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 [...]
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 [...]
Before diving into this year’s Oktoberfest with the Munich IP community, colleague contributor Thorsten Bausch summarized the German Federal Court of Justice’s case law of Summer 2014. As the days of raising beer mugs and polka dancing come to an end in Munich, so does the Dutch Summer (finally). Time for an overview of what occupied the Dutch Courts these past months.
As in Germany, the doctrine of equivalence was considered by the Hague District Court. In the MBI/Shimano case the District Court applied the Dutch Supreme Court’s Medinol/Abbott findings on equivalence of a few months earlier (on stent litigation which meandered through Europe for years).
In Medinol/Abbott the Supreme C [...]
The Higher Regional Court Düsseldorf has ruled in its decision of 20 March 2014 (docket number 12 W 8.14) that an explicit allegation of entitlement to a national part of a European patent, e.g. by sending a warning letter or the filing of a court action, does not include an implicit allegation of entitlement (stillschweigende Berühmung) to the other parts of the same European patent in the respective other countries, nor does this provide grounds for declaratory interest (Feststellungsinteresse) in Germany, i.e. a legitimate interest in filing a negative declaratory action regarding the German part of the European patent.
The circumstances resulting in the German proceedings were infringe [...]
The Bolar exemption must be interpreted narrowly in order not to affect the patent holder’s exclusive rights. The privilege of the generic drug manufacturers who are allowed to conduct clinical trials in order to seek regulatory approval for their therapeutic products based on patented inventions does not apply to their third-party suppliers. Thus, manufacturing of patented pharmaceutical ingredients and offering them to generic drug companies constitutes patent infringement.
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 [...]