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German Court is Soothsaying What the Future will Bring for FRAND and Compulsory License Defenses

by Dr. Simon Klopschinski

In one of its latest orders the Karlsruhe Higher Regional Court has used the opportunity to take a glimpse into the crystal ball, in order to see what decision the Court of Justice of the European Union (CJEU) is going to render in response to the pending referral for preliminary ruling regarding the FRAND and compulsory license defense in case of standard essential patents (SEPs).

In recent years the information and telecommunication (ITC) sector has seen a wave of patent lawsuits in various jurisdictions, including Germany. Since most of the patents asserted in these proceedings form part of a standard, a core questions is whether enforcing SEPs complies with anti [...]

There’s life in the old dog yet: Infringement under the doctrine of equivalence

Many practitioners in Germany thought the doctrine of equivalence to be rather at its end following two Supreme Court (BGH)-decisions in 2011 (“Okklusionsvorrichtung” and “Dyglycidverbindung”). Now, the renowned Higher Regional Court Duesseldorf has – in my eyes, correctly – made clear that the old dog is still alive.


According to standard practice of the BGH, equivalence has three prerequisites: (i) an identical effect attributed to the alternative means; (ii) perceptibility of the alternative solution for the skilled person; and (iii) equivalence in value.

The BGH uses the following formula to describe the third prerequisite (equivalence in value) in detail: The ref [...]

No Mercy: Exhaustion of patent rights and burden of proof

The use and circulation of a product which has been put on the market by the patentee or a third party acting with the consent of the patentee (e.g. a licensee) cannot be prohibited by the patentee anymore. This concept of exhaustion is not only applicable to the territory of Germany, but to the entire territory of the EU and EEA, i.e. the common European market. This Europe wide exhaustion of patent rights is the basis for parallel imports, in particular for parallel imports of pharmaceuticals and plant protection products.

Being a defense, the burden of prove showing that the product has been put onto the market by the patentee or a licensee lies with the defendant. However, applying this [...]

Düsseldorf strengthens its position as a venue for patent infringement litigation – Second Patent Senate at the Higher Regional Court started its work in 2014

by Hetti Hilge

The Higher Regional Court Düsseldorf has set up a second Senate (panel of judges) that is specifically competent for patent infringement litigation. The Higher Regional Court is the appeal instance for first instance judgments of the Regional Court Düsseldorf in patent cases.

Already at the beginning of 2013, a third civil chamber that is specifically competent for patent infringement cases has been set up at the District Court Düsseldorf as a result of the increasing number of patent infringement complaints at this venue (see our previous post on the announcement). With about 600 cases per year, the District Court of Düsseldorf is the most popular court for patent infrin [...]

Forfeiture of Claims for Patent Infringement

Under the legal principle of forfeiture of claims a patentee can deprive himself of claims for patent infringement if he asserts them in legal proceedings at such a late stage (time factor) that the infringer from an objective perspective could trust that he would not anymore be subjected to the claims and has made dispositions in that trust (circumstance factor). The Supreme Court has set a very high threshold for both factors such that the forfeiture defense has had no practical relevance.

Recently, the Supreme Court did, however, reject to hear a revision against a decision by which the Dusseldorf appeal court has rejected the patentee’s claims for patent infringement due to forfeiture. T [...]

Pictures in a complaint

By Bernward Zollner

Every now and then it is suggested that a picture or pictures be incorporated in a mo-tion of a complaint against the defendant requesting defendant to cease and desist from a certain activity (being a patent or a copyright infringement) so that defendant’s activity by described more clearly. A recent decision of the German Bundesgerichtshof recalls a particular risk which is linked with a motion in which reference is made to pictures. The risk is the missing clarity (definiteness) of a court decision which is based on such a motion. Even if plaintiff has submitted clear and definite photos with the motion it is up to the court to draw copies from the motion for the vari [...]

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