http://ipkitten.blogspot.com/2019/12/until-when-can-patent-claims-be-limited.html
The last days of the year offer the opportunity to look back to those court cases that will potentially have a lasting impact. While many of the 20+ decisions of the Swiss Federal Patent Court (and counting) issued in 2019 will have clarified and developed substantive points of Swiss patent law, a recent case will also decisively and profoundly shape how invalidity proceedings are conducted in the future [to the extent the decision is confirmed by the Supreme Court in the pending appeal proceeding].
Background
In a patent invalidity proceeding (either as a separate lawsuit or in defense of an infringement action), the limitation of the scope of the patent-in-suit in order to overcome arguments related to lack of novelty or of inventive step, is a classic and popular means of defense. The point in time at which this defense is raised, probably more than any other defense, is a strategic issue. A limited patent claim necessarily re-opens questions that have already been argued (at least in part) and necessitates a fresh analysis of both invalidity and infringement.
In recent years, the Swiss Federal Patent Court (FPC) has followed a strict approach. Claim limitations had to be declared with the second exchange of briefs at the latest (in the claimant’s reply or in the defendant’s rejoinder). This practice was based on the principles of the Swiss Code of Civil Procedure (CCP), which sets forth, in brief summary, that all factual allegations and means of evidence must be filed with each party’s second brief at the latest.
New facts can only be alleged after the second exchange of briefs if: (i) they are genuinely new (i.e. occurred after the closure of the file; “proper nova”); or (ii) the party making the allegation could not have filed them earlier (in spite of having conducted the proceedings diligently; “improper nova”).
The Federal Patent Court consistently understood that limited patent claims are “new facts” brought into the proceedings by the patentee. Hence, limitations of patents after the second exchange of briefs have usually been declared inadmissible.
The Case
In a decision dated 28 October 2019, the FPC has departed from this practice. The lawsuit related to the distribution in Switzerland of an artificial joint prothesis. The patentee, Stemcup Medical Products, sued Implantec and Endoprothetik Schweiz for infringement of the Swiss part of EP 1 411 869. After the second exchange of briefs, the technical judge issued a technical opinion, finding the patent-in-suit to be invalid.
In response, Stemcup requested and was granted by the Federal Institute of Intellectual Property (FIIP) a limitation of the Swiss part of the patent-in-suit, thereby avoiding the technical judge’s invalidity arguments. It then filed the limited patent claims in the pending proceedings.
The FPC issued a second technical opinion based on the new claims, finding the patent to be valid and infringed. After the main hearing, the FPC confirmed the second technical opinion and issued a permanent injunction against the defendants.
The FPC reasoned that a limitation granted by the FIIP created a genuine new fact within the meaning of the Code of Civil Procedure. That this new fact had been deliberately created by the patentee is not relevant. Ignoring the limitation of the claims would lead to a situation in which the decision would not be based on the patent-in-suit as it is registered at the time of the decision, but on a version of it that no longer exists. In this case, therefore, the lawsuit should be dismissed, meaning that the patentee would have to re-start the proceedings anew based on the limited patent. This would not be in the interest of efficiently conducting patent proceedings.
The FPC also dismissed the defendants’ argument that the limitation, made so late in the proceedings, had been done so in bad faith. The Patent Act explicitly provides for the possibility of limiting the patent with the FIIP. Art. 138(3) EPC also explicitly requires that “in proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent shall have the right to limit the patent by amending the claims.”
Underscoring the controversial nature of the matter, a minority of the court published a dissenting opinion (a highly unusual move in Swiss civil law). The dissent considers that if the limited patent is indeed a “new fact”, it should be considered as having resulted from bad faith conduct by the patentee at this late stage. The patentee could have requested the same limitation in the Patent Office at the time of the second exchange of briefs, as the relevant arguments of invalidity had already been on file.
Comment
The defendants have appealed the decision to the Supreme Court, so this may not be the end of the matter. A decision on appeal is expected in the first half of 2020. If the result is affirmed, this decision will put patentees in a much easier position than today, as even multiple successive limitations will be possible at any point in time until the hearing, and potentially until a decision is given. This Kat understands that this is the position already adopted by many European jurisdictions (but should he be mistaken, corrective comments by readers are welcome).
Still, the decision should be viewed against the background of an important peculiarity of the proceedings in the FPC. Before the main hearing, one of the three (or five) judges renders a “technical opinion” on the validity and infringement of the patent-in-suit. This technical opinion is not binding, but it is more often than not confirmed by the court in the final decision. If limitations are allowed after the issuing of the technical opinion (as in this case), there is a risk that the technical opinion will become an “instruction manual” to the patentee on how then to limit the patent-in-suit to avoid a finding of invalidity.
Picture on the left (c) Diana Francey / Francey Vins
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