Patent vindication and document submission

In its judgement of 26.07.2022 – X ZR 17/21 – Brustimplantat (Breast Implant), the Federal Court of Justice (FCJ/ BGH) dealt with the patent law vindication and thereby consolidated its established case law:

Whether a person entitled to a patent may demand the assignment of a patent or the grant of a joint right thereto under Sec 8 (1), (2) German Patent Act requires a comparing examination of the patent´s teaching with the teaching of the alleged unlawful taking. For this purpose, it is primarily necessary to examine to what extent both teachings correspond (confirmation of BGH GRUR 2016, 265, para. 22 – Kfz Stahlbauteil; BGH GRUR 2020, 1186, para. 41 – Mitralklappenprothese). Furthermore, the judgment provides a nice overview of the possibilities to oblige a party not burdened with evidence to submit documents to the court.

Facts:

In this case, two companies had worked together for more than a decade on the development of breast implants. In the course of this, there had been frequent factory and company visits, the extent of which was disputed between the parties. After the end of the cooperation, the defendant applied for the patent in dispute.

The patent in suit discloses a method for manufacturing implants or intermediate products of such implants. The aim is to avoid a circumferential seam on the implant shell, as this can lead to bodily incompatibilities. For this purpose, the seam is formed on the back of the implant shell by placing a first foam layer on the silicone up to the back. The foam layer is bonded to the implant shell by vulcanisation. The second foam layer then only has to cover a small area on the back of the implant shell, which significantly reduces the circumference of the seam.

In the proceedings, the plaintiff had submitted various documents from which it should be apparent that it had already been in possession of the teaching in accordance with the patent. The plaintiff requested, inter alia, that the defendant be ordered to transfer all national parts of the patent to the plaintiff and to consent to the rewriting of the national parts to the respective national patent offices, or alternatively to grant a joint entitlement.

The defendant explained that the patent was the result of its own research. This resulted in particular from a document (TD 2007) which was prepared by the defendant at the end of the cooperation. The plaintiff objected that the content of this document was almost identical to an older document (TD 2003) which originated from the time of the parties’ cooperation. Differences only arose with regard to a different production site. However, the TD 2003 was exclusively in the possession of the defendant.

The RC Frankfurt a. M. and the HRC Frankfurt a. M. had dismissed the action because the plaintiff had not sufficiently proven either ownership of the invention or the act of extraction.

Presentation of the vindication requirements:

The FCJ overturned the decision and referred it back to the HRC Frankfurt a. M. for a new hearing. In the opinion of the FCJ, the plaintiff had sufficiently demonstrated ownership of the invention by submitting documents. The FCJ considered the teaching of the patent to cover not only vulcanisation as a form of application, but it was also clear from the description that the foam layer was pulled, pressed or stretched before vulcanisation. Against this background, the plaintiff had already sufficiently argued its ownership of the invention. For a factual submission in support of a claim is conclusive and relevant if the party submits facts which, in combination with a legal proposition, are suitable and necessary to make the asserted right appear to have arisen in the person of the party. The submission must be concrete enough to be able to assess the materiality of the facts and to enable the opponent to comment. If these requirements are met and the submission is substantially contested by the opposing party, it is up to the court to take evidence (by way of example: BGH NJW-RR 2022, 634, marginal no. 10).

In this respect, the plaintiff’s documents showed that it had already manufactured breast implants at an earlier stage of the cooperation using a process that had the features of the patent in suit.

Insofar as the defendant relied on the document TD 2007, the FCJ considered it possible that a comparison with the TD 2003 could show that the TD 2003 already described the invention in full.

Document Submission Obligations:

In the following, the FCJ therefore dealt with the question of whether the defendant had a duty to submit documents. The FCJ rejected such an obligation under Sec 423 of the German Civil Procedure Code (ZPO) in line with the HRC Frankfurt a. M., since the defendant referred to the document at most to explain its arguments and not “to provide evidence” as required by the wording.

However, the FCJ criticised the premature rejection of a duty under Sec 422 ZPO in conjunction with Sec 810 ZPO, as the TD 2003 had still been prepared during the intensive cooperation and had therefore at least also been prepared in the interest of the plaintiff. In its renewed decision, the HRC Frankfurt a. M. would also have to weigh any interests in secrecy against the probability that the TD 2003 already described the invention in full.

If no obligation arose from Sec 422 ZPO, the Court of Appeal would have to decide again on the submission order pursuant to Sec 142 (1) ZPO. In any case, a refusal could not be based solely on the defendant’s interests in secrecy, as these could also be taken into account by blacking out the non-relevant passages. The FCJ also makes a general reference to the possibility of a protective order under the new Sec 145a German Patent Act in conjunction with Sec 16 and 19 Business Secret Act.

CReative Contribution:

In the subsequent assessment of a creative contribution by the plaintiff, it was not necessary for it to have an independent inventive content (BGH GRUR 2001, 903, paras. 14, 21- Atemdrucksteuerung). Furthermore, it was wrong to examine each feature as to whether it was known in the prior art itself (BGH GRUR 2001, 903, marginal no., 21- Atemdrucksteuerung). Only those contributions that have not influenced the overall success, i.e. are insignificant in relation to the solution, and those that were created on the instructions of an inventor or third party, are to be excluded (BGH GRUR 2020, 1186, marginal no. 39 – Mitralklappenprothese).

conclusion:

In summary, the judgement does not represent a legal novelty. It emphasises once again that also and especially in the case of a vindication, the teaching of the patent applied for must be examined. In vindication cases, the plaintiff is usually at the back of the pack. Their submission must be specific enough to be able to assess the relevance of the facts and to enable the opponent to comment, but no more. For this purpose, it is advisable to make use of documents when presenting the case and to work less with witnesses who, for example, are supposed to prove company visits and their extent.

Furthermore, the judgement shows various procedural possibilities how the party not burdened with evidence can be obliged to submit documents. In this respect, the FCJ has already clarified in NJW 2007, 2989 – Einwertungsunterlagen für “Schrottimmobilien” that it is a discretionary error if the court does not consider an order at all if the requirements of Sec 142 ZPO are met. Thus, practitioners in particular should keep the relevant provisions in mind.

Robert Knaps

In-depth specialisation in IP law – Sophie Prudent and Dr Benedikt Walesch aquire Master of Laws (LL.M.) qualifications

Our colleagues, Sophie Prudent and Dr Benedikt Walesch, have successfully completed the part-time Master’s programme in Intellectual Property Law at the Heinrich Heine University in Düsseldorf. They celebrated their diplomas with excellent grades last Friday, 24 June 2023, at Mickeln Castle.

The programme is particularly practice-oriented. “It was very enriching that we were able to pick up helpful tips from experienced practitioners in the lectures and deepen our knowledge in intellectual property law. We made a conscious decision to do the extra-occupational course at Heinrich Heine University in order to remain accessible to our clients and to be able to put what we have learned directly into practice. With this extensive further training, this naturally requires very good time management,” report Sophie Prudent and Benedikt Walesch in unison. “We can highly recommend this programme to anyone who wants to deepen their specialist knowledge in IP.

With her master’s thesis, Sophie Prudent focused on national injunction proceedings in patent law. “German case law has always been a controversial subject. The ECJ decision Phoenix Contact/Harting also met with controversy. I found it exciting to deal with the different justification approaches and the possible effects of the ECJ judgment on case law,” says Sophie Prudent. Her work was given the top mark of “outstanding”.

In his Master’s thesis, Dr Benedikt Walesch delved deeper into the UPC court system and  dealt with the “interim measures before the UPC” and compared them with the national procedural rules. “I find it exciting to be at the forefront of the emergence of a new court system. That’s why I wanted to delve deeper into the regulations of the new system in my Master’s thesis and compare the new regulatory approaches with national law.” He also received the highest grade of “outstanding” for his Master’s thesis.

We are very delighted that our colleague Dr. Benedikt Walesch was able to complete the Master’s programme as best student of the year with the highest grade of “outstanding”. For this excellent achievement he was awarded the prize for the best degree. 

We congratulate our colleagues Sophie Prudent and Dr Benedikt Walesch sincerely. You are now holding the internationally recognised and renowned “Master of Laws” (LL.M.) degree. 

Special honour – Kather Augenstein receives Imapct Case of the Year Award at prestigious Managing IP EMEA Awards 2023

Kather Augenstein has received a special recognition with the “Impact Case of the Year – Heitec v Heitech Promotion” at the 18th annual Managing IP EMEA Awards, held in London yesterday, 21 June 2023. Our IP Boutique was among the prestigious European IP and law firms honoured at last night’s festive award ceremony.

Each year, the Manging IP EMEA Awards honour the in-house teams, law firms, lawyers and companies that have been significantly responsible for the most innovative and challenging IP work in the past year, driving the international market forward.

Commenting on winning the award, Dr Christof Augenstein said: “We are delighted to have been honoured as one of the winners of the European Impact Cases of the Year at the Managing IP Awards 2023 in the trademark case Heitec v Heitech Promotion. I was personally involved in this lawsuit from the beginning, which we successfully brought to a close earlier this year after several instances before the Federal Court of Justice and the European Court of Justice after almost nine years. It is a great honour that our work has been recognised with this award.”

Detailed background information on the case can be found in the news and blog section.

A full list of award winners can be found here.

Leaders League Rankings 2023: Kather Augenstein recognised as on of the leading law firms for patent and trademark litigation

We are pleased to have once again been recognised as one of the leading intellectual property law firms for patent and trademark litigation in this year’s 2023 Leaders League Rankings.

In the process, the Kather Augenstein team was rated “excellent” in the new Leaders League rank ings in the category of patent litigation and was also rated “highly recommended” in the area of trademark litigation.

We congratulate our partners Dr. Peter Kather, Dr. Christof Augenstein, Miriam Kiefer LL.M., Christopher Weber und Sören Dahm an the entire team for this special recognition.

Leaders League is a media and ratings agency for top international executives, regularly providing international rankings and news content for the legal, financial, technology and human resources industries. The company specialises in law firm rankings and market research that are used by a wide range of companies and executives in their decision-making.

All rankings are available on Leaders League. 

#wirfahrenmit: climate-friendly and health-promoting on the road with the service bike

We are very proud that a large number of our employees benefit from our digital service bike programme with @DeutscheDienstrad. This adds another important component to our multifaceted portfolio of employee benefits, while at the same time important building block and at the same time promote the health of our team.

With the Deutsche Dienstrad offer, we provide our employees affordable and climate-neutral access to sustainable mobility. Due to the free choice of brands, models and manufacturers, all wishes remain unfulfilled and each employee has the opportunity to individually design his or her dream bike.

With the MobilityHub of Deutsche Dienstrad, every participant decides where and how they choose and receive their service bike.

Together, we are making an active contribution to climate protection and having a positive effect on CO2 emissions of our world, both professionally and privately.

We make Germany move with our #team at @KatherAugenstein.

On today’s launch of the Unified Patent Court (UPC): Christof Augenstein in podcast interview with Emily O’Neill of Deminor Litigation Funding.

In an ongoing podcast series, Emily O’Neill, General Counsel UK and Global Intellectual Property Lead at Deminor Litigation Funding, interviews global experts to understand the implications of the new Unified Patent Court (UPC).

In his latest interview, our Dr. Partner Christof Augenstein provides valuable insights into the upcoming Unified Patent Court (UPC), discusses its overall significance, and outlines his predictions for the early days of the new system and beyond.

You can find the full interview with podcast sequences here

Deminor is the brand name of the Deminor Recovery Services Group, which assists companies and investors with legal claims.

Deminor is a pioneer in its field and has played a leading role in numerous pivotal investor lawsuits around the world. The group operates in 15 jurisdictions and has seven offices in Europe, the UK, the US and Asia.

News in the case of the paprika patent

Staple foods such as fruits and vegetables have been grown and consumed for thousands of years. Meanwhile, however, there are legal, especially patent, requirements to be observed in this regard as well. With its latest decision in the case of the pepper patent, the European Patent Office is now reigniting the debate on ethical and legal aspects of patent law in agriculture. But what is the paprika patent all about and why is it so controversial?

In 2013, the European Patent Office (EPO) approved a patent on an insect-resistant pepper plant (EP2140023) for the Syngenta corporation. The insect resistance of the pepper plant resulted from crossing a wild pepper plant from Jamaica with a commercial pepper plant and subsequent selection of the common offspring. The company learned about the resistance through a freely accessible database. The granted patent covers the pepper plants themselves, their use, their fruits, their seeds and all breeding steps. Syngenta thus claimed both the cultivation and harvesting of the plants.

In the following year, an alliance of various NGOs, breeders, seed initiatives and farmers’ organisations filed an objection against this patent grant. They criticised that the crossing of the pepper plant had been done in the conventional way and with the help of a freely accessible database, and that the insect resistance was thus a naturally occurring genetic trait and not an invention of its own. Patenting naturally occurring gene traits would monopolise biodiversity and endanger access to it.

In February 2023, the patent was again confirmed by the EPO, even though such a patent is actually no longer permissible according to current case law. Since 2017, no patents may be granted for plant varieties that have been created by natural methods such as crossing and selection. Accordingly, only plant varieties that have been genetically engineered are still eligible for patent. Genetic engineering is patented, but genetic diversity and seeds are not. However, Syngenta applied for the pepper patent in 2008, well before the new legislation.

Nevertheless, the current case law continues to create uncertainty, because genetically engineered plants can in many cases also be created by classical crossing with subsequent selection. Whether the genetically engineered plants may nevertheless be patented in these cases is currently a matter of dispute. Whether and to what extent patent law in agriculture will continue to develop will be shown by future patent law decisions.

Does Paypal has too much ‘market power’? German federal cartel office opens proceedings.

Everyone knows about the payment option “PayPal”. For consumers, it seems to be uncomplicated, secure and above anything else, free of charge. But that is not the case for sellers. Because if the buyer chooses the PayPal payment method, fees are charged. This is not a problem. Other providers also charge fees. However, PayPal’s terms of use could be critical. It is precisely these terms of use that are now the subject of proceedings by the Federal Cartel Office. The Bundeskartellamt fears that Paypal has too much market power due to its own terms of use. This could result in the obstruction of competitors and the restriction of price competition.

If other payment methods are cheaper for the seller, it is obvious that the seller prefers them. Theoretically, it is possible to influence the buyer in his choice of payment method. But this is exactly what the PayPal terms of use in Germany exclude. Here, “rules on surcharges” and on the “presentation of PayPal” are regulated. According to these rules, sellers are not allowed to offer their goods at a lower price when choosing a payment method other than PayPal. In addition, sellers are not allowed to point out the fees charged by PayPal or otherwise buyers in their choice of payment option. This would be possible, for example, by offering a faster and more convenient contract conclusion. It was precisely these rules in the terms of use that made the Bundeskartellamt suspicious.

The Bundeskartellamt’s proceedings are based on Article 102 TFEU and Section 19 GWB. According to these, there is an antitrust prohibition on the abuse of a dominant position or, according to Section 20 GWB, a position with market power. In addition, according to the Bundeskartellamt, a violation of the prohibition of agreements restricting competition pursuant to Article 101 TFEU and Section 1 GWB is possible. According to the Bundeskartellamt, it will examine what market power PayPal has. In addition, it is to be clarified to what extent sellers on online platforms are dependent on offering PayPal as a payment method.

Because if merchants are prevented from taking into account the different costs that arise from the choice of a payment method and passing them on to the end customer, it could become problematic. In that case, other payment methods can compete only with difficulty or not at all. As a result, the payment services with market power could charge even higher prices for their service. 

In the end, it would be the consumers who would have to pay for this situation. After all, no merchant omits the costs for the payment method from his price calculation, even if, unlike shipping costs, they are not visible on the statement. If no cheaper payment service provider prevails or the prices are even increased, the costs for the payment option remain in the calculation of the seller. And these are simply borne by the buyer. Currently, the costs are between 2.49 and 2.99 per cent of the amount to be paid and an additional 34 to 39 cents per transaction. According to market studies, PayPal is one of the most expensive online payment services on the German market. It remains to be seen whether the Bundeskartellamt will ultimately allow other, cheaper payment service providers to assert themselves on the market.

Managing IP Stars 2023: Miriam Kiefer among the top 250 women in IP

Congratulations to our Managing Partner Miriam Kiefer LL.M., who was recognized for the fourth consecutive year as a leading IP attorney in Managing IP’s international “Top 250 Women in IP” directory in the IP Stars 2023 rankings.

The list honours experienced female IP lawyers and IP litigators who have provided exceptional services to their clients and companies in the past year.

This year’s reference list includes more than 30 areas of law worldwide, for more information and access to the full ranking, click here.

The Legal 500 Germany Ranking 2023: Kather Augenstein again ranked as one of the leading law firms in patent litigation

Kather Augenstein is again honored by The Legal 500 Germany as a “Leading Law Firm” in the field of Intellectual Property – Patent Litigation. The annual award recognizes law firms and individual attorneys worldwide for their outstanding achievements, based on feedback from clients, peers and colleagues.

Some of them describes us as a “highly skilled team that handles cases quietly, competently and with focus in a very human and pleasant manner”, as well as a “very effective and efficient team, both in smaller and larger cases.” Miriam Kiefer is confirmed as having a “trusting, humanly very pleasant, close and very well coordinated cooperation in a number of infringement cases, expert reports and SPC proceedings”.

According to the editorial team, one of the numerous strongest IP boutiques in Germany is the Kather Augenstein team in Düsseldorf, whose broad advisory portfolio in patent law context is reflected in the individual focuses of the central experts.

Partner Dr Christof Augenstein, for example, is more active in the fields of electronics, telecommunications, medicine and automotive, while senior partner Dr Peter Kather sets strong focuses on cross-border proceedings. Managing Partner Miriam Kiefer, who is well-versed in medical technology, heads the team of lawyers, which also includes the Partners Christopher Weber (who focuses on software, electronics, pharmaceuticals, chemicals, mechanics and plastics processing) and Sören Dahm, who is well-versed in technology-related, often cross-border matters. The core team also includes Dr Benjamin Pesch and his focus on computer-implemented inventions, who was been appointed as counsel in July 2022.

As last year, we are pleased that our Senior Partner Dr. Peter Kather has been inducted into the Hall of Fame category again and that our partners Christof Augenstein and Christopher Weber have been recognised as Leading Names for the second time.

About The Legal 500

The Legal 500 has been published for the past 36 years and is widely recognised as the world’s most comprehensive legal handbook. Over 300,000 in-house lawyers worldwide are surveyed and interviewed each year.