Patent case law report 2013 to 2014

The case law of the
German courts of lower
instance for patent law
and utility model law
since the year 2013
Daniel Hoppe-Jänisch
Local Partner
Hamburg
T + 49 40 35005 0
E dhoppe-jaenisch@whitecase.com
Contents
I. Substantive law 2
1. The right to sue under substantive law
(Aktivlegitimation) and the right of action under
procedural law (Prozessführungsbefugnis) 2
2. Capacity to be sued (Passivlegitimation) 3
3. Interpretation of the patent 3
4. Use of the teaching of the patent 4
5. Facts of infringement 7
7. Right of use 12
8. Exhaustion 13
9. Employee inventions 14
II. Procedural law 16
1. Main proceedings 16
3. Enforcement and stay of execution 22
4. Action for restitution 22
III. Miscellaneous 23
1. Costs and value of the claim 23
2. Warning notice 24
3. Security for legal costs 25
This article was published in a shortened version1
in
December 2014 in GRUR-RR, a leading German legal
magazine for intellectual property law and copyright law.2
It reports on the case law of the German courts3
on patent
law and utility model law since mid 2013 until August 2014.
The article is divided into three main parts. The first part
(i) deals with the substantive law, the second part (ii) deals
with procedural law and the third part (iii) deals primarily with
the question of costs and cost recovery. Where necessary
and reasonable, explanations for a better understanding have
been included, unlike in the German original.
1 Unlike the German original text, the present version contains
explanations for a better understanding.
2 The present report follows up on a similar report by the author
covering the period from 2011 to 2013, which was published
in the GRUR-RR in October 2013.
3 In Germany, 12 district courts have the competent jurisdiction
of the first instance for patent infringement matters
(Düsseldorf, Hamburg, Munich I, Braunschweig, Freiburg,
Mannheim, Berlin, Erfurt, Leipzig, Saarbrücken, Nuremberg-
Fürth and Magdeburg). Their respective superior Higher
Regional Courts rule on appeals.

2 White & Case
I. Substantive law
1. The right to sue under substantive law
(Aktivlegitimation) and the right of action under
procedural law (Prozessführungsbefugnis)
According to German law, a prerequisite for a patent
infringement claim is that either the claimant is entitled
to the asserted rights or that the claimant is entitled for
another reason to claim rights resulting from a (alleged)
patent infringement. Here, the “right to sue” means
generally the basic substantive right to sue with regards
to the asserted rights. It does not matter whether these
rights actually exist. The question is: Is the claimant
entitled to assert the potential claims in court? If this is the
case, the claimant has a right to sue.
Unlike the right to sue, the right of action is a requirement
for the admissibility of a patent infringement action and
thus actually part of the procedural law, which is covered
in part two (ii). However, due to the close link between
issues of the right to sue and those of the right of action,
this is covered here. In principle, only the person or legal
entity asserting their own legal rights in their own name
has the right of action. However, if the requirements of
the so-called statutory or designated representative action
are met, the claimant may assert someone else’s rights in
their own name.
Under German law, the transfer of a patent does not need
to be entered in the patent register, so that the transfer
of rights can take place outside of the register. However,
the entry in the register is important for the assessment
of who has the right to sue and the right of action. In
recent years, the courts had primarily ruled that whoever
was entered in the register has the right to sue even if it
has been established that they are no longer entitled to
the patent because they had sold the patent. The true
substantive legal position was irrelevant.
However, following the German Federal Court of Justice’s
(Bundesgerichtshof [BGH]) decision Milling process4
,
the Düsseldorf Higher Regional Court (OLG Düsseldorf)
now agrees with the Federal Court of Justice that the
legitimizing effect of the entry in the register is limited
to the procedural right to action and that, with regards
to substantive law, it is a considerable indication for the
claimant’s substantive entitlement and thus for the right
to sue.5
As a result, the claimant would not have the right
to sue if the defendant can prove that the claimant who
is registered in the patent register is not the actual patent
holder. The legitimizing effect extends to the previously
registered person or legal entity if they assert claims for
their registration period.6
The court has not answered the
question whether the currently registered patent holder
instead of the previously registered patent holder can
assert claims for the past.7
The assertion of another person’s rights in the claimant’s
own name (representative action [Prozessstandschaft])
requires that the rights holder authorizes the claimant to
litigate and that the claimant has their own, legitimate
interest in the assertion of such legal rights. According
to the Karlsruhe Higher Regional Court (OLG Karlsruhe),
a simple licensee has no legitimate interest because
the claimant can have the asserted claims transferred
to them.8
This is difficult to understand because the
exercise of a right is a requirement for the admissibility
of a representative action.9
According to the Düsseldorf District Court
(LG Düsseldorf), the patent holder is entitled to bring
their own claim for a cease-and-desist order against an
infringer if they had granted an exclusive license for the
proprietary right.10
4 BGH, GRUR 2013, 713 – Milling process; skeptical with regards to this: Kühnen, GRUR 2014, 137.
5 OLG Düsseldorf, 19 September 2013 – case I-2 U 19/09, BeckRS 2013, 17381; generally focusing on the status of the register
LG Düsseldorf, 2 August 2013 – case 4b O 230/10, BeckRS 2013, 15651; imprecise also LG Düsseldorf, 12 June 2014 – case 4a O 27/13,
BeckRS 2014, 20316; without further discussion LG Hamburg, 24 January 2014 – case 315 O 234/12, BeckRS 2014, 20356.
6 OLG Düsseldorf, 19 September 2013 – case I-2 U 19/09, BeckRS 2013, 17381, referring to OLG Düsseldorf, InstGE 12, 261 = BeckRS
2011, 07499 – “Television menu control”; similar LG Düsseldorf, 2 August 2013 – case 4b O 230/10, BeckRS 2013, 15651, according
to which the right of action under Section 30 para 3 of the German Patent Act (§ 30 Abs. 3 PatG) refers to the period of registration;
differing LG Mannheim, 17 April 2012 – case 2 O 129/09, BeckRS 2013, 16099.
7 Negative LG Mannheim, 17 April 2012 – case 2 O 129/09, BeckRS 2013, 16099, with the hardly justifiable assumption that in addition
to the currently registered rights holder the previous rights holder has the right to sue if their substantive rights are concerned.
8 OLG Karlsruhe, 26 February 2014 – case 6 U 51/13.
9 BGH, NJW 1964, 2296.
10 LG Düsseldorf, 27 May 2014 – case 4a O 14/14 referring to BGH, GRUR 2008, 896 – “Ink cartridge”.

3
An infringer cannot rely on the claimant having concluded
an exclusive license agreement with a third party according
to which only the licensee is entitled to assert claims
for infringements. This is because such an agreement
only applies to the parties of the license agreement
and does not grant any rights to third parties (including
the defendant).11
2. Capacity to be sued (Passivlegitimation)
The capacity to be sued is the counterpart to the right to
sue. The capacity to be sued requires the ascertainment of
whether the asserted patent rights can be claimed against
the defendant. The capacity to be sued is usually linked
to the defendant’s own act of infringement but may also
be established by a separate attribution of facts by virtue
of which the defendant is responsible for the actions of a
third party. Of course specific requirements must be met
for this.
According to the Düsseldorf District Court, an employed
sales manager must assess whether products infringe
proprietary rights. If the distribution of infringing products
is in the sales manager’s area of responsibility, they have
committed the act of infringement themselves.12
However,
employees are not liable for infringements if they are not
obliged to assess the situation with regards to proprietary
rights.13
In contrast, a sole managing director of a trading
company is liable because they have to ensure that
third‑party rights are observed.14
On the other hand, a company is liable for its commercial
agent’s actions.15
The person who commits a merely
preparatory action to facilitate a deal with a patented
product is also liable for offering a patent infringing
product. This included advertising on a website and
the mere linking to the website where the infringing
product is offered.16
3. Interpretation of the patent
The patent specification contains the patent claims, the
description and potentially drawings. The patent claims
state what protects the patent. The content of the patent
claims also determines the scope of protection conferred
by the patent.
The defendant in infringement proceedings cannot attack
the legal validity of the patent. Rather, this happens in
nullity proceedings before the German Federal Patent
Court (Bundespatentgericht) and at the appeal stage
before the Federal Court of Justice. The Düsseldorf
Higher Regional Court has confirmed that the judge
in infringement proceedings is virtually bound by the
Federal Court of Justice’s interpretation of the patent in
nullity proceedings.17
According to the Mannheim District
Court (LG Mannheim), the grounds of a decision for a
limitation of a patent in nullity proceedings supplement or
replace the description of a patent and must therefore be
considered when interpreting a claim.18
The Düsseldorf District Court has shown that it very
reluctantly considers the European Patent Office’s
statements in opposition proceedings. In the present
case, it had to interpret a patent claim, which was directed
at the use of an agent containing acetic acid. The court
interpreted the claim to mean that the acetic acid does not
have to be added separately but that the patent would also
be infringed if the acetic acid can arise after the agent was
placed on the market by oxidation of the ethanol contained
in the agent.19
11 LG Düsseldorf, 27 May 2014 – case 4a O 17/14.
12 LG Düsseldorf, 14 November 2013 – case 4b O 132/09, BeckRS 2014, 14408.
13 LG Düsseldorf, 3 December 2013 – case 4a O 199/12.
15 LG Düsseldorf, 25 March 2014 – case 4a O 7/13.
16 LG Düsseldorf, 19 September 2013 – case 4c O 14/13.
17 OLG Düsseldorf, 8 August 2013 – case I-2 U 22/12, BeckRS 2013, 16787 = GRUR-RR 2014, 8 Ls.
18 LG Mannheim, 28 February 2014 – case 2 O 53/12, BeckRS 2014, 06209 = NJOZ 2014, 1146.
19 LG Düsseldorf, 3 April 2014 – case 4c O 81/13, BeckRS 2014, 19177.

4 White & Case
According to the Düsseldorf District Court, if a feature
of the patent claim refers to a technical standard for
certain dimensions, the feature can be met although a
relevant technical standard does not exist but a mere
customary usage of the dimensions has developed in
practice.20
However, this way the scope of the patent
is determined by circumstances beyond the patent
specification, which conflicts with the requirement of
legal certainty. The Hamburg District Court (LG Hamburg)
had a comparable approach to the interpretation of a patent
directed at a manufacturing process for an implant, where
it referred to a brochure published after the priority date.
The brochure stated that the design, which was merely
similar to the attacked embodiment, was covered
by the patent.21
The Düsseldorf District Court has maintained that features
should not be interpreted as a mere implicitness.22
The Munich I District Court (LG München I) has a similar
approach, which avoids an interpretation that would
render a feature superfluous.23
The Hamburg District Court
has not joined in on this effort but stated that the inclusion
of features in the claim as a matter of course does not
violate principles of patent interpretation.24
4. Use of the teaching of the patent
A prerequisite for the successful assertion of claims under
a patent is an infringement. The claimant must assert that
the defendant has infringed the patent-in-suit by using the
teaching of the patent or that—for particular claims such as
the right of presentation and inspection—an infringement
is at least probable. A distinction is made between
direct infringement on the one hand and contributory
infringement on the other hand. Direct infringement usually
requires the existence of all features of the asserted patent
claim. Contributory infringement refers to situations in
which someone facilitates a direct infringement through
the offering and provision of materials which relate to
the essential features of an invention. The recipient of
said materials which were offered and provided is the
direct infringer.
Contributory infringement is to be distinguished from
equivalent infringement. Equivalent infringement may
occur if not all features of the asserted patent claim
exist but equivalent materials use the teachings of the
patent-in-suit. This refers to exchange means which differ
from the literal meaning of the patent claim’s features.
i) Direct infringement
The Karlsruhe Higher Regional Court has dealt with the
infringement of a patent which protects a process for the
encoding and decoding of data. It ruled that the user of a
decoder uses the whole patented method even if, as a part
of the protected method, the data was previously coded in
accordance with the patent by broadcasting organizations
and TV stations without the user’s assistance. According
to the court, it is irrelevant whether the user can be
held responsible for the TV station or broadcasting
organization’s actions. The court held that it was sufficient
that the TV station or broadcasting organization can be
held responsible for the user’s actions because the user
can be considered as their instrument.25
The Düsseldorf Higher Regional Court has clarified
that there is no direct infringement in the absence of
a feature of the claim if there is no need for the buyers
to supplement the delivered device with the missing
feature according to the invention. This is the case when
the device comes with a manual that includes an opposing
warning and there is no indication that buyers would
ignore this.26
21 LG Hamburg, 24 January 2014 – case 315 O 234/12.
22 LG Düsseldorf, 14 February 2014 – case 4a O 67/12.
23 LG München I, 20 December 2013 – case 7 O 5327/13, BeckRS 2014, 05284.
24 LG Hamburg, 22 January 2013 – case 315 O 505/11, referring to BGH, GRUR 2010, 605 – “Joint arrangement”.
25 OLG Karlsruhe, 8 May 2013 – case 6 U 34/12, BeckRS 2013, 13968 = extract in GRUR 2014, 59; Overall, the infringement situation
appears to be inconsistent. In particular, it cannot be reconciled with the right of use, which has been assessed elsewhere. Despite
the buyers’ alleged function as the broadcasting organizations’ “instruments”, the court wants to relate the broadcasting organizations’
undisputed license to the coding process only but not to the decoding process carried out by the “instruments”. Furthermore, at
this point, the court does not establish the buyers’ position as the responsible persons committing the act but that of the (licensed)
broadcasting organizations, which have been directly provided with the material in question.
26 OLG Düsseldorf, 13 February 2014 – case I-2 U 93/12, BeckRS 2014, 05736, in contrast OLG Düsseldorf, 24 February 2011 –
case I-2 U 122/09, BeckRS 2011, 08375.

5
With reference to the Federal Court of Justice’s
decision Shunting trolley 27
, the Hamburg District Court
ruled that it is sufficient for the implementation of
the feature “electrostatically charged” if the object is
merely “electrostatically chargeable.” This amounts to
the protection of a sub-combination.28
The court has
overlooked that in Shunting trolley the Federal Court of
Justice did not forgo the implementation of individual
features. Rather, the Federal Court of Justice requires
that all features are implemented and that attacked
embodiment is objectively fit to achieve the characteristics
and effects according to the patent.29
The Düsseldorf District Court has demonstrated that,
in the interest of legal certainty, claims with vague
features must be interpreted strictly in accordance with
the description.30
According, to the Düsseldorf District Court, the
further development of technology is irrelevant for the
determination of the scope of protection conferred by
the patent.31
In the case, due to the patent’s distinction
between laptops on the one hand and protected devices
on the other hand, the scope of protection could not
extend to laptops, which were described as unfavorable.
However, the court unjustly focused on terminology and
did not address the fundamental issue of whether today’s
laptops have evolved from the laptops known on the
priority date to the extent that they now can be deemed
to be devices according to the patent-in-suit. The court
also chose a questionable approach in a case in which a
production machine for dental equipment was discussed.
According to the court, due to the open wording of
the claim, a machine based on 3D printing technology
developed after the patent application would be a
production machine in accordance with the claim.32
ii) Contributory infringement
A patent is contributorily infringed if materials are
offered or provided which do not implement the
patented invention but which relate to an essential
feature of the invention. The accused materials do not have
to be mentioned in the patent claim. They must merely be
suitable for the functional interacting with a feature of the
invention. The Düsseldorf District Court confirmed this
for kits (which were not mentioned in the claim) serving
the performance of a patented procedure because they
facilitated the implementation of an important method
step.33
According to the Düsseldorf Higher Regional
Court, in a case of a two-part cutting tooth arrangement
consisting of a cutting tooth and a mounting, a cutting
tooth adapted to the mounting relates to an essential
element of the invention because the mounting and the
tooth functionally interact in the implementation of the
inventive concept.34
According to the Karlsruhe Higher Regional Court, if the
decoding of data is an essential element of the invention,
the provision of demodulators without decoding software
also contributorily infringes the patent because by extracting
the signal needed by the decoder, the demodulators create
the necessary condition for the decoding and thus provide an
essential contribution to the decoding process.35
27 BGH, GRUR 2006, 399 – Shunting trolley.
29 See the correct observations in OLG Düsseldorf, 13 February 2014 – case I-2 U 93/12, BeckRS 2014, 05736; Ultimately, the decision of
the LG Hamburg may be correct but the same cannot be said for the grounds of the decision; also incorrect remarks on the question
whether the awarded cease-and-desist order exceeds the patent protection. The court overlooks here that the cease-and-desist order
in the award cannot extend beyond the patent’s scope of protection.
30 LG Düsseldorf, 12 December 2013 – case 4 c O 20/13, BeckRS 2014, 20323, which dealt with a component’s “very high
mechanical characteristics”.
31 LG Düsseldorf, 14 January 2014 – case 4 a O 207/12, BeckRS 2014, 20324.
32 LG Düsseldorf, 4 July 2013 – case 4b O 7/12, BeckRS 2013, 14543; 4 July 2013 – case 4b O 201/11.
34 OLG Düsseldorf, 13 February 2014 – case I-2 U 90/12, BeckRS 2014, 05734; similar LG Düsseldorf, 2 August 2013 – case 4b O 230/10,
BeckRS 2013, 15651.
35 OLG Karlsruhe, 8 May 2013 – case 6 U 34/12, BeckRS 2013, 13968 = extract in GRUR 2014, 59, the differentiation from BGH, GRUR
2012, 1230 – “Video signal coding” is difficult to understand because the demodulation as well as the data transfer to DVD are ultimately
a neutral part of the transfer process under patent law. The OLG’s argument that in the present case, the data signal that needs to be
decoded is obtained from the received broadcast signal, which would require a technical focus on the encoded data signal, does not
relate to the specific functionality under the patent.

6 White & Case
The contributory infringement of a patent requires a
so-called double domestic nexus. On the one hand,
this means that the offering or provision of the materials
must take place in Germany; on the other hand, the
respective buyers’ use of the invention must be expected
in Germany. The Karlsruhe Higher Regional Court
has clarified that a foreign manufacturer or trader of
patent infringing devices is already responsible for the
infringement if they provide their products to another
foreign buyer and if they know that the buyer intends
to distribute the product within Germany where it will
serve the use of the invention.36
iii) Equivalent infringement
An equivalent patent infringement has three requirements:
…… The attacked embodiment must solve the problem on
which the invention is based with modified materials
objectively having an equal effect as those protected
under the patent (so-called replacement means).
…… Based on their expert knowledge, an expert must
be able to locate the modified embodiment with
its modified means as having an equal effect. This
assessment is based on the state of the art known
on the priority date.
…… An expert must regard the replacement means
as equivalent to those listed in the patent claim.
According to the German Federal Court of Justice’s
decision Occlusion device, there is no equivalent
infringement if the patent claim reflects a deliberate
decision to select a particular feature but the attacked
embodiment does not use that particular feature.37
The Düsseldorf Higher Regional Court has ruled that
selecting only one of two terms (here: acid/base)
may mean that by including only one category
(acids instead of bases) in the claim, the other
category is excluded.38
It is not possible to reverse a
limitation which the patent received in validity proceedings.
In particular, the patent cannot be extended under
equivalence aspects to something that was removed
in validity proceedings.39
The court even found that a
selection decision was made in a case where the patent
revealed no possible alternative at all. A decisive factor
in the case was the fact that an expert would have to
consider the suitability of the interchangeable parts.40
The Düsseldorf District Court has reached the conclusion
that the mentioning of a single derivative in the patent
claim does not constitute a selection from a group
of unnamed derivatives. Hence the use of a different
derivative could constitute an equivalent infringement.41
According to the Düsseldorf Higher Regional Court,
the mere obviousness of a replacement means for
an expert is not equivalent to the explicit mentioning of the
replacement means in the patent specification.42
According to the Düsseldorf District Court, the absence
of a replacement means does not necessarily exclude
an equivalent infringement.43
The Munich Higher Regional Court has corrected the
approach of the Munich I District Court, according to
which a claim feature that contributes nothing to solve
the technical problem cannot be replaced with a feature
of equal effect.44
The Mannheim District Court has
ruled with regards to the lack of equal effect that there
is no equivalence in a case where an increase of the
transmission capacity, to be avoided according to the
description of the patent-in-suit, was achieved with
a coding of three bits instead of one bit.45
36 OLG Karlsruhe, 8 May 2013 – case 6 U 34/12, BeckRS 2013, 13968 = extract in GRUR 2014, 59 – MP2 devices.
37 BGH, 10 May 2011 – case X ZR 16/09 – Occlusion device; see also BGH, 13 September 2011 – case X ZR 69/10 – Diglycid composition.
38 OLG Düsseldorf, 13 September 2013 – case I-2 U 23/13, BeckRS 2013, 18740; similar for heterogeneous and homogenous solutions:
LG Düsseldorf, 19 December 2013 – case 4c O 49/13.
39 OLG Düsseldorf, 13 September 2013 – case I-2 U 23/13, BeckRS 2013, 18740; similar OLG München, 20 March 2014 – case 6 U 1561/13,
BeckRS 2014, 20359.
40 OLG Düsseldorf, 13 September 2013 – case I-2 U 26/13, BeckRS 2013, 18743.
41 LG Düsseldorf, 3 April 2014 – case 4b O 114/12 U., BeckRS 2014, 08590; contrary the High Court in Actavis ./. Eli Lilly & Company, 2014.
42 OLG Düsseldorf, GRUR-RR 2014, 185 – Toilet seat joint; of a different opinion: LG Düsseldorf, 13 February 2014 – case 4b O 144/13,
BeckRS 2014, 20327.
43 LG Düsseldorf, 1 October 2013 – case 4b O 91/12, BeckRS 2014, 20326
44 OLG München, 20 March 2014 – case 6 U 1561/13; contrary LG München I, 20 March 2013 – case 21 O 13347/11, BeckRS 2013, 16072.
45 LG Mannheim, 28 February 2014 – case 2 O 53/12, BeckRS 2014, 06209; as well as LG Düsseldorf, 13 February 2014 –
case 4b O 144/13.

7
5. Facts of infringement
A patent infringement requires an infringing act committed
in the Federal Republic of Germany.
i) Offering
According to the Düsseldorf District Court, a domestic
connection may occur if an offer on the Internet is
written in a foreign language and if the domestic potential
buyers are able to understand that language. English
is the dominant language in the field of electronic
engineering.46
A company’s presentation that gives no
indication of that company’s intention to supply products to
Germany cannot be construed as a domestic offering.47
The Düsseldorf Higher Regional Court has ruled that the
exhibition of products at a domestic trade fair constitutes
an offering if the trade fair is not a mere exhibition. The
defendant bears the burden of proof for this.48
According
to the court, the mere organizer of a trade fair stand is
responsible for the actions of the companies exhibiting
their products at this trade fair stand, independently of
whether or not the organizer was present. The organizer
has an obligation to check the exhibited products.49
The
display of another company’s advertising flyer at the
organizer’s own trade fair stand also constitutes an offering
of the products depicted in the flyer.50
ii) “Obvious arrangement”
German law recognizes the so-called use patent as a
subcategory of the method patent. A use patent may
be granted for the instruction regarding the specific use
of a substance or a mixture of substances of the prior art in
a method. The use of a specific product, in particular
a chemical substance, for a specific purpose (i.e., as drugs
or pesticides) is also the subject of use patents. According
to the Federal Court of Justice, use patents are not to be
treated like method patents with regard to their protective
effects. For example, the “obvious arrangement” of a
substance for the protected use, regardless of whether
the product is eventually used in accordance with the
patent, constitutes an act of infringement of the use
patent. The “obvious arrangement” of the substance for
the protected use is deemed to be the commencement
of the use itself. For example, a patent that protects the
medical use of a certain substance can be infringed by
a manufacturer’s formulating, customizing, dosing and
packing ready for use the substance as a pharmaceutical
for the patented purpose.
The Karlsruhe Higher Regional Court also assumes
an “obvious arrangement” under the use patent if the
relevant substance has the characteristics listed in the
patent claim and is offered for a use which generally
requires that the patented purpose be satisfied, based
on an assessment at the time of the offering. In this
case, another manifestation of the intention to use the
relevant object as intended under the patent claim is
not necessary.51
6. Claims
In the case of patent infringement, the claimant may assert
various claims side by side. The most important claim in
practice is the claim for injunctive relief.
i) Injunctive relief
The injunction is an automatic consequence of an
infringement. The court has no discretion in deciding on
an injunction. If there is a danger of a first-time or repeated
infringement of the asserted patent, the court has to grant
the injunction.
47 LG Düsseldorf, 25 July 2013 – case 4c O 26/13, BeckRS 2014, 20329.
48 OLG Düsseldorf, 27 March 2014 – case I-15 U 29/14, BeckRS 2014, 14729; 27 March 2014 – case I-15 U 19/14, BeckRS 2014, 16067;
contrary LG Mannheim, GRUR-RR 2011, 83 – Suction gripper; as well as LG Düsseldorf, 12 June 2014 – case 4a O 19/13; Wuttke, Mitt.
2014, 452, 454.
49 OLG Düsseldorf, 27 March 2014 – case I-15 U 29/14, BeckRS 2014, 14729.
50 OLG Düsseldorf, 13 February 2013 – case I-2 U 42/13, BeckRS 2014, 05732.
51 OLG Karlsruhe, GRUR 2014, 764 – Use patent; Wuttke, Mitt. 2014, 452, 454.

8 White & Case
In case of a contributory infringement, a total prohibition,
meaning an unrestricted injunction, is only appropriate
if no effective steps for the prevention of the use of the
invention are available. This is the case, for example,
if the objects supplied cannot reasonably be used
in any other way. The Düsseldorf District Court has
imposed a total prohibition in a case of contributory
infringement and noted that mere “theoretical” uses
are irrelevant for the possibility of non-infringing use of
the patent. The defendant must demonstrate a specific,
possible alternative.52
a) Risk of recurrent infringement
If an infringement already took place, the infringer can
only dispel the suspected risk of recurrence if they give a
cease-and-desist undertaking and submit to a sufficient
contractual penalty in case of noncompliance.
According to the Düsseldorf District Court, as long as no
such undertaking has been given, the risk of recurrence
still exists if the defendant is no longer in possession of
the attacked embodiment and has stopped its distribution.
Even if the rights holder is now the only supplier, this
would not permit a prognosis which excludes a patent
infringement, unless the defendant would clearly not be
able to produce and distribute the patented product.53
b) Risk of first infringement
a patent infringing offering constitutes the risk of
first infringement also with regards to other types of
infringement such as placing the infringing object on
the market, its use, import or possession for these
purposes.54
According to the Düsseldorf District Court,
the risk of first infringement still exists if the claimant but
not the European Medicines Agency (EMA)55
is notified
of the withdrawal of a distribution notice regarding a
planned parallel import of pharmaceuticals.56
The reason
for this is that the defendant could still commence the
parallel import, of which they had originally notified both
the claimant and the EMA, since the EMA is in possession
of proof of the patent holder’s notification of the parallel
import. This is one of the requirements for the EMA’s
authorization of the parallel import.
The risk of first infringement cannot be per se denied
on the grounds that a market placement of the objected
product will only occur in more than three years.57
The
risk of first infringement assumed to be posed by a group
company cannot be transferred to another group.58
According to the Hamburg District Court, the exhibition
of a non-marketable medicinal product due to a lack
of a CE Certification does not constitute a risk of first
infringement for the market placement of an identical,
marketable end product.59
ii) Damages
Another important claim is the claim for damages. Unlike
the claim for injunctive relief, the claim for damages
requires that the infringement occurred through the
infringer’s fault (intent or negligence). During infringement
proceedings, this claim is usually initially only made on its
merits. If the court finds that an infringement occurred and
if the parties subsequently cannot agree on the amount of
damages, the claim will be pursued in a new lawsuit for
the amount of damages.
The claimant can base the calculation of the amount of
compensation on one of three methods. They can claim
compensation for specific damages incurred (for example,
for loss of business), account of profits made by the
infringer from the patent infringement or a notional
license fee.
52 LG Düsseldorf, 24 October 2013 – case 4c O 3/12, BeckRS 2014, 20395.
53 LG Düsseldorf, 5 November 2013 – case 4a O 8/13.
55 Parallel importers must report annually to the EMA from which countries and to which countries they want to import a specific, centrally
authorized product.
56 LG Düsseldorf, 26 August 2014 – case 4c O 116/13, BeckRS 2014, 17689.
57 LG Düsseldorf, 3 April 2014 – case 4b O 114/12 U., BeckRS 2014, 08590.
58 LG Düsseldorf, 3 April 2014 – case 4b O 114/12 U., BeckRS 2014, 08590.
59 LG Hamburg, GRUR-RR 2014, 137 – Coronary stent.

9
a) Fault
One of the requirements of a claim for damages is that the
infringer is at fault. This means that the infringer must have
committed the infringing act intently or negligently. However,
so far the courts have only in very rare exceptional cases
assumed that there has been no such fault. Generally, a
defense cannot successfully be based on the objection
that there is no fault.
When assessing a negligent infringement, usually the
question arises whether the infringer had an obligation
to assess the proprietary rights situation and if so, what
efforts can be expected of the infringer. In the absence
of such an obligation the act of infringement was not
carried out negligently.60
According to the Düsseldorf District Court, even a pure
marketing company must assess the proprietary rights
situation. This also applies in case of a very complex
technology.61
Specific steps must be taken to prevent
future infringements after a cease-and-desist undertaking
containing a penalty clause has been given. The mere
submission of requirements to the manufacturer is not
sufficient if their observance is not monitored regularly.62
A
re-importer of pesticides cannot rely on the allegation that
the pesticides were placed on the market with the rights
holder’s consent. If it is known that counterfeit products
are on the market, the re-importer must investigate the
pesticides’ origin regularly.63
b) Infringer’s profit
The determination of the infringer’s profit requires the
determination of the portion of the profit that is attributable
to the patent infringement. The claimant
is not entitled to the portion of the profit that is attributable
to other factors.
According to the Düsseldorf District Court, attention
should be paid if the infringer has chosen a patented
design despite technical alternatives being available.
This documents that the infringer has considered the
invention important for the success of sales. A low price
for the infringing products could reduce the causal share
in the infringement if it cannot be determined that the use
of the invention has made it possible to sell the products
at such low prices. In this context, the court has noted
that an individual proprietary right becomes less important
in relation to the profit if the product also utilizes other
proprietary rights (designs, copyrights, etc.). However,
additional proprietary rights may only be considered if they
were valid and were actually used. The infringer bears the
burden of proof for this.64
According to the Düsseldorf
District Court, the claim for damages is limited to the
patent infringing product itself, unless any additional
revenue from non-infringing parts is primarily based on the
revenue generated from the infringing parts.65
c) License analogy
Another method of calculating damages is the license
analogy. According to this, a fictitious license fee is
determined which the infringer will owe as compensation
for damages. The fictitious license fee must be appropriate.
In this context, appropriate is what reasonable contractual
parties would have agreed as a license fee for the act of use
carried out by the infringer. Existing license agreements, if
any, on the infringed proprietary right or on similar proprietary
rights can be considered as factors for the determination
of an appropriate license fee. However, under certain
circumstances the license fees stated in such agreements
cannot be transferred one to one; the contractual licensee’s
and the infringer’s different positions must be considered
as increasing or reducing factor with regards to the license
fee.66
In principle, the infringer cannot be put in a better or
worse position than a contractual licensee.
60 On the other hand, if all other requirements of the claim have been met, intent leads to the infringer’s obligation to indemnify the rights
holder even if the infringer had no obligation to assess the proprietary rights situation.
62 LG Düsseldorf, 19 November 2013 – case 4a O 20/10, BeckRS 2014, 20331.
63 LG Düsseldorf, 24 October 2013 – case 4c O 3/13, BeckRS 2014, 03837.
64 LG Düsseldorf, 3 September 2013 – case 4a O 112/12, BeckRS 2014, 20332.
65 LG Düsseldorf, 17 July 2014 – case 4b O 23/13, BeckRS 2014, 20333.
66 For example, the fictitious license fee can increase if the contractual licensee has to provide other payments or services to the rights
holder in addition to paying the license fee. The license fee can be reduced if the license agreements cover all acts of use but the
infringer has only carried out one act of use.

10 White & Case
According to the Karlsruhe Higher Regional Court,
license fees, which the patent holder had already
agreed in license agreements, can form the basis of the
calculation of damages without further assessment.
The amount of damages should be increased by the
loss of interest if a due date would have been agreed
during free license negotiations.67
The reason for this is
the principle that the infringer cannot be put in a better
position than a contractual licensee because the infringer
pays considerably later than licensees. For the purpose
of calculating the damages, an appropriate reference
basis has to be determined. Usually, the technical and
economical reference unit is chosen, e.g., the delimitable
component which incorporates the invention. However,
if an entire device is usually only supplied as a whole,
the entire device can be the reference basis for the
license fee.68
d) Damages due to contributory infringement
In the event of a contributory infringement, compensation
for damages can only be claimed if a direct infringement
has already occurred (e.g., the contributory infringer’s
customers). However, for the courts to determine that
the claimant has a claim for damages on its merits
against a contributory infringer, the probability of at
least one direct act of infringement is sufficient.
According to the Karlsruhe Higher Regional Court,
the finding of the occurrence of at least one direct
act of infringement during basic proceedings is not
necessary for assuming the probability that damage
has occurred.69
The occurrence of damage is even
considered probable if the contributory infringement
occurs in the form of a mere offering.70
c) Destruction
A further important claim is the entitlement to destruction
of the infringing objects in the infringer’s possession or
ownership. The claim for destruction requires domestic
possession/ownership. The courts generally grant an order
for destruction only in the case of direct (and/or equivalent)
patent infringement.
With regards to the claim for destruction, the Düsseldorf
District Court has maintained its view that the claimant
bears the burden of proof for the infringer’s possession
or ownership of the infringing objects. If the defendant
responds with the submission of specific facts from
which it follows that and through which events the
defendant has ceased entirely to have the infringing
objects in their possession or ownership, the claimant
bears the burden of proof again. The claimant can then not
merely deny the facts submitted by the defendant.71
d) Recall and removal from the distribution channels
A further claim, which is important in practice, is the
claim for recall and removal of infringing goods from
the distribution channels. This claim generally exists as
a result of the infringement. The court has no discretion
in the matter.
There is a disagreement between the courts on whether
the claimant is entitled to a claim for recall against an
infringer residing abroad. The answer depends on the
purpose of the claim for recall. In some cases, the purpose
of the recall claim is to restore the conditions
for a claim for destruction regarding infringing objects
that, as a result of a sale, are no longer owned/held by
the infringer. This is because, due to a lack of the
infringer’s possession/ownership of those objects, the
claimant would not be entitled to a claim for destruction.
A claim for destruction requires domestic possession
by the infringer. For this reason, infringers based abroad
cannot be subject to a claim for destruction even if they
possess/own infringing objects. Assuming that the recall
claim only serves the restoration of the conditions for a
claim for destruction, infringers based abroad would not be
obliged to recall the infringing objects because the recall
would only establish foreign possession/ownership which
would not be sufficient for a claim for destruction. Hence
the recall claim would not be justified because it would not
achieve the intended purpose.
67 An agreement on a due date determines the specific date or time period on which or within which a payment must be made (it is
“due”). If this does not happen, the monetary debt shall bear interest from the due date (possibly in addition to other conditions).
68 OLG Karlsruhe, GRUR-RR 2014, 55 – Foil printing method.
69 “Basic proceedings” means the proceedings in which the existence of a claim for damages is determined on its merits but in which no
decision is made on the amount of damages.
70 OLG Karlsruhe, 8 May 2013 – case 6 U 34/12, BeckRS 2013, 13968 = in extracts GRUR 2014, 59, referring to BGH, GRUR 2013, 713 –
Milling process.
71 LG Düsseldorf, 5 November 2013 – case 4a O 8/13, BeckRS 2014, 20330.

11
According to the Düsseldorf District Court, a recall claim
has at least the purpose to raise awareness within the
distribution chain so that this alone justifies the recall claim
regardless of a claim for destruction.72
According to the
court, it is not justifiable to regard the recall claim as a
mere pre-stage of the claim for destruction and to imply
that domestic possession or ownership of the infringing
object is a requirement of the claim.73
The Düsseldorf
Higher Regional Court counters that an infringer based
abroad, who is not subject to a claim for destruction and
for whom a recall only establishes insufficient foreign
possession/ownership, is not subject to a recall claim.74
e) Joint rights holders
If several individuals jointly create a new invention, they
are so-called co-inventors. Co-inventors are jointly entitled
to the patent or utility model for their invention. However,
not every act of support during the development of the
invention establishes co-inventor status. Only those
individuals are co-inventors who were creatively active
during the development of the invention to the extent that
their contribution was a cause for the existence of the
future invention or its specific design. The courts have to
consider the question whether a creative contribution was
made and whether an individual is a co-inventor when
an alleged co-inventor requires another (co)-inventor to
grant them rights to the invention, i.e., the joint right to
a patent registration.
According to the Munich Higher Regional Court, a joint
right to an invention arises when a sample sent by the
alleged co-inventor is included in the patent application in
the same composition as the sole exemplary embodiment.
In this context, the court’s assumption is noteworthy that
the mere notification of the prior art can constitute creative
contribution leading to the status of a co‑inventor.75
Only natural persons can be inventors. However, other
legal entities, including companies, can be entitled to rights
relating to inventions made by natural persons, in particular
the right to and under a patent or a patent application. The
Düsseldorf Higher Regional Court had to rule on a case
in which a company requested its managing partner and
co-shareholder to transfer the right to an invention to the
company without remuneration. The managing partner
had made the invention in the context of the corporate
purpose. The court ruled that the company has a claim
against its managing partner if he is responsible for the
company’s technical sector, the invention was made in
the context of a joint project and the other shareholders
have contributed their labor in their assigned areas
without remuneration.76
f) Miscellaneous
The limitation period for patent infringement claims is three
years. The period commences at the end of the
year in which the relevant claim arose and the rights holder
becomes aware of the circumstances giving
rise to the claim and gains knowledge of the infringing
person. It also commences when the rights holder is
unaware of the above but their unawareness is due
to gross negligence. The limitation period for claims
for cease-and-desist orders commences anew with
each violation.
The Düsseldorf District Court has clarified that the
continuous advertising of an attacked embodiment
constitutes a continuous infringement in the form of
an enduring act. As long as the infringement persists,
the limitation period cannot start to run. In contrast,
for claims referring to past actions, such as a claim for
damages, the limitation period starts to run with the
respective part of the enduring act, meaning on the
date the infringing act is committed.77
72 LG Düsseldorf, 5 November 2013 – case 4a O 8/13; as well as LG Mannheim, 10 December 2013, BeckRS 2014, 06642.
73 LG Düsseldorf, 19 September 2013 – case 4c O 14/13; 19 September 2013 – case 4c O 15/13.
74 OLG Düsseldorf, 18 July 2013 – case I-2 U 99/11, BeckRS 2013, 18748.
75 OLG München, 19 December 2013 – case 6 U 4586/10.
76 OLG Düsseldorf, Mitt. 2014, 337.

12 White & Case
Pursuant to Article II Section 1 Para I of the Law on
International Patent Conventions (Art. II § 1 I IntPatÜG)
the applicant of a published European patent application
covering the Federal Republic of Germany can request
compensation of those who, in knowledge of the
application or grossly negligent lack of such knowledge,
have used the invention on which the patent application
is based. However, pursuant to Article II Section 1 Para
II of the Law on International Patent Conventions (Art. II
§ 1 I IntPatÜG), compensation is only due from the date
on which a German translation of the application has
been published or has been submitted by the applicant
to the user. According to the Düsseldorf Higher Regional
Court, the translation requirement under Article II Section
1 Para II of the Law on International Patent Conventions
(Art. II § 1 I IntPatÜG) exists regardless of the other party’s
foreign language skills and is a general requirement of the
claim for compensation.78
The winning party in patent infringement proceedings
(including the defendant) may be entitled to have the
judgment published if they have a legitimate interest
in the publication of the judgment and can sufficiently
demonstrate this. The Düsseldorf District Court requested
publication of a judgment that the claimant demonstrated
that at the time of the decision the confusion of the
market persisted and this confusion exceeds the extent of
confusion involved with any “normal” infringement.79
7. Right of use
The defendant may counter the allegation of an unlawful
patent infringement by arguing that they have a right of use
because they had already made and used the invention
prior to the filing of the patent-in-suit (right of prior use)
or because they were granted a license for the patent.
However, the defendant must substantiate this clearly and
in detail and prove it if the claimant disputes this.
i) Right of prior use
The defendant is entitled to a right of prior use if he
has used the invention prior to the patent application
in Germany or made the necessary arrangements for
the use of the invention. The Düsseldorf District Court
has ruled that a right of prior use requires actions which
demonstrate the strong and genuine intention to use the
invention immediately. The decision to use the invention
for commercial purposes must have been made.80
The
court seems to have a stricter view than the Federal
Court of Justice in its decision Europe journey, which at
least stated that the fact should be considered that the
introduction of innovations often requires significant effort
which in turn requires time.81
In the case decided by the
Düsseldorf District Court, the defendants planned to place
springs to connect laminate or hardwood floor elements
on the market. For this purpose they carried out tests with
a spring covered by a utility model but also tested another
version. Since the actions related to various embodiments
of which only one was covered by a utility model, the court
denied the defendant a right of prior use.
ii) Licenses
A license does not necessarily have to be granted
explicitly; it can also be granted by implication. According
to the Düsseldorf District Court, a precondition of an
implied grant of license is that the rights holder clearly
indicates that they want to grant a right of use. As in
copyright law, in patent law the principle applies that the
proprietary rights holder usually confers only the necessary
rights of use to third parties.82
In recent years, the question of whether and under which
circumstances simple licenses are insolvency-proof was
the subject of intense debates. The Munich I District
Court has confirmed that simple licenses, which were
granted without limitation under so-called cross-licensing
agreements against payment of a one-off license fee,
are insolvency-proof. Licenses which did not exist upon
conclusion of the license agreement (because they
were granted for future inventions) but which came
into existence prior to the commencement of licensing
proceedings are also insolvency‑proof.83
78 OLG Düsseldorf, 5 September 2013 – case I-2 U 108/11, BeckRS 2014, 01151.
79 LG Düsseldorf, 27 August 2013 – case 4a O 181/12.
80 LG Düsseldorf, 24 April 2014 – case 4b O 129/11, in reference to BGH, GRUR 1969, 35, 36 – Europe journey; see also on the identity of a
previously used embodiment LG Düsseldorf, 29 April 2014 – case 4b O 56/12.
81 BGH, GRUR 1969, 35, 36 – Europe journey.
83 LG München I, 21 August 2014 – case 7 O 11811/12.

13
The defendant can use the so-called compulsory license
defense under antitrust law as a defense against the
patent holder’s claim for an injunction. This requires that
the patent holder refuses to grant the defendant a license
under non-discriminatory conditions and thus abuses their
dominant position on the market. According to the Federal
Court of Justice’s Orange-Book decision, the patent
holder’s conduct in bad faith can only be considered if
the defendant made an unconditional offer to the patent
holder to enter into a license agreement. In the absence
of such an offer, the compulsory license defense cannot
successfully be used. According to the Karlsruhe Higher
Regional Court, the defendant’s request to be notified of
specific contractual conditions under which a single license
is offered does not constitute the compulsory license
defense. The court assumes that even if the ECJ modifies
the criteria of the Orange-Book decision, an acceptable
offer and the accounting for the past remain requirements
of the compulsory license defense.84
It seems now that
the developments within Europe undermine this.
iii) Experimental privilege
The so-called market authorization privilege states that the
effect of a patent does not extend to experiments which
are necessary to obtain an authorization or approval under
pharmaceutical law. The experimental privilege permits
experimental activities relating to the subject matter of
the patented invention.
The Düsseldorf Higher Regional Court had referred
to the ECJ the question of whether Article 10 of the
Directive 2001/83/EC should be interpreted to mean
that the protection under a patent is also excluded if a third
party for purely commercial reasons offers or supplies a
patented active ingredient to a manufacturer
of generics for use for privileged purposes.85
The
dispute was settled.86
The court has assumed that
such acts of provision fall under the market authorization
privilege. However, it had to use significant dogmatic
creativity to get to this conclusion.87
8. Exhaustion
If a patent holder or any other party authorized by the
patent holder brings a product covered by the patent
on the market within Germany or the EC/EEA, everyone
can sell, offer, use, purchase, possess, etc. that product,
even without the patent holder’s consent. The patent
holder’s consent is not required. The patent holder’s
right with regards to the product is not infringed; it is
exhausted. The background of the exhaustion doctrine
is the consideration that the patent holder should only
once have the opportunity to enjoy the benefits of the
proprietary right.
German courts deal with issues regarding exhaustion on
a regular basis during proceedings. Exhaustion raises a
number of problems that still have not been satisfactorily
solved in detail. The German courts still tend to rule
primarily in favor of the patent holder. Despite isolated
approaches to the contrary in legal literature, case law
strictly applies the principle that exhaustion can only be
considered if the patent holder in Germany or the EC/EEA
has consented to have the patented product placed on the
market. The German patent law has not yet established a
practice guided by substance, as has been represented,
for example, in the US Supreme Court’s Quanta v. LGE
decision. However, a certain shift in favor of competition
and to the detriment of proprietary rights holders has
emerged lately.
84 OLG Karlsruhe, WuW 2014, 519.
85 OLG Düsseldorf, GRUR-RR 2014, 100 – “Market approval privilege”.
86 Wuttke, Mitt. 2014, 452.
87 OLG Düsseldorf, GRUR-RR 2014, 100 – “Market approval privilege”, contrary LG Düsseldorf, 3 July 2012 – case 4a O 282/10, BeckRS
2013, 01711; see note of Hoppe-Jänisch, GRUR-RR 2014, 108.

14 White & Case
Exhaustion requires that the entire patented product has
been placed on the market. If only parts of a product
were placed on the market, exhaustion occurs only
with regards to these parts but not with regards to the
entire product. There are patents which, in addition to a
component, protect whole systems which are produced
with the component. If only the component (i.e., a chip)
is placed on the market, the question arises whether the
integration of the component into a system (i.e., a mobile
phone) infringes the system patent or whether the alleged
infringer can rely on an “extended exhaustion.” According
to the Düsseldorf District Court, an “extended exhaustion”
of a patent on a system can be considered when the
invention is practically fully realized with the part that was
placed on the market. If the part that is not placed on the
market is merely a marginal ingredient for the concept of
the invention, which the customer can easily combine with
the part that was placed on the market, then exhaustion
occurs with respect to the complete, patented product.88
The “Specific Mechanism” constitutes an exception
from the principle of exhaustion for parallel imports of
pharmaceuticals.89
It states that a patent for pharmaceutical
substances is not exhausted with regards to products that
were placed on the market in certain countries in Central
and Eastern Europe before these countries joined the EU
in 2004. However, this is subject to the condition that prior
to those countries’ accession, no “equivalent protection”
comparable to a patent could be obtained for the respective
pharmaceutical substance. According to the Düsseldorf
District Court, “equivalent protection” in the context of the
“Specific Mechanism” requires an absolute protection of
pharmaceutical substances. Protection certificates issued
on the basis of method patents are not sufficient.90
Although the protection conferred by the patent is
limited to the products that have been intentionally
placed on the market, the right to remanufacture such
products remains with the patent holder. However, the
defense of exhaustion in relation to the maintenance and
restoration of a product is only justified if such actions
are merely carried out for maintenance or repair purposes
but not to remanufacture the product. The Düsseldorf
Higher Regional Court has indicated that the decisive
factor for the differentiation between remanufacturing
and maintenance can be whether the replaced part
was known in the prior art or whether it was at least
obvious.91
According to the Düsseldorf District Court,
the public’s expectations are irrelevant when balancing the
patent holder’s legitimate interests against the
buyer’s legitimate interests.92
The balancing of said
interests is necessary for the differentiation between
remanufacturing and maintenance.
Exhaustion does not apply if a software program
implementing the teaching of the patent is publicly
available for download but refers to the existing patent
rights because it is obvious to the downloader that
the patent holder has not consented to the use of
such downloads.93
9. Employee inventions
The German Law on Employees’ Inventions
(Arbeitnehmererfindungsgesetz) governs the legal
relationship of employer and employee with regards
to inventions an employee makes in the course of their
employment (employee inventions). The German Law
on Employees’ Inventions contains primarily provisions
for the employees’ protection.
Although the employer is entitled to the employee
inventions or the rights and assets arising from the
invention, the employer does not per se acquire these
by law. Rather, the employer has the opportunity to acquire
the rights to an invention after the employee
has notified the employer of the employee invention.
The acquisition happens through the so-called claiming
of an invention. The employee has a statutory obligation
to notify the employer of the invention.
The rights to future employee inventions cannot be
transferred effectively to the employer in advance.
This is because the law prevents the parties to an
employment contract from entering agreements that
deviate from statutory provisions to the employee’s
detriment prior to the notification of an invention. “IP
Assignment Agreements” in employment contracts, which
are standard in the United States, are therefore not
effective in Germany with regards to inventions.
88 LG Düsseldorf, 3 June 2014 – case 4c O 98/13.
89 The “Specific Mechanism” is regulated in the EU Accession Treaty of 16 April 2003.
90 LG Düsseldorf, 26 August 2014 – case 4c O 116/13, BeckRS 2014, 17689.
92 LG Düsseldorf, 3 June 2014 – case 4c O 98/13; insofar probably not compatible with OLG München, 13 June 2013 – case 6 U 3412/10.

15
The employer is obliged to pay to the employee a reasonable
remuneration for claimed employee inventions in addition
to and irrespective of their regular salary. The amount of
the remuneration is based on the economic value of the
invention. Employee and employer must agree the type
and amount of the remuneration promptly after the claiming
of the invention. If circumstances that were decisive for
determining the amount of the remuneration change
later materially, both employer and employee can request
the respective other party’s consent to enter into a new
agreement on the remuneration which reflects the changed
circumstances. The Düsseldorf District Court has ruled that
the termination or expiry of an employment relationship
can constitute a material change of circumstances. If the
parties to an employment convert the remuneration into
a part of the employee’s continuous salary, the employee
may be entitled to request the amendment of the agreed
remuneration arrangement in the event of the employment
relationship’s termination.94
The employer has a statutory obligation to register a
claimed employee invention for the grant of a proprietary
right (patent or utility model) in Germany. Generally, the
employee’s entitlement to remuneration only refers to
acts of utilization up to the expiry of the proprietary right
granted with regards to their invention. The reason for
this is that the employer loses the monopoly conferred by
the proprietary right upon the expiry of said proprietary
right.95
The entitlement to remuneration can survive the
term of the proprietary right only in exceptional cases,
for example, if the employer’s privileged position on the
market conferred by the patent continues to exist after
the expiry of the patent.
For the purpose of calculating remuneration and/or plausibility
checks, the employee is entitled to information and financial
reporting on turnover obtained by the employer through
the invention. The entitlement to information and financial
reporting is an annex to the claim for remuneration. Hence
it can only exist for as long as the employee is entitled to
receive remuneration. According to the Düsseldorf District
Court, the employee’s entitlement to inventor’s remuneration
and to information and financial reporting also do not extend
beyond the term of the proprietary right if the proprietary right
was abandoned prior to the expiry of its maximum term of
protection with the employee’s consent by non-payment of
the annual fees.96
In the view of the Düsseldorf Higher Regional Court, the
right to information includes information on production
quantities97
if the employee has a need to check these. This
is the case if the employer has neglected their obligation
to determine the employee’s remuneration, for a very long
time.98
(If the employee and the employer cannot come to
an agreement on the amount of remuneration, the employer
has to determine the remuneration unilaterally.) However,
there is no need99
for information on the volume of use.100
In
the case decided by the court, the claimant’s new employer
was a direct competitor of the old employer who was now
the defendant. The court protected the defendant’s legitimate
interest in maintaining confidentiality by granting an auditor’s
qualified opinion. An auditor’s qualified opinion allows the
defendant who is obliged to disclose information to disclose
the names of their buyers and suppliers to a neutral auditor
sworn to secrecy rather than to the claimant. In another case,
the parties had entered into an agreement on remuneration
but the turnover that was the basis for the calculation of
the remuneration remained unclear. The court assumed by
way of interpretation of the contract that the employer is not
obliged to disclose information on payments unrelated to
the invention.101
94 LG Düsseldorf, 25 March 2014 – case 4a O 122/12, BeckRS 2014, 19050.
95 The obligation to remunerate employee inventions is based on the monopoly principle which is the basis of the German law on
employee inventions. For example, the US law primarily follows the special payments principle.
97 “Production quantity” means the quantity of the products manufactured by applying the patented method.
98 OLG Düsseldorf, 24 October 2013 – case I-2 U 63/12, BeckRS 2013, 18744 = GRUR-RR 2014, 240 Ls., with reference to BGH,
GRUR 2010, 223, 227 – “Inner door reinforcement”.
99 OLG Düsseldorf, 24 October 2013 – case 2 U 63/12, BeckRS 2013, 18744 = GRUR-RR 2014, 240 Ls.
100 “Volume of use” means the number of times the patented method is applied.

16 White & Case
Following the Federal Court of Justice’s decision Initial
idea,102
the court has clarified that in case of an invalid
claiming of the invention, the employer’s proprietary
rights application does not automatically transfer to the
employee.103
Rather, the employee must request the
transfer of the patent application. This must be done in
accordance with Section 8 of the German Patent Act
(§ 8 PatG) within two years from the publication of the
grant of the patent, unless the employer acted in bad
faith. The employer did not act in bad faith if the patent
application was prepared together with the employee and
the employee did not notify the employer of their rights.
It may be doubtful that bad faith can also be excluded
when a company has the common misconception that
the employer is per se entitled to an invention made by the
employee in the course of their employment.104
The employee’s claims for appropriate remuneration
lapse within the limitation period of three years. The
limitation period commences at the end of the year
in which the claim arose and the claimant (in case of
remuneration claims the employee) becomes aware
of the circumstances giving rise to the claim and gains
knowledge of the debtor’s identity. It also commences
when the claimant is unaware of the above but their
unawareness is due to gross negligence. According
to the Düsseldorf District Court, knowledge of the
inventorship, the invention’s nature as employee
invention, the claiming of the invention and the fact
that the employer has used the invention are sufficient
for the commencement of the limitation period even if only
the essentials of these facts are known.105
II. Procedural law
According to German practice, two essential points on
procedural law have to be made. One is to emphasize that
with the possibility of summary proceedings, the German
civil procedure law hands the affected patent owner a
sharp sword to speedily enforce their rights. Within a
few weeks, the patent owner can obtain an enforceable
preliminary injunction if the matter is urgent and the patent
owner is entitled to the claim. The courts respond even
faster to disputes in connection with trade fairs. On the
other hand, the German patent litigation is still ruled by the
principle of the bifurcation of infringement and invalidity
proceedings. In infringement proceedings, the alleged
infringer cannot successfully bring the argument that
the claimed patent was granted wrongly. Although the
infringement court can suspend the infringement dispute
with regard to parallel pending proceedings regarding the
legal validity of the patent, it very rarely does so. Given
the significantly longer duration of validity proceedings
compared to the duration of infringement proceedings,
in many cases this is a strategic advantage for the patent
owners, who often can enforce their rights without regard
to their legal validity.
1. Main proceedings
The infringement proceedings follow very clear rules,
which are written down in the German Civil Procedure
Code (Zivilprozessordnung). Mostly, the procedural law
leaves no room for judicial discretionary decisions.
i) Jurisdiction
The court will only deal with the matter if it has jurisdiction
under the civil procedure rules.
According to Section 32 of the German Civil Procedure
Code (§ 32 ZPO), the court within whose district an
act was committed has jurisdiction for actions in tort.
According to the Düsseldorf District Court, the fact
that an offer on the Internet is worded in English does
not preclude the court’s jurisdiction in accordance
with Section 32 of the German Civil Procedure Code
(§ 32 ZPO). Experience has shown that users within
the court’s jurisdiction who are in command of the
English language make use of the offer. Whether this
also applies to other languages remains unclear.106
102 BGH, GRUR 2011, 733 – Initial idea.
103 OLG Düsseldorf, 24 October 2013 – case I-2 U 24/12, BeckRS 2013, 18741.
104 Unclear OLG Düsseldorf, 24 October 2013 – case I-2 U 24/12, BeckRS 2013, 18741, with the thought that a certain level of knowledge
brought on by a patent department or legal department could conflict with this; without differentiation: Wuttke, Mitt. 2014, 452, 458.
106 LG Düsseldorf, 8 May 2014 – case 4a O 195/12, BeckRS 2014, 09990.

17
In the event of parallel proceedings abroad, the court has
no international jurisdiction if the claim and the parties of
the foreign proceedings are identical to those in German
proceedings. According to the Düsseldorf District Court,
the parties are not automatically identical if one is a GmbH
and the other is its managing director. According to the
court, the identity of the parties cannot be argued based
on the general assumption of identical and inseparable
interests. The fact that both courts assess whether the
attacked products are covered by the patent-in-suit does
not constitute a close enough connection to render joint
proceedings and a joint decision necessary107
under Article
28 Para II of the European Jurisdiction and Enforcement
Regulation (Art. 28 II EuGVVO)108
.
According to the Munich I District Court, a dispute over the
continuous existence of patent licenses following
the licensor’s insolvency constitutes a patent dispute.109
ii) Specification of the heads of claim (Klageantrag)
The claim must be submitted with a specific application
that clarifies what exactly the claimant wants. The
application must state with sufficient clarity which
embodiments should be the subject of the injunction.
In practice, this is not always complied with because
the courts usually deem it sufficient that the patent
owner simply repeats the wording of the asserted patent
claim and applies for the opponent to be banned from,
for example, distributing embodiments which meet
these features.
According to the Düsseldorf Higher Regional Court, it is
sufficient to repeat the wording of the patent claim in the
heads of claim.110
To enforce the judgment, the operative
part of the judgment can be interpreted on the basis of the
grounds of the decision.111
However, the Munich Higher
Regional Court strongly agrees with the Federal Court
of Justice’s decision Blown film extrusion and requests
specified heads of claim.112
According to the Düsseldorf
Higher Regional Court, if the patent claim contains
alternative features, the heads of claim that merely repeat
the wording of the patent claim must be interpreted as a
request for a judgment with regards to all alternatives.113
iii) Substantiation, denial and standard of evidence
To what extent and in what depth the parties have to
plead questions of patent infringement is often disputed
between the parties involved.
Pursuant to Section 296 Para II of the German Civil
Procedure Code (§ 296 II ZPO), evidence that was
submitted late may be rejected if the delay was caused
by gross negligence and if its admission would delay the
settlement of the dispute. According to the Düsseldorf
District Court, the claimant must submit evidence on time
with regards to their right to sue (Aktivlegitimation). In
the case in question, the claimant applied at the hearing
to have their right to sue confirmed through the hearing
of a witness. In the court’s view, this required at least
an additional hearing on another date. The delay of the
submission of the evidence was caused by the claimant’s
gross negligence.114
As a precaution, the evidence must
be submitted at the latest when the reply is submitted if it
cannot be ruled out that the fact for which evidence
is required will be denied in the rejoinder.
It should also be noted that, according to the Düsseldorf
Higher Regional Court, a general denial without submitting
statements on individual features of the patent claim
results in the opposite party’s statement of facts is
deemed to be admitted.115
107 LG Düsseldorf, 3 April 2014 – case 4b O 114/12, BeckRS 2014, 08590.
108 (EU) Regulation on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
109 LG München I, 21 August 2014 – case 7 O 11811/12, BeckRS 2014, 16898.
110 OLG Düsseldorf, 15 May 2014 – case I-2 U 74/13, BeckRS 2014, 14360; also LG Düsseldorf, 24 October 2013 – case 4c O 3/12
with reference to Kühnen, GRUR 2006, 180; contrary BGH, GRUR 2005, 569 – Blown film extrusion; in agreement with the
Federal Court of Justice is probably the LG München I, 30 December 2013 – case 7 O 5327/13, BeckRS 2014, 05284.
111 OLG Düsseldorf, 15 May 2014 – case I-2 U 74/13, BeckRS 2014, 14360.
112 OLG München, 14 November 2013 – case 6 U 317/12.
113 OLG Düsseldorf, 15 May 2014 – case I-2 U 74/13, BeckRS 2014, 14360.

18 White & Case
In principle, each party to civil proceedings must submit
statements on the facts alleged by the respective other
party. However, a party can plead ignorance regarding
facts that are neither based on the party’s own actions
nor on their own perception. However, the courts are
very reluctant in allowing a party to plead ignorance in
patent infringement proceedings. Pleading ignorance with
regards to the design of the attacked embodiment is not
even permitted if the embodiment is neither manufactured
nor distributed by the defendant. This applies at least if
the disputed products are freely available.116
According to
the Düsseldorf District Court, the defendant’s argument
that the patent’s scope of protection is unclear does not
constitute a denial of the infringement allegation.117
The
defendant cannot effectively dispute the implementation of
a feature by merely doubting the claimant’s findings if the
defendant fails to demonstrate in addition that the attacked
embodiment has actually not been implemented.118
In the event that a method for the manufacturing of a new
product is the subject of a patent-in-suit, the following
applies in accordance with Section 139 Para III of the
German Patent Act (§ 139 III PatG): The same product
manufactured by the defendant is deemed to have been
manufactured in accordance with the patented method
unless the defendant proves that this is not the case.
Hence it is presumed in favor of the patent holder that
the patent is infringed. The Hamburg District Court has
deemed the claimant’s reference to a patent office’s
research report sufficient proof of the product’s novelty
under Section 139 Para III of the German Patent Act
(§ 139 III PatG).119
The Düsseldorf Higher Regional
Court’s view that the use of a patented method can
be demonstrated indirectly with indications that allow
conclusions on the use of that method is important
with regards to the proof of an infringement.120
The Düsseldorf District Court has made it clear once again
that a patent infringement cannot be deemed undisputed
like a pure statement of fact. Hence it is the claimant’s
responsibility to present facts that enable the court to
assess the infringement of the patent-in-suit.121
The decision
does not question the courts’ sensible practice to refrain from
addressing undisputed features unless the parties’ unanimity
is based on evidently wrong assessments.
iv) Criteria for suspension
As previously stated, the issue of the suspension of an
ongoing infringement dispute with regard to parallel pending
proceedings regarding the legal validity of the patent is of
considerable importance due to the separation principle
that is in force in Germany. However, the obstacles to a
suspension are large.
a) Patent
In patent infringement proceedings, most courts require a
high prospect of success in a pending nullity action before
granting a suspension.
In contrast to other courts, the Braunschweig District
Court has fewer requirements and considers the fact that
statistically the majority of patents do not survive nullity
proceedings undamaged. The court had also focused
on the fact that the relevant patent-in-suit had not yet
been successfully enforced through litigation and nullity
proceedings had not been successfully disputed abroad.122
A decision of the Düsseldorf District Court confirms
the reluctance to suspend with regards to the lack of
an inventive step. In the decision in question, the court
rejected a suspension with the dubious argument that the
expert may have made an intellectual effort in combining
prior art references.123
The court overlooks the fact that a
mere intellectual performance cannot be equated with an
inventive step. In other proceedings, the court has shown
that it considers foreign judgments on parallel proprietary
rights very cautiously.124
Conflicting expert opinions on the
inventive step also exclude a suspension.125
Even an interim
decision of the Federal Patent Court that is favorable for the
defendant is no guarantee of a suspension, especially not if
the court takes a different view on patent interpretation.126
117 LG Düsseldorf, 5 December 2013 – case 4b O 78/13.
118 LG Düsseldorf, 7 November 2013 – case 4b O 199/11.
120 OLG Düsseldorf, 18 July 2013 – case I-2 U 99/11, BeckRS 2013, 18748.
121 LG Düsseldorf, 18 March 2014 – case 4c O 73/13.
122 LG Braunschweig, 20 November 2013 – case 9 O 88/13.
123 LG Düsseldorf, 29 April 2014 – case 4b O 56/12.
124 LG Düsseldorf, 4 July 2013 – case 4b O 9/12, eventually contrary to the decision of the US FCCA, 30 August 2006 – case 05-1426.
125 LG Düsseldorf, 3 September 2013 – case 4a O 108/12 U., BeckRS 2014, 00495; The LG Düsseldorf seems to rely on interim decisions
of the EPO that are in favor of keeping the patent: LG Düsseldorf, 5 December 2013 – case 4b O 168/11.
126 LG Düsseldorf, 22 July 2014 – case 4c O 70/13.

19
The Munich Higher Regional Court deems it sufficient
in appeal proceedings if the nullity proceedings have an
overwhelming prospect of success. However, this does
not apply if the nullity action was filed late without good
reason. In this case, a requirement for a suspension is that
a summary assessment already shows that the late attack
on the patent’s validity will certainly destroy the patent.127
The Munich I District Court has stated that the defendant
should attack the patent-in-suit at the latest in response
to a pre-trial warning. A later attack by the defendant on
the patent-in-suit tends to negate a suspension.128
According to the Düsseldorf District Court, the suspension
of infringement proceedings due to other proceedings,
which are preliminary, may even be permitted if the other
proceedings have no legal effect on the infringement
proceedings because the parties in the respective
proceedings are different.129
The subject of the other
proceedings was an action for a declaratory judgment
regarding a license agreement between the claimant
in the infringement proceedings and a third party from
which the defendant in the infringement proceedings
derived their right of use.
b) Utility model
If cancellation proceedings are pending at the German
Patent and Trade Mark Office (DPMA) with regards to a
utility model, the court of the infringement proceedings
may order the suspension until the DPMA has found a
decision. If the infringement court deems the disputed
utility model invalid, it must order the suspension.
The Munich I District Court now takes the view that
a suspension should be ordered if it can be doubted
that the DPMA will confirm the attacked utility model’s
protectability.130
In contrast, the Karlsruhe Higher Regional
Court has found that a suspension requires a substantial
probability of destruction of the utility model if the DPMA
has already ruled favorably on the legal validity of the
disputed utility model.131
v) Miscellaneous
At a party’s request, the court may order the other
party to present certain documents as evidence. On
several occasions the Düsseldorf District Court has
taken a view on applications for an order to produce
documents that were seized in parallel proceedings in
the USA. Those were seized as part of a “discovery”
and were subject to a “protective order.” In one case,
the court has acknowledged that in such a situation, the
party who bore the burden of proof must not disclose
the content of documents under a “protective order” of
which it gained knowledge via the “discovery” as this
would violate the “protective order” and it would result
in immense procedural disadvantages for the claimant in
the US proceedings. However, the court requested that
the party perform their procedural obligations and thus
specifies, although without reference to individual sources
of knowledge, which facts they intend to make the subject
of the proceedings.132
It is not very clear how this is
supposed to work. In another case, the court has rejected
the application for an order to produce documents. The
court did not take into account that the party who bears
the burden of proof faces the risk of prosecution in the
United States. According to the court, the requesting
party would have to substantiate clearly the content of
those documents whose production is requested. If the
requesting party feels barred from this substantiation in
view of the “protective order,” this would not justify an
order to produce documents in Germany. The court did not
state why.133
the defendant in case of a cease-and-desist order
is not obliged to ensure that products already sold by
him but not yet distributed by the defendant’s buyers
are removed from the market.134
127 OLG München, 7 November 2013 – case 6 U 5165/12.
128 LG München I, 30 December 2013 – case 7 O 5327/13, BeckRS 2014, 05284.
129 LG Düsseldorf, 11 July 2013 – case 4b O 164/11, BeckRS 2013, 17113.
130 LG München I, 17 July 2013 – case 21 O 22131/12; contrary LG München I, 19 May 2011 – case 7 O 6033/10, BeckRS 2012, 04008.
131 OLG Karlsruhe, GRUR 2014, 352 – “Punching tool”.
132 LG Düsseldorf, 25 July 2013 – case 4c O 26/13.
133 LG Düsseldorf, 12 December 2013 – case 4b O 87/12, BeckRS 2014, 01803.
134 OLG Düsseldorf, 22 September 2013 – case 2 W 37/11, BeckRS 2013, 21057; contrary OLG Köln, GRUR-RR 2008, 365 –
“Furniture dealer”.

20 White & Case
Pursuant to Section 140c of the German Patent Act
(§ 140c PatG), the court may order the defendant at the
claimant’s request to produce certain deeds or to submit
for inspection items in the defendant’s possession or to
enable the inspection if this is necessary for the claimant’s
evidence. The Munich Higher Regional Court has held that
an application for a production order under Section 140c of
the German Patent Act (§ 140c PatG) may be made either
via an application for a preliminary injunction or
by way of an action (by stages).135
2. Summary proceedings
In summary proceedings, the applicant has to substantiate
two things: on the one hand, the existing claim in its merits
and on the other hand, the reason why the matter should
be decided in summary proceedings. The question of the
grounds for a preliminary injunction and the question of
urgency contained therein belong to this second aspect.
i) Grounds for a preliminary injunction
In addition to the urgency, the grounds for a preliminary
injunction require that the patent or the utility model is
likely to be valid. Unlike in the main proceedings, the court
must consider this in its decision in summary proceedings.
The courts request that the legal validity of the patent
is sufficiently assured. According to the practice of the
Düsseldorf courts, which do not always strictly abide by
this principle, this requires that the patent has already
survived opposition or nullity proceedings.
The Düsseldorf District Court makes another exception
from the principle that the applicant must prove the validity
of the patent. This time, the exception refers to the case
that the defendant’s possibilities of defense are not limited
because they lodged an opposition against the court
order several months after they were served with it. In
that case, the patent’s secured legal validity can already
be assumed if the prior art would not have presented
grounds for a suspension of the main proceedings. It is
irrelevant that the defendant is a Chinese company for
which time-consuming translations had to be written.
However, the grounds of the decision stating that such
translations would also have been necessary in principal
proceedings are questionable. This means that the court
refrains from determining the actually relevant issue of
whether the defendant was able to defend themselves
sufficiently in light of the circumstances (even in fictitious
principal proceedings).136
The Düsseldorf District Court seems to waive the
requirement of a positive decision on the patent’s legal
validity if the legal validity was accepted by a company,
the business of which the defendant took over via an
asset deal.137
In cases where manufacturers of generics asserted a
patent infringement, the courts have sometimes waived
the requirement of a positive decision on the patent’s
validity as evidence for a sufficient legal validity. The
reason for this was often the enormous damage the
generics companies would cause if the patent would
later be upheld. In such exceptional situations, it is
unreasonable for the claimant to await the outcome
of opposition or nullity proceedings. According to the
Düsseldorf District Court, the case law developed on
generics cannot be transferred to other cases where
competitor drug manufacturers are involved who undergo
authorization procedures for the attacked product based on
their own research. In such cases, the courts still require in
summary proceedings that the legal validity
of the patent is sufficiently solid. This usually means
that the patent must have already survived opposition
or nullity proceedings.138
According to the Düsseldorf District Court, the mere
fact that the defendant is a generics manufacturer does
not justify the grant of a preliminary injunction based
on a utility model. The case law applicable to patents
cannot be transferred to generics manufacturers’ acts
of infringements regarding a utility model, as a utility
model is an unexamined proprietary right.139
135 OLG München, 14 January 2014 – case 6 W 393/13.
136 LG Düsseldorf, 8 May 2014 – case 4a O 68/13, BeckRS 2014, 10849, in this case a period of more than five months lapsed until
opposition proceedings were initiated.
137 LG Düsseldorf, Urt. v. 5.11.2013 – 4a O 69/13.
138 LG Düsseldorf, Urt. v. 24.10.2013 – 4c O 84/13.
139 LG Düsseldorf, Urt. v. 12.9.2013 – 4b O 43/13, BeckRS 2013, 16501; Urt. v. 12.9.2013 – 4b O 44/13.

21
The fact that an attacked embodiment has already been on
the market for several years does not mean that there are
no grounds for a preliminary injunction. According to the
Düsseldorf District Court, there is no principle stating that
once a product has been on the market for a long time it
can no longer be attacked by way of summary proceedings
regardless of whether the applicant’s knowledge of the
relevant circumstance or grossly negligent lack of such
knowledge can be determined. Such protection against
an application for a preliminary injunction regardless of the
applicant’s knowledge of the product has no legal basis.140
The Düsseldorf Higher Regional Court has defused the
sometimes inconsistent handling of urgency in cases
concerning generics that was criticized in the last report.
Thus, in a case in which the defendants in summary
proceedings had lodged a nullity action only a few months
previously and relatively shortly before the expiry of the
proprietary right, the court rejected the Düsseldorf District
Court’s approach. The district court had held that the
defendant’s attack on the proprietary right’s validity must
be evident to refute the grounds for an injunction.141
In
case of an (supposed) attack on the proprietary right’s
validity, sufficiently solid validity of the right should not
be assumed if only the opposition or nullity proceedings
initiated by a generics manufacturer have no evident
prospect of success. In principle, it cannot be of notable
interest to enforce an injunction that is based on a
proprietary right whose validity the court does not
regard as highly probable.142
ii) Urgency
The aspect of urgency is treated with rigor. The courts
generally require that the owner of an infringed patent
act against the infringement without undue delay. If they
hesitate, they can only pursue their rights successfully
in the main proceedings. In these cases this is called
self‑refutation. The patent owner usually cannot delay for
more than approximately six weeks until they apply for
injunctive relief. The time period is calculated from the date
on which an application with a chance for success could
be filed against the alleged infringer. However, it is not
always easy to determine when the time period begins in
individual cases. It is also important in terms of urgency
that the applicant pursues the proceedings without delay
following the filing of the application. Hence it may conflict
with the urgency requirement if the applicant applies for
considerable deadline extensions for the submission of
written statements.
On the question of urgency, the Düsseldorf District
Court took the view that the applicant in summary
proceedings does not have to take action against the
patent immediately after obtaining knowledge of the
opposition division’s decision in opposition proceedings.
At least this applies in cases where the decision was
appealed. However, the applicant must take action
upon gaining knowledge of the operative part of the
appeal chamber’s decision in order to swiftly assess the
prospects of success of an application for an injunction
and prepare the application. In any event, the urgency
may be denied if seven weeks have lapsed since the
applicant gained knowledge of the complete appeal
judgment.143
If a utility model is the subject of an
application for a preliminary injunction, the utility model’s
registration date is relevant for the assessment of the
urgency since the utility model owner’s right to sue
(Aktivlegitimation) comes into existence at that point in
time and only then do third parties need to observe the
proprietary right.144
The patent holder may thoroughly
examine the attacked embodiment and, for this purpose,
wait for the alleged infringer’s upcoming appearance at a
trade fair.145
140 LG Düsseldorf, Urt. v. 26.9.2013 – 4c O 78/13.
142 OLG Düsseldorf, 7 November 2013 – case I-2 U 94/12, BeckRS 2014, 04902 = GRUR-RR 2014, 240 Ls.

22 White & Case
The Hamburg District Court took the view that the
advertising of a product at a trade fair abroad is not
sufficient to set an urgency period in motion. Information
obtained at a trade fair abroad does not indicate if—and if
so, where—an act of infringement may take place in the
form of the product being placed on the market.146
With
regards to the urgency, it may be true that the patent
holder does not already have to apply for a preliminary
injunction upon gaining knowledge of an infringing product
at a trade fair abroad. However, the court’s view that trade
fairs abroad do not usually bear the risk of a first offering
(of the infringing product) in Germany cannot generally be
agreed upon.147
The court also assumed that the parent
company’s management’s knowledge that is detrimental
for the required urgency is attributable148
to the applicant of
a preliminary injunction in analogy to Section 166 Para I of
the German Civil Code (analog § 166 I BGB)149
3. Enforcement and stay of execution
In connection with the appeal, there is the option to make
an application for an interim stay of execution. According
to the Karlsruhe Higher Regional Court, a stay of execution
cannot be ordered merely because of the possibility that
the ECJ may change the criteria for the compulsory license
defense under antitrust law.150
The court’s view that the
claimant is a collecting society and thus not a player on the
market is irrelevant.151
According to the Karlsruhe Higher Regional Court, a
qualified note (interim assessment of the merits) of
the Federal Patent Court (BPatG) must be considered
as expert judgment in the context of an application for
a stay of execution. Concerns regarding the legal validity of
the patent-in-suit resulting from the qualified note usually
lead to a stay of execution.152
The alleged infringer does not have to wait for an appeal
in order to try to ward off the detriments of an impending
enforcement. This is already possible in the first instance
via an application for a stay of execution, which has to
meet very high standards. A stay of execution pursuant
to Section 712 of the German Civil Procedure Code
(§ 712 ZPO) requires a situation threatening the existence
of the alleged infringer.
The Düsseldorf District Court takes the view that it
is not sufficient for an irreversible detriment under
Section 712 Para I of the German Civil Procedure Code
(§ 712 I ZPO) that the defendant operates a “one-product
company.” The defendant must state to what extent an
alternative to the attacked embodiment they can use. This
includes a comparison of the revenues, costs and/or profits
in case of the continued use of the attacked embodiment
and the use of a technical alternative.153
The defendant
does not face an irreversible detriment if the risk of
insolvency through enforcement is eliminated154
via a letter
of comfort from the defendant’s managing director. The
court has not decided on the question of whether the mere
possibility of a letter of comfort precludes the granting of
a stay of execution. The general allegation of irreversible
damage due to an interruption of the supply chain and
a permanent exit from the market is not sufficient to
assume damage in the amount of €100 million. Rather,
the defendant must submit specific numbers in terms
of revenue.155
4. Action for restitution
In principle, a final judgment cannot be attacked under
German law. The judicial review of a final judgment is only
possible in exceptional cases. The so-called action for
restitution is admissible in the event that the patent-in-suit
is eliminated retroactively, i.e., restricted or destroyed in
opposition or nullity proceedings.
146 LG Hamburg, GRUR-RR 2014, 137 – Coronary stent.
147 Wuttke, Mitt. 2014, 452, 453, with reference to the differentiated view of the OLG Düsseldorf, 23 February 2012 – case I-2 U 134/10,
BeckRS 2012, 07640.
148 LG Hamburg, GRUR-RR 2014, 137 – Coronary stent; very cautiously Schramm/MüKo, BGB, 6.edition, 2012, § 166 marginal note 22.
149 According to Section 166 Para I of the German Civil Code (§ 166 I BGB) a representative’s knowledge is attributable to the person
they represent.
150 OLG Karlsruhe, WuW 2014, 519; EuGH C-170/13 – Huawei Technologies; see the referral decision of the LG Düsseldorf,
GRUR-RR 2013, 196.
151 OLG Karlsruhe, WuW 2014, 519.
152 OLG Karlsruhe, 29 August 2013 – case 6 U 15/12.
153 LG Düsseldorf, 4 July 2013 – cases 4b O 13/12, 4b O 10/12, 4b O 201/11.
154 LG Düsseldorf, 4 July 2013 – cases 4b O 13/12, 4b O 10/12.
155 LG Düsseldorf, 7 November 2013 – case 4b O 199/11.

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Patent case law report 2013 to 2014

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