Is Yodoba Trying to Rewind its Case Against Swisscom?

Frequent readers of this blog know that we don’t always restrict ourselves to reporting on decisions of the FPC. Of course, we are patent attorneys and primarily interested in patents and patent law. But sometimes, when something interesting pops up surrounding patents, we just can’t help ourselves.

We reported already that Yodoba lost its patent infringement case against Swisscom earlier this year. The FPC found that EP 1 650 961, which Yodoba had asserted against Swisscom TV 2.0, was invalid because of added subject matter and thus dismissed the case.

At least Swisscom worried very early on about Yodoba’s future (or lack thereof) in case of a defeat.

In fact, they worried so much that they asked the court to order Yodoba to pay a security for the defendants’ attorney fee’s. The anonymized order (we reported about it here) resulting from this request is what gave rise to our collective detective work and my interest in the case (which got me a nice bottle of wine!).

Heard on the Street …

Very recently, we heard rumors shares of Yodoba are being offered to investors, and we have talked to sources who were approached by people looking to place shares.

Our sources independently represented to us that they were told that Yodoba is attempting to file requests for limitation of EP 961 in order to launch a new lawsuit against Swisscom.

Apparently, it was also said that the court had based its opinion on claim 1 only. Thus, the possible infringement of claims 6, 11, and 16 would still be up in the air and could technically still be basis for a new action. As recounted by one source, the court even supposedly expressed an opinion that these claims would be infringed.

We were then told that Yodoba supposedly plans to file some kind of amendment focusing the scope on these claims in order to after Swisscom again, based on the same patent, but in an amended form (i.e. asserting claims 6, 11 and 16).

We could not independently verify if the people seeking investments were acting for or on behalf of Yodoba. To be clear, the above is merely a summary of what we understand our sources were told. We’ll attempt to unpack some of it in the following.

let’s start unpacking the facts

Let’s recap what actually happened in Yodoba ./. Swisscom.

It is correct that the final verdict of the FPC is only based on claim 1 of EP 961. The court found claim 1 to contain subject matter which extended beyond the application as filed and was thus invalid. Infringement was not assessed in the final decision.

The expert opinion found claims 6, 11 and 16 to be invalid due to added matter, as we learned during the main hearing. Yodoba had asked the court after the dispatch of the expert opinion to cancel claims 6, 11 and 16 erga omnes. The court wouldn’t have it and instead treated it as an inter partes limitation.

As a reminder, the unallowed amendment of claims 6, 11 and 16 (in the judge-rapporteur’s view) consisted in claiming specifically a method using a server and a server/assembly per se, the latter not being disclosed as such.

is anything actually happening?

Nevertheless, we obtained the file wrapper (as per 1 June 2022) from the Swiss IPI . There is no indication that any kind of request for limitation was filed with the office.

Similarly, no request for limitation was filed at the EPO. One thing caught our attention though: in early 2021, a new representative attempted to take over representation and filed a PoA for Yodoba (see EPO file inspection here). Unsurprisingly, the EPO did not register the change as the case was granted over a decade ago (see EPO file inspection here). The power of attorney was filed on 21 January 2021, which was  approximately two months after the instructional hearing (which took place in November 2020) and about one month before Yodoba filed its reply.

We cannot know for sure what the purpose of filing a PoA actually was, about a decade after grant and during pending infringement proceedings. Was it in anticipation of a request for limitation under Art. 105a EPC? Possibly. Btw, the same firm did register itself for the German part of EP 961 (see file inspection here).

To the best of our knowledge, no requests for limitations have been filed.

What if EP 961 was amended?

As we explained above, we could not find any indication that the claims of EP 961 were amended in any way with effect in Switzerland.

But let’s say, for the sake of argument, that Yodoba did file a request for limitation and fixed the validity issues that the court found persuasive. Could they file a new action against the same defendant, based on the same product, asserting the same patent but in amended form?

We have touched on the issue on this blog before (see here) and, to put it briefly, this is currently unchartered territory in Switzerland.

We would certainly be very interested to follow such a case, if anything materialized in this respect.

So what about this investment opportunity?

With pointers from our sources, we came across a company called Affiliate Consult, which operates out of Mallorca and describes itself as a family-office-style holding construct.

Die Organisation der Gesellschaft ähnelt einem mittlerweile oftmals “Family Office” genannten Holding-Konstrukt.

Affiliate Consult’s website mentions Yodoba under its current projects as of June 17, 2022:

Affiliate Consult’s website

We have seen a slide deck by Affiliate Consult about Yodoba which came up in conversations with a source. One slide mentions alleged violations of the patent in Europe («Verstösse gegen das Patent in Europa») and lists several companies next to it. Notably absent is Swisscom.

To be continued

While we won’t speculate about the intentions and plans of Yodoba, it appears that something might be in the making.

If Yodoba indeed planned to file a partial waiver (or limitation at the EPO) and filed a new action against Swisscom, we would certainly be looking forward following this case. Swisscom probably wouldn’t see it that way, but it would be highly interesting to follow such a second round unfolding.

Yodoba has not so far responded to a request for comment.

Stay tuned.

Philippe KNÜSEL and Martin WILMING

BIBLIOGRAPHY

Case No. O2020_004 | Judgment of 22 March 2022 | ‘Swisscom TV 2.0’

Yodoba AG
./.
Swisscom (Schweiz) AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Daniel VOGEL
    • Peter RIGLING

Judge-rapporteur:

    • Daniel VOGEL

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)
    • Dr. Kurt SUTTER (Blum), assisting in patent matters
    • Martin TOLETI (Blum), assisting in patent matters

JUDGMENT IN FULL

PATENT IN SUIT

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Swisscom beats the patent troll

Reading time: 5 minutes

Case No. O2020_004 | Judgment of 22 March 2022 | ‘Swisscom TV 2.0’

We previously reported on the litigation between Yodoba and Swisscom over the alleged infringment of EP  1 650 961 in Switzerland herehere, and here.

The decision has now been issued and it did not end well for Yodoba. The FPC found that all asserted claims of EP 961 are invalid and rejected Yodoba’s complaint accordingly.

But first things first — the decision still contains a few interesting points.

Settlement Talks

As mentioned in my report of the main hearing, no settlement discussions were mentioned or started in the course of the main hearing and I speculated that a settlement was already off the table.

Indeed, the final decision mentions that a settlement was negotiated and agreed on by both parties after the instruction hearing. However, the plaintiff withdrew from the settlement and instead proceeded with the infringement procedure.

Procedure’s a #$@!%

The main hearing already gave me some insight into the judge-rapporteur’s expert opinion. We knew that the plaintiff had submitted several auxiliary requests and had inter alia limited EP 961 to only claim 1, but no longer asserted the further independent claims 6, 11 and 16. The final decision now gives us some more details on that.

Apparently, the plaintiff had asked the court in their comments to the judge rapporteur’s preliminary opinion to revoke the above-mentioned claims of EP 961 erga omnes.

Erga omnes, you say? Wouldn’t that be something. But the court was not in the mood for a landmark procedural decision and referred plaintiffs to the Swiss IPI.

With a mind willing to understand, the court treated the above request as a further inter partes limitation and admitted it into the proceedings as no new factual basis for the proceeding would be presented to the court by doing so.

What’s more, the plaintiff apparently only submitted auxiliary requests in the form of amended claims, but did not submit corresponding (limited) prayers for relief.

The court thus did not consider auxiliary requests 2-5. Even if the patent in suit as limited according to one of the auxiliary requests were valid, according to the court, it would have no bearing on the outcome of the case (as the corresponding prayer for relief would be overly broad).

On the Merits

Based on the above, what was left of EP 961 was claim 1 as granted (and of course claims dependent on claim 1) and claim 1 as amended in auxiliary request 1, the latter containing  a further limitation related to saving of multimedia files:

However, as it turned out, the crucial feature of claim 1 (which was also contained in amended claim 1 of AR1)  was feature 1.C.1:

We already knew from the main hearing that the defendant had argued that feature 1.C.1 extended the subject matter beyond the content of the application as filed. However, it seemed that the judge-rapporteur had not followed this argument at the time.

The decision, however, now follows the defendant’s line of argument. Specifically, the court agreed that the application as filed only discloses the saving of a partial program in one file, whereas the claim as granted requires the saving of one partial program in several files:

Accordingly, the court found claim 1 of the patent in suit (as granted as well as according to auxiliary request 1) invalid for extension of subject matter beyond the application as filed. As the court did not consider the further auxiliary requests and needed not consider claims 6, 11 and 16 based on plaintiff’s inter partes limitation, this finding disposed of the case in its entirety and in the defendant’s favor.

It is noteworthy that the court still reviewed the novelty of claim 1 in view of US 2003/0208767. In this context, the court used an interpretation of the claim which would not have resulted in an unallowed amendment and found that in this case, the claim would lack novelty.

The decision can be appealed to the Swiss Supreme Court.

Reported by Philippe KNÜSEL

BIBLIOGRAPHY

Case No. O2020_004 | Judgment of 22 March 2022 | ‘Swisscom TV 2.0’

Yodoba AG
./.
Swisscom (Schweiz) AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Daniel VOGEL
    • Peter RIGLING

Judge-rapporteur:

    • Daniel VOGEL

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

    • Dr. Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)
    • Dr. Kurt SUTTER (Blum), assisting in patent matters
    • Martin TOLETI (Blum), assisting in patent matters

JUDGMENT IN FULL

PATENT IN SUIT

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Can they still rewind, or have they gone too far?

Reading time: 6 minutes

Case No. O2020_004 | Hearing of 11 January 2022 | ‘Swisscom TV 2.0’

As we have previously reported on the case here and here, Yodoba and Swisscom are litigating over alleged infringement of EP(CH) 1 650 961 B1 . We learned from Swisscom’s pleadings that their product ‘Swisscom TV 2.0’ is at stake.

Most of the pleadings dealt with invalidity of EP 961. Only little time was devoted to infringement, even though it appeared that the judge-rapporteur’s expert opinion was not too favorable for Yodoba; I will get back to that in just a moment.

It was already known from the announcement that the Yodoba had limited EP 961 inter partes:

In the course of the hearing, I learned that Yodoba only asserts the independent claim 1 (directed to a «method of  providing multimedia data in an assembly assigned to a multimedia device») at this point in the proceedings. However, Yodoba no longer relies on the other independent claims 6 (directed to a «method of  providing multimedia data using a server»), 11 (directed to an «assembly for providing multimedia data») and 16 (directed to a «server for providing multimedia data»).

I caught a glimpse of what may have driven Yodoba’s decision in this respect during their pleadings, as they prefaced the above statements regarding the inter partes limitation with some references to the judge-rapporteur’s expert opinion. Apparently, the judge-rapporteur found that claims 6, 11 and 16 contained subject-matter beyond the content of the application as originally filed and were not sufficiently disclosed.

Specifically, I gathered from the pleadings that the alleged extension of subject-matter was mainly based on the recitation of a server and an assembly in claims 6, 11 and 16. The judge-rapporteur apparently saw no disclosure of a method using a server or a server/assembly per se in the application as filed, as we inferred from the pleadings. Instead, basis was only given for a method using a system (as claimed in claim 1), according to the judge-rapporteur.

Swisscom asserted a further unallowed amendment which they saw in claim 1 as well, reciting a plurality of multimedia files representing a program part. This was referred to as feature 1.C.1 in the hearing:

Though the judge-rapporteur seemed to not have agreed with Swisscom on this point, it was still noteworthy because Swisscom also put this feature in relation to how the allegedly infringing Swisscom TV 2.0 works. Swisscom interpreted feature 1.C.1, to our understanding, as requiring that a portion of a program («program part of a program») is split into multiple files. While alleging that the application as filed only disclosed splitting a program into multiple parts, each of which  represented by a single file, Swisscom also mentioned that Swisscom TV 2.0 only uses a single file per program part.

Further pleadings were related to novelty and the judge-rapporteur’s expert opinion that claim 1 of EP 961 was anticipated by at least two prior art documents (WO 156 and US 767). Swisscom asserted further prior art documents, while Yodoba unsurprisingly disagreed and argued that no prior art document was relevant in terms of novelty. Even a member of the board of directors of Yodoba, José Munuera, took the floor and offered his view on the level of innovation of the subject-matter of claim 1.

In terms of infringement, I was able to pick up a few pieces of the puzzle from the pleadings, though most of the time was devoted to questions of invalidity.

We could gather that the judge-rapporteur found claim 1 not to be infringed by Swisscom TV 2.0. Interestingly, this opinion was apparently based on a lack of evidence for realization of some claim features. Yodoba did not deny this part and argued that they had sufficiently substantiated the allegation of infringement. The final evidence, according to Yodoba, would have to be collected through an evidentiary procedure (Augenschein) — which they requested.

In its final moments, the hearing even offered a bit of entertaining. Plaintiffs were pleading that WO ‘156 only shows clipping on a server or harddrive (at least, this is how we understood the argument), when they were interrupted by the President, asking when or where this point was already raised before dispatch of the expert opinion. Plaintiffs’ attorney was positive that this argument was made before, but was unable to cite the corresponding passage in that moment.

Some discussion came up about Swisscom’s expenses for assistance of patent attorneys of about kCH 180. Yodoba objected and requested that no more than kCH 60-80 should be accepted. Swisscom justified a part of the costs with Yodoba’s  submission of a corrected reply. Apparently, the original reply contained references to the confidential part of the instruction hearing which had to be removed.

we can’t rewind, …

Noteworthily, the hearing had been interrupted for about ten minutes in order to allow Yodoba’s representative to assess the cost note in detail, and to clarify where a certain aspect of its pleading had been brought forward in the exchange of briefs.

The hearing closed without any questions about settlement negotiations, which thus seemed to have been off the table already. The President announced that either a ruling on evidence or the judment will be issued.

Reported by Philippe KNÜSEL

BIBLIOGRAPHY

Case No. O2020_004 | Hearing of 11 January 2022 | ‘Swisscom TV 2.0’

Yodoba AG
./.
Swisscom (Schweiz) AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dany VOGEL
    • Peter RIGLING

Judge-rapporteur:

    • Dany VOGEL

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

ANNOUNCEMENT

PATENT IN SUIT

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Oh Yeah! Patent troll unveiled

Reading time: 4 minutes

Case No. O2020_004 | Order of 3 March 2021

We recently reported about this order already on this Blog here. The order is heavily  anonymized, and close to nothing is mentioned about the technical subject matter of the patent in suit.

yodoba logo

It has taken a little longer than anticipated, but now we are fairly confident that the plaintiff — referred to as a ‘patent troll’ by the defendant — is yodoba AG. The patent-in-suit is EP 1 650 961 B1; see EPO Register and Swissreg for further bibliographic information.

the bait …

[On a personal note: I had almost given up on deciphering. The order is heavily anonymized, admittedly beyond what I could have hunted down on my own. Luckily, this exercise was a great reminder for me of what a highly motivated team can achieve with cleverness, persistence and a bit of brute force. /MW]

According to yodoba’s website, the company was founded in the year 2000 and had been active in the development of some technology related to «legal downloading», presumably referring to over the air sales of audio and video files by right holders.

Apparently, yodaba had been a high-flying startup at the beginning of the millenium:

Dieter Meier had formerly been shareholder and ‘ambassador’ of yodoba, as reported in yodoba’s newsletter of November 2005. Oh Yeah!

Siemens player

Yodoba was a member of the «Music over the Air Consortium MOC», founded by Siemens. This consortium operated the «Music2You» (M2Y) sales platform, which was used by the online shops of some leading providers such as T-Online and AOL, as well as T-Mobile and O2 (England, Ireland, Germany); see e.g. here.

By yodoba’s own admission on its website, business operation was discontinued in 2011 and the company solely focused on the monetization of EP 961 from here on out:

Im Jahre 2011 hat sich yodoba AG aus dem Download-Business zurück gezogen, nachdem sich dieses defizitär entwickelte und keine Verbesserung der Lage ersichtlich wurde.

This information is consistent with what both plaintiffs and defendants had apparently stated in their briefs:

Further puzzle pieces from the FPC’s order were the fact that exactly one patent exists which is still in force and registered in the plaintiff’s name, an address change and the share capital (purportedly CHF 150’000).

May I ask for more exact pleadings next time, please? The rounded share capital made it soo cumbersome to decipher the order. According to the commercial register, yodoba AG has a share capital of CHF 156’157,–. /MW

Still, little is known about the defendant. However, based on the subject-matter of EP 961 and what yodoba itself explains about it, we have any reason to assume that it is a business related to TV broadcasting over the internet with playback functionality. Well, there are not many candidates. Stay tuned.

Reported by Philippe KNÜSEL and Martin WILMING

UPDATE 13 December 2021: The FPC has just announced the main hearing (11 January 2022, 10:00 hrs). The defendant is Swisscom (Schweiz) AG; the ‘Swisscom TV’ set-top boxes are at stake.

BIBLIOGRAPHY

Case No. O2020_004 | Order of 3 March 2021

yodoba AG
./.
[n/a]

Single Judge:

    • Dr. Mark SCHWEIZER

Court Clerk:

    • Susanne Anderhalden

Representatives of Plaintiff:

Representatives of Defendant:

    • Simon HOLZER (MLL)
    • Louisa GALBRAITH (MLL)
    • Dr. Kurt SUTTER (Blum), assisting in patent matters
    • Martin TOLETI (Blum), assisting in patent matters

ORDER IN FULL

PATENT IN SUIT

COMMERCIAL REGISTER

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