Spraygun for electrostatic CoatingIn the case Nordson Corporation versus Gema Switzerland GmbH, the Swiss Federal Patent Court, the German Federal Patent Court and the German Regional Court of Düsseldorf (Landgericht Düsseldorf) come to different judgments concerning validity of the respective national parts of a European patent and its infringement. The different court decisions in Switzerland and in Germany are briefly summarized below.
Decision in Switzerland
In partial judgment Nordson Corporation (plaintiff) versus Gema Switzerland GmbH (defendant) of 25 August 2015, the Swiss Federal Patent Court states that in patent infringement cases in Switzerland, a substantive right to lay open information and billing procedures exists. In contrary to the German Federal Patent Court and the German Regional Court of Düsseldorf in the respective parallel proceedings, the Swiss Federal Patent Court follows the request of the plaintiff to its full extent, in that the cancellation request against the patent EP 0899016 B1 in suit is rejected, and in that injunction is approved. The defendant is convicted to lay open within 60 days from validity of the decision all information about sales and respective profits gained.
In a first step, the Swiss Federal Patent Court examined validity and infringement. If both are affirmed, then the plaintiff’s claim to lay open information regarding sales and billing is treated. Thus, first a partial judgment on injunction and accounting is made. After accounting, in a second step, the plaintiff is invited to substantiate and quantify his claim. After respective statements by the defendant it would be decided upon the quantitative in a final judgment.
Validity and Infringement
Independent claim 1 of the patent in suit reads as follows:
- An apparatus (20) for use in applying coating material to an object
- comprising a spray gun (24) having
- a handle portion (26),
- an extension portion (28)
- which is connected with the handle portion (26),
- a nozzle (42)
- connected with the extension portion (28),
- an electrode (46)
- disposed adjacent to the nozzle (42)
- and away from which electrostatically charged coating material flows toward the object,
- a coating material flow control member (74)
- connected with the handle portion (26) and
- manually operable to an actuated condition to initiate a flow of coating material from a coating material passage (62) in said extension portion (28) through the nozzle (42) toward the object,characterised in that
- the spray gun (24) also has a purge air flow control member (110)
- connected with the handle portion (26) and
- which is manually operable to initiate a flow of air from the coating material passage (62) in the extension portion (28) through the nozzle (42) to remove coating material from the spray gun (24).
In line with Art. 70 (1) of the European Patent Convention (EPC), the Swiss Federal Patent Court based its assessments of the Swiss part of the European patent on the English version of the patent specification, i.e. the assessments were conducted in the language of the proceedings before the European Patent Office (EPO).
The defendant contends that the patent in suit lacks the required novelty (compared to D1 EP 0611603 and D2 US 3,740,612). The patent in suit is also said to be lacking an inventive step (in the light of D1 in combination with common general knowledge, in the light of D1 in combination with US 5,381,962 (D3) and in the light of D1 in combination with US 3,606,170 (D4) or US 3,837,575 (D5) or US 4,193,546 (D6)). D1 has already been considered in the examination procedure before the EPO and is acknowledged as prior art in para.  of the specification of the patent in suit.
The Swiss Federal Patent Court does not follow these arguments laid down by the defendant and adjudicates infringement of the patent in suit by the spray gun "OptiFlex 2" distributed by the defendant. As a device, the "OptiFlex 2" literally complies with all features of claim 1 and hence imitates the claimed subject matter according to Art. 66 lit a. of the Swiss Patent Law (Schweizer Patentgesetz – PatG).
Decisions in Germany
In parallel to the proceedings in Switzerland, the German Regional Court of Düsseldorf (Landgericht or abbrev. LG Düsseldorf) and the German Federal Patent Court (Bundespatentgericht – BPatG) decided differently as the Swiss Federal Patent Court with regard to infringement and validity, respectively.
Infringement (Regional Court of Düsseldorf)
In Decision 4b O 25/13 of 12 June 2014, the Regional Court of Düsseldorf (LG Düsseldorf) denies infringement of the patent in suit by the spray gun "OptiFlex 2" distributed by the defendant. Hence, the plaintiff is not entitled to a requested ceaseanddesist order, laying open of information and accounting, determination of liability for damages, as well as recall and destruction according to Art. 64 EPC in conjunction with §§ 9, 139 para. 1 and 2, 140a and 140b para. 1 and 3 of the German Patent Law (Patentgesetz – PatG), and §§ 242, 259 of the German Civil Code (Bürgerliches Gesetzbuch BGB), respectively. The embodiment in suit is said to be not making use of the teachings of the patent in suit, neither literally nor in accordance with a use of equivalent means. In contrast to the Swiss Federal Patent Court, the Regional Court of Düsseldorf based its decision on the German version of the claims and does regard the text of the European patent language of the proceedings before the EPO as required by Art. 70 (1) EPC.
The decision of the Regional Court of Düsseldorf is in line with the decision of the Swiss FederalPatent Court concerning the assumption that it is apparent to a skilled artisan when reading the entire disclosure of the patent in suit, that it is essential for the operation of the spray gun under patent protection to be able to operate the coating material flow control member and the purge air flow control member with the same hand which grips the handle portion without releasing the handle portion. However, both literal infringement as well as infringement by equivalent means are denied because the LG Dusseldorf assumes that the spray gun "OptiFlex 2" does not comply with abovementioned features 14. and 15.
Validity (German Federal Patent Court)
In Desicion 4 Ni 26/13 (EP) of 29 April 2015, the German Federal Patent Court denies an inventive step with respect to the subjectmatter of independent claim 1 of the patent in suit (Art. 56 EPC) on the basis of D1. The patent in suit is maintained in Germany in a restricted form compared to the version as granted by the EPO.