EPLAW Patent Blog

DE - Federal Supreme Court - Mautberechnung

Mautberechnung (Toll Calculation), invalidity proceedings, Federal Supreme Court, Germany, 19 April 2011, Docket No. X ZR 124/10

According to Section 81 (2) German Patent Act, a nullity action is inadmissible as long as parallel opposition proceedings are pending (“Principle of Subsidiarity”). This also applies if the nullity action is based only on a national prior right pursuant to Art. 139 (2) EPC – which cannot be considered in parallel European opposition proceedings.

Read a summary in English provided by Bardehle Pagenberg here.

Read the decision (in German) here.

DE - Federal Supreme Court - Cinch Stecker

Cinch Stecker (Cinch Plug), infringement proceedings, Federal Supreme Court, Germany, 5 April 2011, Docket No. X ZR 86/10

The owner of a patent who granted a royalty-free exclusive license to a third party nonetheless has standing to sue for damages if the owner of the patent has economic advantages connected to the use of the exclusive license.

Read a summary in English provided by Bardehle Pagenberg here.

Read the decision (in German) here.

DE - Federal Supreme Court - Kosmetisches Sonnschutzmittel III

Kosmetisches Sonnenschutzmittel III (Cosmetic Sun Screen III), invalidity proceedings, Federal Supreme Court, Germany, 1 March 2011, Docket No. X ZR 72/08

As a starting point for the evaluation of inventive step one may not exclusively consider the “problem” to be solved according to the description of the patent-in-suit, but one should also consider whether a (different) problem belonging to the field of activity of the skilled person would have rendered the solution obvious.

A patent claim, which was limited in a European limitation procedure before the European Patent Office in accordance with Article 105 (a), 105 (b) EPC may not be examined in view of clarity (Article 84 EPC) in German nullity proceedings, since lack of clarity is no ground for nullification.

Read a summary in English provided by Bardehle Pagenberg here.

Read the decision (in German) here.

DE - Schweissheizung (Welding Heater)

Schweissheizung (Welding Heater), invalidity proceedings, Federal Supreme Court, Germany, 22 February 2011, Docket No. X ZB 43/08

A patent can be revoked on the ground of unlawful usurpation, i.e. “theft” of the invention from the inventor, according to section 21 paragraph 1 number 3 PatG (German Patent Act) independent of the question of patentability of the subject-matter of the patent-in-suit.

Read a summary in English provided by Bardehle Pagenberg here.

Read the decision (in German) here.

EPO - Technical Boards of Appeal T 1411/08 and T 2127/09

EPO – Pairing Providers with consumers, Technical Board of Appeal 3.5.01, 6 June 2011, Docket No. T 1411/08 and EPO – Game Apparatus, Technical Board of Appeal 3.2.04, 12 May 2011, Docket No. T 2127/09

Notorious prior art and the necessity of an additional search by the Examining Division.

In its decision T 1515/07 "Cost estimate/SAP", Board 3.5.01 conceded that an Examining Division had discretion as to whether or not an additional search was necessary for a claimed mixture of technical and non-technical features when a search had not been carried out by the Search Division under Rule 63(1) EPC ("no meaningful search possible"). However, this discretion was limited to the special cases of notoriously known features or those explicitly accepted by the applicant as known. As long as no search had been performed, an Examining Division should normally not refuse an application for lack of inventive step if the invention as claimed contained at least one technical feature which was not notorious. The Board explicitly warned against an approach of finding a search not necessary because a decision could be reached anyway. This case law has now independently been confirmed by two different Boards.

Read a summary in English provided by Bardehle Pagenberg here.

Read the decisions (in English):
- T 1411/08: here.
- T 2127/09: here.

NL - 'A different perspective on Samsung v. Apple'

A different perspective on Samsung v. Apple: Guidance on enforcing FRAND pledged patents in the Netherlands, by Gertjan Kuipers, Douwe Groenevelt and Oscar Lamme, De Brauw Blackstone Westbroek

"On Friday 14 October 2011, a Dutch court handed down an important decision in the ongoing, worldwide patent dispute between Apple and Samsung. The preliminary relief judge of the District Court of The Hague denied Samsung's claim for a preliminary (patent) injunction against Apple, accepting Apple's 'FRAND defence'. Although several sources have suggested otherwise, this ruling does not imply that it is no longer possible to obtain an injunction based on 'FRAND pledged' standard essential patents in the Netherlands. On the contrary, the decision provides guidance as to the approach that a patent holder should take in order to ensure that it can successfully enforce its FRAND pledged patents in (preliminary relief) court proceedings. The Court only found that Samsung had not complied with this approach."

Read the entire contribution (in English) here.

Read our previous post here.

EPLAW - Opinion on EU Patent System

Effects of an inclusion of regulations concerning the content and limits of the patent holder's rights to prohibit in an EU regulation for the creation of unitary European patent protection, by Prof. Dr. Rudolf Kraßer, Munich University of Technology, Max Planck Institute

* Now inlcuding an English translation*

The Opinion examines whether the inclusion of substantive patent law provisions into the Regulation for the creation of a Unitary Patent is favourable or rather disadvantageous. Prof Kraßer comes to the conclusions that in view of the fact that the United Court is obliged under Art. 267 TFEU to submit questions of interpretation of EU legal acts, all legal concepts which describe a form of infringement like making, offering, placing on the market or using a product …, altogether several dozens which constitute core subjects of every litigation action. For most of them exist an unlimited number if national decisions whose evaluation often entirely depends on the underlying technical facts and their (correct) understanding in the given case. Prof. Kraßer demonstrates that these rules which have been derived from the text of the former Communuity Patent Convention (which has never entered into force but has been incorporated into most national laws) were not intended to become part of the Community law under this Convention and therefore had never been intended to become subject to referrals to the CJ.

Examples of how courts have to approach these concepts suppport his conclusion that an “important share” of the cases litigated before the divisions of the United Court would be subject to referrals for preliminary ruling by the CJEU and result in delay, higher cost and workload for all parties and “severely counteract to the goals of the project of enhanced cooperation”. Leaving these rules in the Regulation would therefore also “run contrary to the objectives of a speedy and efficient enforcement of protected industrial property rights”.

Read the entire opinion (in English) here.

NL - Samsung v. Apple - FRAND

Samsung v. Apple, District Court The Hague, The Netherlands, 14 October 2001,Case No. LJN: BT7610

*Now including a translation in English*

Samsung recently accused Apple of patent infringement. The four patents that were invoked by Samsung in the four preliminary injunction proceedings before the President of the District Court of The Hague relate to the 3G technology. Before discussing the infringement and validity of each of these patents, the President ordered a preliminary hearing applicable to all four cases regarding Apple’s FRAND defense and its other preliminary defenses.

On the FRAND issue, Apple argued that the offer made by Samsung was so high that it could not be considered as a FRAND-offer. Under these circumstances, according to Apple, Samsung misused its patent rights by enforcing these against Apple. According to the President, the offer made by Samsung deviated so much from its obligation to conclude a FRAND-license, that one could derive from this that Samsung was in fact not willing to conclude a FRAND-license.

In response to the offer by Samsung, Apple had made a counter-offer. According to the President, this counter-offer was not such that one could derive therefrom that Apple was not interested in taking a license. Samsung’s argument that this could be derived from the fact that the counter-offer was limited to the Netherlands and did not cover Samsung’s full portfolio was rejected.

The President reasoned that under these circumstances it would be likely that the Court in proceedings on the merits would consider the enforcement of the patents by Samsung a misuse of patent rights. In view thereof there was no ground to issue a preliminary injunction, which was even the more so because of the far-reaching consequences of an injunction for Apple and the fact that the accused products had been on the markets for some time.  

Read the judgment (in Dutch) here. 
Read the judgment (in English) here.

CJEU - Realchemie v. Bayer - Enforcement Directive

Realchemie v. Bayer, Grand Chamber Court of Justice EU, 18 October 2011, Case C 406/09, with thanks to Marjanka Vermunt, Brinkhof, for sending in the judgment

The first case from the EUCJ on the interpretation of the Enforcement Directive. The CJEU rules that this directive applies to “an exequatur procedure brought in a Member State, in the course of which the recognition and enforcement is sought of a judgment given in another Member State in proceedings seeking to enforce an intellectual property right” and gives some general consideration on the purpose of the directive, in particular the  right for compensation of costs.

Read the decision (in English) here.

CJEU - Decision on patentability of inventions involving the use of human embryos

CJEU, 18 October 2011, reference for a preliminary ruling under Article 267 TFEU from the Bundesgerichtshof made by decision of 17 December 2009, (GRUR 2010, 212), in the proceedings Oliver Brüstle v. Greenpeace concerning the German patent 197 56 864, CaseC-34/10

 The Court answered the referred questions as follows:

 1.       Article 6(2)(c) of Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions must be interpreted as meaning that:

–        any human ovum after fertilisation, any non-fertilised human ovum into which the cell nucleus from a mature human cell has been transplanted, and any non-fertilised human ovum whose division and further development have been stimulated by parthenogenesis constitute a ‘human embryo’;

–        it is for the referring court to ascertain, in the light of scientific developments, whether a stem cell obtained from a human embryo at the blastocyst stage constitutes a ‘human embryo’ within the meaning of Article 6(2)(c) of Directive 98/44.

2.       The exclusion from patentability concerning the use of human embryos for industrial or commercial purposes set out in Article 6(2)(c) of Directive 98/44 also covers the use of human embryos for purposes of scientific research, only use for therapeutic or diagnostic purposes which are applied to the human embryo and are useful to it being patentable.

3.       Article 6(2)(c) of Directive 98/44 excludes an invention from patentability where the technical teaching which is the subject-matter of the patent application requires the prior destruction of human embryos or their use as base material, whatever the stage at which that takes place and even if the description of the technical teaching claimed does not refer to the use of human embryos.

The answer to the third question and the underlying reasons (paragraphs 49, 52) will have as a consequence that inventions making use of deposited cell lines which had originally been obtained by destruction of an embryo within the broad meaning of the answer to the first question will be considered as excluded from patentability. This applies even if the origin of the cell line is not part of the claim in question. The Court refers to the decision of the Enlarged Board of Appeal in case G 2/06, OJ EPO 2009, 306 – Use of embryos/WARF, concerning the parallel European patent application, noting that the EBA has reached the same conclusions in interpreting Rule 28 c) of the Implementing Regulations to the EPC. However, it seems that the EBA the EBA has not addressed the situation of the use of deposited cell lines (see G 2/06, Reasons pt. 25).

Read the judgment (in English) here.

Read the press release (in English) here.

Read a summary in English provided by Bardehle Pagenberg here.

Headnote and summary: Rudolf Teschemacher