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Procedural Law

Our innovative trial strategies have frequently had to pass the stringent tests of the highest courts in the land.

Procedural Law

Dampfdruckverringerung (steam pressure reduction) – BGH 2019 Mitt. 500
The patentee, an NPE without significant capital resources, had lost the nullity suit against its patent in the first instance. As a result, cost-assessment orders had been issued against it, obliging it to reimburse the defendant for substantial legal fees. As a precautionary measure, the defendant enforced the cost-assessment decisions and started to seize the patent in suit. The patentee requested that enforcement of the cost-assessment decisions be discontinued without the provision of security, because otherwise it would be threatened with its economical ruin. In this decision, the Federal Court of Justice rejects the discontinuation of the enforcement. On the one hand, the economic existence of the patentee is endangered independently of the enforcement in view of its lack of capital resources, i.e. the patentee would have had insufficient capital resources to conduct the proceedings from the outset. On the other hand, it was inappropriate to release the patent proprietor from the risk of its entrepreneurial fundament, which is expressed precisely in the fact that the patent at issue is the only asset of the patent proprietor.

vacuum transportation system (Vakuum-Transportsystem) – BGH 2017 GRUR 428
If, in the nullity proceedings, the Federal Supreme Court has declared a patent null and void, in whole or in part, and this judgment deprives an earlier appeal judgment upholding the patent infringement of its basis, the nullity must be invoked as a reason for admitting the further apeal (Zulassung der Revision) in the still pending further appeal against the earlier appeal judgment. If the time limit for filing a non-admission complaint (Nichtzulassungsbeschwerde) has already expired, this must be done within two weeks within the framework of an application for restitutio in integrum because the time limit for filing the non-admission complaint has thus been missed. This two-week period begins with the announcement of the decision of the Federal Court of Justice in the nullity proceedings. A party who culpably failed to invoke the limitation or discontinuance of the patent as a reason for the admission of the revision cannot later invoke the discontinuance of the basis of judgment by way of a restitution action.

Umweltengel für Tragetasche (Blue Angel for plastic bag) – BGH 2014 GRUR 578
The I. senate comments on open questions regarding the burden of demonstration and proof in cases of misleading advertisement statements. If one party can only rely on circumstantial evidence, it has to demonstrate and provide evidence not only for the existence of the circumstances at issue, but also for the presumptive effect of the circumstances. If the production site of one of the parties is to be inspected in the course of collecting evidence, the confidentiality interests of this party are sufficiently preserved if the other party is participating in this inspection by a publicly appointed but non-inaugurated expert who has been sworn by the court to confidentiality towards his own client.

Magnetowiderstandsensor (magneto resistance sensor) – BGH 2011 GRUR 359
In this case plaintiff in a nullity action was supported by a side-intervenient. In the appeal proceedings plaintiff and defendant settled the case out of court. Side-intervenient was not involved in this settlement. The Supreme Court had to decide whether side-intervenient had the right to continue the nullity action on its own after plaintiff had withdrawn his appeal. The Supreme Court assumes such right of side-intervenient only if he has joined the proceedings before the expiry of the appeal term and lodged his own appeal.

Mykoplasmennachweis (Mycoplasma detection) – BGH 2008 GRUR 280
This decision sets out the prerequisites for a reinstatement in the status quo ante in nullity proceedings after the deadline for filing the statement of grounds for appeal has lapsed. It also specifies the due diligence of an attorney using professional software for monitoring deadlines.

GAT v. LuK – CGEU 2006 Mitt 361 = 2006 IIC 742
According to this decision, a court within the EU cannot decide on the validity of a patent in another Member State of the EU, not even in connection with a patent infringement action. Together with the judgment in the Roche v. Primus case, this decision effectively will put an end to cross-border patent infringement actions, because the defendant merely has to raise the defense that the patent in suit is invalid in order to show that the court seised of the case lacks jurisdiction.

Euro-Einführungsrabatt (Euro-Introduction Rebate) – BGH 2004 GRUR 264
Germany‘s Federal Supreme Court ends a dispute that has continued for decades in lowercourt cases concerning administrative fines for non-compliance with a court ruling after settlement of the main proceedings. The court makes it clear that violations of a restraining order are no longer punishable by execution procedures when the parties have mutually declared the main proceedings to have been settled and the settlement has not been limited to the time after the punishable violation.

Cable duct II (Kabeldurchführung II) – 2001 BB 1012
The BGH finds that the obligation of the judge to examine the matter in dispute exhaustively in fact also includes the critical examination of the opinion of a court appointed judge. 

Unzulässige Verletzungsklage (Inadmissible Infringement Action) – BVerwG 2001 Mitt 136
By filing patent-infringement actions with the Administrative Court, rospatt osten pross had developed a defense against so-called torpedo suits. The pendency of an infringement action in Germany was thus brought forward to the moment of the filing of the action. This measure has withstood being contested before Germany‘s Federal Administrative Court. The European legislature recognized the problem involved and came up with a sensible solution in an amendment to Article 30, Point 1, of the EuGVO (European Regulation on Place of Jurisdiction and Enforcement)