The first enforcement decision of the FPC — but there is nothing to enforce (yet)

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Case No. S2020_001 | Decision of 25 August 2020 | ‘Enforcement request’

HEADNOTE

Art. 26(2) PatCA, Art. 339 CPC; jurisdiction for execution.

The Federal Patent Court is competent for the enforcement of its judgments rendered in concurrent jurisdiction.

We have reported about this matter on this Blog already here and here.

The parties had come to a settlement in their patent ownership dispute in proceedings O2017_026 at the FPC. But, clearly, the parties do not get along well with each other. The former plaintiff now tried to enforce the settlement decision.

Competency of the FPC

This is what the hn is all about. Art. 339(1) CPC provides for mandatory jurisdiction to order measures of enforcement. For disputes falling under the exclusive subject-matter jurisdiction of the FPC (Art. 26(1) PatCA), enforcement is explicitly reserved exclusively to the Federal Patent Court because of the primacy of the PatCA (Art. 27 PatCA) for such disputes.

For disputes falling under concurrent subject-matter jurisdiction (Art. 26(2) PatCA), the place of jurisdiction for enforcement is not governed by Art. 339(1) CPC, insofar as the FPC has ruled on the merits of the case; the FPC is competent to enforce its decisions for the whole of Switzerland also in this concurrent subject-matter jurisdiction. The place of jurisdiction is determined by Art. 339(1) CPC only to the extent that a competent cantonal court has ruled on the case in disputes falling under the concurrent jurisdiction of the FPC (Art. 26(2) PatCA).

A request for enforcement of a decision concerning the entitlement to patent applications is a civil action within the meaning of Art. 26(2) PatCA. If the underlying judgment is patent-related, which always applies to substantive judgments rendered by the FPC, then the enforcement of that judgment is also patent-related. The Federal Patent Court is therefore competent to enforce such judgments.

No manifest abuse

The FPC held that the defendant’s position is erroneous that, in enforcement proceedings, the court is not competent to interpret the judgment to be enforced. The mere fact that the judgment contains language that requires interpretation does not make a motion for enforcement abusive.

But it’s a different topic whether the alleged obligations of the defendant actually flow from the judgment. This question must be addressed when assessing the merits of the motion for enforcement. It is possible that the plaintiff’s motion may not succeed because the obligations to be enforced do not in fact arise from the judgment, as the defendant claims. But not every unsuccessful motion is in itself abusive.

In substance, the defendant essentially argued that the request for execution was abusive because it would be unsuccessful — which is insufficient.

time is not yet ripe

The defendant had argued that all of its obligations to pay a share of the license fees received under the license agreements for the assigned patents are subject to the plaintiff’s obligation to take all necessary steps to assign the patent applications to the plaintiff. On the contrary, the applicant argued that there is no subordination between its obligation to take all necessary steps to assign the patent applications and the payment of a share of the license royalties generated.

Apparently, there is a license contract in place between ROCK dental and Sulzer Mixpac AG, dated 23 January 2017. I have not been able to spot a corresponding product on the market, though. But Sulzer Mixpac is pursuing a related patent application, WO 2020/083841 A1.

Anyway, according to the plain language of the settlement, there is an exchange between the transfer of the applicant’s share in the patents and the compensation due under Art. 3 of the settlement:

The compensation under Art. 3 of the settlement is therefore effectively subject to the obligation of the applicant to take all necessary steps for the transfer of his share in the patents (or patent applications). However, it is not necessary that the applicant’s share in the patents (or patent applications) be actually transferred. All that is required under Art. 2 of the settlement is that the applicant takes all necessary steps for the transfer of his share in the patents / patent applications. If the effective transfer fails, for example because the defendant does not take the necessary steps, the claimant has fulfilled his obligations as the performance has been duly offered within the meaning of Art. 342 CPC.

It was undisputed that the patent application US 2017/325923 filed by the applicant and specifically mentioned in Art. 2 of the settlement has not been formally transferred to the defendant, i.e. the defendant is not yet registered as the sole owner of this application in the US Patent Register (and no assignment has been recorded to date).

The parties did not agree on the reasons why the transfer of this patent application has not been made. The applicant argued that he had undertaken all that was necessary for a transfer, namely that he has signed all the required documents. According to him, the non-registration of the transfer was attributable to the defendant, who refused to cooperate with the assignment. On the other hand, the defendant argued that the plaintiff did not sign all the required documents and that he himself diligently and fully complied with his obligations, in particular the various requests made by the plaintiff’s patent attorneys, who systematically answered all enquiries with considerable delay and in an incomplete or incomprehensible manner.

The FPC held that the applicant failed to show that the fault for the non-assignment of the patent(s) lies with the defendant. The file revealed that the applicant’s patent attorneys had often acted with a considerable delay and demanded documents that were not necessary for a transfer of patent applications. It therefore appears that the failure to register the transfer of the US patent application US 2017/325923 to the defendant is the responsibility of either the plaintiff or the plaintiff’s patent attorneys (acting as plaintiff’s associate), who was in possession of the documents necessary to execute the registration of the transfer on 14 August 2019. As the applicant is liable for the acts and omissions of his associate (Art. 101 CO), the failure to get the transfer registered must be considered a fault of the applicant.

Joh 8:7

In summary, the FPC held that the applicant had failed to prove that it has taken all necessary steps to assign the U.S. patent application to the defendant. Notably, the FPC held tha it may well be that the defendant has also failed to take certain steps. However, until plaintiff has taken all necessary steps to transfer his rights, plaintiff is prohibited from seeking performance of defendant’s outstanding obligations.

Well,

[h]e who is without sin among you, let him throw the first stone at her.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. S2020_001 | Decision of 25 August 2020 | ‘Enforcement request’

Dr. David BENSOUSSAN
./.
ROCK dental AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Tobias BREMI
    • Lara DORIGO

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

SETTLEMENT

PATENT FAMILY IN SUIT

See the consolidated patent family in the European Patent Register.

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