Kranarm (crane arm) is followed by Hubsäule (lifting column) – Higher Regional Court Düsseldorf on the equal effect in the case of a deteriorated embodiment
I. Previous on doctrine of equivalents
The doctrine of equivalence is intended to ensure an adequate reward for the inventor’s contribution to the state of the art in the area of tension with legal certainty. At the same time, there are uncertainties when it comes to assessing the three conditions that allow the patent’s scope of protection to be extended. For an embodiment deviating from the literal sense of the patent claim to fall within its scope of protection, it must solve the problem underlying the invention by objectively equivalent means, the skilled person must be able to find the embodiment as having the same effect and consider it as an equivalent solution.
It can be sufficient for the objective equivalent effect of a means that the effect required according to the patent claim is achieved only to a limited extent. This understanding of objective equivalent effect was recently confirmed by the Federal Court of Justice in its Kranarm (crane arm) decision. With this judgement, the FCJ further consolidates its case law on equivalent realisation in the case of deteriorated embodiments (BGH GRUR 1999, 909 – Spannschraube; BGH, GRUR 2005, 1005 – Bratgeschirr; BGHZ GRUR 2012, 1122 – Palettenbehälter III; BGH GRUR 2015, 361 Kochgefäß; BGH GRUR 2021, 574 – Kranarm). The HRC Düsseldorf also follows this case law and agrees with the FCJ’s understanding.
In a recent judgement of 18 March 2021 (Case No. 2 U 18/19), the HRC Düsseldorf partially overturns a judgement of the RC Düsseldorf and convicts the defendants. The considerations focus on the question of when deviating means have the same objective effect and when new factual submissions by the plaintiff can be taken into account in the appeal instance.
II. The actuator and the lifting column
The plaintiff proceeded against the defendants on the basis of claim 1 of its patent-in-suit entitled “An Actuator”. The claim largely concerns an actuator operated by means of a motor. Such actuators are used, for example, in adjustable furniture such as beds, armchairs or tables. The applicant’s patent claim provides, inter alia, for the following feature:
“At least the electric motor is mounted in a tightly fitting recess in a block of foam plastic arranged and secured in the cabinet.”
The patent in suit is based on the task of reducing the noise level of linear actuators without noticeably increasing the costs. When adjusting pieces of furniture by means of such actuators, noises occur due to vibrations or gear noises. According to the invention, the aforementioned feature is intended to reduce this noise level and thus achieve noise attenuation.
The defendants sell lifting columns which can be installed in desks, for example. Contrary to the wording of the feature in dispute, the attacked embodiment did not have a coherent part made of foam plastic. However, there were three individual parts made of foam plastic around the motor. These had no contact with each other, even when installed, and thus did not form a closed surface.
III. The decision of the HRC
The RC had rejected the literal infringement. According to the technical teaching of the patent, a block of foam plastic was to be understood as a compact element. This could certainly consist of several parts, which, however, had to represent a unit when assembled. The term “block” stands for a certain compactness. In this respect, the patent in suit presupposed that individual parts were arranged in connection with each other in the cabinet. The attacked embodiment did not have such a connection. In this respect, the RC denied a literal infringement. Similarly, the RC ruled out an equivalent infringement. The defendants had contested that the attacked embodiment was just as suitable for noise insulation as a block made of foam plastic. The plaintiff was not able to counter this with sufficient substantiation.
The HRC also finds that there is no literal infringement, but it finds an equivalent infringement. This is based in particular on further submissions by the plaintiff.
The plaintiff submitted a test report on appeal. This listed the noise development of various lifting columns. The comparison included lifting columns without a foam block, those with a one-piece foam block and a lifting column with a three-piece foam arrangement comparable to the attacked embodiment. In an unloaded state, the use of a one-piece foam block reduced the noise development by 15%, that of a three-piece arrangement by 10%. In this respect, the Court found that the noise insulation of the attacked embodiment was about 5% less effective. With a weight load of 40 kg, the noise insulation achieved deviated by only 2%.
Following the case law of the FCJ (most recently crane arm), the HRC stated that it does not prevent equal effect if the effects according to the invention are not achieved 100%. It could suffice for an equal effect that the effect required according to the patent claim was only achieved to a limited extent. From the point of view of an appropriate reward for the inventor, inclusion in the scope of protection was also appropriate if the effects according to the invention were essentially achieved, i.e. to a practically still considerable extent. For this purpose, the effect according to the patent and a weighting of the deficits of the embodiment determined on this basis were decisive. In the present case, the patent in suit was not concerned with avoiding all noise development. The decisive factor was a cost-effective reduction of the noise level. This was essentially achieved even with a maximum deviation of 5%.
The plaintiff had only submitted the decisive test report in the appeal instance before the HRC. In this respect, the Court had to deal with whether it could base its decision on the report. This was possible in the present case because the defendants could not substantially dispute the report, so that the submission was considered undisputed pursuant to Sec. 138 para. 3 German Code of Civil Procedure (ZPO). After the submission of the test report, the defendants would have had to state specifically and truthfully how the achievable noise reduction of the attacked embodiment differed from the values claimed by the plaintiff. By submitting a contradictory test report with partly implausible values, the defendants had not succeeded in doing so. As the submission was therefore undisputed, the plaintiff’s new factual submission had to be taken into account in the appeal proceedings. However, since it would have been possible for the plaintiff to submit a test report already in the first instance, she had to bear the costs incurred by the appeal proceedings pursuant to Sec. 97 para. 2 ZPO.
IV. Reaching the goal with consistency
The decision of the HRC Düsseldorf fits seamlessly into the case law of the FCJ. Thus, it once again becomes clear under which conditions also deteriorated embodiments are covered by the scope of protection of a patent claim according to the doctrine of equivalence. In this respect, the decision of the HRC is to be welcomed, as it provides further legal certainty, at least with regard to deteriorated embodiments.
by Dr Katharina Brandt
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