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Higher Regional Court Düsseldorf (Infusionsvorrichtung II) – No contributory negligence of the plaintiff

In its judgement of 13 July 2023 (docket no. 2 U 79/22), the Higher Regional Court Düsseldorf had to decide the question of whether a claim for damages due to patent infringement can lapse due to contributory negligence of the plaintiff.

1. Facts of the case

The plaintiff had already brought a first patent infringement case against one of the defendants based on patent in suit A. These proceedings related to the first generation of insulin pumps, which one of the defendants had been selling on the German market since 2016. In a judgement dated 13 August 2020 (docket no. 4c O 20/19), the Regional Court Düsseldorf found one of the defendants guilty of patent infringement. The defendant did not attack the judgement on appeal. The judgement therefore became final upon expiry of the appeal period.

As a result, the defendant significantly modified the first-generation insulin pumps and launched them on the German market (second generation) in October 2020. In the course of this, it also changed its distribution structure.

Against this second generation of insulin pumps, the plaintiff filed another action before the Regional Court Düsseldorf based on patent in suit B. This action was directed against the defendant from the first lawsuit, among others. In its judgement of 26 April 2022 (docket no. 4c O 26/21), the Regional Court of Düsseldorf found the defendants guilty of patent infringement because the second-generation insulin pumps make use of patent in suit B.

The defendants have appealed against this. The defendants argue, among other things, that the plaintiff is contributorily negligent and that the claim for damages has therefore lapsed completely. The plaintiff could have already asserted the patent in suit B against the first-generation insulin pumps. The plaintiff would then have been spared a modification (second-generation insulin pump) infringing patent in suit B and an infringing act as a result.

2. Decision of the Higher Regional Court Düsseldorf

The Higher Regional Court Düsseldorf dismissed the defendant’s appeal.

The plaintiff was not guilty of contributory negligence. It is not an obligation of a patentee to prevent the infringer from further infringing acts against other patents of the patentee. This applies in any case if the patent proprietor has not established a special case of trust, for example through pre-litigation correspondence or similar. In the absence of such a special case of reliance, it is the sole responsibility of the infringer to ensure that his actions do not infringe the property rights of others. It is therefore the infringer’s duty to research the relevant third-party property rights.

In addition, the Higher Regional Court Düsseldorf stated that even in the case where such an assumption of reliance can be made, the fault of the patent infringer cannot be completely ruled out. After all, it is primarily the competitor’s responsibility to ascertain the existence of third-party property rights.

3. Practical note

This judgement by the Higher Regional Court Düsseldorf impressively demonstrates that when advising on design around solutions, it is not enough to focus solely on the property right in dispute. In any case, special attention should be paid to the other family members of the patent in suit.

Ideally, the infringer should carry out a comprehensive examination of all possible IP rights (FTO) in relation to the design around solution. Otherwise, it is possible that the design around solution may even make use of another competitor’s patents, which could lead to a further cost-intensive dispute with another competitor.

Carsten Plaga