Deriving meaning from a claim: Narrower, broader … or contrary to the wording?

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Case No. O2020_001 | Hearing of 4 July 2021

BD logo

As mentioned earlier on this Blog here, Becton, Dickinson and Company has sued Ypsomed AG for infringement of EP 2 825 227 B1; see EPO Register and Swissreg for further bibliographic information.

The attacked embodiment is Ypsomed’s UnoPen™:

Ypsomed logo

It appears that BD is envoking EP 227 not as granted, but only to limited extent inter partes — presumably in accordance with the main request currently on file at the EPO in opposition proceedings. The parties used a feature analysis in accordance with the numbering in the first column of the following table (taken from the preliminary opinion of the OD):

I understand that the patentee’s amendments are addressing allegedly unallowable amendements / generalisations during prosecution. In my understanding of what has been pleaded, the juge-rapporteur had spotted multiple unallowable amendments; see also the preliminary opinion (p. 4-9) of the OD in EPO opposition proceedings in this respect.

Metes and bounds of claim construction

This is where it gets really interesting. According to the wording of the claim (emphasis added), the pen is configured such as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

The parties fundamentally disagree how this is to be understood. The defendant holds that the claim wording is clear by and in itself; no claim construction even needed. On the other hand, the plaintiff argues that this should be understood as

[…] to substantially prevent said driver (21) from rotating with respect to said dose set knob (2), […]

Plaintiff submitted that in light of the claim as a whole and the embodiments outlined in detail in the specification, the skilled person would readily understand that nothing else could be meant. But isn’t that quite the contrary of what the mere wording of the feature might suggest, at least at the face of it?

There are pros and cons for both positions. The preliminary opinion (p. 10/11) of the OD in EPO opposition proceedings is in line with plaintiff’s position:

Anything else would not make sense for the man skilled in the art and would be therefore disregarded.

On the other hand, the most recent decisions of the Swiss Federal Supreme Court, i.e. 4A_581/2020 and 4A_317/2020, might arguably be more in line with defendant’s position:

convince me!

It will be interesting to see how the FPC finally decides on this issue. The judge-rapporteur apparently followed defendant’s position in his expert opinion. But the President made very clear in his opening remarks that the judges have no uniform opinion on the issue yet, and mentioned to the attorneys before the pleadings:

Bitte fühlen Sie sich dadurch nicht unter Druck gesetzt.

Even at the end of the hearing, the President said that he changed his mind at least twice during the day. This highly interesting aspect of claim construction really appears to be a close call.

Patentability

Novelty has apparently been acknowledged in the judge-rapporteur’s expert-opinion. The discussion at the hearing focused only on three documents, i.e. WO 2006/084876 A1, WO 2010/072427 A1 and WO 2021/125876 A1.

However, I understood from the pleadings that the expert-opinion had held that the claimed subject-matter was obvious in view of the prior art.

Livestream
live stream

On request of the plaintiff, a live stream of the hearing had been made available to allow foreign counsel to attend the hearing, i.e. Freshfields attorneys who are handling corresponding litigation in Munich / Germany for the plaintiff, as well as some BD personnel.

It was the very first time that the FPC provided this service; much appreciated! Even though it did not work out without hiccup (room change on the spot; no video signal anyway; sensitivity of microphones; …). Still, I hope this service is here to stay. Maybe, even for the public to attend remotely … ?

(No) Stay of proceedings / TIMING

Plaintiff had apparently requested that proceedings be stayed pending the decision in opposition proceedings at the EPO. In view of the time constraints at the hearing, defendant’s counsel enquired whether pleadings on this issue were necessary (which would have taken him about 30 min more), or whether the court was inclined to deny the request anyway. The President informed the parties after a break that the request will be denied, and defendant’s counsel omitted that part of his pleadings accordingly.

The President signaled that one might reasonably expect a decision only after judicial vacation, i.e. after 15 August 2021.

Finally, defendant’s counsel encouraged the court to consider issuing the operative part of the judgment as soon as it is available, to remove the legal uncertainty as soon as possible. The President explained that this is not possible (likely in view of the reference in Art.  239(3) CPC to the Supreme Court Act; Art. 112(1) SCC appears to rule this out).

Reported by Martin WILMING

Oh, on the funny side: When the end of the hearing was approaching and someone formally requested a restroom break, laughter broke out at the other end of the court room after a short delay. Perhaps someone imagined what would happen if this request was not granted(?).

BIBLIOGRAPHY

Case No. O2020_001 | Hearing of 4 July 2021

Becton, Dickinson and Company
./.
Ypsomed AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Christoph MÜLLER
    • Dr. Lorenzo PARRINI

Judge-rapporteur:

    • Christoph MÜLLER

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Simon HOLZER (MLL)
    • Dr. Ulrike CIESLA (MLL), assisting in patent matters

Representative(s) of Defendant:

    • Dr. Christian HILTI (Rentsch)
    • Dr. Alfred KÖPF (Rentsch), assisting in patent matters
    • Markus FRANTZ (SSM), assisting in patent matters

ANNOUNCEMENT

PATENT IN SUIT

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Ypsomed sued twice(!) for patent infringement by its UnoPen™

Reading time: 4 minutes

As noted earlier on this Blog here, we knew that a medical device company has been sued by two competitors for infringement of their respective patent(s) by one and the same injector pen.

Now we know that it’s Ypsomed’s UnoPen™ that is being haunted after:

With some further digging in the EPO dockets, I have now all the pieces together to summarize the essentials of the two cases that are pending at the FPC, as follows:

O2020_001

Becton, Dickinson and Company
./.
Ypsomed AG

Patent in suit: EP 2 825 227 B1 (limited, inter partes);
see EPO Register and Swissreg for further bibliographic information.
Main hearing: 4 June 2021, 10:00 hrs
BD logo

From Ypsomed’s acceleration request in EPO opposition proceedings, it is evident that corresponding infringement proceedings are pending before the Landgericht München I, case no. 21 O 367/20.

Oral proceedings in opposition at the EPO are scheduled for 18 October 2021. The summons came along with a preliminary opinion of the OD (cf. p. 2 et seqq.). By way of its main request, BD currently defends the patent in limited form only. However, it is currently unclear whether this wording corresponds to the limitation that has been made inter partes in the Swiss proceedings. The OD’s preliminary opinion holds that the main request is unclear and comprises unallowable amendments. Novelty / obviousness is not dealt with in-depth, for the time being.

In view of the branding on this exhibit, I feel confident enough to say that BD is represented by MLL in the Swiss proceedings.

O2017_022

Sanofi Aventis Deutschland GmbH
./.
Ypsomed AG

Patent in suit: EP 2 437 830 B2;
see EPO Register and Swissreg for further bibliographic information.
Sanofi logo

While opposition / appeal proceedings were pending at the EPO, Ypsomed interevened as an assumed infringer. From the redacted complaint it is clear that Sanofi has invoked yet two further European patents; see N 5.

Sanofi is represented by Homburger‘s Andri HESS and Roman BÄCHLER.

These proceedings have been derailed well after the expert opinion of judge-rapporteur Bremi had been established and most likely only shortly before the main hearing; see this Blog here. From the Supreme Court judgment 4A_243/2020, it is evident that Ypsomed is represented by Rentsch Partner.

A little bit of background

Ypsomed logo

It is not the first time that Ypsomed and Sanofi have locked jaws in patent infringement proceedings. They settled «all currently pending patent disputes and other litigations» in April 2008. At that time, Ypsomed had attacked Sanofi’s SoloStar®. The tables have turned now when Sanofi is seeking injunctive relief.

Noteworthy, Ypsomed’s growth in the pen business is, to large extent, attributable to the UnoPen™:

What is more, Ypsomed is being sued by a (very) good customer:

It will be interesting to see how all this finally unfolds. Stay tuned.

Reported by Martin WILMING

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