AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 1 Patents: Infringement under the doctrine of equivalence - Germany - Karsten Koeniger, Harmsen Utescher AIPPI seminar Paris, 7 and 8 November 2013

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 2 Patents: Infringement under the doctrine of equivalence - Germany – 1.Legal provisions 2.Principles and case law 3.Defences

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 3 Lady Remington Liberty

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 4 „Epilady“ (ca. 1991) Apparatus for hair removal (Dispositif d‘epilation)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 5 Device for removing a tick (Dispositif pour enlever une tique) Düsseldorf District Court, decision of 15 September 2011

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 6 EP : Device for removing a tick (Dispositif pour enlever une tique) aA device being designed with a slit (36, 54, 50), bfor use in removing a tick …, characterised in that cthe device is adapted for keeping in wallet, pocket, bag or similar place, dsaid device being designed as a credit card in size, esaid card is made of a relatively stiff material …, and fsaid card has a corner area being designed with the slit (36, 54, 50) ….

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 7 Alleged infringing device (not absolutely exactly)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 8 European Patent Convention 2000 Article 2 (2) The European patent shall… have the effect of and be subject to the same conditions as a national patent …, unless this Convention provides otherwise.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 9 German national patents German courts: no difference between national and European patents regarding the determination of the extent of protection.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 10 European Patent Convention 2000 Article 69 (1)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. = § 14 German Patent Act

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 11 European Patent Convention 2000 Protocol on the Interpretation of Article 69 Article 1 General principles Article 69Article 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. 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. 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.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 12 European Patent Convention 2000 Protocol on the Interpretation of Article 69 Article 2 Equivalents 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.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 13 EP Drawing

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 14 EP Description [0011] The device according to the invention is so designed that … the card e.g. in a corner area is made with a… slit …. [0017] The disclosed slit … may alternatively, or as a supplement, also be provided at a short side of the card.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 15 EP : State of the art

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 16 Two types of infringement German courts: „Literal“ (wortsinngemäß) equivalent (äquivalent)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 17 equivalent „Literal“ (wortsinngemäß) Extent of Protection

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 18 Not just the literalistic wording of the claim („Wortlaut“), but the semantic content to the person skilled in the art („Wortsinn“), The patent specification provides its own lexicon. „Literal“ infringement

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 19 1.Same effect (Gleichwirkung) 2.Obviousness (Naheliegen) 3.Equal value (Gleichwertigkeit) Equivalence: 3 step test since „Schneidmesser“-decisions of the Federal Court of Justice in 2002

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 20 Does the modified embodiment solve the problem underlying the invention with means that have objectively the same technical effect? First step: same effect (Gleichwirkung)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 21 Alleged infringing device „Literal“ version First step: same effect (Gleichwirkung)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 22 … same effect only, if the modified solution not only essentially achieves the overall effect of the invention, but also achieves the specific effect intended by the not literally realized feature. Where minimum requirements as to the quantity or quality of a certain effect arise from the interpretation of the patent claim, then modified means not satisfying those requirements cannot be considered to achieve the same technical effect under the aspect of an inferior embodiment …. German Federal Court of Justice, decision of 17 July 2012 „Pallet Container III“ („Pallettenbehälter III“) First step: same effect (Gleichwirkung)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 23 Alleged infringing device „Literal“ version

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 24 Was the person skilled in the art, using his specialist knowledge, able to find the variant at the priority date as having the same effect? Second step: Obviousness (Naheliegen)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 25 Second step: Obviousness (Naheliegen) “There may be equivalent patent infringement if the alternative means as such was not known at the priority date, because it was not made available until through the further advances in technical development.“ (Düsseldorf High Court, InstGE 10, "Zeitversetztes Fernsehen") At the priority date. But:

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 26 Alleged infringing device „Literal“ version

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 27 Third step: Equal value (Gleichwertigkeit) Are the considerations that the person skilled in the art had to apply oriented to the technical teaching of the patent claim in such a way that the person skilled in the art took the variant into account as being an equal value solution?

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 28 Third step: Equal value (Gleichwertigkeit) „The aforementioned responsibility of the patent holder to ensure that what he desires protection for is set out in the features of the patent claim therefore restricts the protection to what is to be related to the semantic content of its patent claims also in such cases in which the holder – for whatever reasons – has missed this opportunity and the patent, if considered objectively, remains less than a more extensive technical content of the invention.“ Federal Court of Justice, decision of 12 March 2002 „Schneidmesser II“

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 29 Third step: Equal value (Gleichwertigkeit) If the description discloses a number of ways in which a specific technical effect can be achieved, but only one of these ways is included in the patent claim, the use of one of the other ways does not, as a rule, constitute an infringement of the patent with equivalent means. Federal Court of Justice, decision of 10 May 2011 “Occlusion Device”

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 30 Alleged infringing device „Literal“ version

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 31 EP Description [0011] The device according to the invention is so designed that … the card e.g. in a corner area is made with a mainly acutely angled slit or cut …. [0017] The disclosed slit … may alternatively, or as a supplement, also be provided at a short side of the card.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 32 Third step: Equal value (Gleichwertigkeit) If the description discloses a number of ways in which a specific technical effect can be achieved, but only one of these ways is included in the patent claim, an infringement with equivalent means can only be assumed if the modified solution distinguishes from the solution that is shown in the description, but not in the patent claim, in a similar way like the “literal solution”. Federal Court of Justice, decision of 13 September 2011 “Diglycidyl Compounds” (Diglycidverbindung)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 33 - „Formstein“-objection - Prosecution history? Equivalence: Defences

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 34 Federal Court of Justice, decision of 29 April 1986 „Formstein“ Formstein am Straßenrand (pierre moulée à bas-côté)

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 35 Defences: „Formstein“-objection Does the modified embodiment, having regard to the state of the art, lack novelty, or is it obvious to a person skilled in the art? The Patent Office only examines whether the „literal“ subject matter of the patent is patentable. The same is true for patent opposition and nullity proceedings. Therefore the „Formstein“- examination has to be carried out in infringement proceedings.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 36 EP : State of the art

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 37 Defences: Prosecution history? In the past, the Federal Court of Justice: the prosecution history may not to be taken into account when construing a patent unless events of the prosecution history show up in the patent specification as granted or amended after grant (see decision of 12 March 2002 ”plastic pipe part”; also see the report of the German national group of AIPPI regarding Q229). In its “Occlusion Device” decision of 10 May 2011, the Federal Court of Justice had expressly left open the question if the publication of the application could be taking into account when construing a patent.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 38 Defences: Prosecution history Development? Federal Court of Justice, decision of 17 July 2012 “Polymer Foam” (nullity proceedings): A comparison of the patent specification with the publication of the patent application could, at the most, come into consideration if there are contradictions between the description and the claims and such a comparison can contribute to the clarification of the scope of a limitation made during the grant procedure or in opposition proceedings.

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 39 Merci beaucoup!

AIPPI seminarParis, 7 November 2013 Karsten Koeniger, Harmsen Utescher 40 Dr. Karsten Königer, Dipl.-Phys. Rechtsanwalt / Attorney at Law Harmsen Utescher Neuer Wall Hamburg Germany Phone Fax