Utility Model Act, Secs. 12a,19, third sent. - "Cable Duct" (Kabeldurchführung) *

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1 30 IIC 558 (1999) Germany Utility Model Act, Secs. 12a,19, third sent. - "Cable Duct" (Kabeldurchführung) * 1. In the proceedings concerning infringement of a utility model, which had been registered after January 1, 1987, it is also permissible to raise the objection that, in consideration of the state of the art, the embodiment contested as being an equivalent does not constitute an invention (supplement to 98 BGHZ 12, 1986 GRUR 803 [ 18 IIC 795 (1987)] - Formstein). 2. In the event that the defendant's request for cancellation has been dismissed, the examination as to whether or not the embodiment contested as being an equivalent constitutes an invention that qualifies for utility model protection with regard to the state of the art may not contradict the decision rendered in relation to the parties on the same question. Federal Supreme Court (Bundesgerichtshof), Decision X ZR 74/94 - "Cable Duct" (Kabeldurchführung) * From the Facts: The plaintiff is the registered owner of utility model No which is based on an application dated November 23, 1989, was entered in the register on January 11, 1990 and was disclosed publicly on February 22, The defendant initiated the cancellation proceedings. In a decision rendered on September 15, 1992, the German Patent Office, in accordance with the restricted defence by the plaintiff towards the end, cancelled the utility model in part, which meant that Claim 1 of the utility model then read as follows [see features of claim below].... The defendant manufactures, distributes and uses a cable duct device, SZ In the opinion of the plaintiff, the defendant uses subject matter of the features protected by the utility model, or at least uses an equivalent thereof. In accordance with the request filed, the district court enjoined the defendant from use, and ordered presentation of accounts and determination of damages. The court of appeals set this judgment aside and dismissed the suit. In its appeal on the law the plaintiff pursued its suit. The defendant opposed the appeal and, in view of a request for partial cancellation of the plaintiff's utility model filed by R. on November 11, 1996 at the German Patent Office, requested that the proceedings be stayed. From the Opinion: As a result of the plaintiff's appeal on the law, the decision appealed from was set aside and the matter referred back to the court of appeals. 1. According to the plaintiff's utility model, the hole provided in the wall of a switchboard unit so that a cable can be passed through together with an attached plug is generally covered by two plates that are placed over the hole on the left and right-hand side of the cable, so that they are adjoining. The plates have semicircular cut-outs which form a circular opening for the cable after the former have been adjoined. However, due to the joint between the two plates and the circular opening for the cable, this cover did not achieve the desired airtightness. In addition, the cable was not fixed in position; the plug in the switchboard unit was pulled out when even the slightest pressure was applied to the cable.

2 Proceeding from this state of the art and corresponding to the pertinent wording on page 2 of the description of the plaintiff's utility model, the court of appeals viewed the fundamental technical problem underlying the invention as being the provision of a device that ensured a high degree of air-tightness and that reduced the pressure on the cable. This problem, it held, was solved by Claim 1 of the plaintiff's utility model, which was divided into the following features: (1) Device for sealing a hole made in the wall of a switchboard unit for the purpose of passing through a cable into such unit, having (2) two parts which are positioned opposite one another each side of the hole on the exterior of the wall unit, (2.1) whereby a body made of foam rubber or artificial foam is attached to the interior of each of the two parts that enclose the cable, (2.2) whereby at least one clip for fixing the cable is attached to one of the two parts, and (2.3) the two parts are joined together by screws, characterized in that (3) the two parts are formed by the two parts of a two-part, right-angled casing, (3.1) which has at least one opening on the side that does not face the wall unit, (3.2) which has one opening on the side that faces the wall unit, (3.2.1) encircling the hole in the wall unit so as to pass the cable through, (3.3) in that the joint dividing the casing vertically (3.4) runs through the cable opening on the side of the casing that does not face the switchboard unit wall, (3.5) the clip for fixing the cable is attached to the interior of one of the two parts of the casing, (4.1) the screws that enter into threads provided for in protruding casements on the interior of one part of the casing hold the casing together and (4.2) the casing held together can be affixed to the wall unit. These findings of the court of appeals together with the analysis of the features do not show any apparent legal error. In the appeal on the law no objections were made in this respect either. 2. According to the further findings of the court of appeals, there is no difference between features (1), (2), (2.3), (3), (3.1), (3.2), (3.3), (3.4), (4.1) and (4.2) of the cable ducts SZ.2400 manufactured, distributed and used by the defendant and the subject matter according to Claim 1 of the plaintiff's utility model. Again, no objections to this finding, which is without legal error, were raised in the appeal on the law. 3. In the opinion of the court of appeals, the other features required under Claim 1 of the plaintiff's utility model are realized in an equivalent manner in the contested embodiment. The plaintiff alleges that features (2.1), (2.2), (3.2.1) and (3.5) are also present in the cable duct SZ.2400 in an identical form, and is correct in submitting that the factual determination necessary for the court of appeals to form its opinion was undertaken in a manner that was procedurally incorrect (Sec. 286 Code of Civil Procedure). a) As regards feature (2.1), the court of appeals held that it was "at any rate" present in an equivalent form. This permits the conclusion to be drawn that the court of appeals left open the possibility of an identical realization of this feature. As a result, to the benefit of the plaintiff in the appeal on the law, one must proceed from the assumption that with respect to

3 the contested embodiment the instruction to affix to the interior of each of the two parts a body made of foam rubber or artificial foam, which enclosed the cable, had been observed. b) With respect to features (2.2) and (3.5), the court of appeals held that in the contested embodiment, the clip serving to reduce tension was not attached to one part of the casing but attached within the casing by means of a closed form. Pulling out and to the side of the cable was thus prevented. It is true that the cable clip leaves a certain scope of movement at the third directional level; however, this was considered unimportant in view of the rigid fixing within the foam body and the lead-in through the opening in the back wall of the casing. In its appeal on the law the plaintiff argued that the court of appeals had relied on an incorrect understanding of the term "fastened." This objection is successful, since the interpretation of the plaintiff's utility model undertaken in this respect by the court of appeals was based on an insufficient foundation. In examining the infringement of a utility model (as regards patent infringement see, e.g., 125 BGHZ 303, 310, 26 IIC 261 (1995) - Segmentation Device for Tree Trunks, it is necessary to consider in detail the technical teaching that the average person skilled in the art derives from the claim. In this respect, the findings of the court of appeals are not sufficient. From its statements on features (2.2) and (3.5) concerning essentially the contested embodiment, it may be observed that the court of appeals clearly proceeded from the assumption that according to the meaning of Claim 1 of the plaintiff's utility model, the clip had to be fastened by way of a form-closed or force-locking fixing in all three directions. In contrast, in the grounds of its appeal the plaintiff had stated that in the contested embodiment the clips were situated in recesses in one part of the casing so that when the two halves of the casing were closed the clamps became fastened in the recesses and thus on the interior of one half of the casing. A certain scope for movement in the third direction was considered harmless. The court of appeals did not dwell on this argument. It failed to state why, according to the understanding of an average person skilled in the art, it was necessary to fix the cable so that it was immobile in all directions and why the same person, on the basis of Claim 1 of the plaintiff's utility model in conjunction with the description of the model, would not consider a form-closed joint that relieved the tension on the cable in an axial direction to be sufficient. It was not possible to omit this question, since the intention of the plaintiff's utility model also to relieve the tension on the cable contradicts the understanding underlying the decision rendered by the court of appeals (description page 2, para. 2, para. 3, in particular page 3, para. 2). It is true that in the embodiment example according to Fig. 1 of the plaintiff's utility model clips 18 and 20 are immobile in all three directions since they are fastened with screws 21 (description page 5, para. 2). However, Claim 1 of the plaintiff's utility model does not rely on such a fastening; as shown clearly in page 2, para. 2 of the description, one clip is provided for in order to fasten the cable. For this purpose immobile fastening in three directions is not automatically required. Two directions may suffice so as to secure the cable. In the case of minimal scope for movement in the third direction as exists in the contested embodiment, according to the findings of the court of appeals, further factual investigation by the court would have been necessary in order to deny a literal realization of features (2.2) and (3.5). c) In order to underscore its opinion that feature (3.2.1) was only realized equivalently in the contested embodiment, the court of appeals referred to the statements made in the decision rendered by the district court (Sec. 543(1) Code of Civil Procedure). The district court held that, according to the teaching of the plaintiff's utility model, the casing was not completely open on the side facing the wall unit, but that only one half of the casing was open. This opening was covered by foam material. However, the plaintiff's utility model did not specify the degree to which the foam material sealed the hole in the wall unit. One indication that it was not sealed completely is the fact that the hook-on mechanism had a profiled rubber ring as a seal. This seal would not be necessary if the pressed foam material blocks attached to the

4 interior of the casing were sufficient so as to seal completely the hole in the wall unit. This led to the conclusion that according to the invention the foam material blocks only represented one means of sealing, but not the only and entire one. Hence, the contested embodiment differed only slightly from the embodiment registered as a utility model. It had for sealing purposes a profiled rubber ring that together with the closed casing sealed off the hole in the wall unit. It may be assumed that the solution of the defendant also resulted in satisfactory sealing of the hole. The plaintiff was correct in objecting to the insufficient determination of the factual basis on which the trial judge interpreted the plaintiff's utility model. Neither the district court nor the court of appeals expressed an opinion on how the average person skilled in the art would understand feature (3.2.1) within the teaching according to Claim 1 of the plaintiff's utility model. In connection with this feature, the district court was content to rely on the configuration of the casing of the cable duct, without having shown previously that the plaintiff's utility model presupposed such a feature. In addition, the "sealing of the hole," considered to be essential by the district court, is not reflected in Claim 1 of the plaintiff's utility model, which has been upheld; neither the court of appeals nor the district court has explained why an average person skilled in the art has attributed to feature (3.2.1) a sealing by way of foam rubber or artificial foam, which according to feature (2.1) is to be affixed to the casing. 4. In view of the above, to the benefit of the plaintiff, it is to be assumed in the absence of substantial findings to the contrary that the contested embodiment realizes in an identical manner all the features of Claim 1 of the plaintiff's utility model, which has been upheld. Consequently, however, the defendant's reliance on the free state of the art, which has been deemed the decisive aspect by the court of appeals, does not come into question [citation omitted]. 5. In deciding the matter anew, the court of appeals will primarily have to determine the understanding, situated within the sphere of factual aspects, that a specialist having average knowledge and capabilities derives from the utility model claims which have been upheld, taking into account the description and the state of the art either imparted therein or belonging to his general specialized knowledge. In particular, such an understanding covers the technical ideas of the person skilled in the art in relation to the disputed features and their significance within the context of the combination of features protected under Claim 1 of the utility model. Since the subsequently necessary sufficient assessment of the right to protection according to legal criteria can only commence if and when the necessary basis has thus been determined, the court of appeals will also have to rely on its own expert knowledge if it again intends to do without the expert opinion that has been requested by the plaintiff [citation omitted]. The statements made in the grounds of the decision under appeal do not reveal sufficient knowledge on the part of the court of appeals that would enable it to render a decision on the issues that are capable of being proved and that, in view of the dispute between the parties, require presentation of evidence. 6. In the event that the court of appeals again concludes that the contested embodiment merely makes use of the features of Claim 1 of the plaintiff's utility model in part in identical form, and otherwise realizes the teaching through equivalent means, it will again have to address the objection raised by the defendant, namely that the contested embodiment had not been anticipated in its entirety in the state of the art, but that it had been suggested to the average person skilled in the art by the German disclosure document No , which had not yet been cited in the cancellation proceedings (so-called "Formstein" objection pursuant to the decision published in 98 BGHZ 12 [ 18 IIC 795 (1987)]). It is true that the plaintiff in the appeal on the law has expressed the opinion that taking this objection into account would contradict the meaning of Sec. 19, third sent., of the Utility

5 Model Act. According to this provision, in utility model law it is necessary to uphold the principles of the decision handed down by this Court in 1972 GRUR 597, Schienenhalter - according to which in cases in which the defendant uses the features of a utility model in a partly identical and partly equivalent manner, the only claim having any prospect of success is one according to which the subject matter of the protective right had been anticipated in its entirety in the state of the art and/or that the embodiment alleged to be an equivalent had been known as such as prior art. However, it is not possible to agree with this legal opinion expressed by the plaintiff. a) An inventor may only claim a reward in the form of patent or utility model protection for an inventive further development of the state of the art. The scope of protection of such a right is determined according to the content of the claims, which shall be interpreted with reference to the description and the drawings. Such scope of protection also covers certain closely related variations from the content of the claims determined in this manner, in particular socalled equivalents. This again can only be justified as a reward for an inventive further development of technology. Hence, in an individual case the scope of protection has to be oriented according to the scope of the further development of the technology achieved by a protected invention. Therefore, an embodiment which is contested as being an equivalent has to constitute a patentable invention when the state of the art is taken into consideration. An interested user cannot be prevented from using a teaching that derives directly from the state of the art, and that does not correspond literally to the protected teaching, but that might be incorporated into the scope of protection of the latter in the absence of restrictive reference to the state of the art. Initiation of nullity and cancellation proceedings cannot guarantee that the incorporation of such variations will be excluded. In such proceedings the teaching of the claims according to their literal meaning is examined as to its protectability. It is conceivable that such protection would be affirmed, but that the question of the protectability of the varied embodiment, which might be assessed differently, would remain open, since it is not the task of nullity or cancellation proceedings to clarify the scope of protection. This is the reason why, in relation to patents, the scope of protection of which is assessed pursuant to Sec. 14 of the 1981 Patent Act, this Court has allowed the objection according to which the embodiment contested as being an equivalent does not constitute a patentable invention with a view to the state of the art (98 BGHZ 12 - Formstein). Examination of this objection entails consideration as to whether or not the subject matter is really an equivalent embodiment vis-à-vis the teaching of the patent; the answer to this question may be negative if and when the issue of eligibility for protection in relation to the contested embodiment has to be answered differently and in its result negatively. Correspondingly, in utility model law, the principle necessarily applies that a defendant who is sued for infringement is able to have the action dismissed if and when he states and is able to prove that the embodiment contested as being an equivalent does not meet one of the requirements to be fulfilled by an invention according to Sec. 1 of the Utility Model Act, taking into account the state of the art. The reason for admitting the objection is given with respect to the exclusive protection conferred by a utility model as it is with respect to the grant of a patent. b) The objection that the contested embodiment did not constitute a patentable invention taking into account the state of the art is available to the defendant not only if it is claimed in relation to a utility model registered after July 1, 1990, but also where the infringement action is based on a utility model that - as in the case of the plaintiff's utility model - was filed for after January 1, In patent law the reason for allowing the objection without restriction was the fact that, in contrast to the legal situation prior to the year 1978 (cf. Art. XI, Secs. 1(1), 3(5) Act on International Patent Conventions) a new interpretation rule so as to determine the scope of protection had been developed in Sec. 14 of the Patent Act in order to

6 harmonize European patent law. The Utility Model Act also contains a provision corresponding literally to Sec. 14 of the Patent Act (Sec. 12a Utility Model Act). From a formal viewpoint, however, this provision is only applicable to utility models registered after July 1, 1990 (Art. 12(3) Product Piracy Act of March 7, 1990). However, it is not possible to derive from the above an objective reason for determining a different scope of protection for utility models that are based on a registration that was filed previously. Utility model law was approximated to the provisions of the 1981 Patent Act by means of the Act Amending the Utility Model Act of 1986 (1986 BGBl et seq.). Section 4(2)(2) of the Utility Model Act emphasizes the significance of the claims by stipulating that what is to be protected should be defined through the claims as being eligible for protection. As a result, the Utility Model Act was understood in the version pronounced on August 28, 1986, according to which the registered claims had priority in determining the scope of protection [citation omitted]. Consequently, Sec. 12a of the Utility Model Act did not create a new legal situation vis-à-vis the above, but simply clarified the requirement to treat utility models in the same manner as patents when determining the scope of protection. Whereas it was originally believed that it would be possible to do without a description of the scope of protection in emulation of Sec. 14 of the Patent Act (cf. short protocol of the 55th meeting of Committee for Economics of the German Parliament of October 18, 1989, annex 4, memorandum on No. 6), the expediency of anchoring a formal provision in the Utility Model Act arose as a result of the extension of utility model protection to all technical inventions with the exception of those concerning a process. c) Contrary to the opinion submitted in the appeal on the law, it is not possible to exclude reliance on the state of the art according to the principles of the Formstein decision, although the cancellation request concerning the plaintiff's utility model and filed by the defendant has been dismissed in whole or in part by a final judgment. The subject matter dealt with in cancellation proceedings is the issue of the existence of the right. The subject matter of the utility model forms the basis of the assessment (Sec. 15(1) Utility Model Act). Consequently, Sec. 19, third sent., of the Utility Model Act can only relate to the above. If the cancellation request is dismissed, then according to this provision, for relations between the parties, the existence of the utility model has been confirmed in binding form. Since a defendant is bound to the dismissal in the cancellation proceedings, in utility model infringement proceedings he or she is no longer able to dispute the eligibility for protection of the subject matter of a plaintiff's utility model by means of a citation that was not successful in the cancellation proceedings. In this respect, the grounds on which the citation was not taken into account in the cancellation proceedings are of no significance. In contrast, reliance on the state of the art in accordance with the principles of the Formstein decision requires examination as to whether or not the person skilled in the art was able to derive from the state of the art and without inventive step the contested embodiment which realizes the embodiment (merely) with variations, or whether it is not possible to determine this. The basis for this examination is not formed by the subject matter of the right, but, rather, by a diverging contested embodiment and anticipation thereof in the state of the art. Hence, the question to be addressed is fundamentally different from examination of the existence of a right. Therefore, a decision in cancellation proceedings that is binding in relations between the parties does not automatically prevent the scope of protection claimed by the plaintiff on the basis of his utility model being questioned by means of a citation, in particular as regards the contested embodiment. In this respect nothing in the legal situation has changed. In its decision dated March 14, 1972 (loc. cit.) this Court held that "the binding effect... only covers the existence of the utility model, not, however, the entire scope of protection conferred on a utility model" (emphasis added).

7 d) The prohibition on examining whether the subject matter of the utility model was suggested by the state of the art, after refusal of the cancellation request based on Sec. 15(1)(1) of the Utility Model Act, applies unreservedly in the infringement dispute of the parties of the cancellation proceedings. According to the allocation of competences as regulated under German national law, in the case of patents, examination of the patentability of a teaching applied for is not the task of the infringement judge, who is bound to the decisions rendered at the stage of grant procedure, opposition or nullity proceedings. Corresponding considerations apply to utility models, if cancellation proceedings have already been conducted between the parties, to the extent that the cancellation request was refused. Examination as to whether or not the contested embodiment constitutes a patentable invention with a view to the state of the art may not contradict the above. Since the judge in infringement proceedings must necessarily accept the right in its present form after the defendant's cancellation request has been refused, he also has to determine the scope of protection on this basis and may not separately answer the question of eligibility for protection of the contested embodiment. Therefore, the so-called Formstein objection is of no avail if its objective content is only directed against the eligibility for protection of the teaching which must be accepted as being eligible for protection. Due to the fact that each and every right, the protection of which has to be accepted on the basis of the allocation of competences in German law, has to have a reasonable scope of protection, in which respect the requirements of the interpretation protocol on Art. 69 of the EPC also have to be taken into account, the scope of protection may not be restricted to an extent that an interested user would transgress this scope with minimal, clearly obvious, yet in their result utterly insignificant variations, even in the face of justified reservations. An effective exclusive right would then no longer be guaranteed; the purpose of the protection to be accepted would be undermined. As a result, the attribution to the scope of protection of the embodiment contested as being an equivalent cannot be denied simply by deploying considerations that - when applied in the same manner to the subject matter of the right itself - would necessarily lead to the conclusion that the right confirmed by refusal of the cancellation request did not contain a technical teaching that was eligible for protection. Therefore, in the course of infringement proceedings between the parties of cancellation proceedings in which a final judgment had been rendered, upon the objection of the defendant it is necessary to examine primarily whether the state of the art cited is such that it suggests to a person skilled in the art the subject matter of the contested embodiment, especially with a view to the variations upon which the alleged equivalence with the subject matter of the utility model is based. If the defendant is unable to present or prove such features in the state of the art, then as a rule his objection will be unsuccessful. In the present case, the necessary examination will now have to be carried out by the court of appeals. Its findings do not address the question as to which configuration in the prior art might have stimulated an average person skilled in the art to form precisely the construction by which, in his opinion, the embodiment is distinct from the subject matter according to Claim 1 of the plaintiff's utility model as regards features (2.1), (2.2), (3.2.1) and (3.5), nor did the findings address the question why the subject matter of the contested embodiment might have been suggested to the average person skilled in the art on the basis of such a previously known configuration. In view of the nature of the device cited according to disclosure document No , findings on these questions are essential; it is necessary in this respect to arrive at a comprehensible factual determination and presentation of facts. The sealing system according to this published state of the art contains in the interior of the casing nothing other than the so-called receptive body consisting of flexible material (5), which on the one hand adjoins the cable (leads 2, 3) and on the other hand is pressed together by the casing which has the form of a frame. This may have demonstrated the possibility of

8 fixing a cable in the interior by pressing parts together; however, it did not point in the direction of using a cable clip in the interior containing the receptive body, or even to retain such a clip by means of a formed shape so as to prevent the cable from being pulled out or to the side. Hence in the opinion of the court of appeals, there has been use of an equivalent means in the embodiment contested. The German disclosure document No which was not discussed by the court of appeals - merely shows an exterior cable clamp for a cable introduction which is dust-free and watertight into the wall of a casing, in particular for switchboard units. Since the retaining clips and/or cable clamps in this citation represent the solution for the fact that the cable may be subject to pressure or tension, it would therefore be no problem for a person skilled in the art to arrive at the idea of using a clip or a cable clamp. However, the possibility of placing such retaining means into the interior, and the fastening thereof in the interior in a manner that would not impair the sealing, would also have to be realized. To date there has been no indication that this conclusion was also suggested to the person skilled in the art. The reference made by the court of appeals to electrical appliances, plugs and couplers, which - as a technically interested lay person knows - employ interior collar clips which are affixed to one part of a casing in order to relieve tension, is at the most proof of the fact that an interior fastening of clips was part of pertinent specialist knowledge. However, as regards the choice of the interior clips in relation to the desired sealing and the connected problems to be solved, there is no indication that this specialist knowledge could have inspired the average person skilled in the art in this respect. Therefore, it may in fact be true that the concept of using a clip within the casing, which does not impair the sealing, was not available prior to the teaching of the plaintiff, and which in the opinion of the court of appeals was also realized in the contested embodiment. In examining the case again, the court of appeals should therefore consider consulting an expert in this respect as well. 7. There is no reason to stay the proceedings.... ( * Official headnotes.) For German-language version see 1997 GRUR 454.