Go with the flow

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Case No. O2016_009 | Hearing of 29 October 2018

iFlow sensor

Please find some background information about the subject-matter at stake on this Blog here.

In brief, Hamilton Medical AG alleges infringement of its Swiss patent CH 701 755 B1 (see Swissreg for further bibliographic details) by some of imtmedical AG‘s iFlow sensors. The only independent claim 1 of the patent as granted reads as follows:

Durchflussmessfühler (10) mit einem ein zylindrisches Gehäuse (10) definierenden Durchgang mit einer ersten Durchgangsöffnung (13) und einer zweiten Durchgangsöffnung (29); einem im Durchgang des Gehäuses angeordneten Strömungswiderstand (23), welcher das Gehäuse in einen ersten und einen zweiten Gehäuseteil (11 und 27) unterteilt; einer ersten Anschlussstelle (17) mit einer Verbindung zum Innern des ersten Gehäuseteils (11); und einer zweiten Anschlussstelle (19) mit einer Verbindung zum Innern des zweiten Gehäuseteils; dadurch gekennzeichnet, dass die ersten und zweiten Anschlussstellen (17, 19) in einem Abstand voneinander auf dem gleichen Gehäuseteil angeordnet sind.

Fig. 1 of CH 701 755 B1

The defendant denies an infringment, and argues for nullity as a plea in defense.

This case is already pending for two years. Likewise, the main hearing yesterday has been quite lengthy: Plaintiff’s initial pleadings took about 2.5 hours, and defendant’s reply took yet another two hours. The hearing was not even finished thereafter, but we just could not attend any longer. Anyway, some key aspects of the case became pretty clear from both parties’ first pleadings.

In our understanding, the expert opinion of the judge-rapporteur had held that the patent as granted was not valid. However, the judge-rapporteur apparently also held that the patent would be valid in a more limited extent, and that it would still be infringed to that extent. Thereafter, the plaintiff apparently submitted that he only invoked the patent to an extent that had been held valid by the judge-rapporteur. Defendant firmly denied that this ‘verbal limitation’ (verbale Einschränkung) was admissible and argued that the case had to be dismissed if claim 1 of the patent as granted was invalid.

Further, the defendant relied on i) a prior use; and ii) US 6,585,662 when arguing for lack of an inventive step.

Fig. 8 of US 6,585,662
Uphill fight

It remains to be seen how all this turns out, but from what has been argued at the hearing we conclude that it is currently an uphill fight for the defendant. And it did not seem as if this was a case to be concluded with a settlement. Stay tuned.

Reported by Tina VOCI and Martin WILMING

BIBLIOGRAPHY

Case No. O2016_009 | Hearing of 29 October 2018

Hamilton Medical AG
./.
imtmedical AG

Panel of Judges:

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Dr. Lorenzo PARRINI

Judge-rapporteur:

  • Dr. Tobias BREMI

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Christoph GASSER (BianchiSchwald)
  • Renato BOLLHALDER (Bohest), assisting in patent matters
  • Dr. Torben MÜLLER (Bohest), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Rudolf RENTSCH (IPrime)
  • Ernst BREM (IPrime)
  • Paul ROSENICH (PPR)
  • Joachim KÜNSCH (PPR)

CH 701 755 B1

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Are rights re-established once and for all?

Case No. O2017_016 ¦ Main Hearing of 25 April 2018

Signpost

I have attended the hearing in this matter earlier today. Infringement of the Swiss SPC C00716606/01 concerning sevelamer is at stake; the basic patent is EP 0 716 606 B1 of Genzyme Corporation. Interim injunctive relief had been granted in earlier proceedings S2016_009; see this Blog here.

Notably, infringement per se is undisputed, as well as validity of the basic patent. However, the defendant (only) alleges that the SPC is invalid because the Office wrongfully granted re-establishment of rights (Art. 47 PatA) with respect to the time limit for filing the SPC application under Art. 140f PatA.

The parties had been summoned to the main hearing after a single exchange of briefs; plaintiff’s reply and defendant’s rejoinder were pleaded in the hearing. Since the only question at stake is a legal one, this worked out smoothly. It was also noted that no expert opinion of the judge-rapporteur will be established.

Now, can the SPC still be challenged for wrongful reinstatement in the present civil proceedings?

Undisputedly, wrongful reinstatement is not explicitly listed as a ground for nullity in Art. 140k PatA. However, the parties dissent on whether or not the list is exhaustive.

Defendant essentially argued that the Swiss legislator voluntarily aligned the Swiss law with the respective EU regulation, and that also further developments of the EU law need to be taken into account; BGE 129 III 135, ¶6. In the view of the defendant, the ECJ in all its decisions on SPCs essentially declared SPCs invalid whenever its grant had not been objectively justified — irrespective of whether or not the ground was explicitly listed in Art. 15 of Regulation (EC) 469/2009.

Plaintiff disagreed; the ECJ never introduced additional grounds of nullity but rather only interpreted the grounds that are explicitly mentioned. Further, the nullity grounds referred to in Art. 140k(1) lit a PatA explicitly only refer to Art. 146(1). However, the time limit for filing the SPC request is defined in Art. 146(2). The plaintiff noted that this focus only on paragraph 1 underlines the legislator’s intent to not include paragraph 2 into the list of grounds for nullity. Plaintiff further argued that any interested third party could well have appealed the decision of reinstatement (Art. 48 ff APA in the version of 09 December 2003), together with the decision of grant of the SPC – but the defendant failed to do so. See also the summary judgment in ¶3.5 in this respect. The decision on reinstatement is thus formally final, and the defendant has to live with it. Plaintiff further referred to BGE 90 I 186 (¶3) which held that re-establishment of rights according to Art. 47 PatA only concerns the relationship of the patentee to the Office; the effects on third parties are regulated exhaustively (sic!) by Article 48 PatA with the prior user right for bona fide third parties.

The later the day, the more pronounced the arguments: The parties reproached each other for having not been able to refer to a prior decision on precisely this issue to their favour. On the funny side, plaintiff noted that this is only because so far just no one has come up with this absurd idea.

So sad

The parties were then asked by the presiding judge whether they were interested in settlement discussions. Unfortunately, I cannot tell what the answer was because it was requested that the public be excluded before the question is answered, and this request was granted.

UPDATE 05 May 2018:

I meanwhile obtained the request and the grant of reinstatement.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_016 ¦ Main Hearing of 25 April 2018

  1. Genzyme Corporation
  2. Sanofi-Aventis (Suisse) SA

./.

Salmon Pharma GmbH

Composition of the Board of the FPC:

  • Dr. Ralph SCHLOSSER
  • Dr. Tobias BREMI
  • Prof. Dr. Daniel KRAUS
  • Dr. Andreas SCHÖLLHORN SAVARY
  • Dr. Stefan KOHLER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Requester:

Representative(s) of Respondent:

  • Dr. Robert BRINER (CMS)

ANNOUNCEMENT

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BASIC PATENT

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Omega ./. Tudor et al.: The aftermath of Baselworld 2015

Case No. O2015_008 ¦ Main hearing of 30 January 2018

Omega logo

The main hearing in this matter took place earlier today.

See this Blog here for a brief review of the subject-matter at stake, based on the court’s detailed announcement of the hearing.

  1. Background of the case

Infringement of Omega‘s  EP 1 837 719 B1 is at stake; see EPO Register and Swissreg for further bibliographic details.

The single independent claim 1 reads as follows:

Balance for a timepiece movement including a felloe (3), arms (4) connecting the felloe (3) to the balance staff and inertia blocks (11) for adjusting the unbalance and regulating the moment of inertia, characterized in that the felloe (3) includes studs (7) directed inwards, a threaded hole (9) into which said inertia blocks (11) are screwed from the inside, passing through said felloe (3) and said studs (7).

This is best understood with Fig. 1 of the patent at hand:

Fig. 1 of the patent in suit

The attacked embodiments are Tudor‘s calibres MT5621 and MT5612; infringement under the Doctrine of Equivalents is alleged. The current versions of the calibres are shown below:

Interestingly, the balance wheels looked a little different when the calibre had been introduced back in 2015 at Baselworld; see here. Do you notice the different balance wheel in the top right of the calibre?

Former promotional material re Tudor’s calibre MT5621

We have found a perspective picture of the old MT5612 balance wheel on the internet here; a similar picture had been shown in the hearing.

When digging a bit deeper, we came across a report in a watch Blog suggesting that the change of the balance wheel had apparently been implemented in view of Omega’s intervention at Baselworld 2015. Indeed, that would be a perfect fit with the case number of the present matter referring back to 2015.

Tudor logo

Now, about three years later, the case surfaces again. Defendants Tudor and Detech deny infringement under the DoE and countersued for invalidity in view of DE 864 827US 759,914US 2,958,997, ROLEX calibres and the common general knowledge of the skilled person.

  1. Learnings from the hearing

Based on what  can be concluded from the pleadings, plaintiff is on the defensive. The expert opinion of the judge-rapporteur had apparently held that the claimed subject-matter (to the extent invoked) was novel, but not inventive. However, the judge-rapporteur had not yet assessed infringement in his expert opinion.

UPDATE Feb 1, 2018:

The first version of this post indicated that the expert opinion of the judge-rapporteur had already addressed infringement. I have been informed by plaintiff’s counsel that this is not the case. Accordingly, this has been corrected in the above. /MW

Most of the discussion was about fulfilment the feature

[…] inertia blocks (11) are screwed into a threaded hole (9) from the inside […].

Evidently, the parties disagree on whether or not this feature is fulfilled in the attacked embodiment(s). Is it sufficient for infringement to be ruled out if the inertia blocks are screwed into the threaded hole from the outside? It remains to bee seen whether fixation from the outside might constitute infringement under the DoE. In particular, plaintiff argued that there was no indication whatsoever in the patent in suit that the direction of fixation was of any relevance. Guess which way the wind is blowing: Pemetrexed.

The final judgment needs to be awaited, to fully understand how the inertia blocks in the attacked embodiments are actually fixed.

The value in dispute is CHF 1M. The parties did not enter into settlement discussions today.

Reported by Jolanda MINDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2015_008 ¦ Main hearing of 30 January 2018

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

Judge(s):

  • Dr. Mark SCHWEIZER
  • Dr. Tobias BREMI
  • Frank SCHNYDER
  • Dr. Philippe DUCOR
  • Christoph MÜLLER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendants:

PATENT IN SUIT

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Living in a box … no more

Case No. 4A_18/2017 (Supreme Court)] ¦ Decision of 10 July 2017 ¦ ‘HIT Box’

This decision of the Supreme Court of Switzerland concerns an appeal against a decision of the Princely High Court of Liechtenstein in a patent infringement case.

This setup demands for some explanations right from the outset.

Switzerland and the Principality of Liechtenstein form a unitary territory of protection; see the Bilateral Protection Act (‘Patentschutzvertrag‘, an English translation is available here). The Princely High Court is designated as the competent court in civil cases regarding patent matters in Liechtenstein. An appeal to the Swiss Supreme Court is possible with regard to issues of substantive law (BGE 127 III 461, r 3d); the Supreme Court Act applies. On the other hand, issues of international private law (BGE 127 III 461, r 4b) and procedural law of the Principality of Liechtenstein (4A_681/2012 and 4A_683/2012) are not to be dealt with by the Swiss Supreme Court. 

All this may well add a further layer of procedural complexity on top of the inherent complexity of any patent litigation.

But at least the subject-matter at stake appears to be rather straight-forward: It’s all about a plastic container with a lid and snap closure, illustrated as follows:

The snap-mechanism can be released by pushing the nose (15) inwards and pulling the gripping member (9) outwards, illustrated by forces K3 and K2, respectively, in Fig. 4 below. The lid can then be lifted easily with force K1. However, if only the lid is lifted (force K1′) without prior release of the snap-mechanism by forces K2 and K3, the nose 15 slides to the exterior into a safety position; see Fig. 6 below.

The patent EP 0 767 106 B1 (Georg Utz Holding AG; see Swissreg and EPO Register for further bibliographic details) had been granted in 1999 with a single independent claim as follows:

A plastic Container with a lower part (1) and a lid (2) as well as at least one snapping mechanism (9-18) for attaching the lid (2) to the lower part (1), wherein the snapping mechanism comprises a first and a second member (12-15; 9, 11, 17, 18), wherein the members are snapped into each other in a closed position and resist against an opening of the lid (2) by a nose (15) of the first member abutting against a stopping surface (18) of the second member, wherein for opening the lid (2) the members can be brought into an opened position by urging the nose (15) in a first direction from the stopping surface (18) by elastic deformation of at least one of the members, and wherein by exertion of a sufficient opening force (K1′) on the lid, the nose (15) can be urged from the stopping surface (18) in a different second direction and the members can be brought from the closed position into a safety position, where they form a connection positively acting against the opening force, characterised in that an opening (11) is arranged in an edge region of the lid (2), the lower edge of which opening forms the stopping surface (18), and that the nose (15) is connected to the lower part (1).

The complaint (apparently against members of the Hilti group of companies) had been filed back in September 2012. The Princely High Court appointed a court expert to assess validity and infringement of the patent: Dr. Tobias Bremi, who is also the second ordinary judge of the Swiss Federal Patent Court. The expert held that the attacked embodiment is literally covered by claim 1 of the patent, but that the patent is invalid for lack of novelty. However, it may be concluded from the decision that the court-appointed expert somehow indicated that the subject-matter of dependent claim 10 would be valid and infringed.

Later, the patent has been limited in central EPO proceedings by addition of the following feature to claim 1:

the upper border area (3) of the lower part (1) is reinforced by a double wall

No, it’s not what you might expect: The additional feature is not the subject-matter of former claim 10, it rather has been taken from the description. The limited patent has been republished as EP 0 767 106 B3.

The expert accordingly delivered a second opinion on the limited patent in December 2015: The attacked embodiment was still covered by amended claim 1, but the claim was still not novel over the same prior art document. Even worse, the amendment was held to be in violation of Art. 123(2) EPC, i.e. that the amended claim contained subject-matter which extended beyond the content of the application as filed by way of an intermediate generalisation. 

The Princely High Court thus dismissed the complaint with decision of 24 November 2016, ie well after the patent had finally lapsed on 30 September 2016. On appeal to the Swiss Supreme Court the plaintiffs essentially requested that the decision of the Princely High Court be set aside and that the case be remanded to the Princely High Court for reappraisal. The plaintiffs / appellants apparently argued that the amendment to claim 1 was not an unallowable intermediate generalisation. Moreover, it was argued that claim 10 as such was valid and infringed.

In first place, the Supreme Court held that the plaintiffs / appellants had no legitimate interest anymore in injunctive relief since the patent had meanwhile lapsed. The appeal has not been considered to this extent.

Second, the Supreme Court dealt with the aspect of information and accounting. The Supreme Court would have been competent to decide on the merits; Art. 107(2) SCA and Annex I to the Bilateral Protection Act (‘Patentschutzvertrag’) which refers to the Swiss Code of Obligations. However, only remandment to the Princely High Court had been requested. The Supreme Court has thus not considered the appeal to this extent, either.

Finally, the Supreme Court held that partial validity of dependent claim 10 of the patent (as originally granted) had not been at stake in proceedings before the Princely High Court, and any arguments in this respect were new and inadmissible. The Supreme Court noted that the plaintiffs / appellants did not object to the finding of the lower court that claim 1 was not novel, neither in the initially granted form (EP’106 B1) nor in the subsequently limited form (EP’106 B3). However, according to the Supreme Court, already this finding justifies the decision as such.

At the face of it, the Supreme Court decision appears to be very straight-forward. But the devil may well be in the unrevealed details. E.g., it would be interesting to learn more about the reasons for the limitation, and what had actually been argued with respect to claim 10.

What is not readily clear to me is how the Supreme Court dealt with the plaintiff’s auxiliary request that had been on file before the Princely High Court. The patentee had eventualiter invoked the patent only to a limited extent, and this limitation actually reflected the additional features of dependent claims 9 and claim 10 (note that claim 10 is dependent on claim 9):

[9. …] in the closed position the nose extends from an inner side into the opening;
[10. …] in the closed position an outer side of the nose is substantially flush with an outer side of the edge region of the lid.

In my perception, validity of the combination of claims 1, 9 and 10 must have been at stake before the Princely High Court, contrary to what the Supreme Court decision suggests. When a patent is invoked only to a limited extent, validity should also be assessed to that extent; see this Blog here.

I am still trying to get a hand on the decision of the Princely High Court, to gain further insight …

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_18/2017 (Supreme Court)] ¦ Decision of 10 July 2017 ¦ ‘HIT Box’

  1. A. AG
  2. B. AG
  3. [Utz group of companies]

./.

  1. C. AG (LI)
  2. D. GmbH (DE)
  3. E. mbH (DE)
  4. [Hilti group of companies]

Judge(s):

  • Dr. Christina KISS
  • Dr. Kathrin KLETT
  • Dr. Fabienne HOHL

Court Clerk:

  • Dr. Matthias LEEMANN

Representative(s) of Plaintiff(s) / Appellant(s):

Representative(s) of Defendant(s):

  • Dr. Michael RITSCHER (MLL)

DECISION IN FULL

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PATENT AS GRANTED (B1)

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LIMITED PATENT (B3)

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Wrongful reinstatement is no ground for nullity of an SPC

Case No. S2016_009 ¦ Decision of 04 July 2017 ¦ “ESZ / Nichtigkeitsgründe”

The decision grants interim injunctive relief in summary proceedings based on an SPC.

Notably, the defendant neither disputed validity of the basic patent, nor that the subject-matter of the SPC is covered by the basic patent or that the attacked embodiment is covered by the SPC. Rather, the defendant (only) alleged that the SPC is invalid because the office wrongfully granted re-establishment of rights (Art. 47 PatA) with respect to the time limit for filing the SPC application under Art. 140f PatA.

Publications in the Patent Bulletin and Swissreg as to the actual filing date of the SPC application are indeed confusing, to say the least. The (belated) filing date of 13 December 2014 has not been published at all, nor has the re-establishment of rights. Anyway, the FPC holds that in view of the apparent inconsistency between a belated filing date and the fact that the SPC had been granted anyway should have prompted a check of the dossier. The defendant would then have noticed the re-establishment of rights.

The FPC notes that the defendant could have appealed the decision of reinstatement (Art. 48 ff APA in the version of 09 December 2003), together with the decision of grant of the SPC – but failed to do so. The decision is thus formally final, and the defendant has to live with it.

The FPC further holds that the list of grounds for nullity of an SPC as set forth in Art. 140k PatA is exhaustive. The alleged wrongful reinstatement is thus no valid ground of nullity.

It was undisputed that the defendant had advertised the attacked embodiment at a congress in December 2016, and had actually sold products already in September 2016. However, the defendant argued that there was no threat of any further infringing acts: The defandant would stick to his affirmation to give notice to the patentee a month before commercialising the product again (the patentee demanded for an advance notice of at least 6 months). The FPC held that an advance notice of 1 month clearly is insufficient: One cannot expect injunctive relief to be granted within a month; the advance notice (at least this short one) does not preclude the threat of a further infringement.

The FPC also confirmed the threat of an irreparable harm, with a straight-forward reasoning. Interim injunctive relief was thus granted.

FROM A MARKET PERSPECTIVE

Infringement of the Swiss SPC C00716606/01 concerning sevelamer is at stake; the basic patent is EP 0 716 606 B1 of Genzyme Corporation.

Sevelamer is a phosphate binding drug used to treat hyperphosphatemia in patients with chronic kidney disease; it binds to dietary phosphate and prevents its absorption. Sevelamer is legally marketed in Switzerland under the trade names Renagel® (sevelamer hydrochloride) and Renvela® (sevelamer carbonate).

Sevelamer consists of polyallylamine that is crosslinked with epichlorohydrin. Sevelamer carbonate is a partial carbonate salt. The amine groups of sevelamer become partially protonated in the intestine and interact with phosphate ions through ionic and hydrogen bonding.

Structural formula of sevelamer carbonate
Structural formula of sevelamer carbonate

The confusing publications in the Swiss Patent Bulletin are +pat+ 08/2005, p 1317-1318 and 06/2006, p 1058. The publication in Swissreg is not of much help, either; it rather adds to the confusion:

Dass das IGE schliesslich am 8. Dezember 2016 noch zu guter Letzt als neues – nicht erklärbares – Datum der Berichtigung den 7. April 2005 einführte, komplettierte den Zahlensalat.

The market authorisations for the active ingredient sevelamer are listed in Compendium and the ‘Spezialitätenliste‘; this reveals the parties involved: Genzyme Corporation (SPC holder) and Sanofi-Aventis (Suisse) SA (exclusive licensee and market authorisation holder) as the plaintiffs. The defendant apparently is Salmon Pharma GmbH since it is the only other holder of a market authorisation for a product containing sevelamer, ie the product Sevelamercarbonate Salmon Pharma.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2016_009 ¦ Decision of 04 July 2017 ¦ “ESZ / Nichtigkeitsgründe”

  1. Genzyme Corporation
  2. Sanofi-Aventis (Suisse) SA

./.

Salmon Pharma GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Andreas SCHÖLLHORN SAVARY
  • Dr. Ralph SCHLOSSER

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Requester:

Representative(s) of Respondent:

  • Dr. Robert BRINER (CMS)

DECISION IN FULL

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BASIC PATENT

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Amlodipine & Valsartan: Lessons on assessment of inventive step

Case No. S2017_001 ¦ Decision of 01 June 2017 ¦ “Interim injunctive relief refused; valsartan / amlodipine combined dosage form not inventive”

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the defendant.

The patent in suit is EP 2 322 174 B1; see EPO Register and Swissreg for further details. Oral proceedings before an EPO opposition division are scheduled for December 6, 2017.

In general terms, the patent is about a fixed dose combined unit dose form of two active ingredients for effective control of blood pressure, ie amlodipine and valsartan. The former is a dihydropyridine calcium-channel blocker, the latter is an angiotensin II antagonist.

Respondent had lodged a nullity suit against this patent earlier; O2016_006. While nullity proceedings were still pending, the patentee requested interim injunctive relief to be ordered without hearing the defendant beforehand. This request had not been granted; see this Blog here. Now, after the respondent had been heard, the request for interim injunctive relief has been rejected: The decision holds that the patent is invalid for lack of inventive step over Corea in further view of the skilled person’s knowledge. In brief, Corea  already disclosed a combination therapy with amlodipine and valsartan, and that a combined therapy results in less side effects. The fixed dose combination of amlodipine and valsartan was held to be obvious in further view of the skilled person’s knowledge as illustrated by WaeberEpstein and Makrilakis.

This outcome is not extraordinary. Rather, it is in line with recent decisions of the Regional Court Düsseldorf of 10 April 2017 and the Commercial Court Barcelona of 22 March 2017.

Still, this decision will be cited for its general considerations on how inventive step is to be assessed. The law itself is pretty clear: An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art; Art. 56 EPC. The state of the art shall be held to comprise everything made available to the public […]; Art. 54(2) EPC. Consequently, the decision holds that it is not permissible to just exclude a document from consideration as a potential springboard towards the invention; see also O2013_011, r 5.6, commented on this Blog here. The term ‘closest prior art’ is held misleading in that it suggests that (i) there is always a single piece of prior art that comes closest to the invention; and (ii) this single piece of prior art also is the best springboard towards the invention. Both assumptions will only rarely be valid. The FPC thus explicitly disagrees with the approach taken in r 11 by an opposition division of the EPO concerning EP 1 096 932, the grandparent patent of the patent in suit, ie to just rule out Corea (referred to as ‘C2’ in these proceedings) as a proper springboard.

The decision also embraces the EPO’s could-would approach; r 4.7.  In the could-would approach one has to ask

[…] whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves.

The EPO Guidelines go on to clarify this as follows:

In other words, the point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage (see T 2/83).

With reference to Kroher (Singer/Stauder, EPÜ, 7th ed., Art. 56, #73-74) the decision holds that the ‘would’ is satisfied if there is a motivation to arrive at the claimed solution and an expectation of success that this solution actually works:

Dass der Fachmann die erfindungsgemässe Lösung effektiv finden würde gilt als gezeigt, wenn aus den Unterlagen ersichtlich ist, dass der Fachmann einen Anlass hatte (‘motivation’), zur erfindungsgemässen Lösung zu kommen, und er eine Erfolgserwartung hatte, dass die erfindungsgemässe Lösung auch funktioniert (‘expectation of success’).

On a personal note, I do agree that there is definitely no inventive step involved when both ‘motivation’ and ‘expectation of success’ can be shown. But I do not readily understand why both criteria are linked with an — even emphasized — ‘and’ in the above citation. To me, the assessment of ‘expectation of success’ is part of the assessment of ‘motivation’: If the skilled person does not have a reasonable expectation of success, ‘motivation’ can hardly be acknowledged. Having no reasonable expectation of success rather is a de-motivation to further pursue this way. In my perception, ‘expectation of success’ is subordinated to the overall assessment of ‘motivation’, not coordinated. This may also explain why ‘expectation of success’ is not routinely addressed in the EPO’s could-would approach. If there is a specific pointer from one piece of prior art to another one, and if this combination leads straightforward to the claimed invention, then the could-would approach is satisfied. The check for a reasonable expectation of success is typically used as a corrective in cases where an applicant / patentee can show that the pointer at that time would have been ignored for other reasons, and/or the pointer still leaves the skilled person with an undue burden to actually arrive at the invention. Unsurprisingly, by far the most of the EPO’s case-law on ‘reasonable expectation of success’ stems from the fields of genetic engineering and biotechnology where such kind of problems frequently occur. Anyway, all this does not make any difference for the outcome of the case at hand.

The decision also expands on the issue of an alleged undue extension of subject-matter. The only independent claim 1 as granted reads as follows (changes over the claim as initially filed are marked-up):

A pharmaceutical combination composition for use in treating or preventing hypertension comprising:

(i) the AT1-antagonist valsartan or a pharmaceutically acceptable salt thereof;

(ii) amlodipine a calcium channel blocker or a pharmaceutically acceptable salt thereof, and

a pharmaceutically acceptable carrier,

wherein the combination composition is in one fixed combination combined unit dose form.

The decision holds that no multiple selections are necessary in order to arrive at the claimed subject-matter. Explicitly following EPO case law, the decision holds that a selection from a single list does not constitute an undue extension of subject-matter.

Update 12 July 2017:

The decision has not been appealed.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2017_001 ¦ Decision of 01 June 2017 ¦ “Interim injunctive relief refused; valsartan / amlodipine combined dosage form not inventive”

n/a  ./.  n/a

Topics:

  • Inventive step
  • Expert opinion of the judge-rapporteur
  • Ex-parte interim injunctive relief refused
  • Nullity plea in defense
  • Undue extension of subject-matter (Art. 123(2) EPC)
  • Interim injunctive relief

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Dr. Prisca VON BALLMOOS

Court Clerk:

  • Esther SCHEITLIN

Representative(s) of Requester:

Representative(s) of Respondent:

DECISION IN FULL

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PATENT IN SUIT

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P.S.:
I won’t start selling you my stuff with some cute cat pictures. But since cats are somewhat famous when it comes to IP Blogs, I just cannot help. I started writing this post while we stayed at a friend’s house. Out of a sudden, a cat jumped on the table and glared at me! An IP cat watching me? Whatever I was typing, he would not look happy. Sweet-talking didn’t help, either. What was so wrong?! It took me a while to understand: He wasn’t concerned about what I was doing. He just wanted me to realize that it was well past his dinner time. (No cat pictures any time soon again. Promised.)

It’s just not the right time …

Case No. O2016_012 ¦ Decision of 22 February 2017 (excerpt) ¦ “Rechtliches Gehör, unbedingtes Replikrecht, Prozessleitung, Waffengleichheit”

A previous version of this post mentioned Bruno MEYER as an assisting patent attorney on behalf of the defendant. I have been informed that this is wrong; he is actually engaged on behalf of the plaintiff. This has been corrected hereinbelow.

This procedural order is almost a blueprint of a published order in the case O2012_039; see this Blog here. Again, an alleged infringer argued for nullity as a plea in defense with his answer to the suit. Prior to the preparatory hearing, the plaintiff had been ordered and actually provided a reply only with respect to the alleged nullity, for the time being. So far so good.

But the defendant filed a factual rejoinder concerning the (in)validity of the patent in suit. This evidently frustrated the court’s intention to have one(!) reply of each party on file pertaining to the questions of infringement and nullity. Consequently, the FPC decided to not take the defendant’s submission on file at all, for the time being. The defendant may re-file the same after the preparatory hearing, with his rejoinder.

Die Prozessleitung ist Sache des Gerichts (Art. 124 Abs. 1 ZPO). Wenn die Beklagten hier nun ungefragt mit einer faktischen Duplik zur Bestandesfrage reagieren, wird das Bestreben des Gerichts, die Waffengleichheit der Parteien zu wahren, unterlaufen. Das ist zu unterbinden. Entsprechend ist die Eingabe der Beklagten (samt Beilagen) aus dem Recht zu weisen. Es steht den Beklagten frei, das Vorgebrachte (nach der Instruktionsverhandlung) im Rahmen der dann einzuholenden Duplik erneut vorzutragen.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2016_012 ¦ Decision of 22 February 2017 (excerpt) ¦ “Rechtliches Gehör, unbedingtes Replikrecht, Prozessleitung, Waffengleichheit”

A AG

./.

(1) B GmbH
(2) C GmbH

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI

Reporting Judge:

  • n/a

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Michael RITSCHER (MLL)
  • Dr. Kilian SCHAERLI (MLL)

DECISION (EXCERPT)

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OMG, a nullity plea in defense!?

A defendant in infringement proceedings has two options to challenge the validity of the patent in suit, i.e. (i) to lodge a counterclaim for invalidity, or (ii) to argue for nullity as a plea in defense.

The first scenario is straight forward: Patentees defending a counterclaim for invalidity can present an amended / more limited version of the claims before court, and even auxiliary requests; see e.g. O2012_030.

The situation is somewhat different if nullity is only argued as a plea in defense (which is mostly the case). Note that the court shall declare the (full or partial) nullity of the patent explicitly only on application, i.e. when a counterclaim for nullity is lodged; see Art. 26 and 27 PatA. Now, what can a patentee do to rebut a nullity plea in defense? Sure, he may partially surrender the patent at the Swiss Patent Office (Art. 24 PatA) or at the EPO (Art. 105a EPC), whatever is applicable. But the drawbacks are severe: Timing of the proceedings at the patent offices is not necessarily aligned with the court proceedings, and it is not mandatory for the court to stay the case pending limitation proceedings. Even worse: The patentee must get it right first time. If the limitation is not found to overcome the nullity defense, time will most likely be running out; see e.g. the report on the main hearing in O2012_016.

This constitutes a glaring inequity in favour of the defendant, doesn’t it? Well, in reality it’s not too bad. Tobias BREMI (second permanent judge at the FPC) explained yesterday at a VESPA conference that the court’s approach is apparently very pragmatic: If the patent is only enforced to a limited extent (like e.g. in S2016_002), validity of the patent will only be assessed to that extent in case of a nullity plea in defense. Auxiliary requests may also be presented, even comprising features taken from the description. However, plaintiffs / patentees should be specific: It is not sufficient to just indicate willingness to limit the claim to […] or to use some other wobbling language. And it goes without saying that the request for injunctive relief will have to match the limited version(s) of the claim(s).

So far so good. But the devil is in the detail. Limitation of the request for injunctive relief constitutes a limitation of the action which is explicitly permitted at any time; see Art. 227(3) CPC. However, the right of the plaintiff to present new facts in support of such a limited request is not unrestricted; see O2012_016. But that’s a different story.

Reported by Martin WILMING

Saurer’s HeatCut system held to infringe Lässer’s EP 1 983 083 B1

Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”

The main hearing in this matter took place on 27 January 2016; see this Blog here for a report on the hearing and some background information on the subject-matter at stake.

Independent claim 1 of the patent in suit (EP 1 983 083 B1) reads as follows:

1. Method for applying flat pieces of material of any desired form onto an embroidery base (Fig. 6: 42) by means of an embroidery machine, wherein at least one material layer is arranged above the embroidery base (42) and, controlled by the program of the embroidery machine, a relative movement is produced between a cutting device (47) and the material layer (Fig. 6: 44), and, as a result, a flat piece of material of the desired form is cut out of the material layer (44), characterised in that the cutting is carried out by a heatable tip (47) and the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.

Yet another independent claim 7 of EP’083 is directed to the device as such and reads as follows:

7. Device for an embroidery machine, for applying flat pieces of material onto the embroidery base (42), for example figures made of another material (44) and/or of another colour than the material of the embroidery base, by embroidering in place, comprising a support (45) for securing the device to an embroidery machine, a heatable tip (47) for cutting the material layer (44) used for the application and means (57, 59) for bringing the heatable tip out of the inoperative position into the cutting position and vice-versa, characterised in that a spacer (55) is provided at the heatable tip (47), which is adjustable in order to determine the penetration depth of the tip (47) into the material layer (44), such that the tip only penetrates into the material layer (44) which is to be cut.

Already the interim assessment of the reporting judge had not been in favor of the defendant, neither concerning infringement nor with respect to the plea of nullity. That did not change anymore, the board of judges essentially followed this assessment.

1.   Nullity

Lack of novelty was not an issue; only inventive step was under dispute. Some discussion apparently concerned the definition of the person skilled in the art. The FPC holds that the person skilled in the art is to be defined in view of the closest prior art that has been chosen — as is the case with the objective technical problem to be solved, too (r. 4.9.2).

The defendant inter alia argued that the patent lacked an inventive step over D1 (JP-A-05-261187). Translation of this document was problematic. I understand from the decision that the defendant apparently only filed a machine translation — at least in first place. While r. 4.3 holds that an ordinary translation has (only) been filed with the defendant’s comments on the interim assessment of the reporting judge, r. 4.9.3 holds that no ordinary translation has been filed at all. In any event, machine translation of patent documents in Japanese language is often confusing. D1 does not make an exception in this respect; the machine translations of the abstract and the specification of D1 that I have obtained from the JPO will give you an idea of just how puzzling such translations sometimes are.

In any event, D1 apparently concerns a sewing machine that also encompasses an embroidery function, incl. a heatable tip (4/5).

However, D1 does not further specify whether M (see figures) is only a frame or a solid table. Moreover, D1 neither discusses cutting of a mulit-layer material, nor any adjustment of the depth of penetration of the tip. The FPC held that the person skilled in the art would not have arrived at the claimed invention relying on D1 alone. Further, the FPC held that the person skilled in the art would not have consulted D2 (pertaining to a laser cutting system) — but even if D2 would have been considered, a spacer would still be missing.

Yet another document was considered in combination with D1. At least a kind-of-document, i.e. paragraph [0006] of the patent in suit. This paragraph [0006] of the patent reviews the prior art document DE 44 26 817 A1. The document as such has apparently not been introduced into the proceedings; paragraph [0006] of the patent is referred to as D4 in the decision. The decision casts some doubt on whether this paragraph [0006] of the patent itself can be considered as prior art. But even if it was considered, a spacer would still be missing.

The decision also discusses an alleged lack of an inventive step over D4 (reviewing DE 44 26 817 A1) as closest prior art. However, it was not held obvious (from D4 alone or in combination with D1) to replace a laser system with a heating tip and to further include a spacer. A further combination with US 3,902,042 (D3) did not succeed, either.

Finally, the defendant had submitted JP 82 43 776 A only belated, without any justification according to Art. 229 CPC for the late submission. The document has not been considered anymore.

In sum, the FPC held that the prior art on file did not prejudice validity of the patent in suit.

2.   Infringement

The invention is all about a cutting technology in embroidery machines which relies on a heatable tip. This heatable tip (47) and a spacer (55) provided at the tip can be seen e.g. in Fig. 3 and Fig. 3a of the patent; see also paragraph [0017] of EP’083 for further details on the spacer.

EP 1 983 083 B1, Fig. 3 and 3a
EP 1 983 083 B1, Fig. 3 and 3a

A key issue in this case is whether the HeatCut fabric pressers are spacers (55) in the sense of the patent in suit. Let’s recall the HeatCut configuration:

O2014_009_featured_image
Front page illustration of HeatCut brochure

The black tip in the middle of the picture is the heating tip. The silvery bars that are intermittently arranged on top of the fabric are so-called fabric pressers.

The FPC held that the claims do not require the spacer and the heatable tip to be provided on one an the same structural unit (this is only an embodiment according to Fig. 3/3a above, but not mandatory). According to claim 1, the spacer only has to be provided sufficiently close to the heatable tip to fulfil its function, i.e. to determine the penetration depth into the material layer:

[…] the penetration depth of the heatable tip (47) into the material layer (44) is determined by a spacer (55) provided at the tip (47), such that the tip only penetrates into the material layer (44) which is to be cut.

From the evidence on file, the FPC had no doubt that the fabric pressers are arranged exactly like that and for the very same purpose in the attacked embodiment; infringement of claim 1 was thus established.

Infringement of claim 7 was a bit more tricky. The plaintiff had argued in first place that the support (45) is not part of the claimed device. A prayer for relief including the support was only presented as an auxiliary request, and only this auxiliary request was finally allowed on the basis of the support identified in the illustration below.

Illustration of the support
Illustration of the support

The FPC clearly held that the support is part of the device as claimed and thus dismissed the higher-ranking request. This is also why the plaintiff got stuck with a share of 1/5 of the costs. But on the merits, the patent was held valid and infringed.

As to the cost, the FPC held that internal costs for patent attorneys employed with the group of companies of the defendant cannot be considered at all; these costs are not necessary expenses according to Art. 3 CostR-PatC.

Der von der Beklagten geltend gemachte patentanwaltliche Aufwand ist durch die Inanspruchnahme von konzern-internen Dienstleistungen entstanden und ist damit als interner Aufwand zu qualifizieren, für den unter dem Titel notwendige Auslagen kein Raum ist.

In addition to injunctive relief, the defendant has also been ordered to provide accounting on the infringing acts. This right is based on Art. 66 lit. b PatA. That’s always annoying for parties held to infringe. Here, the defendant had requested the court to take appropriate measures to ensure that its legitimate interests are not infringed, such as business secrets (Art. 156 CPC). However, the legitimate interest remained unspecified. In any event, the FPC now clearly held that the right based on Art. 66 lit. b PatA cannot be limited by procedural measures. Based on the information to be provided within 60 days after the decision has become final, the plaintiff will next have to quantify his claim; Art. 85(2) CPC.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2014_009 ¦ Decision of 04 May 2016 ¦ “Stickmaschinenabstandhalter: Teilweise Gutheissung Patentverletzung, Auskunft und Rechnungslegung (Stufenklage), Kosten- und Entschädigungsfolgen (interne Patentanwaltskosten)”

Lässer AG Stickmaschinen ./. Saurer AG

Subject(s):

  • Infringement / claim construction
  • Spacer of embroidery machine

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE
  • Dr. Tobias BREMI
  • Frank SCHNYDER
  • André ROLAND
  • Dr. Christian HILTI

Reporting judge:

  • Dr. Tobias BREMI

Court Secretary:

  • Susanne ANDERHALDEN

Representative(s) of claimant:

  • Dr. Andri HESS (Homburger)
  • Philip SCHNEIDER (SMS)
  • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters

Representative(s) of defendant:

  • Dr. Stefan KOHLER (Vischer)
  • Delia FEHR-BOSSHARD (Vischer)
  • Arndt HAMANN (Saurer, inhouse), assisting in patent matters
  • Bernhard RÜBER (Saurer, inhouse), assisting in patent matters

FULL-TEXT

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