a compensation of the plaintiff’s costs to be paid by the defendant.

Mit dem Beharren auf dem nichtigen Streitpatent hat die Beklagte diese dagegen gerichtete Nichtigkeitsklage verursacht, weshalb es angemessen erscheint, ihr die Kosten aufzuerlegen und sie zu einer Prozessentschädigung an die Klägerin zu verpflichten.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_025 ¦ Decision of 16 July 2012 ¦ “Gegenstandslosigkeit; Kosten- und Entschädigungsfolgen”

Spirig Pharma AG ./. Merck & Co., Inc.

Subject(s):

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (Single Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Substantiation of statements in writ by reference to physical records / applicable Procedural Code

Case No. O2012_022 ¦ Order of 3 May 2012 ¦ “Anwendbares Prozessrecht, Berücksichtigung ausländischer Gerichtsgutachten”

This nullity case regarding the Swiss part of a European patent filed on 18 July 2008 with the Commercial Court of the Canton of Zurich was transferred to the FPC on 17 January 2012. As of 1 January 2012, the FPC has become the competent court according to Art. 41 in conjunction with Art. 26 PatCA.

After transfer of the case, defendant submitted copies of extensive expert opinions requested by the German Federal Court of Justice and the District Court of Rome, Italy, in parallel proceedings and only briefly referred to their respective conclusions in his written submissions. Plaintiff argued that the expert opinions did not constitute evidence in terms of the Swiss civil procedural code (CPC). Further, plaintiff objected to these opinions being treated as defendant’s submissions as the experts’ technical considerations had been enclosed with but not referred to in defendant’s writ.

According to Art. 27 PatCA, the CPC is applicable in cases before the FPC. However, Art. 404(1) CPC states that the previously applicable procedural code (of the respective Canton) remains applicable to pending cases until proceedings within the respective instance are closed. There are no transitional provisions regarding pending cases that have been transferred from cantonal courts to the FPC; only the Guidelines on proceedings before the FPC (Art. 10(2)) hold that the CPC shall be applicable. It has now been decided that based on the fact that Art. 27 PatCA is a lex specialis with regard to Art. 404(1) CPC phone 8582562535 , it takes precedence over the latter. On entering into force of PatCA, the federal procedural code is to be applied to cases transferred to the FPC. However, the parties will be given an opportunity to make submissions pertaining to any issues that they did not need or were not able to make under the terms of the previously applicable cantonal codes of procedure (cf. Art. 10(3) of the Guidelines on Proceedings before the FPC).

As to the merits of the case, it was held that the foreign court expert opinions submitted by defendant were no court opinions in proceedings before the FPC. Likewise, the foreign court expert opinions are no private opinions since they were not commissioned by the defendant. Thus, court expert opinions from separate proceedings are physical records (Urkunden) in the sense of Art. 177 CPC, only. As such, they are formally to be treated like party submissions. As is the case for all party submissions, any statement made in the writ must be substantiated by indicating how the respective statement relates to the physical record on which it is alleged to be based:

In gleicher Weise wie bei Tatsachenbehauptungen hat eine Partei auch bei Privatgutachten oder Gutachten aus anderen Verfahren ihre darauf gestützten Ansprüche möglichst konkret, d.h. substantiiert zu behaupten. Behauptungen (auch wenn sie in Form eines Gutachtens aus einem anderen Verfahren vorgebracht werden) sind in dem Sinne “zu verknüpfen”, dass ohne weiteres und ohne unzumutbaren Aufwand ersichtlich ist, mit welchen Urkunden bzw. Beweisanträgen welche Tatsachen bewiesen werden sollen ([…]).

Facts that can merely be inferred from enclosures need not be considered by the court. In as far as specific passages within the opinions were not indicated to relate to defendant’s writ these opinions were regarded as inadmissible and were not considered.

Wie erwähnt, geht es nicht an, einen Sachverhaltskomplex (d.h. vorliegend die Schlussfolgerung von Gerichtsgutachten) zu schildern und sich zum Beweis am Schluss dieser Behauptungen pauschal auf einen Stoss Akten zu berufen ([…]).

Reported by Karin BÄTZ

BIBLIOGRAPHY

Case No. O2012_022 ¦ Order of 3 May 2012 ¦ “Anwendbares Prozessrecht, Berücksichtigung ausländischer Gerichtsgutachten”

(not identified) ./. (not identified)

Subject(s):

  • Declaratory judgement of nullity

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)

Claim dismissed for lack of right of action

Case No. O2012_010 ¦ Decision of 28 March 2012 ¦ “Aktivlegitimation”

The patent in suit (Swiss patent CH 683 963 A5; cf. Fig. 4 below for illustrative purposes) pertains to an implant which serves for the stiff connection of vertebrae of the spinal column:

O2012_010_-_CH683963A5_Fig_4

The application was filed in 1988 by the defendant. In addition to Mr. Robert Mathys (jun.), Prof. Dr. Max Aebi was identified as an inventor. Mr. Aebi had assigned his rights to the invention to the defendant. In 2006, the plaintiff sued the patentee with the Cantonal High Court of Grisons, arguing that the patent was obtained in bad faith, since the defendant should have known that Mr. Aebi was not entitled to assign his rights to the invention. The plaintiff inter alia requested the assignment of a share of 50% of the patent, and as an auxiliary request that the patent be revoked.

Mr. Aebi was an employee of the plaintiff under public law when the invention was made,. At that time, the University of Berne was not yet a legal entity, but only an administrative unit of the department of education of the Canton of Berne. The FPC held that the University of Berne had no right of action: It was not proven that when it finally became a legal entity in 1996, any rights to the invention under dispute were in fact transferred to the University. The claim was dismissed already for this reason.

Inventions made by professors at Universities were not regulated by law in the Canton of Berne at the filing date of the patent in suit. In contrast, it was the prevailing opinion at that time in Switzerland that inventions made by professors of Universities did not qualify as employee inventions under Art. 332 of the Swiss Code of Obligations. In consequence, the FPC held that there was no legal basis of the plaintiff’s claim that Mr. Aebi’s invention was an employee’s invention belonging to the University.

In addition, there was no evidence that the defendant should have had any doubt about Mr. Aebi’s entitlement to assign his share in the invention. To the contrary, there were indications that the University of Berne was not interested in patents at all at the time when the patent in suit was filed. In consequence, it was not proven that the patent owner acted in bad faith; any assignment action thus had to be filed within two years after grant (Art. 31 para. 1 of the Federal Act on Invention Patents). The right in the assignment action was forfeited.

In light of the above, the FPC also held that the plaintiff was not entitled to a nullity action pursuant to Art. 26 para. 1 lit. d of the Federal Act on Invention Patents: Since co-ownership of the defendant was not under dispute, the plaintiff alone was not entitled to such action anyhow.

In the meantime, the decision has become final.

Reported by Andreas WELCH

BIBLIOGRAPHY

Case No. O2012_010 ¦ Decision of 28 March 2012 ¦ “Aktivlegitimation”

Universität Bern ./. AO Technology AG (formerly Synthes AG Chur)

Subject(s):

  • Patent assignment (eventualiter: Nullity)

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dipl. Masch.-Ing. ETH André Georges WERNER (Judge)
  • Dr. iur. Christoph GASSER (Judge)
  • Prof. Dr. iur. Daniel KRAUS (Judge)
  • Dr. iur. Christoph WILLI (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Universität Bern:

Representative(s) of AO Technology AG (formerly Synthes AG Chur):

Infringement not established, claims prima facie not novel: Preliminary injunction denied

Case No. S2012_004 ¦ Decision of 24 March 2012 ¦ “Schneidvorrichtung für Stickmaschinen”

This case was transferred to the FPC from the Cantonal High Court of Thurgau on 18 January 2012. Preliminary injunction was requested based on the patents CH 701 638 B1 and EP 1 985 736 B1. Note that Swiss patents are not examined with respect to novelty and inventive step – in contrast to European patents. Not only infringement, but also validity of the patent(s) was under dispute.

One request pertained to an item that was claimed in the Swiss patent, but not in the European patent. The FPC held that the defendant had credibly shown by prima facie evidence that this claim of the Swiss patent is not novel. Exhaustive intended use features of the claim were not helpful in order to differentiate the subject-matter of this claim from the prior art; the FPC held that structural identity implies suitability for the same purpose. Another request pertained to a machine equipped with the aforementioned item; this request was again supported by a claim of the Swiss patent only. Mutatis mutandis, the FPC concluded that this claim is not novel over the same prior art reference, by prima facie evidence.

Consequently, infringement of the (prima facie not novel) claims underlying these requests was not even assessed at all:

Das Rechtsbegehren […] stützt sich folglich auf einen glaubhafterweise nicht rechtsbeständigen Schutzanspruch. Damit bleibt kein Raum für die für eine Gutheissung des Unterlassungsbegehrens erforderliche Glaubhaftmachung einer Patentverletzung.

With respect to two further requests, the FPC held that it was neither asserted nor credibly shown that the allegedly infringing device in fact embodied certain features. For these requests, validity of the underlying patent claims was not assessed:

Damit wurde weder behauptet noch glaubhaft gemacht, dass die Beklagte genau die im Rechtsbegehren […] definierte Vorrichtung herstellt, vertreibt etc., so dass das Unterlassungsbegehren auch im Umfang von Rechtsbegehren […] abzuweisen ist.

In the meantime, the decision has become final.

For those who are interested in more (technical) details:

The invention according to claim 1 of the Swiss patent pertains to a cutting device (15) for an embroidery machine, wherein the embroidery machine comprises at least a drilling device (13); cf. Fig. 1 of the Swiss patent for illustrative purposes:

S2012_004_-_CH701638B1_Fig_1

The cutting device comprises a heatable tip and a fixing portion, wherein the heatable tip serves for cutting. The heatable tip (39) may be configured as a drill bit (cf. para. [0018] and claim 2 of the Swiss patent). In view of the structural identity with a prior art device disclosed in DE 566 263, the FPC concluded that it had been credibly shown by the defendant by prima facie evidence that claims 1 and 10 of the Swiss patent are not novel.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2012_004 ¦ Decision of 24 March 2012 ¦ “Schneidvorrichtung für Stickmaschinen”

Lässer AG Stickmaschinen ./. Oerlikon Saurer Arbon AG

Subject(s):

  • Preliminary Injunction (Patent Infringement)

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Chairman)
  • Dr. sc. nat. Tobias BREMI (Judge)
  • Lic. iur. & dipl. Mikrotech.-Ing. Frank SCHNYDER (Vice President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Lässer AG Stickmaschinen:

Representative(s) of Oerlikon Saurer Arbon AG:

  • Dr. iur. & dipl. sc. nat. ETH Stefan KOHLER (Vischer AG)