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 [...]
(1) If a plaintiff can prove there was an “offering” of means for the patented purposes, it can be assumed that the means were also delivered for those purposes, and that therefore the plaintiff has a right to claim damages and the provision of information due to indirect infringement.
(2) When a patent is assigned during pending patent infringement proceedings, the right of the assignee to claim damages shall arise starting on the date of the assignment agreement, and not on the date of registration.
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 [...]
A recent decision of the Higher Regional Court (Oberlandesgericht) Düsseldorf now confirms that a holding company cannot easily dive away under the patent infringing activities of its subsidiaries.
Many companies are designed in the form of a group, having a holding company at the top and a number of subsidiaries which are directly or indirectly owned by the holding company. Different working areas are split between the companies of the group.
If one of these subsidiaries infringes a patent, the question arises whether and to what extent the holding itself is responsible for the infringement. Is the holding liable to compensation of damages? Does the holding have to render accoun [...]
The Mannheim Regional Court decided on March 8, 2013 (court docket: 7 O 139/12) that a supplier which is located abroad is regularly only liable for participating in patent-infringing acts in Germany if the foreign supplier learns, e.g. by means of a warning letter, that its supply of products to the German market may result in a patent infringement under German law and if the supplier does not refrain from further shipments into Germany.
The Court of Appeal held that the duty to compensate the successful party’s legal costs in intellectual property proceedings, pursuant to Art. 14 of the Enforcement directive, also applies to invalidity claims, counterclaims and defenses by the alleged infringing party threatened with patent enforcement. To deny such compensation in respect of nullity claims or defenses that constitute an important defense against enforcements of intellectual property rights would be contrary to Article 6 ECHR.
A summary of this case will be posted on http://www.Kluweriplaw.com[...]