The CoA Karlsruhe held that the fact that a referral is pending before the CJEU regarding the issues of the criteria for raising the FRAND defense (C-170/13 Huawei) does not justify the suspension of the enforcement of an infringement judgment issued against a defendant. The court also expressed their expectation that – even after a future decision of the CJEU modifying the criteria set up by the Federal Court of Justice (BGH) in the Orange Book case – the minimum requirements of an acceptable offer and to render accounts for past infringement will still apply.
The FCJ held that the priority of an earlier application may be rightfully claimed if the technical information described for a specific embodiment or otherwise in in the application is seen by the skilled person as an example for the more general invention disclosed in the later application and if this more general teaching was disclosed in the prior application as part of the invention.
The FCJ held that legal provisions in force at the priority date must be taken into consideration when assessing novelty and inventive step of an invention. These legal provisions may incite the skilled person to work in a certain direction so that this makes the invention obvious.
The Court of Appeal Düsseldorf held that the offering of certain products by the defendants was not covered by the scope of the patent due to the specific “Swiss type” wording, which does not grant an absolute product protection, and due to the fact that the advertising of the defendants did not address the patented use specifically enough.
The FCJ held that the right to claim priority, which is in fact the right to file a follow-up application, can be transferred to a third party who was not the applicant of the earlier application. This transfer is governed by the law of the earlier application, in this case German law. Neither German law nor the EPC requires a specific form for such a transfer. Therefore, a transfer is also possible implicitly.
The Federal Court of Justice held that under the specific circumstances of the case it was likely that a service manual regarding flow meter technology had been available to third parties. The Court considered as decisive the agreement between the party supplying the manual and the recipient. According to the Court it is relevant whether the parties agreed upon confidentiality either expressly or implicitly or whether it was to be expected under the circumstances that the recipient would keep the information confidential.
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