Mixed feelings about the assessment of mixed inventions

Case No. O2017_007 | Decision of 1 November 2019 | ‘Beatmungsgerät’

Reading time: 16 minutes

The decision is a booklet of about 100 pages; even the recitals of the procedural history and the requests cover 37 pages. Cutting a long story short, the FPC held that some of imtmedical‘s Bellavista ventilation machines with the ‘Animated Lung‘ feature infringe Hamilton Medical‘s EP 1 984 805 B1; see EPO Register and Swissreg for further bibliographic information.

Defendant argued for nullity of EP 805 in defense, as follows:

    • Claim 1 was not novel over both WO 02/071933 A2 (see ¶ 56) and Wachter et al. (2003), The employment of an iterative design process to develop a pulmonary graphical display (see ¶ 57);

and, with respect to (lack of) inventive step (see ¶ 67):

However, the plea for nullity in defense was unsuccessful. The decision holds that features 1F [b] and 1F [c] were not disclosed in WO 02/071933 A2 and Wachter et al. (2003); thus, novelty was acknowledged. Further, the decision holds that features 1F [b] and 1F [c] were also not rendered obvious by any combination of prior art asserted by defendant.

  • Claim 1, broken down into features
The decisive features re novelty and inventive step are highlighted.

1A A device with a screen
1B in order on this to represent acquired, changing values with a mechanical ventilation of a patient,
1C with means for acquiring at least three changing values of different origin,
1D [a] and means for representing the values,
[b] which permit the acquired values to be qualitatively represented together on the screen
[c] in a single element
1E [a] said graphical element including
[b] a pictorial representation of a lung shape,
[c] a current design of the lung shape containing qualitative information on the compliance of the lung,
characterized in that
1F [a] the means for representing [the] values are designed such
[b] that a volume change of the ventilated lung which is acquired with each breath, is represented in an animated manner
[c] by way of a size change of the lung shape corresponding to this volume change,
[d] involving an animation of a contour line of the lung shape,
[e] the design of which containing qualitative information on the compliance of the lung.

The defendant was thus ordered to abstain from further use of ventilation machines with the ‘Animated Lung‘ feature, and to provide information and accounting concerning previous use thereof.

All that appears pretty straight-forward to me, even though the prior art comes pretty close. But still, there are some quite pointed remarks in the decision on various aspects, both procedurally and on the merits.

Lack of legal interest in certain requests for injunctive relief

In parallel to the requests for injunctive relief that had finally been allowed, the plaintiff also requested essentially the same again in more limited form, i.e. with i) the additional recitation of the machine types ‘bellavista 1000’, ‘bellavista 1000e’ and ‘bellavista 1000 neo’; and ii) the combination with certain flow-through sensors. 

The decision holds that the plaintiff has no legal interest in these requests since the broadest request already cover these more limited requests. Noteworthy, 20% or the costs were clapped on the plaintiff despite his success on the merits with respect to the broadest requests.

Despite his success on the merits of the broadest request, the plaintiff has to bear 20% of the costs since a large number or the more limited requests were rejected (for lack of legal interest).
The requirement of definiteness of a request for injunctive relief

The decision gives a finely chiseled differentiation of the requirement of definiteness of a request for injunctive relief on the one hand (which is a bar to proceeding, to be examined ex officio), and the plea in defense that the request for injunctive relief is overhooting on the other hand, i.e. that it extends beyond the scope of the patent as asserted (not to be examined ex officio; potentially leading to (partial) dismissal of the action):

Interestingly, the decision holds in very general terms that the FPC will only very reluctantly assume indefiniteness of a claim for injunctive relief, in the absence of a respective complaint of the defendant; see ¶15, above.

Further, it is held that an overshooting request for injunctive relief will lead to ‘(partial) dismissal’ of the action; see ¶15, above. Maybe I am overinterpreting the ‘partial’ in brackets here, but I wonder what that means in practice: In first place, the request for injunctive relief stands as requested — and cannot be allowed as-is because it is overshooting. In principle, I believe that the court could re-phrase the request to make it commensurate with the scope of the patent as asserted (even though that might be a tricky exercise). Similarly, see e.g. the hn in O2015_009 with respect to sole vs. joint ownership of a patent application. As much as I recall, the FPC never actually narrowed down an overshooting request for injunctive relief, to make it commensurate with the patent as asserted.

A broad feature is not necessarily unclear

Broadness of features is frequently confused with (un)clarity, in particular when it comes to functional features. The decision holds in no uncertain terms that this is a misconception; see ¶16:

Der Begriff ‘Gerätesteuerung’ ist ein funktionaler Begriff, der alles umfasst, was das (Beatmungs-)Gerät steuert. Nicht jeder breite Begriff ist automatisch unklar. Der Begriff ‘Gerätesteuerung’ ist zwar breit, aber klar.

By the way, the same holds true in prosecution: I am prepared to deal with any prior art that is thrown at me as long as it reasonably reads on a broad, functional feature. But it goes against the grain for me when an objection re clarity is raised presumably only for convenience.

Admissibility of reply to new assertions in the rejoinder

The defendant apparently came up with a whole lot of new assertions only in the rejoinder, i.e. that i) EP 805 extended beyond the application as originally filed; ii) the invention was not disclosed in a manner sufficiently clear and complete for it to be carried out by a skilled person; iii) the attacked embodiment did not provide qualitative information with the contour line of the lung; and iv) that the claim to priority was not valid, alongside with new evidence and reliance on a witness.

The decision holds that plaintiff’s filing of new pieces of evidence had effectively been triggered by the rejoinder, and the evidence was thus admitted into the proceedings; see ¶19:

Filing of the new pieces of evidence had been triggered by defendant's new allegations in the rejoinder. Thus, they were admitted into the proceedings.
What witnesses are (not) for

The defendant had requested that Mr Frank DREWS be heard as a witness. To no avail. The decision umistakably holds that witnesses are not to be heard with respect to questions of law, such as e.g. the definition of the skilled person, the issue of technicality (see below), or the skilled person’s understanding of certain features; see ¶21:

Vorab ist festzuhalten, dass Zeugen zu Tatsachen befragt werden, nicht zu Rechtsfragen.

Further, the decision holds that the procedure of taking evidence (Art. 150 et seqq. CPC) cannot replace lacking allegations or supplement incomplete allegations. Rather, appropriate allegations are the prerequisite for the taking of evidence (see ¶20, with reference to 4A_338/2017, ¶2.1):

Das Beweisverfahren dient […] nicht dazu, fehlende Behauptungen zu ersetzen oder zu ergänzen, sondern setzt solche vielmehr voraus.

The decision holds that defendant’s reliance on Mr Frank DREWS as a witness did not meet this standard. Accordingly, the witness had not been heard.

The FPC follows the EPO’s ‘Comvik’-approach

In EPO practice, a so-called mixed invention that comprises both technical and non-technical features is assessed according to the ‘COMVIK’ approach, in accordance with T 641/00 (Two identities / COMVIK). In a nutshell, an invention is not excluded from patentability under Art. 52(1), (2) EPC when it comprises at least one technical feature. This threshold is easily met; mere presence of e.g. a computer, a display, etc. is sufficient to pass the test. However, those features that do not have (or contribute to) a non-obvious technical effect cannot render the claimed subject-matter inventive.

Note that the IPI applies a different test, according to the IPI Guidelines for Examination (January 2019, p. 16):

This may well give different results than the EPO's COMVIK-approach.

The IPI applies a ‘holistic’ approach (‘Ganzheitsbetrachtung’) in the assessment of technicality of the claimed subject-matter. In contrast to the EPO’s ‘COMVIK’ approach (T 641/00), this means that e.g. a claim directed to e.g. an method for analysis of certain items that is carried out with the help of a computer may well be refused by the IPI for lack of technicality (if it can e.g. be used for both technical and non-technical purposes), while the mandatory use of a computer would establish technicality at the EPO in any event. Whether or not the method would ultimately be considered inventive or not by the EPO, that’s of course a different story.

The decision holds that the FPC will apply the ‘COMVIK’-approach, and it is noted in passing that it will also do so for Swiss national patents; see ¶ 46:

Not only for European patents, but also for Swiss national patents.

But what does the IPI’s ‘holistic’ approach actually imply? Here is what the Guidelines say:

In brief, the IPI takes the following into consideration in the assessment of whether or not an invention is 'technical':
(i) The _problem_ to be solved;
(ii) the _means_ for solving the problem;
(iii) the _effects achieved with the solution of the problem; and
(iv) the necessity of _technical considerations_ in order to arrive at the invention.

Being trained as a European patent attorney, I had always felt that the ‘holistic’ approach was examination on the merits in disguise. In order to properly assess these criteria, one necessarily has to consider the invention as claimed in light of the prior art — what in my opinion is not sth the IPI should currently be doing (but maybe in the future; see this Blog here). I feel that time is ripe to abolish with the ‘holistic’ approach / ‘Ganzheitsbetrachtung’. It appears odd to me to systematically apply two different approaches in prosecution and nullity proceedings, in the mere hope that in the end the overall result re patentability might be the same, i.e. that non-patentable inventions are sorted out in any event, just by a different token.

On a sidenote, the decision discusses the different approaches being taken by Boards of Appeal in the assessment of novelty of mixed inventions; see ¶54. Nowadays, the majority considers all features in the assessment of novelty, irrespective of whether they are technical or not. Some other decisions apply the concept of ‘technical novelty’, i.e. only technical features are considered in the assessment of novelty; see also the discussion in Case Law of the Boards of Appeal, I.D.9.1.3 c), second paragraph. In practice, that only matters when intervening prior art under Art. 54(3) EPC is at stake — which is not the case here. Anyway, the decision rightly holds that consideration of all features in the assessment of novelty would be pragmatic since only the new features would have to be assessed re technicality in the next step; if a feature is not new, it just doesn’t matter whether it is technical or not.

burden of proof for the actual fulfillment of an ambitious technical problem in the assessment of inventive step

The decision raises an interesting question in relation to the assessment of inventive step; see ¶65. Just assume that the patent in suit asserts that an ambitious technical problem is solved by the invention. Later, in civil proceedings and in view of the same prior art as discussed in the patent in suit, the counterparty asserts that this ambitious technical problem is not solved. Now, is the burden of proof on that issue with the patentee or the counterparty?

Who has the burden of proof that an ambitious technical problem is actually solved: The patentee or the opposing party asserting nullity?

That’s a tough question, indeed. The decision avoids to give an answer; the FPC could do so in the case at hand because the invention was held non-obvious even in view of the least ambitious technical problem to be solved.

That’s definitely lawyers’ playground. But in my perception, neither party should benefit from a mere ‘sit back and relax’ mentality in such instances. Assuming there is at least some reasonable indication (in the patent itself or through secondary evidence) that the ambitious technical problem is actually solved, I would see a burden on the counterparty to overturn this circumstantial evidence, with at least the same degree of certainty. It would appear somewhat artificial to me if the full burden of proof would be on the patentee right from the outset. Similarly, according to Art. 178 CPC, the authenticity of a document needs only to be proven when disputed, and when adequate grounds for disputing are given.

No plea OF free state of the art in case of literal infringement

The decision holds that the defendant cannot argue as a plea in defense that the attacked embodiment is free state of the art (or rendered obvious by the free state of the art). This plea effectively is a nullity plea in defense (asserting lack of novelty or inventive step, respectively), and to be examined as such.

Is the argument that an attacked embodiment is free state of the art (or rendered obvious by the free state of the art) admissible as a plea in defense?

With reference to O2013_008 (¶4.6), the decision holds that the plea of free state of the art can only be legitimately raised in order to rebut the assertion of infringement under the DoE, but not in cases of literal infringement.

But … why?

I am not so sure. Does it really have to be so dogmatic?

Assuming a defendant can show that the attacked embodiment is an exact blueprint of what has been described 50 years ago. Undoubtedly, no valid patent that is currently in force can cover the attacked embodiment anymore. Not the patent in suit, and not any other one. Why bother with a detailed feature analysis and all the tedious questions of claim construction in the assessment of nullity? There is just no need for that. One may construe the patent in suit in any way whatsoever: It cannot be valid and at the same time read on the attacked embodiment. In view of procedural economy, it would make perfectly sense to shut the docket based on the plea of free state of the art, in my perception. See e.g. BGE 115 II 491 (¶2b) and F. Blumer in sic! 1/1998, p. 3 et seqq. in this respect, and Eugène Brunner’s critical comments in sic! 4/1998, p. 428-429 (with which I do not concur, for e.g. the reasons outlined above).

Information on downstream commercial customers

The decision holds in ¶86 that the identity of downstream commercial users and the extent to which the infringing products had been passed on to them is not a secret worthy of protection once infringement is established; the interests of the patentee take precedence (Art. 66 lit. b PatA):

Die Identität der gewerblichen Abnehmer und das Ausmass der Weitergabe von patentverletzenden Produkten an sie ist bei nachgewiesener Patentverletzung kein schützenswertes Geheimnis; die Interessen des Patentinhabers gehen vor (Art. 66 lit. b PatG)

This principle had been established in O2013_008 (hn), but the recent decision O2016_012 appears to be at odds with this, at least at the face of it; see O2016_012, ¶102.

The value in dispute of an action by stages

The decision discusses the issue of the value in dispute in an action by stages (see ¶92): Should the value in dispute in patent infringement proceedings be fixed based on the first stage only (i.e. information / accounting and injunctive relief), or should the aggregate (monetary) claim that is subsequently dealt with in the second stage of the proceedings also be taken into account?

The decision opts for the latter. If a complaint is dismissed, this also implies dismissal with respect to monetary claims; it would thus be inconsistent if the value in dispute would be systematically addressed differently only because the outcome of the proceedings is different on the merits. However, the court fee is fixed to only CHF 70’000,– which is even less than what the tariff at the lower end would allow for in Art. 1(1) CostR-PatC in view of a value in dispute of CHF 4m, in consideration of the fact that it is only a partial decision that not yet deals with the monetary claims.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2017_007 | Decision of 1 November 2019 | ‘Beatmungsgerät’

Hamilton Medical AG
./.
imtmedical AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Philipp RÜFENACHT
    • Dr. Andri HESS
    • Dr. Simon HOLZER
    • Christoph MÜLLER

Judge-rapporteur:

    • Dr. Philipp RÜFENACHT

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)

DECISION IN FULL

EP 1 984 805 B1

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