Higher Regional Court Duesseldorf – Assert a matter in dispute in second instance which was neglected in first instance?

I. Decision

In a decision of 13 August 2020 (2 U 25/19), the Higher Regional Court Düsseldorf had to deal with the question whether and how a patentee can still introduce a matter in dispute in second instance which has been neglected in first instance.

In first instance, the patentee had argued that the defendant had exhibited the attacked device at a trade fair in Germany. In addition, the defendant delivered the attacked device to distribution partners and manufacturers abroad, who in turn delivered them to Germany. The following discussion between the parties no longer focused on the deliveries abroad, and also the first instance decision did not address this aspect. After the sentence in first instance, the defendant filed an appeal. Only after the expiry of the time limit for submitting the particulars of the appeal, the patentee requested that the decision on the claim for information be extended to include the following passage: “whereas the  information owed by the defendant comprise all deliveries to the respective customers, irrespective of whether a specific delivery was put into circulation by this customer on the territory of the Federal Republic of Germany, if there were concrete indications to the defendant which made it seem obvious that the customers would continue to deliver the delivered goods to the Federal Republic of Germany or offer them there.”

The Higher Regional Court Düsseldorf did not comply with the patentee’s motion.

On the one hand, in the opinion of the Düsseldorf Higher Regional Court, the motion was too indefinite. In the sense of a retrospective view, it stated that an entitled party could only demand information and rendering account about what has been ruled in the executory title. The contentious proceedings must therefore lead to operative provisions which are so clearly worded that the extent of the obligation to provide information and render account is recognizable, at least by interpretation on basis of the reasoning of the decision.

In the present case, the Higher Regional Court Düsseldorf denied this definiteness of the motion because it contained undefined terms and it was not clear which indications should trigger defendant’s supplementary obligation to provide information and render account and under which circumstances a delivery to Germany or a corresponding offer by defendant’s customers would be obvious.

In addition, the Higher Regional Court Düsseldorf found that the patentee had failed to file a cross-appeal in due time. The motion and the circumstance of the foreign deliveries were a new matter in dispute the patentee had to introduce into the proceedings with the cross-appeal. Although the patentee had already briefly mentioned the foreign deliveries in the first instance, they had neither been subject to the further discussions between the parties nor the first instance decision. Since the patentee subsequently neither filed a motion for correction of the decision’s section addressing the facts and the merits of the case pursuant to sec. 320 German Code of Civil Procedure nor for an amendment of the decision pursuant to sec. 321 German Code of Civil Procedure within the time limit, this submission was not pending anymore. Accordingly, the patentee would have had to introduce this matter in dispute anew into the proceedings by means of a cross-appeal.

II. Advice

The manner in which “new” submissions are to be introduced in second instance depends substantially on whether the matter in dispute is new.

This is the case if the identity of the previous cause of action is revoked, i.e. if the core of the life facts stated in the complaint is changed by new facts. This is for instance the case if features of the asserted patent claim shall be realized by a different design than in the originally attacked device (so only recently Higher Regional Court Düsseldorf GRUR-RS 2019, 38883 – Befestigungszwischenstück). It also matters in which way and manner the party introduces the submission in second instance. For example, the Higher Regional Court of Dusseldorf has already decided in the past that submissions titled as an “extension of a complaint” and drafted accordingly speak in favor of a new matter in dispute, especially since procedural acts of a party represented by a lawyer which expressly refer to a legal instrument that cannot be mixed up can usually not be interpreted differently (Higher Regional Court Düsseldorf GRUR-RR 2017, 249 – Lichtemittierende Vorrichtung).

The current decision of the Higher Regional Court Düsseldorf shows that a submission in second instance can also be qualified as a new matter in dispute if the submission was already subject to the first instance but is not included in the first instance decision and the respective party failed to request a correction according to §§ 320, 321 ZPO.

If the submission is to be qualified as a new matter in dispute, the cross-appeal is the right means to introduce this matter in dispute in second instance. Parties’ legal representatives are therefore required to assess the necessity of a cross-appeal and to file such an appeal if necessary with regard to the time limit for submitting the particulars of the appeal. This applies all the more as courts are not obliged to instruct the parties about the possibility of a cross-appeal (Higher Regional Court Düsseldorf GRUR-RR 2017, 249 – Lichtemittierende Vorrichtung).

 

Dr. Benjamin Pesch

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