Recent Case Law
inGerman Patent Law

2014characterized by IP®

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CONTENT
Foreword ........................................................................................................................ 2
I.

Patent infringement................................................................................................. 3
1.

Equivalence / Means of interpretation .............................................................................3
Düsseldorf Upper District Court, judgement of 13 September 2013, I-2 U 26/13 – Drospirenon ................. 3
Karlsruhe Upper District Court, judgement of 9 July 2014 – 6 U 29/11 – Auslegungshilfe ........................... 3
Düsseldorf Upper District Court, judgement of 7 November 2013, I-2 U 29/12 – WC-Sitzgelenk ................ 52.

The infringing action ........................................................................................................7
Düsseldorf Upper District Court, judgement of 27 March 2014 – I-15 U 19/14 – Ausstellen auf Messe ...... 73.

Contributory infringement ...............................................................................................9
Karlsruhe Upper District Court, judgement of 8 May 2013 – 6 U 34/12 – MP2 devices ............................... 9
Karlsruhe Upper District Court, judgement of 23 July 2014 – 6 U 89/13 – Ölfilter ...................................... 12

4.

Utility model law ............................................................................................................14
Mannheim District Court, decision of 10 December 2013 – 2 O 4/13 – Mechanisches Arretiersystem ..... 14

II. Validity ................................................................................................................... 16
5.

Patentability of computer-implemented inventions .......................................................16
Federal Patent Court, decision of 5 March 2014 – 20 W (pat) 18/09 – Chipkarte........................................ 16

6.

Disclosure / Impermissible broadening / Priority ...........................................................19
Federal Court of Justice, judgement of 11 February 2014 – X ZR 107/12 – Kommunikationskanal ............ 19
Federal Court of Justice, judgement of 18 March 2014 – X ZR 77/12 – Proteintrennung ........................... 19

7.

Impermissible broadening / Disclaimer .........................................................................22
Federal Patent Court, judgement dated 8 April 2014 – 4 Ni 34/12 (EP) – Fettabsaugevorrichtung ............. 22

III. Other substantive legal issues ............................................................................. 25
8.

Rights of exploitation in communities of co-inventors ..................................................25
Düsseldorf Upper District Court, judgement of 7 August 2014 – I-2 U 91/13 – Garagentor ....................... 25

9.

Standard essential patents (SEPs) / FRAND principles..................................................28
Opinion of Advocate General Wathelet, delivered on 20 November 2014 – Huawei vs. ZTE ..................... 28
Mannheim District Court, decision 21 November 2014 – 7 O 23/14 – DVD-Forum .................................... 31

IV. Procedural law ....................................................................................................... 33
10. Provisional judicial relief ................................................................................................33
Düsseldorf District Court, judgement of 8 May 2014 – 4a O 66/13 – Reinigungsroboter ........................... 33

11. Enforcement measures following destruction of patent ...............................................35
Federal Court of Justice, decision of 8 July 2014 – X ZR 61/13 – Kurznachrichtenfunktion I ...................... 35
Federal Court of Justice, decision of 19 September 2014 – X ZR 61/13 – Kurznachrichtenfunktion II........ 35

12. New procedural law for patent revocation proceedings ................................................37
Federal Court of Justice, judgement of 14 January 2014 – X ZR 148/12 – Positionsdefiniertes Aufspannen37
Federal Court of Justice, judgement of 20 March 2014 – X ZR 128/12 – Arretiersystem ........................... 37

FOREWORD

A fair proportion of this year’s case law report is taken

Enforcement of standard essential patents (SEPs) is stillup, once again, by the doctrine of “equivalence”. The

an area where the goalposts continue to move. In thedecisions reviewed also include one in which equivalentpreliminary ruling procedure before the European Court

patent infringement was affirmed, and that in itself isof Justice, initiated by the District Court in Düsseldorf,

worthy of note. Established case law on contributory

the Opinion of the Advocate General has meanwhile

infringement was also developed by the courts of lower

been filed, and there are signs that the principles en-

and higher instance. This is particularly important inshrined in Germany by the Orange Book precedents willcases of cross-border patent infringement and is also

be deemed invalid. The contrary view taken by the Euro-the subject of mounting debate in conjunction with “ex-pean Commission, perceived in many quarters as highly

haustion of rights” issues.

accommodating to infringers, will not prevail, either,
however.

In the field of computer-implemented inventions, theapproach developed by the Federal Court of Justice forSpecial reference is made, in closing, to the Garagentor

examining patentability has become established prac-judgement by the Upper District Court in Düsseldorf, intice, it would appear. However, the Chipkarte judgement

which co-inventor parties are given extensive guidance

provides renewed cause to focus on the far-reaching

regarding what they may seek and expect from one

implications of those precedents.

another.

Among the various decisions on disclosure, theKommunikationskanal

judgement

attracts

February 2015

EISENFÜHR SPEISER

particularattention. In the case in question, the Federal Court ofJustice ruled for the first time that determining the actual disclosure (of a patent application or a priority document) is not just a cognitive act, but also an expressionof judicial evaluation.

2

Foreword

I. PATENT INFRINGEMENT
1. Equivalence / Means of interpretation
Düsseldorf Upper District Court, judgement of 13 September 2013, I-2 U 26/13 – Drospirenon
Karlsruhe Upper District Court, judgement of 9 July 2014 – 6 U 29/11 – Auslegungshilfe
BACKGROUND“Equivalence is dead!” is a common platitude, and it

continual reports of judgements in which the courts had

has indeed become more difficult over the past decadeto address equivalence issues.

to broaden the extent of protection conferred by patents
beyond their literal meaning. That does not mean, how-In the two appeal court judgements discussed in thisever, that patent proprietors have not tried again andsection, the infringement suits were dismissed. A dif-again to do so – the doctrine of equivalence is far fromferent outcome ensued in the case discussed in thedead in the courts of first and higher instance. There arechapter that follows, however (the Sitzgelenk decision).

DECISIONS
thebasic principles of equivalence as laid down in supreme

Drospirenon case to clarify some general issues ofcourt judgements and emphasises that, when inter-

patent interpretation (in a way that is nothing short ofpreting the patent, the technical principle taught by it“by the book”).

must be assumed to make sense. The court is not per-The

Düsseldorf

Upper

District

Court

uses

mitted to cast doubt on the objective justification of the••

The patent in suit was initially granted with one

invention recorded in the patent specification. The

method claim that included the step of dehydrationequivalence of a substitute must therefore be negatedby addition of an acid.

when a person skilled in the art, when using his product,

In the opposition proceedings, that claim was limited and now only includes the step of dehydration
by addition of p-toluene sulphonic acid.

As far as infringement was concerned, there was nodispute that the teaching of the invention was not realised in the literal sense. Although the defendant produced the material drospirenone by dehydration, it usedpyridine (a basic compound) to release water.
In this case, however, the plaintiff did not succeed with
its accusation of equivalent patent infringement.
The first reason was that the base used in the accused
product is not an equivalent substitute for the claimed
acid. The Upper District Court outlines once again thedoes the opposite of what the claim teaches (be it objectively lawfully or objectively unlawfully!). For thatreason, a symmetrical embodiment can never be an
equivalent substitute for a claimed asymmetric embodiment, and a base is not an equivalent substitute foran acid.
The second reason for the judgement is at least equallyimportant: Any broadening of the extent of protection
conferred by the patent is out of the question for theUpper District Court, given that the claim had been limited in the opposition proceedings. While it is true thatthe patent prosecution file is not an admissible means ofinterpretation as a basic principle (mainly for legal security reasons), the facts of this particular case are different, however, in that the “amendment” of the

I. Patent infringement / 1. Equivalence / Means of interpretation3

claims did not occur behind the curtain of the patent

court, is also how matters lay in the case in question: In

prosecution file, but arose from the difference between

the opposition proceedings, the original generic expres-the version as originally granted and the version of thesion (acid) was reduced to a single member of the ge-patent that was upheld in the opposition proceedings.

neric species (p-toluene sulphonic acid). This limitation
could not be reversed during subsequent interpretation

The Upper District Court in Düsseldorf based its judge-of the patent.

ment explicitly on Art. 69 EPC and noted that the patentas originally granted is included among the admissible

The view that patent specifications are means of inter-material for interpretation. The original patent specifica-

pretation for claims upheld in limited form is also sharedtion (in contrast to the laid-open patent specification) canby the Upper District Court in Karlsruhe, which ruled thetherefore help towards understanding the patent assame way very recently in its Auslegungshilfen judge-

amended in opposition or revocation proceedings. As ament.

basic principle, determining the extent of protection in amanner that ignores a limiting feature in the substantive
matter is therefore inadmissible. That, in the view of the

ASSESSMENT
What is particularly impressive is the cautionary note by

Another helpful aspect is that B-specifications may be

the Düsseldorf Upper District Court that individual fea-

consulted in order to interpret amended patents.

tures of a claim may not be turned into their opposite

Whether that also applies to the relationship between

when interpreting the extent of protection conferred bylaid-open patent specifications and (unamended) patents

the claim. Symmetrical is not equivalent to asymmet-

is a question that will need to be ruled upon in the fu-

rical, integral embodiments are not equivalent to de-ture. The Federal Court of Justice has already provided atachable connections, and acids are not equivalent topointer in that respect in its Okklusionsvorrichtung deci-bases!

sion (judgement of 10 May 2011, X ZR 16/09). (Henke)

4

I. Patent infringement / 1. Equivalence / Means of interpretation

Düsseldorf Upper District Court, judgement of 7 November 2013, I-2 U 29/12 – WC-Sitzgelenk
BACKGROUND
In contrast to the decisions discussed in the previousof 13 September 2011, X ZR 96/10). In those decisions,section, equivalent patent infringement was affirmed by

the Federal Court of Justice had imposed significant

the Düsseldorf Upper District Court in its WC-Sitzgelenk

limitations on applying the doctrine of equivalence indecision, in which the Court distanced itself from thepatent infringement cases. As distinct from those deci-

Federalthesions, the Upper District Court outlined the remaining

Okklusionsvorrichtung case (judgement of 10 May 2011,

areas in which equivalent patent infringement still ap-

X ZR 16/09) and the Diglycidverbindung case (judgement

plied.

Courtof

Justicedecisionsin

DECISION
The patent on which the WC-Sitzgelenk decision was

adapter, which accordingly had no continuous bottom atbased related to a hinge for a toilet seat, for securing a

the end of the bore.

toilet seat to the ceramic base. This seat hinge wasspecifically characterised by an adapter in which a “blindbore” for receiving a hinge pin is formed.
The Court firstly established that a person skilled in theart understands a blind bore to mean a bore which does
not go all the way through the workpiece, in otherwords as a bore with a specific depth that ends in thesolid material. The patent in suit was also aware of otherbores (as indicated by the description of the patent), in
particular “through bores” and “stepped bores”. To
illustrate this, we have marked a blind bore (as claimed)
and a stepped bore (as mentioned in the description of
the invention) in the following figure.

No literal patent infringement could be established here
anyhow, yet the appeal court ruled that the patent in suit
was infringed by equivalent means.
The Upper District Court initially affirmed the equivalenttechnical effect and findability of the accused, modified
device, and thus that the first two conditions for equivalent patent infringement were satisfied. In its Grounds
for Judgement, the Court then addressed the aspect ofequivalence that had been negated by the District Courtat first instance.
In its decision, the District Court had concluded that
there was no equivalent patent infringement, pointing
out that, in addition to the claimed blind bore, the patentalso discloses a through hole and in particular a steppedbore of the kind found in the accused product. Referringto the established legal practice of the Federal Court ofJustice in the Okklusionsvorrichtung and Diglycid-

All that was claimed, however, was the adapter with theblind bore. No such bore is found in the accused product, where instead the bore passed through theverbindung cases, the District Court therefore concluded
that the patent proprietor had deliberately chosen to
claim only the one alternative (the blind bore) of thethree disclosed bores. A selective decision was thus

I. Patent infringement / 1. Equivalence / Means of interpretation

5

made, so there can be no equivalent patent infringe-

particular hinge, there is only mention of a blind bore,

ment.

whereas the through hole and stepped bore were mentioned solely with regard to other parts of the patented

The Upper District Court has now rejected that line ofdevice. Given that background, the Upper District Courtargument in view of the specific circumstances of thedismissed any selective decision by the patent proprie-case. The other bores, in particular the stepped bore,

tor, because the patent in suit does not disclose thewere not disclosed by the patent in suit in connection

different bores as alternative embodiments of thewith the adapter and with receiving a hinge pin. For thisadapter for receiving the hinge pin.

ASSESSMENT
In its WC-Sitzgelenk decision, the Düsseldorf Upper

The decision discussed here now concludes that there

District Court outlines a remaining area, following the

may indeed be equivalent patent infringement, at least

Okklusionsvorrichtung

deci-in those cases where the patent specification discloses

sions, in which the doctrine of equivalence may still bedifferent optional solutions (the stepped bore, in partic-

applied. In the aforementioned judgements, the Federalular), but does not describe them with regard to the

Court of Justice had argued that equivalent patent in-

specifically claimed feature (here: in connection with thefringement is basically inapplicable when the patent

adapter for receiving the hinge pin).

and

Diglycidverbindung

discloses several alternatives for solving a technicalproblem, but only one of those alternatives is included in

The ruling by the Upper District Court is convincing,the claim, and the accused product makes use of one ofbecause if a patent specification discloses different

the other alternatives (for which no protection is

options for solving different technical aspects, theseclaimed). In the view of the Federal Court of Justice, theoptions do not constitute alternatives within the mean-

patent proprietor has deliberately taken a selective deci-

ing of the patent specification. The patent specification

sion to limit the scope of the patent to the claimed al-

does not show two solutions to one and the same tech-ternative. There is no question, therefore, of extending

nical problem (with protection being claimed for only

the scope of the patent, by way of equivalent patent

one of those solutions), but two solutions to two differ-infringement, to the optional solutions for which noent technical problems (of which only one problem andprotection is claimed.

one solution are subject-matter of the claim). Thosedifferent solutions, within the meaning of the actual

In practice, this leads to the question of where the doc-

patent specification itself, are still not alternatives eventrine of equivalence can be applied. Said doctrine re-when a person skilled in the art realises that one of thequires the “findability” of the equivalent patent in-disclosed options is also suitable for solving the otherfringement on the basis of the patent specification,technical problem. In similar cases, the factual basis

which generally requires that a person skilled in the art

therefore lacks the “selective decision” assumed by theis prompted by the patent specification to use the op-

Federal Court of Justice. These cases, albeit very nar-tional solution that is not included in the claim. That said,

rowly defined, thus constitute a remaining area in which

the embodiments that are disclosed in the description

the doctrine of equivalent patent infringement can still

but not included in the claims cannot, according to theapply. (Müller)

established legal practice of the Federal Court of Justice, be taken as a basis for equivalent patent infringement since the patent proprietor deliberately refrained
from conferring protection on them.

6

I. Patent infringement / 1. Equivalence / Means of interpretation

2. The infringing action
Düsseldorf Upper District Court, judgement of 27 March 2014 – I-15 U 19/14 – Ausstellen auf
Messe
BACKGROUND
The question of whether exhibiting goods at a domestic

substantiate, (even) in patent law, a risk of first in-trade fair that is more than just an exhibition constitutes

fringement or repetition, to the effect that the exhibited

an offer within the meaning of the German Patent Act

product will (soon) be offered for sale or placed on thehas been a controversial issue among patent courts evermarket. The District Court in Mannheim thus applied thesince the Sauggreifer decision of 29 October 2010,

established legal practice of the 1st Division of the Fed-handed down by the District Court in Mannheim. In thateral Court of Justice, which is responsible for trademark

decision, the Mannheim District Court ruled that merely

matters (judgement dated 22 April 2010 – 1 ZR 17/05 –exhibiting a product at a trade fair in Germany does not

Pralinenform II).

DECISION
The Düsseldorf Upper District Court has now comethe trade fair, in order to substantiate a risk of first in-

down in favour of the patent proprietor in this dispute

fringement in the form of such an offer. The purpose ofand deems that the presentation of goods at events

Section 9 PatG is to assure the patent proprietor basi-

which are more than just exhibitions constitutes an offer

cally all the commercial advantages ensuing from use ofwithin the meaning of patent law.

the patented invention, and to grant the proprietor effective protection of its rights. It is not necessary, there-

The accused product had been exhibited at the Medica

fore, that an offer satisfies the requirements for a legally

trade fair in 2012. According to the fair organisers, thevalid and binding offer of contract within the meaning ofMedica fair in Düsseldorf is a world forum for medicine,

Section 145 BGB. The only relevant criterion is whether

with an international fair and congress attracting more

the activity in question actually prompts a demand forthan 4,000 exhibitors who present their latest equip-

the item infringing intellectual property rights, a demandment, products and systems for in-patient and out-pa-that the offer prospectively meets.

tient care.
Based on that principle, according to the Upper District
The point of departure for the Düsseldorf Upper District

Court in Düsseldorf, any preparatory actions aimed at

Court is that an offer within the meaning of Section 9,

allowing or fostering a subsequent business transaction

Sentence 2, No. 1 PatG is to be understood as a purely

involving use of that item is specifically included undercommercial process involving any act performed inan “offer” within the meaning of Section 9 PatG.

Germany that provides, by virtue of its objective explanatory force, the object of demand in a visibly perceptible

The Upper District Court in Düsseldorf held that thesemanner for the purpose of acquisition. The Düsseldorf

conditions were met beyond a doubt by the Medica

Upper District Court thus rejects the different view

2012 trade fair, since Medica is not just an exhibition,

taken by the District Court in Mannheim, according to

but also a sales fair at least, and because its purpose, as

which the patent proprietor, also in the case of tradedescribed in Medica’s own words, is for trade visitors tofairs, must show and if necessary prove or convincingly

use the fair “to nurture business contacts, and to gain

argue that the goods are specifically offered for sale at

new customers, suppliers or business partners”. The

I. Patent infringement / 2. The infringing action

7

sales objective is clearly evident as well from the general terms of business.

devices at the Medica 2012 trade fair constituted use
within the meaning of Section 9, Sentence 2, Nos. 1,
2nd Alternative PatG.

The Düsseldorf Upper District Court therefore concluded
that an “offer” was made, since exhibiting the accused

ASSESSMENT
The patent litigation divisions at the Hamburg and Mu-

The consequences for IP practitioners is clear: Tempo-

nich I District Courts view acts of offering in a way sim-rary injunctions in respect of trade fairs can be now

ilar to the Düsseldorf District Court, although it should

obtained in patent matters from the District Court inbe noted that the Upper District Courts in Munich and

Düsseldorf without proof of a specific “offer”, as under-

Brunswick are even more generous and in some cases

stood under general civil law. The same holds true forwill even view the depiction of the product in a cata-

the courts in Brunswick, Hamburg and Munich – but notlogue to be sufficient evidence of an offer.

for Mannheim. (Förster)8

I. Patent infringement / 2. The infringing action

3. Contributory infringement
Karlsruhe Upper District Court, judgement of 8 May 2013 – 6 U 34/12 – MP2 devices
BACKGROUND
In its MP2-Geräte decision, not published until 2014, theoffers to a third party in Germany a means for using theUpper District Court in Karlsruhe addressed a number of

invention, and that such use must also occur in Ger-

fundamental issues relating to indirect or contributory

many. This dual proof of a (domestic) offer and (domes-

infringement.

tic) use is often difficult, particularly when components
are supplied from abroad.

In cross-border cases, particularly, contributory infringement is often a problematic aspect due to theAnother problematic aspect is that, ever since the“dual domestic nexus” required by Section 10 PatG

MPEG-2 Videosignalcodierung decision by the Federal(German Patent Act) (namely that only the offer to sell

Court

and the actual delivery must occur in Germany, but also

X ZR 33/10), it has often been difficult to determineofJustice(judgementof

21 August 2012,that the means offered for sale must also be used inwhen a “means” for using the invention is being offered

Germany in the context of the patented invention). Con-

within the meaning of Section 10, especially in the field

tributory infringement thus requires that the infringerof electronic data processing.

DECISION
The plaintiff sued the defendant for infringement of ainstead to two German companies (T and THG), with thepatented method of transmitting digital audio signals.

goods always being handed over in China, according to

The asserted method claim in the patent in suit de-

the evidence taken at first instance. Only on its English

scribed not only encoding steps on the encoder side,

website did the defendant refer to the firm of THG as its

but also (encoding and decoding) steps performed on“distributor” in Germany.

the decoder side.
Proceeding from these facts of the case, the Upper
The defendant, a company domiciled in China, soldDistrict Court in Karlsruhe firstly established that the“MP2 devices” that are suitable, in combination with ademodulators supplied by the defendant were “means”

PC and software, for receiving and decoding audio sig-

within the meaning of Section 10 PatG. The accusednals in the DVB signal. The specific products were DVB

devices merely received the analogue carrier signal in

USB sticks and TV cards with DVB functions. It shouldorder to demodulate it and forward it to the computer,be emphasised in this regard that the devices merely

which meant that decoding in accordance with the pa-

demodulate the DVB signal and do not provide a de-tent was performed later, by the computer, so the func-

coder function. This demodulation of data was not thetion of the accused devices was limited to extracting the

subject-matter of the claim, which was limited to asignal needed on the decoder side. That, nevertheless,method of encoding and decoding a signal. On the otheris a significant contribution to the claimed decoding

hand, decoding in accordance with the patent was notoperation, in the view of the Upper District Court inperformed by the accused devices; instead, as demod-

Karlsruhe, because without such prior demodulation it isulators, they merely provided the signal required for

not possible for decoding to be carried out in accordance

decoding (in accordance with the patent).

with the patent.

Moreover, the defendant itself had not offered the ac-

In its judgement, the Upper District Court departs ex-

cused devices for sale or placed them on the market inplicitly from the MPEG-2 Videosignalcodierung decision,

the Federal Republic of Germany. It supplied the devices

in which the Federal Court of Justice ruled that a data

I. Patent infringement / 3. Contributory infringement

9

storage medium containing data encoded in accordanceawareness of the country of destination, and thus delib-with the DVD standard is not an essential means within

erately and willingly contributes to their being sold in

the meaning of Section 10 PatG and with regard to thethat country.

patented decoding method. In the view of the Federal
Court of Justice, the data storage medium itself contrib-

As a final point in its Grounds for Judgement, the Court

uted nothing to the inventive achievement, even thoughaddresses the issue of exhaustion. The Court takes thethe data storage medium was part of the claim suedview that there is no exhaustion even when the accused

upon. The Upper District Court has now stated in that

demodulators sold by the defendant are used in con-regard that the accused devices in the case in question

junction with licensed decoding software (Microsoft

are used to acquire the data signal to be decoded fromMedia Player). In the event of doubt, it must be as-

the received radio signal in the first place. Their intended

sumed that the person who obtains, from the proprietor

technical purpose is therefore to pass this data signal toof a method patent, a device which is required to carry

the PC and the software running on it, so that decoding

out the protected method, is permitted to use that de-can be carried out in accordance with the patent. The

vice in the intended manner, but the condition for doing

accused demodulators therefore caused the patent law

so is that the ready-to-use device originates in its en-

hazard characteristic of Section 10 (1) PatG.

tirety from a licensed source. Use is not permitted, in
contrast, when all that is supplied are individual compo-

The Court also established that the “dual domestic

nents which result in the patented method only whennexus” requirement was satisfied. The fact that theother, unlicensed devices are used. Licensing the de-defendant delivered the accused devices to its cus-

coding software was not sufficient in this particular

tomer, THG, in Hong Kong does nothing to alter that.

context to exhaust the claims deriving from the patent inContributory infringement does not depend on the time

suit since it was beyond dispute that the demodulators

until which the defendant has possession or ownershipsold by the defendant, which are likewise required toof the goods that are ultimately delivered in Germany. In

perform the method, were not licensed.

cross-border cases, a supplier domiciled in a foreigncountry shares responsibility for infringement of domes-

The conclusion drawn by the Upper District Court intic patent rights if it supplies the patent-infringing de-

Karlsruhe was that the defendant had committed con-vices in full awareness of the patent in suit and in full

tributory infringement.

ASSESSMENT
The decision handed down by the Upper District Courtmeans” within the meaning of Section 10 PatG, if theyin Karlsruhe sheds light on three key aspects of contrib-

are necessary for technical reasons to carry out theutory infringement that continually give rise to problems.

method. This seems rather dubious, because the patent
proprietor is basically in a position to specify the extent

The Court firstly had to address the issue of whether theof protection conferred by the patent, by wording thedemodulators, which are not the subject-matter of theclaims accordingly. If the protection conferred by theclaim, constituted an essential means for carrying out

patent is also extended, with the precedent establishedthe claimed decoding method. The long-standing princi-by the Upper District Court in Karlsruhe, to unclaimed

ple that every feature specified in a claim is basically an

but technically necessary means, then this leads toessential means for achieving the invention has recently

substantial legal insecurity on the part of infringers.

been qualified in two different decisions handed downby the Federal Court of Justice and the Upper District

The ruling against the defendant is also noteworthy

Court in Düsseldorf. It comes as a bit of a surprise inbecause there is no disputing that it did not offer thethat context that the Upper District Court in Karlsruhe, in

accused devices in Germany or place them on the mar-the decision discussed here, considered components

ket there. The defendant’s actions were confined in-

not specified in the claim as potentially being “essential

stead to supplying its German customer (with delivery

10

I. Patent infringement / 3. Contributory infringement

being made in China), with the accused devices only

patent proprietor is thus given a way to eliminate thebeing offered by that German customer to final custom-source of patent-infringing products, and no longer

ers in Germany for use in Germany. However, the de-needs to take legal action against every single importer.

fendant knew that its customers would offer and sell
the goods in Germany.

The Court’s observations on exhaustion are also important, but are questionable when applied to “means”

This knowledge about sale in Germany made the de-as a broad expression in Section 10 PatG. If the Court’s

fendant itself an accomplice in legal terms. This means

logic is accepted, then means which are not mentionedthat suppliers domiciled and operating in foreign coun-in the claim but which are technically imperative aretries cannot claim to be uninvolved in the sale of patent-

enough to substantiate contributory infringement. In

infringing products in Germany. Instead, they bear fullpractice, however, such unmentioned means are notresponsibility for the actions of their sales partners. The

going to be included in any licensing agreement. (Müller)

I. Patent infringement / 3. Contributory infringement

11Karlsruhe Upper District Court, judgement of 23 July 2014 – 6 U 89/13 – Ölfilter
BACKGROUND
In another decision, the Upper District Court in Karlsruhe

stitutes contributory infringement of a patent that re-concerned itself with the contributory infringement

lated not only to the design of the capsules, but also toproblems that ensue when spare parts are offered forthe characteristics of the coffee machine. The Düssel-

sale. One problem that frequently arises in this regard isdorf Court rejected any contributory infringement on thewhether offering wearing parts or spare parts for a pa-

grounds that the properties of the capsules mentioned

tented device constitutes contributory infringement.

in the claim were already known from the prior art andtherefore did not make any relevant contribution to the

In its much-commented Nespressokapseln decision

invention, which mainly related to improving the inser-(judgement of 21 February 2013, I-2 U 72/12), the Uppertion mechanism.

District Court in Düsseldorf recently addressed thequestion of whether offering Nespresso capsules for

The present decision by the Upper District Court inuse in the well-known Nespresso coffee machines con-Karlsruhe takes exception to the previous ruling.

DECISION
The plaintiff in the present proceedings held two patents

tected product is placed on the market with the consent

for oil filters in motor vehicles. The claims being suedof the patent proprietor – the lawful purchaser of such aupon describe a fluid filter comprising a filter housing

product is authorised to use it in the intended manner,and an annular filter insert. The core concept of theand such use also includes maintaining and restoring its

claimed inventions was to facilitate insertion of the an-utility by adding spare parts. In the case in question, thenular filter into the filter housing. This was achieved by amain criterion for the question of exhaustion was

ramp on the filter housing, along which a journal on thewhether replacing the oil filter constituted “maintaining”

annular filter insert slides, such that the annular filter can

the patented filter system (in which case the rights

be brought into its final position by a rotational move-

would be exhausted) or whether such replacement

ment, with the journal sliding along the ramp into a holemust be seen instead as “remaking” (in which caseformed in the filter housing for receiving the journal.

there is no exhaustion of rights).

The use of annular filter inserts with a journal that en-

The Upper District Court ruled that there was no ex-

gages, when the annular filter is correctly inserted, withhaustion of rights in the case in question. It can be ex-a hole formed in the filter housing was known from thepected, in the case of the patented fluid filters, that theprior art. The aim now was to improve insertion by add-

annular filter insert will need to be replaced several

ing a ramp, with the journal being guided into the holetimes during the service life of the filter. This is clearlyby the ramp.

evident from the subject-matter of the patent in suit, theaim of which is to improve or facilitate replacement of

The defendant offered annular filter inserts that were

the filter inserts. However, replacing the annular filter

suitable for use in the plaintiff’s oil filters.

must be seen here, by way of exception, as “remaking”

Since it was largely undisputed that the annular filter
inserts were configured in accordance with the patent,
the Upper District Court in Karlsruhe concentrated in its
decision on the issue of exhaustion. Referring to theprecedents set by the Federal Court of Justice, theCourt established that the exclusivity rights derivingfrom the patent are basically exhausted when the pro-12

the protected filter system, the reason being that the
replaced parts embody the technical effect of the invention. The invention protected by the two patents in suit
was based on the assumption that the ramp present in
the filter housing was matched to the journal of theannular filter insert so that the journal glided along theramp until it reached the opening in the filter housing.

I. Patent infringement / 3. Contributory infringement

The inventive concept can only be achieved if the journal

The Upper District Court in Karlsruhe takes explicit ex-

and ramp have the correct radial position and have con-ception to the decision handed down by the Upper Dis-

tact surfaces which allow the journal to slide when thetrict Court in Düsseldorf in the Nespressokapseln case.

annular filter insert is twisted into place. According to

In contrast to the Düsseldorf case, the replacement partthe teaching of both the patents in suit, improved inser-of the device in the present case (the annular filter in-tion was also achieved, in the view of the Upper Districtsert) was a key component of the technical principle

Court, not only by the ramp formed on the housing, but

protected by the patent. The Court therefore concluded

also by physical features of the annular filter insert.

that replacing the annular filter insert amounted to re-

Nothing is altered by the fact that the journal formed on

making the protected filter device. The defendant for-the annular filter member was already known from thefeited its right due to contributory infringement.

prior art cited in the patent in suit.

ASSESSMENT
The view propounded by the Upper District Court inThat was also how the Upper District Court Düssel-

Karlsruhe, according to which the journal of the an-dorf ruled in its Nespressokapseln decision, in whichnular filter insert embodied a concept essential to thethe coffee capsules mentioned in the claim had aninvention, is not entirely convincing. There is no dis-edge which was already known from the prior art

puting that forming such a journal on the annular filter

cited in the patent. The invention in that case madehousing was already known from the prior art cited inuse of this previously known edge of the coffee cap-

the patent in suit. According to the teaching of thesules for an improved mechanism for insertion andpatent in suit, insertion of the filter was facilitated byhandling of the capsules by the machine, said mech-a ramp being provided on the filter housing. Such aanism being formed entirely by the coffee machine.

journal slides along the ramp, which guides the journal into the hole in the housing designed to receive it.

The constellation in the Nespressokapseln case wasOnly one of the patents in suit claimed protection, in

similar indeed to the present case. The Upper District

a number of dependent claims, for a special embodi-

Courts in Düsseldorf and Karlsruhe differ quite obvi-

ment of the journal, but these were not infringed byously in their opinion of when a replacement partthe accused products. To that extent, it was obvious

embodies a concept essential to the invention, andthat forming the ramp on the filter housing was to bewhen it does not. It can only be hoped that the Fed-

seen as the concept essential to the invention, noteral Court of Justice will soon have an opportunity to

the journal of the annular filter inserts, which wasclarify this issue once and for all. (Müller)

already known from the prior art.

I. Patent infringement / 3. Contributory infringement134. Utility model law
Mannheim District Court, decision of 10 December 2013 – 2 O 4/13 – Mechanisches Arretiersystem
BACKGROUND
In this decision, the District Court in Mannheim con-tailed patent office examination in respect of legal valid-

cerned itself with the special requirements for stayingity). Branching a utility model from the patent application

utility model infringement proceedings.

thus offers the IPR holder an opportunity to protect andassert its rights, in the form and on the basis of a utility

For holders of intellectual property rights, utility model

model, long before the patent itself is granted. How-

infringement suits are an attractive alternative to patent

ever, utility model infringement cases obey different

infringement proceedings because it is possible to de-rules to those governing patent infringement proceed-

rive a divisional application from a patent application

ings, as the present decision by the District Court induring the patent granting procedure. The utility model

Mannheim shows.

is then registered within a short period (without a de-

DECISION
In the case in question, the utility model sued upon

the defendant is entitled in fact to the right of prior use it

related to a mechanical locking system for a construc-

was invoking was one that the Court could explicitly

tion panel, in particular a floor panel. The plaintiff sued

leave unanswered.

the defendant for injunctive relief, submission of accounts, product recall and destruction, due to infringe-

In the view of the Court, staying utility model infringe-

ment of said utility model. In its statement of claim, thementproceedings

underSection 19,

Sen-plaintiff did not assert the utility model in the form intence 2 GebrMG does not require (unlike patent in-which it was granted, but limited the suit to dependent

fringement proceedings) that the decision in the in-claims 2, 5, 6 and 10 and to a further feature derived

fringement dispute depends solely on the legal validityfrom the description.

of the utility model sued upon. It is imperative, rather, tostay proceedings if the court concludes – irrespective of

The defendant defended itself by invoking a private rightthe infringement issue – that the utility model lacks legalof prior use. Parallel to that, it also applied to the Ger-validity.

man Patent and Trademark Office for cancellation, in its
entirety, of the utility model sued upon.

That was the case here. The Court took the view that
both, the granted version of the utility model and also

In its mechanisches Arretiersystem decision, the District

the limited version asserted in the infringement pro-Court in Mannheim stayed the utility model infringement

ceedings were not legally valid. In the view of the Court,

proceedings in accordance with Section 19, Sentence 2

the case had to be stayed without any prior decision

GebrMG (Utility Model Act) until a final decision is

being reached on infringement of the utility model

reached in the cancellation proceedings on the validity of(against which the defendant had defended itself with athe utility model sued upon. The question as to whether

right of prior use).

14

I. Patent infringement / 4. Utility model law

ASSESSMENT
The decision handed down by the Mannheim District

may stay the infringement proceedings at its own dis-

Court spotlights a key difference between utility model

cretion until a decision has been reached on the petitionand patent infringement proceedings. If, in patent in-for cancellation. In contrast thereto, it must stay pro-fringement proceedings, the defendant claims that theceedings if it considers the registered utility model to bepatent in suit lacks legal validity, and refers thereby to ainvalid, pursuant to Section 19, Sentence 2 GebrMG.

parallel action for revocation, the court may consider

Thus, sentence 2 of Section 19 GebrMG does not pro-staying the infringement proceedings, under Sec-vide the court any discretionary scope.

tion 148 ZPO (Code of Civil Procedure) at most, until adecision has been reached on the action for revocation.

With its present decision, the Mannheim District Court

In utility model infringement proceedings, the legal va-

has ruled that, in such a context, it is also irrelevant

lidity of the utility model sued upon must be examined

whether the utility model is infringed or not. In contrast

ex officio, in contrast. If the court concludes that theto patent infringement disputes, where a stay of pro-utility model sued upon is not legally valid, the infringe-

ceedings is only an option when the patent in suit isment suit is not stayed, for example, but dismissed. This

infringed, the court may leave the issue of infringement

applies even when there are no cancellation proceed-

unanswered in utility model cancellation proceedings

ings pending against the utility model.

and nevertheless stay the proceedings under Section 19, Sentence 2 GebrMG. (Müller)

If cancellation proceedings are already pending against
the utility model in suit, then Section 19 GebrMG applies. According to the first sentence thereof, the court

I. Patent infringement / 4. Utility model law

15

II. VALIDITY
5. Patentability of computer-implemented inventions
Federal Patent Court, decision of 5 March 2014 – 20 W (pat) 18/09 – Chipkarte
BACKGROUND
In this decision handed down by its 20th Division, theof the contested patent is always bound, ultimately, toFederal Patent Court develops its established legal prac-

the requirements of novelty and inventive step (i.e. Sec-

tice regarding the patentability of computer-imple-

tion 3 or Section 4 PatG (German Patent Act).

mented inventions. The Federal Court of Justice recently established in a number of decisions that features

The present decision by the Federal Patent Court, inwhich do not serve to solve a technical problem bycontrast, goes one step back and “works” with Sec-technical means are unable to contribute to the inven-tion 1 PatG only, according to which an entire teaching istiveness of the patent. We drew attention to this in last

not patentable if none of the features solves a problem

year’s report, with reference to the Audiowiedergabe

by technical means.

von Straßennamen decision, in which the patentability

DECISION
The decision concerned a German patent. The patent

M3

wherein the validation key is a public key certified

had initially been granted and was then upheld in limited

by a trustworthy authority and put on the chip

form by the Patent Department following an opposition

card in a secure environment,

lodged by the opponent. This is challenged by the appeal lodged by the opponent with the Federal Patent
Court and which was aimed at revocation of the patentin its entirety. The contested patent related to the certi-

M4
M5

for assigning the public cryptographic key to oneof the patent was to improve such certification, and thator more applications of the chip card,

object was to be achieved by keys being verified entirely
the patent. The aim thereby was to improve the security

M6tificate,tion is performed outside the chip card, on a computer
Court structures claim 1 of the contested patent as

M7

A method for validating a public cryptographic

M8

cryptographic key,steps:a) transferring a validation key to the chip card,d) marking the public cryptographic key as a valid
key by setting a bit in a status byte of the public

key for a chip card, comprising the following

M2c) testing the digital signature by means of thevalidation key on the chip card, andfollows:
M1

and a second part of the certificate includes adigital signature of the said first part of the cer-of the chip cards in relation to the prior art, where validawith high performance capacity. The Federal Patent

wherein a first part of said certificate includes the
public cryptographic key and administrative data

fication of cryptographic keys for chip cards. The object

on the chip card itself, in accordance with the method ofb) transferring a certificate to the chip card,

M9if, when testing the digital signature, it is verified
as the digital signature of the first part of the certificate.

16

II. Validity / 5. Patentability of computer-implemented inventions

In its decision, the Federal Patent Court refers initially todesigning a data processing program such that it takes

the established legal practice of the Federal Court ofaccount of the technical circumstances of the data pro-

Justice on the topic of inventions in the field of elec-

cessing system. This is not the case here, however, intronic data processing, according to which it is neces-the view of the Court.

sary to examine first of all whether at least one aspectof the invention relates to a technical field. In a second

The Court thus deemed that there was no technicalexamination step, it is then necessary to establish

problem from the start. The claims relate to a method

whether the subject-matter as such is merely a programfor validating a cryptographic key. However, such valida-

for data processing equipment and therefore ineligibletion does not constitute a technical problem, but isfor patent protection. This is basically the case when themerely a measure for creating or enhancing trust – also,teaching does not include any instructions for solving a

if necessary, in a technical object such as a chip card.

specific technical problem by technical means.

The Court did not see any use of technical means to

In applying this established case law to the present

solve the stated problem, either, however. The actual

case, the Federal Patent Court comes to the conclusion

achievement of the claimed method comprises fourthat the method of claim 1 is at least partially in a tech-steps, namely transferring the validation key to the chipnical field. Both the transfer and the verification of thecard (feature M2), transferring the certificate to the chip

digital data mentioned in the claim relate to the chip card

card (feature M4), testing a digital signature as part ofand hence to a specific use of technical components, inthe transferred certificate by means of the validation key

the form of the storage medium for digital data imple-(feature M7) and marking the public cryptographic key

mented on the card.

as a valid key (feature M8). These instructions amountto nothing more than transferring digital data to a chip

However, the Federal Patent Court takes the view thatcard, performing a logical comparison operation andclaim 1 does not include any instructions for solving astoring the result of that comparison on the chip card.

technical problem by technical means. Technical means

From the Court’s perspective, this is nothing but a pro-for solving a technical problem are present when (1)gramming measure for processing digital data using thecomponents of a device are modified or are basicallyusual technical components of a chip card. The teaching

addressed differently, (2) the execution of a data pro-of the patent does not go beyond the field of data pro-cessing program used to solve the problem is deter-

cessing as such, and for that reason is not patentable.

mined by technical circumstances external to the dataprocessing system or (3) when the solution consists in

The Court therefore revoked the patent in its entirety.

ASSESSMENT
The present decision is congruent with recent case law

2.

The decision then addresses the second exami-

on the patenting of computer-implemented inventions

nation step, namely establishing whether the claimed

and once again includes the three-step test to be applied

teaching, taken as a whole, solves a technical problem

nowadays:by technical means. This involves testing, irrespective of
the prior art, whether the claimed teaching addresses a

1.

The first step is to examine whether at least

technical problem in the first place, and whether it pro-one aspect of the patent’s teaching relates to a technicalposes a technical means of solving said problem. If, forfield. Only in rare exceptions will this requirement not be

example, the solution proposed by the patent is con-met, as all that is needed is for the claim to include

fined to a particular data processing operation, then thesome technical means or other, for example a proces-

answer must be negative.

sor, a server or (as in the present case) a chip card.

II. Validity / 5. Patentability of computer-implemented inventions

17

3.

In a third examination step, it is then necessary

to determine whether the teaching of the patent is novel

contested patent is addressed in the second step,
namely from the perspective of Section 1 PatG.

and inventive, whereby any features which do not serve
to solve a technical problem by technical means are

The judgement is a clear indication that the patentability

ignored. If the claimed teaching differs from the prior art

requirements imposed in established legal practice are

only by a particular data processing operation, for exam-

becoming increasingly strict. This will need to be con-ple, or a specific way of presenting information, thensidered in future application proceedings, especially, butthat teaching will lack novelty and will not involve an

probably also when patents already granted are re-inventive step.

viewed in revocation proceedings. It is regrettable that
the Federal Patent Court did not allow an appeal on

In recent years, case law has primarily been focused on

points of law. (Müller)

the third step of the examination scheme as describedabove; now, with this judgement, the patentability of the18

II. Validity / 5. Patentability of computer-implemented inventions

6. Disclosure / Impermissible broadening / Priority
Federal Court of Justice, judgement of 11 February 2014 – X ZR 107/12 – Kommunikationskanal
Federal Court of Justice, judgement of 18 March 2014 – X ZR 77/12 – Proteintrennung
BACKGROUND
In last year’s case law report, we described the chal-actual disclosure, in any case, does not include anythinglenging hurdles that legal precedents were creating withthat requires the technical knowledge of a skilled person

regard to the claiming of priorities, and how narrowly the

to be self-evident.

actual disclosure of written documents is interpreted.
One consequence of the Federal Court of Justice’s

In early 2014, the Federal Court of Justice issued two

Olanzapinofrulings in quick succession that may have put a stop to

16 December 2008, case no. X ZR 89/07), is that disclo-

the trend towards restricting what is considered thesure now coincides almost with the literal meaning ofactual disclosure of written documents. This applies

documents: All that is disclosed, over and above theequally to all three fields for which the issue being

literal meaning, is what is directly and unambiguously

raised is relevant: examinations as to novelty, cases ofclear from the document (i.e. that is “read in”). The

impermissible broadening, and the claiming of priority.

decision,inparticular(judgement

DECISIONSThe Proteintrennung (protein separation) decision con-

In view of that situation, the Federal Court of Justicecerned assessing the disclosure of a “senior right” that

explained its ruling by stating that there were indications

was to be taken into account when assessing the nov-in the senior document that the preparation produced inelty of the contested patent.

accordance with the method was also intended to be
used for therapeutic purposes. There was specific refer-••

The contested patent claimed a plurality of steps forence to problems that might arise when administering

protein separation, the last step describing freeze-

the preparation to patients. The Federal Court of Justicedrying of the preparation.

inferred from this that it would have been obvious to a

The senior document disclosed all the features of
the claimed method – except for the freeze-drying
step.

The latter step was not explicitly mentioned in the cited
document. The Federal Court of Justice reached two
findings, however: At the date of priority, the freezedrying feature mentioned in the last step of the method
was the conventional method with which the disclosed
method could be applied for therapeutic purposes.
“Other methods” were theoretically conceivable at thepriority date (for example, permanent freezing, without
drying), but these were of no relevance in actual practice.

person skilled in the art reading that document thatfurther steps were necessary. However, given that
“freeze-drying” was the normal method in that respect,
the Federal Court of Justice concluded that the teachingof the contested patent was anticipated by the senior
document.
This judgement is important in the context of the UVunempfindliche Druckplatte decision (judgement of
14 August 2012, case no. X ZR 3/10) that we discussed
in the previous edition of our case law review. That
decision similarly related to a step that was not specifically disclosed, but which was always in fact implicit
when the disclosed method was actually carried out.

II. Validity / 6. Disclosure / Impermissible broadening / Priority

19

the

The Federal Court of Justice came to the conclusion that

Proteintrennung case, however – the senior patent wasdeletion of that feature cannot render the priority claim

considered to be novelty-destroying because a skilledinvalid. That is because a person skilled in the art read

person was provided with sufficient information in thethe overall disclosure of the priority document in such awritten document that something not explicitly dis-

way that the deleted features were clearly associatedclosed was also required. In its Grounds for Judgement,with the embodiments described, but not with the in-

the Federal Court of Justice expressly stated that thevention itself. A skilled person realised that, although theissue did not entail “supplementing the disclosure withdescription of the embodiments in the priority document

the technical knowledge of one skilled in the art”, but

mentioned the frequency division duplex channel, that inestablishing the technical information that a skilled per-itself did not establish a relationship between the fre-son obtained from a document as a whole.

quency division duplex aspect and the claimed solution.

Thesituationwassomewhatdifferentin

There was nothing to indicate that the problem of power
It is quite clear that the Federal Court of Justice views

control only arose (or arose in a specific form) in theits Proteintrennung judgement as a continuation of its

case of a frequency division duplex communication

Olanzapin precedent. For those applying the law, thechannel. Nor was there any indication that choosing

judgement provides further clarity about how to assess

such a channel contributed in any way to solving said

the actual disclosure of a document – it is necessary to

problem.

study and interpret the respective document in and of
itself, namely with the eyes of a person skilled in the art

In terms of dogma, this judgement is important in two(but without adding his technical knowledge to the doc-

respects:

ument).
Firstly, it concords with the principle of the “equivalence
The Olanzapin precedent is given a further nuance byof disclosure means” (within a document) and explicitly

the Kommunikationskanal judgement, which may

acknowledges that the claims of a patent application

have even further-reaching implications for practitioners.

define not only the extent of protection conferred in
respect of subsequent claims to damages, but that they

The issue in that case concerned the legal validity of a

are also, of course, part of the “content of the applica-

mobile radio communications patent that was derived

tion”. The situation in this particular case differed fromfrom a priority application.

the norm: Initial attempts at wording claims generally•

The contested patent mainly sought protection formethods and devices for power control in mobile
telephones. The features related to particular details•

this case they included two features that were “superfluous” for the invention.

of how and when acknowledgement signals were

Secondly, the judgement provides further elaboration of

to be transmitted.

the Olanzapin precedent. Although it is essential, when

The priority document that the dispute hinged upon
was highly detailed in its entire content. More specifically, the description of the invention already included those passages that well characterised thegeneral inventive concept. However, the claims
themselves were obviously unnecessarily narrow intheir wording. All that was claimed was the application of the inventive teaching to a frequency division
duplex communication channel.

20

make the claims as broad and as brief as possible, but in

determining the actual disclosure of a document, that
one determines the content of that document oneself,
one is not permitted to determine it in a schematic way;
determining the actual disclosure is not just a cognitiveact, but an expression of judicial evaluation – only an
evaluative analysis can determine what the generalinventive concept is, and what is an embodiment. This isexpressed in a key passage of the judgement as follows:

II. Validity / 6. Disclosure / Impermissible broadening / Priority

“The requirement of direct and unambiguous

This core statement in the Grounds for Judgement

disclosure must be applied in such a way that

could well have been considered as a headnote, in ourconsideration is given to the fact that estab-

estimation.

lishing what is disclosed to a skilled person as
the invention and what is disclosed as an embodiment of the invention is a matter of evaluation, [...].”ASSESSMENT
The two decisions cited here are designed to dispense

For parties and their legal counsel, things could now

justice. There are inevitable limits to linguistic expres-becomesion in written documents. In all three constellations

Kommunikationskanal decision shows clearly that de-(examination as to novelty, impermissible broadening

termining the actual disclosure of a document is not as

and claiming of priority), however, it would be inappro-

simple as people thought – the pure cognitive act is “oldpriate to interpret the wording so narrowly that the ob-hat”, and practitioners will now have to develop lines ofjective perspective of the receiver is ignored. To thatargumentation of an evaluative nature as well. (Henke)

tougheragain,

inpractice.

The

extent, it is correct to read the document as suchthrough the eyes of one who is skilled in the art, and toenquire evaluatively as to what belongs to the generalcore of the disclosure for a person skilled in the art, andwhat belongs to the implementing “frills” in the form of
examples.

II. Validity / 6. Disclosure / Impermissible broadening / Priority

21

7. Impermissible broadening / Disclaimer
Federal Patent Court, judgement dated 8 April 2014 – 4 Ni 34/12 (EP) – Fettabsaugevorrichtung
BACKGROUND
According to Article 123 (2) EPC, a European patentcluded merely for part of the subject-matter of theapplication and a European patent cannot be amended inclaimed invention, and said feature does not make asuch a way that the subject-matter extends beyond thetechnical contribution to the subject-matter of thecontent of the application as originally filed. A feature

claimed invention (EPA GRUR Int 1994, 842 –that limits the extent of protection but is not sufficiently

Beschränkendes Merkmal / Advanced Semiconductor

disclosed must therefore be removed from the claim.

Products).

On the other hand, however, Article 123 (3) EPC stipulates that the claims may not be amended in such a way

Things are different when it comes to German law,that the extent of protection conferred is broadened, so

however – namely when German patents are involved.

the respective feature must therefore be left in the

The inescapable trap can be avoided here by not deriv-

claim. In such a case, the patent is liable to be revoked

ing any rights from the insufficiently disclosed feature –by the EPO because there is basically no escape fromthough the feature must be included in any examination

the dilemma created by Article 123 (2) and (3) EPC, apartof infringement. A disclaimer by the patent proprietorfrom the special cases mentioned below.

was previously needed in that respect, although theFederalCourtof

Justice

ruled

in

the

In such situations, the patent can only be upheld in op-

Winkelmesseinrichtung decision (decision of 21 Octoberposition proceedings if the respective features to be2010, Xa ZB 14/09) that the same result can be achieveddeleted due to lack of sufficient disclosure can be re-by properly interpreting the (unamended) patent.

placed by other (narrower) features for which a basis isprovided in the application as originally filed, or if, byincorporating the undisclosed feature, protection is ex-

DECISION
In its Fettabsaugevorrichtung decision, the Federal Pa-

broadening was one of the asserted reasons for revoca-

tent Court has now affirmed the application of Germantion. According to the claim as granted, the patentedcase law to European patents: An action for revocation

liposuction apparatus was meant to have a free space ofagainst the German part of an EP patent, based on im-a specific size, the free space being large enough for

permissible broadening, results in revocation of thevibration to initiate dislocation of the fat (feature 1.9.1).

contested patent even “when the impermissible broad-All that was disclosed in the contested patent, however,ening consists in the inadmissible inclusion of a limiting

was a free space between the cannula and the housing

feature (improper broadening), and the patent proprietor

for the following technical purpose: “To allow the nuta-

also defends the contested patent by adding an appro-tion movement, a free space 18 is provided between

priate disclaimer.” The potential rescue line for German

the cannula and the handle”.

patents (adding a disclaimer, or properly interpreting theclaim) does not work, in other words, for the German

The applicable criterion for identifying a disclosure whichparts of European patents.

is identical and with content that does not broaden theapplication is the understanding of a person skilled in the

The Court had to rule on an action for revocation against

art at the time of the patent application. This skilled

the German part of a European patent. Impermissible

person must be able the find the subject-matter of the22

II. Validity / 7. Impermissible broadening / Disclaimer

claim as belonging to the filed invention, and identical incation of the fat and there has been not any indication incontent to the disclosure of the entire application. Whenthe application of a causal relationship between the freeassessing this, the requirements of direct and unambig-

space and the nutation movement.

uous disclosure applicable when examining as to novelty
and for claiming priority are likewise applicable. For that

The Federal Patent Court therefore applied Article 123

reason, further-reaching content is deemed to be insuf-(2) and (3) EPC and revoked the patent on the grounds

ficiently disclosed when it cannot be found directly andof impermissible broadening.

unambiguously in the application as originally filed, orwhen a skilled person does not read it as taken for
granted into the application but can arrive at by adding to
the disclosure on the basis of his general technicalknowledge, or by modifying the disclosed teaching. It isnecessary to take into account that the requirement ofidentical disclosure must be applied in such a way thatconsideration is given to the fact that establishing what
is disclosed to a skilled person as the invention andwhat is disclosed as an embodiment of the invention isa matter of evaluation. It is necessary to avoid any unreasonable restriction of the applicant in exhausting theactual disclosure of the previous application.

In its grounds for revocation, however, the Court points
out that revocation seems questionable as a conclusion,
because there is much to indicate that feature 1.9.1
merely specified the originally disclosed technical principle in more detail, and therefore had the effect of limiting it. The feature does not address a different technicalaspect that turns the original teaching into some othertechnical principle. The configuration of the claimed
liposuction apparatus turns out to be a special one only,
without changing the manner of operation or the essential design principle of the apparatus. Another indicationof this is that the inclusion of feature 1.9.1 does not leadto a shift in the extent of protection conferred by Arti-

Applying these principles, the Federal Patent Court con-cle 64 EPC and Sections 9, 10 PatG, but merely limits it

cludes that feature 1.9.1 of claim 1 constitutes imper-

with regard to the specified configuration of the freemissible broadening of the teaching compared withspace. The Court seems to discern parallels with thecontent of the application, in that the free space isaforementioned constellations in which the EPO madeplaced in a causal relationship with the vibration compo-

an exception and accepted a way of escaping from thenent and a result (dislocation of the fat) that is given its

trap.

first mention. In contrast, all that was stated in the application with reference to Fig. 4 was that a free space ispresent in order to allow the nutation movement. The
patent application did not establish any direct relationship between the free space, the nutation movement
and the vibration component included in the latter: It

However, the conditions for that exception were not
met sufficiently clearly, so the Federal Patent Court had
no option but to presume the inescapable trap associated with improper broadening of the contested patentand set by Article 123 (2) and (3) EPC.

only explained that vibration of the cannula causes dislo-

ASSESSMENT
The Federal Patent Court has clearly indicated that it

That said, the patent proprietor has filed an appeal

considers the established legal practice of the EPO to beagainst the judgment. The decision of the Federal Court

inequitable. Due to the clear legislation in Article 123 (2)of Justice will have to be waited on, in other words,

and (3) EPC, and until further notice, actions for revoca-

particularlytion against the German part of European patents, based

Winkelmesseinrichtung decision, had viewed the Ger-on impermissible broadening, continue to have excellent

man and European rules on impermissible broadening toprospects of succeeding.

be “largely identical”. Clarification of the issues can now

II. Validity / 7. Impermissible broadening / Disclaimer

since

the

Xth

court

division,

in

its

23

be expected of the Federal Court of Justice. It will be

As long as there is no harmonisation of legal practiceinteresting to see whether the Federal Court of Justicebetween the EPO, for the one part, and the German

manages to reach a decision that departs from that ofcourts, for the other part, it may be advisable in certain

the Federal Patent Court, or whether such a decision iscases to file a parallel German patent. (Förster/Unland)even possible, given the expression of lawmakers’ willin Article 123 (2) and (3) EPC, and the limits to whichjudges can develop the law.

24

II. Validity / 7. Impermissible broadening / Disclaimer

III. OTHER SUBSTANTIVE LEGAL ISSUES
8. Rights of exploitation in communities of co-inventors
Düsseldorf Upper District Court, judgement of 7 August 2014 – I-2 U 91/13 – Garagentor
BACKGROUND
In the wake of several recent judgements by courts ofinvention by other co-owners must conclude an agree-

lower and higher instance concerning the requirements

ment or obtain a resolution to that effect, and if neces-for co-inventorship, another judgement has now beensary must assert his claim to an equitable arrangement

handed down on the rights of exploitation in communi-

in respect of exploitation under Section 745 (2) BGB

ties of co-inventors.

(German Civil Code).

The benchmark in this field, since 2005, is the

The case discussed below related to such an “equitable

Gummielastische Masse II judgement handed down by

arrangement” governing rights of exploitation. The

the Federal Court of Justice. In said judgement, thejudgement resurrects the claim to financial compensa-

Federal Court of Justice drew a distinct line in the sandtion, which appeared to no longer exist after thewith regard to the financial claims to compensation

Gummielastische Masse II ruling.

among parties sharing in an invention. Such claims tocompensation do not exist without further ado – anyone
wishing to participate financially in the exploitation of an

DECISION
The background to the Garagentor decision was a pro-

Another aspect of relevance was that the defendant had

tracted legal dispute over the co-ownership of intellec-

been exploiting the invention extensively while the plain-tual property in the form of two patents protecting

tiff had refrained from doing so (even though it was amechanisms for opening garage doors. It had been ruledcompetitor in the field of garage doors).

in previous proceedings that the plaintiff was entitled toa 5% share in the patents in dispute. The case could

The Upper District Court has now ruled, for this specificonly acquire such importance due to the substantial

situation, on how an equitable exploitation arrangement

number of garage doors based on the patent that had

under Section 745 (2) BGB can be construed.

been sold.

The court firstly grants the plaintiff its claim to compen-

The plaintiff had had its share in the patent assigned to it

sation “on merits”. The statutory criterion of fairness

by a co-inventor and in September 2005 (during vindica-requires an objective evaluation of the respective party’s

tion proceedings with regard to ownership) had asserted

interests, which entails concessions and counter-per-claims to compensation out of court on account of its

formance that the exploiting co-owner must fairly ac-

co-inventorship (asserted by way of alternative). That

cept, also to his own detriment, in view of the opposing

proved in retrospect to be a clever move, because it

interests of the other co-owner. It is irrelevant whether

meant that the plaintiff had promptly responded to thethe one co-owner voluntarily refrained from exploiting

rulings in the Gummielastische Masse II judgement;

the invention, or whether failure to exploit the invention

instead of relying on its (previously discussed) claim towas due to certain extraneous or even imperative fac-compensation under Section 743 (2) BGB, it raised thetors – the one who could have exploited the invention

dispute to a different level altogether.

but refrained from doing so for whatever reason could

III. Other substantive legal issues / 8. Rights of exploitation in communities of co-inventors

25still possibly demand that some form of compensation

been incorporated in claim 1). Whether use of the patent

be paid.

equitably entitles a third party to a share in the financial
revenue from such acts of use is dependent on pre-Secondly: that claim to compensation only ensues,

cisely such exploitation of the third party’s inventive

however, if the exploiting party also uses the particular

contribution.

contribution to the invention made by the other coowner who makes little or no use of the invention. At

Thirdly, the amount of monetary compensation that is

this juncture, the court follows up with a “specific”

equitably owed must be determined on the basis of a

discussion of infringement in which it concluded, in thereasonable royalty.

case in question, that a 5% share of the invention, attributable to the plaintiff, was being exploited by the
defendant (because the respective contribution had

ASSESSMENT
Decisions pertaining to communities of co-inventors are(or more precisely: “exploitation tests”) for parts of thehighly welcome. There is still a stark contrast between

patent.

the frequent occurrence of jointly held patents and thedisproportionate rarity with which the courts have an

I consider the decision to be a wrong turning in both,

opportunity to address the (difficult) legal issues that

dogma and legal policy insofar as it recognises the rightarise in this context (see also my paper in GRUR 2007,

to compensation regardless of whether the claimant89). This judgement is likely to attract more than a little

refrains from exploitation voluntarily or under duress.

attention, therefore, particularly since it quantifies for

Section 745 (2) BGB is very deliberate in basing the rightthe first time what had previously been laid down into compensation on the interests of both parties. One

Gummielastische Masse II.

would think that the claimant’s reasons for not exploiting a patent are of considerable importance – if he had

In the matter itself, however, the dictum and the

had the opportunity to exploit the invention, then hegrounds of the judgement give cause for concern.

could have exploited that opportunity. Why should he beable to lean back and let the other co-owner bear the

One may accept the notion that a claim to compensation

financial risk of exploitation all on his own?

only arises if the claimant can find his own intellectual
input realised in the product using the invention, given

One can only surmise that the Upper District Court wasthat there is a general, equitable core to the notion – one

guided here by the specific circumstances of this partic-

is only meant to share in something that stems fromular case. After all, there was uncertainty over a period

one’s own intellectual contribution. That said, the notionof years (during the vindication process) over who wasitself is not easy to justify as dogma: It breaks into con-

now the lawful proprietor of the patent. In that respect,stituent parts something that only becomes a unitary

the plaintiff might simply have refrained from exploita-

right, the patent, when taken as a whole. For that rea-tion because it felt exposed to the threat of injunctive

son, it would have been easier to argue that a duty toclaims. If these were the (perfectly understandable)

compensate always arises when use is made of thereasons that led the Court to its ruling, then unfortu-

teaching of the (whole) patent. This is because the indi-

nately they were not expressed in the Grounds forvidual contributions are worth nothing, per se; only in

Judgement.

combination do they constitute the patent that can be
exploited as such. The act of granting the patent is a

Why the court should refuse an appeal on points of law

caesura in the creation of rights. The precedent is likely

is also difficult to understand. In my view, there isto produce some very new problems for practitioners,

clearly a need here for further elaboration of legal princi-

and we now have to learn to conduct infringement tests

ples. The issue at stake is nothing less than how the

26

III. Other substantive legal issues / 8. Rights of exploitation in communities of co-inventors

general, civil-law principles of Sections 741 ff. BGB candemonstrated for the first time: Claims to compensation

be applied to the field of intellectual property law, andunder Section 745 (2) BGB are possible. As the Federal

particularly to patent law. This deserved a Supreme

Court of Justice had previously indicated, however, such

Court judgement.

claims have to be asserted and, more to the point, as
explicitly as possible – like the plaintiff did in the case in

Nevertheless, practitioners in the field have now beenquestion. (Henke)

given some important pointers, on the whole, to the
future direction of case law in Düsseldorf. One fact has
now been established at any rate, and had to be

III. Other substantive legal issues / 8. Rights of exploitation in communities of co-inventors

27

9. Standard essential patents (SEPs) / FRAND principles
Opinion of Advocate General Wathelet, delivered on 20 November 2014 – Huawei vs. ZTEBACKGROUND
The antitrust barriers to the enforcement of standard

forced against an infringer who is willing to accept aessential patents (SEPs) have been occupying the courts

licence. In early 2013, this prompted the District Court inin Germany and Europe for many years already. The

Düsseldorf to stay the Huawei vs. ZTE infringement

core issue concerns the specific terms and conditions

proceedings and to refer the question of when the anti-

under which an infringer can defend itself against thetrust defence of compulsory licensing is justified to theinjunctive relief claimed by the patent proprietor, by

Court of Justice of the European Union for a preliminary

arguing that it is entitled to a licence to the SEP for anti-

ruling.

trust reasons.
In early 2014, before the oral proceedings before the
In its guiding decision in 2009 on the Orange-Book-

European Court of Justice, the Commission publishedStandard, the Federal Court of Justice provided exten-

its decisions against Motorola and Samsung, in which itsive clarification for Germany. It placed narrow limits on

defined a “safe harbour” for SEP infringers. If the in-

the antitrust defence of compulsory licensing, with thefringer states its willingness to take out a licence to theresult that such a defence strategy was rarely success-patent in suit and to have a court of law or arbitration

ful in practice in the years that followed.

determine reasonable licensing terms, then the patent
proprietor may no longer seek injunctive relief. This

Matters took a different turn, however, when the Euro-

meant that any infringer could frustrate the patent pro-pean

proceedings

prietor’s statutory entitlement to injunctive relief byagainst Samsung and Motorola on the grounds that they

merely making a declaration of intent. In that light, thehad sought injunctive relief against Apple in Germany on

opinion of the Advocate General in the preliminary rulingthe basis of various SEPs. The Commission issued aprocedure before the European Court of Justice waspress release stating that, in its view, it was problematic

eagerly awaited.

Commission

instituted

antitrustunder antitrust law if a standard essential patent is en-

FINAL PETITIONS
In his opinion, Advocate General Wathelet sought avague and non-committal to limit the SEP holder’s right

middle way between the established legal practice of

to seek injunctive relief.

the Federal Court of Justice as expressed in the OrangeBook-Standard decision, and the view taken by the Eu-

After these initial thoughts, the Advocate General thenropean Commission.

addressed the question of dominant position. The merefact that an undertaking owns a standard essential pa-

The Advocate General considers the precedent estab-tent does not necessarily mean that it holds a dominant

lished by the Federal Court of Justice to be inapplicable

position, but is at most an indication that that might bebecause the standard to which the decision related was

the case. It was not possible by law to examine thata “de facto” standard. There was no obligation on theissue any further, as it was not included in the questions

patent proprietor at that time to license its patents onreferred to the ECJ; however, the Advocate General

FRAND terms. In his Opinion, the Advocate General also

makes it plain that it is basically a matter for the national

criticised the view taken by the European Commission,

court to establish whether an SEP provides a dominantstating that mere willingness on the part of the infringer

position. It must be possible, in his view, to rebut theto negotiate, as required by the Commission, is too

presumption of a dominant position, based on a patent

28

III. Other substantive legal issues / 9. Standard essential patents (SEPs) / FRAND principles

being essential to a standard, with specific, detailed

negotiations on a licence agreement with the patentevidence.

proprietor. The first step should be taken by the patent
proprietor, who should alert the infringer to the in-

The Advocate General then addresses the need, in thefringement by specifying the relevant SEP and the way

case in question, to strike a balance between the rightin which it has been infringed, in its view. The patent

to intellectual property, on the one hand, and antitrust

proprietor must also offer the infringer a written licencelaw, on the other hand. The point of departure for his

agreement containing all the terms normally included inanalysis is that exercising a patent and seeking injunc-such licence agreements within the industry in question,

tive relief cannot in itself constitute an abuse of a domi-

in particular the precise amount of the royalty and thenant position. Any restriction of that right to seek injunc-

way in which it is calculated.

tive relief constitutes, instead, a significant limitation of
intellectual property rights that can only be permitted inOnce that has been done, it is then up to the infringer to

exceptional and clearly defined circumstances.

act accordingly. If it does not accept the patent proprietor’s offer, it must promptly submit in writing, in the

However, the Advocate General points out that bringing

opinion of the Advocate General, a reasonable counter-

Huawei’s patent into the LTE standard resulted in ZTE’s

offer relating to the clauses with which it disagrees. If,

dependence on that technology. Under the ETSI stat-in contrast, the infringer does not respond in a serious

utes, Huawei was only able to bring in its patent be-manner to the negotiations, but acts in a purely tacticalcause Huawei had committed itself to grant a licenceor dilatory manner, the patent proprietor is no longer

under the patent to any user of the standard (and thus toprevented from seeking injunctive relief.

ZTE as well) on FRAND terms. The patent proprietor’s
dominant position that ensued from bringing the patent

If negotiations between the infringer and the patent

into the standard is ultimately based, therefore, on its

proprietor are not successful, the infringer’s conduct

willingness to license the patent to third parties on par-cannot be deemed dilatory or as not serious if the in-ticular terms. In such a situation, seeking injunctive relief

fringer asks for the FRAND licence terms to be deter-in respect of the patent may constitute an abuse of amined by a court of law or court of arbitration. In that

dominant position. However, the conduct of the patentcase, however, the holder of the patent may require the

proprietor and the conduct of the patent infringer in theinfringer to provide security in the form of a bank guar-

specific case need to be examined in further detail.

antee or deposit for the royalties in dispute.

Applying his findings, the Advocate General then for-The same principle should apply, in the view of the Ad-

mulates specific requirements regarding the conduct ofvocate General, if, during negotiations, the infringer

patent proprietors and infringers:

reserves the right to challenge the validity or infringement of the patent before a court of law or court of

It is not unreasonable, in principle, for the infringer toarbitration after concluding the licence agreement.

start using the patent and subsequently to enter into

ASSESSMENTThe Opinion of the Advocate General is binding on nei-

General. It must be assumed, however, that the com-ther the European Court of Justice or the national

ments made by the ECJ in its final verdict will be lesscourts, but it does carry considerable weight. As men-detailed than those made by the Advocate General.

tioned at the beginning, judgements handed down by
the ECJ tend to accept the comments of the Advocate

In terms of content, the Advocate General does indeed

General in the majority of cases. It is highly likely, there-

take a middle way, as intended, between the estab-

fore, that the final verdict of the ECJ will point in a direc-

lished legal practice of the Federal Court of Justice andtion similar to that taken in the Opinion of the Advocate

the decisions taken by the European Commission. The

III. Other substantive legal issues / 9. Standard essential patents (SEPs) / FRAND principles

29

rights of SEP holders are significantly strengthened inpatent is essential to the standard but does not provide

comparison with the prevailing approach of the Euro-a dominant position. This distinction is thus anotherpean Commission in recent years. For example, theissue that will gain significantly in importance.

Advocate General clearly states that seeking injunctive
relief is permissible in cases where the infringer does

A third aspect that will need to be clarified by case law

not respond seriously to the licence offer made by thein the next few years is the fixing of FRAND licencepatent proprietor, or tries to delay concluding a licenceterms in court or arbitration proceedings, as outlined byagreement.

the Advocate General. Even when an infringer is seriously interested in a licence under the SEP it is infring-

However, a number of key issues still need to be clari-ing, it will be almost impossible in many cases to reachfied by national courts.

agreement on licence terms that both sides consider fairand reasonable. Since the infringer in such a situation

There is still a blurred distinction between a de facto

can only escape an injunction by having a court of law orstandard, to which neither the Commission decisions

arbitration define such terms, proceedings to set thenor the Opinion of the Advocate General are meant toamount of royalty payable are likely to becoming in-apply, and the LTE standard at issue in this case. The

creasingly important in the years ahead.

Advocate General states that the strict requirements ofantitrust law are meant to apply whenever the patent

There are numerous questions in this regard that are still

proprietor makes a FRAND commitment and thus allows

not clarified. For example, it is virtually impossible forits patent to be incorporated in the standard – which isthe courts to rule, with any kind of procedural efficiency,

not the case with de facto standards. It is foreseeable

on the infringement and validity of the dozens or eventhat this distinction is an issue that will acquire consid-

hundreds of patents that are typically involved in a pa-

erable importance in future infringement proceedings.

tent portfolio licence agreement. Apart from these procedural issues, the question of what is “fair reasonable

The Advocate General also indicates in his Opinion thatand non-discriminatory” is also something that needs

not every SEP inevitably grants its holder a dominant

defining by substantive law. The few court decisions

position. Whether this was so in the case in question

hitherto, that have addressed the question of what

was not one of the questions referred to the ECJ and foramount a reasonable royalty must be, are highly prob-that reason could not be answered. In his Opinion, how-lematic in their content, so new paths will need to be

ever, the Advocate General does indicate one way for

taken in this respect if a reasonable balance of interest

patent proprietors to circumvent the strict requirements

is to be achieved between patent proprietors and licen-of antitrust law, namely by showing how the respective

sees. (Müller)

30

III. Other substantive legal issues / 9. Standard essential patents (SEPs) / FRAND principles

Mannheim District Court, decision 21 November 2014 – 7 O 23/14 – DVD-Forum
BACKGROUND
In addition to the dispute just described, which is being

ceedings (only for Germany, and ignoring the remainder

conducted in the limelight of patent law, so to speak,of the plaintiff’s patent portfolio).

there is another trend emerging that would appear to beof major importance not only for the holders of SEPs,
but also for their “potential licensees”.

In a much-cited decision to stay proceedings (case no.
7 O 65/10), the District Court in Mannheim acceptedsuch a licence offer as proposed by the infringer and

Until now, a frequently seen defence involved the in-made it clear to the patent proprietor that, for antitrust

fringer of standard essential patents (SEPs) acting con-reasons, it was in no position to refuse the requested

ciliatorily and pretending to be a “good” infringer. It filed“single licence” to the patent in suit. Patent proprietors,

a licence offer properly drafted in accordance with theaccording to the Court, could not insist on potential

principles laid down in the Orange-Book-Standard caselicensees only being granted a licence to their entire

law with the infringement court (typically with its re-portfolio of intellectual property rights. Licensees mustsponse to the infringement suit) and began to deposit

be free to decide whether and to what extent theyroyalties for the past and future. However, it calculated

wanted to distribute which products with which productthe royalties in a way that no patent proprietor could

configurations on which geographical markets. An ex-

accept: Starting from a hypothetical total royalty burden

ception could only be made in those cases where thefor the final product, the “share” that would be attribut-

potential licensee was acting in abuse of law by merely

able to the respective patent in suit is then calculated

seeking a single licence to the patent in suit. In case no.

(typically about 1/2000 of the total royalty burden in the

7 O 65/10, that would have meant annual instalments ofcase of mobile radio communications standards). Royal-a few thousand Euro, despite the fact that the patentties were then calculated for that two-thousandth share,

proprietor was a major electronics corporation and evennamely just for the respective patent sued upon in pro-though the defendant marketed mobile telephones
worldwide.

DECISION
In the DVD-Forum case, which is similar in some re-standard essential patents, and the defendant sells iden-

spects, the proceedings were likewise stayed, but only

tical devices worldwide.

due to the pending ECJ case Huawei vs. ZTE – and not
due to the territorially and materially limited licence of-In this situation, the District Court Mannheim has now

fer.

ruled differently from case 7 O 65/10: In the European
Court of Justice proceedings, one of the issues was

In that case also, the two parties had made respective

whether European antitrust law stipulates any special

licence offers that they each deemed to be “FRAND”.

qualitative and/or timing requirements regarding theBoth parties had also provided the option of having thepatent proprietor’s willingness to negotiate, or regarding

amount of royalty determined in subsequent proceed-

the potential licensee’s licence offer, and whether theings by a court of law, although the defendant wanted tooffer must include all the arrangements, if necessary,

have the licence to be granted only for the respectivethat are normally included in licence agreements in thepatent in suit and only for Germany (which is why ittechnical field in question. The District Court in Mann-deposited a three-digit Euro sum per quarter), whereas

heim now takes the view that the plaintiff (if the above

the patent proprietor based the offer on its entire global

questions are to be answered in the affirmative) might

portfolio of patents. Here, too, the plaintiff is a globally

successfully argue that a global portfolio licence is cus-

operating electronics corporation with a large number oftomarily agreed in similar cases.

III. Other substantive legal issues / 9. Standard essential patents (SEPs) / FRAND principles

31

The reason why the District Court Mannheim was able

judgement as ruling that the parties must stick to what

to arrive at these grounds for its decision was because

is “customary” if they want to operate within permissi-

the plaintiff side had argued and substantiated its case

ble antitrust limits, one can presume that patent infring-

significantly more strongly (in contrast to the plaintiff in

ers will not get away quite so cheaply in future as hascase no. 7 O 65/10), that a portfolio of patents was be-

been the case since the ruling in 7 O 65/10. If infringers

ing infringed worldwide and that identical products wereinvoke the FRAND defence, then they also have to pre-also being sold worldwide.

sent an offer that conforms to customary practice in therespective industry; they cannot just deal with the pa-

Despite that, we believe that there is a clear change oftent in suit by concluding a “single licence agreement”.

tack here by the Court. Anticipating the forthcoming ECJASSESSMENT
Although it is not yet set in stone, the fact that the Dis-

Were it to prevail, German courts could allow the sharp-

trict Court Mannheim has indicated its departure fromest weapons of patent proprietors to be bought for a

its unwieldy decision in case no. 7 O 65/10 can only bepittance. One thing is certain, namely – the licensing

welcomed. That decision was due to a specific situation

campaign has run its course as soon as the German partin those particular proceedings, but was barely applica-of the patent portfolio has been licensed. No patent

ble as a dogma and also, in effect, produced results thatproprietor nowadays can seriously consider enforcing awere incorrect.

global portfolio in every single industrial nation (or evenin just the biggest). The transaction costs would far

The earlier decision was wrong, as a dogma, because it

exceed the potential revenue from the licence agree-

ignored the fact that patent law and antitrust law are notment.

congruent with each other. Injunctive relief under patentlaw is a territorially limited protective right that extends

It is precisely such judicial practice in Germany in com-from Flensburg in the north to Garmisch in the south ofbination with forthcoming ECJ jurisdiction that is alreadyGermany. Antitrust law, in contrast, relates to “mar-causing industrial partners to consider leaving the ETSI

kets” that extend far beyond Germany’s borders andand the standardisation programme. The District Court

which may include the whole world. Another aspect is

in Mannheim has set a minor example here and indi-that individual products generally infringe more than justcated that things might not turn out quite as badly as

single patents, but several. That is the case, at any rate,

feared. The Court will hopefully find an opportunity towhen a patent proprietor holds a large portfolio ofverify this precedent – which will hopefully be accepted

standard essential patents.

and applied by courts elsewhere in Germany. (Henke)

It is clear from the small amount of royalties that theruling in case no. 7 O 65/10 produces the wrong results.

32

III. Other substantive legal issues / 9. Standard essential patents (SEPs) / FRAND principles

IV. PROCEDURAL LAW
10. Provisional judicial relief
Düsseldorf District Court, judgement of 8 May 2014 – 4a O 66/13 – Reinigungsroboter
BACKGROUND
In the judgement under consideration here, the District

The Düsseldorf Upper District Court defined an excep-

Court in Düsseldorf addressed the validity requirementstion, albeit limited, to that rule in the much-citedthat patents must satisfy in injunction proceedings. A

Olanzapin

temporary injunction can basically only be granted when

ZR 47/07). With the present decision, the District Court

the injunction patent has already survived contentious

has now outlined another constellation that qualifies as

opposition or revocation proceedings and its legal valid-an exception.

decision(judgementof

29 May 2008,

ity can therefore be deemed to be sufficiently certain.

DECISION
The plaintiff in the injunction action was the registeredaccused products and assumed that the legal validity ofproprietor of a patent relating to a drive and control sys-

the injunction patent was sufficiently certain. While thetem for a robot. This patent had not yet been subject tovalidity of the IPR to which the injunction relates must

opposition or revocation proceedings before the injunc-

basically be sufficiently certain for a temporary injunction

tion proceedings began.

to be granted, this validity can generally only be affirmed
when the IPR in question has withstood an opposition or

On 29 July 2013, the plaintiff applied to the District

an application for revocation.

Court in Düsseldorf for an injunction to be granted
against the defendant. In its court order of 14 AugustThat was not the case here. However, the Court made2014, the courts granted the requested injunction

an exception and saw no reason in this case why special

against the defendant without a prior hearing. The order

requirements should be made regarding verification of

was served on the defendant the very same day, at a

the legal validity of the injunction patent. Due to the fact

trade fair in Berlin.

that the defendant did not oppose the patent until fiveand half months had elapsed since the temporary injunc-

On 10 January 2014, i.e. almost five months after thetion was granted, it conducted the injunction proceed-

injunction was granted, the defendant in the injunction

ings effectively like proceedings on a main issue. The

action filed an action for revocation against the injunc-

defendant had had sufficient time in between to con-tion patent. On 28 January 2014, it appealed against theduct extensive searches on the legal validity of the pa-

temporary injunction and simultaneously requested that

tent. In such a case, the injunction order had therefore

enforcement be temporarily suspended.

to be verified if the cited prior art provided no reason to

The District Court Düsseldorf dismissed the application
for temporary suspension of enforcement and confirmed the temporary injunction with its judgement of
8 May 2014. In said judgement, the courts acknowl-

stay the proceedings on the main issue. In the case inquestion, however, the District Court in Düsseldorf considered these tough requirements as not being met, so
the injunction was therefore upheld.

edged that the injunction patent was infringed by the

IV. Procedural law / 10. Provisional judicial relief

33

ASSESSMENT
In this decision, the District Court is applying the estab-This fails to explain, however, why the District Court inlished precedents laid down hitherto by the Düsseldorf

Düsseldorf granted an injunction in the first place here –courts (see also the Upper District Court Düsseldorf

without a hearing and thus without hearing the defend-

judgement of 14 July 2009, 2 U 87/08; Düsseldorf Dis-

ant. The injunction patent is basically required in thattrict Court, judgement of 19 August 2004, case no. 4b O

case to be legally valid with a sufficient degree of cer-

199/04). At second glance, however, this latest judge-

tainty, as can be assumed when the patent has survived

ment by the Düsseldorf District Court raises a number

opposition or revocation proceedings, but which was notof issues.

the case here. Why the courts departed from that principle when granting the temporary injunction is not evi-

The Court is correct in ruling that a patent in injunction

dent from the decision.

proceedings does not have to satisfy any tougher requirements in respect of its legal validity, if the defend-

For practitioners, this judgement shows that the de-ant in the injunction action conducts the proceedings

fendant in injunction proceedings should respond im-

like proceedings on a main issue. In normal patent in-mediately by filing an appeal against a temporary injunc-

fringement proceedings, the defendant generally hastion. If it fails to do so, it runs the risk of the court as-

three to four months’ time to conduct searches into thesessing the legal validity of the patent according to thelegal validity of the patent in suit, to file an action forstrict criteria applied in proceedings on the main issue.

revocation and, in its response to the infringement suit,

For the defendant in injunction proceedings, this entails

to petition for proceedings to be stayed due to the pa-

a serious tactical disadvantage that can lead to the casetent lacking validity. If the defendant in injunction pro-being lost (as it was here). (Müller)

ceedings, having filed its opposition, likewise takes
several months to conduct a detailed search regarding
the legal validity of the patent, then there is no apparent
reason why the different requirements in respect oflegal validity should be made from those made in proceedings on the main issue.

34

IV. Procedural law / 10. Provisional judicial relief

11. Enforcement measures following destruction of patentFederal Court of Justice, decision of 8 July 2014 – X ZR 61/13 – Kurznachrichtenfunktion I
Federal Court of Justice, decision of 19 September 2014 – X ZR 61/13 – Kurznachrichtenfunktion IIBACKGROUND
In summer 2014, the Federal Court of Justice issued

is usually pronounced before the Federal Patent Court

two court orders, in the same case and in quick succes-

has decision on the legal validity of the patent in suit.

sion, concerning temporary suspension of enforcement

Until now, the infringement appeal proceedings may

in appeal proceedings. The background to both deci-even be completed before such a decision is reached.

sions is the separation, peculiar to the German legal

As a result, the defendant is often confronted with en-system, of patent infringement proceedings from theforcement measures based on the infringement verdict

opposition or revocation proceedings often instituted aswithout the legal validity of the patent having been re-a defence.

viewed in court. The two court orders now issued by theFederal Court of Justice address the defendant’s op-

Patent revocation proceedings before the Federal Patenttions for protecting its legitimate interests in such a

Court take much longer than patent infringement pro-situation, particularly when an appeal court judgement

ceedings conducted before the ordinary courts of law.

has already been issued.

This means that a decision on infringement of the patent

DECISIONS
The defendant had been adjudged by the District Court

ment can only be considered when enforcement would

and the Upper District Court in Munich for infringement

cause an irreversible detriment to the debtor and thereof the patent in suit, which related to a short message

is no prevailing interest on the part of the creditor.

function (Kurznachrichtenfunktion) of mobile telephones,
inter alia to cease and desist, to provide information, to

In the view of the Federal Court of Justice, however,recall the products and to destroy them. The defendant

there is no such irreversible detriment in the case inappealed against the judgement of the Upper District

question. The fact that the patent in suit had meanwhile

Court in Munich with an objection of non-admission sobeen revoked by a Federal Patent Court judgement atthat the appeal verdict would be reviewed by the Fed-

first instance did not constitute such a detriment. Revo-eral Court of Justice. Prior to the Federal Court of Jus-

cation of the patent in suit in first-instance proceedings

tice decision on the objection of non-admission, thedid not constitute per se an “irreversible detriment”

patent in suit was revoked by the Federal Patent Court.

within the meaning of Section 719 (2) ZPO. Since the

The defendant then applied for temporary suspension of

first-instance judgement by the Federal Patent Court

any enforcement measures deriving from the judgement

was not final, the offer to cease and desist made in theby the Upper District Court in Munich, which was en-

infringement proceedings lacked a substantive legal

forceable without any security being deposited.

basis, in the view of the Federal Court of Justice.

In its Kurznachrichtenfunktion I order, the Federal

The defendant appealed against that decision with an

Court of Justice dismissed that request, citing the rule inobjection that it had not had its day in court (filed with

Section 719 (2) ZPO that explicitly governing the sus-

the Federal Court of Justice). In September 2014, thepension of enforcement measures in the appellate in-Federal Court issued its Kurznachrichtenfunktion II

stance. According to said rule, suspension of enforce-court order. This time, the defendant’s objection of not

ment measures deriving from an appeal court judge-

having its day in court was viewed by the FCJ as aIV. Procedural law / 11. Enforcement measures following destruction of patent35

remonstrance and was successful. The FCJ ordered thatered when an irreversible detriment is caused to thetemporary suspension of enforcement measures against

debtor, is the enhanced “guarantee of correctness” that

depositing of security. In its rationale for the order, thelawmakers assign to appeal proceedings on questions of

FCJ argued that, although the requirements of Sec-fact and law. This evaluation is thus inapplicable to thetion 719 (2) ZPO governing suspension of enforcement

peculiarities of overlapping patent infringement andmeasures in the appellate instance were not met, thepatent revocation proceedings, because, in appeal pro-Court now concluded that the provisions in Sections 719

ceedings also, the court of appeal can merely evaluate(1) and 707 (1) ZPO applicable to suspension of en-

the legal validity of the patent in suit in summary form.

forcement measures in the appellate instance had to be

As far as legal validity is concerned, the appeal judge-

applied analogously to appeals on points of law, at least

ment therefore lacks the enhanced guarantee of cor-in patent infringement matters. Suspension of enforce-

rectness that lawmakers basically associate with deci-

ment measures deriving from a first-instance judge-

sions handed down at second instance. If the Federal

ment, pursuant to Section 719 (1) and 707 (1) ZPO, isPatent Court grants the application for revocation aftergenerally indicated in the appellate instance when thethe appeal judgement has been handed down, thispatent in suit has been revoked by the Federal Patentguarantee of correctness is upset for reasons beyond

Court at first instance. Although Section 719 (1) ZPO

the judgement – namely to the same extent as theapplies only when an appeal on questions of fact andguarantee for correctness inherent in a first-instance

law has been filed against a provisionally enforceable

judgement.

judgement, the Federal Court of Justice concludes herethat said rule must be applied analogously in appeal

In the case in question, it was therefore necessary, inproceedings on questions of law.

the view of the Federal Court of Justice, to apply therules governing suspension of enforcement measures

The meaning and purpose of this distinction between

deriving from first-instance judgement accordingly. This

the requirements stipulated in Section 719 (1) ZPO,

analogous application of Section 719 (1) and Section 707

which places suspension of enforcement at the discre-(1) ZPO then resulted in suspension of enforcementtion of the court, and Section 719 (2) ZPO, according tomeasures deriving from the appeal court judgement,

which suspension of enforcement can only be consid-

against lodging of security by the defendant.

ASSESSMENT
The decisions of the Federal Court of Justice in

In terms of content, the second of these decisions is

Kurznachrichtenfunktion I and II are noteworthy from thedefinitely to be welcomed. Trust in the legal validity of aoutset because the same court division corrected its

patent is seriously undermined when the patent is re-

own rulings in the same proceedings within two

voked at first instance by the Federal Patent Court. In

months. In July 2014, the Federal Court of Justice kept

such a situation, it is imperative as a basic principle tostrictly to the rule in Section 719 (2) ZPO concerning theallow the alleged infringer to ward off any further en-suspension of enforcement in appeals on questions offorcement measures against lodging of security. Givenlaw, and rejected any suspension of enforcement; itthat the infringement courts had merely addressed the

now corrected that view a mere two months later bylegal validity of the patent in suit in summary form in

deciding on analogous application of the respective rules

both the first- and second-instance proceedings, nothing

governing enforcement of judgements handed down at

different can apply to first-instance judgements than forfirst instance.

judgements by the court of appeal. (Müller)

36

IV. Procedural law / 11. Enforcement measures following destruction of patent12. New procedural law for patent revocation proceedings
Federal Court of Justice, judgement of 14 January 2014 – X ZR 148/12 – Positionsdefiniertes
Aufspannen
Federal Court of Justice, judgement of 20 March 2014 – X ZR 128/12 – Arretiersystem
BACKGROUND
The basic concept underlying the Patent Law Moderni-

ceedings at first instance are to be taken as a basis.

sation Act passed in 2009 is that the facts of a case are

Since mid-2012, the first Supreme Court judgements

to be clarified primarily in first-instance proceedings

have now been pronounced in which the new proce-

before the Federal Patent Court, so that the court ofdural law has been applied in practice, and to good ef-

second instance can then concentrate (theoretically, at

fect (see also last year’s review of case law).

any rate) on checking for errors. The results of the pro-DECISIONSIn the period now under review, two important deci-reworded request derived from an auxiliary request

sions were handed down (continuing the Federal Court

filed at first instance that, from the legal viewpointof Justice judgement of 28 May 2013, X ZR 21/12 –of the Federal Patent Court, was of no relevance. In

Walzstraße) that show ways that a patent proprietor can

the second instance, rewordings of that request

still defend a patent with amended claims at second

were not considered relevant enough to exceed theinstance also.

limits drawn by Section 117 PatG in combination
with Section 531 ZPO.

•In the Positionsdefiniertes Aufspannen case, it
was not until the oral proceedings before the Court•

The

situation

was

also

similarinthethat the patent proprietor found a version of claims

Arretiersystem case. Here, too, it was not until thethat led to a patentable form of the patent.

appeal proceedings that the patent proprietor filed
the auxiliary request that was ultimately successful.

The Federal Court of Justice deems the limited de-However, that request differed from a previous

fence of the contested patent to be admissible inauxiliary request only by a certain “simplification”.

this specific case and considers the two (cumula-

The request added only the features of dependenttive) requirements of Section 116 (2) PatG as being

claim 2 to claim 1, and left out the features of de-met: Firstly, the auxiliary request is expedient be-pendent claims 4 and 5 (which had been included incause it appropriately addresses the doubts thatclaim 1 in the first-instance proceedings).

had been voiced by the Court in the oral proceedings. Secondly, the Court was able to base its deci-

In that constellation also, in the view of the Federalsion on facts that had to be taken into account any-

Court of Justice, the patent proprietor is still within

how, pursuant to Section 117 PatG. According to

the scope of what is admissible under Section 116

Section 531 (2) ZPO, these also and specifically in-(2) and Section 117 PatG, in combination with Sec-

clude aspects that were obviously overlooked ortion 531 (2) ZPO.

deemed irrelevant by the court of first instance. In
the case under consideration here, the core of the

IV. Procedural law / 12. New procedural law for patent revocation proceedings

37

ASSESSMENT
The Federal Court of Justice has shown once again that

The limits to what can still be presented in the second-

it takes the problems of patent proprietors seriously.

instance proceedings may have been reached when the

The issue is an all-or-nothing one for the patent proprie-patent proprietor acts carelessly. However, no rulings

tor (in contrast to the applicant for revocation). The twohave been handed down in that respect as yet. Until

Federal Court of Justice judgements clearly help to sim-now, the judgements of the Federal Court of Justiceplify first-instance proceedings and to that extent arehave always had a liberal bent – as far as the duties ofconducive to procedural efficiency – under the newpatent proprietors and respondents to revocation suits

procedural law also, patent proprietors are not com-are concerned, at least. (Henke)pelled to lay every conceivable wording of their claimson the table in the first-instance proceedings and nolater.

38

IV. Procedural law / 12. New procedural law for patent revocation proceedings

AUTHORS
Harald Förster
Dipl.-Phys. Dr. jur. Volkmar Henke
Dr. jur. Tilman Müller
Dipl.-Phys. Jochen Unland

EDITING & LAYOUT
Jessica Stehn-Bäcker

Further members of our team can be found atwww.eisenfuhr.com/en/findPhoto credits
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