The relevant claims are the independent claim 1 and its dependent claim 7 (emphasis added):
- Claim 1:
- Claim 7:
First, the parties addressed the so-called ‘verbal limitation’ in their pleadings. Apparently, the plaintiff’s prayer for injunctive relief had been directed from the very beginning to an embodiment that was covered by a combination of claims 1 and 7, as well as (of course) also by claim 1 alone. Further, the arguments on infringement also dealt with the feature(s) of claim 7. The jugde-rapporteur’s expert opinion, however, did not deal with validity of the combination of claims 1 and 7. Now, how formally does a plaintiff have to ‘verbally limit’ his patent in consideration of a nullity plea in defense? This case might provide some further clarification on this issue, in addition to S2018_007, ¶20.
As to non-infringement, Bombardier argues that the feature of a ‘modular railway rake formed of at least two vehicles’ was not fulfilled by the IR100. In Bombardier’s view, it must mean something different than just a railway rake formed of at least two vehicles since the term ‘modular’ must have been intentionally put there to have a meaning. Otherwise, it could just have been omitted. Bombardier held that ‘modular’ means that modules can be added or removed on short notice. This is not the case in the IR100 since the software needs to be adapted and the enlargement or reduction of the capacity by adding or removing modules is only possible in a service facility.
And, indeed, the judge rapporteur had apparently held that the feature ‘modular’ when properly construed in view of the description and the figures at least comprises an adaptability of the passenger capacity in a way that he did not see fulfilled in the IR100.
Some further discussion apparently circles around the feature ‘approximately over’ in claim 7; and the term ‘said on- board equipment’ in claim 1.
Further, Bombardier argues for nullity of EP’070 as a plea in defense. We conclude from the pleadings that obviousness is alleged in view of a publication about the first generation DD-IRM (1994) train of the Dutch Railways (referred to as D1; see Wikipedia and, by way of illustration, this picture (embedded from www.railfaneurope.net, i.e. tinyurl.com/y5fmc9y5)) and EP 0 631 917 A1 (referred to as D4).
Some notable side issues:
First, even though judge DUCOR is presiding the panel of judges in this case, judge BREMI was acting as chair at the hearing.
Second, it is always interesting to see how the parties deal with pleading notes. Defendant’s counsel handed over pleading notes to the counterparty and the clerk, but not to the other judges because he
[…] thought that they would prefer to just listen.
Indeed, judge BREMI confirmed that he prefers to just listen to the pleadings.
Third, it turned out around noon that defendant’s counsel had to leave early because he had to catch an international flight that had initially been booked for later, but was cancelled and re-scheduled to an earlier time. Judge BREMI emphasized that summons are not issued with a specific end time and one should not generally expect hearings at the FPC to be finished around noon. Anyway, plaintiff’s counsel co-operated to conclude the hearing fairly soon thereafter.
No settlement discussions took place.
Reported by Susanna RUDER and Martin WILMING
Panel of Judges:
- Dr. Philippe DUCOR
- Dr. Tobias BREMI
- Christophe SAAM
- Agnieszka TABERSKA
Representative(s) of Plaintiff:
- Dr. Thierry CALAME (Lenz & Staehelin)
- Peter LING (Lenz & Staehelin)
- Laurent LABATTE (Bird & Bird), assisting in patent matters
Representative(s) of Defendant:
- Dr. Christian HILTI (Rentsch Partner)
- Moritz MEISSNER (Bombardier (inhouse)), assisting in patent matters
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