MLL successfully represented ImplanTec GmbH in a case before the Federal Supreme Court that finally brought clarity on the limitation of patents during civil proceedings


Meyerlustenberger Lachenal AG (MLL) represented ImplanTec GmbH, a family owned company specialized in the development, manufacture and sale of artificial hip joint endoprostheses in patent infringement proceedings before the Federal Patent Court and in subsequent appeal proceedings before the Federal Supreme Court. Michael Ritscher (Head of IP) acted as legal representative of ImplanTec GmbH.

Patent infringement proceedings were initiated by Stemcup Medical Products AG against ImplanTec GmbH before the Federal Patent Court in September 2016. As a matter of defence ImplanTec raised invalidity arguments against the patent of Stemcup Medical Products AG. After the exchange of briefs had ended, the patent owner filed a limitation of its patent with the Swiss Institute of Intellectual Property and submitted the limited patent into the pending infringement proceedings. The Federal Patent Court decided that the limited patent could be brought into the proceedings even though the exchange of briefs had already been concluded. Therefore, patent infringement was affirmed by the court. Two judges issued a dissenting opinion for the first time in the history of the Federal Patent Court.

In the subsequent appeal proceedings initiated by ImplanTec GmbH, the Federal Supreme Court concluded that the Federal Patent Court should not have taken the limited version of the patent into account, since it was submitted to the court after the exchange of briefs had already ended and after the written technical opinion of the technical judge was already issued. The Federal Supreme Court therefore approved the appeal by ImplanTec GmbH and wrote-off the infringement claim as groundless.

This long awaited Federal Supreme Court decision finally brought clarity concerning the controversial question of up to what point during patent infringement proceedings the patent owner can still limit its patent or up to what point the court can still take such limitation into account for its decision respectively.