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As reported earlier on this Blog here, the Enlarged Board of Appeal will have to decide whether or not the Boards of Appeal may properly summon parties to oral proceedings at their new premises in Haar.

But this will take some time. What’s happening in the meantime? There are hearings in Haar every single day. Will proceedings be stayed? Or will parties be re-summoned to Munich, as a matter of precaution? All these options would be highly uncomfortable for the Boards which are still struggling with a huge backlog and an ever increasing number of incoming appeals.

In a hearing of 11 March 2019 in Haar, Board of Appeal 3.3.01 was faced with a request to conduct the hearing in Munich; the patentee’s representative relied on the pending referral to the Enlarged Board of Appeal.

According to the minutes, the hearing in Haar was indeed postponed — but re-started at 1pm on the same day in the EPO’s building at Bob-van-Benthem-Platz 1 in Munich downtown, the previous premises of the Boards of Appeal. A smart move! See the EPO Register for any further information on the case; the reasoned decision is not out yet.

About three hours later, the patent was revoked. (Note that this patent had been at stake in proceedings at the FPC; see this Blog here.)

I sincerely hope that parties will not try to take advantage of the current legal uncertaintly about whether or not the venue in Haar is proper. Board 3.3.01 gave a clear sign that the venue may quickly be changed, if necessary.

Reported by Martin WILMING

MINUTES
of the oral proceedings in case T 403/18 before the Board 3.3.01

Chairman: A. Lindner
Member: T. Sommerfeld
L. Bühler
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An interesting initiative has been lodged in the Swiss parliament on 21 March 2019 by Thomas HEFTI, member of the Council of States; see here. The title is pretty self-explanatory:

For a more modern Swiss patent

No further details have been made public by now; this post will be updated with further information when available.

The future of the Swiss patent system had been widely discussed a few years ago, and the various options have been presented and discussed at an event on 1 June 2015, jointly organised by VSP, VESPA, VIPS and INGRES; see the summary in German language here. Not much has happened since then, but the present initiative might now restart the efforts to modernise the Swiss patent system.

By far the most patents that are currently in force in Switzerland are validations of European patents that are granted only after thorough examination on the merits. On the other hand, national Swiss patents are currently not examined on the merits, i.e. for novelty and obviousness. Some say that this is embarrassing, in particular for the leader in the Global innovation index.

Yet another good reason for a modernised patent system is that Swiss patents may be used in the ‘patent box’ that is foreseen to be enacted with the ‘Federal Act on Tax Reform and AHV Financing‘, subject to a positive outcome of the referendum on 19 May 2019.

Reported by Martin WILMING

DOCKET 19.3228

at the website of the Swiss Parliament.

REFERENDUM

of 19 May 2019 on the Federal Act on Tax Reform and AHV Financing. See the official brochure with all details about the referendum below (not available in English language):

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Case Nos. O2016_010, O2016_011 | Hearing of 20 March 2019

Twice upon a time …

I have attended the main hearings in both these nullity cases, i.e. O2016_010 relating to EP 2 347 250 B1 (see EPO Register and Swissreg ) and O2016_011 relating to EP 2 352 018 B1 (see EPO Register and Swissreg). Note that EP’018 is based on a divisional application of EP’250.

The inventions are all about the capacitive testing of yarns or fabric, wherein the dielectric property of a capacitor arrangement is determined.

Patentability

It became clear from the pleadings that the defendant’s main request in both cases was that the patent be maintained in amended form only. In my understanding, the expert-opinion of the judge-rapporteur had held that the main request in O2016_010 / EP’250 was allowable, but not in O2016_011EP’018.

Novelty has not been an issue anymore, in both cases. Only obviousness, undue extension of subject-matter (interim generalisation) and clarity (of the additional feature) have been discussed. D2 (US 4,843,879; referred to in EP’250, ¶[0007]) was apparently agreed to be the closest prior art, and was combined in the assessment of obviousness with either D4 or D11 — both of which have unfortunately not been identified.

For me as a chemist, the highlight of the day was the plaintiff’s emotional release:

That’s not chemistry here; it’s physics!

The formulation of the ‘objective technical problem’ was quite a big deal in the hearing. This is what EP’250 says in ¶[0009] (emphasis added):

It is therefore the aim of the present invention to provide a method for the symmetry adjustment of a device for the capacitive examination of a moving elongated textile test sample which does not have the above disadvantages. The device should be simple, fast, cost-effective and, in particular, automatically adjustable.

Flower power, with roses in particular

Now, can automation be considered as the ‘objective technical problem’? In the plaintiff’s view, the ‘in particular’ is an emphasis of the aim of automation. The defendant disagreed: Automation was an add-on, and the other advantages could well be realised without automation. On the funny side, the following example has been used:

She likes flowers, in particular roses.

Now, imagine that the rose-loving woman visits a florist. Which flowers will she recognise first, amidst all the other flowers? The roses, of course!

Costs

Compensation of the ‘necessary expenses’ for the assisting patent attorney pursuant to Art. 3 lit. a and Art. 9(2) CostR-PatC was yet another point of discussion. The plaintiff requested reimbursement of about kCHF 45 for each case and argued, that the defendant triggered the additional costs because the amended claims had only been filed with the rejoinder which then had effectively restarted the whole discussion. I did not get the value in dispute, but the presiding judge indicated that kCHF 45 is about twice as much as the would be awarded for legal respresentation, i.e. ‘according to the tariff’ that is based on the value in dispute.

Now, why is that important?

Since O2012_043, the FPC’s practice is that, as a rule, the ‘necessary expenses’ for the patent attorney may well be within the same order of magnitude of the costs for legal representation. But what about nullity cases? A patent attorney could do that on his/her own, without any legal representative; Art. 29(1) PatCA. Compensation would then be awarded according to the tariff for legal representatives; Art. 9(2) CostR-PatC.

The defendant questioned whether costs incurred for the assisting patent attorney are ‘necessary expenses’ at all, on top of the costs for legal representation according to the tariff, if he/she could have done the whole case on his own.

Use of the technical infrastructure in the court room

It is quite hard for the public to follow the arguments when the representatives just argue with acronyms and references. It’s somtimes frustrating, but I got used to it. But still, one of the basic ideas of a public hearing is to give the public the opportunity to follow the proceedings, isn’t it? But how would you even get a glimpse of what is really at stake when the parties only refer to ‘EP’111’ or ‘D1’ or ‘feature 1da’. That’s not information — it’s just noise.

I was very happy that the recent hearing in case S2018_006 was different (see this Blog here): Whenever someone referred to a specific document, the President put the same on the screen for it to be easily recognisable by the whole audience and the judges; projector and screen are fixedly installed in the ceiling anyway (see yellow arrow in the image below). Much appreciated!

Let there be information …

But that’s not only great for the audience; I strongly feel that it is also beneficial for representatives when arguing their case. When referring to a certain paragraph in a specific document in your pleadings, or a technical drawing, you always want to make sure that all the judges are on the same page, right? But how would you know that, with the judges sitting on a podium that even has an elevated front side that makes sure that nobody reveals a hand up there, behind the monitors. Yes, there are fixedly installed monitors (green arrows in the above image).

Now, did they all pick up the document that you are upon to discuss? You never know. So, why not actually use the monitors that each judge has in front of him/her, and the projector/screen for the audience, to make sure that everybody sees what you want to be seen? I could not think of any more powerful way to focus the discussion and thoughts on a specific argument.

Unfortunately, it didn’t work out that way in this hearing even though the defendant suggested it. I hope this was for technical reasons only, and does not indicate a general change of practice again.

Reported by Martin WILMING

BIBLIOGRAPHY

Case Nos. O2016_010, O2016_011 | Hearing of 20 March 2019

Gebr. Loepfe AG
./.
Uster Technologies AG

Panel of Judges:

  • Frank SCHNYDER
  • Dr. Tobias BREMI
  • Christoph MÜLLER

Judge-rapporteur:

  • n/a

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Dr. Kurt SUTTER (Blum), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Andri HESS (Homburger)
  • Dr. Pavel PLISKA (inhouse)

O2016_010

Official announcement:

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Patent in suit:

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O2016_011

Official announcement:

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Patent in suit:

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The post Roses are red; violets are blue — It’s all obvious! Well, is that true? appeared first on FPC Review.

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FPC Review by Martin Wilming - 1w ago
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Case No. O2018_013 | Hearing of 18 March 2019

There you go …

These proceedings are following-up on the case O2014_002 (discussed on this Blog here in more detail) where the FPC held that certain non-return valves for urinals produced by von Allmen AG were infringing EP 1 579 133 B1.

From what has been argued at the hearing, it appears that the defendant had obtained valves from a Swiss supplier (presumably Enswico AG; meanwhile liquidated) which in turn had obtained the valves from von Allmen AG. Thus, infringement was not an issue anymore.

Based on the information obtained in proceedings O2014_002, the plaintiff alleged that Aquis Systems had obtained 17’500 infringing valves. On the contrary, Acquis Systems argued that it had only obtained 4’700 valves in total, that those valves had been produced while a license agreement had still been in place and that it had believed in good faith that a license fee of CHF 1,85 per piece had been paid to Mr Dahm. Note that the patent had initially been granted to Mr Dahm, but has been assigned to the plaintiff Daspaco AG in 2013; see Swissreg.

Further, Aquis Systems argued that Daspaco had no standig to bring this suit, since it had not been the proprietor of the patent at the relevant time.

Meeting the goal …

The presiding judge pushed the parties to have settlement discussions, given the small amounts of money involved. And, indeed, both parties agreed.

Hopefully, the parties got this resolved.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_013 | Hearing of 18 March 2019

Daspaco AG
./.
Aquis Systems AG

Panel of Judges:

  • Dr. Christoph GASSER
  • Dr. Tobias BREMI
  • Dr. Ralph SCHLOSSER

Judge-rapporteur:

  • n/a

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Cyrill RIEDER (FMP)
  • Kurt STOCKER (KHP), assisting in patent matters

Representative(s) of Defendant:

  • Philip SCHNEIDER (SMS)

O2014_002
Partial decision of 21 November 2016

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The post Return of the non-return valves appeared first on FPC Review.

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Case Nos. 4A_435/2018, 4A_441/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Please see this Blog here for a detailed review of the underlying decision of the FPC in this matter.

Both parties had lodged an appeal — but the Supreme Court dismissed both appeals. While the FPC’s judgement was quite a booklet of 50+ pages, it took the Supreme Court only 7 pages to deal with both appeals. Most of the judgment indeed is pretty straight forward. Still, the judgment has quite some interesting aspects, in my perception:

  1. Assignment of a patent does not imply assignment of the universal right to the invention per se 
Montres Valgine logo

Guenat had requested that Swiss Finest‘s Swiss patent be annulled based on Art. 26(1) lit. d PatA, i.e. for lack of entitlement. However, such request can only be brought by the entitled person; Art. 28 PatA. Guenat alleged that Frédéric Garinaud transferred ‘full and complete ownership’ of the European patent application to Guenat. But that did not help. Frédéric Garinaud specifically assigned the European patent application to Guenat, but not the universal rights in the ‘invention’ itself. Guenat’s request for declaration of nullity based on Art. 26(1) lit. d PatA was thus held inadmissible for lack of standing.

On appeal, Guenat criticises the FPC’s ‘artificial dichotomy’ between the invention and the related patent application, and claims complete control over the invention in dispute. The Supreme Court didn’t buy into that. The decision holds in ¶3.2 that Guenat’s argument is based on an assumption about the parties’ intention in respect of the transfer agreement of April 2013. This is not a question of law, but of fact. But the FPC had not found that the real and common intention the parties had been to assign all intellectual property rights to the invention and the right to be granted all related patents. On the contrary, according to the FPC, the agreement in question ‘clearly refers only to the European patent application and the resulting European patent, and not to the invention as such’ — which finding is binding on the Supreme Court since it is not ‘arbitrary.’

Thus, the Supreme Court apparently had no doubt that the assignment of a specific patent does not necessarily imply the assignment of the universal rights in the invention itself.

  1. Assessment of inventive step is a question of law, but …

Guenat argued on appeal that the FPC had violated the principle of party disposition because it took facts into account that had not been alleged by the defendant.

Now, what had happened?

The FPC had held that a specific feature (C3-1) was not disclosed in the closest prior art document. Guenat had a different understanding of the specific feature, and had argued that based on a ‘correct’ understanding of the feature it had well been disclosed in the closest prior art.

Swiss Finest logo

On appeal, Guenat argued that Swiss Finest had not even alleged that feature C3-1 was not disclosed in that document. Unfortunately, it is not readily clear from the decision to which version of feature C3-1 that allegation pertained: The feature as construed by the Guenat, or the feature as construed by the FPC?

The Supreme Court held that it had not been disputed that all the factual elements necessary for the analysis of obviousness had been brought on file by the parties. Further, the Supreme Court held that Guenat had not asserted that the FPC had to supplement the facts on its own, and that such conduct was also not apparent from the file. In the Supreme Court’s view, the FPC was thus in a position to assess obviousness, which is a question of law. It is irrelevant in this respect that the presence or absence of specific features in the prior art and/or the patent have been alleged by the defendant or the plaintiff. On the basis of the facts gathered by the parties in order to consider a question of law, the court did not violate the principle of party disposition.

Without any in-depth knowledge of what had or had not been argued by the parties, I just cannot say whether I would agree with the assessment on the merits of the case. But the Supreme Court’s general considerations on questions of law vs. questions of fact trigger some further thoughts.

Clearly, assessment of obviousness is a question of law — but the underlying factual elements still need to be asserted by the parties. But what are the ‘factual elements’? They must be something more specific than just ‘the patent in suit’, ‘D1’ or the like. Else, a court could just combine whatever is on file in its assessment of obviousness, fully detached from the pleadings. This cannot be it. Now, let’s assume that both parties come up with a somewhat strange claim construction, and base all their obviousness attacks / defenses on a wrongly construed claim. In my understanding, claim construction clearly is a question of law, too (see e.g. X ZR 255/01 – ‘Bodenseitige Vereinzelungseinrichtung’ of the German Federal Supreme Court in ¶5, with further reference). But what if no party ever pointed to the relevant underlying ‘factual elements’ (i.e. specific sections of the patent in suit) that support the ‘correct’ claim construction? May the court then even come up with a different / the ‘correct’ claim construction at all?

The theory of separating questions of law from questions of fact is simple. But life is complicated …

On a sidenote: Wouldn’t it be good to establish common ground on what the claim actually is all about before diving any deeper? This is what a Markman hearing in the U.S. is all about. Even though I am not overly enthusiastic about quite some aspects of patent litigation in the U.S., this one certainly is useful.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. 4A_435/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Guenat SA Montres Valgine (appellant)
./.
Swiss Finest SA (respondent)

and

Case No. 4A_441/2018 (Supreme Court) | Decision of 29 January 2019 on appeal against O2015_018 (FPC) | Decision of 15 June 2018 | ‘Instrument d’écriture’

Swiss Finest SA (appellant)
./.
Guenat SA Montres Valgine (respondent)
×Both proceedings were jointly dealt with by the Supreme Court.

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Kathrin KLETT
    • Dr. Fabienne HOHL

Court Clerk:

  •  Nicolas CURCHOD

Representative(s) of Guenat SA Montres Valgine:

Representative(s) of Swiss Finest SA:

  • Christoph KÜNZI (CBK)

SUPREME COURT
on appeal against O2015_018 (FPC) | Decision of 15 June 2018
Case nos.: 4A_435/2018
4A_441/2018
Decision of: 29 January 2019
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PATENT COURT
Case no.: O2015_018
Decision of: 15 June 2018

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CH 704 790 B1

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CH 704 790 C1

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EP 2 497 648 B1

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The post Writing instrument: The Supreme Court’s final stroke appeared first on FPC Review.

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The official Annual Report 2018 of the FPC has been published earlier today, together with a press release. It comes along with an official Executive Summary as follows:

Compared to the previous year, the total number of incoming cases decreased slightly to 29 (34 in the previous year). The number of ordinary proceedings declined (22, 26 in the previous year), while the number of summary proceedings remained virtually unchanged (7, 8 in the previous year).

During the reporting year the Federal Patent Court handled 23 ordinary proceedings, of which 11 were disposed of by settlement and 5 by judgment. A total of 6 summary proceedings were disposed of during the reporting year, 4 of which were decided by judgment and 2 were declared groundless. The number of cases pending at the end of the year remained unchanged (39, 39 in the previous year).

Income from court fees rose to an all-time high of CHF 965,741 (672,804 in the previous year). This improved the Federal Patent Court’s coverage ratio from 44.3% to 54.4% despite higher expenses (CHF 1,776,342, CHF 1,519,014 in the previous year). This rise in expenses can be attributed to a CHF 140,000 increase in remuneration for the non-permanent judges who took charge of more proceedings because the President [Note: Mark Schweizer, formerly with the law firm MLL] had recused himself on numerous occasions as well as to expenditure of CHF 65,000 for legal aid in one case.

The FPC’s ‘even more executive’ summary on Twitter:

Geschäftsbericht 2018: ordentliche Verfahren leicht rückläufig (29), summarische Verfahren stabil, Pendenzen gleichbleibend, Einnahmen auf Höchststand, Deckungsgrad 54%, https://t.co/PVftWZCA39

— SwissPatentCourt (@PatentCourt) March 18, 2019

Now, do we need to worry about the slight decline of incoming cases? I don’t think so. Let’s put in in perspective, taking all reporting years into account:





The number of incoming main proceedings is still the second highest of all times; it equals with the 22 cases received in 2013. The slight decrease vis-à-vis the all-time high of 2017 is still within normal fluctuation, in my perception.

The overall number of concluded cases increased; a slight decline of concluded summary proceedings (6 in 2018 vs. 9 in 2017) is more than outweighed by an increase of concluded main proceedings (23 in 2018 vs. 15 in 2017):





Indeed, the FPC has been pretty productive in 2018. It was only in 2013 that the FPC had ever disposed of more cases.

The backlog of cases had reached an all-time high in 2017, and the same number of cases is also pending at the end of 2018. But, frankly, I don’t feel that 39 pending cases is sth to worry about.





But what’s up with the settlements by compromise?

The settlement rate dropped again to 48% in main proceedings (which is pretty much the same as the all-time low of 2016 with 47%) and 0% in summary proceedings (no, that’s not a typo; it’s literally zero. Not a single summary proceeding has been concluded by settlement).





Why is that? If the parties to main proceedings prefered a judgment because they felt they would get a more favorable outcome on appeal, this expection was most likely in vain: 80% of the judgments in main proceedings had been appealed, but not a single appeal was successful until 1 February 2019 when the Annual Report had been finalized (the appeal in O2016_009 was still pending then, and it is still pending today).

The report itself does not expand much on the settlement rate; it only mentions:

Over the first seven years of activity, the ratio of cases settled stands at around 70%.

Well, that’s true, but the settlement rate is apparently going down. Good for me: I do need some published judgments for this Blog! In any event, a settlement rate of 70% is anything but alarming; it is still outstanding.

If you wonder about the case where legal aid has been granted, I am pretty sure that it is the main proceeding in the aftermath of S2013_009; see also this Blog here.

Reported by Martin WILMING

PRESS RELEASE

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ANNUAL REPORT 2018

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The Annual Report is also available in German, French and Italian.

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The post The Federal Patent Court’s Annual Report 2018 appeared first on FPC Review.

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FPC Review by Martin Wilming - 1w ago
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Case No. O2018_013 | Hearing of 18 March 2019

These proceedings are following-up on the case O2014_002 (discussed on this Blog here in more detail) where the FPC held that certain non-return valves for urinals produced by von Allmen AG were infringing EP 1 579 133 B1.

From what has been argued at the hearing, it appears that the defendant had obtained valves from a Swiss supplier (presumably Enswico AG; meanwhile liquidated) which in turn had obtained the valves from von Allmen AG. Thus, infringement was not an issue anymore.

Based on the information obtained in proceedings O2014_002, the plaintiff alleged that Aquis Systems had obtained 17’500 infringing valves. On the contrary, Acquis Systems argued that it had only obtained 4’700 valves in total, that those valves had been produced while a license agreement had still been in place and that it had believed in good faith that a license fee of CHF 1,85 per piece had been paid to Mr Dahm. Note that the patent had initially been granted to Mr Dahm, but has been assigned to the plaintiff Daspaco AG in 2013; see Swissreg.

Further, Acquis Systems argued that Daspaco had no standig to bring this suit, since it had not been the proprietor of the patent at the relevant time.

Meeting the goal …

The presiding judge pushed the parties to have settlement discussions, given the small amounts of money involved. And, indeed, both parties agreed.

Hopefully, the parties got this resolved.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2018_013 | Hearing of 18 March 2019

Daspaco AG
./.
Aquis Systems AG

Panel of Judges:

  • Dr. Christoph GASSER
  • Dr. Tobias BREMI
  • Dr. Ralph SCHLOSSER

Judge-rapporteur:

  • n/a

Court Clerk:

  • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

  • Cyrill RIEDER (FMP)
  • Kurt STOCKER (KHP), assisting in patent matters

Representative(s) of Defendant:

  • Philip SCHNEIDER (SMS)

O2014_002
Partial decision of 21 November 2016

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The post Return of the non-return valves appeared first on FPC Review.

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Case No. S2018_006 | Decision of 8 February 2019

CSEM logo

The plaintiff in this infringement case is CSEM, the patentee of EP 1 422 436 B1; see Swissreg and the EPO register for further bibliographic information about the patent in suit.

CSEM sued Cendres+Métaux Microtech AG and Cendres+Métaux SA for infringement of EP’436. The attacked embodiment is the CMK1 movement that features a hairspring made of silicon:

CMMT‘s CMK1 movement

Interestingly, the decision also notes that EP’436 had already been challenged in a nullity case at the FPC, i.e. O2012_015. That case had been settled after the second ordinary judge Tobias Bremi had provided expert opinions in his capacity as judge-rapporteur; these opinions had held that the patent was valid.

Ulysse Nardin logo

O2012_015 apparently is the case L’ AGEFI had reported about already back in 2013: This was an earlier dispute with Sigatec (a joint-venture of Mimotec and Ulysse Nardin). A hearing in O2012_015 had been announced on the FPC’s website twice (for 21 October 2013 and 29 November 2013), but the announcement disappeared in both instances well before the hearing. That fits nicely with L’AGEFI’s report on Friday, 29 November 2013 that the settlement had been reached a few days in advance of the hearing scheduled for exactly that Friday (‘ce vendredi’). Note that Ulysse Nardin had apparently been the first brand to introduce a silicon component in a wristwatch, with a silicon escapement in ‘The Freak’ of 2001:

Ulysse Nardin’s ‘The Freak’ (2001)

Infringement of the patent

CSEM asserted the patent only to the extent of independent claim 1 (features 1.1 to 1.7) in combination with dependent claim 2 (feature 2); i.e., the following features are at stake, in English (translation) and French (language of the proceedings of the patent):

  English translation French (orig.)
1.1 A hairspring intended to equip the balance wheel of a mechanical timepiece and Ressort spiral destiné à équiper le balancier d’une pièce d’horlogerie mécanique et
1.2 in the form of a spiraled rod (10) cut from an {001} single-crystal silicon plate formé d’un barreau (10) en spirale issu du découpage d’une plaque {001} de silicium monocristallin
1.3 having a first thermal coefficient (C1) and a second thermal coefficient (C2) of its spring constant C présentant des premier (C1) et deuxième (C2) coefficients thermiques de sa constante de rappel C,
1.4 the turns of said hairspring having a width w and a thickness t les spires dudit ressort spiral ayant une largeur w et une épaisseur t,
1.5 said rod comprises a silicon core (12) and ledit barreau comportant une âme (12) en silicium et
1.6 an external layer (14) of thickness ξ formed around the silicon core une couche externe (14) d’épaisseur ξ formée autour de l’âme en silicium et
1.7 made of a material having a first thermal coefficient of the Young’s modulus of opposite sign to that of the silicon constituée d’un matériau présentant un premier coefficient thermique du module d’Young de signe opposé à celui du silicium
2 said external layer (14) is made of amorphous silicon oxide (SiO2). ladite couche externe (14) est réalisée en oxyde de silicium (SiO2) amorphe
C+M logo

The defendants argued that the highlighted features in 1.2 were not fulfilled in the attacked embodiment, i.e. that i) the spiraled rod is not ‘cut from’ a silicon plate, but rather worked out by way of a plasma-assisted etching method ; and ii) the orientation of the silicon plate is not {001}, but rather {110}.

With respect to the feature ‘cut from’, the decision holds in ¶22 that a proper construction in view of the specification shows that this feature is not limited to a cutting process in a narrow literal sense, but rather has to be understood in the sense of ‘working out’. Both parties had apparently not put forward any construction of the feature. Still, claim construction is a question of law. The decision holds that the defendant’s assumption is mistaken that the court must not construe the ‘cut out’ feature in the sense of ‘working out’ in the absence of an allegation to that effect by the plaintiff:

Da die Auslegung des Patentanspruchs eine Rechtsfrage ist, geht die Annahme der Beklagten fehl, das Gericht dürfe den Anspruch mangels entsprechenden Vortrags der Klägerin nicht so auslegen, dass er auch etwas anderes als einen Schneidprozess erfasst.

With respect to the orientation of the silicon plate, things are getting interesting. It was beyond dispute that there is an outer layer of SiO2 around the silicon core in the attacked embodiment. See the microscopic images of a broken hairspring in ¶11 of the decision:

Broken hairspring; enlarged microscopic images (left: 4’000x; right: 15’000x)

The decision notes that it is not possible to spot features 1.5-1.7 without destroying / breaking the hairspring. This was apparently undisputed and/or known to the court (‘[u]nbestritten respektive gerichtsnotorisch’).

CSEM did not dispute that the orientation of the silicon plate was not {001}, but rather {110}. Thus, only infringement under the doctrine of equivalents (DoE) was at stake, from the very beginning. An interesting factual setup for applying the DoE, in particular in a world after ‘Pemetrexed’.

Firstly, the decision recalls the checklist that the FPC applies in the assessment of infringement under the DoE in Switzerland, with reference to O2015_018 (¶60). Indeed, the same wording of the three questions has already been used in O2015_015 (in French language), i.e.:

Q1: Same effect (‘Gleichwirkung’)

In conjunction with the other technical features of the patent claim, does the modified feature objectively fulfil the same function as the claimed feature?

Erfüllt das abgewandelte Merkmal im Zusammenwirken mit den übrigen technischen Merkmalen des Patentanspruchs objektiv die gleiche Funktion wie das beanspruchte Merkmal?

Q2: Accessibility (‘Auffindbarkeit’)

Is the same function obvious for the skilled person from an objective point of view, taking into account the teaching of the patent, when the features are exchanged?

Ist die Gleichwirkung für den Fachmann bei objektiver Betrachtung unter Berücksichtigung der Lehre des Patents offensichtlich, wenn die Merkmale ausgetauscht sind?

Q3: Equal value (‘Gleichwertigkeit’)

Does the skilled person who has read the patent objectively come to the conclusion that the patentee has formulated the claim — for whatever reason — so narrowly that he does not claim protection for an embodiment that has the same effect (Q1, above) and is accessible (Q2, above)?

Gelangt der Fachmann bei objektiver Lektüre der Patentschrift zum Schluss, der Patentinhaber habe den Anspruch — aus welchen Gründen auch immer — so eng formuliert, dass er den Schutz für eine gleichwirkende und auffindbare Ausführung nicht beansprucht?

Further, the genesis and the prosecution history of the patent is not decisive for claim construction and, thus, for the scope of the claims:

Die Entstehungsgeschichte bzw. das Erteilungsverfahren ist für die Auslegung der Patentansprüche und damit auch für die Bestimmung des Schutzbereichs grundsätzlich nicht massgebend.

Interestingly, the defendants did not really challenge that both the first and the second question were to be answered in the affirmative. Thus, it all boils down to the ‘right’ assessment of only the third question, and/or whether the applicant has waived any rights to claim infringement under the DoE.

In a first step, the decision analyses what the skilled person concludes from the patent specification itself in respect of the relevance of the orientation of the silicon plate. The orientation is mentioned quite often. But it is held that the skilled person does not get any indication from the patent specification per se that the patentee has formulated the claim so narrowly that he does not claim protection for an embodiment of same function (Q1) that is accessible (Q2). In particular, from an obvious point of view, it cannot be inferred from the claim — even when taking the description into account — that conformity with the primary wording is one of the essential requirements of the invention.

The aftermath of ‘Pemetrexed’

Boom! Welcome to the post-‘Pemetrexed’ world. Would you have guessed that before the Supreme Court decisions in Germany, the U.K. and Switzerland?

After having dealt with the patent as such, the decision also assesses whether the applicant might somehow have waived his right during prosecution to now allege infringement under the DoE. Therefore, one may well consider the prosecution history.

The decision emphasizes that from an amendment of the claims, wherein the attacked embodiment was literally covered by the originally filed claims but is no longer literally covered by the amended claims, it cannot automatically be concluded that the applicant intended to waive protection for this embodiment. Rather, the reason for the amendment is decisive. Only if the amendment was made to overcome objections relating to the attacked embodiment — e.g. in view of free prior art for the attacked embodiment — one may conclude that the applicant has waived protection for equivalents of the amended feature. The Swiss Supreme Court in 4A_208/2017 (¶5.5.8) had referred to and agreed with the corresponding 'Pemetrexed' judgment of the German Supreme Court which had held in ¶68 that

[…] if the amendment was made with regard to formal requirements […] or if it is not sufficiently clear for what reason it was made, a selection decision […] cannot normally be assumed.

Further, the decision holds that a waiver of protection for equivalents could be assumed if the specification of the patent shows (at least) two concrete embodiments with which the inventive effect can be achieved, but only one of these embodiments is reflected in the claim (see 4A_208/2017 (¶5.5.4), with reference to X-ZR 29/15 of the German Supreme Court (hn).

Now, how did that play out in the present case?

The prosecution history does not make clear why the orientation of the silicon plate that had originally been specified in dependent claim 2 had later been included in claim 1. The independent claim had been re-drafted after receipt of the search report on the application as filed. The search report mentioned two documents of category ‘X’ (highly relevant), including JP 06-117470 A. But the subsequent limitation of claim 1 also included yet further features of claims 3 and 4, and the applicant’s submission to the EPO of 12 November 2004 lacks any explanation as to the motivation of the amendment. Because the two ‘X’ documents were considered relevant for the patentability of claims 1 and 2 only (which indicates that the features of claim 2 did not appear to be a sufficient limitation) and because only the features of claim 4 were included in the characterizing part of the amended claim, the skilled person cannot easily assume that the limitation to the orientation {001} was made in order to delimit the subject matter of the patent from the prior art. For this purpose, the inclusion of the features of claims 3 and 4 while omitting the features of claim 2, would have been sufficient. With the further limitation, the applicant possibly wanted to pro-actively an anticipated objection of undue extension of subject-matter (Art. 123(2) EPC) or insufficiency of disclosure (Art. 83 EPC). It is therefore not sufficiently clear why the specific limitation had been made.

Further, the decision emphasizes that the limitation did not distinguish the claimed subject-matter from the free prior art for the attacked embodiment. JP 06-117470 A does not reveal an outer layer that encloses the silicon core as it is in the attacked design. It therefore does not represent a free prior art for the attacked embodiment. Even if one were to assume that the limitation would have been made to distinguish the invention from JP 06-117470 A — which is not sufficiently clear — it cannot in any case be said that the limitation was made with regard to the free prior art for the attacked embodiment. The skilled person therefore cannot and must not assume that patent protection is not sought for embodiments of same effect (Q1) which are accessible for him as a skilled person, with knowledge of the invention (Q2).

What remains to be dealt with in accordance with ‘Okklusionsvorrichtung‘ and ‘Diglycidylverbindung‘ (and as confirmed in 'Pemetrexed') is the question of whether or not there was a situation of, in simple terms:

What is (specifically disclosed but) not claimed is disclaimed.

The decision holds that the patent does not reveal at least two specific embodiments of which only one is claimed. The unique specific embodiment that is disclosed uses silicon wafers of orientation {001}. The defendants have pointed out that the plaintiff admitted (apparently in the written proceedings before the FPC) that the patent when read together with JP 06-117470 A taught the expert that the three crystal orientations of the silicon plate were of same effect for the purposes of the invention. However, this was of no avail. It only establishes that Q2 has to be answered in the affirmative, i.e. that the same effect of the replacing feature had been accessible for the skilled person. It does not mean that specific embodiments were disclosed in the specification of the patent itself. The mere fact that the applicant could have recognized that silicon plates of orientation {110} have the same effect as those of orientation {001} in the context of the invention is not sufficient. Otherwise protection under the DoE for replacing features of same effect (Q1), which could be readily found by the skilled person (Q2), would be excluded because of the third question — what cannot be it:

Dass die Anmelderin hätte erkennen können, dass..

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Groundhog Day: Yet another one …

It feels like I’m on repeat: There is yet another referral to the EBoA in the pipeline, in addition to those listed on this Blog here.

Frankly, this referral is somewhat out of the ordinary.

The underlying case is IPCom‘s EP 2 378 735 B1; see the EPO Register for further bibliographic information.

The appellant Jostarndt Patentanwalts-AG had submitted various third party observations during the examination phase — but the patent had nevertheless been granted. Jostarndt lodged an appeal against the decision of the ED to grant EP'735 and argued that the raised objections re clarity had not been duly considered by the ED. Jostarndt took the view that it must be entitled to appeal since otherwise, because of the limited grounds for opposition, there is no legal protection against the ED’s failure to consider the objections under Art. 84 EPC. Further, Jostarndt argued that there was an intolerable gap of legal protection and made clear that it seeks to have this fundamental question clarified. The Board accordingly summoned to oral proceedings on 25 January 2019 to the premises of the Boards of Appeal in Haar. Now, here we are at the gist of the matter: The appellant requested that the hearing be re-located to Munich, since Haar is not listed in the EPC as one of the premises of the EPO; ¶V.

[Die Beschwerdeführerin] hat […] eine mündliche Verhandlung auch über die Zulässigkeitsfrage beantragt und stellte, nachdem die Kammer sie für den 25. Januar 2019 zu einer mündlichen Verhandlung in das Dienstgebäude der Beschwerdekammern nach Haar geladen hatte, Antrag auf Verlegung der Verhandlung nach München, da das Europäische Patentamt dort seinen Sitz habe, und Haar – anders als Den Haag – «im Europäischen Patentübereinkommen offensichtlich nicht als Ort für Handlungen oder Verhandlungen vorgesehen» ist.

The Board did not re-locate the hearing but rather cancelled it, and submitted the following questions to the EBoA (in the German language of the proceedings):

1.  Ist im Beschwerdeverfahren das Recht auf Durchführung einer mündlichen Verhandlung gemäss Artikel 116 EPÜ eingeschränkt, wenn die Beschwerde auf den ersten Blick unzulässig ist?

2.  Wenn die Antwort auf Frage 1 ja ist, ist eine Beschwerde gegen den Patenterteilungsbeschluss in diesem Sinne auf den ersten Blick unzulässig, die ein Dritter im Sinne von Artikel 115 EPÜ eingelegt und damit gerechtfertigt hat, dass im Rahmen des EPÜ kein alternativer Rechtsbehelf gegen eine Entscheidung der Prüfungsabteilung gegeben ist, seine Einwendungen betreffend die angebliche Verletzung von Artikel 84 EPÜ nicht zu berücksichtigen?

3. Wenn die Antwort auf eine der ersten beiden Fragen nein ist, kann die Kammer ohne Verletzung von Artikel 116 EPÜ die mündliche Verhandlung in Haar durchführen, wenn die Beschwerdeführerin diesen Standort als nicht EPÜ-konform gerügt und eine Verlegung der Verhandlung nach München beantragt hat?

Inofficially translated:

1.  In appeal proceedings, is the right to an oral hearing under Article 116 EPC restricted if the appeal at first sight appears inadmissible?

2.  If the answer to question 1 is in the affirmative, is an appeal against the decision to grant a patent prima facie inadmissible which a third party (in the sense of Article 115 EPC) has lodged and justified by the fact that there is no alternative remedy under the EPC against a decision of the Examining Division not to take into account its objections concerning the alleged violation of Article 84 EPC?

3. If the answer to one of the first two questions is no, can the Board hold the oral proceedings in Haar without infringing Article 116 EPC if the appellant complains that this location is not in conformity with the EPC and has requested that the hearing be moved to Munich?

Q1 and Q2 are interesting in that they will clarify the extent of the right to be heard. The referring Board explicitly notes that an answer to Q3 will likely be needed, i.e. the answer to Q1 and/or Q2 will likely be ‘No’; see ¶3.4 and 4.1:

Die Kammer geht davon aus, dass die Frage nach dem richtigen Verhandlungsort auch im vorliegenden Fall, also trotz ihrer vorläufigen Einschätzung, die Beschwerde sei unzulässig, entscheidungserheblich ist; die Kammer folgt insoweit der herrschenden Rechtsprechung […], wonach einem Antrag der Beschwerdeführerin auf Durchführung einer mündlichen Verhandlung regelmäßig auch bei ersichtlich unzulässigen Beschwerden nachzukommen ist.

But when it comes to Q3, things can get interesting. The answer will essentially depend on whether the President of the European Patent Office or the Administrative Council of the European Patent Organisation, which authorised the President to rent the new office building and thus to relocate the Boards of Appeal to the municipality of Haar, had the power either to appoint organs of the Office within the meaning of Art. 15 EPC also outside the areas covered by the EPC (Art. 6(2) EPC including the Protocol on Centralisation, I(3)a), or whether Art. 6(2) EPC is to be interpreted in a way that ‘Munich’ does not mean the city of the same name but a whole (not more precisely defined) region, or the district (‘Landkreis’) of the same name, which borders on the city of Munich (which does not belong to the district of Munich, as it is a free city).

Let’s have a quick look at a map. The district Munich is marked-up in dark grey in the insert in the figure below. The new premises of the Boards of Appeal are located in Haar (marked-up in red):

Now, where is ‘Munich’?

The referring Board notes that it is not aware of the exact reasoning why the President took the view in 2016 that a relocation of the Boards of Appeal to a place outside the city limits of Munich was in accordance with the EPC, and that it thus has not yet formed its final opinion on the issue; ¶3.3. Well, this will now be something for the EBoA to find out.

Once more: Stay tuned …

Reported by Martin WILMING

The map is based on Hagar66‘s Wikimedia Commons image (slightly modified), with kind permission. 

REFERRAL TO THE ENLARGED BOARD OF APPEAL
in case T 831/17 by Board 3.5.03

Chairman: F. van der Voort
Member: P. Guntz
A. Madenach

Interlocutory decision of 25 February 2019:

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The post Munich, or Haar, or what?! The Enlarged Board of Appeal will have its say! appeared first on FPC Review.

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Busy times ahead for the Enlarged Board of Appeal (EBoA). While we are still awaiting the decision G 1/18, and only shortly after the referral re double-patenting, yet another Board referred questions to the EBoA in case T 489/14; interlocutory decision of 22 February 2019. Computer-implemented inventions (CIIs) are at stake now. The last time that the EBoA had to deal with CIIs was the finally inadmissible (yet exhaustively answered) referral by the President in G 3/08.

Now, the underlying case is EP 1 546 948 which pertains to a computer-implemented method of simulating pedestrian motion. It’s a Euro-PCT application published (without search report) as WO 2004/023347 A2; the (belated) search report had been published separately as  WO 2004/023347 A3.

The application had been refused by an Examining Division (ED) already back in 2013; the ED held that the claimed subject-matter was not inventive. It’s all about how to assess computational simulations: The referring Board disagrees with the reasoning of Board 3.5.01 in T 1227/05, the reasoning of which would clearly have helped the present applicant’s case: In T 1227/05 it had been held that a computational simulation of a circuit was both technical and non-obvious, even though it had no direct physical effect.

To resolve the issue, the following questions are referred to the EBoA:

1. In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?

2.  If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?

3.  What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?

The outcome of this referral will not only affect claim drafting practice, i.e. whether claims will be drafted with and/or without some physical implementation step(s). Perhaps more importantly, an answer to Q1 in the affirmative would significantly improve the position of companies / developers that are active in the field of technical simulations and which are no longer involved in the actual physical implementation. Will their work product finally be patentable per se?

Stay tuned …

Reported by Martin WILMING

REFERRAL TO THE ENLARGED BOARD OF APPEAL
in case T 489/14 by Board 3.5.07

Chairman: R. Moufang
Member: R. de Man
P. San-Bento Furtado

Interlocutory decision of 22 February 2019:

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