1. Litigation for Patent Infringement Prof. Dr. Christian Osterrieth China 25 September 2008

2. www.rokh-ip.com2 Content A.Determination of Scope of Protection B. Prior Art Defense C.Prescription of Claims D. Estoppel by Laches

3. www.rokh-ip.com3 A. Determination of Scope of Protection I. General Rule: Sec. 14 German Patent Act (GPA) (Art. 69 EPC) “The scope of the patent is determined by claims.” 1.Relevant interpretation material: a)Sub-claims, accessory claims (e.g. a particular feature of the main claim has to be interpreted in a way that it also covers the embodiment of the sub-claim) b)Description and drawings (description can provide its own lexicon) c)Function of the features (which advantages has feature x and which disadvantage of the prior art can be avoided with feature x according to the description, functional interpreation can mean that invention is not restricted to a specific physical construction)

4. www.rokh-ip.com4 A. Determination of Scope of Protection (cont’d.) d)Numbers and measurements (are bindung part of claim, although there is room for interpretation the person skilled in the art will attach more reliability to them) e)Embodiments (only illustrate exemplary, not exclusively) f)State of the art (only if it is discussed in the description or cited on the front page, state of the art that is not mentioned in patent can only be used if it has been general knowledge at the time of application) g)Average person skilled in the art (his view and understanding is relevant) h)Priority date (level of knowledge of the person skilled at this date is relevant)

5. www.rokh-ip.com5 A. Determination of Scope of Protection (cont’d.) i)File History (generally not relevant as sec. 14 GPA lists exclusively the relevant factors) -exception: in examination procedure patent owner explicitely declared that he waives on protection for a certain embodiment, this restriction was relevant for granting the patent third parties can rely on probity of patent owner j)Decision of Examination Office (Infringement courts are bound regarding the form the patent has been granted) k)Decision in nullity proceedings (If patent has been restricted during nullity proceedings the content of nullity judgement replaces relevant parts of the description)

6. www.rokh-ip.com6 A. Determination of Scope of Protection (cont’d.) 2.Equivalent use: Scope extends beyond wording a)Conditions of equivalence: -The modified embodiment solves the problem the invention is based upon with equally effective means. -The person skilled in the art is able to detect the modified means as equally effective. -The considerations, which are necessary for the person skilled in the art in order to find the modified but equally effective means, are oriented on the meaning of the technical teaching of the invention in such a way that the person skilled in the art has to deem the modified means as solving the problem equally.

7. www.rokh-ip.com7 A. Determination of Scope of Protection (cont’d.) b) Justification for principle of equivalence: -Secures adequate remuneration for inventor -Prohibition of literal use only would devalue patent as it could easily be designed around -Inventor is not able to foresee every alternative that would be equally effective at the time of filing this application

8. www.rokh-ip.com8 A. Determination of Scope of Protection (cont’d.) 3.Principles in the law or in judicial practise? -Sec. 14 GPA provides the rule -Courts provide interpretation of the rule and develop exceptions (e.g. file history) -Aim is legal certainty exceptions should be rare

9. www.rokh-ip.com9 A. Determination of Scope of Protection (cont’d.) II. Scope of protection in view of different patent categories 1.Product patent -Absolute protection for all functions, impacts, uses and advantages of the product and its equivalents even if not known by the inventor (third person gets only dependent patent for new use) -Mentioning of a use does not restrict patent if use is obviously only exemplary -Description of manufacturing process or of the used apparatus for manufacturing does not restrict patent to this process (product-by- process-claim/product-by-apparatus-claim)

10. www.rokh-ip.com10 A. Determination of Scope of Protection (cont’d.) 2.Process patent -Absolute protection for the process for all uses even if not known by inventor -Protects the products obtained directly by the process 3.Use Patents - Protects the specific use of the product, covers also preparation of a product for the specific use

11. www.rokh-ip.com11 B. “Prior Art” Defence I.No “prior art” defence in case of literal use II.In case of equivalent use of the patented invention the accused infringer has “prior art” defence (BGH GRUR 1986, 803 – Formstein (Moulded Curbstone) 1.Conditions of “prior art” defense –Defendant must show that attacked embodiment is identical to prior art or that his product/process would not have been patentable due to lack of inventive step –Attacked embodiment has to be assessed on the bases of the the prior art of the patented invention

12. www.rokh-ip.com12 B. “Prior Art” Defence (cont’d.) 2. Limit of “prior art” defence -Separation principle (assessment of patentabilty is competence of examination office/patent courts) -Not allowed to exclude attacked embodiment from scope of patent with such arguments that can be used in relation to the patent and would result in the conclusion that the patent does not contain a patentable technical teaching defense arguments must not result in attack against patent in suit

13. www.rokh-ip.com13 B. “Prior Art” Defence (cont’d.) 3.Disadvantage of “prior art” defence -Demarcation between infringement and nullity proceeding becomes unclear 4.Advantages of “prior art” defence -More justice in the individual case -Prevents unappropriately large scope as patent does not extent to embodiment that would not have been inventive -Longer duration of nullity proceedings than infringement proceedings can lead to an unjust result if prior art is not already considered during infringement proceeding

14. www.rokh-ip.com14 C. Prescription of Claims I.Prescription in material patent law 1.Patent claims (injunction and/or damages) prescribe after 3 years starting with the end of the year in which the claim arises and patent owner becomes aware of infringer and of all claim-triggering circumstances (sec. 141 GPA in conjunction with sec. 195, 199 Civil Code (CC)) - Positive knowledge or lack of knowledge due to gross negligence - Gross negligence if patent owner does not request inspection sec. 140 c GPA? BUT: 2. Time limit of 3/10 years for prescription begins again with each new infringing act as each time new claim arises

15. www.rokh-ip.com15 C. Prescription of Claims (cont’d.) 3. Without knowledge a)Claim for injunctive relief and other claims (e.g. destruction, disclosure) prescribe 10 years after they arose (sec. 199 (4) CC) b)Claims for damages and rendering of accounts presribe 10 year after they arose (after occurrence of damage) or – regardless of when they arose – 30 years after the infringing act (Sec. 199 (3) CC) 4. After binding decision claims for damages prescribe in 30 years (Sec. 197 no. 3 CC)

16. www.rokh-ip.com16 C. Prescription of Claims (cont’d.) 5. Settlement negotiation interrupt time limit for prescription, sec. 203 German Civil Code 6. After prescription of claims for damages patent owner can claim compensation calculated on the basis of royalty analysis, sec. 141 sent. 2 GPA

17. www.rokh-ip.com17 C. Prescription of Claims (cont’d.) Consequence: Patent owner does not have to tolerate present or future infringement and can claim to desist. Prescription is only relevant for claims for damages and rendering of account, presription can reduce amount of damages and limit scope of duty to render account to new infringing acts. However, in terms of damages relevance is limited as patent owner can still claim compensation. Prescription regulations considerably strenghten position of patent owner.

18. www.rokh-ip.com18 C. Prescription of Claims (cont’d.) Reason for the patent owner friendly regulations: -Patent owner shall have claim for exclusion of others for the life time of his patent -After knowledge of infringment he shall have -opportunity to examine intensity of market disturbance -sufficient time for license and settlement negotiations -Otherwise patent owner would be forced to sue immediately although mercantile solutions might be better -Infringer shall never feel to be in a “safe haven” -Infringer always has to be aware of being at risk to be sued Limits: estoppel by laches

19. www.rokh-ip.com19 C. Prescription of Claims (cont’d.) II. Procedural time limit for preliminary injunction proceedings -Granting of injunction has to be urgent -No hesitant pursuit of claims -Request must be filed within short period of time after knowledge of all facts establishing infringement (knowledge of an officer is sufficient) -Deadline generally 1 month Settlement negotiations do not remove urgency

20. www.rokh-ip.com20 D. Estoppel by laches Courts developed strict conditions: 1.Patent owner must have knowingly allowed infringment for a longer period of time (time factor) 2.From objective point of view patent owner must have given infringer reasons to believe that he waived on his rights 3.Infringer must have taken preparations showing that he relied on the waiver of rights (circumstance factor) Application of estoppel by laches is limited to exceptional cases, Federal Court of Justice accepted defense only in one case (BGH GRUR 2001, 323 – Temperaturwächter)