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Punitive damages in Europe? The ECJ will have a word on it!

The newly established 15th Patent Senate of the Appeals Court of Düsseldorf (Presiding Judge Dr. Ulrike Voß) has referred a number of questions concerning the calculation of damages in IP cases to the European Court of Justice. This opens the floor for the ECJ to talk about damages, as far as I know for the first time in IP matters.

In the case which now has been referred to the ECJ plaintiff had already successfully sued defendant for infringement of its plant variety protection right and now tried to collect damages for the past infringement on the basis of a reasonable royalty. In calculating the damages on this basis, plaintiff requested to take into account several factors which he [...]

Proprietor’s Plea of Ply Patent Prevails (or: The Problem with the Problem, Part II)

by Anne Katrin Schön

On 12 June of this year, the German Federal Court of Justice (FCJ) in Karlsruhe concluded nullity appeal proceedings (X ZR 96/11) against the German part of European patent EP 1 071 556 B1 by dismissing the nullity action and upholding the patent as granted. Overruling the first-instance judgment 1 Ni 19/09 of the Federal Patent Court (FPC), with which the patent had been declared null and void in its entirety, the FCJ confirmed principles of established case law both regarding novelty and inventive step. Prior to the German nullity proceedings, the European Patent Office (EPO) had rejected an opposition against the patent. A comparison between the EPO, FPC and FCJ deci [...]

German Courts Differ on the IP Infringing Character of the Presentation of a Product at an International Trade Fair

Dr. Simon Klopschinski

In recent time the trademark, copyright and competition law senate (1st senate) of the Federal Court of Justice (FCJ) and one of the patent senates of the Düsseldorf Higher Regional Court have issued conflicting decisions on the question of whether the presentation of a product at a trade fair in Germany constitutes an IP infringing offer.

Under German law the exclusive right of the patentee includes the act of offering a product which uses the patented invention. The meaning of offering is very broad since it does not only cover offers within the meaning of contract law but all acts which from an objective point of view make a patent infringing item available for pur [...]

To suspend or not to suspend – Bundesgerichtshof on bifurcation

by Hetti Hilge

In two recent and surprising decisions the Bundesgerichtshof (German Federal Court of Justice) clarified the effects of a first instance decision nullifying the patent in suit on the enforcement of a parallel infringement finding (including an injunction) and, upon second review, remedied what it considers an unintended oversight by the legislator (“Planwidrige Regelungslücke”) in the specific circumstances of patent litigation and bifurcation. Effectively “overruling” its own previous decision in the very same case (Microsoft vs Motorola), the court now ordered the temporary suspension of the enforcement of an appeal court judgment finding for infringement, against t [...]

News about the doctrine of equivalence in German case law

The doctrine of equivalence has seen some kind of renaissance in German case law recently. In short words, there are three questions to be asked to decide for equivalent infringement if there is no literal infringement. The first one being the question about the effect of the different solution. Do the means used to solve the problem underlying the invention objectively have the same effect? If so, would this different solution have been discovered by the man skilled in the art at the time of the priority date? The objective of this second question to be asked is whether it was kind of obvious to use the different approach instead even though it does not fall under the literal meaning of the [...]

Higher Regional Court Dusseldorf Grants a Patent Co-owner a Right to Compensation

In its decision of 7 August 2014 (docket no. I-2 U 91/13 – ‘Garage Roller Door’), the Higher Regional Court Dusseldorf granted a non-using patent co-owner a right to compensation from the other co-owner that uses the patent and profits from this use. The parties are competitors in the field of manufacturing and selling garage roller doors. The Court granted the right on the basis of equity under Sec. 745 (2) German Civil Code, since the following conditions were fulfilled: (1) the co-owner’s contribution (5%) to the patented invention as laid down in claim 1 of the patent was actually used in the other co-owner’s products, (2) an explicit claim to compensation by the contributing c [...]

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