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:
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.
Philippe KNÜSEL and Martin WILMING
Case No. O2020_004 | Judgment of 22 March 2022 | ‘Swisscom TV 2.0’
Panel of Judges:
- Dr. Mark SCHWEIZER
- Daniel VOGEL
- Peter RIGLING
- Daniel VOGEL
- Susanne ANDERHALDEN
Representative(s) of Plaintiff:
Representative(s) of Defendant:
JUDGMENT IN FULL
PATENT IN SUIT
BE ON THE KNOW