Recent Case Law
inGerman Patent Law

2013characterized by IP®

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CONTENT

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

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

Equivalence .....................................................................................................................3
Düsseldorf Upper District Court, judgement of 3.1.2013 – I-2 U 22/07 – Regenschirm ............................... 32.

Contributory infringement ...............................................................................................5
Federal Court of Justice, judgement of 21.8.2012 – X ZR 33/10 – MPEG-2 Videosignalcodierung ............... 5
Düsseldorf Upper District Court, judgement of 21.2.2013 – I-2 U 72/12 – Nespressokapseln ...................... 7

II. Legal validity............................................................................................................ 9
3.

Patentability of computer-implemented inventions .........................................................9
Federal Court of Justice judgement of 23.4.2013 – X ZR 27/12 – Audiowiedergabe von Straßennamen ..... 94.

Disclosure / Impermissible broadening / Priority............................................................11
Federal Court of Justice, judgement of 9.4.2013 –X ZR 130/11 – Verschlüsselungsverfahren ................... 11Federal Court of Justice, judgement of 17.7.2012 – X ZR 117/11 – Polymerschaum ................................. 11Federal Court of Justice, judgement of 14.8.2012 –X ZR 3/10 – UV-unempfindliche Druckplatte............... 115.

Disclosure of written documentation ............................................................................15
Federal Court of Justice, judgement of 15.1.2013 – X ZR 81/11 – Messelektronik..................................... 15

III. Other substantive legal issues ............................................................................. 16
6.

Licences in cases of insolvency ....................................................................................16
Munich Upper District Court, judgement of 25.7.2013 – 6 U 541/12 – Qimonda / Infineon ........................ 16

7.

Criteria for co-inventorship ............................................................................................18
Federal Court of Justice, judgement of 18.6.2013 – X ZR 103/11 – Flexibles Verpackungsbehältnis ......... 18

IV. Procedural law ....................................................................................................... 21
8.

Standard essential patents: Suspension of infringement proceedings .........................21
Düsseldorf District Court, decision of 21.3.2013 – 4b O 104/12 ................................................................. 21

9.

New procedural law for patent revocation proceedings ................................................24
Federal Court of Justice, judgement of 26.6.2012 – X ZR 84/11 – Schaltungsanordnung .......................... 24Federal Court of Justice, judgement of 28.8.2012 – X ZR 99/11 – Fahrzeugwechselstromgenerator ........ 24Federal Court of Justice, judgement of 8.8.2013 – X ZR 36/12 – Mischerbefestigung ............................... 24Federal Court of Justice, judgement of 28.5.2013 – X ZR 21/12 – Walzstraße ........................................... 24Federal Court of Justice, judgement of 27.8.2013 – X ZR 19/12 – Tretkurbeleinheit .................................. 24

10. Reimbursement of costs in patent revocation proceedings ..........................................26
Federal Court of Justice, decision of 18.12.2012 – X ZB 11/12 – Double representation in revocation
proceedings ................................................................................................................................................ 26
Federal Court of Justice, decision of 18.12.2012 – X ZB 6/12 – Attorney in revocation proceedings ......... 26

FOREWORD

After a period of relative quiet surrounding “equiva-

an important step forwards (see the overview in section

lence” in German case law, the Federal Court of Jus-

IV.9).

tice had a renewed opportunity last year (in its Regenschirm decision) to define in more detail the extent of

Two decisions handed down by courts of lower in-protection provided by the doctrine of equivalence.

stancehave

caused

a

stir.

Once

again,

theEstablished legal practice on contributory infringement

Qimonda / Infineon case before the Upper District Court

was also developed – particularly with regard to thein Munich prompts critical analysis of the current legal

combination of data storage media and playback devices

situation regarding the continuation of licences under(see the MPEG-2 Videosignalcodierung decision, which

insolvency. The District Court in Düsseldorf felt com-has considerable ramifications).

pelled by statements made by the European Commission to suspend patent infringement proceedings on

The patentability of computer-implemented inventions is

standard essential patents and to submit a series ofa perennial issue where a consistent line now seems toquestions to the Court of Justice of the European Union

be emerging in precedents set by Federal Court of Jus-on the extent to which patent proprietors are entitled totice (Audiowiedergabe von Straßennamen). In the period

injunctive relief.

under review, there were also several judgements relating to the actual disclosure of written documentation

This review of recent case law cannot claim to be ex-

and patent applications – the “narrow” definition applied

haustive, of course. However, it does provide an over-to patents will prove increasingly frequently to be aview of current debate in German patent law.

serious barrier to legal validity (see section II. 4-5).
In the field of procedural law, the first decisions on pa-

March 2014

EISENFÜHR SPEISER

tent revocation proceedings following the reforms are2

Foreword

I. PATENT INFRINGEMENT
1. Equivalence
Düsseldorf Upper District Court, judgement of 3.1.2013 – I-2 U 22/07 – Regenschirm
BACKGROUND
In its recent Okklusionsvorrichtung decision (BGH,

meaning of the claim, even if his thoughts were focused

10.5.2011, X ZR 16/09) and Diglycidverbindung decisionon the technical principle of the claim. In the decisions(BGH, 13.9.2011, X ZR 69/10), the Federal Court of Jus-

referred to above, the Federal Court of Justice denied

tice significantly limited the applicability of the doctrine

this in the case of substitutes that are mentioned in theof equivalence. One of the requirements for equivalentdescription but which are not found in the wording ofpatent infringement is that, for a person skilled in thethe claim. This means that using an embodiment whichart, the substituted means was an obvious replacement

is not included in the claims cannot be deemed anhaving the same effect as the solution within the literalequivalent infringement of the patent.

DECISION
This established legal practice of the Federal Court ofaway the mechanism constituted equivalent use of theJustice was applied by the Düsseldorf Upper District

claimed lowering.

Court in its Regenschirm decision, in which it effectively limited the applicability of the doctrine of equiva-

The courts ruled that it did not, on grounds that arelence still further. In the case in question, the patent in

definitely worthy of note. Both lowering the mechanism

suit related to a mechanism for automatically opening

and folding it away under the pushbutton are alreadyand closing an umbrella by pressing a button on the grip

known from the prior art. In its grounds for judgement,of the umbrella. The mechanism for which protection

the court refers to a (prior art) document cited by thewas claimed allowed the pushbutton to be “deacti-

patent in suit, in which both lowering and folding awayvated” so that pressing it by mistake did not result inof the mechanism was described. Of these two options

the umbrella opening or closing.

known from the prior art, the description in the patent insuit addressed and discussed only the lowering option.

To achieve such deactivation, the claims specified a

The Düsseldorf Upper District Court deemed that to bemechanism of lowering the mechanism underneath thea selective decision made by the patent in suit among

pushbutton.

the alternative solutions disclosed alongside each otherin the prior art. This meant that the patent proprietor

The accused umbrella likewise included a mechanism

effectively waived the folding mechanism solution,

for securing the pushbutton. In contrast to what waswhich was no longer described in the description or

specified in the claim of the patent in suit, however, thisincorporated in the claim. The court held that the use of

was not done by lowering the mechanism underneathsuch

the pushbutton, but by folding away the mechanism.

equivalent patent infringement.

afoldingmechanism

could

not

constitute

The Upper District Court had to rule on whether folding

I. Patent infringement /1. Equivalence

3

ASSESSMENT
This judgement by the Düsseldorf Upper District Court

This means that the cited prior art must be closelyis relevant for both patent infringement cases and for

examined in the application procedure for any alternative

the filing of patent applications.

and equivalent embodiments that may possibly bedisclosed therein. If these cannot be included within the

The ramifications of this precedent for infringement

literal meaning of the patent claims, they no longer fallproceedings are that the scope of equivalent patent in-under the extent of protection conferred by the patent –fringement is limited even further. The doctrine of

not even the extent of protection provided by theequivalence no longer applies not only to embodiments

doctrine of equivalence. (Müller)

which are described in the patent specification (but notincluded in the claims), but also to embodiments thatare mentioned in the cited prior art but which are nolonger addressed by the patent.

4

I. Patent infringement / 1. Equivalence2. Contributory infringement
Federal Court of Justice, judgement of 21.8.2012 – X ZR 33/10 – MPEG-2 Videosignalcodierung
BACKGROUND
In precedents established in recent years, there has

principle that long prevailed in this regard was that any

been a renewed focus on the criteria for contributory

means mentioned in the claim is also an essential el-

infringement within the meaning of Section 10 (1) PatG:

ement of the invention and therefore satisfies the first
criterion for contributory infringement.

One requirement for contributory infringement is thatthe infringer offers for sale or supply a means “that

The Federal Court of Justice broke with that principle inrelates to an essential element of the invention”. The

its MPEG-2 Videosignalcodierung decision.

DECISION
In the case ruled upon by the Federal Court of Justice,

the reasons for the judgement, a means relates to an

the defendant in Greece had replicated video data

essential element of the invention within the meaning of

encoded according to the MPEG-2 standard onto DVDs

Section 10 PatG if it is suitable for cooperating function-

before supplying those DVDs to customers in Germany.

ally with such an element to realise the inventive concept on which protection is conferred. That can only be

One of the claims in the patent in suit related to athe case when the protected inventive concept is in fact

method for decoding such video data. The preamble ofrealised by use of the means. Means that are used tothe claim in question referred to video data encoded

exploit the invention but which contribute nothing to-according to the MPEG-2 standard, which were thenwards realising the inventive concept are not enough,decoded using the method of the patent. Supplying data

therefore, to substantiate contributory infringement.

storage media containing the video data referred to in
the claim was considered by the plaintiff to constitute

When these criteria are applied, the encoded video data

contributory infringement, because using the DVDs in

are not a means relating to an essential element of thethe intended manner involved using the patented de-invention. The inventive concept relates to the decoding

coding method.

of data, with the aim of obtaining a video signal from theencoded data. The encoded data themselves do not

The Federal Court of Justice disagreed with that viewcontribute to the success of the concept, but are merely

and denied any contributory infringement. According to

the “object of the invention”.

I. Patent infringement / 2. Contributory infringement

5

ASSESSMENT
This judgement significantly reduces the practical applic-

For legal practice, the decision raises the question as toability of contributory infringement and raises somewhen a means is a mere object to which an invention isserious delineation issues for legal practice.

applied, with no contributory infringement being involved, and when a means cooperates functionally with

The first point to emphasise is that the patented decod-

essential elements of the invention. Bearing in mind thating method cannot be carried out without data that are

the video data in the case ruled upon cannot be used incorrespondingly encoded. The data are thus a conditio

any other way that would make sense, than by decoding

sine qua non for the claimed method. That said, they

them with the patented method, the criteria for func-

have no relationship to any essential element of thetional cooperation, according to the Federal Court ofinvention, according to the established legal practice

Justice, cannot be set too low. One will have to requirethat now applies.

that a means is part of the method and not just its point

This view invites criticism, because unlike a piece ofof departure.

wood or some other raw material subjected to process-

Until the lower courts have established more clarity ining in a particular process, the data need to have a very

this regard, caution is advisable in cases of doubt when

specific structure. Thus, to keep to the metaphor, whatasserting contributory infringement. (Müller)

is involved is a block of wood that has been pre-treatedin a specific manner and which cannot be subjected tothe process until after such pre-treatment (to which theclaim does not relate).

6

I. Patent infringement / 2. Contributory infringement

Düsseldorf Upper District Court, judgement of 21.2.2013 – I-2 U 72/12 – Nespressokapseln
BACKGROUND
A second requirement for contributory infringement is

For contributory infringement, this means that supplyingthat the product is offered or supplied to persons who

spare parts or consumables is permissible as long as

have no right to use the invention (who may also be

their use does not signify remanufacturing of the item

consumers). If the patent proprietor has placed on theforming the subject-matter of the invention. However,market a physical item protected by the patent, then thewhen the use of spare parts or consumables entails thecustomers have the right to posses, use and resell that

item being used in ways that go beyond its intended

item. The right to use it also includes servicing, caring

purpose, the provider of such spare parts is committing

for and repairing the item. Remanufacturing the item

contributory infringement.

forming the subject-matter of the invention leads topatent infringement, however.

This distinction is addressed by the Düsseldorf Upper
District Court decision discussed below:

DECISION
The Nespressokapseln decision by the Düsseldorfof the device does not generally constitute any – im-Upper District Court was handed down in temporary

permissible – “remaking” of the device. Only when the

injunction proceedings.

technical effects of the invention are reflected in thereplaced part, specifically, is the situation any different,

The patent proprietor requested that the defendant bewith the technical or commercial advantage of the in-prohibited from placing coffee capsules on the market

vention being realised again by replacing such parts.

that could be used in conjunction with the Nespresso

Although the coffee capsules sold by the defendant arecoffee machines marketed by the plaintiff. The plaintiff

part of the claim, and there is also a functional connec-

sued on a patent whose claims protected a coffee ma-tion between the shape of the capsules and the techni-chine suitable for receiving coffee capsules by means ofcal core of the invention (the extraction device), thata “guide edge”. The main focus of the invention was onalone is not enough to constitute a remaking of thethe mechanism for receiving the capsules in the coffee

device and therefore contributory infringement. What is

machine, guiding them into an “extraction position” andrequired, rather, is that the technical effects of the in-ejecting the capsules after use. This mechanism en-vention are manifested in the replaced part (the cap-

gaged the guide edge – known from the prior art – ofsules), such that the technical or commercial advantage

the coffee capsules and used it to bring the coffee cap-of the invention is realised again by replacing that part.

sules into different positions (receiving position, extraction position, ejection).

This is not the case with the accused coffee capsules.
Although the extraction mechanism of the coffee ma-

The Upper District Court has now ruled that supplying

chine utilises the shape of the coffee capsules, in par-coffee capsules having such a guide edge for the coffee

ticular their guide edge, such a shape was alreadymachine sold by the plaintiff does not constitute con-known from the prior art. Moreover, the invention did

tributory infringement. The reasoning provided is thatnot provide that shape with any new properties or func-

the consumers have the right to use the invention andtions. The invention does not exhibit any technical ef-

that replacing used capsules does not involve remanu-

fects or advantages over the prior art that are specificallyfacturing the invention, but is covered by use of the

manifested in the guide edge of the capsules. The es-

invention in the intended manner.

sential inventive concept of the patent relates, rather, toAccording to the court, replacing parts that are normally
expected to require replacement during the service life

I. Patent infringement / 2. Contributory infringement

features of the coffee machine, not to the structure of
the coffee capsules.

7

ASSESSMENT
With this decision, the Upper District Court has tough-The crucial aspect was therefore the legal question ofened the requirements for establishing contributory

whether the replaced parts relate to an essential el-

infringement by spare parts or consumables.

ement of the invention. What is striking about the rationale for the judgement is that features of the replace-

When assessing whether remaking (prohibited) or in-ment parts previously known from the prior art cannot

tended use (permitted) is involved, the first step in prac-(in the view of the court) be part of the “essential inven-tice is to establish whether the products placed on thetive concept” unless a new function or meaning is as-

market with the consent of the patent proprietor are

cribed to them by the invention. This means that new IP

expected to need replacement of the part in question

strategies will need to be developed to protect what isduring their service life. The Federal Court of Justiceoften a very lucrative business with replacement parts

clarified this only recently in its “Palettenbehälter II”

and consumables. It will no longer be possible to keep

decision (of 17.7.2012, X ZR 97/11). This issue of factcompetitors out of the replacement parts business with

was unproblematic in the case of the coffee capsules,

patents that protect a combination of the device as abecause their intended use involves them being con-whole and the replacement part for it. (Müller)tinually replaced.

8

I. Patent infringement / 2. Contributory infringement

II. LEGAL VALIDITY
3. Patentability of computer-implemented inventions
Federal Court of Justice, judgement of 23.4.2013 – X ZR 27/12 – Audiowiedergabe von
Straßennamen
BACKGROUND
A line can now be discerned in the established legal

In a second step, the question of exclusion under Sec-practice of the Federal Court of Justice on this issue thattion 1 (3) No. 3, in combination with Section 4 PatG iswould appear to be influenced by the case law of theexamined to determine whether the subject-matter ofTechnical Boards of Appeal of the European Patentthe claim is merely a program for computer systems as

Office and that – to put it crudely – shifts the question ofsuch. Such exclusion does not apply if it is found that“technical nature” into the domain of “inventive step”.

the teaching contains some instructions that serve toA three-step examination scheme had already beensolve a specific technical problem with technical means.

established by the court in its Wiedergabe topographi-

The Federal Court of Justice takes an objective perspec-

scher Informationen decision (of 26.10.2010, X ZRtive in this regard and determines what the invention

47/07) and Routenplanung decision (of 18.12.2012,

actually achieves – i.e. the “objective technical prob-

X ZR 3/12):

lem”: this step mainly serves as a preface to the final
examination step that follows.

The first step is to examine for “technical nature” assuch, and the question to be asked according to Sec-The third step is the examination for inventive steption 1 (1) PatG is whether the subject-matter of thewithin the meaning of Section 4 PatG: to answer theinvention is in a field of technology, at least with onequestion of whether an invention is obvious to a skilled

sub-aspect. This means that a program-based teaching

person from the prior art, only those instructions areis already deemed to be “technical” if it relates to therelevant that define or at least influence the solution ofoperability of an IT system as such.

the technical problem by technical means. Most of the
published decisions fail to take this hurdle.

DECISION
How this is implemented recently became clear again in

Not a word is said in the grounds for the judgement

the Audiowiedergabe von Straßennamen decision.

about the first two requirements for patentability. There
was no doubt that the invention was of a technical na-

The case concerned a navigation system for motor vehi-ture, nor did the exclusion rule apply. The grounds forcles, comprising the usual navigation means (inter alia),

the judgement begin in a sense with the question as tosuch as a user interface and a processing unit. In con-which specific technical problem the invention solves

trast to the prior art, however, the patent also provided(the “objective technical problem”): compared to prior

for audio playback of driving instructions that included

art navigation devices, what is achieved with the inven-

the associated street names.

tion is that the user does not need to look at the display

The Federal Court of Justice ruled that this invention did
not involve an inventive step.

screen of the navigation device if he wants to know thename of the street that he is supposed to turn into next.
This “objective technical problem” was solved with
“non-technical” instructions. The instructions that the

II. Legal validity / 3. Patentability of computer-implemented inventions

9

claim contains for playing back street names are con-

The Federal Court of Justice’s way of thinking may be

fined to the stipulation that they be part of the audio

spelt out as follows: it may well be that implementation

playback, and under what conditions. They thus relatedof the “concept” behind the invention is of a technicalsolely to the “content” of the information provided tonature. However, such implementation merely requires

the user. This content is of no relevance for solving the(apart from computing capacity) the routine tools of aobjective technical problem, in any case as long as the

programmer and does not pose any technical problems

audio playback does not involve any special technicalto a person skilled in the art. What might still be viewed

problems, on account of its content, that are solved by(according to the second examination step) as a “tech-

the technical principle of the invention. Nothing of thenical means”, namely the acoustic playback, could notkind was evident in the case in question.

take the hurdle of inventive step within the meaning ofSection 4 PatG.

ASSESSMENT
Questions concerning the “technical nature” of inven-

invention (acknowledged as being “technical”) into

tions will continue to require case-by-case decisions that“technical” and “non-technical” components. Never-will need to be answered in contexts where a degree oftheless, the examination scheme may stand the test inlatitude is involved.

actual practice, in that conformity with the jurisdiction of
the European Patent Office is established at any rate,

The examination scheme devised by the Federal Court

and because legal practitioners are now given a clearof Justice is very difficult to explain dogmatically be-

hold on how to argue before court and before the patentcause in the examination of inventive step it splits theoffices. (Henke)

10

II. Legal validity / 3. Patentability of computer-implemented inventions

4. Disclosure / Impermissible broadening / Priority
Federal Court of Justice, judgement of 9.4.2013 –X ZR 130/11 – Verschlüsselungsverfahren
Federal Court of Justice, judgement of 17.7.2012 – X ZR 117/11 – Polymerschaum
Federal Court of Justice, judgement of 14.8.2012 –X ZR 3/10 – UV-unempfindliche Druckplatte
BACKGROUND
In recent years, we have observed again and again that

A disclosure may also include what is not explicitly men-impermissible broadening of claims has been the reason

tioned in the claim or the description, but which is quite

why patents have been destroyed. In innovative indus-

evidently required from the perspective of a skilled per-tries with short product cycles, another aspect that has

son in order to carry out the protected teaching, andoften arisen is that the priority originally claimed did nottherefore does not need to be separately disclosed, but

hold up in revocation proceedings, and that the patents

is “read in”. Inclusion of the self-evident does not entail,were then destroyed due to lack of novelty over otherhowever, that the disclosure is supplemented by the

documents published in the interim.

specialist knowledge of those skilled in the art, but isonly for the purpose of ascertaining the essential

The cause of this trend appears to be the famous Olan-

meaning in its entirety, that is to say the technical in-zapin decision, in which the Federal Court of Justiceformation that the expert reader, on the basis of his(judgement of 16.12.2008, X ZR 89/07) drew remarkably

expert knowledge, will find in the source – just as whentight boundaries around what can be considered thethe literal meaning of a claim is ascertained.

actual disclosure of a document. Whether this was amere continuation of old jurisdiction or in fact a reversal

The boundary being drawn between disclosure and non-of conventional thinking can be set aside here. The

disclosure runs, in other words, between “what a skilled

headnotes of that decision can be found today, at any

person reads in as self-evident”, on the one hand, andrate, in virtually every judgement handed down (includ-“supplementation by specialist knowledge”!

ing those of the Federal Patent Court and the courts offirst and higher instance) – and also in most attorney

Just how tightly this boundary is drawn in practicesubmissions. The Olanzapin dictum is the tool, so toaround the literal meaning of the parent application andspeak, for handling current cases relating to the actual

the priority documents is shown by the following three

disclosure of patents. According to its headnote,decisions by the Federal Court of Justice, one of which(one must almost say: as an exception) ruled at least
provisionally in favour of the patent proprietor.

II. Legal validity / 4. Disclosure / Impermissible broadening / Priority

11

DECISIONSThe Verschlüsselungsverfahren decision related to theration or in abstract form in the parent application, theprocessing of digital signals and storing them on opticalcourt found.

storage media (CDs, DVDs, etc.).
Although a skilled person is well aware that the decryp•

What was claimed was a method and a device thattion of signals in order to reproduce information musteach included the “reproduction” (i.e. the playback)generally be preceded by “encryption”, a skilled personof the data, in addition to the encoding step.

is also aware that the purpose of the measures accord-

Claim 1 of the patent as granted read as follows, foring to the invention (namely those relating to encoding)example:is error-free reproduction, and a skilled person was further aware (as far as the specific case was concerned)•

A method of recording and reproducing informationof how the encryption mechanisms were reversed bysignals of binary digital signal train using…

respective “decryption means”. However, none of thatIn the parent application, however, only one specificencoding method was described.

alters the fact that encryption and decryption are different processes and have different functions. The very
fact that a particular (encoding) process must technicallyIn the first instance of the revocation proceedings, theFederal Patent Court had found that the subject-matterof the contested patent claims extended beyond thecontent of the parent application. Nowhere in theseapplications, according to the grounds for judgement at
first instance, was it directly and unambiguously disclosed that the subject-matter of the invention was alsomeant to be a method or an apparatus for reproduction
and decryption of information signals. The parent application disclosed only the encryption of information signals and the recording of those signals on a storage
medium.

be followed by a further (decoding) process in order toachieve a result that makes technical and commercial
sense does not imply that the second process is always
disclosed directly – even without being mentioned – asbelonging to the first process. The applicant is free toexpress the subject-matter for which he seeks protection.
With regard to the obvious “close technical relationship”
between encoding and decoding, however, the Federal
Court of Justice explicitly mentions that even a brief
reference in the description may have sufficed as a clear
indication to a skilled reader of the application that theThis view has now been expressly confirmed in theappeal proceedings before the Federal Court of Justice.
Impermissible broadening also exists when the subjectmatter of the patent is only evident to a skilled personon the basis of his own thoughts, on the basis of his
technical knowledge, after he obtained knowledge ofthe application as originally filed. An “aliud” (resulting inimpermissible broadening) exists whenever the added
feature relates to a technical aspect that, in its specificconfiguration (or at least in abstract form), is not included clearly enough in the application as originally filed

decoding aspect (i.e. the actual exploitation of the advantages provided by the invention), although not described in detail, was to be viewed as belonging to the
filed invention. That was not the case in the parent application, however, and in the view of the Federal Courtof Justice there was no indication in the description
therein that decryption was included by reference.
The outcome in the Polymerschaum case was different.
•

The challenged patent claimed protection for a

for it to be recognised by a person skilled in the art asprocess for producing a polymer foam, in which (inbelonging to the invention.

one step of the process) a molten polymer

In the case in question, the Federal Court of Justicedeemed that to be so. A reproduction and decryption
method was not mentioned either in a specific configu-

12composition and expanded microsphere are to be
melt mixed, wherein a plurality of the expandable
microspheres are to be expanded before theII. Legal validity / 4. Disclosure / Impermissible broadening / Priority

expandable composition is extruded from the

To some degree, the UV-unempfindliche Druckplatte

nozzle.

decision forms a kind of antithesis to the former decision. The latter concerned a method for producing a•

Several embodiments involving hot-melt polymer

lithographic printing plate and the issue of whether thecompositions

parentspecific UV-insensitive coating composition claimed inapplication. According to the findings of thethe contested patent was disclosed in the priority

judgement at first instance, however, it remained

document.

weredisclosedintheunclear whether the melt mixing step cited above(of the polymer compositions and the expanded

The Federal Patent Court had established sufficient

microspheres) was applied in those hot-melt

disclosure (thus acknowledging the claimed priority), on

polymer compositions.

the basis that, although the feature in question was not
explicitly mentioned in the priority document, it was

Were that the case (as the patent proprietor argued),familiar anyhow to a skilled person dealing with photo-

then that would suffice for disclosure of a teaching that

thermally sensitive printing plates. The “implicit disclo-also included the disputed feature, or so the Federalsure of the self-evident” that is normally required was

Court of Justice argued. It is sufficient if the expert

then affirmed in this case.

reader can see from the embodiments in the parent
application that the microspheres are added to a poly-

The Federal Court of Justice took a stricter line in its

mer melt in those embodiments – in other words, thatjudgement. It found that, in the priority documents inthe teaching of the contested patent as granted is ap-

question, no distinction at all was made with regard to aplied. In that case, namely, a skilled person would see

particular property (UV-sensitivity) that was essential tofrom the parent application that the invention can be

the feature in question. Based, no doubt, on the opinion

carried out in the manner that was now protected byof the court-appointed expert, the Federal Court of Jus-

claim 1.

tice then concludes that a reference to either of the two
possibilities (UV-sensitive or UV-insensitive) would have

The Federal Court of Justice was thus referring back tobeen expected if the invention was also meant to relate

its previous legal practice (see, in particular, its judge-

to the property of UV-sensitivity. For that reason, thement of 11.9.2001, X ZB 18/00, Drehmomentübertra-interim conclusion was that there was no disclosure ofgungseinrichtung), according to which a “broadly”

the feature in question.

worded claim is in any case unobjectionable in terms ofimpermissible broadening whenever an embodiment

However, there is another instructive aspect to thisdescribed in the application represents, for one skilled incase:

the art, a variant of the more general technical principle
circumscribed in the claim and when he can already find

The Federal Court of Justice expressly endeavours in

said teaching in the application, with the claimed level ofthis decision to help the applicant extract in full the dis-

generalisation (from his perspective as one skilled in theclosure of his application, “to avoid any inequitableart!), as belonging to the filed invention. Be it in the form

restriction of the applicant”. For that reason, the deci-of a claim worded as in the application, or be it from thesion goes on to ask whether there is nothing more in-overall context of the application. Such generalisations

volved here (as in the previously discussed case) than an

are primarily to be allowed when, of several features ofadmissible generalisation of an embodiment. However,an embodiment that, either taken together or viewed

the conclusion was then drawn that that was not the

separately, are conducive to achieving the success ac-case here, as the UV-sensitivity as such was neither

cording to the invention, only one or some are included

mentioned nor implicitly disclosed in the priority

in the claim.

documents.

For reasons that do not need to be discussed here any

This means that the boundary has been crossed. It lies

further, the case was then referred back to the Federal

where abstraction is meant to include a property or

Patent Court for reconsideration.

characteristic that is not explicitly mentioned or that a

II. Legal validity / 4. Disclosure / Impermissible broadening / Priority

13

skilled person cannot readily identify: if a particular fea-

still not sufficient for the respective feature to qualify as

ture ensues (purely factually) for a skilled person whendisclosed in the written document.

imitating the disclosure of an embodiment – then this is

ASSESSMENT“Disclosed directly and unambiguously, in the applica-

ers to applicants about aspects where attention must betion as originally filed, as belonging to the invention” ispaid in the first steps of applying for a patent. Meticu-

too high a hurdle for some priority applications to serve

lous applicants will keep the field of application as broad

as a basis for disclosure of subsequent amendments toas possible in the originally filed applications; and theyclaims. Worse still, this hurdle means that some priori-

will describe the implications and the fields of applica-

ties can no longer be claimed.

tion that the invention may have (also abstractly, but inany case clearly and unambiguously for a person skilled

This is yet another case in which supreme court prec-in the art). Embodiments that show not only the core ofedents not only have impacts on the appeal proceedings

the invention, but also various possible variants of it, arethat are directly involved, but also give very clear point-

also beneficial at that early stage. (Henke)

14

II. Legal validity / 4. Disclosure / Impermissible broadening / Priority

5. Disclosure of written documentation
Federal Court of Justice, judgement of 15.1.2013 – X ZR 81/11 – Messelektronik
BACKGROUND
A judgement with potentially far-reaching implications

extent to which information “hidden” in voluminoushas been handed down on the question concerning the

documentation is deemed obvious.

DECISION
The Messelektronik decision addressed the following

device or by sending a written description of it, thesituation: before the date of priority, a large number ofstructure and the relevant technical features of the de-M-Point mass flow measuring devices that may havevice were fundamentally disclosed and therefore obvi-

anticipated the contested patent had been supplied toous. The criterion for this obviousness was solely thatthird parties. However, the object of dispute was notpropagation to any third parties whatsoever by the re-whether and to what extent the mere “operability” ofcipient was obvious, according to one’s experience of

these devices was novelty-destroying. In the end, thelife. Only the agreements in place at the time of delivery

dispute was only about a service manual that was pro-

between the parties involved (in particular the confiden-

vided, in which the method claimed in the contested

tiality agreements) were relevant – but not the particularpatent could be found on closer analysis.

circumstances in the company receiving the information.
For that reason, whether and under what conditions

It was this manual that ultimately led to the contested

visitors to the various departments of the company

patent being revoked due to lack of novelty, and theobtained knowledge of the details in the documentationquestion of whether anyone ever took notice of thewas considered by the Federal Court of Justice to be ofcontent of the service manual was left unanswered. The

no relevance.

Federal Court of Justice argued that, by supplying a

ASSESSMENT
The decision is grounded in the basic notion that every-

cases in which prior publication does not ensue until thething that the public is “able to” obtain knowledge of issupplied device has been subjected to detailed investi-

deemed to be disclosed. Whether there was any cause

gation (i.e. without written documentation being pro-to study the circuit diagrams in the customer’s company

vided), for example not until integrated circuits had been

was of no consequence as far as the key aspect was

subject to complicated re-engineering. Whether and toconcerned.

what extent limits on disclosure are being drawn here,
and whether there is indeed cause to conduct particu-

According to the basic notion and wording of the deci-

larly complex investigations, remains unclear. (Henke)

sion, this would also be transferable to that group of

II. Legal validity / 5. Disclosure of written documentation

15

III. OTHER SUBSTANTIVE LEGAL ISSUES
6. Licences in cases of insolvency
Munich Upper District Court, judgement of 25.7.2013 – 6 U 541/12 – Qimonda / Infineon
BACKGROUND
The fate of licences when one of the parties to the li-

could effectively terminate patent licensing agreements

cence agreement is insolvent has long been debated.

concluded by that company with third parties, if thoseAccording to Section 103 (1) of the German Insolvency

agreements were not yet completely fulfilled on the

Code (InsO), the insolvency administrator may choose

date the insolvency proceedings were opened. A casewhether to honour or refuse to honour a contract thatof incomplete fulfilment may arise, in particular, when

was not completely fulfilled on the date the insolvency

the licensee is obligated to pay ongoing royalties.

proceedings were opened. This right to choose cannot
The case ruled upon by the Munich Upper District Court

be limited by contract (Section 119 InsO).

not only spotlights the problem of such termination, but
In licence agreements for intellectual property, the ap-

also provides some valuable suggestions for the drafting

plication of that rule produces problematic results, inof (patent) licence agreements so that they withstandthat the insolvency administrator of a patent proprietor

insolvency proceedings.

DECISION
In the case under consideration, the plaintiff was

Qimonda could not be terminated by the insolvency

Infineon, a high-tech company. In April 2006, Infineon

administrator.

had disencorporated its business unit for semiconductor
memory technology by forming a new subsidiary,

The Munich Upper District Court granted the request (asQimonda. In the course of transferring the businessthe Munich District Court had previously done) and ruled

unit’s operations to Qimonda, Infineon also assignedthat Infineon’s licences remained valid.

several thousand patents to the subsidiary. However,Infineon retained an irrevocable right to use theassigned patents, without restrictions as to time orplace. In the spin-off agreement, Qimonda also agreed

In its reasoning, the Upper District Court established atendency in the established legal practice of the Federal
Court of Justice towards reinforcing the rights of licen-

to license future patents to Infineon free of charge.

sees under insolvency of the licensor. The court specifi-

In April 2009, insolvency proceedings in respect of the

26.3.2009, I ZR 153/06), the Take Five decision (ofassets of Qimonda were opened, and the defendant in

19.7.2012, I ZR 24/11) and the M2Trade decision (ofthe case under consideration was appointed insolvency

19.7.2012, I ZR 70/10) handed down by the Federal

administrator. The defendant declared in his capacity as

Court of Justice. The dogmatic classification of licences

insolvency administrator that the granting of (free) li-

as rights in rem or contractual rights, which has been acences by Qimonda to Infineon would not be honoured

matter of controversial debate for some time, was de-and proposed that negotiations be conducted for con-liberately left unresolved by the Upper District Court.

clusion of a new licence agreement (involving the pay-

This was not the crucial issue, according to the court,

ment of royalties). The plaintiff petitioned for a declara-

but rather the question of whether the agreement, con-

tory judgement that the licences granted to it bycluded under the law of obligations and the basis for thecally referred to the Reifen Progressiv decision (ofobligation to grant the licences, was completely fulfilled

16

III. Other substantive legal issues / 6. Licences in cases of insolvency

on the date the insolvency proceedings were opened.

The court added that the licence agreement had been

The court answered that question in the affirmative forcompletely fulfilled for that reason also, and that Sec-the licences in question.

tion 103 (1) InsO was not applicable because the licences had been granted to Infineon irrevocably andIn doing so, the court focused first of all on the reverse

independently of any consideration being rendered tolicences that the plaintiff had retained when assigning

Qimonda. All the material obligations under the agree-

the patents to Qimonda. In that regard, according to thement had thus been honoured by the licences being

court of appeal, Qimonda obtained the patents with the

granted. There was therefore no room left for the insol-

mere “encumbrance” represented by the licence thatvency administrator’s option under Section 103 InsO,

Infineon retained for itself when assigning the patents.

which can only be exercised in the case of incompletely

This meant that Qimonda had never acquired priority

fulfilled contracts.

rights to the patents as assets, so the defendant had noright to terminate the licences.

ASSESSMENT
The Munich Upper District Court decision has somecence, for example, a once-only royalty to be paid in fullimportant implications for designing insolvency-proof

before revenues can be generated with the licence will

licence agreements in practice. Making licences insol-

often be a non-option for financial reasons. Especially invency-proof can be ensured by obligating the licensee tosuch cases involving substantial initial investments,

render counter-performance once only (e.g. to grant

however, the licensee deserves special protection in the

cross-licences or to pay lump-sum “royalties” once

event of the licensor entering insolvency. Yet in suchonly). The wording of the agreement, according to whichcases the insolvency administrator may still refuse to

the licence is granted “irrevocably”, could also play acontinue honouring the agreement, even according to

key role in future. The decision repeatedly cited that

the Munich Upper District Court decision.

wording, then established for the case under consideration that the grant of licence was already effected when

However, these concerns are not an argument against

the agreement was concluded.

the court’s decision. They illustrate once again in all
clarity that a reasonable balancing of interests requires

Some important questions remain unanswered, how-legislative action, given that no such balance is provided

ever. In constellations where the licensees must makeby the currently applicable insolvency rules. (Müller)

substantial initial investments in order to use the li-

III. Other substantive legal issues / 6. Licences in cases of insolvency

17

7. Criteria for co-inventorshipFederal Court of Justice, judgement of 18.6.2013 – X ZR 103/11 – Flexibles Verpackungsbehältnis
BACKGROUND
It is astonishing to observe, again and again, that con-ventor and therefore shares an original right to theventional patent law thinking fails as soon as several

invention (on this point, see the more recent Federal

persons are involved in making an invention and share in

Court of Justice decision of 17.5.2011, X ZR 53/08 –it. The concepts of the German Patent Act (at least) are

Atemgasdruckersteuerung), when several persons (pos-no longer adequate for solving the conflicts that typically

sibly also from different companies) were involved inarise between the co-inventors and co-proprietors of an

making the invention?

invention.
In the case discussed below, the Federal Court ofThat is the case not only for the issues that are raised

Justice had an opportunity to rule on this issue once

when exploiting an invention (in that regard, see, foragain, after a considerable interval, and the approach

example, the Federal Court of Justice decision ofthat has run like a common thread through various

22.3.2005, X ZR 152/03 – Gummielastische Masse II, my

preceding decisions in recent decades was manifested

paper in GRUR 2007, 89, and also, more recently, theonce again in all clarity, namely that co-inventorship in a

two Düsseldorf Upper District Court decisions ofpatent must be assessed with very different criteria

8.3.2012, I-2 U 5/11 and 4.4.2013, I-2 U 72/11), but also

from those applying to inventorship!

during the “invention phase”: who qualifies as a co-in-

DECISION
The dictum of the Flexibles Verpackungsbehältnis

region was defined by longitudinal and transverse

decision is relatively straightforward: a co-inventor’s

seams, and the characterising portion of the main claim

contribution does not need to be “independently

required that the transverse seams be so designed, ininventive” in order, when viewed separately, to satisfy

one portion at least, that controlled escape of gas toall the requirements for a patentable invention.

reduce an over-pressure is ensured:At first glance, that would appear to be almost a triviality, given that “co-inventorship” is distinguished precisely by the fact that several persons are jointly involved in achieving a (single, inventive) result. In thatcase, each of the separate parts does not need to exhibit per se the quality of the whole, of course.
However, the decision is interesting in the passages
that then follow, above all.
The dispute related to a flexible packaging container
made of plastic and having adhesive seams that weresuitable for allowing controlled escape of a gas to reduce an over-pressure arising during or after filling of theAccording to the findings in the appeal instance, thecontainer. Overlapping two films resulted in an interior

plaintiff had “only” been involved in creating an over-region by which the over-pressure inside the containerpressure relief mechanism in which a seam weakened

was to be reduced in a controlled manner. This interior

by a separation medium only opened in the case of the

18

III. Other substantive legal issues / 7. Criteria for co-inventorshiprespective pressure building up. In other words, theThis is not the case here, though. The plaintiff identified

plaintiff had only worked on the “quality” of the seam,a particular problem jointly with another co-inventor andbut not on its positioning. However, precisely suchjointly developed an invention on which the invention inpositioning (in one portion of the transverse seams, atquestion was based, in which openings were provided

least), war included in the characterising portion of thein the inner wall of the interior region. The fact that it

main claim.

was still unresolved where exactly the secondary opening (subsequently the characterising portion of main

The plaintiff’s idea was not expressed in claim 1 at all for

claim 1) was to be arranged was irrelevant for the deci-that reason, which is why the action was dismissed bysion by the Federal Court of Justice:

the Frankfurt Upper District Court on the grounds thatthe plaintiff failed to realise “the salient point” of the

To assess who is a co-inventor, it is necessary to con-invention in question.

sider the entire invention (as specified in the patent
specification) as well as how it came about. It is neces-

The Federal Court of Justice has now rejected that line

sary to examine the specific contribution that each ofof reasoning. Not every co-inventor needs to havethe individuals made to the invention in its entirety. The

grasped the key concept that ultimately led to pa-

wording of the claims is only important to the extent

tentability of the invention. On the contrary – the onlythat they define the “invention” as such, but they incontributions that can be excluded from co-inventorshipthemselves do not indicate who is to be included amongfrom the outset are those that had no influence (at all)the co-inventors involved. In the case under considera-

on the overall success of the invention and which aretion, the plaintiff’s contribution (providing a particular

therefore irrelevant for the solution, or were made ac-kind of separation medium) was sufficient to qualify him

cording to instructions from an inventor or a third party.

as a co-inventor.

III. Other substantive legal issues / 7. Criteria for co-inventorship

19

ASSESSMENT
Thus, the Federal Court of Justice has now established

not intellectually and creatively involved in the invention.

that subjective and historical perspective that has fre-

The patent is a manifestation of the “intellectual prop-

quently been debated in the jurisprudential literature anderty”.

which may be viewed as a continuation of the legal
practice it had previously established. In the case at

The criteria applied by the Federal Court of Justice also

hand, this perspective requires that the actual train ofseem to allow contributions that were themselves

thought, that the inventors pursued from identification“without success” to qualify for co-inventorship underof the problem to finding its solution, must be traced incertain conditions. What principles are to apply, for ex-order to establish co-inventorship. It also means that

ample, if a particular result was not achieved until after acreating features which must ultimately (in an objective

long series of experiments, with many dissatisfactory

analysis) be viewed as belonging to the prior art, andresults along the way? Can all those who achieved what

which therefore stand in the preamble of the claim, may

are essentially negative results be considered co-inven-still establish co-inventorship.

tors? Must the historical perspective be applied to suchan extent that not only the “path” to the invention is

The decision provides clarity insofar as it now defines

relevant, but also all the “detours” along the way? Ac-

explicitly the role of the claims in determining co-inven-cording to the arguments laid down by the Federal Court

torship. It is also to be welcomed that the Federal Courtof Justice in the decision under review here, the answerof Justice made a negative distinction, by excluding

will be affirmative, because the decision takes thefrom the group of co-inventors those persons who were

genesis of the invention into consideration. (Henke)

20

III. Other substantive legal issues / 7. Criteria for co-inventorship

IV. PROCEDURAL LAW
8. Standard essential patents: Suspension of infringement proceedings
Düsseldorf District Court, decision of 21.3.2013 – 4b O 104/12
BACKGROUND
It is well known that the Federal Court of Justice stipu-

German case law, in which a large share of the litiga-

lated, in its landmark Orange-Book-Standard decision,tional risk is now imposed on the licence-seeker: if thishow standard essential patents (SEPs) and offers oflicence offer failed to comply exactly with conditions

licences to use standard essential patents are to besatisfying the FRAND criterion, he lost the infringement

dealt with in infringement proceedings. The decisioncase.

rules that standard essential patents are basically as
enforceable as any other patents. More specifically, it isThis established case law is now being shaken up again

also possible to enforce a claim to injunctive relief

from a very different direction – namely the European

derived from such standard essential patents.

Commission. In pending anti-trust proceedings against
Samsung and Motorola, the European Commission

According to this “German standard”, the following

made the following public statement: While recourse to

specific principles apply:

injunctions is a legitimate remedy for enforcing therights of patent proprietors, the enforcement of injunc-

If a patent infringer (also referred to here as a “licence-

tive relief by the patent proprietor (i) even though he has

seeker”) invokes the licence defence in the course ofundertaken to license the patent under FRAND condi-

the infringement case, this can only succeed pro-tions and (ii) when the opponent is willing to take out

cedurally if two conditions are met: (i) the licence-seeker

such a “FRAND licence” may constitute abuse of amust have made a binding and irrevocable licence offer

dominant market position.

that the patent proprietor cannot refuse without acting
in breach of his obligation under anti-trust law to grant a

In the view of the European Commission, the core issue

licence to the patents in suit. (ii) The licence-seeker

now concerns when a patent infringer is “willing” tomust also conduct himself as if the patent proprietor had

take a reasonable “FRAND licence”. In the Motorola

accepted his offer to take out a licence – meaning, incase, two opposing scenarios were construed in thisparticular, that he must pay the ensuing royalties (byregard. If a potential licensee casts doubt on the legal

depositing them, if need be).

validity and/or the essentiality of the patent, this can not
yet be taken as an indication that the party is unwilling

What this means for practitioners has been made more

to take out a licence. On the other hand, a party cannot

specific by the courts of first and higher instance overbe considered “willing” if it merely remains passive andthe past three years. The atmosphere has also settled

does not respond to demands by the licensee to enter

down to some degree: the term “Orange-Book-Stand-into licensing negotiations.

ard” has also become an international synonym for

IV. Procedural law / 8. Standard essential patents: Suspension of infringement proceedings

21

DECISION
The Düsseldorf District Court had to rule on a patenta licence? Or can abuse of such a dominant market

infringement case in the field of the LTE mobile tele-

position only be presumed when the patent infringer forcommunications standard. (The fact that the opposing

its part has behaved in conformity with the rules laidparties in this case of such enormous importance fordown in the Orange-Book-Standard (i.e. has specificallyGerman procedural law were two Chinese companies

submitted a binding offer to take out a licence)? Al-(hte and ZTE) is just an amusing marginal note, thoughthough the District Court states at length in its reasons

yet another indication of Germany’s attractiveness as afor the court order why it tends to the view that a mere

venue for litigation.) In the context described above, the“willingness to negotiate” on the part of the patent

Düsseldorf District Court saw itself in a tight corner

infringer is not sufficient to honour its obligations, thebetween two heavyweights: its national supreme court

District Court explicitly refers to the dogmatic principles(the Federal Court of Justice) and the European Com-of patent law and also to the fact that the negotiating

mission.

position of the patent proprietor may not be weakened.
The interested user can read all that in the decision – but

In that situation, the District Court suspended the in-for practitioners the direct implications of this court

fringement proceedings under Article 267 (2) TFEU anddecision are far more important:referred a number of legal questions to the Court ofJustice of the European Union (CJEU).

It appears to be standard practice of the three patent
litigation divisions at Düsseldorf District Court that –These questions are basically aimed at obtaining a deci-almost all! – infringement cases relating to standard

sion between the two legal positions outlined above: isessential patents must be suspended. As far as one canthe patent proprietor already abusing its dominant mar-tell, the District Court has also referred a number ofket position by taking court action against a patent in-other cases to the CJEU following the hte vs. ZTE case,fringer to obtain injunctive relief, even though the patentthus forcing a decision from Europe’s highest court.

infringer has expressed its willingness to negotiate such

ASSESSMENT
The District Court’s decision may be correct in itself.

entitlement in patent law to injunctive relief seriously

Although there is no duty of presentation in first-in-

and ensures that the patent proprietor is also able tostance proceedings, due to Article 267 (3) TFEU, theactually wield this sharp sword within the patent’s pe-lower courts are granted a certain amount of discretion

riod of validity. However, that sharp sword is currently

to decide whether they submit questions on interpreta-

being taken away from him (albeit for a limited timetion of EU law to the CJEU or not. The Düsseldorf Dis-

only, namely until the CJEU has reached a decision), intrict Court has now exercised that discretion “progres-any case before the Düsseldorf courts.

sively”, so to speak: it did not refer the pending case tofurther instances (appeal on questions of fact and law,

In our view, the fact that the Mannheim courts do not

and appeal on points of law only), which might haveappear to follow this practice is much to be welcomed.

resulted in the legal issues raised not being clarified until

Although the opinion of the European Commission is

many years later. Instead, it took matters into its own

taken seriously there as well, the Mannheim patent

hands and ensured that clarity is achieved within thelitigation divisions obviously tend (correctly) to place

foreseeable future (possibly as early as the year 2015).

limits on what constitutes “willingness”. For example,
cases are not suspended in which the parties are basi-

For the parties to the present proceedings (particularly

cally agreed that a licence agreement must be con-for the proprietors of standard essential patents), thecluded, and where the respective offers are not too far

court’s decision may have catastrophic impacts. One ofapart. The behaviour of the parties is also taken into

the strengths of the German system is that it takes theaccount in Mannheim, particularly that of the patent

22

IV. Procedural law / 8. Standard essential patents: Suspension of infringement proceedingsinfringer and “licence-seeker”. In any case, there is no

infringers who only feign a willingness to negotiate must

automatism of the Düsseldorf variety before the two

still expect the courts in Mannheim to rule against

patent litigation divisions in Mannheim, and the principle

them – without the proceedings being suspended untilthat applies is once again that the solution is derived

the Court of Justice of the European Union has reachedfrom the circumstances of the individual case. Patenta decision. (Henke)

IV. Procedural law / 8. Standard essential patents: Suspension of infringement proceedings23

9. New procedural law for patent revocation proceedings
Federal Court of Justice, judgement of 26.6.2012 – X ZR 84/11 – Schaltungsanordnung
Federal Court of Justice, judgement of 28.8.2012 – X ZR 99/11 – Fahrzeugwechselstromgenerator
Federal Court of Justice, judgement of 8.8.2013 – X ZR 36/12 – Mischerbefestigung
Federal Court of Justice, judgement of 28.5.2013 – X ZR 21/12 – Walzstraße
Federal Court of Justice, judgement of 27.8.2013 – X ZR 19/12 – Tretkurbeleinheit
BACKGROUND
In the Patent Law Modernisation Act passed in 2009,

stance proceedings (in particular the findings regarding

fundamental changes were made not only in respect of

the facts of the case).

first-instance revocation proceedings, but also andabove all in respect of appeal proceedings before the

The new procedural law applies to actions for revocation

Federal Court of Justice. The Act is based on the basic

filed with the Federal Patent Court after 1 October 2009.

idea that the facts of a case are to be clarified primarily

This meant that the first appeals under the new law

in first-instance proceedings before the Federal Patent

were not filed with the Federal Court of Justice until

Court, so that the court of second instance (the Federal

early 2012. In 2013, the first decisions of the Federal

Court of Justice) can concentrate on checking for errors:

Court of Justice on various procedural issues were

patent revocation appeal proceedings are to be based,

handed down in close succession, and attorneys now

as a general principle, on the findings of the first-in-

have a clearer view of how the new law is proving inpractice.

DECISIONS
The most important findings of these decisions are

ber that in German law, errors in substantive law

summarised below, with comments on the respective

may also include erroneous interpretation of thecases confined to those needed to understand the re-claims, including the expressions used therein, in-spective headnote.

correct assessment of novelty and inventive step,and errors in assessing the claimed priorities and•

The reasons for appeal must indicate how (in thethe actual disclosure therein. To that extent, theview of the appellant) legal principles were

new procedural law does not impose limits on thebreached in the judgement at first instance. Subse-

lodging of appeals (at least not in connection withquent submissions concerning the reasons for ap-

facts presented in the first-instance proceedings).

peal are only admissible by way of exception, andthe Federal Court of Justice will routinely examine•Incertaincircumstances,a“new”,

privately

only those complaints that are admissibly presented

commissioned expertise may also be presented inin the appeal proceedings (Schaltungsanordnung).

the second-instance proceedings. The presentationof arguments based on such an expertise is not

24

Possible reasons for appeal include not only pro-“new” (and thus admissible in second-instancecedural errors, but also breaches of substantive law.

proceedings), if the expert’s observations merely

To aid understanding, it may be helpful to remem-

render arguments presented in the first instanceIV. Procedural law / 9. New procedural law for patent revocation proceedingsoral proceedings how the Patent Court assesses its“more specific” or detailed, or clarify or explain

new attack, the applicant cannot readily expect thatthem (Fahrzeugwechselstromgenerator).

this (extended) attack will be deemed admissible in
However, the plaintiff needs to present to the court

the second instance (Mischerbefestigung).

in the first instance all the circumstances and all the
specific technical information that is necessary to•

If the patent proprietor defends the patent in theunderstand a document being presented. Appeal

second instance with an amended version (withsubmissions in patent revocation proceedings arelimited claims) for the first time, this is admissible if

deemed to be new (and therefore inadmissible)

in doing so he takes into consideration a legal

when a particular document had been presented inopinion expressed by the Federal Court of Justicethe first instance, but the specific informationthat deviates from the first-instance assessment

required for the court at first instance to understandand limits the subject-matter of the patent to what,that document was not presented to that court. As

in the view of the Federal Patent Court, was clear

a basic principle, it is not sufficient for the applicant

from the version as granted (Walzstraße).

for revocation to merely present all manner of
documents in the first instance that might possibly

The Federal Court of Justice thus avoids the patent

be

The

proprietor falling into an inescapable trap between

applicant must explain very specifically which

the different instances. In proceedings before thepassages in the citations are supposed to show theFederal Court of Justice, he does not have tolack of patentability.

adhere to what he did in the first-instancerelevantforassessingpatentability.

proceedings in order to satisfy the requirements of•

the Federal Patent Court.

According to new procedural law, as we know, theFederal Patent Court is obligated to provide
information, before the oral proceedings, on its•“New” citations (not presented until the second in-current assessment of facts (Section 83 (1) PatG). If

stance) do not have to be admitted to proceedings

the action for revocation is then extended, theautomatically even when their publication date andPatent Court basically does not have to provide any

technical content are undisputed (Tretkurbelein-further information of this kind before the oralheit). The applicant for revocation will generally

proceedings, pursuant to Section 83 PatG. If thehave to explain that the citation submitted late toapplicant for revocation does not discover until theproceedings could not have been found with aproperly defined search profile.

ASSESSMENT
From the perspective of attorneys as well, it is much toThat definitely applies in any case to the applicant for

be welcomed that the Federal Court of Justice has

revocation, who now has to place all his cards on the

meanwhile had an opportunity to comment for the firsttable in the first-instance proceedings – even down totime on the new procedural law. Decisions handed

the single lines of technical argument. A degree ofdown so far confirm what a careful reading of the Act

understanding is evidently shown by the Federal Court

had already shown, namely that, as a basic principle,of Justice for the difficult situation of the patent

both parties must ensure that the first-instance pro-

proprietor. One must wait and see whether that will beceedings are conducted with great care.

confirmed in future. (Henke)

IV. Procedural law / 9. New procedural law for patent revocation proceedings2510. Reimbursement of costs in patent revocation proceedings
Federal Court of Justice, decision of 18.12.2012 – X ZB 11/12 – Double representation inrevocation proceedings
Federal Court of Justice, decision of 18.12.2012 – X ZB 6/12 – Attorney in revocation proceedings
BACKGROUND
A basic well-known principle in German civil procedure

There was uncertainty here for a long time concerning

law is that the defeated party must bear not only thethe extent to which the fees of an attorney brought into

court costs, but must also reimburse the winning party

patent revocation proceedings (in addition to the patentits costs. Such reimbursement of costs is not based (asattorney) are also reimbursable. Although the various

in other legal regimes) on the actual costs incurred dur-

revocation divisions at the Federal Patent Court haveing the action, but rather on lump sums, and to a signifi-

tried to converge on this issue, it has repeatedly beencant extent on the basis of the respective litigational

observed that Section 91 ZPO is applied differently on

value. In some cases, the amount may be substantiallythat question. A distinction has been made, specifically,

less than what the party actually expended.

between patents (with attorney fees basically being
reimbursable) and utility models (attorney fees basically

The statutory basis for the reimbursement of costs is

not reimbursable), and a further distinction has also

Section 91 (1) Sentence 1 of the Code of Civil Procedure

been made hitherto according to whether infringement(ZPO), according to which the costs incurred by theproceedings were pending at the same time as thevictorious party need only be reimbursed if they were

revocation proceedings.

necessary for bringing a court action appropriately, or for
appropriate defence in court.

DECISION
The two supreme court decisions have now established

The Federal Court of Justice argues very clearlyclarity as far as patents, at least, are concerned. The

here and in accordance with the needs of practition-Federal Court of Justice has accepted the prevailingers: the gain in justice that can be achieved with anview within the Federal Patent Court and has basicallyexcessively differentiated analysis is dispropor-

ruled on two matters:

tionate to the disadvantages that arise when theparties could dispute in virtually every single case1.

A “typological perspective” is permitted and neces-

whether the costs for a particular measure are to besary when assessing the reimbursability of the fees

reimbursed.

of an attorney in patent revocation proceedings(who is called in to assist the patent attorney). In

2.

In one scenario in which an infringement dispute inthis issue of fees law that is not normally posed un-

respect of the contested patent is pending simulta-

til after a case has ended, the parties are relieved, inneously with the revocation proceedings, bringing inother words, of any obligation to detail why the ser-an attorney to assist a patent attorney is typicallyvices of an assisting attorney were necessary in thereimbursable within the meaning of Section 91 (1)respective case, so that Section 91 (1) Sentence 1

Sentence 1 of the Code of Civil Procedure.

ZPO can be applied.
Although there is no impediment in law, the Federal
Court of Justice argues, to a party (in German

26

IV. Procedural law / 10. Reimbursement of costs in patent revocation proceedings

“dual” patent procedural law) adopting different

ceedings. Only through joint action, namely by

viewpoints in the two proceedings with regard tocombining the skills and knowledge of both the pro-interpretation of the contested patent or patent infessional representatives is it possible (again, fromsuit, it is nevertheless in the interest of the party it-a “typological” perspective) to conduct the legalself, as a rule, to coordinate its arguments in thedispute successfully to successfully assess the al-

two different proceedings. In other words, it should

ternatives courses of action that are available.

avoid postulating a very narrow interpretation of thepatent in the one case and a broad interpretation in

Other aspects that may also be incorporated in

the other, solely because that is expedient in theanalysis are explicitly mentioned by the Federal

respective case (when viewed in isolation). Such an

Court of Justice, but deemed irrelevant for theapproach requires coordination between all the at-question of cost reimbursement: it is all the same,

torneys with a brief to represent the party.

for example, whether a high level of cost reimbursement occurs when the litigational value is high

The Federal Court of Justice lists several specificanyhow, and it is also irrelevant whether exactly thetasks that may arise during the dispute, namely tac-same party is fighting in the revocation dispute andtical questions regarding the choice of particular at-

the infringement dispute. In case no. X ZB 11/12,

tack or defence strategy, and the task of respondingfor example, it was the patent proprietor (in theat short notice to instructions and information fromrevocation proceedings) and the exclusive licensee

a court, while assessing the potential conse-(in the infringement dispute) who had to coordinate

quences of a response for the respective other pro-their conduct of proceedings.

ASSESSMENT
The decisions remove at long last a legal uncertainty

Even though the Federal Court of Justice still admits thethat has often led to totally unnecessary work in thepossibility of the parties claiming “atypical” circum-

aftermath of a case that in fact has already ended, andstances, there appears to be little room for the this inwhich also caused problems with assessing the lawsuit

such a scenario in any case (with simultaneously pend-risks prior to actual litigation. Parties to revocation pro-ing infringement proceedings). However, there is still

ceedings who are also and simultaneously opponents insome uncertainty regarding the treatment of warnings

an infringement dispute now know that the attorneyissued prior to judicial proceedings, if such warnings did

fees will be reimbursed in the revocation proceedings as

not result in infringement proceedings (but in revocation

well.

proceedings). This will remain a bone of contention.
(Henke)IV. Procedural law / 10. Reimbursement of costs in patent revocation proceedings

27

AUTHORS
Dipl.-Phys. Dr. jur. Volkmar Henke
Dr. jur. Tilman MüllerEDITING & LAYOUT
Katrin Friedel

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