Re-shuffling of claims: Scramble gamble

Reading time: 8 minutes

Case No. O2019_012 | Decision of 30 August 2021 | ‘Sägeblätter’

HEADNOTE

Art. 58(1) CPC, Art. 28a PatA; Principle of non ultra petita; limitation of patent claims.

The limitation of patent claims declared for the proceedings («verbal» or «inter partes») has retroactive effect to the date of grant of the patent («ex tunc»).

Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information.

For some background information about the subject-matter at stake, please have a look at the comments concerning earlier summary proceedings between the same parties on this Blog here.

The patent in suit
Bosch’s logo

In brief, the invention is about a tool for use with a hand guided machine with an oscillating drive. The attachment device for the tool is a 3D fitting; see e.g. Fein’s various Starlock® tools:

Fein’s Starlock tools
The alleged infringement
Coram’s logo

The plaintiffs asserted that EP 362 (more precisely, verbally limited by a combination of claim 1 with dependent claims 13, 8, 3, 7 and 4, further limited by some  prefererred features in these claims) is infringed by Coram’s saw blades ‘B-Cut’ with ‘Quick Fixture’:

Grab and rotate the tool, to get an idea of
the 3D-fitting


In prior summary proceedings, interim injunctive relief had been denied for lack of novelty over EP 596 831 A1. At that time, the patent in suit had not yet been verbally limited as in the present proceedings; see this Blog here. But now, the judgment holds that the verbally (very) limited claim is valid and infringed.

The most interesting aspects of the judgment, in my view, are the following:

An unintentional mishap: Correction allowed

Plaintiffs had limited EP 362 inter partes with the reply, inter alia by combining claim 1 with features of claim 13. The relevant feature of claim 13 reads as follows (emphasis added):

[…] the attachment device (12) comprises an even number of driving area regions (2, 2a, 2b), preferably 4 or more, preferably 8 or more, and particularly preferably 16 or more, and further preferably 64 or less, preferably 48 or less, and particularly preferably 32 or less, most preferably 24,

Based thereon, the verbally limited claim demanded for «4 or more and 32 or less» driving area regions. Which is okay. But the mandatory feature of an «even number» got lost. The judgment holds that an interpretation of Plaintiffs’ submission in good faith must lead to the conclusion that the «even number» was not meant to be deleted. In particular, Plaintiffs had submitted in the reply that they limited the claim by defining the exact numbers instead of «only» the even number:

Accordingly, Plaintiffs’ correction to re-include the «even number» even after closure of the file was admitted.

What is a ‘Rounding’?

The claim as asserted demands for ’roundings’ (Abrundungen) between the driving area regions. Apparently, the parties dissented about whether or not that implied a certain threshold of the radius. Accordingly, the FPC had to construe the term. Towards this end, the judgment first points to the common use of the term in material processing, i.e. to chamfer an edge (eine Kante brechen), with reference to Wiktionary (fn 19 in ¶ 19). However, this does not say anything about the extent of chamfering. And the patent itself? It is silent about the effect of the roundings, which is why the judgment holds that a functional interpretation does not help either. Since the patent does not give any further indication about the extent of the rounding, the judgment holds that the term is essentially non-limiting, both in terms of validity and infringement:

Accordingly, the judgment holds that ’roundings’ has to be interpreted broadly: Depending on the viewing scale, any edge that has been manufactured with conventional manufacturing techniques has a certain rounding.

Can it really be as simple as that (even though it was not a decisive issue of the case)? I do agree that the term has to be interpreted broadly. And I can’t know what had been pleaded, but the purpose of a rounding is pretty clear to me, i.e. to protect against injury and to facilitate insertion into other workpieces (see Wikipedia) — which makes perfectly sense to me in the context at hand. In my view, geometries that are not ‘fit for these purposes’ are not ’roundings’ according to the patent.

Does scrambling of claims have any limits?

The verbally limited claim essentially is a combination of claims 24 + 23 + 15 + 14 + 13 + 12 + 10 + 9 + 6 + 5 + 4 + 1 of the application as filed, or claims 13 + 8 + 7 + 4 + 3 + 1 of the patent as granted. On top of that, eight features in those claims were amended e.g. by way of making optional features mandatory, deleting alternatives, etc.

Defendant had argued that the resulting combination of features was not originally disclosed, i.e. that the amendment was unallowable. The court did not buy into that. Rather, the judgment holds that the resulting subject-matter was necessarily (‘notwendigerweise’) originally disclosed — in my reading, simply because it was in the claims, and even though many choices were made; ¶ 26.

That actually sometimes suprises me: A combination of (even many) claims and scrambling of features within the combined claims is hardly ever challenged in terms of allowability under Art. 123(2) EPC. But why is that? Is such a limitation really so different from the choices from multiple lists, which is only possible to very limited extent according to EPO practice? In the end, it’s all about clear and unambiguous disclosure in the application as filed. Does it make a difference whether the disclosure is in the claims as filed, or in the specification? What if the disclosure would not have been in the claims, but in ‘claim-like clauses’ of same content at the end of the specification; would that have made a difference?

Food for thought: To prevent trouble with the (very) strict approach of the EPO re allowability of amendments under Art. 123(2) EPC, let’s assume a Euro-PCT application based on a PCT application with literally all conceivable permutations covered in thousands of claims, with multiple dependencies. Such PCT applications are definitely out there already. Note that there are no claim fees for PCT applications, and the ‘application as filed’ in the regional phase at the EPO is the PCT application as filed (Guidelines B-VIII, 6). Happy life!(?).

Ex tunc effect of the verbal limitation

This is what the hn is all about. A patentee can partially waive the patent (Art. 24 PatA) with erga omnes effect, or he can verbally limit the patent with inter partes effect in civil proceedings. The judgment holds that the patentee’s right to invoke the patent to a limited extent is based on the principle of party disposition (‘Dispositionsmaxime’); ¶ 58.

However, what is the timely effect of a verbal limitation? The judgment holds that in the absence of an explicit legal basis, the court has to decide in accordance with the rule that it would make as a legislator; Art. 1(2) CC. In the court’s view, it suggests itself to assume the same ex tunc effect for a verbal limitation as is codified for a partial waiver; Art. 28a PatA.

Recall of products from commercial customers

The judgment provides some clarification about how a recall of infringing products from commercial customers is to be dealt with. The judgment holds that the recall shall be accompanied with a mentioning of the patent infringement. However, it is not necessary to offer a refund of the purchase price. The latter would amount to a disproportionate encroachment on the private autonomy of contractual relationships.

Reported by Martin WILMING

The decision has been appealed to the Supreme Court.

BIBLIOGRAPHY

Case No. O2019_012 | Decision of 30 August 2021 | ‘Sägeblätter’

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Markus A. MÜLLER
    • Dr. Stefan KOHLER
    • Dr. Philipp RÜFENACHT
    • Dr. Daniel ALDER

Judge-rapporteur:

    • Dr. Markus A. MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

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A hard-to-digest ‘Gugelhupf’

Reading time: 6 minutes

Case No. O2019_012 | Hearing of 1 July 2021

Fein’s logo

The patent at stake is EP 3 027 362 B1 which is jointly owned by C&E Fein GmbH and Robert Bosch GmbH; see the EPO Register and Swissreg for further information.

For some background information about the subject-matter at stake, please have a look at the comments concerning earlier summary proceedings between the same parties on this Blog here.

The patent in suit
Bosch’s logo

In brief, the invention is about a tool which is intended to be used with a machine, in particular a hand guided machine. The machine has a rotational drive, e.g. an oscillating drive.

In simple terms, it’s all about a somewhat special attachment device that transfers a torque from the driving device to the machine tool. It’s a 3D fitting; see e.g. Fein’s various Starlock® tools:

Fein’s Starlock tools
The alleged infringement
Coram’s logo

The plaintiffs assert that EP 362 (more precisely, the combination of independent claim 1 with dependent claims 13, 8, 3, 7 and 4) is infringed by Coram’s saw blades ‘B-Cut’ with ‘Quick Fixture’:

Grab and rotate the tool, to get an idea of
how ‘gugelhupfig’ the attachment device is …

A mishap

I understood from the pleadings that a mishap might have occured when the plaintiffs ‘limited’ EP 362 inter partes with the reply, i.e. when inter alia claim 13 was combined with claim 1. The relevant feature of claim 13 reads as follows (emphasis added):

[…] the attachment device (12) comprises an even number of driving area regions (2, 2a, 2b), preferably 4 or more, preferably 8 or more, and particularly preferably 16 or more, and further preferably 64 or less, preferably 48 or less, and particularly preferably 32 or less, most preferably 24,

It appears that claim 1 as limited inter partes now specifies that the attachment device comprises 4 or more and 32 or less driving area regions — but the feature of ‘an even number of driving regions’ got lost. Or has it been intentionally omitted? This is where the parties dissent. Plaintiffs argued that it cannot have been intended to delete the ‘even number’ when interpreting the request in good faith. In particular, the deletion was obviously irrelevant for validity and infringement. On the contrary, defendant argued that the deletion itself had been made intentionally (in mark-up and recited in the reply, maybe to block work-arounds with an odd number of driving area regions), but plaintiffs simply do not want to bear the consequences:

Möglicherweise wollten die Klägerinnen die Konsequenzen der Streichung nicht; aber die Streichung an sich haben sie gewollt.

allegedly unallowable amendments

Some further amendments were discussed re allowability. I will not discuss them all here, but I found one discussion concerning ranges particularly interesting. I understood from the pleadings that plaintiffs have formed ranges from the separate lists of upper and lower limits given in the claims (most likely former dependent claims 4 and/or 7). The case law of the EPO’s Boards of Appeal typically allows for some re-shuffling of limits from interrelated ranges. But this is not necessarily the case when there are only separate lists of lower limits and upper limits; see e.g. T 1919/11 (r. 2.2.2) where a combination of lower and upper limits from separate lists in two consecutive sentences of the specification was held unallowable.

The President asked the defendant whether they would have expected to infringe the respective claim when they exceeded the lowest value from the first list; defendant answered in the affirmative. Likewise, the President asked whether they would have expected to infringe that claim when they stayed below the highest value from the other list; again, defendant answered in the affirmative.

I am not sure where the President’s intervention was heading to. Does it make a difference if such a disclosure is not in the specification (as in T 1919/11) but rather in the claims? I don’t think it should. Allowability of amendments is all about clear and unambiguous disclosure of a (combination of) feature(s) in the application as filed — no matter, where. (Okay, leaving the abstract aside.) Scope of the claims as filed cannot matter. If it did matter, one could also narrow down an initially claimed genus (e.g. metal) to an initially undisclosed species (e.g. copper): Of course one would have expected to infringe a ‘metal claim’ when using copper. But one would not have expected that copper could specifically be claimed out of the blue, and that one would eventually need to invalidate a claim directed to copper.

Oral proceedings in co-pending opposition proceedings are scheduled for 12 October 2021. The claims currently on file with the EPO were held to be not allowable in the preliminary opinion of the OD. But I understand that these claims are not (yet) the ones that are on file in proceedings at the FPC; the final date for submissions in EPO proceedings is 12 August 2021.

At the end of the hearing, the President mentioned that a decision can be expected only after judicial vacations (i.e. after 15 August 2021) but very likely before 12 October 2021.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2019_012 | Hearing of 1 July 2021

(1) C&E Fein GmbH
(2) Robert Bosch GmbH
./.
Coram Tools GmbH

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Markus A. MÜLLER
    • Dr. Stefan KOHLER
    • Dr. Philipp RÜFENACHT
    • Dr. Daniel ALDER

Judge-rapporteur:

    • Dr. Markus A. MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Andri HESS (Homburger)
    • Hans Rudolf GACHNANG (Gachnang), assisting in patent matters
    • Dr. Niklaus KRÄNZLIN (Gachnang), assisting in patent matters

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