For decades, the cases which we have conducted have had a major influence on the case law of the Supreme Court in the field of patent law. In the last few years, we have appeared in a particularly large number of trials in which the Federal Court of Justice has had to rule on fundamental questions of indirect patent infringement and equivalence.
Sicherheit von Transaktionen zwischen informationsverarbeitenden Systemen (safety of transactions between data processing systems) – BGH 2020 MMR 233
In these nullity appeal proceedings, it had to be decided which solution was obvious to the skilled person when combining two documents, if different approaches to increasing the security of transactions were proposed in each of the two documents: The replacement of one solution by the other, or a combination of both solutions.
Cer-Zirkonium-Mischoxid I + II (cerium zirconium mixed oxides) – BGH 2019 GRUR 713 and 718
In two nullity proceedings concerning patents in the field of compositions which serve as raw material for 3‑way-catalysts the Federal Supreme Court had to decide on miscellaneous fundamental questions concerning enablement when a range of values open on one side was claimed and concerning examples of the prior art which had been re-worked by the claimant.
Beschichtungsverfahren (Coating process) – BGH 2016 GRUR 1257
This decision develops the case law on benefits of use in cases of joint inventorship. If co-inventors are jointly entitled to an invention a patent application conducted by one co-inventor solely in his own name is not justified. Thereby, the right to the invention of the other co-inventor as an absolute right is harmed. The omitted co-inventor may claim damages which includes a compensation for enjoyed benefits of use.
Kfz-Stahlbauteil (vehicle steel component)– BGH 2016 GRUR 265
The Federal Supreme Court renders more precise case law on entitlement. In a first step, the patent claim needs to be construed, and then it must be compared with the constructive contribution demanded by the entitlement claimant. In doing so, it has to be examined in how far the teaching of the patent claim corresponds to the teaching that unrightfully had been usurped. The constructive facilitation need not have to be implemented in the patent claim. It can be sufficient if it contributed on the way to the final shape of the invention.
Palettenbehälter (Pallet container) III – BGH 2012 GRUR 1122 = 2013 IIC 457
The Federal Court of Justice has provided a more precise definition of its case law on identical effects when examining equivalence. If, as a result of interpretation, it is possible to learn from the claim the minimum requirements as to the quantity or quality of a particular solution, then any modified means that does not satisfy these requirements cannot be regarded as achieving the identical effect. It does not even fall within the scope of protection conferred by the patent as an inferior embodiment.
Palettenbehälter (Pallet container) II – BGH 2012 GRUR 1118 = 2013 IIC 351
This is a fundamental ruling of principle regarding the line to be drawn between permitted employment in accordance with the intended use and remanufacturing, which constitutes patent infringement. According to the BGH, the decisive criterion for the assessment is the opinion of the average consumer. If the pallet container is regarded as worthless if its interior bubble has to be replaced, the replacement must constitute remanufacturing and hence patent infringement. If, on the other hand, the average consumer expects that the interior bubble will have to be replaced during the service life of the pallet container, it is necessary to examine whether the technical effects of the invention are embodied in the interior bubble.
Winkelmesseinrichtung (angle measuring device) – BGH GRUR 2011, 40
In this decision the Federal Supreme Court for the first time accepts a disclaimer solution in the “unescapable trap” constellation, where the claim of the granted patent includes a feature that has inadmissibly broadened the scope of protection. The decision has in the meantime been confirmed for the German part of European Patents (GRUR 2015, 573 – “Wundbehandlungsvorrichtung”).
Rohrschweißverfahren (Tube welding process) – BGH 2007 GRUR 773 = 2008 ICC 106
This decision on indirect patent infringement deals with a situation in which a patented multi-stage process is carried out on different commercial levels, where those carrying out the first part of the process possess a licence, while those marketing a means for carrying out the second part do not.
Haubenstretchautomat (Hood-stretching automat) – BGH 2007 GRUR 679
In this further decision on indirect patent infringement, the Federal Court of Justice sets out in detail the requirements regarding the obvious nature of the fact that an article is intended to allow a third party to use it in accordance with a patent. In addition, the decision deals with the limits to the entitlement to a cease and desist order regarding articles which can also be used without infringing a patent. Finally, the Federal Court of Justice explains the principles to be applied in determining the compensation to be paid by an indirect infringer and the scope of the corresponding entitlement to a rendering of account and provision of information.
Antriebsscheibenaufzug (Traction Sheave Elevator) – BGH 2005 GRUR 848
Following the Air Heater ruling (see below), this is another landmark decision regarding indirect patent infringement. First of all, it provides a more precise interpretation of the objective and subjective facts mentioned in section 10 of the German Patent Act, according to which the supplier should know – or it should be obvious from the circumstances – that the means is “suitable and intended for making use of the invention”. The decision goes on to explain the requirements which have to be met in order to prove these facts if it is also possible to use the means without infringing the patent. Secondly the Supreme Court lays down the losses for which the infringer must compensate the patent proprietor.
Schneidmesser II (Cutting Blade II) – BGH 2002 GRUR 519
The decision is one of five simultaneous rulings handed down by Germany‘s Federal Supreme Court (including Cutting Blade I – 2002 IIC 873) containing fundamental statements on patent protection under the doctrine of equivalence and regarding the scope of protection as regards numerical and dimensional data.
Luftheizgerät (Air Heater) – BGH 2001 GRUR 228
Germany‘s Federal Supreme Court formulates the criteria currently in effect for ascertaining a contributory patent infringement, especially for determining the subjective facts (intent) and for taking into account experience from everyday life.
Spannschraube (Tension Screw) – BGH 1999 GRUR 909 = 1999 IIC 932
This decision essentially clarifies the test for determining the scope of protection afforded by a patent. Citing the problem and its solution, the court emphasizes more strongly than before the special importance of the way in which an object is viewed in functional terms. Moreover, it finds that the meaning of terms used in a patent is to be determined from the patent itself and may differ from the common understanding of them (a patent specification as “its own dictionary”).
Befestigungsvorrichtung II (Fixing Device II) – BGH 1991 GRUR 436 = 1992 IIC 111
The decision contains the delimiting criteria still in effect today of what constitutes a dependent invention and when a patented infringing embodiment does not fall within the scope of a patent‘s protection even under the doctrine of equivalence.
Ethofumesat (Ethofumesate) – BGH 1990 GRUR 997 = 1991 IIC 541
Germany‘s Federal Supreme Court deals with the question of whether the user of a patent was entitled to a testing privilege prior to the introduction of Section 11 of the Patent Law of 1981. From the standpoint of eliminating the consequences of a continuing infringement of rights under Section 1004 of the German Civil Code, the Court approves an extension of the time of the patent protection in the case of patent-infringing preparatory actions intended to permit immediate marketing after expiration of the period of patent protection. This is a precursor decision to the Court‘s later rulings “Klinische Versuche I und II” (“Clinical Tests I”, 1997 IIC 103, and “Clinical Tests II”, 1997 Mitt 523) and to the decision of Germany‘s Federal Constitutional Court “Clinical Tests” (2001 GRUR 43), in which rospatt osten pross was also involved.
Befestigungsvorrichtung I (Fixing Device I) – BGH 1987 GRUR 280 = 1988 IIC 243
Germany‘s Federal Supreme Court holds that the rule whereby only the prior art mentioned in the patent specification may be taken into account in interpreting the patent does not apply in determining the scope of protection under the doctrine of equivalence.
Schiessbolzen (Projectile of a Bolt-Setting Gun) – BGH 1979 GRUR 149
With this decision Germany‘s Federal Supreme Court makes it clear that just providing information about the intended purpose in a device claim does not have the effect of limiting the scope of protection.
Metronidazol – BGH 1975 GRUR 425 = 1976 IIC 407
In a basic decision Germany‘s Federal Supreme Court defines the requirements for implementing process claims by equivalent means.