Dismissal of patent infringement claim due to impermissible intermediate generalization in the patent claim

Facts

The appellant, a US company, is the holder of the Swiss/Liechtenstein part of European patent EP xxx B1 (patent in dispute) for a medicinal product injection pen. The patent was filed on 15 March 2012 and granted on 1 May 2019. It relates to the simultaneous improvement of the functions "dial back" (dose reset) and "last dose control" (last dose management) as well as a simplified arrangement of the pen.

The respondent, a Swiss public limited company, was sued by the appellant before the Federal Patent Court for patent infringement. The appellant alleged that the respondent manufactured, offered for sale and placed on the market medicinal product injection pens that fell within the scope of protection of the patent in dispute. The respondent contested the infringement and challenged the validity of the patent.

On 10 January 2020, the appellant filed a patent infringement claim with the Federal Patent Court. In its rejoinder of 7 September 2020, it defended the patent in dispute in a restricted version (main request) as well as in fifteen further restricted versions (auxiliary requests). Claim 1 of the patent in dispute as asserted in auxiliary request 1f includes, among other things, a "dose stop member" that is intended to prevent the setting of a dose greater than the remaining quantity of medicinal product. The appellant sought an injunction against the manufacture, offer for sale, sale and placing on the market of the contested pens, as well as disclosure of accounts, damages and destruction of any existing pens.

On 9 June 2021, the Federal Patent Court dismissed the claim. It held that the versions of the patent in dispute asserted went beyond the content of the original patent application and were therefore not valid. An examination of novelty and inventive step was therefore unnecessary.

The appellant filed an appeal in civil matters with the Federal Supreme Court and requested that the judgment of the Federal Patent Court be set aside and the matter referred back for a new assessment. It also sought a stay of proceedings until the conclusion of the opposition proceedings before the European Patent Office (EPO). The respondent requested that the appeal be dismissed.

Considerations

The Federal Supreme Court first examined the admissibility of the appeal. It found that this was a civil matter and that the final decision of the Federal Patent Court was appealable by way of an appeal in civil matters. The appellant did not make a substantive request but sought a referral back, as the lower court had not examined the issues of novelty and inventive step. The request for referral back was admissible, and the Federal Supreme Court admitted the appeal.

On the stay of proceedings:

The appellant complained of formal and substantive deficiencies in the dismissal of its request for a stay of proceedings. The Federal Supreme Court noted that the dismissal of a request for a stay of proceedings as a provisional measure may only be challenged on the grounds of a violation of constitutional rights. The appellant had neither filed a motion for recusal nor demonstrated any specific disadvantages arising from the subsequent reasoning in the final judgment. The general allegation of a violation of the right to be heard was not sufficiently substantiated. The Federal Supreme Court emphasised that the right to be heard is not an end in itself and that the lower court’s exercise of discretion was not open to criticism.

Substantively, the appellant argued that the proceedings should be stayed in order to avoid contradictory decisions, as opposition proceedings were pending before the EPO. The Federal Supreme Court pointed out, however, that any restriction of the patent claims by the EPO would result in a new technical situation and create a new basis for the claims. A stay of proceedings would therefore not be suitable for preventing contradictory decisions. Moreover, Art. 128 lit. b PatA and Art. 126 CPC grant the court considerable discretion, which the Federal Supreme Court reviews only with restraint. The lower court had appropriately taken into account the principle of expeditious proceedings (Art. 29 para. 1 Cst.) and the respondent’s interest in an expeditious conduct of the proceedings. The appeal on this point was therefore unfounded.

On the validity of the patent in dispute:

The Federal Supreme Court examined whether claim 1…