Infracción, litigios y nulidad en Alemania, y su transcendencia a la hora de redactar solicitudes de patentes

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1 Infracción, litigios y nulidad en Alemania, y su transcendencia a la hora de redactar solicitudes de patentes P. Miltényi Maximilianstr. 58, München, Alemania Lunes de patentes, Barcelona, 30 de mayo 2005

2 Overview 1. Infringement, scope of protection, literal scope 2. Equivalent scope of protection 3. How to infringe, how not? 4. Litigation, claims, nullity proceedings 5. Calculation of damages

3 1. Infringement 1. Infringement Legal Basis: European Patent Convention, Protocol on Art. 69 German Patent Law (PatG, IntPatÜG) Code of Civil Procedure (ZPO)

4 1.1 Infringement EPC: Art. 64, Infringement determined by national law However: Art. 69 EPC, ( Scope of Protection ) Protocol of Art. 69 as part of EPC (renewed version in EPC 2000), PatG: 9-14 PatG (German Patent Law)

5 1.2 Significance of Claims Art. 69, 14 PatG: Scope of protection defined by the claims; description and figures for interpretation Protocol on the interpretation of Art. 69: Scope not defined by strict, literal meaning of claims Claims not only a guideline for determination of scope by description Scope somewhere in the middle?? BGH (German Federal Supreme Court): Protocol applies to 14 in same way => No difference between German parts of European Patents and German patents (see also Art. 64 (1) EPC)

6 1.3 Milk Foam Case Prior art: Barman stirs milk in can by moving can and vapour is led through pipe into milk for producing milk foam for coffee. Idea: machine for making milk foam.

7 1.4 Milk Foam Case nozzle air vapour Suction chamber milk Mixing chamber foam outlet Claim:... suction chamber with an air intake open to atmosphere and a milk intake connected to a milk source so that the Venturi effect sucks in the milk and air into the suction chamber...

8 1.5 Milk Foam Case Embodiment in question: Air pump vapour milk Claim:... suction chamber with an air intake open to atmosphere and a milk intake connected to a milk source so that the Venturi effect sucks in milk and air into the suction chamber...

9 1.5 Milk Foam Case Embodiment in question: Air pump vapour milk No infringement in two instances: Problem with claim: very narrow without reason due to prior art; describes a working embodiment; no abstraction claim features not limited to essentials of invention

10 1.6 Significance of Claims Determination of scope of protection: 1. Literal scope of protection 2. Equivalent scope of protection

11 1.7 Literal Scope 1.1 Interpretation of claim wordings 1.2 Comparison with embodiment in question Not sufficient to just read the claim Claim interpretation already required when judging literal scope of protection

12 1.8 Sources for Interpretation Interpretation of claim wordings Sources for interpretation: Description, figures (Art. 69 EPC, 14 PatG) Other claims, in particular dependent claims Prior art (see description and cover page of patent) Decision of nullity or opposition proceedings - If patent restricted, passage in decision replaces part of description - If patent not restricted, interpretation is important expert view, which is, however not binding (BGH 1998, Regenbecken - Rain basin )

13 1.9 No Source for Interpratation Interpretation of claim wordings No source for interpretation: Abstract (Art. 85 EPC) Reference signs in claim (Rule 29 (7) EPC)) File history: original application, statement by party during prosecution, opposition or nullity proceedings towards patent office or court are not to be taken into account. Critics: Interpretation of laws take history into account However, lastly confirmed in BGH 2002 Kunststoffrohrteil ( Plastic tube part )

14 1.10 Literal Scope Interpretation of claim wordings General Rules: Term or formulation in claim has usual technical meaning as understood by person skilled in the art (textbooks, dictionaries, technical experts). Interpretation based on patent of term or formulation may, however, lead to a different meaning ( Patent is its own dictionary ). Case: Spannschraube, Tension Screw

15 1.11 Case: Tension Screw Prior Art 1. DE : Screw swivels into closing position 2. DE : Screw through inner hole Problem:...pipe clamp that can be handled with very short tension screw...

16 1.12 Case: Tension Screw New Solution: Claim:..., the head of the tension screw is capable of being inserted [..] through a hole axially with respect to its central axis and held there by means of a washer with an elongated hole open at one end and which is introduced before tightening between head and flange.

17 1.13 Case: Tension Screw Contested embodiment of defendant (EP ) : the head of the tension screw is capable of being inserted [..] through a hole axially with respect to its central axis and held there by means of a washer with an elongated hole open at one end and which is introduced before tightening between head and flange.

18 1.14 Case: Tension Screw FR: CH: DE: District Court Paris: No infringement Commercial Court of Canton Zurich: Infringement Appeals Court of Canton Zurich: No infringement First instance: Infringement Second instance: No infringement Case taken to supreme court (BGH) as appeal on the law

19 1.15 Case: Tension Screw BGH: Interpretation of introduced : Understanding from claim only: Infringement However, person skilled in the art will try to determine what is to be achieved by the disputed feature introduced in terms of the invention Prior art: long screws due to unfavourable movement between screw and flange => relative movement between washer and screw head of importance Person skilled in the art concludes: introduced means inserted into tightening position along straight line along a flange surface => No infringement

20 1.16 Case: Tension Screw Conclusion: Formulated problem and solution (claim) did not fit. Claim interpreted up to interpretation which solved the problem. Careful formulation of problem, stay as general as possible. (In patent prosecution the formulated problem is usually not taken into account.)

21 1.17 Case: Tension Screw Critics: Analysis of literal infringement (considering function) relates to same arguments as equivalent infringement. Earlier decision ( Fixing means II, Befestigungsvorrichtung II ): If embodiment shows feature as in claim, in general, there is no need to consider purpose, effect or function thereof, (even if purpose is stated in claim). More recent decision (BGH 2004, Separation device at the bottom, bodenseitige Vereinzelungsvorrichtung ) Interpretation may not lead to a widening or narrowing of the subject matter literally defined by the claim.

22 1.18 Summary Take care when formulating: 1. claims 2. the problem 3. disadvantages of the prior art 4. advantages to be achieved by the invention

23 2.1 Equivalence General: One or more features are not given literally: Contested embodiment still within scope of protection if: 1. altered means of contested embodiment achieve same effect 2. altered means were obvious for skilled person 3. skilled person would have considered altered means of equal value with those of literal meaning of claim. (Supposed to be the same as three Catnic question) No equivalent infringement, if contested embodiment obvious in view of prior art (Formstein objection).

24 2.2 Equivalence Question 1: Does contested embodiment with altered means achieve same effect? Answer has to be based on the effect the invention as a whole wishes to achieve as mentioned in patent, not on effect of particular feature in question (BGH Frying cutlery - Bratgeschirr ).

25 2.3 Case Car wash device Example: BGH Car-Wash Device, Autowaschvorrichtung - Prior art: brushes to clean car sides electric, hydraulic, pneumatic means for pressing brushes to car sides; requires control means, switches, etc. - Disadvantage: Many breakdowns due to control means failure - Problem: 1..., 2..., 3..., 4..., 5. brush movement independent of external energy 6. eliminate hydraulic, pneumatic, electronic or electromechanical control means

26 2.4 Case Car wash device Figures:

27 2.4 Case Car wash device Figures: brushes

28 2.5 Case Car wash device Claim:... [first] rope winch catches rear brush front brush loaded with further rope winch weight of [first] rope winch larger than that of further rope winch.

29 2.6 Case Car wash device Contested embodiment: all the same, except different weights for return movement of brushes a small electric motor provided ( No control means for pressing brushes to car sides!) Question 1 of equivalence test: achieves same effect? No, since electric motor required and problem was to eliminate such. Conclusion: Don t exclude anything in the problem. It is sufficient if problem refers to little improvement only without wanting to achieve the absolute ultimate best effect.

30 2.7 Question Obvious Question 2: Were altered means obvious for skilled person? Same criteria as for inventive step (BGH Befestigungsvorrichtung II - Fixing means II ) Altered means obvious infringement Altered means not obvious no infringement? Conclusion?: Contested embodiment is patented not obvious no infringement?

31 2.8 Question Obvious 1. Patenting of contested embodiment not binding decision for court. 2. Case: BGH Räumschild Snow plough attachment Quita nieves Figures: steel rubber, plastic + hard material

32 2.9 Case Räumschild Claim:...grains of hard material... Contested embodiment: rods of hard material Infringement test: Interpretation: grains different from rods no literal infringement Equivalence: a) achieves same effect: yes b) obvious:??

33 2.10 Case Räumschild Patent was granted for contested embodiment! Claim of granted patent: rods vertical orientation at least 50 % space filled with rods Question: was patent granted because of rods or because of vertical, 50 %

34 2.11 Case Räumschild Conclusion: It has to be carefully checked why patent on contested embodiment was granted Alternatives few step 1 Details grains step 2 vertical rods horizontal arbitrary many

35 2.12 Regarded as of Same Value Question 3: Would skilled person have considered altered means of equal value with those of literal meaning of claim? Is there any information in the patent as to whether something shall/shall not be protected? Case: BGH Custodiol II Medical liquid for surgery, 11 constituents, one of those: MgCl 10 2 Millimol /l Contested embodiment: MgCl 4 Millimol /l

36 2.13 Regarded as of Same Value Infringement test: Literal infringement: No, 4 not in range 8 to 12 Equivalence: a) same effect: yes, concentration not critical b) obvious: yes, skilled person knew that not critical c) regarded as of same value: no, too far away. No reasons in patent why possible range not claimed Public had to assume that tolerances ( 2 ) are relevant and have to be complied with strictly (medical application!). No infringement

37 2.14 Regarded as of Same Value Other Case: Schneidmesser I Cutting knife I Angle in claim: 9 12 Contested embodiment: 8 40 Infringement? literal: no equivalence: a) same effect: yes b) obvious: yes c) regarded as of same value: yes (very close) Infringement: yes

38 2.15 Formstein Objection If contested embodiment is regarded as equivalent it still may not be within the equivalent scope of protection if the embodiment is obvious in view of prior art (BGH 1986 Formstein - Shaped Stone ) Contested embodiment Literal scope of protection obvious obvious obvious Prior art Equivalence not obvious

39 2.16 Formstein Objection Formstein: If claim itself appears obvious in view of prior art, Formstein argument does not apply since patent has to be considered as valid in infringement proceedings. In practice very rare case. Take care: arguments for obviousness in view of prior art are often also arguments as to obviousness in view of patent!

40 2.17 Summary 1. Interpretation of claim wording 2. Check or literal infringement 3. Check of equivalent infringement same effect? obvious? regarded as of equal value? 4. Formstein objection

41 3.1 Infringing Acts How to infringe a patent?: Apparatus claim: 1. make 2. offer 3. put on the market 4. use 5. import for purpose 2 to 4 6. own for purpose 2 to 4

42 3.2 Infringing Acts Method claim (use claim is method claim): perform method offer to perform method protection for products directly obtained by method (Art. 64 (2) EPC) (offer, put on the market, use, import, own)

43 3.3 Allowed Acts How not to infringe a patent: Allowed are : acts done privately and for non-commercial purposes technical experiments individual preparation of medicine in a pharmacy acts allowed according to Paris Convention (aircrafts, ships etc.)

44 3.4 Prior Use Right A patent shall have no effect against a person who at the time of filing of the application had already begun to use the invention in Germany, or had made the necessary arrangements for so doing. Thereby the invention may be used as necessary. This right can only be inherited or transferred with the business.

45 3.5 Exhausting of patent Patent right exhausted of those devices which are put to the market inside the EC, EEA (European Economic Area) by or with consent of the patentee.

46 3.6 Indirect Infringement Prohibition of: supplying or offering to supply in Germany to a non-entitled person a means which relates to an essential element of an invention for exploitation of the invention in Germany if it is known, or obvious from the circumstances that such means are suitable and intended for exploiting the invention. (Production for export allowed!)

47 4.1 Claims of Patentee The patentee may claim: injunction (for the future) compensation (for the past from laid open application to grant) (see also Art 67 EPC) payment of damages (for the past after grant + 1 month) providing information concerning sales (rendering accounts), products, origin, distribution channels, etc. destruction of products

48 4.2 Claims of Patentee Infringement court usually only determines an obligation to pay damages but does not fix its amount grants claim to render accounts in order to enable determination of damages If no agreement on damages to be paid can be achieved, new proceedings have to be instituted for fixing height of damages only. (In worst case there are three lawsuits: infringement, height of damages and nullity)

49 4.3 Litigation, Overview Steps: Infringement Nullity 1. (Inquiry to right to use invention) 2. (Warning letter) 3. Infringement action 1. instance 1. Nullity action 1. instance 4. Appeal (2. instance) 2. Appeal 5. Appeal on the law (3. instance) No nullity objection in infringement proceedings!

50 4.4 Litigation, Preparation Steps: 1. Inquiry to right to use patent: Informal discussion about infringement and validity, no threat! 2. Warning letter, certain requirements such as: explicitly expressing wish to stop infringing action, best by requesting undersigned acceptance of obligation to stop setting reasonable term threat to use help of court Unlawful warning letter may cause obligation to compensate damages: Can be avoided by prior informal discussion Immediate accepting claims of infringement action obliges plaintiff to pay costs: Can be avoided by warning letter

51 4.5 Litigation, Preparation Careful consideration of use of informal discussion and warning letter due to: Torpedo If infringer is warned by future plaintiff he may deploy torpedo before infringement suit is filed and hence block infringement suit for several years. Torpedo: File suit in EC-country (preferably Italy or Belgium) at a court which is not competent for determination of non-infringement. Take case through all instances such that years pass by. Due to EC Regulation 44/2001 no other court within EC may deal with same matter such as e.g. normal infringement case.

52 4.6 Litigation, 1. Instance First instance (district court) responsible for determining facts and application of law Preferred court in Germany for infringement cases: Düsseldorf, also Munich, Mannheim,.. Free choice, if infringement in whole of Germany otherwise only court of location of infringer Representation by attorney at law only, patent attorney may plea. Number of cases: several hundred a year

53 4.7 Litigation, 1. Instance After filing of action defendant may respond within set term. Then usually only time for one reply by patentee. Oral proceedings are performed in order to arrive to final conclusion. If case considered clear by judges, opinion already settled in oral proceedings Oral proceedings take usually few hours only. Good preparation of case in written proceedings imperative! The plaintiff bears the burden of proof!

54 4.8 Litigation, 2. Instance 2. instance (appeal) at higher regional court: Responsible for checking of application of law only. No new facts may be introduced, unless specific circumstances apply. Decision taken after oral proceedings (usually short, few hours).

55 4.9 Litigation, 3. Instance 3. instance (appeal on the law) at BGH (Federal Supreme Court): Only possible if allowed by 2. instance, or appeal on decision not to allow appeal on the law successful Few cases a year, only on basic issues.

56 Nullity proceedings: 4.10 Nullity, 1. Instance Only competent court: Federal Patent Court (BPatG) in Munich; 200 new cases in panels with different technical background for nullity proceedings Panel with 5 judges, 2 legally qualified judges and 3 technically qualified judges Decision taken in oral proceedings. Reasons for nullity (see Art. 138 EPC + Art. 139 EPC)

57 4.11 Nullity, 2. Instance Nullity proceedings, 2. Instance: Only competent court: Federal Supreme Court (BGH) Responsible for determining facts and application of law (full 2. instance) Panel with 5 legally qualified judges, no technically qualified judge Often technical expert (e.g. university member) involved. Representation by patent attorney only possible in both instances.

58 4.12 Nullity Infringement Interrelation between nullity and infringement proceedings Nullity proceedings are completely independent of infringement. Infringement proceedings, however, may depend on nullity. Therefore: Infringement court is obliged to stay proceedings if: a) nullity or opposition proceedings pending and b) (very) high probability of success of nullity or opposition proceedings and c) infringement appears given.

59 4.13 Nullity Infringement Interrelation between nullity and infringement proceedings Question: 1. Infringement proceedings completed, claims of plaintiff granted, No more remedies given against final judgement. 2. Afterwards patent is revoked in nullity proceedings? The law: No answer! Case Law: Analogue application of one very rare exception such that remedy against final judgement is given (action for restitution) (Rare case since parties will behave according to situation.)

60 4.14 Cost Risks Cost Risk: Infringement action, value in dispute: (All values included attorney fees of both parties + court fees) 1. instance: approx instance: approx Nullity actions, value in dispute: (depends on whether attorney at law involved or not) 1. instance: instance:

61 5.1 Calculation of Damages In general three ways of calculating damages: 1. License royalties 2. Lost profits by patentee 3. Profits of infringer due to infringement

62 5.2 Royalties 1. License royalties: Steps: 1. Determine reference item 2. Determine appropriate royalty (in general a few percent) Reference item difficult to determine if composed item sold. Example: engine valve in car. Of advantage in any case for patentee if different items claimed in patent, here e.g. engine valve, engine and car. Calculation of damages based on royalties usually the easiest way.

63 5.3 Lost profits 2. Lost profits: Patentee has to prove, that he lost profits due to infringement. In general very difficult since many other factors influence sales. Further patentee has to lay open his internal price calculation. Not very attractive way for patentee to calculate damages.

64 5.4 Profits of Infringer 3. Profits of Infringer: Up to a few years ago: Infringer included all kind of costs in calculation, such that it appears that no profits were made.

65 5.5 Profits of Infringer Now: (BGH Gemeinkostenanteil, 2000) Only costs that can be directly related to infringement may be taken into account. Costs that can not be included are those which would have occurred anyway ( Anyway costs ) such as: Costs of employees, that were employed anyway. Machine or storage costs, that would have occurred anyway. Toothbrush case: profit = approx. 50 % of turn over (LG FfM) However, only profits due to infringement may be claimed check if profits may be due to other reasons such as good marketing. Toothbrush case: 17 % of turn over had to be paid by infringer.

66 Summary Summary: 1. Utmost importance of careful formulation of claims and description, in particular problem, advantages, disadvantages 2. Determining Scope of Protection 3. Forbidden and allowed acts 4. How to litigate, cost risk 5. Calculation of damages

67 Thank you!!muchas Gracias!! The key to the lock! Patentanwaltskanzlei Dr. P. Miltényi Maximilianstr München