Description established (S2013_008 cont’d)

Case No. S2013_008 ¦ Decision of 30 October 2013 ¦ “Vorsorgliche Beschreibung respektive Beweissicherung”

As discussed in detail in an earlier post, a description had been ordered in this matter without prior hearing of the defendant.

The description was carried out as scheduled on 11 September 2013 and the defendant was served with the protocol in order to comment thereon; Art 77(5) PatA.

In first place, the defendant had requested that the plaintiff shall not be served with the description at all. Defendant argued that the patent had not been limited but rather had its scope shifted to an aliud. Moreover, the defendant alleged an undue extension of subject matter during examination proceedings of the patent in suit. The FPC discussed these issues in detail in the decision but did not agree with defendant.

Moreover, the defendant argued that the patent in suit is not infringed. Measurement data was presented (established 12 September 2013, i.e. the day after the description) to show that the pipes do not possess their final dimension immediately after the allegedly infringed method has been carried out (i.e. a few minutes after the production). However, the FPC did not consider this further data, for the time being. Rather, the FPC relied on an opinion — presumably the opinion provided by a court-appointed expert in nullity proceedings at the BGH in Germany;  Xa ZR 84/05 — in support of the plaintiff’s position.

Die Erfüllung dieses Merkmals in diesem Sinne wird im Gutachten zu einem entsprechenden Muffenautomat der C., welcher bei der D. im Einsatz ist, nach Ansicht des Gerichts, wie bereits in der Entscheidung vom 30. August 2013 festgehalten, glaubhaft gezeigt.

Nevertheless, it was noted that the defendant’s arguments and supporting data would have to be considered in main proceedings (when initiated).

Die weiterführenden neueren Messungen der Beklagten und die zugehörige Argumentation der Nichtverletzung sprengen den Rahmen des vorliegenden Verfahrens, welches lediglich die vorsorgliche Feststellung eines Sachverhalts beinhaltet. Sie werden aber gegebenenfalls im Rahmen eines anschliessenden ordentlichen Verfahrens zu beurteilen sein.

As an auxiliary measure, the defendant had requested that the plaintiff shall only obtain a redacted version of the protocol of the description. 31 items were requested to be blacked out since this information was not decisive for the alleged patent infringement but rather constituted trade secrets. The FPC fully accepted this request and the plaintiff will only be served with an accordingly redacted version of the protocol when the decision has become final.

Court fees (CHF 10’000,–), compensation for the defendant’s legal representation (CHF 8’000,–) and costs incurred by the defendant’s patent attorney (CHF 13’759,20) were charged on the plaintiff. Moreover, defendant’s internal expenditures of CHF 9’105,50 were charged on the plaintiff. The plaintiff may request reimbursement of these costs in main proceedings.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2013_008 ¦ Decision of 30 October 2013 ¦ “Vorsorgliche Beschreibung respektive Beweissicherung”

(not identified) ./. (not identified)

Subject(s):

  • Precautionary taking of evidence; Art. 158 CPC
  • Preliminary measure to secure evidence; Art. 77 PatA
  • Preliminary measure of a precise description; Art. 77 PatA

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • Dr. Andri HESS (Homburger)
  • Christoph FRAEFEL (SBMP), assisting in patent matters

Full text of the decision right here:

Download (PDF, 141KB)

Order to preserve the existing state of affairs lifted (S2013_005 cont’d.)

Case No. S2013_005 ¦ Decision of 17 September 2013 ¦ “Mesures provisionnelles et superprovisionnelles, description, répartition des frais”

The claimant had requested a precise description of an allegedly infringing method at the premises of the defendant according to Art. 77(1) lit. b of the PatA; see the prior post in this matter. The case now took an unexpected turn: The defendant admitted utilization of the allegedly infringing method, but pleads for a right of continued use based on Art. 35 PatA. Consequently, there was no reason for a precise description anymore. In the operative provisions of the decision, the FPC held that the defendant admitted utilization of claim 1 of the patent in suit (from the wording of the claim it’s evidently CH 705 576 B1 of L.A.C. Sàrl-Laboratory for Advanced Coatings Serge Bourquard; see Swissreg), the prior order to preserve the existing state of affairs was lifted and the case was dismissed in accordance with Art. 242 CPC.

The claimant tried to have some of the costs charged on the defendant (Art. 108 CPC), but did not succeed: Costs were charged to the claimant, incl. costs of the defendant for legal representation and assistance of a patent attorney. It remains to be seen whether the claimant will initiate main proceedings for infringement, based on the defendant’s admitted utilization of the method according to the patent in suit. Then, the claimant could also reclaim the costs.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2013_005 ¦ Decision of 17 September 2013 ¦ “Mesures provisionnelles et superprovisionnelles, description, répartition des frais”

(not identified) ./. (not identified)

Subject(s):

  • Interim measures with/without hearing the defendant; description

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Frank SCHNYDER (Judge)
  • Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Full text of the decision right here:

Download (PDF, 113KB)

Shrinkage-proof sockets in pipes: Description ordered without prior notice of the defendant

Case No. S2013_008 ¦ Decision of 30 August 2013 ¦ “Superprovisorisch veranlasste Beschreibung respektive Beweissicherung”

The FPC granted an interim measure of a precise description / precautionary taking evidence without hearing the defendant. Indeed, this case seems to be a paradigm of a situation where an interim measure could gain no track otherwise.

1.  General technical background, problem and solution

The invention pertains to a method of making shrinkage-proof sockets on pipes made from polyolefin.

Plastic pipe with ring seat
Pipe with socket (HMS-Schnallinger)

Polyolefins have a crystalline structure and occur in the solid and liquid state. Upon heating, a part of the original molecules remain solid and the other part are liquefied so that a plastically deformable element is obtained, which can be shaped and deformed. The presence of those molecules which are not liquefied but remain solid gives rise to the so-called memory effect, which means that a shaped element made from a blank tends to return to its initial shape as soon as the molecules which have previously been liquefied and tend to maintain the shaped element in its current shape are heated or undergo a long-time shrinkage so that they permit the corresponding reverse deformation. The memory effect is regarded as the main cause of the shrinking of tubular plastic elements and sockets.

In simple terms, the patent-in-suit (see below) seeks to prevent such shrinkage essentially by use of a second memory effect in the opposite direction. For instance, the end of the tubular element is heated and expanded in known manner to form a socket having a diameter which is 0.5 to 5% in excess of the desired final diameter. Next, the resulting socket is cooled and is subsequently compacted to have a diameter which is smaller than the desired final diameter so that said socket when it has been released by the pressing tool will undergo a partial elastic expansion to have the desired final diameter.

2.  The patent-in-suit

The patent-in-suit is not identified in the decision, but from the claim wording it undoutedly is EP 666 790 B1 (patentee: Helfried Schnallinger). Apparently, the company HMS-Schnallinger manufactures pipes in accordance with a method of the patent-in-suit.

Centralized opposition proceedings at the EPO had been initiated by S.I.C.A in March 1998, but the opposition was withdrawn in October 1999 and opposition proceedings were terminated with maintenance of the patent as granted. See the European Patent Register for any further information in this respect.

The German part of EP 666 790 B1 has been subject to a nullity suit in Germany; cf. the decision 4 Ni 47/03 (EU) of the German Federal Patent Court and the second-instance decision of the Supreme Court, Xa ZR 84/05. The patent was upheld with a slightly amended wording, as follows:

Verfahren zum Herstellen von Formteilen aus im warmen Zustand formbaren Kunststoffen, insbesondere Polyolefinen, wie Polyethylen und Polypropylen, bei dem das Kunststoffmaterial auf bzw. über seine eine bleibende Verformung zulassende Verformungstemperatur erwärmt, in diesem Zustand zu dem Formteil geformt und anschließend unter diese Verformungstemperatur abgekühlt wird, dadurch gekennzeichnet, dass die Formteile im wenigstens auf die Verformungstemperatur erwärmten Zustand zu ein geringes Übermass gegenüber den gewünschten Endmassen aufweisenden Zwischenprodukten geformt und erst nach der Abkühlung unter die Verformungstemperatur in einem materialverdichtenden Pressvorgang auf die gewünschten Endabmessungen gebracht werden unter die gewünschten Endabmessungen gebracht werden, so dass sie nach dem Pressvorgang die gewünschten Endabmessungen aufweisen.

Or, (inofficially) translated based on the English translation of claim 1 of EP 666 790 B1:

A process for the production of mouldings from hot-mouldable plastics, more particularly polyolefins, such as Polyethylene and polypropylene, wherein the plastic material is heated to or above its deformation temperature which permits permanent deformation, is shaped into the moulding in that state, and then cooled below this deformation temperature, characterised in that the mouldings in the state in which they are heated at least to the deformation temperature are shaped into intermediate products which have a slight oversize compared with the required final dimensions, and are not brought to the required final dimensions under the required final dimensions in a material-compressing pressing operation until after cooling below the deformation temperature, such that they exhibit the required final dimensions after the pressing operation.

3.  The alleged infringement

From the decision, it can be concluded that the defendant had publicly offered a belling machine for sale that is operative at the premises of the defendant until end of 2013. However, the plaintiff could not readily establish whether the pipes produced / sold by the defendant are in fact produced by the method of the patent-in-suit. The pressing device needed for the final pressing step could be dismounted within less than one hour, with relative ease. This is why a prior information of the defendant could have baffled the gist of the interim measure.

4.  The decision

In preparation of the request for interim measures, the plaintiff had partially surrendered the patent-in-suit by filing a request to limit claim 1 to the same wording as upheld by the German Supreme Court (see above); Art. 24(1) lit. c PatA. The Federal Institute of Intellectual Property had confirmed that the requested limitation will be published on 30 September 2013. An indication of this limitation will then show up in Swissreg. The FPC thus held that the plaintiff had credibly shown allowability of the limitation of the claim.

Next, it is to be noted that the patent-in-suit lapses already in October 2013. No injunctive relief will thus be granted anymore, for time constraints. However, the FPC held that there is still a legitimate interest of the plaintiff in the requested interim measures, i.e. a declaratory judgment of infringement, as a basis for requesting damages / disgorgement of profits.

The plaintiff had requested the whole arsenal of interim measures available:

  • First, interim measure to secure evidence; Art. 77(1) lit. a PatA.
  • Second, interim measure of a precise description of the allegedly unlawful process; Art. 77(1) lit. b PatA.
  • Third, interim measure of precautionary taking of evidence; Art. 158(1) lit. b CPC.

In any case, the plaintiff had to establish that the evidence as such is at risk, that the evidence could be baffled or that a not easily reparable harm could be caused to the plaintiff (Art. 261(1) lit. b CPC). In view of the situation outlined above (Section 3), the FPC held that the plaintiff had credibly shown this and thus granted interim measures without prior hearing of the defendant.

Practical aspects of the interim measures were ordered essentially similar to S2012_007:

In order to safeguard trade secrets of the defendant which are of no relevance for the matter in suit, the FPC decided that the presence of the plaintiff at the occasion of the description is not permitted. However, the plaintiff’s lawyer and patent attorney were allowed to participate at the occasion of the description, in view of their obligations of confidentiality. Such obligation of confidentiality will only become moot for those aspects of the description which are finally made officially available to the plaintiff anyhow. For any further subject-matter they might get to know at the occasion of the description, their obligation of confidentiality persists. The FPC explicitly held that any violation of the obligation of confidentiality may be considered as disobedience against an official order (according to Art. 292 Federal Criminal Code) and would thus be punishable with fine.

Noteworthy, the plaintiff’s representative and/or patent attorney were obliged to bring all necessary measuring equipment and to assure that the respective measurements can be carried out properly. If necessary and requested in due course, an independent technician may accompany the plaintiff’s representative and/or patent attorney.

The description is to be prepared and printed out immediately at the premises of the defendant, shall be controlled for accuracy and completeness and is to be signed by the parties / their representatives. The defendant will later on be given an opportunity to blacken passages of the draft description in order to safeguard additional trade secrets, if any (in accordance with Art. 77(5) of the PatA). It is then up to the FPC to decide on the extent of the description for submission to the plaintiff, taking both parties’ legitimate interests into account.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2013_008 ¦ Decision of 30 August 2013 ¦ “Superprovisorisch veranlasste Beschreibung respektive Beweissicherung”

(not identified) ./. (not identified)

Subject(s):

  • Precautionary taking of evidence; Art. 158 CPC
  • Preliminary measure to secure evidence; Art. 77 PatA
  • Preliminary measure of a precise description; Art. 77 PatA

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (not identified)

Full text of the decision right here:

Download (PDF, 106KB)

(Only) Preservation of the existing state of affairs ordered – for the time being

Case No. S2013_005 ¦ Decision of 24 May 2013 ¦ “Description selon Art. 77 LBI”

On 30 April 2013, the claimant requested interim measures of precise description; cf. Art. 77(1) lit. b of the Federal Act on Invention Patents. This is frequently referred to as saisie helvétique (for more details on this possibility in general, see this Blog here (item 6)). Moreover, the claimant requested such interim measures being ordered without prior hearing of the defendant, in order to prevent the defendant from any intentional modification of the allegedly infringing method or the computer/software controlling it.

This far-reaching request failed for several reasons.

First, the claimant only invoked a national Swiss patent. Note, that Swiss patents are not examined for novelty and inventive merit; cf. Art. 59(4) of the Federal Act on Invention Patents. Right from the outset, it is thus questionable whether the presumption of validity of a Swiss patent also extends to novelty and inventive merit; cf. BGE 4C.403/2005, r. 4.3 (Citalopram). Moreover, a court is obliged to examine requests for interim measures without prior hearing of the defendant very carefully; cf. the dispatch of the Swiss Federal Council (p. 7356, 2nd but last para.) of 28 June 2006 on Art. 261 of the Civil Procedure Code. Thus, a court must not rely on allegations with levity, but requires documentary evidence in support of any such allegation. With respect to a Swiss patent, this could have been e.g. a (positive) search report for the Swiss or any corresponding patent application within the same patent family. However, the claimant did not even undertake any attempt to furnish prima facie evidence of validity of the patent. Thus, the FPC had no reason to assume validity of the patent in suit.

Quite to the contrary, the validity of the patent was indeed doubtful. The patent application was filed only on 10 October 2012, claiming a priority of 28 Juin 2012; the patent was granted on 25 April 2013.1 The claimant conceded that the invention had been in use for at least ten years prior to the filing date of the patent in suit, by various undertakings. Moreover, products manufactured according to the now patented method had been sold long before the patent application was filed. No prima facie evidence of confidentiality obligations or factual secrecy was presented.

The FPC was not even in a position to rule out that the defendant’s alleged use of the patented method was lawful, in view of some cross-ownership issues: Apparently, the defendant was co-founded and partially owned until 2010 by a person having been involved in granting the claimant a right to use the invoked invention at that time when no patent protection was yet sought for. Even though the defendant later on changed its name, the purpose of the company remained essentially the same as those of the claimant. The FPC could thus not exclude without further prima facie evidence that the defendant is in fact authorized to use the method according to the patent in suit.

Concluding, the FPC held that both the validity of the patent in suit and the non-existence of a right to use for the defendant are doubtful, for the time being. An abuse of the harsh measure of a precise description cannot yet be excluded without prior hearing of the defendant. However, if the defendant would be notified of the interest of the claimant in the precise description without any measure being ordered by the FPC at all, he would not be hindered from modifying the allegedly infringing method. Any subsequent request for a precise description would then have no impact anymore.

In order to safeguard the legitimate interests of both parties, the FPC chose to uphold a certain element of surprise. According to the principle “in maiore inest minus”, preservation of the existing state of affairs at the premises of the defendant was ordered (cf. Art. 77(1) lit. a of the Federal Act on Invention Patents), pending further court order. The order was issued under the threat of the criminal penalty for non-compliance; Art. 292 Criminal Code. The defendant was also given the opportunity to comment on the allegations in writing; cf. Art. 253 CPC.

This case is to be continued: Upon receipt of the answer of the defendant, the FPC will decide whether – and, if so, how and to which extent – a precise description according to Art. 77(1) lit. b of the Federal Act on Invention Patents is to be ordered.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2013_005 ¦ Decision of 24 May 2013 ¦ “Description selon Art. 77 LBI”

(not identified) ./. (not identified)

Subject(s):

  • Interim measures with/without hearing the defendant; description

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Frank SCHNYDER (Judge)
  • Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

  • (not identified)

1 The date of grant appears to be mistyped. According to Swissreg, no Swiss national patent has been granted at all on 25 April 2013.

Full text of the decision right here:

Download (PDF, 20KB)

Description of allegedly infringing method established (S2012_007 cont’d)

Case No. S2012_007 ¦ Decision of 23 August 2012 ¦ “Communication de la description”

This decision follows up on the prior decision of 14 June 2012, commented in a separate post. In the prior decision, interim measures of description of an allegedly infringing method at the premises of the defendant were ordered (in accordance with Art. 77 of the Federal Act on Invention Patents).

The present decision finalizes the description:

The on-site inspection at the premises of the defendant was carried out on 13 July 2012. With letter of 27 July 2012, the defendant requested that certain passages of the official transcript were to be blackened prior to submission to the plaintiff, in order to safeguard trade secrets (in accordance with Art. 77(5) of the Federal Act on Invention Patents). In addition, the defendant requested that his letter is not transmitted to the plaintiff.

The judge in charge of the description requested the defendant with letter of 8 August 2012 to clarify a discrepancy in the temparature of a heating plate: While 230°C are noted in the official transcript, only 160°C are mentioned in a “procedure document” annexed to the aforementioned letter of the defendant. (Note, that temperature is apparently a critical factor which is decisive for the final product; cf. the separate post on the prior decision of 14 June 2012.) With letter of 16 August 2012, the defendant informed the FPC that he does not object against submission of the information pertaining to the temperature of the heating plate, and that his letter (incl. its annexed, blackened “procedure document”) may be transmitted to the plaintiff.

The FPC decided accordingly: The plaintiff is provided with a blackened version of the official transcript of the description, as well as the letter of the defendant dated 16 August 2012 (incl. the blackened “procedure document”).

Court fees (CHF 8’000,–) were charged to the plaintiff. Defendant’s costs of CHF 4’000,– are to be refunded by the plaintiff, but can be reclaimed in ordinary proceedings on the merits of the case. The defendant did not submit any debit note of expenses incurred; the FPC thus fixed the costs.

Note, that this first case of interim measure of description ordered by the FPC took only 20 weeks from filing the request (05 April 2012) until the descripition was provided to the plaintiff (23 August 2012) – which is rather quick for inter partes proceedings with on-site inspection.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2012_007 ¦ Decision of 23 August 2012 ¦ “Communication de la description”

(not identified) ./. (not identified)

Subject(s):

  • Interim measures / description

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. rer. nat. Tobias BREMI (Investigating Judge)
  • Dr. iur. Philippe DUCOR (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Saisie Helvétique: Interim measures of description ordered

Case No. S2012_007 ¦ Decision of 14 June 2012 ¦ “Description selon Art. 77 LBI”

The plaintiff requested interim measures of description of an allegedly infringing method at the premises of the defendant (in accordance with Art. 77 of the Federal Act on Invention Patents) and provided sufficient prima facie evidence of infringement: The patent in suit seemingly pertains to a method of injection moulding, as can be concluded from the wording of the request. Apparently, the temperature of the polymeric material is a critical factor which is decisive for the final product. It was beyond dispute that an antecessor company of the defendant indeed used a method according to the patent in suit. Since the defendant had declared that the products formerly available from the antecessor company and those available from the defendant are “the same”prima facie evidence of infringement was established.

In order to safeguard trade secrets of the defendant which are of no relevance for the matter in suit, the FPC decided that the presence of the plaintiff at the occasion of the description is not permitted. However, the plaintiff’s lawyer and patent attorney were allowed to participate at the occasion of the description, in view of their obligations of confidentiality. Such obligation of confidentiality will only become moot for those aspects of the description which are finally made officially available to the plaintiff anyhow. For any further subject-matter they might get to know at the occasion of the description, their obligation of confidentiality persists. The FPC explicitly held that any violation of the obligation of confidentiality may be considered as disobedience against an official order (according to Art. 292 Federal Criminal Code) and would thus be punishable with fine.

With respect to some practical aspects of the description, the FPC noted the following: The description is to be prepared and printed out immediately at the premises of the defendant, shall be controlled for accuracy and completeness and is to be signed by the defendant. The defendant will later on be given an opportunity to blacken passages of the draft description in order to safeguard additional trade secrets, if any (in accordance with Art. 77(5) of the Federal Act on Invention Patents). It is then up to the FPC to decide on the extent of the description for submission to the plaintiff, taking both parties’ legitimate interests into account.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2012_007 ¦ Decision of 14 June 2012 ¦ “Description selon Art. 77 LBI”

(not identified) ./. (not identified)

Subject(s):

  • Interim measures / description

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. rer. nat. Tobias BREMI (Investigating Judge)
  • Dr. iur. Philippe DUCOR (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Saisie helvétique: Precautionary taking of evidence, extent of substantiation of infringement

Case No. S2012_006 ¦ Decision of 27 April 2012 ¦ “Voraussetzungen vorsorglicher Beweisführung gemäss Art. 158 Abs. 1 ZPO

Introductory remarks: Under the regime of the Swiss Civil Procedure Code (CPC, Art. 158), a court shall take evidence at any time if the law grants the right to do so; or the requesting party shows credibly that the evidence is at risk or that it has a legitimate interest. Art. 77 of the Federal Act on Invention Patents is a use case of Art. 158 of the new Swiss Civil Procedure Code (CPC). It is not mandatory anymore that a threat of irreparable damage is established, nor that the evidence as such is at risk; a legitimate interest suffices. The preparatory materials explicitly hold that clarification of the chances of a suit may well constitute such legitimate interest.

This being said, the present decision deals with the extent of substantiation of facts for the court to take evidence by interim measures. In general terms, for facts which are to be proven by the interim measure no prima facie evidence has to be furnished. A substantiated affirmation of these facts is sufficient (cf. Federal Supreme Court 4A_532/2011, 2.4.2)

The defendant got a generic medicament entered into the list of pharmaceutical specialities well before some patent protection of the plaintiff had lapsed. However, the generic medicament was not yet available on the market and the plaintiff thus requested interim measures for precautionary taking of evidence. The plaintiff alleged three European patents being infringed.

The first patent had been revoked in opposition proceedings before the EPO; the opponent with the EPO was the defendant of the present case. The patentee / plaintiff argued that his appeal against the decision of the Opposition Division of the EPO had suspensive effect, and thus the patent was fully enforceable. However, the plaintiff did not provide any prima facie evidence or arguments why the decision under appeal with the EPO was false. The FPC held that – despite the suspensive effect of an appeal – a patent which has been revoked in opposition proceedings cannot serve as a basis for the requested interim measures without further substantiation of the validity of the patent.

With respect to a second European patent, the FPC held that the mere allegation of a substance being produced by a patented process does not suffice for substantiation of injunctive relief, either. Moreover, interim measures of taking evidence are not for investigating anything else but facts under dispute; the FPC thus held that the question “Who?” (if not the alleged and named supplier of a specific substance) is no issue of taking evidence:

In diesem Zusammenhang ist in Erinnerung zu rufen, dass Beweis nur abgenommen wird über streitige Tatsachen (sprich, Tatsachen, welche die eine Seite behauptet und die andere bestreitet; Art. 150 Abs. 1 ZPO). Damit ist auch der Rahmen für die vorsorgliche Beweisführung abgesteckt; “wer” ist kein Beweisthema.

Finally, with respect to the third allegedly infringed patent, the FPC held that infringement of each and every feature of a claim has to be substantiated. Mere fishing expeditions are frowned upon:

Wenn die [Klägerin] dann aber fortfährt, sie gehe ‘davon aus, dass die betreffenden Tabletten sämtliche oben aufgezeigten Merkmale von Anspruch 1 des Streitpatents 3 aufweisen’, so lässt das die gebührende Ernsthaftigkeit vermissen. Nachdem die Klägerin über die Erfüllung des sechs kennzeichnenden Merkmale durch die Tabletten der Beklagten kein einziges Wort verliert, ist kein Sachverhalt glaubhaft gemacht, ja nicht einmal behauptet, der in den Schutzbereich fiele und damit einen Unterlassungsanspruch begründen könnte. Es entsteht vielmehr der Eindruck, die Klägerin wisse darüber schlicht gar nichts, und damit erwiese sich das Ansinnen der Klägerin als verpönte Fishing Expedition.

In the meantime, this decision has become final.

Reported by Susanna RUDER

BIBLIOGRAPHY

Case No. S2012_006 ¦ Decision of 27 April 2012 ¦ “Voraussetzungen vorsorglicher Beweisführung gemäss Art. 158 Abs. 1 ZPO

(not identified) ./. (not identified)

Subject(s):

  • Interim measures of taking evidence

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Single Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • (not identified)

Representative(s) of Defendant:

  • (not identified)