Misleading by arrogation of a patent despite reinstatement in the status quo ante
by Stephan Lieck
The Düsseldorf Regional Court had to decide whether it is misleading under competition law that the former proprietor of a patent advertises with the fact that there is patent protection for a product (wrongful representation of an article as patent-ed/arrogation of patent), although the patent had expired at the time of arrogation on account of his failure to pay the annual fee, but the patent proprietor was granted a reinstatement in the status quo ante because of the failure to observe the payment date later. Such a reinstatement is possible under German law according to Sec. 123 German Patent Act under certain conditions, if someone was prevented from observ-ing a deadl [...]
FCJ rules that the skilled person will look for approaches already provided by a standard when wanting to improve that standard
The German Federal Court of Justice recently issued a decision entitled ‘E-Mail via SMS’, November 22, 2011, X ZR 58/10, in which it was found that when seeking to improve a data structure prescribed in an international standard, a skilled person would consider mechanisms already described in the standard when solving the identified technical problem. It was furthermore found that if the standard provides a manageable number of possible solutions, each having specific advantages and disadvantages, this provides an incentive to take each of the solutions into account.
In the case in question it was ruled that it was obvious to apply a known concept for sending instructions to a SIM card of a [...]
Apple v. Motorola: No compulsory licence defence
- By Eike Schaper,
for Kluwer IP Cases
Motorola obtained a first instance judgement against Apple, because iPhone and iPad infringe the European patent No. 1 010 336 declared essential to the GPRS standard by ETSI (European Telecommunications Standards Institute).
Apple’s defence of a compulsory licence under anti-trust law failed.
The German Federal Court of Justice recognised in principle that a defendant sued for patent infringement may put forward the defence that the patentee is abusing a dominant position on the market by refusing to conclude a FRAND (fair, reasonable and non-discriminatory) licence agreement (judgment of 6 May 2009, KZR 39/06 – Orange Book Standard). An abuse of the dominant position [...]
Accounting on infringer’s profit
- By Bernward Zollner,
for Kluwer IP Cases
by Bernward Zollner
rospatt osten pross
In two decisions of May and September 2011 the Appeal Court Düsseldorf had to comment on various issues concerning the accounting and determination of patent infringer’s profit. In the decision of May 2011 it is stated that an obligation of defend-ant to amend or specify an accounting cannot be assumed if defendant clearly waives the right to later use the cost positions under discussion to diminish its profit in course of the damage-litigation. This means that defendant is able to terminate an often burdensome discussion on the completeness of the accounting in cases where the amounts in question do not justify at all time and effort of such a discus [...]
Royalty-free exclusive licences – can patent holders claim damages?
by Stephan von Petersdorff-Campen – rospatt osten pross
Where a patent has been exclusively licensed to a third party, it is this licensee who is directly prejudiced by an infringement of said patent. But a 2008 verdict by the German Federal Supreme Court (BGH) also allows the patent holder as licensor to bring his own claim for damages insofar as said holder financially participates in the exercise of the licence. This is clearly the case with royalties-based licenses, where the amount of the licensing fee generally depends on the licensee’s revenues (decision of 20 May 2004 – X ZR 180/05; see BGH GRUR 2008, 896 – ink cartridges).
But what about licences without royalties? The BGH rec [...]
“Polierendpunktbestimmung” – A Christmas Present to the IP Profession by the German Federal Court of Justice
Just a few years ago, the German IP profession suddenly became very, very nervous. The Regional Court of Düsseldorf had issued its first of a handful of decisions wherein the German part of a European Patent was declared ineffective ex tunc for lack of a proper translation of the patent specification into German. This was the Tamsulosin case published in GRUR Int. 2007, 429. In this case, one description page (from the section titled “Background of the Invention”) was inadvertently missing from the German translation filed with the Patent Office. This missing page in the translation – probably the result of a copying or postage error, or even a loss of the page only within the Patent Office [...]
