Recent Developments in German Patent Case Law
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Recent Developments in
German Patent Case Law
Dr. Peter Meier-Beck
Presiding Judge,
Bundesgerichtshof (Federal Court of Justice)
Honorary Professor,
Heinrich-Heine-Universität Düsseldorf
Taipei 18 October 2012
Topics
 Patentability
 Disclosure
 Claim Construction and Scope of Protection
 Patent Infringement
 Procedural Issues
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I. Patentability
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Invention
 According to European and German patent law,
there are only two criteria which an invention has
to meet for patent protection:
 patentability of its subject-matter
 sufficient disclosure.
 Patentable is
 an invention (i.e. a technical teaching) which
 is new,
 involves an inventive step, and
 is susceptible of industrial application.
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Invention
 According to Art. 52(2) EPC the following in
particular shall not be regarded as inventions
within the meaning of Art. 52(1) EPC:
 discoveries, scientific theories and mathematical
methods;
 aesthetic creations;
 schemes, rules and methods for performing
mental acts, playing games or doing business,
and programs for computers;
 presentations of information.
 …
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Invention
 …
 Art. 52(2) EPC shall exclude the patentability of
the subject-matter or activities referred to
therein only to the extent to which a European
patent application … relates to such subjectmatter or activities as such.
 The provision does not define which subjectmatters are not "patent eligible".
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Invention
 A computer implemented invention relates to
a technical teaching if the invention is embedded
in a technical device or process.
 Although relating to a technical teaching, a
computer programme shall not be regarded as
an invention if no specific technical problem
is solved by technical means (Art. 52(2c)
EPC).
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Invention
BGH, 22 April 2010 – Xa ZB 20/08, GRUR 2010, 613
– Dynamische Dokumentengenerierung (Method for
Dynamic Document Generation)
 A technical problem is solved by technical means if
 a computer program is determined by technical
facts outside the computer which runs the program
(e.g. Anti-Lock Braking System) or
 the structure of the computer program is
determined by technical limitations of the computer
itself (e.g. poor storage capacity).
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Exclusions
 European Patents shall not be granted in respect
of methods for treatment of the human or
animal body by surgery or therapy and
diagnostic methods practised on the human or
animal body.
 This provision shall not apply to products, in
particular substances or compositions, for use in
any of these methods (Art. 53(c) EPC).
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Exclusions
EBA-EPO, 15 February 2010 – G 1/07, O.J. EPO 2011,
134 – Treatment by surgery/MEDI-PHYSIC
A claimed imaging method, in which, when carried out,
maintaining the life and health of the subject is
important and which comprises or encompasses an
invasive step representing a substantial physical
intervention on the body which requires professional
medical expertise to be carried out and which entails a
substantial health risk even when carried out with the
required professional care and expertise, is excluded
from patentability as a method for treatment of the
human or animal body by surgery pursuant to Article 53
(c) EPC.
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Novelty
 Novelty requires a new technical teaching.
 An invention may be based on the discovery of
a natural biological mechanism. The discovery
must not be disregarded because it is not "patent
eligible".
 Nevertheless the discovery as such does not
establish a new technical teaching.
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Novelty
BGH, 9 June 2011 – X ZR 68/08, GRUR 2011, 999 –
Memantin (Memantine)
The discovery of the function of an active agent which
serves as an antagonist against a pathologic status (in
this case: excessive influx of calcium ions via N-methylD-aspartate receptor channels), linked to a certain
disease (Alzheimer's disease), cannot establish a new
technical teaching if treatment of patients suffering from
said disease for abatement of symptoms was known in
prior art and neither a new dosage regime is taught nor
a group of patients so far not treated with the agent is
disclosed to be a responsive group.
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Novelty
 An invention shall be considered to be new if it
does not form part of the state of the art (Art.
54(1) EPC).
 The state of the art shall be held to comprise
everything made available to the public by
means of a written or oral description, by use, or
in any other way, before the date of filing of the
European patent application (Art. 54(2) EPC).
 …
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Novelty
 …
 Paragraphs 2 and 3 shall not exclude the
patentability of any substance or composition,
comprised in the state of the art, for use in a
method referred to in Article 53(c), provided
that its use for any such method is not
comprised in the state of the art (Art. 54(4)
EPC).
 …
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Novelty
 …
 Paragraphs 2 and 3 shall also not exclude the
patentability of any substance or composition
referred to in paragraph 4 for any specific use
in a method referred to in Article 53(c), provided
that such use is not comprised in the state of the
art (Art. 54(5) EPC).
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Novelty
EBA-EPO, 19 February 2010 – G 2/08, O.J. EPO 2010,
456 – Dosage regime/ABBOTT RESPIRATORY
 Where it is already known to use a medicament to
treat an illness, Article 54(5) EPC does not exclude
that this medicament be patented for use in a different
treatment by therapy of the same illness.
 Such patenting is also not excluded where a dosage
regime is the only feature claimed which is not
comprised in the state of the art.
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Inventive Step
 Patentability also requires an inventive step.
But:
 What must be examined is not the inventive step
but obviousness. If there is no evidence for
obviousness an invention shall be considered
as involving an inventive step.
 …
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Inventive Step
 …
 The ability of a skilled person to find the solution
to the problem underlying the invention is a
necessary but not sufficient condition of
obviousness.
 What is decisive is whether the inventor's
considerations were suggested or motivated
by prior art and his or her general knowledge
(cf. US TSM test).
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Inventive Step
BGH, 30 April 2009 – Xa ZR 92/05, 182 BGHZ 1 = GRUR
2009, 746 – Betrieb einer Sicherheitseinrichtung
(Operating a Safety Device)
A solution of a technical problem which breaks new
ground generally cannot be considered to be obvious
unless there were some hints, suggestion, or
motivation by prior art for breaking that ground.
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Inventive Step
 Suggestion cannot be substituted by the mere
absence of obstacles.
 But: An explicit pointer to the solution in a piece
of prior art is not necessary. Implicit hints may
be sufficient.
 The assumption that the addressed skilled
person would have consulted other experts of
different skills has also to be justified.
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Inventive Step
BGH, 20 December 2011 - X ZB 6/10, GRUR 2012, 378
– Installiereinrichtung II (Installation Means II)
 It depends on the individual case and all of its relevant
facts to which extent and detail the skilled person
needs suggestions by prior art in order to advance a
known technical concept.
 Apart from explicit pointers characteristic features
of the concerned field of technology, education and
general knowledge of persons skilled in the art, best
practice, construction or application needs, and even
non-technical demands may suggest further
development.
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Inventive Step
BGH, 24 July 2012 – X ZR 126/09, juris – Leflunomid
(Leflunomide)
A combination of two active agents (in this case:
leflunomide und teriflunomide) was obvious, if a person
skilled in the art who had made a mono-preparation
(with the active agent leflunomide) in accordance with a
method that, having regard to prior art, was obvious for
its part had gained a product which had metabolised to
the combination of both agents in the course of usual
and tolerable shelf live.
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Inventive Step
BGH, 22 November 2011 - X ZR 58/10, GRUR 2012, 261
– E-Mail via SMS
 A skilled person endeavouring to improve a detail of
data structures as defined in an international
standard may be motivated to solve the technical
problem by a mechanism which is part of the tools
offered by the standard itself.
 If the standard offers a manageable number of
possible solution to the problem, each of them having
specific advantages and disadvantages, each approach
may be obvious to try.
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Inventive Step
BGH, 15 May 2012 – X ZR 98/09, juris –
Calcipotriol-Monohydrat (Calcipotriol Monohydrate)
The court assessing as to whether prior art suggested a
skilled person to apply a known scheme to a known
subject matter may consider to which extent the skilled
person could reasonably expect to succeed this way
in solving the technical problem.
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Inventive Step
 …
 Non-technical presetting may influence the
technical problem.
 This is of special importance when inventiveness
of computer implemented inventions is to be
considered.
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Inventive Step
BGH, 30 July 2009 – Xa ZR 22/06, GRUR 2010, 44 –
Dreinahtschlauchfolienbeutel (Triple-Seam Tubular
Film Pouch)
Non-technical objectives achieved by the invention
are not part of the solution but have to be considered
when the technical problem underlying the invention is
defined.
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Inventive Step
BGH, 26 October 2010 – X ZR 47/07, GRUR 2011, 125 –
Wiedergabe topografischer Informationen
(Presentation of Topographic Information)
 When examining inventive step, the court shall
consider only those features of the invention which
determine or at least influence the solution of the
technical problem by technical means.
 Selection of a (central) perspective appropriate
for presenting position-related topographic
information to a car driver for navigation purposes is
a non-technical presetting which does not
contribute to the technical solution.
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II. Disclosure
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Disclosure
 A feature of a device is, as necessary directly
and unambiguously, disclosed as a feature of
the invention if a skilled person, having regard
to the overall content of the patent application,
considers a device comprising that feature to be
a feasible embodiment of the invention as
claimed.
 Subject-matter which a skilled person is enabled
to deduce from the application by his or her
general knowledge is not – directly and
unambiguously – disclosed.
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Disclosure
BGH, 16 December 2008 – X ZR 89/07, 179 BGHZ 168 =
GRUR 2009, 382 – Olanzapin (Olanzapine)
 The court has to identify the overall content of a
prior art document in order to determine whether the
document is novelty-destroying. What is decisive is the
technical information disclosed to the skilled
person.
 With regard to chemical compounds, noveltydestroying anticipation requires direct and clear
disclosure of the individual compound in question.
…
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Disclosure
BGH, 16 December 2008 – X ZR 89/07, 179 BGHZ 168 =
GRUR 2009, 382 – Olanzapin (Olanzapine)
…
 The ability of a skilled person to make a greater or
lesser number of compounds covered by a disclosed
general formula does not, for the purpose of
anticipation, equate to or substitutes a specific
disclosure of the individual compounds.
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Disclosure
BGH, 12 July 2011 – X ZR 75/08, GRUR 2011, 1109 –
Reifenabdichtmittel (Tire Sealing Means)
If the patent application describes a product to
comprise certain components a product solely
consisting of these components is generally not
disclosed. As a rule, for such a disclosure further
indications (e.g. regarding advantages of a product
without any other components) are necessary.
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Disclosure
BGH, 30 August 2011 – X ZR 12/10, Mitt. 2012, 344 –
Antriebseinheit für Trommelwaschmaschine
(Cylinder Washing Machine Drive Unit)
If different features of an embodiment of the invention
independently as well as altogether serve the technical
effect of the invention the patentee may amend the
claim by adding a single feature or all of them (cf.
110 BGHZ 123 [126] - Spleißkammer [Splicing
Chamber]).
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III. Claim Construction and
Scope of Patent Protection
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Claim Construction
 Claim interpretation (claim construction) and
determining the extent of patent protection
are different things. But they belong together.
 Proper construction of the claim is the basis of
proper determination of this claim’s scope:
 Claim construction tells us what the meaning of a
patent claim is.
 …
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Claim Construction
 …
 Determining the extent of protection tells us what
the area is where the patentee’s exclusive right, as
constructed, entitles him to exclude others from
manufacturing or selling a specific product.
 When interpreting the patent claim, we have to
consider the context of the patent claim, i.e. the
patent description the very function of which is
explaining the meaning of the claim: The patent
claims must be read in context.
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Claim Construction
BGH, 6 May 2010 – Xa ZR 78/08, GRUR 2010, 904 –
Machine Set
Although a European Patent granted in English or French
may be limited by an amendment of the claims in
German language in the course of (German) nullity
proceedings, the language of the proceedings is still
decisive. When interpreting the amended claims the text
of the description in the language of the proceedings
must be considered.
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Claim Construction
 Interpretation of a patent claim starts by
describing prior art and the technical problem
solved by the technical means of the invention.
 The technical problem must be determined
objectively.
 What is said in the description about the aim of
the invention may need to be rectified,
especially because it may partly anticipate the
solution.
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Claim Construction
BGH, 4 February 2010 – Xa ZR 36/08, GRUR 2010, 602
– Gelenkanordnung (Pivot Configuration)
 The determination of the problem underlying a patent
is part of claim interpretation. The technical
problem follows from the actual technical effects of the
invention.
 What is said in the description about the aim of the
invention may give some hints as to the correct
interpretation of the claim. However, it is no more than
part of the description and primacy of patent claim
must be observed.
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Claim Construction
BGH, 10 May 2011 – X ZR 16/09, GRUR 2011, 701 –
Okklusionsvorrichtung (Occlusion Device)
 If the patent description partly contradicts the
claims those elements of the description which are
not reflected by the claims are not part of the
invention as protected.
 The description shall be used to interpret the claims to
the extent only it can be understood as explaining
the subject matter of the patent claim.
 ...
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Scope of Protection
 Having done that work of interpretation we are
prepared to determine the extent of
protection conferred by the patent claim as
interpreted.
 The extent of the protection conferred by a
European patent shall be determined by the
claims. Nevertheless, the description and
drawings shall be used to interpret the claims
(Art. 69 EPC).
 …
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Scope of Protection
 …
 Article 69 should not be interpreted as meaning
that the extent of the protection conferred by a
European patent is to be understood as that
defined by the strict, literal meaning of the
wording used in the claims, the description
and drawings being employed only for the
purpose of resolving an ambiguity found in the
claims (Art. 1 1st sentence of the Protocol on the
interpretation of Art. 69 EPC).
 …
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Scope of Protection
 …
 Nor should it be taken to mean that the claims
serve only as a guideline and that the actual
protection conferred may extend to what, from a
consideration of the description and
drawings by a person skilled in the art, the
patent proprietor has contemplated (Art. 1 2nd
sentence of the Protocol on the interpretation of
Art. 69 EPC).
 …
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Scope of Protection
 …
 On the contrary, it is to be interpreted as
defining a position between these extremes
which combines a fair protection for the
patent proprietor with a reasonable degree
of legal certainty for third parties (Art. 1 3rd
sentence of the Protocol on the interpretation of
Art. 69 EPC).
 …
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Scope of Protection
 …
 For the purpose of determining the extent of
protection conferred by a European patent, due
account shall be taken of any element which is
equivalent to an element specified in the claims
(Art. 2 of the Protocol on the interpretation of
Art. 69 EPC).
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Scope of Protection
 Determining the scope of patent protection
involves striking the balance between the
conflicting interests mentioned by the Protocol.
 It is the task of the courts to find criteria for a
determination of the scope of protection which
reconcile both demands.
 A suitable doctrine of equivalence cannot be
restricted to the meaning of the claim (read in
context) but is has to be based on and
orientated toward this meaning.
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Scope of Protection
 The instrument of choice here is the cognitive
faculties of a skilled person who endeavours
to analyse the patent claim on the basis of his or
her knowledge and skill in the art and uses the
description and the drawings to interpret the
claim.
 The scope of the patent is determined by this
person’s conclusions: It extends to any variant
that has been made obvious by the claim to
the person skilled in the art.
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Scope of Protection
 The conditions of equivalent means are as
follows:
 Same technical effect
 Obviousness to a skilled person
 Claim-based considerations.
 These conditions are defined in more detail in the
three Schneidmesser questions:
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Scope of Protection
BGH, 12 March 2002, 150 BGHZ 149 = ENPR 2003, 309
= 33 IIC 873 – Schneidmesser I (Cutting Blade I)
 Does the modified embodiment (the variant) solve the
problem underlying the invention by means which
have objectively the same technical effect?
 Was the person skilled in the art enabled by his or her
expertise on the priority date to find the modified
means as having the same effect?
 Are the considerations that the skilled person has to
apply in order to find the modified means based on
the technical teaching of the patent claim?
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Scope of Protection
BGH, 10 May 2011 – X ZR 16/09, GRUR 2011, 701 –
Okklusionsvorrichtung (Occlusion Device)
…
 If the patent specification discloses in the description
different ways of reaching a technical result but
claims only one of these ways the use of the other
ones as a rule constitutes no infringement by
equivalent means.
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IV. Infringement
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Liability
 Debtor of the claims for injunction and damages
is the infringer of an IP right.
 Infringer means not only the person that
produces, sells or offers the IP protected
product.
 A person may also be liable if he or she enables
a third party to infringe the IP right or supports
a third party's infringing action.
 Intention is not necessary, negligence may be
sufficient for liability.
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Liability
BGH, 17 September 2009 – Xa ZR 2/08, 182 BGHZ 245
= GRUR 2009, 1142 – MP3 Player Import
 A person who personally produces, sells or offers
the product protected by an IP right is not the only one
who can be regarded as infringing the IP right. A
person may also be liable if he or she enables a third
person to infringe the IP right or supports the third
person's infringing action, although he or she could
without unreasonable efforts identify his or her
contribution as interfering with the rightholder's
absolute right.
…
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Liability
BGH, 17 September 2009 – Xa ZR 2/08, 182 BGHZ 245
= GRUR 2009, 1142 – MP3 Player Import
…
 An international forwarding agent is not generally
obliged to check the forwarded goods for potential IP
infringement.
 But the agent may be obliged to query the
compliance with patent law and examine the
question of infringement as soon as specific
indications for IP infringement are presented to
him or her.
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Infringing Product
BGH, 21 August 2012 – X ZR 33/10, juris – MPEG-2Videosignalcodierung (MPEG 2 Video Signal Encoding
Method)
 A sequence of encoded video data representing
successive frames of video images may be deemed a
product produced directly by a (encoding)
process which is subject matter of the patent (Sec. 9
no. 3 German Patent Act).
 Legal protection of a video data product produced
directly by a patented process extends to any data
medium (e.g. DVD) which contains the data
sequence stored on the medium.
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V. Procedural Issues
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Assertion and Evidence
 The claimant shall assert and prove the facts
that are to support claimant's claim
interpretation and the alleged infringement.
 The court shall urge the parties to true and
complete statements of all relevant facts.
 If necessary the court may ex officio appoint an
expert.
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Assertion and Evidence
BGH, 22. December 2009 – X ZR 56/08, 184 BGHZ 49 =
GRUR 2010, 314 – Kettenradanordnung II (SprocketWheel Configuration II)
 If the parties' assertions lack sufficient details about
the factual circumstances relevant for the
understanding of the technical teaching of the
invention and the education and experience of the
skilled person that may influence that understanding
the court shall urge the parties to complete their
statements.
…
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Assertion and Evidence
BGH, 22. December 2009 – X ZR 56/08, 184 BGHZ 49 =
GRUR 2010, 314 – Kettenradanordnung II (SprocketWheel Configuration II)
…
 Even if the parties agree on the facts they deem to be
relevant to comprehending the technical background of
the invention the court may ex officio appoint an
expert.
 If the trial court refrains from appointing an expert its
decision may be subject to judicial review by the
Federal Court of Justice.
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Leave to Appeal
 Divergent Interpretation of the claim in patent
revocation or nullity proceedings on the one hand
and infringement proceedings on the other hand
may give reason in the German bifurcated
system for granting leave to an appeal on
questions of law (Revision) in order to ensure
uniform application of the law.
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Leave to Appeal
BGH, 29 June 2010 – X ZR 193/03, GRUR 2010, 858 –
Crimpwerkzeug III (Crimping Tool III)
Leave to appeal has to be granted if the Higher
Regional Court has based its decision in infringement
proceedings on an interpretation of the patent claim
that deviates in a relevant point from the claim
interpretation applied by the Federal Court of Justice in
patent nullity proceedings.
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Amended Claims
BGH, 18 March 2010 – Xa ZR 54/06, GRUR 2010, 709 –
Proxyserversystem (Proxy Server System)
The patentee is not entitled to amend the patent claims
in revocation proceedings if the amended claims are not
clear and concise and therefore do not comply with the
requirements of Article 84 EPC.
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Right to be heard
BGH, 8 September 2009 – X ZB 35/08, GRUR 2009,
1192 – Polyolefinfolie (Polyolefin Foil)
The right to be heard is violated if the Federal Patent
Court revokes the patent because its subject-matter is
not patentable and bases the revocation on a prior art
document the opposing party has mentioned for the
sole purpose of supporting a different opposition
ground.
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Right to be heard
BGH, 15 April 2010 – Xa ZB 10/09, GRUR 2010, 950 =
BlPMZ 2010, 324 – Walzenformgebungsmaschine
(Drum Moulding Machine)
 German courts have to take account of decisions
rendered by other national European courts or by
the Boards of Appeal of the European Patent Office and
relating to substantially the same question. They have,
where necessary, to consider the grounds that led
the other court to a different decision.
 This rule also applies to questions of law, for
instance the question as to whether the invention was
obvious to a person skilled in the art.
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