Well, yet another request for legal aid … – but, wait: Granted!

Case No. S2013_009 ¦ Decision of 18 March 2015 ¦ “Unentgeltliche Rechtspflege”

This is not a new case. A first decision had been issued already on 29 January 2014 in the same matter. At that time, a request for recusal of Dr. Dieter BRÄNDLE had been dismissed. Moreover, the request for legal aid had also been dismissed — but only inasmuch as it concerned the request for recusal. The plaintiff’s request for legal aid also covered potential infringement proceedings, and this is what the present decision is all about.

According to Art. 117 CPC, a person is entitled to legal aid if he does not have sufficient financial resources (lit. a); and if his case does not seem devoid of any chances of success (lit. b). The claimant receives state benefits; his indigence was thus acknowledged (Art. 117 lit. a CPC). But the chances of success remained to be evaluated (Art. 117 lit. b CPC). In this respect, it is not necessary that the chances of success are outstanding. A case is not deemed to be devoid of any chances of success even if the risk of loss is slightly higher than the profit prospects. However, the profit prospects must not be be substantially lower than the risk of loss. In simple terms, it is decisive whether a party having the necessary financial resources would reasonably decide to lodge the suit. This has to be assessed by the President acting as single judge (Art. 23(1) lit. c PatCA) in summary proceedings (Art. 119(3) CPC).

Evidently, the chances of success depend on (i) the validity of the patents in suit; and (ii) whether the attacked embodiments actually infringed said patents. This assessment requires technical exerptise, and the President thus consulted a technically trained judge (Art. 35 PatCA).

The patents in suit are discussed in more detail in an ealier post. It’s an eventful history of limitations; the latest (second) published limitations are CH 687 352 C3 and CH/EP 0 660 960 H3. Yet another series of (third) limitations is mentioned in the decision (allegedly filed on 1 October 2013), but cannot yet be tracked in Swissreg. Thus, both patents are to be assessed on the basis of the second limitation only. In general terms, the claimant alleged that these patents were infringed by a method and system carried out / installed in Switzerland for collecting the heavy vehicle charges.

As to the validity of the patents on the basis of the prior art that is readily apparent, the technically trained consulting judge concluded that: —

• the second limitations are admissible;
• all independent claims are novel (i.e. claims 1 and 9 of CH 687 352 C3 and claims 1 and 12 of CH/EP 0 660 960 H3);
• only claims 1 and 9 of CH 687 352 C3 and claim 1 of CH/EP 0 660 960 H3 are based on an inventive step, while claim 12 of CH/EP 0 660 960 H3 is not inventive.

The President agreed with this opinion.

As to the allgedly infringing embodiments, the technically trained consulting judge held that: —

• infringement of claims 1 of both CH 687 352 C3 and CH/EP 0 660 960 H3 is not duly substantiated;
• infringement of claim 9 of CH 687 352 C3 is plausible;
• infringement of claim 9 of CH/EP 0 660 960 H3 is plausible, but still subject to yet further amendments to this claim corresponding to the other indepent claims. Note that the reference to claim 9 most likely is a typographical error; the second independent claim of CH/EP 0 660 960 H3 is claim 12, not 9.

The President also agreed with this opinion, but the latter (potential) further amendment of CH/EP 0 660 960 H3 was not taken into consideration; the facts are to be considered as they are on the filing date of the request for legal aid (Supreme Court decisions 139 III 475, r 2.2 and 138 III 217, r 2.2.4 with further reference). Nevertheless, in view of at least one claim having been plausibly infringed, the case could not be held devoid of any chances of success.

The decision also expands on the implications of the fact that both patents in suit have already expired back in 2012 and 2013, respectively. Therefore, there is no injunctive relief at stake any more; the potential plaintiff might only invoke financial claims. In general terms, the claimant apparently mentioned Art. 41 ff, Art. 423 and Art. 62 ff CO. However, a claim under Art. 41 ff CO requires fault, and a claim under Art. 423 CO requires bad faith. Only a claim for restitution in view of an unjust enrichment (Art. 62 ff CO) neither requires fault or bad faith; see Mark SCHWEIZER, Zivilrechtliches Verschulden bei der Verletzung von Schutzrechten, sic! 2015, p 1ff. In this respect, it is to be noted that the second series of limitation of the patents in suit was inter alia based on features taken from the description of the patents. Fault or bad faith of the potential defendants is thus doubted in the decision; only the (usually lower) restitution under Art. 62 ff CO would thus remain as a basis of a financial claim.

In passing, the decision also notes that the defendants might refer to the defence of limitation, which is to be taken into consideration in the assessment of whether or not legal aid is to be granted; see Supreme Court decision 119 II 368, r 5a. But from the file as-is, no clear conclusions could be drawn in this respect.

Legal aid was thus granted, for the time being. However, it is noted in the decision that — depending on the reasons given in the suit to be filed — the legal aid might be again withdrawn later on.

Reported by Thorsten MÜLL and Martin WILMING

— BIBLIOGRAPHY —

Case No. S2013_009 ¦ Decision of 18 March 2015 ¦ “Unentgeltliche Rechtspflege”

(not identified)
./.
1. (not identified)
2. (not identified)

Subject(s):

• Infringement / Legal aid

Board of Judges:

• Dr. Dieter BRÄNDLE (President; Single Judge)
• Lic. iur. Susanne ANDERHALDEN (First Court Secretary)

Cosulting Judge:

• Dr. Markus MÜLLER

Representative(s) of Plaintiff:

• (not identified)

Representative(s) of Defendant 1:

• Dr. Markus FRICK (Walder Wyss)
• Dr. Gion GIGER (Walder Wyss)

Representative(s) of Defendant 2:

• (not identified)

— DECISION IN FULL  —

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