The very first main hearing at a glance

Case No. O2012_030 ¦ Main Hearing of 17 September 2013

I have attended the main hearing in this matter today. Why, you ask? Well, this was the very first main hearing before the FPC at all. All theory is grey: Like many practitioners, I was eager to learn how this is handled by the FPC in practice. Now, how did it go?

1.  Procedural matters

The President introduced the parties (cf. Bibliography below). The patent-in-suit was not explicitly identified. However, from the subsequent discussion of the subject-matter at stake, one could easily figure this out. Expectedly, the President reminded the parties that the Board expects them to only present new facts and new evidence that indeed are (proper or improper) novae according to Art. 229 (1) CPC. No pleading was expected.

The parties made their opening submissions (Art. 228 CPC), incl. reply and rejoinder. It was clarified that no taking of evidence according to Art. 231 CPC was envisaged by the Board (even though the defendant stressed some of his offers of evidence again). Moreover, the parties informed the Board of their costs for legal representation and for their patent attorneys in an advisory capacity.

Next, the President reminded the parties of their mandatory right to be heard in a humorous way (cf. an earlier post in this respect, with further reference):

Nun also das Ping-Pong bis zur Bewusstlosigkeit: […]

However, the plaintiff chose to not even start that game.

The President then asked the parties whether they are interested to settle the case with a consent judgement. The Board would then come up with a proposal. The proceedings were interrupted for the parties to discuss internally. No audience was allowed subsequently. It remains to be seen whether the parties agree in a consent judgement or whether we will see a published decision.

2.  Subject-matter at stake

The patent-in-suit in this nullity case is EP 1 508 436. Within the group of companies of the patentee / defendant, a product according to the patent-in-suit is marketed under the tradename Corvum.

Initially, the patent was granted as EP 1 508 436 B1 by the EPO without any material objections during prosecution. The search report only classified documents D1, D2, D3, D4 and D5 as belonging to the technological background (“A”). See the EPO file wrapper (6.2 Mb) and the European Patent Register for further details of the prosecution history.

Later-on, the patent-in-suit was subject to centralized limitation proceedings at the EPO in accordance with Art. 105a EPC and was re-published as EP 1 508 436 B3.

The only indenpendent claim 1 of EP 1 508 436 B3 reads as follows :

Self-adhesive tape for closing, sealing and adhering joints, more especially for use in house-building, and more especially joints in corners and edges, said tape having a carrier layer (1) on its upper side, an adhesive coating (2) of the carrier layer (1) on its underside and a removable covering film (3) on its underside, characterised in that at least a first fold portion (4) of the tape is folded-over in the transverse direction along a first folding edge (5) extending in the longitudinal direction of the tape, and in that at least one part of the adhesive coating (2) along a longitudinal portion of the tape is not covered with the covering film (3).

Patentee / defendant left this independent claim untouched in centralized limitation proceedings with the EPO. Rather, only dependent claim 16 and a corresponding part of the description was deleted; cf. EP 1 508 436 B1 with tracked changes. This deleted dependent claim related to embodiments wherein the adhesive coating (2) has a non-adhesive central strip. Patentee / defendant argued that the person of routine skill in the art would understand claim 1 now such that the adhesive coating is devoid of a non-adhesive central strip, in order to distinguish the claimed invention from the prior art.

From the oral submissions, I assume that the patentee / defendant requests maintenance of the patent roughly as follows:

1. Claim 1 of EP 1 508 436 B3, but further limited by the intended purpose for use in house building and the feature that the tape is rolled-up to form a roll of adhesive tape.
2. Eventualiter:
   Similar to (1.), but reformulated as a use claim.
3. Subeventualiter:
   Similar to (1.), but with a further disclaimer clarifying that the adhesive coating (2) has no non-adhesive central strip.
4. Subsubeventualiter:
   Similar to (2.), but with a further disclaimer clarifying that the adhesive coating (2) has no non-adhesive central strip.

It is my understanding that the patentee / defendant had presented the additional disclaimer in order to overcome issues raised in the assessment of the reporting judge. The parties expressed different views on allowability of the disclaimer, in view of the decisions G1/03, G2/03 and G2/10 of the Enlarged Board of Appeal of the EPO.

There are quite some interesting legal questions involved in this interplay of centralized EPO limitation and allowability of the additional disclaimer. I am looking forward to discuss these in more detail on the basis of the decision being published (if any).

Reported by Martin WILMING

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BIBLIOGRAPHY

Case No. O2012_030 ¦ Main Hearing of 17 September 2013

Targo Specialty Products AG ./. Silu Verwaltung AG

Subject(s):

• Nullity

Composition of the Board of the FPC:

• Dr. iur. Dieter BRÄNDLE (President)
• Dr. Tobias BREMI (Reporting judge)
• Dr. Christoph WILLI (Judge)
• André WERNER (Judge)
• Dr. Markus A. MÜLLER (Judge)
• Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

• Dr. Christian HILTI (Rentsch Partner)
• Dr. Alfred KÖPF (Rentsch Partner), assisting in patent matters
• Dr. Bruno MEYER (Rentsch Partner), assisting in patent matters

Representative(s) of Defendant:

• Dr. Thierry CALAME (Lenz & Stähelin)
• Marco ZARDI (Zardi), assisting in patent matters
• Udo ALTENBURG (Bardehle, of counsel), assisting in patent matters