Riendeau ./. Zehnder: Heat exchanged?

Case No. 4A_277/2018 ¦ Decision of 01 October 2018 (Supreme Court) on appeal against O2015_009 ¦ Decision of 21 March 2018 ¦ ‘Wärmeaustauschelement: Feststellung der gemeinsamen Berechtigung an der Anmeldung’

Note that Hepp Wenger Ryffel is involved in this matter on behalf of the plaintiff / appellant.

Please see this Blog here for a discussion of the underlying decision of the FPC. In brief, it is all about an assignment action of Marcel Riendeau against Zehnder Group International AG, concerning two European patent applications, i.e.:

Both EP2 and EP3 had been filed in Zehnder’s name only; the plaintiff had been designated as inventor. The plaintiff had partially suceeded in first instance when the FPC held that the parties are jointly entitled to both patent applications.

On appeal, the plaintiff objected that the facts had been wrongly established in the first instance decision in various aspects, that the burden of proof had been incorrectly allocated and that the FPC had not dealt with the plaintiff’s entitlement to a transfer of the patent applications based on a contractual undertaking.

To cut a long(er) story short: The Supreme Court did not agree and dismissed the appeal. The FPC’s decision is thus final now, and it remains to be seen how the parties get along with their joint entitlement to both EP2 and EP3.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2015_009 ¦ Decision of 21 March 2018 ¦ ‘Wärmeaustauschelement: Feststellung der gemeinsamen Berechtigung an der Anmeldung’

Marcel Riendeau
./.
Zehnder Group International AG

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Plaintiff:

Representative(s) of Defendant:

SUPREME COURT DECISION

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FPC DECISION

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EP 2 829 834 A1
(referred to as EP2 in the decisions)

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EP 2 829 836 A1
(referred to as EP3 in the decisions)

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Supreme Court confirms FPC’s decision O2015_008 — Omega’s appeal dismissed

Case No. 4A_282/2018 ¦ Decision of 4 October 2018 (Supreme Court) on appeal against O2015_008 ¦ Decision of 14 March 2018 (FPC)¦ ‘Balancier de montre’

Reading time: 4 minutes

As to the background of this matter, please see the report about the main hearing on this Blog here and the discussion of the first instance decision of the FPC on this Blog here.

In brief, Omega had alleged infringement of its EP 1 837 719 B1; see the EPO Register and Swissreg for further bibliographic details of the patent in suit. With decision of 14 March 2018, the FPC had rejected Omega’s claim for infringement while Tudor’s / Detech’s counterclaim for invalidity had been allowed; EP(CH) 1 837 719 B1 had been declared invalid.

The Supreme Court now dismissed Omega’s appeal, i.e. confirmed the FPC’s decision. EP(CH) 1 837 719 B1 is thus finally declared invalid.

The issues dealt with by the Supreme Court in the decision, in brief:

  1. Age of a prior art document 

On appeal, Omega has argued that the FPC took an unrealistic piece of prior art into account in the assessment of inventive step. Indeed, the FPC had considered a document that was published already about a century ago, i.e. US 759,914. In view of the evolution of watchmaking since then, Omega considered it unrealistic that such a document was actually considered as a starting point in the assessment of inventive step. Consequently, Omega alleged a violation of Art. 56 EPC.

The Supreme Court did not buy this argument. It is held in no uncertain terms that everything that had been made publicly available — including old documents — forms part of the prior art. One cannot exclude a document from consideration in the assessment of inventive step just because of its age; see ¶3.1.3.

Écarter un document de ceux que consulterait l’homme de métier en raison de son ancienneté reviendrait à priver les brevets ayant dépasé un certain âge de toute valeur dans le cadre de l’analyse de l’effet invenif. Un telle pratique ne saurait être déduite de l’art. 65 CBE.

Reference to some case-law of the Boards of Appeal of the EPO did not help either: The mere age of a document has not been decisive in T 479/00, T 366/89, T 1000/92 and T 334/92. The Supreme Court notes that the obsolescence or outdatedness of a technology had been the key issue in these decisions, which excluded the respective documents from consideration by the skilled person. Apparently, no such case had been established by the appellant in the present matter.

  1. Incompatibility of technical teachings

The balance wheel of US 759,914 has inertia blocks that must have been placed from the inside, as claimed by the patent in suit; see the screw head on the inner side of the felloe in the figures below.

But what is still missing here is the stud (‘plot’) according according to the patent in suit. Omega argued that the skilled person would not have added studs to the balance of US 759,914 in view of the risk to impair the automatic adjustment of its temperature dependent moment of inertia, which is the sole purpose of this invention. However, the Supreme Court holds that this is not in agreement with the fact findings of the FPC, and thus did not consider this argument any further.

  1. Choice of the closest prior art

The FPC had not explicitly motivated its choice of US 759,914 as the closest prior art in the assessment of inventive step in accordance with the problem-and-solution approach.

Kind reminder …

And the Supreme Court indeed acknowledges that it would have been desirable if it had done so.

Ainsi, il eût été souhaitable que la juridiction précédente détaille la première étape de l’approche problème-solution comme elle l’a fait pour les autres étapes de son examen.

But still, in view of the FPC’s detailed discussion of how the skilled person had arrived at the invention starting from US 759,914 without inventive merit, it became sufficiently clear how close both inventions actually are, and why US’914 thus is a reasonably chosen closest prior art.

  1. Late filed auxiliary requests / claim limitations

Omega had filed yet another, even more limited auxiliary request (AR3) with the response to the expert opinion of the judge-rapporteur. The FPC had not admitted this request into the proceedings anymore, with reference to O2015_012.

Omega had challenged this on appeal. But while this appeal has been pending, the Supreme Court ruled on the appeal against O2015_012 — and backed the practice of the FPC in this respect; decision 4A_543/2017 of 08 May 2018, see this Blog here. Accordingly, Omega did not succeed with this argument, either.

In sum, Omega’s appeal was dismissed and EP(CH) 1 837 719 B1 is now finally declared invalid.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_282/2018 ¦ Decision of 4 October 2018 (Supreme Court) on appeal against O2015_008 ¦ Decision of 14 March 2018 (FPC) ¦ ‘Balancier de montre’

Omega S.A.

./.

  1. Montres Tudor S.A.
  2. Detech S.A.

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Marie-Chantal MAY CANELLAS

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of appellant / plaintiff:

Representative(s) of defendants / respondents:

SUPREME COURT DECISION 

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FPC DECISION 

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PATENT IN SUIT

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