EPLAW Patent Blog

DE - Dreinahtschlauchfolienbeutel / invalidity

Dreinahtschlauchfolienbeutel (Sachet for liquid drugs), invalidity proceedings (inventive step and secondary indicia), Federal Supreme Court, Germany, 30 July 2009, Docket No. Xa. ZR 22/06

As a matter of principle, the technical problem set out by the patent must be determined without considering the solution proposed by the patent. Furthermore, for assessing inventive step, the courts cannot solely rely on secondary indicia. Such secondary indicia are not suited to replace or exclusively justify the actual assessment that an invention involves an inventive step. 

Read the judgment (in German) here.

Read a summary in English (provided by Bardehle Pagenberg) here.

DE - Leistungshalbleiterbauelement / opposition

Leistungshalbleiterbauelement (High performance semiconductor component), opposition proceedings (admissibility of an opposition), Federal Supreme Court, Germany, 30 July 2009, Docket No. Xa. ZB 28/08

If a party files an opposition against a patent based on a prior application which cannot be considered for the assessment of inventive step, the opposition is admissible even if the party does not make clear whether the opposition is based on the ground of lack of novelty or on the ground of lack of inventive step.

Read the judgment (in German) here.

DE - Druckmaschinen-Temperierungssystem III / invalidity

Druckmaschinen-Temperierungssystem III (Cooling system for printing machines III), invalidity proceedings (value in litigation), Federal Supreme Court, Germany, 28 July 2009, Docket No. X. ZR 153/04

When assessing the value in litigation of invalidity proceedings, the court has to take into consideration the full amount of the damages claimed by the infringement plaintiff in (parallel) infringement proceedings as the minimum value in litigation.

Read the judgment (in German) here.

DE - Italian torpedo / infringement

(No name available), infringement proceedings (Italian torpedo), Court of Appeals Düsseldorf, 20 July 2009, Docket No. 2 W 35/09

No stay of German infringement proceedings in view of an already pending declaratory judgment action in Italy (“Italian Torpedo”): A general request before an Italian Court that a certain European Patent as well as any future protective rights deriving there from are not infringed, cannot justify a stay of German infringement proceedings in view of Art. 27 and 28 Regulation (EC) No. 44/2001, if the patents in suit before the German Court were granted after the filing of the request before the Italian Court and were not specifically made the subject matter of the Italian procedure before the German infringement action was filed.

Read the judgment here.

Read the extended summary (provided by Bardehle & Pagenberg) here.

DE - cost reimbursement for translation expenses / infringement

(No name available), infringement proceedings (cost reimbursement for translation expenses), Court of Appeals Düsseldorf, Germany, 17 July 2009, Docket No. 2 W 29/09

Translation costs for briefs of the party’s own attorney are reimbursable, in particular also, if the translation was prepared by the own attorney and not by an external translation service. In patent infringement cases and in view of the typically complicated texts, as a rule, a fee per line of EUR 4.00 can be applied.

Read the judgment (in German) here.

DE - Flüssigkristallanzeigevorrichtung / infringement

Flüssigkristallanzeigevorrichtung (Liquid crystal display device), infringement proceedings (preliminary injunction and urgency), Court of Appeals Karlsruhe, Germany, 8 July 2009, Docket No. 6 U 61/09

The Court of Appeals Karlsruhe confirms a first instance decision of the District Court Mannheim rejecting applicant’s request for a preliminary injunction for patent infringement, since the assessment of infringement was difficult and since a parallel procedure on the merits was pending in which a decision is expected to be issued within a few weeks.

Read the judgment (in German) here.

UK - Generics v Daiichi / Appeal

Generics (UK) v Daiichi, Court of Appeal, London, UK, 2 July 2009, Case No. [2009] EWCA Civ 646, with thanks to Marc Döring, Simmons & Simmons

In this case, the Court of Appeal has upheld the decision of Kitchin J that, although a course of action was obvious, the skilled person's motivation to pursue it to the point of making the invention was weak; and that accordingly the invention (an enantiomer of an antibiotic) was not obvious.

Read the extended summary (provided by Rowan Freeland and Scott Parker) here.

Read the appeal decision here.

Read the first instance decision here.

FR - Otis v. Schindler (07/07376)

Otis Elevator Company v. S.A. Schinlder, infringement and invalidity proceedings, Tribunal de Grande Instance, Paris, France, 1 July 2009, Docket No. 07/07376, with thanks to Pierre Véron, Véron & Associés

As the person skilled in the art had at his disposal all the characteristics of the preamble of asserted claim 1 in the prior German patent application, and since the roping technology allowed him to reduce the size of the sheaves, he did not need any inventive step to rationalize their assembling using a common shaft, without this technical arrangement impairing the functioning of the elevator. In view of these considerations, the Tribunal considers that claim 1 is invalid.

Also claims 1, 3, 5, 6, 7, 8, 11 and 13 of EP1 567 440 held by Otis are invalid for lack of inventive step.

Since the asserted claims are invalid, the infringement claims are without object.

Read the judgment (in French) here.

Read the judgment (in English) here.

FR - Otis v. Schindler (06/18186)

Otis Elevator Company v. S.A. Schinlder, infringement and invalidity proceedings, Tribunal de Grande Instance, Paris, France, 1 July 2009, Docket No. 06/18186, with thanks to Pierre Véron, Véron & Associés

Claim 1 of the foregoing patent is invalid for insufficient disclosure, the skilled person not being able to select the dimensions of the wedge clamp and its angle in order to obtain a compressive stress value lower than a defined value which is given neither by the patent nor by the knowledge accessible at the time of the invention. The other asserted claims being dependent on claim 1 insufficiently disclosed, they are also insufficiently disclosed and equally invalid.

Since the asserted claims are invalid, the infringement claims are without object.

Read the judgment (in French) here.

Read the judgment (in English) here.