1 20 IIC 80 (1989) AUSTRIA "Lock Systems" 1. The solution defined in patent claims taken in combination with the problem that is solved determines the nature and scope of patent protection. The deciding factor is not what was invented, but what was claimed and granted. This principle is also applicable in the case of a claim to a combination of components even though protection could have been sought for individual parts or elements of the invention. 2. As a matter of principle, the preamble of a claim should state the technical field and the subject matter of the invention, whereas the characterizing part should cite the new features of the solution. For the determination of the subject matter of a patent having many elements it is, however, irrelevant whether an element is defined in the preamble or the characterizing part of the claim. Decision of the Supreme Court (Oberster Gerichtshof) April 22, Case No. 4 Ob 319/86 From the Facts: The plaintiff manufactures and sells special cylinder and safety locks and is the owner of Austrian Patent No (patent term beginning April I5, 1977) and No (patent term beginning March I5, 1978), which concern "key-lock combinations". The first defendant, whose principal place of business is the Federal Republic of Germany, manufactures key blanks which locksmiths use to produce keys for various kinds of locks. The defendant offered, in a catalogue supplement, cylinder key blank B No. 1366, which fits the cylinder locks of the plaintiff, and sold approximately 115 key blanks of this type to the second defendant, who distributed these key blanks to locksmiths. The claims of the plaintiff's patent state (Austrian Patent No ): 1. Key-lock combinations, especially in the use of flat keys in cylinder locks for lock systems, whereby the key and keypath comprise within a lock system one unchanging basic shape and one variable shape (which together make up the total shape), and the basic shape (shape elements A, B, C) as well as the variable shape (shape elements o, p, q, r) are designed to be divided between the effective key usages, characterized in that starting from a theoretical unified shape, in the form of zig-zag patterned rhombs directly adjoining one another, that are joined laterally in the cut parts of the key (6, 7) over the total height of the rhomb with the shape elements (A, B, C, o, p, q, r), which are arranged crosswise to the cut part of the key along lines (6, 7)... It is noted in the description in the patent that similar key-lock combinations, whose unchanging basic shape is always in the same place (namely the back portion of the key), are already known. Because of this, the known locks have a limited variational ability and the unauthorized production of copied keys is relatively easy. This drawback is avoided by the described invention. The keys of the invention make the whole cross-sectional shape available for a number of unchanging basic shapes and variable shapes.
2 The plaintiff alleges that the distribution of the indicated key blanks by the defendant constitutes an infringement of all the claims of Austrian Patent No and Claims l and 3 of Austrian Patent No The shape of these key blanks corresponds to the shape of the plaintiff's keys, internally coded 345/15, and works in all the plaintiff's locks having this code..,. The plaintiff demands that the defendants - the first defendant only for Austria - be prohibited from putting the key blanks into circulation and selling them and that they be prohibited also from producing flat keys for cylinder locks where the key and the ' key opening comprise within a lock system one basic invariable shape and one variable shape, which together make up the total shape, and both the basic shape as well as the variable shape are designed to be distributed over the range of key usages..,. The plaintiff combines therewith a petition for an accounting and destruction (of the infringing key blanks) with a demand for damages based on the accounting and for authority to publish the judgment. The first defendant submitted that there was no infringement of the plaintiff's rights. The subject matter of the patent was the key-lock combination for lock systems. The purpose of such systems is to allow different key owners entry to one, several, or all locked rooms; the keys at the lowest level fit one lock, the keys on the next level fit two or more locks, and the master key fits all the locks of the systems. The structure of the plaintiff's lock system is based on a system of shape variations (of the keys). According to the patent claims, the united shape of the key and the key opening of a lock system is derived from combining an unchanging basic shape with a variable shape. The object of the plaintiff's protection, therefore, is the lock system and not one single key which is characterized by this system. A single key has a certain unchangeable shape. Those keys made from the key blanks put into distribution by the defendant could only be made to fit one lock... The trial court dismissed the plaintiff's claim... The Court of Appeals overturned the judgment of the trial court and remanded the case back to the trial court for a new trial and judgment. While the appeal on the law by the plaintiff remained without success, the Supreme Court reversed the decision of the Court of Appeals and upheld the judgment of the trial court. From the Opinion: The trial court inferred from the description of the plaintiff's two patents, that they are concerned with lock systems and not single locks and a "masterkey" can only occur within a lock system. The disadvantages relating to the prior art of lock systems should, according to the patent, be avoided by the protected invention in that shape variations can be formed in the manner defined in the patent claims... The Court of Appeals upheld the decision of the trial court that the protection of the plaintiff's patents was limited to lock systems, and that the plaintiff did not ask for protection for a single key-lock combination; however, protection extends to both integral components, namely the key together with the lock... The objection raised by the defendant against the Court of Appeals' decision is justified, not, however, the appeal on the law of the plaintiff. The subject matter of the invention, within the meaning of Sec. 22 (1) of the Patent Act is the solution defined in the patent claim in connection with the stated problem. The claim deter-
3 mines the extent of protection granted to the patentee - the so-called "scope of protection" of the patent. The deciding factor is not what was invented but only that for which protection was sought in the claims and granted (see FRIEBEL-PULITZER, "Österreichisches Patentrecht" 190, 191 et seq.; Supreme Court decision of March 4, 1980, 4 Ob 408/79 - Werkzeughalter für Bohrhämmer, 1980 ÖBl. 121, with further references; Supreme Court decision of April 3, 1984, Case No. 4 Ob 321/84 Befestigungsvorrichtung für Fassadenelemente, 1985 ÖBl. 38). Because patent applications (in particular the formulated patent claims) are declaratory acts, they should be construed according to the common rules relating to the interpretation of legal declarations (see FRIEBEL-PULITZER, loc. cit., at 192 et seq.; Werkzeughalter für Bohrhämmer, loc. cit.; Befestigungsvorrichtung für Fassadenelemente, loc. cit.). Accordingly, it is permissible to take into reasonable consideration the description of a patent specification in order to clarify a vague definition, because the interpretation of the scope of the patent, like the interpretation of other legal declarations, does not rely on the wording, but rather on the meaning of the patent claim. From the wording of the preamble of the claims of the plaintiff's patents and the content of their descriptions, both lower courts came to the conclusion that neither patent protects individual locks (with respective keys) but only a certain arrangement of lock systems. The socalled preamble of a patent claim should specify the technical field and the subject-matter of the discovery, to which the invention defined in the characterizing part of the claim relates (see BENKARD, "Patentgesetz" 696; Patent Court decision of June 11, 1938, 1938 PBl. 108; also Patent Office decision of March 13, 1972, 1973 PBl.7). The characterizing part defines the new elements that provide the solution. For the proper assessment of the invention one must therefore proceed from the preamble as an essential part of the definition of the invention (Patent Court decision of June 11, 1938, 1938 PBl.108). However, a different arrangement of the claim does not basically influence the interpretation. For the subject-matter of a patent consisting of several elements it is also insignificant whether an element is stated in the preamble or in the characterising part of the claim, i. e. placing one or more characteristics in the characterizing part of the claim is not proof that the invention lies only in this part (BENKARD, loc. cit., at 410 et seq.). The expression "key-lock combinations," as is made clear in both patent documents in their references to existing publications (especially DE-AS ), includes masterkey systems (central lock systems), as well as systems composed of several (similar) locks that have a system of higher and lower-order keys (so-called "key hierarchy"). The claim of the plaintiff, that patent protection extends to individual keys, cannot be inferred from the following words: "Key-lock combinations, especially by use of flat keys in cylinder locks for lock systems, whereby.,.;" also the interpretation of patent claims takes precedence when determining the meaning of an unclear expression. The restriction of patent protection to "lock systems" (masterkey systems = central lock systems), is clearly derived from expressions contained in the preamble of the claims of both the plaintiff's patents, that "in the lock system the key and key opening have one unchanging basic shape and one variable shape, which together comprise the total shape. " A variable shape (which together with the invariable basic shape comprises the total shape) for a single key and a single lock, is not to be found: such a conception not being applicable to since locks. The distinguishable basic shape and unchanging shape presupposes a comparison with several keys within a key hierarchy. Such a hierarchy must have at least three keys, two for individual locks and one master key, which master key can be used in both locks. The restriction of the invention to lock systems also emerges from the stated goals of both patent documents. Both documents start from the known state of the art. They refer to disadvantages that arise from the key-lock combinations that are already known, namely that a certain part of the key (in the area of the back of the key) always forms a basic
4 shape with which the variable shape is associated, and that this basic shape does not offer the possibility of any variation, which sharply restricts the number of different key-lock possibilities. These disadvantages are avoided by the development of the key system of the patents of the plaintiff. In accordance with Austrian Patent No , it is necessary for the invention that both types of shapes are arranged in different sections of the whole sphere of keys, whereby these shapes can be joined together in any order without having the basic shape restricted to the back of the key. In accordance with Austrian Patent No , it is essential that these shapes are designed to be packed within one another, so that on either side of the key at least one portion of the basic shape lies between two portions of the variable shapes (and vice versa). The inventive and improved aspects set out in the two patents of the plaintiff are therefore based on properties which can only concern key systems (key hierarchies). It certainly does not mean, as the Court of Appeals properly pointed out, that the manufacture (or sale) of a single key (or even single key blanks) can be said to encroach upon the (keylock combination) patents. The underlying basis of thought of Werkzeughalter für Bohrh"mmer, loc. cit., can be derived, however, from the Court of Appeals' application of the patent law concept to "part protection," by which is meant specifically protection for so-called combination patents (cf. BENKARD, loc. cit., at 463 et seq.; FRIEBEL-PULITZER, loc. cit., at 207 et seq. The decision Werkzeughalter für Bohrhämmer is based on the same patent, in which protection was applied for in the claims for a tool holder (for jackhammers) as well as for the tool (the jackhammer) for which the holder was made. Naturally, the tool was defined differently than the holder. The appellate court at that time overruled the objection of the defendant - that the tool jackhammer) could be used with holders other than that of the plaintiff's protected holder - and held that both protected components of the invention depended upon one another and therefore each deserved protection. In the present case the situation is different because the plaintiff did not file claims for patent protection for keys only with certain shapes. What was asked for was more in the nature of protection for shape variations, which presupposes a key hierarchy. As is explained above, the protection sought in a patent application cannot exceed the prevailing interpretation of what the scope of protection is for in the patent. The owner of the patent will not receive greater protection beyond what is applied for (FRIEBEL-PULITZER, loc. cit., at 190). This also applies if protection could have been established in the claims for single parts or elements of an invention. Here then, the deciding factor is not what could have been protected but what, according to the wording of the claim, is really protected (FRIEBEL- PULITZER, loc. cit. at 207, 209; Supreme Court decision of March 11, 1975, 4 Ob 305/75, Ankerbolzen, 1975 OBl. 137, with further references). Nevertheless, it should also be remembered that immaterial changes do not diminish the scope of protection (FRIEBEL- PULITZER, loc. cit., at 207). The use of one part of a device defined in a claim can result in an infringement when the subject-matter of the claim is realized by that part, the remainder of the claim being for obvious and economically useful supplements, which display no particularities (BENKARD, loc. cit., at 463). This is not the case here. Both patents protect key-lock combinations as a single entity, composed of locks and key hierarchies. The keys and corresponding openings in the locks are characterized by the formation of certain shape variations; in Austrian Patent No through the boxed arrangement, within one another, of the basic and variable shapes, and in Austrian Patent No through the continuance or the taking away of shape elements. Also, in the characterizing part of Austrian Patent No , reference is made to characteristics through reference to shape elements A,B,C (which make up the basic shape, according to the preamble) and o,p,q,r (which comprise the variable shape according to the pream-
5 ble), which are not in the characterizing part for any one particular key shape, but rather whose characteristics are described according to the variational possibilities of key systems. The inventive advantages of this system, next to ease of production, lies essentially in that a) in comparison to known key systems the number of possible variations will be increased considerably, and b) with the not easily recognizable basic shape, it will be more difficult to duplicate an upper level key from a lower level one. These objectives are attained in that a) both types of shapes are arranged separately over the whole range of keys (or key heights) and the basic shape can be arranged in any order; and b) in Austrian Patent No the not easily recognizable groove shapes for the main shape (basic shape), whose form and number are variable, can be made more variable. From these objectives and their solution it follows that the mere description of certain key shapes - in Austrian Patent No the subject is the boxing of the shapes within one another - does not render the special properties of the inventions recognizable, because their nature lies in the specific formation of shape variations with an arbitrary placement of ordered basic shapes within a key hierarchy. The invention, therefore, resides in a combination solution; and not in the fact that the subject-matter of the infringement, which in Austrian Patent No is a mere part feature, has the shape profiles in the form of zig-zag patterned rhombs directly adjoining one another. That this shape does not constitute the essence of the invention is made clear from the fact that Austrian Patent No refers to publication DE-AS having claims directed to similar basic key shapes although expressed in other terminology. Even the characterizing features of the main claim of Austrian Patent No cannot be read into the disputed single key blanks, because the arrangement of shape elements of the basic shape between two shape elements of the variable shape is the essence of the invention that can only be achieved through a key hierarchy; this essence of the invention cannot conceivably exist in the infringing subject-matter. In addition, partial protection is out of the question. An individual key blank that, through its shape ("zig-zag patterned rhombs directly adjoining one another"), can be cut so that the resulting key fits a lock in the patented key-lock combination does not infringe the plaintiff's patents because of this feature. These patents concern arrangements of key systems and thereby all the particular individual keys that are in the key hierarchy. It is therefore insignificant whether an individual lock fits such a key, which can be developed through the application of the technical teaching in the patents to fit a patentprotected central lock system. Because the action deals with patent infringement (Patent Act, Secs. 147, et seq. ), the questions relating to the impairment of the security of the plaintiff's lock systems by the marketing of key blanks that can be cut to fit these locks are not legally relevant. When it comes to systems for which, as the plaintiff states, keys can only be copied upon presentation of a document of entitlement for authorized locks, the fears of the plaintiff regarding injury to its system are not comprehensible. If one assumes a systematic observance of these security rules, then the disputed key blank, "B No. 1366," could only be used for authorized owners of existing lock systems supplied by the plaintiff. In cases of need (to replace an unusable or lost key) these key blanks would be used to make "authorized" copies. The use of such an expediency falls within the legal rights of the purchaser of a patent-protected article. Usage consists of the usual measures: setting to work, care, and repair (BENKARD, loc. cit., at 339).
6 This Court must consequently uphold the judgment of the trial court (Code of Civil Procedure, Sec. 519 (2), sent. 2). With its appeal against the lower court's judgment, the plaintiff also objected to erroneous facts and circumstances and a defective appeal; attention to this objection by the Court of Appeals is not needed, because it has not touched upon any substantial points upon which a decision could be based. The interpretation of the scope of patent protection is, in the present case, a far-reaching legal question that can be solved on the basis of the trial court's determination and the content of the patent claims. For German-language version see 1986 ÖBl 147. H.C. Comment: It is interesting to note that independently of one another the Austrian Supreme Court and the German Federal Supreme Court had to deal with situations of claim interpretation in patent infringement proceedings which greatly resemble each other 1. While in the German case the infringer supplied radio receivers which he regarded as part of a combination of a broadcasting system, in the Austrian case a combination claim was involved for which partial protection for a combination used in this combination (lock systems) could not be claimed. Similar to the German patentee who correctly alleged that the defendant's radio receivers were purposely manufactured to fit within the patented broadcasting system, the Austrian patentee could prove that the keys of the alleged infringer fitted directly into a precise combination lock manufactured according to his patent. That both actions were dismissed (in the German case in all three instances, in the Austrian case with the exception of the Court of Appeals) shows that harmonization among the EPC Member States has been reached to a great extent with respect to the European interpretation rules on patents (Art. 69 EPC). For German and Austrian patentees this certainly results in a somewhat stricter claim interpretation and the necessity for patentees to draft claims carefully - and even fight for the wording with the examiner! The key phrase in the Lock Systems decision of the Austrian Supreme Court which equally would apply to German practice and which practitioners should keep in mind when drafting patent claims is the following: " [With respect to claim interpretation] the deciding factor is not what was invented but only that for which protection was sought in the claims..,. The owner of the patent will not receive protection which would go beyond what was requested. " Jochen Pagenberg* *) Dr.jur.; LL.M. Harvard; Attorney-at-Law, Munich; Member of the Staff of the Max Planck Institute for Foreign and International Patent, Copyright and Competition Law, Munich. 1 See German Federal Supreme Court 19 IIC 811 (1988)-Radio Broadcasting System; cf. PAGENBERG, "New Trends in Patent Claim Interpretation in Germany - Good-bye to the 'General Inventive Idea' " 19 IIC 788 (1988).