Dealing with claim construction issues, the FCJ held that a claim construction which leads to the result that none of the embodiments described in the patent specification would be covered by the claim can only be considered if other possibilities of claim construction have to be definitely excluded or when the claim contains a clear indication that subject matter should be claimed which deviates from the description. If, on the contrary, the claim indicates that the embodiments from the prescription should be covered by the claimed features, this must be taken into consideration for the claim construction.
In this judgment the Court of Appeals Düsseldorf held that the manifest preparation of a product for a specific use which is covered by a use claim can be seen in information on the packaging and in the patient information provided with the pharmaceutical product to the end user. It confirms earlier case law in that an infringement of a use claim requires a manifest preparation which clearly states that the product may be used for the patented indication (the specific medical use).
At a tradeshow in Düsseldorf the Defendant co-organized a so called “Turkish Pavilion” featuring several companies of the Turkish region “Samsun”. The Court held that this role of the Defendant was sufficient to be held liable for patent infringement, even where the Defendant itself did not manufacture or sell the products. Exhibiting at the tradeshow was considered as an offer for sale which would infringe the exclusive rights of the patentee.
The FCJ held that the Defendant in a nullity action is only required to prepare an auxiliary request following the preliminary opinion of the Federal Patent Court which takes those aspects into consideration which were mentioned by the Patent Court. In general, there is no reason for the Defendant to prepare additional auxiliary requests with regard to other attacks which were not addressed by the Patent Court in the preliminary opinion or which were considered by the Patent Court as not successful.
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.