(2)Recent Developments in German Patent Case … Developments in German... · Recent Developments in German Patent Case Law 24 standard may be motivated to solve the technical problem

Recent Developments in German Patent Case Law 1/64

Recent Developments inGerman Patent Case Law

Taipei 18 October 2012Taipei 18 October 2012

Dr. Peter Meier-BeckPresiding Judge,

Bundesgerichtshof (Federal Court of Justice)Honorary Professor,

Heinrich-Heine-Universität Düsseldorf

Patentability

Disclosure

Topics

Recent Developments in German Patent Case Law

Disclosure

Claim Construction and Scope of Protection

Patent Infringement

Procedural Issues

3

I. Patentability

Recent Developments in German Patent Case Law 4

I. Patentability

According to European and German patent law,there are only two criteria which an invention hasto meet for patent protection:

patentability of its subject-matter

sufficient disclosure.

Invention


sufficient disclosure.

Patentable is

an invention (i.e. a technical teaching) which

is new,

involves an inventive step, and

is susceptible of industrial application.

According to Art. 52(2) EPC the following inparticular shall not be regarded as inventionswithin the meaning of Art. 52(1) EPC:

discoveries, scientific theories and mathematicalmethods;

Invention


methods;

aesthetic creations;

schemes, rules and methods for performingmental acts, playing games or doing business,and programs for computers;

presentations of information.

…

…

Art. 52(2) EPC shall exclude the patentability ofthe subject-matter or activities referred totherein only to the extent to which a European

Invention


therein only to the extent to which a Europeanpatent application … relates to such subject-matter or activities as such.

The provision does not define which subject-matters are not "patent eligible".

A computer implemented invention relates toa technical teaching if the invention is embeddedin a technical device or process.

Although relating to a technical teaching, a

Invention

88

Although relating to a technical teaching, acomputer programme shall not be regarded asan invention if no specific technical problemis solved by technical means (Art. 52(2c)EPC).


BGH, 22 April 2010 – Xa ZB 20/08, GRUR 2010, 613– Dynamische Dokumentengenerierung (Method forDynamic Document Generation)

A technical problem is solved by technical means if

Invention

99

A technical problem is solved by technical means if

a computer program is determined by technicalfacts outside the computer which runs the program(e.g. Anti-Lock Braking System) or

the structure of the computer program isdetermined by technical limitations of the computeritself (e.g. poor storage capacity).


European Patents shall not be granted in respectof methods for treatment of the human oranimal body by surgery or therapy anddiagnostic methods practised on the human oranimal body.

Exclusions

1010

animal body.

This provision shall not apply to products, inparticular substances or compositions, for use inany of these methods (Art. 53(c) EPC).


EBA-EPO, 15 February 2010 – G 1/07, O.J. EPO 2011,134 – Treatment by surgery/MEDI-PHYSIC

A claimed imaging method, in which, when carried out,maintaining the life and health of the subject is

Exclusions

1111

maintaining the life and health of the subject isimportant and which comprises or encompasses aninvasive step representing a substantial physicalintervention on the body which requires professionalmedical expertise to be carried out and which entails asubstantial health risk even when carried out with therequired professional care and expertise, is excludedfrom patentability as a method for treatment of thehuman or animal body by surgery pursuant to Article 53(c) EPC.Recent Developments in German Patent Case Law

Novelty requires a new technical teaching.

An invention may be based on the discovery ofa natural biological mechanism. The discoverymust not be disregarded because it is not "patent

Novelty


must not be disregarded because it is not "patenteligible".

Nevertheless the discovery as such does notestablish a new technical teaching.

BGH, 9 June 2011 – X ZR 68/08, GRUR 2011, 999 –Memantin (Memantine)

The discovery of the function of an active agent whichserves as an antagonist against a pathologic status (in

Novelty


serves as an antagonist against a pathologic status (inthis case: excessive influx of calcium ions via N-methyl-D-aspartate receptor channels), linked to a certaindisease (Alzheimer's disease), cannot establish a newtechnical teaching if treatment of patients suffering fromsaid disease for abatement of symptoms was known inprior art and neither a new dosage regime is taught nora group of patients so far not treated with the agent isdisclosed to be a responsive group.

An invention shall be considered to be new if itdoes not form part of the state of the art (Art.54(1) EPC).

The state of the art shall be held to comprise

Novelty

1414

The state of the art shall be held to compriseeverything made available to the public bymeans of a written or oral description, by use, orin any other way, before the date of filing of theEuropean patent application (Art. 54(2) EPC).

…


…

Paragraphs 2 and 3 shall not exclude thepatentability of any substance or composition,comprised in the state of the art, for use in a

Novelty

1515

comprised in the state of the art, for use in amethod referred to in Article 53(c), providedthat its use for any such method is notcomprised in the state of the art (Art. 54(4)EPC).

…


…

Paragraphs 2 and 3 shall also not exclude thepatentability of any substance or compositionreferred to in paragraph 4 for any specific use

Novelty

1616

referred to in paragraph 4 for any specific usein a method referred to in Article 53(c), providedthat such use is not comprised in the state of theart (Art. 54(5) EPC).


EBA-EPO, 19 February 2010 – G 2/08, O.J. EPO 2010,456 – Dosage regime/ABBOTT RESPIRATORY

Where it is already known to use a medicament totreat an illness, Article 54(5) EPC does not exclude

Novelty

1717

treat an illness, Article 54(5) EPC does not excludethat this medicament be patented for use in a differenttreatment by therapy of the same illness.

Such patenting is also not excluded where a dosageregime is the only feature claimed which is notcomprised in the state of the art.


Patentability also requires an inventive step.But:

What must be examined is not the inventive stepbut obviousness. If there is no evidence for

Inventive Step

1818

but obviousness. If there is no evidence forobviousness an invention shall be consideredas involving an inventive step.

…


…

The ability of a skilled person to find the solutionto the problem underlying the invention is anecessary but not sufficient condition of

Inventive Step


necessary but not sufficient condition ofobviousness.

What is decisive is whether the inventor'sconsiderations were suggested or motivatedby prior art and his or her general knowledge(cf. US TSM test).

BGH, 30 April 2009 – Xa ZR 92/05, 182 BGHZ 1 = GRUR2009, 746 – Betrieb einer Sicherheitseinrichtung(Operating a Safety Device)

A solution of a technical problem which breaks new

Inventive Step

2020

A solution of a technical problem which breaks newground generally cannot be considered to be obviousunless there were some hints, suggestion, ormotivation by prior art for breaking that ground.


Suggestion cannot be substituted by the mereabsence of obstacles.

But: An explicit pointer to the solution in a pieceof prior art is not necessary. Implicit hints may

Inventive Step

21

of prior art is not necessary. Implicit hints maybe sufficient.

The assumption that the addressed skilledperson would have consulted other experts ofdifferent skills has also to be justified.


BGH, 20 December 2011 - X ZB 6/10, GRUR 2012, 378– Installiereinrichtung II (Installation Means II)

It depends on the individual case and all of its relevantfacts to which extent and detail the skilled person

Inventive Step

facts to which extent and detail the skilled personneeds suggestions by prior art in order to advance aknown technical concept.

Apart from explicit pointers characteristic featuresof the concerned field of technology, education andgeneral knowledge of persons skilled in the art, bestpractice, construction or application needs, and evennon-technical demands may suggest furtherdevelopment.


BGH, 24 July 2012 – X ZR 126/09, juris – Leflunomid(Leflunomide)

A combination of two active agents (in this case:leflunomide und teriflunomide) was obvious, if a person

Inventive Step


leflunomide und teriflunomide) was obvious, if a personskilled in the art who had made a mono-preparation(with the active agent leflunomide) in accordance with amethod that, having regard to prior art, was obvious forits part had gained a product which had metabolised tothe combination of both agents in the course of usualand tolerable shelf live.

BGH, 22 November 2011 - X ZR 58/10, GRUR 2012, 261– E-Mail via SMS

A skilled person endeavouring to improve a detail ofdata structures as defined in an international

Inventive Step


data structures as defined in an internationalstandard may be motivated to solve the technicalproblem by a mechanism which is part of the toolsoffered by the standard itself.

If the standard offers a manageable number ofpossible solution to the problem, each of them havingspecific advantages and disadvantages, each approachmay be obvious to try.

BGH, 15 May 2012 – X ZR 98/09, juris –Calcipotriol-Monohydrat (Calcipotriol Monohydrate)

The court assessing as to whether prior art suggested askilled person to apply a known scheme to a known

Inventive Step

25

skilled person to apply a known scheme to a knownsubject matter may consider to which extent the skilledperson could reasonably expect to succeed this wayin solving the technical problem.


…

Non-technical presetting may influence thetechnical problem.

Inventive Step

2626

This is of special importance when inventivenessof computer implemented inventions is to beconsidered.


BGH, 30 July 2009 – Xa ZR 22/06, GRUR 2010, 44 –Dreinahtschlauchfolienbeutel (Triple-Seam TubularFilm Pouch)

Non-technical objectives achieved by the invention

Inventive Step

2727

Non-technical objectives achieved by the inventionare not part of the solution but have to be consideredwhen the technical problem underlying the invention isdefined.


BGH, 26 October 2010 – X ZR 47/07, GRUR 2011, 125 –Wiedergabe topografischer Informationen(Presentation of Topographic Information)

When examining inventive step, the court shall

Inventive Step

28

When examining inventive step, the court shallconsider only those features of the invention whichdetermine or at least influence the solution of thetechnical problem by technical means.

Selection of a (central) perspective appropriatefor presenting position-related topographicinformation to a car driver for navigation purposes isa non-technical presetting which does notcontribute to the technical solution.


II. DisclosureII. Disclosure


A feature of a device is, as necessary directlyand unambiguously, disclosed as a feature ofthe invention if a skilled person, having regardto the overall content of the patent application,considers a device comprising that feature to be

Disclosure

30

considers a device comprising that feature to bea feasible embodiment of the invention asclaimed.

Subject-matter which a skilled person is enabledto deduce from the application by his or hergeneral knowledge is not – directly andunambiguously – disclosed.


BGH, 16 December 2008 – X ZR 89/07, 179 BGHZ 168 =GRUR 2009, 382 – Olanzapin (Olanzapine)

The court has to identify the overall content of aprior art document in order to determine whether the

Disclosure

31

prior art document in order to determine whether thedocument is novelty-destroying. What is decisive is thetechnical information disclosed to the skilledperson.

With regard to chemical compounds, novelty-destroying anticipation requires direct and cleardisclosure of the individual compound in question.

…


BGH, 16 December 2008 – X ZR 89/07, 179 BGHZ 168 =GRUR 2009, 382 – Olanzapin (Olanzapine)

…

The ability of a skilled person to make a greater or

Disclosure

32

The ability of a skilled person to make a greater orlesser number of compounds covered by a disclosedgeneral formula does not, for the purpose ofanticipation, equate to or substitutes a specificdisclosure of the individual compounds.


BGH, 12 July 2011 – X ZR 75/08, GRUR 2011, 1109 –Reifenabdichtmittel (Tire Sealing Means)

If the patent application describes a product tocomprise certain components a product solely

Disclosure

comprise certain components a product solelyconsisting of these components is generally notdisclosed. As a rule, for such a disclosure furtherindications (e.g. regarding advantages of a productwithout any other components) are necessary.


BGH, 30 August 2011 – X ZR 12/10, Mitt. 2012, 344 –Antriebseinheit für Trommelwaschmaschine(Cylinder Washing Machine Drive Unit)

If different features of an embodiment of the invention

Disclosure

If different features of an embodiment of the inventionindependently as well as altogether serve the technicaleffect of the invention the patentee may amend theclaim by adding a single feature or all of them (cf.110 BGHZ 123 [126] Spleißkammer [SplicingChamber]).


III. Claim Construction andScope of Patent Protection

35

Scope of Patent Protection


Claim interpretation (claim construction) anddetermining the extent of patent protectionare different things. But they belong together.

Proper construction of the claim is the basis of

Claim Construction

3636

Proper construction of the claim is the basis ofproper determination of this claim’s scope:

Claim construction tells us what the meaning of apatent claim is.

…


…

Determining the extent of protection tells us whatthe area is where the patentee’s exclusive right, asconstructed, entitles him to exclude others frommanufacturing or selling a specific product.

Claim Construction

3737

manufacturing or selling a specific product.

When interpreting the patent claim, we have toconsider the context of the patent claim, i.e. thepatent description the very function of which isexplaining the meaning of the claim: The patentclaims must be read in context.


BGH, 6 May 2010 – Xa ZR 78/08, GRUR 2010, 904 –Machine Set

Although a European Patent granted in English or Frenchmay be limited by an amendment of the claims in

Claim Construction

3838

may be limited by an amendment of the claims inGerman language in the course of (German) nullityproceedings, the language of the proceedings is stilldecisive. When interpreting the amended claims the textof the description in the language of the proceedingsmust be considered.


Interpretation of a patent claim starts bydescribing prior art and the technical problemsolved by the technical means of the invention.

The technical problem must be determined

Claim Construction

3939

The technical problem must be determinedobjectively.

What is said in the description about the aim ofthe invention may need to be rectified,especially because it may partly anticipate thesolution.


BGH, 4 February 2010 – Xa ZR 36/08, GRUR 2010, 602– Gelenkanordnung (Pivot Configuration)

The determination of the problem underlying a patentis part of claim interpretation. The technical

Claim Construction

4040

is part of claim interpretation. The technicalproblem follows from the actual technical effects of theinvention.

What is said in the description about the aim of theinvention may give some hints as to the correctinterpretation of the claim. However, it is no more thanpart of the description and primacy of patent claimmust be observed.


BGH, 10 May 2011 – X ZR 16/09, GRUR 2011, 701 –Okklusionsvorrichtung (Occlusion Device)

If the patent description partly contradicts theclaims those elements of the description which are

Claim Construction

41

claims those elements of the description which arenot reflected by the claims are not part of theinvention as protected.

The description shall be used to interpret the claims tothe extent only it can be understood as explainingthe subject matter of the patent claim.

...


Having done that work of interpretation we areprepared to determine the extent ofprotection conferred by the patent claim asinterpreted.

Scope of Protection

4242

The extent of the protection conferred by aEuropean patent shall be determined by theclaims. Nevertheless, the description anddrawings shall be used to interpret the claims(Art. 69 EPC).

…


…

Article 69 should not be interpreted as meaningthat the extent of the protection conferred by aEuropean patent is to be understood as that

Scope of Protection

4343

European patent is to be understood as thatdefined by the strict, literal meaning of thewording used in the claims, the descriptionand drawings being employed only for thepurpose of resolving an ambiguity found in theclaims (Art. 1 1st sentence of the Protocol on theinterpretation of Art. 69 EPC).

…


…

Nor should it be taken to mean that the claimsserve only as a guideline and that the actualprotection conferred may extend to what, from a

Scope of Protection

4444

protection conferred may extend to what, from aconsideration of the description anddrawings by a person skilled in the art, thepatent proprietor has contemplated (Art. 1 2ndsentence of the Protocol on the interpretation ofArt. 69 EPC).

…


…

On the contrary, it is to be interpreted asdefining a position between these extremeswhich combines a fair protection for the

Scope of Protection

4545

which combines a fair protection for thepatent proprietor with a reasonable degreeof legal certainty for third parties (Art. 1 3rdsentence of the Protocol on the interpretation ofArt. 69 EPC).

…


…

For the purpose of determining the extent ofprotection conferred by a European patent, dueaccount shall be taken of any element which is

Scope of Protection

4646

account shall be taken of any element which isequivalent to an element specified in the claims(Art. 2 of the Protocol on the interpretation ofArt. 69 EPC).


Determining the scope of patent protectioninvolves striking the balance between theconflicting interests mentioned by the Protocol.

It is the task of the courts to find criteria for a

Scope of Protection

4747

It is the task of the courts to find criteria for adetermination of the scope of protection whichreconcile both demands.

A suitable doctrine of equivalence cannot berestricted to the meaning of the claim (read incontext) but is has to be based on andorientated toward this meaning.


The instrument of choice here is the cognitivefaculties of a skilled person who endeavoursto analyse the patent claim on the basis of his orher knowledge and skill in the art and uses thedescription and the drawings to interpret the

Scope of Protection

4848

description and the drawings to interpret theclaim.

The scope of the patent is determined by thisperson’s conclusions: It extends to any variantthat has been made obvious by the claim tothe person skilled in the art.


The conditions of equivalent means are asfollows:

Same technical effect

Obviousness to a skilled person

Scope of Protection

4949

Obviousness to a skilled person

Claim-based considerations.

These conditions are defined in more detail in thethree Schneidmesser questions:


BGH, 12 March 2002, 150 BGHZ 149 = ENPR 2003, 309= 33 IIC 873 – Schneidmesser I (Cutting Blade I)

Does the modified embodiment (the variant) solve theproblem underlying the invention by means which

Scope of Protection

5050

problem underlying the invention by means whichhave objectively the same technical effect?

Was the person skilled in the art enabled by his or herexpertise on the priority date to find the modifiedmeans as having the same effect?

Are the considerations that the skilled person has toapply in order to find the modified means based onthe technical teaching of the patent claim?


BGH, 10 May 2011 – X ZR 16/09, GRUR 2011, 701 –Okklusionsvorrichtung (Occlusion Device)

…

Scope of Protection

51

…

If the patent specification discloses in the descriptiondifferent ways of reaching a technical result butclaims only one of these ways the use of the otherones as a rule constitutes no infringement byequivalent means.


IV. Infringement

52

IV. Infringement


Debtor of the claims for injunction and damagesis the infringer of an IP right.

Infringer means not only the person thatproduces, sells or offers the IP protected

Liability

5353

produces, sells or offers the IP protectedproduct.

A person may also be liable if he or she enablesa third party to infringe the IP right or supportsa third party's infringing action.

Intention is not necessary, negligence may besufficient for liability.


BGH, 17 September 2009 – Xa ZR 2/08, 182 BGHZ 245= GRUR 2009, 1142 – MP3 Player Import

A person who personally produces, sells or offersthe product protected by an IP right is not the only one

Liability

5454

the product protected by an IP right is not the only onewho can be regarded as infringing the IP right. Aperson may also be liable if he or she enables a thirdperson to infringe the IP right or supports the thirdperson's infringing action, although he or she couldwithout unreasonable efforts identify his or hercontribution as interfering with the rightholder'sabsolute right.

…


BGH, 17 September 2009 – Xa ZR 2/08, 182 BGHZ 245= GRUR 2009, 1142 – MP3 Player Import

…

An international forwarding agent is not generally

Liability

5555

An international forwarding agent is not generallyobliged to check the forwarded goods for potential IPinfringement.

But the agent may be obliged to query thecompliance with patent law and examine thequestion of infringement as soon as specificindications for IP infringement are presented tohim or her.


BGH, 21 August 2012 – X ZR 33/10, juris – MPEG-2-Videosignalcodierung (MPEG 2 Video Signal EncodingMethod)

A sequence of encoded video data representing

Infringing Product

A sequence of encoded video data representingsuccessive frames of video images may be deemed aproduct produced directly by a (encoding)process which is subject matter of the patent (Sec. 9no. 3 German Patent Act).

Legal protection of a video data product produceddirectly by a patented process extends to any datamedium (e.g. DVD) which contains the datasequence stored on the medium.

56Recent Developments in German Patent Case Law

V. Procedural Issues

575757

V. Procedural Issues


The claimant shall assert and prove the factsthat are to support claimant's claiminterpretation and the alleged infringement.

The court shall urge the parties to true and

Assertion and Evidence

5858

The court shall urge the parties to true andcomplete statements of all relevant facts.

If necessary the court may ex officio appoint anexpert.


BGH, 22. December 2009 – X ZR 56/08, 184 BGHZ 49 =GRUR 2010, 314 – Kettenradanordnung II (Sprocket-Wheel Configuration II)

If the parties' assertions lack sufficient details about


5959

If the parties' assertions lack sufficient details aboutthe factual circumstances relevant for theunderstanding of the technical teaching of theinvention and the education and experience of theskilled person that may influence that understandingthe court shall urge the parties to complete theirstatements.

…


BGH, 22. December 2009 – X ZR 56/08, 184 BGHZ 49 =GRUR 2010, 314 – Kettenradanordnung II (Sprocket-Wheel Configuration II)

…


6060

…

Even if the parties agree on the facts they deem to berelevant to comprehending the technical background ofthe invention the court may ex officio appoint anexpert.

If the trial court refrains from appointing an expert itsdecision may be subject to judicial review by theFederal Court of Justice.


Divergent Interpretation of the claim in patentrevocation or nullity proceedings on the one handand infringement proceedings on the other handmay give reason in the German bifurcatedsystem for granting leave to an appeal on

Leave to Appeal

61

system for granting leave to an appeal onquestions of law (Revision) in order to ensureuniform application of the law.


BGH, 29 June 2010 – X ZR 193/03, GRUR 2010, 858 –Crimpwerkzeug III (Crimping Tool III)

Leave to appeal has to be granted if the HigherRegional Court has based its decision in infringement

Leave to Appeal

6262

Regional Court has based its decision in infringementproceedings on an interpretation of the patent claimthat deviates in a relevant point from the claiminterpretation applied by the Federal Court of Justice inpatent nullity proceedings.


BGH, 18 March 2010 – Xa ZR 54/06, GRUR 2010, 709 –Proxyserversystem (Proxy Server System)

The patentee is not entitled to amend the patent claimsin revocation proceedings if the amended claims are not

Amended Claims

6363

in revocation proceedings if the amended claims are notclear and concise and therefore do not comply with therequirements of Article 84 EPC.


BGH, 8 September 2009 – X ZB 35/08, GRUR 2009,1192 – Polyolefinfolie (Polyolefin Foil)

The right to be heard is violated if the Federal PatentCourt revokes the patent because its subject-matter is

Right to be heard

6464

Court revokes the patent because its subject-matter isnot patentable and bases the revocation on a prior artdocument the opposing party has mentioned for thesole purpose of supporting a different oppositionground.


BGH, 15 April 2010 – Xa ZB 10/09, GRUR 2010, 950 =BlPMZ 2010, 324 – Walzenformgebungsmaschine(Drum Moulding Machine)

German courts have to take account of decisions

Right to be heard

6565

German courts have to take account of decisionsrendered by other national European courts or bythe Boards of Appeal of the European Patent Office andrelating to substantially the same question. They have,where necessary, to consider the grounds that ledthe other court to a different decision.

This rule also applies to questions of law, forinstance the question as to whether the invention wasobvious to a person skilled in the art.


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(2)Recent Developments in German Patent Case … Developments in German... · Recent Developments in German Patent Case Law 24 standard may be motivated to solve the technical problem