EPLAW Patent Blog

DE - SISVEL v. Qingdao Haier Group – first German injunction after CJEU FRAND decision

SISVEL Wireless Patent Portfolio v. Qingdao Haier Group, Düsseldorf Regional Court, 3 November 2015, Cases 4a O 93/14 and 4a O 144/14, with thanks to ARNOLD RUESS, for sending in a summary in English

On 3 November 2015, the Düsseldorf Regional Court has issued two judgments against Haier Deutschland GmbH and the Haier Europe Trading SRL, entities of Chinese Qingdao Haier Group, and ordered them to cease and desist from, render account on and to pay damages for past infringements (Cases 4a O 93/14 and 4a O 144/14). The judgments are based on the German parts of the patents EP 0 852 885 and EP 1 264 504 and belong to the SISVEL Wireless Patent Portfolio. The judgements can be, but have not yet been appealed.

Read the entire summary here.

DE - Rotorelemente

Rotorelemente ("Die member"), Bundesgerichtshof, Germany, 12 May 2015, Case No. ZR 47/13

The Federal Supreme Court held in its very important decision “Rotorelemente” (“die member”) that a claim has always to be constructed in light of the description and the drawings. This holds also true for a claim which is logical in itself and therefore does not seem, at first sight, to need a profound claim construction, in taking into account drawings and description.

In the case that had to be decided, the claim was very clear in itself, but was in complete contradiction to the description, it was contradictory to the only example and to all drawings. This was due to an error that occurred at the end of the granting procedure, where two features in the claim were swapped wrongfully.

In the first instance decision, the Federal Patent Court had revoked the patent, since it was of the opinion that with a claim being consistent and logical in itself, there is no possibility to construct it in the sense given by the description and the drawings. The Federal Supreme Court overruled the decision saying that every patent claim needs to be constructed in light of the description and the drawings, even if, at first sight, the wording is clear und unambigous. In doing so, the Federal Supreme Court held that two features of the patent claim have to be constructed in a way that the wording of the claim has to be amended, following the sense of description and drawings.

DE - “Thickening polymer I” and “Thickening polymer II”

“Thickening polymer I” and “Thickening polymer II”, Bundesgerichtshof, Germany, 5 May 2015 and 7 July 2015. Case No's X ZR 60/13 and X ZB 4/14

The Federal Patent Court Bundesgerichtshof decided in its decision “Verdickerpolymer I” (Thickening polymer I, docket n° X ZR 60/13) that in order to destroy novelty of a patent, it is not necessary that all possible combinations of the claim were known in the state of the art. The patent claimed a composition of an associative thickener, a surfactant and water. The associative thickener should be selected from polyurethanes, polyesters, modified cellulosics, poIyester-urethanes, polyether-alpha olefins and polyether-polyols; the surfactant had to be selected from anionic and non-ionic surfactants and mixtures thereof, the rest being water.

In the state of the art, there was known a composition of a polyurethane thickener and a non-ionic surfactant, in the amounts claimed in patent claim 1, with the remainder being water. The patentee argued that only one possible combination falling under the patent claim was known in the state of the art, whereas all other possible combinations were not known. However, he did not disclaim a combination of a polyurethane, a non-ionic surfactant and water.

EU - Conference on Litigation and Settlements in Patent Disputes

The Academy of European Law (ERA), based in Trier, Germany, is organising a conference on “Litigation and Settlements in Patent Disputes” 

The conference, which is to be held in Trier on 7-8 May 2015, aims to provide patent litigators and attorneys with practical guidance on how to make the best use of EU and international legal instruments in litigation and mediation/arbitration proceedings.

Key topics are:

Litigating before the Courts
- Choice of courts and applicable law
- Domestic and cross-border injunctions
- Settlement of patent litigation and FRAND commitments
- Case management before the Unitary Patent Court and before national Courts
- Courts procedures over the EU
- Validity of no challenge clauses

DE - Kurznachrichten / bifurcation

German Federal Supreme Court in re „Kurznachrichten“, docket no. X ZR 61/13

The attractiveness of litigating patents in Germany resides to a great extent in the bifurcated system which provides for separate and distinct proceedings concerning infringement on the one hand and invalidity on the other. Above all, this separation is for the following three reasons a privilege to the patentee: firstly, infringement proceedings are faster than invalidity proceedings, secondly, they are rarely stayed by the infringement trial courts in light of parallel invalidity proceedings and thirdly, it is very difficult to suspend the enforcement of provisionally enforceable infringement decisions.

The recent decision “Kurznachrichten” dated 16 September 2014 of the German Federal Supreme Court is of great importance in that context. In the operating provisions of this decision it is clearly spelled out that the enforcement of non-final infringement decisions must as a matter of principle be suspended if the patent in dispute is declared invalid in first instance invalidity proceedings. Only, if such invalidity decision is evidently wrong, a different approach might apply.

EU - No Building for the Unified Patent Court?

No Building for the Unified Patent Court?, by Ulrich Blumenröder, Grünecker

When it was already foreseeable at the end of 2001/beginning of 2012 that the establishment of a European Patent Court would be no chimera (any longer), but rather a reality, all big states made great efforts to host the seat of the central chamber, and towns (in Germany) tried to become the seat of local chambers. The advantage for the respective Member State, the respective Federal state and the respective town was generally regarded as considerable.

Now, following the decision in favor of Munich as the seat of a department of the central chamber and a local chamber, the implementation seems to lack the enthusiasm of the efforts employed in the context of the decision of principle.

Read the entire contribution here.

See a nice map and collage here.

DE - Are Patents merely “Paper Tigers”?

Are Patents merely “Paper Tigers”?, by Peter Hess, Dr. Tilman Müller-Stoy and Martin Wintermeier, Bardehle Pagenberg

Patents, whose legal validity is assumed generally and particularly in infringement proceedings, are in fact subject to a considerable risk of being declared invalid in Germany. The present contribution confirms this based on a statistical evaluation of the case law of the German Federal Patent Court and the German Federal Court of Justice in nullity matters in the period from 2010 to 2013.

The identified facts and figures can be summarized as follows: 

• The invalidation rate of all Senates of the German Federal Patent Court is 79.08% in total.
• The invalidation rate of the German Federal Patent Court regarding the S/T patents which are (currently) of particular relevance from an economic point of view is even 88.11%.
• The invalidation rate of the German Federal Court of Justice regarding confirming judgments is 75.25%
• The invalidation rate of the German Federal Court of Justice regarding amending judgments is 80.56%.
• The invalidation rate of the German Federal Court of Justice regarding confirming judgments concerning S/T patents is 79.41%.
• The invalidation rate of the German Federal Court of Justice regarding amending judgments concerning S/T patents is 73.34%.
• The German Federal Court of Justice has confirmed approx. 60 % of the judgments of the German Federal Patent Court and has amended approx. 40 % of the judgments of the German Federal Patent Court.
• About 2/3 of the amending judgments of the German Federal Patent Court are in favor of the patent proprietor.
• The main ground for invalidations by the German Federal Patent Court is lack of patentability in 75% of the cases, followed by “Miscellaneous” with almost 12%, inadmissible extension with almost 11% and lacking enablement with approx. 2%.
• A significant difference in the invalidation rate of German patents as com-pared to the invalidation rate of German parts of European patents is not established; in fact, the rates are nearly identical.

 Read the entire contribution on the Bardehle Pagenberg website here. 

DE - A fair warning relating to warning letters

Order of the Higher Regional Court Düsseldorf, Germany, dated March 20, 2014, docket no. I-2 W 8/14

On March 20, 2014, the Higher Regional Court Düsseldorf had to decide whether the explicit assertion of claims based on one or several explicitly named national parts of an EP patent in a warning letter or a court action could implicitly also be deemed to be an entitlement to claims relating to further national parts of the identical EP patent against the alleged infringer.

DE/EU - Unitary Patent and national law

Unitary Patent and national law, by Dr. Tilman Müller-Stoy and Florian Paschold, Bardehle Pagenberg

With regard to unitary patents, national law often has to be applied to fill in the gaps the unitary patent regulation has left. If we take the EPO’s application figures since 2010 as a basis for the unitary patent, it can be predicted that German law will (partly) have to be applied to over 80% of all unitary patents in the future. Although the unitary patent will be an extremely important industrial property right in economic terms, there is much about it that is still unclear. Nevertheless, the exploitation of future unitary patents should be considered even now, as the substantive law governing the unitary patent as an object of property will already be determined with a present patent application.

Read the entire contribution here.

 

DE - Collagenase I and II and Colour delivery system

Collagenase I and II (GRUR 2014, 461 + 462) and Colour delivery system - Pharmaceutical applications and expertise in the case of inventive step

It may come as a susrpise that the decisions Collagenase I and II delivered in relation to the scope of application for further pharmaceutical applications are presented together with the decision "Colour delivery system" (judgment of 11.3.2014, case no.: X ZE 139/10). As regards the question of the extent to which expertise should be drawn on when examining the obviousness of inventions, the decisions reveal a new, overarching point of view. This is the reason for dealing wiht them jointly.

Read the entire summary provided by Preu Bohlig & Partner (in English) here.

Read the decisions (in German) here:

Farbversorgungssystem
Kollagenase I
Kollagenase II

DE - Eli Lilly v. Actavis

Eli Lilly and Company v. Actavis Group PTC ehf, Actavis Deutschland GmbH & Co. KG and the general manager of its managing entity; Dusseldorf District Court, judgment dated 3 April 2014, docket no. 4b O 114/12, with thanks to Andreas von Falck, Daniel Brook and Stephan Neuhaus, Hogan Lovells, for sending in the judgment, as well as a translation and a summary in English

On 3 April 2014, the Dusseldorf District Court issued an injunction against Actavis Group PTC ehf based on equivalent patent infringement of the German part of Lilly's dosing regimen patent EP 1 313 508. The patent protects the approved use of Lilly's anti-cancer drug Alimta with Vitamin B12. The injunction prohibits Actavis Group PTC ehf from importing or marketing a generic medicament which contains pemetrexed dipotassium (the claim of Lilly's patent refers to pemetrexed disodium as does the marketing authorisation for Alimta) after expiry of Lilly's compound SPC on pemetrexed in December 2015 in Germany. The complaint was dismissed as regards Actavis Deutschland and its general manager. The judgment is not final and can be appealed.

DE - Mölnlycke / comment: ruling gives more effect to torpedo actions

German Federal Supreme Court ruling on Mölnlycke case gives more effect to torpedo actions, by Dietrich Kamlah and Christof Höhne, Taylor Wessing

"In a recently published decision (ref. no. X ZR 70/12 – Wundverband), the German Federal Supreme Court ruled that an exclusive licensee cannot bring patent infringement proceedings, if the patentee himself has already brought patent infringement proceedings against the same defendant and the license was granted only after proceedings by the patentee had been initiated. This decision might limit the options of a patentee to sue an infringer who has already filed a “torpedo” action under the same patent."

Read the entire contribution here.

DE - First Munich International Patent Law Conference

On the 14th of June 2013 the first Munich International Patent Law Conference will take place.

The conference is organized by (amongst others) the District Court of Munich I, the Bavarian State Ministry of Justice and the Technical University of Munich. The European Patent Office and the Munich Patent Litigators (a group of presently 18 law firms with a strong patent litigation practise, which was formed for this purpose) support the conference.

This year's topic is: "Calculating Damages in Patent Infringement Cases". Language of the conference is English.

Please find the entire programme and the registration form here.

DE - Accord/Teva/Hexal v. AstraZeneca / Seroquel XR

Accord Healthcare Ltd., Teva Deutschland GmbH and Hexal AG v. AstraZeneca AB; Federal Patent Court, Germany, 13 November 2012, 3 Ni 43/10 (EP) 3 Ni 24/11 (EP) and 3 Ni 25/11 (EP), with thanks to Anja Lunze, Taylor Wessing, for sending in the head note and a translation of the decision in English

Upon request of the three plaintiff’s the Federal Patent Court invalidated AstraZeneca’s patent EP (DE) 0 907 364, which was for a sustained release formulation of an anti-psychotic drug quetiapine (marketed as Seroquel XR).  After the decision Astra Zeneca renounced on the further enforcement of several interim injunctions that had been granted on the basis of the AstraZeneca patent against generic companies by the Düsseldorf court in May 2012. 

The decision of the Federal Patent Court follows a series of other decisions in Europe dealing with the validity of the AstraZeneca patent. The results have been mixed: In Spain and the Netherland (see this blog here) the patent was upheld, in UK the patent was invalidated (see this blog here) 

The Federal Patent Court invalidated the patent for lack of inventive step. The reasoning that was just issued by the Federal Patent Court is similar to the reasoning of the UK High Court.

The Federal Patent Court found that it was clear from the prior art (e.g. Gefvert) that a once daily administration of an immediate release formulation of quetiapine was not sufficient to ensure an effective treatment.  The person skilled in the art was motivated to consider an SR formulation since he could assume that such formulations would not only reduce the frequency of administration but also improve patience compliance and lead to a constant plasma level of the active agent which is a particular important clinical advantage. Formulating the quetiapine using a gelling agent was obvious to try and just required routine tests. The Federal Patent Court rejected the argument of the patentee that certain specific properties of quetiapine would have deterred the skilled person from considering an SR formulation of quetiapine. According to the Court there are no hints in the patent specification that such problems indeed existed and had to be solved by inventive activity.

Read the judgement in English here

Read the judgement in German here

DE - Huawei v. ZTE / Referral CJEU re Standard Essential Patents

Huawei v. ZTE, District Court Dusseldorf, Germany, 21 March 2013, case no. 4b O 104/12

Huawei has sued ZTE for infringement of a patent related to the LTE-standard, which Huawei has declared as being essential to the LTE standard towards the European Telecommunication Standards Institute (ETSI). ZTE has distributed base stations for mobile communication using LTE related software.

In 2009, the German Federal Supreme Court ruled out in “Orange Book Standard” that the enforcement of a cease and desist claim based on standard essential patents may be abusing antitrust regulations in case the defendant has offered taking a license under specific conditions and has complied with the license provisions. Subsequently, German instance courts had often to deal with the compulsory license defence in standard essential patent cases. In particular, there was no established case law whether the license offer can be made under the condition that the patent has in fact been used by the defendant and that the patent is considered to be valid.

The District Court Dusseldorf now decided to request the CJEU to clarify specific questions related to the compulsory license defense in standard essential patent cases. The court stated that there are conflicting legal opinions on these questions and referred to the “Orange Book Standard” decision and the press release of the European Commission of December 21, 2012, according to which the enforcement of a cease and desist claim based on standard essential patents was considered by the European Commission as abusing antitrust regulations, if the defendant was open to negotiate taking a license.

It is to be expected that the statement of the CJEU would clarify the conformity of the “Orange Book Standard”-based German case law with European antitrust regulations and would also conclude many open aspects of the conflicting arguments.

Read the judgement (in German) here.

Head note: Thomas Schachl

DE - Huawei v. ZTE, District Court Dusseldorf, Germany, March 21, 2013, case no. 4b O 104/12

Huawei has sued ZTE for infringement of a patent related to the LTE-standard, which Huawei has declared as being essential to the LTE standard towards the European Telecommunication Standards Institute (ETSI). ZTE has distributed base stations for mobile communication using LTE related software.

In 2009, the German Federal Supreme Court ruled out in “Orange Book Standard” that the enforcement of a cease and desist claim based on standard essential patents may be abusing antitrust regulations in case the defendant has offered taking a license under specific conditions and has complied with the license provisions. Subsequently, German instance courts had often to deal with the compulsory license defence in standard essential patent cases. In particular, there was no established case law whether the license offer can be made under the condition that the patent has in fact been used by the defendant and that the patent is considered to be valid.

The District Court Dusseldorf now decided to request the EUECJ to clarify specific questions related to the compulsory license defense in standard essential patent cases. The court stated that there are conflicting legal opinions on these questions and referred to the “Orange Book Standard” decision and the press release of the European Commission of December 21, 2012, according to which the enforcement of a cease and desist claim based on standard essential patents was considered by the European Commission as abusing antitrust regulations, if the defendant was open to negotiate taking a license.

It is to be expected that the statement of the EUECJ would clarify the conformity of the “Orange Book Standard”-based German case law with European antitrust regulations and would also conclude many open aspects of the conflicting arguments.

Read the judgement (in German): https://www.justiz.nrw.de/nrwe/lgs/duesseldorf/lg_duesseldorf/j2013/4b_O_104_12_Beschluss_20130321.html

DE - Bundesgerichtshof rules that patents on embryonic stem cells are partially valid

In a fundamental decision on 27 November 2012 (BGH Decision of 27 November 2012, case no.: X ZR 58/07) the Bundesgerichtshof ruled that a patent (DE 197 56 864) registered in favour of the German stem cell researcher, Oliver Brüstle, is invalid in part.

The subject of the patent, which was applied for in 1997, is the protection of neural precursor cells and the procedure to cultivate these cells and use them in therapy of neural defects. Using the invention by Mr Brüstle upon which the patent is based, transplantation of neural precursor cells in the nervous system can play an important role in treating Parkinson's disease and multiple sclerosis in the future. Such neural precursor cells are usually obtained from embryonic stem cells and can then be used as transplant material.

The European Patent Office deemed that such neural precursor cells, the method for producing them and their use in therapy of neural defects were patentable, and in 1999 granted the patent which Oliver Brüstle applied for, and registered it in the patent register.

Greenpeace e.V. filed an action for annulment of this patent before the Federal Patent Court. According to Greenpeace the subject of this patent violated public policy and accepted principles of morality insofar as it concerned precursor cells which were developed from human embryonic stem cells. Use of such cells is also being discussed because the state of the art at the time destroyed the embryo when the neural precursor cells were produced.

DE - leflunomide and teriflunomide

Leflunomide and teriflunomide, Bundesgerichtshof, Germany, 24 July 2012, Case no. BGH X ZR 126/09

In its decision BGH X ZR 126/09 as of 24 July, 2012, the Bundesgerichtshof nullified a patent that claimed a composition of leflunomide and teriflunomide. Leflunomide is, i.a. used against rheumatoid arthritis, whereas teriflunomide is the active metabolite of leflunomide, that means that within a usual storage period, leflunomide is metabolized to teriflunomide. It One skilled in the art would have come to a formulation comprising leflunomide as only therapeutic agent before the priority date without being inventive. However, the person skilled in the art had no incentive to come to a combination of leflunomide and teriflunomide in the amounts as claimed in the patent.

The Bundesgerichtshof ruled that despite the fact that the claimed combination was novel and inventive, the patent had to be nullified, because the combination of the two components occurred necessarily within usual storage periods from the single agent medicine comprising only leflunomide as active ingredient. Therefore, the only question to decide was if it would have been novel and inventive to the person skilled in the art to come to a single agent leflunomide preparation. The Bundesgerichtshof denied this question and nullified the patent, because the result of the work of the person skilled in the art necessarily revealed the claimed combination of leflunomide and teriflunomide.

DE - Agfa v. Papier Union

AgfaGraphics N.V. v Chengdu Xinggraphics Co.Ltd; German Federal Supreme Court, Germany, 14 August 2012, Case No. X ZR 3 /10, with thanks to Julia Bödeker and Christoph de Coster, TaylorWessing, for sending in the judgment and a head note in English

In the above judgement, the German Federal Supreme Court made its final ruling in the long pending dispute between Agfa Graphics N.V. and Chendgdu Xingraphics Co.Ltd. concerning a key patent on lithographic printing plates. The German Federal Supreme Court overruled the decision of the Federal Patent Court and fully re-established the patent as granted.  The dispute is accompanied by infringement actions filed by Agfa in Germany and the Netherlands. The EPLAW Patent Blog published a previous decision from the Netherlands here.

The Court ruled on the priority claimed by a Art 54 III EPC application. The Court made a distinction between the novelty test and the priority test, emphasizing that examples that inherently disclose a certain element of a technical teaching (in this case UV-insensitivity) might anticipate that teaching, but do not necessarily establish the basis for claiming priority. Such a priority claim does not only require that the element is specifically disclosed in the previous application, but further that it is disclosed as being part of the invention (Art. 88 IV EPC). According to the court there is no direct and unambiguous disclosure of the whole technical teaching in the priority document if examples are described that inherently disclose all elements of the technical teaching but do not enable the person skilled in the art to make a purposeful selection between examples featuring all elements of the technical teaching and examples not featuring all of them.

 Read the decision (in German) here.

DE - Sanofi v. Actavis

Sanofi SA v. Actavis Deutschland GmbH & Co, Düsseldorf Regional Court, Düsseldorf, Germany, 15 August 2012, Case No. 4a 0 109/12, with thanks to Pierre Véron and Isabelle Romet,  Véron & Associés, for sending in the judgment and the translation in English

A preliminary injuction against Actavis was awarded. Read more here.

Read the decision (in German) here.
Read the decision (in English) here.

DE - German Supreme Court "Pallet Container II"

German Supreme Court, 17 July 2012, docket no. X ZR 97/11 - "Palettenbehälter II"

The decision “Pallet Container II” deals with the important distinction between the permissible “repair” of a patented product and the impermissible “renewed-manufacturing” of this product. From a practical point of view, the decision addresses the legal boundaries to aftersales competition regarding “wear-and-tear-parts” and consumables (e.g. coffee pads or ink cartridges). As will be detailed below, in the future the “end customer’s perception and understanding” will play an important role in order to decide whether these boundaries are crossed or not.

Whereas in Germany a “repair” of a patented product is considered as its “intended use” and therefore warranted under the principle of exhaustion, the “renewed-manufacturing” is considered as a further commercial exploitation of the patented invention which is only permissible with the patentee’s consent.

DE - Nestec v. Ethical Coffee Company

Nestec v. Ethical Coffee Company (suisse) SA and Betron AG, Düsseldorf District Court, Germany, 16 August 2012, with thanks to Bernhard Arnold and Cordula Tellmann-Schumacher, Arnold Ruess for sending in the judgment and a head note in English

The Swiss companies Ethical Coffee Company and Betron are marketing in Germany – and other countries – coffee capsules under the brands Espresso and Esprimo. The capsules are made from biodegradable material and are compatible for Nespresso machines. Nestec holds a patent which claims an extraction system comprising a device for extraction of a capsule (i.e. a coffee machine) and a capsule. Nestec asserted this patent in preliminary proceedings against Ethical Coffee Company and Betron on the basis of alleged indirect infringement.

The case was legally particularly interesting as back in 2005 the Düsseldorf Court of Appeal had decided in a similar case concerning the Senseo coffee-pads that there could be an indirect infringement by offering coffee-pads compatible to Senseo coffee machines (judgment dated 17 November 2005, 2 U 35/04). However, in 2007 the Federal Supreme Court further specified the criteria of indirect infringement and exhaustion in its decision Pipettensystem (judgment dated 27 February 2007, X ZR 38/06). Now, the Düsseldorf District Court followed the Pipettensystem decision and ruled that there is no indirect patent infringement as the patentee’s rights are exhausted with the sale of the Nespresso machines. The use of the Nespresso machines by the consumers with capsules of third parties forms part of the intended use of the machines.

Read the judgment (in German) here.
 

DE - E-Mail via SMS

E-Mail via SMS, German Federal Supreme Court, 22 November 2011, Case No. X ZR 58/10

In the above judgment, the German Federal Supreme Court ruled on obviousness of improvements of data structures provided in an international standard, finding that a skilled person concerned with selectively improving a data structure provided in an international standard normally feels compelled to make recourse to mechanisms already envisaged by the standard for solving the technical problem. If an assessable number of possible problem-solving approaches arise from the standard, each of which has specific benefits and drawbacks, as a rule good cause is given to take each of these approaches into consideration.

Issues of "technical character" and/or "statutory exclusion" were neither raised by the parties nor by the Federal Supreme Court.

Read the decision (in German) here.
Read the summary in English (provided by Bardehle Pagenberg) here.

Head note: Stefan Steinbrener

DE - Calculation of damages for patent infringement on the basis of a substantially "increased" royalty rate

Calculation of damages for patent infringement on the basis of a substantially "increased" royalty rate District Court Munich I, Germany, 25. March 2010, Case No. 7 O 17716/09

The District Court Munich I had to decide on a damages complaint based on patent infringement.

The starting point of the decision is the so far well-established case law of the German Federal Supreme Court, according to which damages calculated according to the calculation method of a reasonable royalty had to be based on a royalty rate, rational business parties would have agreed upon in normal course of business. However, by advancing and specifying this case law, the District Court found inter alia that rational business parties would take into account that a patent infringement lawsuit triggering the respectively substantial legal costs was necessary for collecting royalty payments. This would justify a significant increase of the royalty rate for calculating damages over a royalty rate on which rational business partners had agreed upon contractually in a pre-trial situation.

The pre-trial royalty rate typically included a discount for the uncertainty of infringement and validity in the pre-trial situation. Since such situation was not comparable with a situation in which a patent litigation has delivered significant legal certainty, a substantially increased royalty rate had to be assumed to be agreed upon by rational business partners. Therefore, the Court held that the reasonable royalty rate to be determined in damages proceedings based on patent infringement is usually substantially exceeding a royalty rate business parties would have agreed upon in normal course of business in a pre-trial situation. Thus, the present decision improves the patentee's chances to collect higher damages based on the calculation method of the reasonable royalty in the future in Germany. A more comprehensive summary on this decision will follow shortly.

Read the decision (in German) here.

Head note: Tilman Mueller-Stoy

DE - Pralinenform II

Pralinenform II, infringement proceedings, German Federal Supreme Court, 22 April 2010, Docket No. I ZR 17/05

The German Federal Supreme Court decided in a trademark case that the mere presentation of products at a German trade fair is not automatically regarded as an offer of these products or as a putting of these products on the market. It is open whether this decision may be applied in patent infringement cases.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Gleitlagerüberwachung (plain bearing monitoring)

Gleitlagerüberwachung (plain bearing monitoring), nullity proceedings, German Federal Supreme Court, 31 August 2010, Docket No. X ZR 73/08

In case a patent specification is criticizing prior art, this may give reason to the person skilled in the art to further develop this prior art in a different way, except in case the critic was made ex post after the invention was made.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Walzgerüst II (Rolling Stand II)

Walzgerüst II (Rolling Stand II), nullity proceedings, German Federal Supreme Court, 7 September 2010, Docket No. X ZR 173/07

In case of a complex embodiment whose components or modules can just be moved in limited directions, an invention related to the movement of one component is not lacking an inventive step, if the specific way of movement requires a material redesign of the components.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Kinderhochstuhle im Internet (Children's high chairs on the internet)

Kinderhochstuhle im Internet (Children's high chairs on the internet, infringement proceedings, German Federal Supreme Court, 22 Juli 2010, Docket No. I ZR 139/08

The German Federal Supreme Court decided in a trademark case that operators of internet marketplaces, whose customers can offer its products automatically without the verification of the operator, are not obliged to manually check whether the offered products are copies of the original products. This decision may be transferred to patent related cases.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Novartis v. Actavis / SPC Valsartan

Novartis AG v. Actavis Deutschland GmbH and Actavis Ltd, Malta, Düsseldorf District Court, Germany, 8 March 2011, Case No. 4b O 280/10, with thanks to Frank-Erich Hufnagel and Cordula Tellmann, Freshfields, for sending in the case, including a translation and summary in English

"In preliminary proceedings initiated by Novartis AG against Actavis the Düsseldorf District Court held that Actavis' products containing the active ingredients valsartan and hydrochlorothiazide (HCTZ) would infringe Novartis' German SPC relating to valsartan (DE 196 75 036). In view of the pre-trial correspondence between the parties, there was no imminent threat as to an infringement of the underlying basic patent EP 0 443 983 B1. The decisions may be appealed. The key legal question was whether a combination product containing two active ingredients (e.g. valsartan and HCTZ) would fall under the scope of a SPC for one of these active ingredients, namely valsartan.

The Court explains:

"In view of the not very precisely phrased and thus not easy to understand wording of article 4 SPC-Regulation, the legislative purpose of the limitation of the protection only to "the product covered by the marketing authorisation" is of key importance for the interpretation of this article." 

DE - Image support for navigating a catheter

Bildunterstützung für Katheternavigation (Image support for navigating a catheter), German Federal Supreme Court, 31 August 2010, Docket No. X ZB 9/09

The mere fact that a patent claim comprises the indication of a function, does not mean, that this indication relates to the claim or a feature of such claim. The indication might also have the only purpose to give a hint to the technical field or technical background the claim or one ore more features of the claim is related to and therefore to help the person skilled in the art to facilitate the classification of the invention.

Following the decision of the Enlarged Board of Appeal G 1/07, the Federal Supreme Court states that a method for supporting a surgeon while navigating a catheter is not a method for treatment of the animal body by surgery. Therefore, the support of a vascular surgeon by supplying him with images of the vascular itself does not fall under the scope of Art. 53c EPC 2000.

Read the decision (in German) here.

Head note: Konstantin Schallmoser

DE - Fahrzeugsteuer (Vehicle Tax)

German Federal Patent Court, 12 May 2010, Docket No. 4 Ni 21/09

Once more, the German Federal Patent Court (BPatG) decided that the subsidiarity principle as stated in section 81 par. 2 PatG (German Patent Act) is also applicable with respect to European patents and opposition proceedings before the European Patent Office (EPO) and is not limited to German patents and opposition proceedings before the BPatG. Therefore, independent of whether the case is about a German patent or a German part of a European patent, according to the subsidiarity principle a nullity action against the patent is inadmissible as long as an opposition against the patent may still be filed or is still pending.

Read the decision (in German) here.

Read the summary (in English) here.

Headnote and summary: Tilman Mueller-Stoy

DE - Steuervorrichtung (Control Device)

German Federal Supreme Court, 18 May 2010, Docket No. X ZR 79/07

The inventor acquires a right in a confidentially materialized teaching of a technical nature when such teaching was made the subject matter of a patent application, independently of the patentability of that subject matter. The applicant or owner of the patent has to surrender to the inventor the value of its use of the invention which he has made in the preferential situation of having knowledge of the invention, and/or of being the applicant or owner of a corresponding patent.

Read the decision (in German) here.

Read the summary (in English) here.

Headnote and summary: Tilman Mueller-Stoy

DE - German Supreme Court "Fentanyl TTS"

German Supreme Court, 18 November 2010, docket no. Xa ZR 149/07 - "Fentanyl TTS".

In the case at issue the preamble of independent claim 1 stipulated that the claimed system comprised "at least one Fentanyl containing matrix layer" whereas the characterizing portion only addressed the concentration of this active compound in the "matrix layers" of the claimed system. In light of this inconsistency (singular/plural), the Federal Patents Court reduced the scope of independent claim 1 to systems comprising multiple matrix layers. In sum, according to the Federal Patents Court the characterizing portion of the claim takes precedence over the preamble.

DE – Walzenformgebungsmaschine

Federal Supreme Court, Germany, 15. April 2010, Case No. Xa ZB 10/09

The German Federal Supreme Court had to decide on an appeal against the cancellation of a utility model which was derived from a European Patent. The Federal Patent Court (previous instance) had cancelled the utility model without considering the decision of the European Patent Office, which upheld the respective European patent in amended form.

 

DE – Blasenkatheterset

Dusseldorf Appeal Court, Germany, 29. April 2010, Case No. I-2 U 126/09

The Dusseldorf Appeal Court had to decide on an appeal regarding the first instance refusal of a preliminary injunction request based on a patent.

The Dusseldorf Appeal Court upheld the first instance decision and refused the pre-liminary injunction request since the validity of the patent was uncertain in view of the court. In this context, the court indicated that in preliminary injunction proceedings, the validity of the patent needs to be sufficiently certain. If the patent is subject to opposition or subject to nullity proceedings or if it is likely that such proceedings are to be initiated, the requesting party has the burden of proof to show to the court that the invalidity objections are unjustified. The mere fact that the patent was granted is not sufficient in this regard. The validity of the patent is only sufficiently certain if the patent has already survived first instance opposition or nullity proceedings.

Read the decision (in German) here.

Read the summary (in English) here.

Headnote and summary: Tilman Mueller-Stoy

 

DE – Schnittstellenarchitektur

German Federal Patent Court, 17 November 2010, Docket No. 5 Ni 137/09 (EU) (connected with 5 Ni 139/09 (EU) and 5 Ni 153/09 (EU)), Highpoint v. E-Plus, Ericsson and Nokia Siemens Networks.

Patent holder High Point achieves a victory in the patent dispute against E-Plus, Ericsson, and Nokia Siemens Networks in Germany. Contrary to the decision of the District Court The Hague of September 15, 2010, Docket No. 352544 / HA ZA 09-3931 (read the decision in Dutch here), the German Federal Patent Court upheld High Point’s European Patent 0 522 772 in Germany with judgment of November 17, 2010. It dismissed the invalidity complaints of E-Plus, Ericsson, and Nokia Siemens Networks against the patent, which is plead to be essential for the UMTS-standard by High Point, for being unfounded.

The written reasoning of the judgment and a short summary thereof will be published here as soon as available.

 

DE - Ziehmaschinenzugeinheit II

German Federal Supreme Court, 29 June 2010, Docket No. X ZR 49/09

If, before the priority date of a new invention, the prior art stagnated over a long period of time, then it is a question of the circumstances of the individual case (here: long development cycles in the concerned technical field) whether this indicates that the new invention is obvious to the person skilled in the art in regard to the prior art or not.

The person skilled in the art being a trained engineer considers within the framework of his research also prior art from a different technical field if, due to the kind of problems addressed there, in principle solutions can be expected to be found which the person skilled in the art needs, even though the problems might differ significantly in detail (here: measure to reduce friction between machine elements in the case of devices for forming and compressing cables, respectively, downhole tools for introducing pipe sections into boreholes on the one hand and in the case of traction units for drawing of metallic stock on the other hand).

Read the decision (in German) here.

Read the summary (in English) here.

Headnote and summary: Tilman Müller-Stoy

DE - Maschinensatz (Machine assembly) / infringement proceedings

DE – Maschinensatz (Machine assembly), infringement proceedings, German Federal Supreme Court, 6 May 2010, Docket No. Xa ZR 70/08

German Federal Surpreme Court on staying infringement proceedings in cases in which the patentee asserts only a limited claim version as compared with the granted claim version: If a patent is asserted in infringement proceedings with a limited claim version – which is defended in parallel invalidity proceedings –, the limited claim version must be considered in the infringement proceedings even before a final decision in the invalidity proceedings is rendered.

Read the decision (in German) here.

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

Head note: Tilman Müller-Stoy

DE - Crimpwerkzeug III (crimping tool III)

Crimpwerkzeug III - Federal Supreme Court, Germany, 29. June 2010, Case No. X ZR 193/03

The Federal Supreme Court had to decide on the admissibility to file an appeal with the Federal Supreme Court in patent infringement proceedings.

The court held that the mere argument, the lower court which has issued the attacked ruling would have interpreted the scope of the patent claims erroneously is no sufficient reason to be admitted to file an appeal with the Federal Supreme Court. In the decided case, the Federal Supreme Court – however – determined the appeal to be admissible if the interpretation of the patent claims of the lower court which has issued the attacked ruling is different to the interpretation found by the Federal Supreme Court in parallel nullity proceedings.

Read the decision (in German) here.

Read a summary in English, provided by Bardehle & Pagenberg, here.

Head note: Tilman Müller-Stoy

DE - Bidding in Bulgaria / Rome II

Ausschreibung in Bulgarien ("Bidding in Bulgaria"), Federal Supreme Court, First Senate, Germany, 11 February 2010, published on 3 August 2010, Docket No. I ZR 85/08

The First Senate of the Federal Supreme Court held that even if two German companies are the only competitors in a foreign market within the EU, the applicable law shall be the law of that foreign country and not German law on unfair competition. The decision was ruled under German Private International Law applicable until January 2009. However, the Court stated explicitly that the same shall apply under the rules of the so called Rome-II-Regulation which is in force now. More concretely, the Court emphasized that even if there are only German competitors on the foreign market, that foreign market is still likely to be affected. Therefore, the general rule of Art. 6 para 1 Rome-II-Regulation shall apply.

Art. 6 para 1 says that the law applicable to a non-contractual obligation arising out of an act of unfair competition shall be the law of the country where (inter alea) competitive relations are, or are likely to be, affected. The court explained that the competition between foreign companies acting in Germany on the one hand, and the competition between German companies acting in a foreign EU-country on the other hand, shall follow the same principles. Therefore, the former jurisdiction of the Senate (cf. BGH GRUR 1964, 316 - Stahlexport) shall not apply anymore in cases where the German companies are the only competitors on the foreign market. Additionally, the Senate held that it is not always possible to determine if there is a non-German competitor on the foreign market. Also, the Senate wants to avoid that the determination of the applicable law depends on the question if there is such third competitor or not.

This new rule will most probably also apply on the supplementary protection of performances by competition law that complements intellectual property rights.

Read the decision (in German) here.

Head note: Konstantin Schallmoser

DE - Polymerisierbare Zementmischung

Polymerisierbare Zementmischung, Federal Court of Justice, Germany, 11 May 2010, Case no. X ZR 51/06

As the nullity action in the first instance was only based on one or more ground(s) set out in Art. 138 (1) EPC the inclusion of a further ground for nullity in the appeal represents an amendment to the claim within the meaning of the requirement of § 533 no. 1 Code of Civil Procedure, which is also applicable in patent nullity proceedings pursuant to § 99 (1) Patent Act.
 
This Federal Court of Justice decision states that in patent nullity proceedings under the old law (patent nullity claims filed with the Federal Patent Court prior to 01.10.2009) the inclusion of a new ground for nullity may as a rule be regarded as relevant if the new ground for nullity can become part of the oral hearing in the appeal. Hence the inclusion of a new ground for nullity would normally be permitted.

On the other hand it is doubtful whether or not this applies to patent nullity proceedings filed after 01.10.2009. Pursuant to the new requirements set out in §§ 116, 117 Patent Act an amendment to the claim may as a rule only be supported by facts which were already subject of the first instance. Given the above, the inclusion of a new ground for nullity under the new law may only then be permitted if all facts necessary to illustrate the new ground were already pleaded in detail in the first instance so that on this basis alone a decision can be taken on the new ground for nullity.

Read the decision (in German) here.

Head note: Jan Dombrowski

DE - New Summaries

New summaries in English, with thanks to Tilman Müller-Stoy, Bardehle & Pagenberg, have been added to the following cases:

DE - Lundbeck v. Neolab / Escitalopram - invalidity

DE - Gelenkanordnung (hinge arrangement)

DE - Dynamische Dokumentengenerierung (dynamic document generation)

EPO - Enlarged Board of Appeal G 3/008 - Computer Implemented Inventions

DE - Lichtbogenschnürung (Electric arc lacing)

Lichtbogenschnürung (Electric arc lacing), pre trial proceedings for preserving evidence, German Federal Supreme Court, 16 November 2009, Docket No. X ZB 37/08

A written court expert opinion which was rendered in independent pre-trial proceedings for preserving evidence with respect to a presumed patent infringement may generally be disclosed to the attorney-at-law and the patent attorney of the Claimant (the patent owner) regardless of any secrecy interests of the Respondent (the presumed infringer) if the attorneys of the Claimant are obliged to secrecy vis-à-vis the Claimant and third parties.

Read the entire decision (in German) here.
Read a summary in English, provided by Bardehle Pagenberg, here.

Head note: Tilman Müller-Stoy

ECJ - Can a supplementary protection certificate based on a provisional marketing authorisation be granted?

Opinion of the Advocate General in Jodosulfuron published 17 June 2010 (Case 229/09, Lovells v. Bayer CropScience AG, referred by the German Federal Patent Court), with thanks to Christopher Brückner, Bardehle & Pagenberg for the head note and summary
 
This case concerns the interpretation of Article 3 (1) b of Council Regulation (EC) 1610/96 regarding the creation of a supplementary protection certificate for plant protection products based on a provisional marketing authorisation according to Article 8 (1) of Directive 91/414/EEC.

The following question has been submitted to the European Court of Justice:

"Is the existence of an authorisation to place the product on the market in accordance with Art. 4 of Directive 91/414/EEC exclusively decisive for the application of Art. 3(1) b of the Regulation or can a certificate also be granted based on an authorisation to place the product on the market in accordance with Art. 8(1) of Directive 91/414/EEC."

The opinion of Advocate General can be summarised as follows:

 I. Article 3 (1)(b) of Regulation (EC) No. 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products has to be interpreted to the effect that an SPC for a plant protection product cannot be granted based on a marketing authorisation according to Art. 8(1) of Directive 91/414/EEC of 15 July 1991 concerning the placing of plant protection products on the market.

II. Reference to this interpretation of Article 3(1)(b) of Regulation (EC) No. 1610/96 cannot be made in a request for nullification of a plant protection product SPC that was filed before enactment of the present decision.

Read the opinion (only in German) here.

The opinion in several other languages (soon also in English) can be found here.

DE - Dynamische Dokumentengenerierung (dynamic document generation)

DE - Dynamische Dokumentengenerierung (dynamic document generation), appeal on prosecution proceedings, German Federal Supreme Court, 22 April 2010, Docket No. Xa. ZB 20/08

German Federal Supreme Court closes gap on practice of European Patent Office with respect to computer implemented inventions.

Read a summary in English, provided by Bardehle & Pagenberg, here.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Fettsäurezusammensetzung (fatty acid composition)

DE - Fettsäurezusammensetzung (fatty acid composition), invalidity proceedings, German Federal Supreme Court, 15 April 2010, Docket No. Xa. ZR 28/08

As to obviousness, the Federal Supreme Court ruled in the field of drugs:

For the person skilled in the art who deals with the technical problem to provide a composition which has advantageous effects on risk factors for certain diseases, it is generally obvious to first examine the effects of known compositions, to determine their active agents and to concentrate them, if there are clues for an improvement of the effect by a higher agent dose.

 

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Telekommunikationseinrichtung (telecommunication device)

DE - Telekommunikationseinrichtung (telecommunication device), invalidity proceedings, German Federal Supreme Court, 15 April 2010, Docket No. Xa. ZR 69/06

As to obviousness and the references the person skilled in the art would refer to, respectively combine, the Federal Supreme Court ruled:

If there traditionally was a conceptual gap between two sectors of a technical field (here: data transmission in public telephone networks versus data transmission by means of internet/LAN technology), then nonetheless the person skilled in the art may have reason to refer to suggestions of both sectors in order to solve a technical problem if already on the priority date applications and methods evolved which pass the gap between both the sectors (here: internet telephoning) and if the technical problem has to be faced in both sectors in a similar manner.

Read the decision (in German) here.

Read a summary in English, provided by Bardehle & Pagenberg, here.

Head note: Tilman Müller-Stoy

DE- Nabenschaltung II (internal gear hub II)

DE- Nabenschaltung II (internal gear hub II), infringement proceedings, German Federal Supreme Court, 18 March 2010, Docket No. Xa ZR 74/09

According to Art. II § 3 1st paragraph IntPatÜG a translation of a European patent has to be provided to the German Patent and Trademark Office within 3-months of the publication of the grant of the European patent if the latter was not published in German language; this paragraph is applicable to European patents of which the publication of the grant was published between June 1, 1992 and April 30, 2008.

The Federal Supreme Court ruled that a translation of a European patent which was filed to meet the requirements of Art. II § 3 1st paragraph IntPatÜG and which exhibits omissions does not result in this European Patent having no effect for the territory of the Federal Republic of Germany according to Art. II § 3 2nd paragraph IntPatÜG: the latter paragraph is not applicable since any omissions are to be classified as mistakes of the translation and therefore do not lead to a missing translation in the sense of Art. II § 3 2nd paragraph IntPatÜG.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Nabenschaltung I (internal gear hub I)

DE - Nabenschaltung I (internal gear hub I), invalidity proceedings, German Federal Supreme Court, 16 March 2010, Docket No. X ZR 47/06

A motion for a declaratory decision according to Art. II § 3 2nd paragraph IntPatÜG is not to be filed with the invalidity courts but with the German Patent and Trademark Office.

Under German Law, a European patent has no effect in the territory of Germany if no translation of the European patent has been provided to the German Patent and Trademark Office within 3-months of the publication of the grant of the European patent if the latter was not published in German language. This applies to European patents of which the publication of the grant was published between June 1, 1992 and April 30, 2008. To record this legal consequence, the Federal Supreme Court has ruled that a motion for declaratory decision is not to be filed with the invalidity courts, but with the German Patent and Trademark Office.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy

DE - Proxyserversystem

Proxyserversystem, German Supreme Court – BGH, Decision of 18 March 2010, Docket No. Xa ZR 54/06

In nullity proceedings a European patent cannot be defended restricted to patent claims which do not meet the requirements of a clear and precise wording of the claim.

Read the decision (in German) here.

DE - Walzenformgebungsmaschine

Walzenformgebungsmaschine, Bundesgerichtshof, Federal Court of Justice, Germany, 15 April 2010, Case No. Xa ZB 10/09, with thanks to Bernhard Arnold, Arnold Ruess

The German courts have to take into account decisions made by the instances of the European Patent Office or by courts of other contracting states of the European Patent Convention which concern a substantially equal question, and have to discuss the grounds, as the case may be,  which have led to a different result of the previous decision. This includes questions of law, such as the question whether the state of the art renders obvious the matter of an IP right.

Not every violation of this obligation violates the right to be heard of the party concerned.

Read the decision (in German) here.

Read a summary in English, provided by Bardehle & Pagenberg, here.