No recusal of the judge-rapporteur — but there still is an elephant in the room …

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Case No. 4A_56/2019 (Supreme Court) | Decision of 27 May 2019 on appeal against O2017_024 (FPC) | Order of 11 December 2018

The Supreme Court had to deal with an appeal against an (unpublished) order issued by the Administrative Commission (AC) of the FPC in case no. O2017_024, by which order the requested recusal of the judge-rapporteur had been denied. Defendant / appellant felt that some statements of the judge-rapporteur at the occasion of the instruction hearing (Art. 226 CPC) gave rise to the appearance of bias. It is important to understand that the instruction hearing at the FPC consists of two parts (Art. 8(4) of the Guidelines on Proceedings before the Federal Patent Court), i.e.:

a)   The court delegation discusses with the parties the matter at issue, asks questions where the party submissions are unclear, and provides substantiation advice. Evidence may also be accepted. This first part is transcribed.

b)   The court delegation explains its preliminary assessment of the matter in dispute off the record and attempts to bring about a settlement between the parties. The parties and the Court are prohibited from subsequently invoking any submissions made during this second part of the hearing; it serves exclusively to bring about a settlement.

Notably, the appellant did not object to the formal part a) of the instruction hearing (where the judicial duty to ask and inform applies), but rather to the informal part b) which serves exclusively to bring about a settlement.

After having read the first lines of the decision, I so much hoped that this decision would finally help me understand the metes and bounds of the informal part of the instruction hearing, and maybe even the formal part. Unfortunately, it doesn’t. The Supreme Court did not even assess the issue on the merits, but rather dismissed the appeal for formal reasons. What a pitty.

First, the Supreme Court holds that the appellant raised the objection belatedly, i.e. only 24 days after the instruction hearing. The Supreme Court did not buy into the argument that the procedural violations had only been noticed well after the instruction hearing (¶4.3):

It is not convincing that the appellant has only gained knowledge of the (alleged) ground for recusal until two weeks after the hearing, since the appellant does not object to a single error in the conduct of the proceedings, which may not be discernible at first sight, but «a large number of inadmissible statements by the judge-rapporteur», which «substantiated a serious violation of the duties of the judge by the disregard of fundamental principles of civil procedure.»

Further, the appellant criticised a statement made by the judge-rapporteur in his opinion of 26 September 2018, which the appellant considered would in itself give rise to the appearance of bias, and which should have been taken into account by the FPC’s AC ex officio. This statement is literally recited in the decision in ¶5.2, as follows (jump here for an English translation):

Die Instruktionsverhandlung dient gemäss Art. 226 ZPO unter anderem der freien Erörterung des Streitgegenstandes und dem Versuch einer Einigung. Um eine Einigung zu ermöglichen, nimmt der Instruktionsrichter eine vorläufige und unpräjudizielle Einschätzung der Sach- und Rechtslage vor. Dass es sich dabei um eine vorläufige Einschätzung handelt, die sich im Laufe des weiteren Verfahrens ändern kann und von den weiteren Mitgliedern des Spruchkörpers nicht geteilt werden muss, wird den Parteien klar kommuniziert. Die genannten Zwecke der Instruktionsverhandlung können nur erreicht werden, wenn sich der Instruktionsrichter – im Rahmen des von den Parteivorträgen umrissenen Streitgegenstandes – frei äussern kann. Eine strikte Bindung an einzelne Tatsachenbehauptungen ist in diesem frühen Verfahrensstadium, in dem das Behauptungsverfahren noch nicht abgeschlossen ist, nicht möglich und nicht zielführend.

Inofficially translated:

According to Art. 226 CPC, the instruction hearing serves, among other things, the free discussion of the subject matter in dispute and the attempt to reach an agreement. In order to enable an agreement to be reached, the judge-rapporteur makes a preliminary and unprejudiced assessment of the factual and legal situation. The parties are clearly informed that this is a preliminary assessment, which may change in the course of further proceedings and need not be shared by the other members of the panel. The stated purposes of the instruction hearing can only be achieved if the judge-rapporteur can freely express himself within the framework of the subject matter of the dispute outlined by the party submissions. A strict link to individual factual assertions is not possible and not expedient at this early stage of the proceedings, at which the assertion proceedings have not yet been concluded.

The FPC’s AC did not see any reason for recusal in the above statements. But still, and ‘for the sake of completeness’, the FPC’s AC addressed the opinion of the judge-rapporteur and concluded — in general terms, detached from the case at hand — that ‘there was no basis for supplementing the relevant alleged facts by the judge, neither outside nor within settlement discussions.’

[…] keine Grundlage für eine Ergänzung des relevanten behaupteten Sachverhalts durch den Richter, weder ausserhalb noch innerhalb von Vergleichsgesprächen.

A judge-rapporteur, navigating on difficult territory

I am not fully sure what is meant with ‘no basis’. If this is to be understood in a sense that supplementing the alleged facts (within or beyond ‘the framework of the subject matter of the dispute outlined by the party submissions’) is a clear no-go, then I could not agree more. It may be a tough exercise for a judge-rapporteur to stick to the facts as they have been asserted after only a single exchange of briefs, in particular when the forthcoming further assertions are all too obvious. But still, parties sometimes just do not make even the most obvious next assertion (intentionally or unintentionally), and any helping hand for a potentially negligent or ignorant party would be to the disadvantage of the respective other party.

But in the matter at hand, the Supreme Court did not need to deal with this issue on the merits. The decision holds that the appellant’s criticism misses the point: Procedural errors (as well as a decision that is potentially wrong on the merits) cannot in themselves justify the appearance of bias. The situation is different only if there are particularly blatant or repeated errors which must be assessed as a serious violation of the duties of the judge. Consequently, the request for recusal of a judge cannot normally serve to assess alleged procedural or other errors of the judge. Such complaints must be raised on appeal; see 4A_149/2018 in ¶5.2. Accordingly, the Supreme Court did expressly not assess to what extent the statements made by the judge-rapporteur — in particular the last two sentences — are in conformity with the law. The only decisive point is, in the Supreme Court’s view, that this statement was not a particularly blatant error of such a kind that would make the rejected judge appear almost biased. Thus, also appellant’s second criticism failed.

Now, what can be learned from this decision?

Unfortunately, not too much for the time being, because the Supreme Court took a formal shortcut. But, in my perception, there is some handwriting on the wall, isnt’t it? And, maybe, we will see the appellant’s second criticism being raised again on appeal if this case moves on and the appellant / defendant is unsuccessful in first instance proceedings on the merits.

Reported by Martin WILMING


Case No. 4A_56/2019 (Supreme Court) | Decision of 27 May 2019 on appeal against O2017_024 (FPC) | Order of 11 December 2018

n/a (appellant / defendant)
n/a (respondent / plaintiff)

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Fabienne HOHL
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  • Dr. Christian KÖLZ

Representative(s) of Appellant:

  • Dr. Rudolf A. RENTSCH (IPrime)

Representative(s) of Respondent:

  • Dr. Simon HOLZER (MLL)

on appeal against O2017_024 (FPC) | Order of 11 December 2018
Case no.: 4A_56/2019
Decision of: 27 May 2019
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Case no.: O2017_024
Order of: 11 December 2018

Upublished; not available yet.


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Friendship on Facebook is no ground for recusal of a judge per se

Supreme Court
Case No. 5A_701/2017 | Decision of 14 May 2018 | ‘Friends on Facebook’

This decision of the Supeme Court does not concern a patent case, but it clarifies what might constitute a ground for recusal of a judge in general.

Thumbs up?

Judges are not living in an ivory tower. They even use Facebook and have ‘friends’ there. Now, is it a ground for recusal if a party is a Facebook ‘friend’ of a judge?

Well, the answer is a clear not necessarily, but maybe.

The mere fact that a judge is a Facebook ‘friend’ of a party to the proceedings does not in itself constitute a ground for recusal. Without additional information, it cannot be concluded that there indeed is a friendly relationship that could give rise to the appearance of a judge being biased.

Every person is entitled to have his case decided by an impartial, unbiased and impartial judge. It is not decisive whether or not a judge is actually biased. Even the appearance of bias or the danger of bias is to be avoided. In the case of friendly connections, this requires a certain closeness that goes beyond a mere acquaintance or a ‘dozy relationship’.

Bei freundschaftlichen Verbindungen ist dazu eine gewisse Nähe erforderlich, die über eine blosse Bekanntschaft oder ein ‘Duzverhältnis’ hinausgeht. Eine ‘Freundschaft’ auf Facebook weist noch nicht auf freundschaftliche Beziehungen im traditionellen Sinn hin.

Who’s out there?

The decision holds that a ‘friendship’ on Facebook does not yet indicate friendly relationships in the traditional sense. Mutual affection or sympathy is not necessary to establish a ‘Facebook friendship’. ‘Facebook friends’ may well include people with whom one maintains regular contact in real life; but they can also include people one would only qualify as a simple acquaintance or as a person with whom one would only have a common interest in a social network on a particular subject.

Recent studies have also shown that a number of more than 150 ‘Facebook friends’ typically include people with whom one does not have any contact or one does not even know. Without additional information, one cannot conclude from  a ‘Facebook friendship’ that a friendly relationship actually exists which could lead to the appearance of bias.

In short:
A ‘Facebook friend’ is not necessarily a friend.

Reported by Martin WILMING

The FPC’s Guidelines on Independence can be found here. Grounds for recusal of judges are governed by Art. 3-5.


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Address for service is no ground for recusal (requested too late anyhow)

Case No. O2014_013 ¦ Order of the Adminstrative Board of Judges of 09 June 2016 ¦ “Ausstandsbegehren”


Art. 49 CPC; forfeiture of the right to request recusal; substantiation of internal constellation of a group of companies; acting as address of service for the IPI is not a ground of recusal.

‘As soon as it has become aware’ has to be interpreted strictly; in no case the deadline can be longer than 10 days (r. 5, 6).

If the recusal is reasoned based on the relationship between companies of a group of companies, this relationship must be substantiated in detail (r. 7).

The fact that the judge or the judge’s law firm is acting as a purely administrative address of service for the Swiss Federal Institute of Intellectual Property (IPI) is no ground of recusal (r. 7).

I have already reported on the interim measures in this matter on this Blog here and here. Now, we get a glimpse of what is going on in ordinary proceedings between Gilead Pharmasset LLC and AbbVie, Inc. Actually, the interim assessment of the reporting judge is awaited as the next procedural step.

The parties had been informed already on 05 March 2015 that Dr. Tobias BREMI had been appointed as reporting judge. With notification of 16 March 2016, the parties have been informed that the reporting judge will now establish his interim assessment. Only in reply to this notification, the defendant has informed the court that judge BREMI’s firm, Isler & Pedrazzini AG, represents the Swiss parts of the patents EP 2 079 726 (Gilead Connecticut, Inc.), EP 2 297 105 (Gilead Connecticut, Inc. and Genentech, Inc.), EP 2 611 790 (Gilead Connecticut, Inc. and Genentech, Inc.) and EP 2 611 798 (Gilead Connecticut, Inc. and Genentech, Inc). With reference to the decision BGE 139 III 433 of the Supreme Court (reported here), the defendant requested that judge BREMI shall recuse.

In first place, the Administrative Board of Judges assessed the timeliness of the request. A party that wishes to challenge a judge must file the corresponding request as soon as it has become aware of the reason for recusal; Art. 49 CPC. The FPC now held that any delay of more than 10 days is too late. Decisive is the point of time when the party has become aware or should have become aware when handling the matter with all due care. Subsequent to BGE 139 III 433, the FPC has provided detailed guidelines on how to search for potential grounds for recusal, hyperlinked on the website of the FPC where all judges are listed together with their employer in private practice or industry. A brief database search as outlined in these guidelines would immediately have resulted in at least one of the alleged patents. The FPC leaves no doubt that parties are expected to carry out this check immediately when being notified of the involvement of a certain judge:

Die Vornahme solcher Abfragen ist […] bei pflichtgemässer Aufmerksamkeit jeweils durchzuführen, sobald das Bundespatentgericht die Gerichtsbesetzung bekannt gibt.

Therefore, the order holds that the request clearly is not timely filed and any right to request recusal is forfeited.

But even if the request for recusal would have to be dealt with ex officio (as suggested in some literature), the result would be the same. Note that the plaintiff is Gilead Pharmasset, LLC, not Gilead Connecticut, Inc. No schematic approach in the assessment of an appearance of bias can be applied when connected undertakings are involved; see BGE 139 III 433, r. 2.1.6. It rather depends on the actual circumstances. It needs to be individually assessed whether the indirect relationship (via a connected undertaking) is too close, i.e. comparable to a direct relationship. The FPC makes clear that the mere representation before the Swiss patent office (IPI) is — at least in the present matter — limited to provide a Swiss address for service in case of notifications of loss of rights. It is however unclear whether or not any work on the merits of a case would ever be conducted. This cannot establish a ground of recusal right from the outset, unless specific circumstances indicate the contrary (r. 7):

[A]us der blossen Existenz einer solchen Vertretung, ohne Kenntnis der weiteren Umstände, [kann] nicht auf eine Beziehung zur betreffenden Partei geschlossen werden, die einen Ausstandsgrund darstellen könnte.

Endlich kommt dazu, dass sich im vorliegenden Fall die Vertretertätigkeit darauf beschränkt, als administrative Zustelladresse eine allfällige Rechtsverlustmitteilung des Amtes entgegenzunehmen und – unbearbeitet – weiterzuleiten. Ob die Kanzlei danach mit einer aktiven Vertretertätigkeit beauftragt wird, welche dann auch in Rechnung gestellt werden könnte, und welche einen Ausstandsgrund darstellen würde, ist völlig offen. Aber in dieser Situation als potentieller Beauftragter befindet sich eine Patentanwalts- (und auch Rechtsanwalts-) Kanzlei gegenüber allen potentiellen Klienten, sprich gegenüber allen im Patentbereich tätigen Gesellschaften oder Personen, welche als Auftraggeber in Frage kommen. Das kann von vornherein keinen Ausstandsgrund darstellen.

Reported by Martin WILMING


Case No. O2014_013 ¦ Order of the Adminstrative Board of Judges of 09 June 2016 ¦ “Ausstandsbegehren”

Gilead Pharmasset LLC ./. AbbVie Inc.


  • Request for recusal

Composition of the Administrative Board of Judges:

  • Dr. Dieter BRÄNDLE
  • Dr. Frank SCHNYDER
  • Dr. Ralph SCHLOSSER

Court Clerk:


Representative(s) of Plaintiff:

Representative(s) of Defendant:


Download (PDF, 256KB)

The independence of judges — and how to check it

Having briefly commented on the revised Guidelines on Independence only yesterday, I have now taken note of some further amendments on the website of the FPC; please see the screenshot below:

Website FPC, screenshot of 06 January 2014

First, the companies for which the judges work (besides their assignment at the FPC) are now explicitly indicated for each and every judge. Since Art. 4 of the revised Guidelines now extends to these companies, parties are enabled to more easily investigate the independence of the judges. In order to further enable parties to do such checks, the FPC has compiled a leaflet on how to use official patent, trademark and design databases (embedded hereinbelow). This leaflet is accessible via a link atop the list of judges (see above screenshot).

Download (PDF, 31KB)

Reported by Martin WILMING

Revised Guidelines on Independence effective as of 1 January 2015

As already indicated earlier, the decision 4A_142/2013 of the Supreme Court prompted changes to the Guidelines on Independence. The new Guidelines have been published recently and are effective as of 01 January 2015.

Please find below a tracked-changes version that I have compiled based on the English translations of the former Guidelines and the revised Guidelines. Note that these English translations are provided by the FPC for information purposes only; they have no legal force. Anyhow, besides some editorial amendments, you will readily note the — in my personal opinion — most important changes:

  • Expectedly, Art. 4 now also extends to the company for which the court member works.
  • Art. 5 has been deleted. Former Art. 5 held that purely administrative activities for achieving or maintaining the validity of the Swiss part of a European patent of one of the parties (not the patent in dispute) was not deemed to constitute a ground for recusal. Now, such activities are included in the list of special grounds for recusal (see Art. 4, lit. g).

It will be interesting to see how the FPC will actually apply these revised Guidelines — and how they stand the test of daily grind.

Download (PDF, 204KB)

I have also compiled a tracked-changes version based on the official German versions of the former and the revised Guidelines:

Download (PDF, 205KB)

Martin Wilming

Requests for legal aid and recusal of the President of the FPC dismissed

Case No. S2013_009 ¦ Decision of 29 January 2014 ¦ “Ausstand wegen Vorbefassung”

The plaintiff filed a (so-called) draft of a writ for patent infringement on 08 October 2013, together with a request for legal aid (Art. 117 ff CPC). Moreover, he requested that both permanent judges, Dr. Dieter BRÄNDLE and Dr. Tobias BREMI, were to recuse.

The plaintiff’s rationale of the request for recusal of Dr. Tobias BREMI is not readily apparent from the decision, but since the President of the FPC will have to decide on the request for legal aid as a single judge, there is no legitimate interest in his recusal anyhow (Art. 23(1) lit. c PCA; Art. 59(2) lit. a CPC).

On the other hand, the request for recusal of Dr. Dieter BRÄNDLE was based on his earlier involement in a similar case, as follows:

The plaintiff had already sued the Swiss Confederation and three companies for patent infringement on 08 July 2002 at the Commercial Court of the canton of Zurich. He had also requested legal aid then. This request was dismissed and the plaintiff was obliged to provide a procedural deposit of CHF 800’000,–. The plaintiff then exhausted all remedies and a run through various levels of review began. This first decision was lifted by the Court of Cassation of the canton of Zurich on 19 January 2005 and the case was remitted back to the Commercial Court to take the suit’s chances of success into due consideration (Kass.-Nr. AA040107/U/cap), following a decision of the Supreme Court of 01 July 2004 (4P.129/2004). The defendants filed their answers, and subsequently the parties were summoned to settlement negotiations that took place on 11 January 2007. The parties were served with the opinion of the reporting judge on 05 October 2007. With order of 23 August 2008, the request for legal aid was again dismissed: The reporting judge (not Dr. Dieter BRÄNDLE) concluded that the invoked patents were not valid for lack of an inventive step. The plaintiff did not come up with any promising claim amendment that could have resulted in valid claims. Thus, the request for legal aid was dismissed and the Commercial Court fixed the procedural deposit to CHF 1.1m (HG020259); Dr. Dieter BRÄNDLE was acting as substitute chief justice (Ersatzoberrichter) / rapporteur (Instruktionrichter) in this matter at the Commercial Court Zurich. The Court of Cassation dismissed the plaintiff’s nullity appeal with decision of 03 March 2010 (Kass.-Nr. AA080152/U/mum). An appeal of the plaintiff against this decision was dismissed by the Supreme Court on 10 January 2011 (4A_189/2010). A subsequent request for review was dismissed by the Supreme Court on 21 March 2011, either (4F_4/2011). The plaintiff then did not provide the procedural deposit and the Commercial Court Zurich consequently did not consider the case. A court fee of CHF 250’000,– and compensation of the counterparties of (in total) CHF 600’000,– was imposed on the plaintiff. The plaintiff’s appeal against this decision was not considered by the Supreme Court (4A_377/2011; decision of 11 October 2011). Further requests for review were dismissed / written off by the Supreme Court (4F_11/2013 and 4F_12/2013; 4F_1/2014).

From the aforementioned decisions and the patents identified therein, it is evident that the plaintiff is Jean-Jacques WAGNER; the writ of 2002 was based on EP 660 960 B1 and CH 687 352 H1 (no pdf available). A partial surrender of the European patent was published on 31 July 2013 as CH/EP 0 660 960 H3. Initially granted and published as CH 687 352 A5 on 15 November 1996, two declarations of partial surrender of the national Swiss patent were published later on: CH 687 352 C1 (published 15 May 2001); CH 687 352 C9 (published 13 July 2001), a correction of the aformentioned C1 document; and CH 687 352 C3 (published on 31 July 2013). Note that the Swiss national patent has already lapsed on 06 September 2012 (see Swissreg) and the European patent lapsed on 06 September 2013 (see Swissreg). The patents pertain to a

Process and device for detecting, recording and selectively evaluating operational and/or drinving data of a vehicle.

In general terms, the plaintiff alleged that these patents were infringed by the method and system carried out / installed in Switzerland for collecting the heavy vehicle charges. The Federal Department of Finance published a press release already back in the year 2000 when this patent dispute came up for the first time. An annotated version of this press release with comments of Jean-Jacques WAGNER is also available online.

The decision of the Administrative Board of Judges

It is up to a plenum of the Administrative Board of Judges to decide on requests for recusal (Art. 4(3) PR-PatC). In view of the request for recusal, the Adminstrative Board of Judges was established in accordance with Art. 4 PR-PatC.

Art. 28 PatCA is not applicable in the present matter, since the request for recusal pertains to permanent judges. Instead, Art. 27 PatCA in conjunction with Art. 47 ff. CPC applies. Lead decisions of the Supreme Court with respect to the potential appearance of bias are inter alia 2C_219/2013 (r. 2.1), 4A_142/2013 (r. 2.1.2), 4F_11/2013 (r. 1) and BGE 139 III 120 (r. 3.2.1, S. 124).

The decision is clear-cut:

As set forth explicitly in Art. 47(2) lit. a CPC, involvement in a decision on legal aid is in itself no reason for recusal. No supporting indications of a potential appearance of bias could be identified, either: Inasmuch as the grounds for a potential appearance of bias pertain to the prior proceedings outlined above, the plaintiff should have relied on those grounds already in that case. The present proceedings are no (further) appeal stage for the prior case. Moreover, it is no ground for recusal that the plaintiff is not satisfied with the outcome of the earlier proceedings.

[…] führt er Rügen an, die er im Rechtsmittelverfahren hätte vorbringen müssen. Der Umstand, dass dem Kläger der Verlauf und das Ergebnis eines solchen Verfahrens nicht genehm ist, bildet für sich allein keinen Grund für den Ausstand einer Gerichtsperson, die in jenem Verfahren mitgewirkt hat.

Moreover, the subject-matter has obviously changed; this is also acknowledged by the plaintiff: The patents have been partially surrendered in the meantime, and the plaintiff pre-announced to come up with even further limitations.

Consequently, the Administrative Board of Judges dismissed the request for recusal of Dr. Dieter BRÄNDLE. The request for legal aid was also dismissed since the requests on the merits of the case seem devoid of any chances of success (Art. 117 lit. b CPC), with reference to the prior decision 4F_11/2013 and 4F_12/2013 (r. 5) of the Supreme Court. A decision on the costs will be taken together with the final decision on the merits.

Of course, this decision is appealable to the Supreme Court: Play it again, Sam?

Reported by Martin WILMING


Case No. S2013_009 ¦ Decision of 29 January 2014 ¦ “Ausstand wegen Vorbefassung”

(not identified) ./. (not identified)


  • Infringement / Recusal

Composition of the Administrative Board of Judges:

  • Frank SCHNYDER
  • Dr. Thomas LEGLER
  • Dr. Ralph SCHLOSSER
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant(s):

  • (not identified)

Full text of the decision right here:

Download (PDF, 34KB)

Decision of the Supreme Court on recusal of a non-permanent judge

Case No. (not identified) ¦ Decision of 13 February 2013 (FPC, unpublished)
Case No. 4A_142/2013 ¦ Decision of 27 August 2013 (Supreme Court) ¦ “Ablehnungsbegehren”

For the sake of good order, please note that colleagues of the authors at Hepp Wenger Ryffel are advising and representing clients in the field of the subject matter at stake.

Expectedly, the ongoing legal disputes on coffee capsules have reached the FPC — and the Supreme Court. The following patents are in suit:

However, the present decision of the Supreme Court does not pertain to the merits of the case yet; it only clarifies a question of recusal of a member of the board of the FPC.

Linizo Lungo Capsule (© Nestlé Nespresso SA)
Linizo Lungo capsule (illustrative)
© Nestlé Nespresso SA

The potential appearance of bias of judges is undoubtedly a matter of an ongoing debate amongst practitioners. How comes, you ask? Well, the FPC has been set up with only two permanent judges which are supported by a pool of 36 non-permanent judges (11 with a background in law, 25 with a technical background). Most of the non-permanent judges are attorneys-at-law and patent attorneys, either in private practise or in industry. A non-permanent judge in one case may also act as representative / assisting in patent matters in other cases. Evidently, there are pros and cons of this setup: On the one hand, this makes a lot of technical and legal competence available for the FPC to recruit for a specific case. Mostly, the FPC is thus in a position to handle cases without costly and time-consuming court opinions to be obtained from external experts. On the other hand, it is an intrinsic risk that judges might need to recuse in view of a conflict of interests. Of course, it must not be forgotten that the judges have sworn an oath (or taken a vow) pertaining to fulfilling their duties conscientiously; cf. Art. 15 PatCA. Nevertheless, it was only a matter of time that case-law would figure out the boundaries.

1.  Factual situation

In the present matter, the parties had already been summoned to an oral hearing when they were informed by the president that TSWpat, i.e. the firm of the non-permanent judge Peter RIGLING who was appointed reporting judge in the present matter, meanwhile represents a sister company of one of the defendants in the prosecution of a single trademark application in Switzerland. The president of the FPC had informed the parties that this did not constitute a ground of recusal in the sense of Art. 3 or 4 of the Guidelines on Independence. However, the plaintiffs requested that judge Peter RIGLING shall recuse himself or shall be recused ex officio.

The relationship of parties and persons involved in the present matter is summarized in the following chart (and will become even clearer hereinbelow). The parties to the proceedings are boxed in red; connected undertakings to parties to the proceedings are boxed in green; click image to enlarge:


2.  What was argued

Judge Peter RIGLING outlined in writing, why — in his point of view — there was no reason for him to recuse. First, the affiliated (sister) company is not a party to the present proceedings. Moreover, the subject-matter of the present proceedings has no points of contact with the trademark prosecution handled by his firm. Finally, the trademark matter handled by his firm is not associated with significant income.

Defendants refrained from providing any comments.

Plaintiffs argued that defendant Denner belongs to the Migros group of companies, as well as the applicant of the trademark application handled by the firm of judge Peter RIGLING. Not only Denner, but also Migros sells coffee capsules which are compatible with Nespresso® machines. Consequently, the plaintiffs had sued Migros for patent infringement, too. These proceedings are also pending (no publications on this parallel case are available to date). In both cases, inter alia the interpretation and infringement of one and the same patent is at stake (EP 1 646 305 B1; cf. the EPO Patent Register and Swissreg for more details). To the extent of these similarities, the outcome of the present case will prejudice the proceedings against Migros, in the plaintiffs’ view.

Plaintiffs further argued that Migros is not only proprietor of Denner, but also handles Denner’s intellectual property matters, such as e.g. the administration of trademarks. Plaintiffs also presumed that a representative of Migros would have taken part in the oral hearing. At that time, the parties had already informed the FPC by Email about the persons attending the scheduled hearing, but the FPC did not share this information with the respective other parties.

3.  Decision of the FPC

By now, the decision of the FPC is not published. From citations contained in the (surprisingly unredacted) decision of the Supreme Court, the following conclusions can be drawn with respect to the reasoning of the underlying decision of the FPC.

The FPC relied on Art. 28 PatCA (considering it as lex specialis to Art. 47 CPC). According to this provision, a judge has to recuse in proceedings where a member of the judge’s law firm or patent law firm or employer represents one of the parties. This is not the case here, since Migros France is not a party to the present proceedings.  With reference to Art. 47 CPC, the FPC held that there are no special circumstances that might point to a potential bias of the objected judge. The whole setup of the FPC hinges on the assumption that the non-permanent judges are not led by considerations like those brought forward by the plaintiff; there is thus no room left for speculations in this respect.

Das System des Bundespatentgerichts […] stehe und falle mit der Annahme, dass die nebenamtlichen Richter sich nicht von solchen Überlegungen leiten liessen. Für Vermutungen in der von den Klägerinnen geäusserten Art bestehe deshalb kein Raum, […].

The FPC thus dismissed the plaintiffs’ request for recusal of judge Peter RIGLING.

4.  Decision of the Supreme Court

First, the Supreme Court emphasizes that any person whose case falls to be judicially decided has the right to have the case heard by a legally constituted, competent, independent and impartial court (Art. 30(1) Federal Constitution of the Swiss Confederation). This constitutional guarantee cannot justify a differentiation between permanent and non-permanent judges involved (r. 2.1.3).

An appearance of bias of a judge may not only arise when a judge represents or has recently represented a party to the proceedings, but also in case of representation of a counterparty of a party to the proceedings at stake (cf. BGE 135 I 14, r. 4.1-4.3, confirmed in BGE 138 I 406, r. 5.3-5.4; BGE 139 III 120, r. 3.2.1); see r. 2.1.4.

The same reasoning holds true when not the objected judge himself but rather a colleague of the same law firm is engaged in either one of the attorney-client relationships outlined above (cf. r. 2.1.5 with further reference to BGE 138 I 406, r. 5.3 and 4A_256/2010, r. 2.5).

The situation can get (and got here!) even more complicated when connected undertakings are involved. The Supreme Court explicitly holds that a schematic approach in the assessment of an appearance of bias is not applicable in such cases (r. 2.1.6).

Angesichts der Vielfalt möglicher Verbindungen zwischen verschiedenen Gesellschaften wäre ein streng schematisches Vorgehen verfehlt: Weder kann ohne Weiteres von der Befangenheit des nebenamtlichen Richters ausgegangen werden, wenn ein offenes Mandatsverhältnis zu einer mit der Prozesspartei irgendwie verbundenen Konzerngesellschaft besteht, noch wäre es im Hinblick auf den massgebenden Gesichtspunkt des Anscheins der Befangenheit bei objektiver Betrachtung angebracht, unbesehen der Konzernwirklichkeit ausschliesslich auf die rechtliche Unabhängigkeit der Verfahrenspartei abzustellen.

It rather depends on the actual circumstances. It needs to be individually assessed whether the indirect relationship (via a connected undertaking) is too close, i.e. comparable to a direct relationship:

Vielmehr ist unter Berücksichtigung der konkreten Umstände zu beurteilen, ob das offene Mandatsverhältnis zwischen dem nebenamtlichen Richter bzw. seiner Kanzlei und einer Konzerngesellschaft mit einer vergleichbaren Nähe zur mit dieser verbundenen Verfahrenspartei einhergeht.

In this respect, it is irrelevant whether such assessment is cumbersome or not.

Entgegen dem, was die Vorinstanz anzunehmen scheint, können praktische Schwierigkeiten bei der Beurteilung von Ausstandsgründen oder der damit verbundene Aufwand nicht dazu führen, bestimmte Beziehungen – wie etwa ein Mandatsverhältnis zu einer verbundenen Gesellschaft – bei der Beurteilung von Ausstandsgründen einfach auszublenden.

Moreover, the Supreme Court holds that Art. 28 PatCA is not a lex specialis to the CPC in a general sense. Art. 28 PatCA explicitly deals with the situation where a member of the judge’s law firm or patent law firm or employer represents one of the parties. This was not the case here. There is no room for an argumentum e contrario based on Art. 28 PatCA, i.e. that only the specific situation governed by Art. 28 PatCA might constitute a reason of recusal; cf. r. 2.2.

Finally, the Supreme Court states that the plaintiff had the right to consult the case files and to obtain copies thereof; cf. Art. 53(2) CPC. This also pertains to the Email communication prior to the scheduled hearing (cf. Section 2, above). Apparently, there is no conflict with overriding public or private interests. In the said Email, the head of the legal department of the Migros-Genossenschafts-Bund (MGB) was announced to be present at the hearing, with authorization of Denner AG. The Supreme Court thus holds that it was evident for the judges that Migros has an immediate interest in the outcome of the present proceedings. Consequently, it cannot be decisive whether Migros itself is formally party to the proceedings or not.

Aus dem fraglichen E-Mail vom 25. September 2012 geht hervor, dass auf Seiten der Beschwerdegegnerinnen die Leiterin Rechtsabteilung des Migros-Genossenschafts-Bunds an der vom Bundespatentgericht angesetzten Instruktionsverhandlung mit Vollmacht der Denner AG teilgenommen hätte. Der Migros-Genossenschafts-Bund ist demnach am Ausgang des vorliegenden Patentverletzungsverfahrens – für die Richter erkennbar – unmittelbar interessiert, womit es für die Beurteilung des Ausstandsbegehrens nicht darauf ankommen kann, ob er selbst oder seine Tochtergesellschaft Denner AG formell Verfahrenspartei ist.

Consequently, the Supreme Court approved the appeal and decided to recuse judge Peter RIGLING.

Reported by Martin WILMING and Thorsten MÜLL


Case No. (not identified) ¦ Decision of 13 February 2013 (FPC, unpublished)
Case No. 4A_142/2013 ¦ Decision of 27 August 2013 (Supreme Court) ¦ “Ablehnungsbegehren”

(1.) Société des Produits Nestlé SA
(2.) Nestec SA
(3.) Nestlé Nespresso SA


(1.) Denner AG
(2.) Alice Allison SA


  • Patent infringement / Recusal

Composition of the Board of the FPC:

  • (not identified)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Dr. iur. Thierry CALAME (Lenz & Stähelin)

Full text of the decision of the Supreme Court right here:

Download (PDF, 227KB)

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”


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


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

(not identified) ./. (not identified)


  • 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)