FCJ, Judgment of 20 June 2023 – X ZR 61/21 – Faserstoffbahn
When are the limits of the right of prior use exceeded if a modification is used? The 10th Civil Senate dealt with this question in its decision Faserstoffbahn.
The subject matter of the infringement proceedings was Defendant’s panty liner. Regional Court of Düsseldorf essentially condemned Defendant as requested. On appeal to Higher Regional Court Düsseldorf, Plaintiff limited the action to a further embodiment, which featured superabsorbent polymers (SAP) for the first time, asserting a combination of main and sub-claims.
Higher Regional Court Düsseldorf denied a right of prior use and dismissed Defendant’s appeal. In its judgement, it stated that it was undisputed that the pre-used panty liner did not have any SAP. However, the prior user was limited to the use of the possession of invention which he had used before the priority date. Consequently, there was already no protected possession of invention – the question of the scope of a right of prior use in the case of modifications therefore did not arise.
In response to Defendant’s appeal, FCJ set aside the judgment and referred the case back to Higher Regional Court Düsseldorf for a new decision and hearing on the merits.
The prior user is limited to the use of the possession of invention for which all requirements of the exception were fulfilled before the priority date. The prior user is precluded from further developments beyond this possession of invention if they interfere with the subject-matter of the protected invention. Whether a different form of use exists has to be assessed on the basis of the claims interpreted in the light of the description and drawings.
In particular, the prior user exceeds the limit of its right of prior use if an additional advantage is obtained for the first time with the modification. The situation is different, however, if the patent or utility model discloses a deviation from the prior use which the person skilled in the art would have taken into account without further ado at the time of priority.
However, Court of Appeal did not carry out this examination, but erred in law in assuming that the question of scope due to a modification did not arise in principle.
The modification of a pre-used object, which realises all features of an independent claim of the utility model in suit, could also be covered by a right of prior use if the pre-used object did not realise the further features before which are now mandatory according to the motion. This applies irrespective of whether only the infringement action was based on a version of an independent claim limited in the manner mentioned or whether the utility model had been limited accordingly in cancellation proceedings.
If a modification realises additional features of a subclaim for the first time, the limits of the right of prior use are not exceeded per se. In individual cases, this may indicate that an additional advantage is achieved which is no longer covered by the right of prior use. However, this must be examined on the basis of the granted patent or registered utility model.