HIgher Regional Court (OLG) Düsseldorf: Patent infringing offering by naming a reference object and other concerns
OLG Düsseldorf, judgement of 15.07.2021 – 15 U 42/20 In its decision, the 15th Senate had to solve several problems at once. The defendant contested not only patent-infringing conduct, but also the capacity to sue due to the formal invalidity of the declaration of assignment and invoked the disproportionality of the recall claim.
The patent in suit concerns a so-called workshop and repair pit in the form of a single- or multi-part cassette. The special feature of the protected pit is two water collecting channels which extend along the upper boundary of the longitudinal side walls and are covered by grates. The collection channels catch water running off the vehicle and dispose of it. The grates ensure trafficability.
The plaintiff has been the pantent holder of the patent-in-suit since 2017. By written agreement, the original holder granted the plaintiff a non-exclusive license free of charge and assigned to it all past and future claims for damages and disclosure. The defendant designs, calculates and sells workshop pits under the name P. The pits can be configured modularly and can be delivered and assembled by the defendant.
A project was advertised for the installation of a workshop pit at a motorway maintenance. The corresponding invitation for tenders provided for “drainage channels on the left and right” for the pit to be constructed, as well as the inclusion of drivable gratings. After submitting a bid, the defendant was awarded the contract. The construction plans prepared thereafter were marked with the defendant’s logo.
The pit that was eventually installed at the motorway maintenance indisputably realizes all the features of the main claim, so it also has water collection channels and grates. The defendant advertised the pit installed there on its website by stating that they supplied the “complete technical workshop equipment, inter alia a “P. According to the advertisement the pit consisted of a steel Finished Work Pit with Roll Cover, Drainage Channels and Waste Oil Disposal”.
There was therefore a consensus that the defendant had supplied a pit. What remained in dispute was whether the defendant also supplied and installed the water collection channels and walkway grates.
II. Higher Regional Court fully confirms the decision of the Regional
Like the Regional Court, the Higher Regional Court affirmed the capacity to sue with reference to the fundamental freedom of form of the declaration of assignment. The transfer of annex claims as a material transfer agreement is possible without any form even if the causal transaction underlying the assignment required form.
The Higher Regional Court judged two actions to be patent infringing. Firstly, it considered advertising with a patent-infringing reference object to be an offer within the meaning of § 9 Patent Law (Patentgesetz). The defendant thus gave the impression that it could supply such a pit. The decisive factor was that the public could infer the non-advertised features from other objective aspects. The decisive factor was that the public could infer the non-advertised features from other objective aspects. That is why the free accessibility of this information was irrelevant. Secondly, the submission of the offer, since it was made in response to the invitation for tenders, also constituted an offer within the meaning of the Patent Law as it prepared and promoted the conclusion of a contract for a pit with precisely these patent-infringing properties.
Without taking evidence, the Higher Regional Court came to the conclusion that the defendant also supplied the water collection channels and the grates and thus put a patent-infringing pit on the market. It did not consider the facts presented by the plaintiff to be in need of proof, as the defendant had not countered the plaintiff’s submission with sufficient substantiation. The plaintiff’s extensive and conclusive submission (inter alia, entering into the contractual obligation to supply in accordance with the invitation for tenders; construction plan with defendant’s logo; billing with pit type designation in accordance with the invitation for tenders) was countered by a blanket assertion that the defendant’s managing director had pointed out that the defendant could not or would not deliver a pit with channels and grates. Particularly in view of the submission of the tender in response to the specific invitation for tenders, this did not convince the court.
The defendant had argued for the first time on appeal that the recall was disproportionate because the disassembly would be very costly and would lead to the complete destruction of the system. It is therefore not to be expected that customers would comply with the recall. However, the defendant did not provide a reason for the alleged destruction. The Higher Regional Court rejected the objection as being out of time and also saw no evidence for the recall being disproportionate. Since a recall claim only required a serious request to the commercial owners and not a successful recall, it was irrelevant that the recall might prove unsuccessful. In addition, the milder remedy of removing the channels and grates was not equally effective, as this would only be a temporary remedy. In accordance with the established Düsseldorf ruling practice, the Higher Regional Court also found a claim against commercial end-users, as destruction was not obvious and resale could therefore not be ruled out.
III. No surprise from Düsseldorf
The freedom of form of the declaration of assignment irrespective of the underlying causal transaction is quite the prevailing opinion. It also does not contradict the protective purpose (protection against haste) of § 518 BGB. For this is sufficiently guaranteed at the level of the causal transaction under the law of obligations.
The fact that the Higher Regional Court saw an offer in the advertising of a reference object is consistent with the very broad and purely economic understanding of the offer within the meaning of Sec. 9 (2) No. 1 Patent Law. In contrast to § 145 of the Civil Code, for § 9 Patent Law it is sufficient for a demand to be created, the satisfaction of which is promised by the offer. By advertising the reference object and submitting the offer in the award procedure, the defendant succeeds in doing exactly that.
It is also not surprising that the Higher Regional Court rejected the objection of disproportionality, which was correctly raised by the defendant in the proceedings. Disproportionality pursuant to is to be interpreted narrowly as a legal exception. Sec.140 (4) Patent Act is to be interpreted narrowly as a legal exception. Disproportionality can only be assumed if the interests of the infringer or justified interests of third parties are outweighed. In the context of the recall claim, however, only extreme exceptional cases are conceivable. Since no success is owed in the context of the recall claim, the (alleged) lack of success cannot play a role for the disproportionality.