Judge, Federal Court of Justice

Comparison and interaction between EPO boards of appeal and national courts – state of play in German practice

I. A patent held in a binding ruling to have been infringed is subsequently revoked. What happens next?

Depending on the plaintiff's requests, ^[ 1 ] a judgment in patent infringement proceedings before a German court will normally involve orders to desist and to provide documents and render accounts, and a ruling that the infringer is liable to pay compensation (Sections 139(1) and (2) and 140b Patent Act [Patentgesetz, PatG] and Sections 242 and 259 Code of Civil Law [Bürgerliches Gesetzbuch, BGB]). ^[ 2 ] The judgment will also include a ruling on the apportionment of procedural costs, establishing the share of costs to be borne by the losing party. The infringement proceedings may then be followed by separate assessment proceedings, resulting in a binding decision on an amount of damages to be paid by the defendant.

After the decisions in the infringement and assessment proceedings have taken legal effect, the possibility remains of the patent being revoked by a binding decision of the EPO boards of appeal or, at the boards' instruction, of the opposition division. In this event, four main remedies are available to the defendant in the infringement proceedings:

1. Action to avert enforcement, Section 767 Code of Civil Procedure [Zivilprozessordnung, ZPO]

2. Action for restitution, Section 580(6) ZPO

3. Action for recovery of damages paid, Section 812(1) BGB

4. Action for recovery of costs paid, Section 812(1) BGB.

1. Action to avert enforcement, Section 767 ZPO

This type of action is directed against the admissibility of enforcement of an infringement judgment, insofar as the latter comprises orders to desist, to render accounts and to provide documents. The action can only be based on objections to the enforceable claim which arose after the conclusion of the last oral proceedings leading to the judgment with final effect and which therefore could not be advanced by the defendant for consideration by the court issuing the judgment (Section 767(2) ZPO).

Under Article 68 EPC, the European patent application and the resulting European patent are deemed not to have had, from the outset, the effects specified in Articles 64 and 67 EPC, to the extent that the patent has been revoked in opposition proceedings. In the application of Section 767(2) ZPO, the question arises as to whether the point in time from which the objection lies against the infringement judgment is governed by the final revocation decision of the opposition division or board of appeal or by the retroactive effect of revocation under Article 68 EPC. The first of these two alternatives is likely to apply, since the defendant in the infringement proceedings can only lodge a successful objection based on the revocation of the patent in suit when the board of appeal or opposition division has issued its final decision on the matter. ^[ 3 ]

If the action to avert enforcement is admissible and well-founded, then – in consequence of the retroactive effect under Article 68 EPC of a final decision revoking the patent – the enforcement of the infringement judgment is to be declared inadmissible from the outset. ^[ 4 ]

2. Action for restitution, Section 580(6) ZPO

This action is directed against the final infringement judgment and, where applicable, the decision awarding damages in the assessment proceedings, and not only against the admissibility of enforcement on the basis of these judgments. The aim is to obtain a reopening of the infringement proceedings and, where applicable, the assessment proceedings, and, when the case is reheard, to get the patent revoked or limited, so that the action for infringement is dismissed. This can only succeed if the action for restitution is admissible and well-founded.

Section 580 ZPO contains an exhaustive catalogue of grounds for restitution, any one of which will suffice to justify a corresponding action. According to the case law of the Federal Court of Justice, an action for restitution can be based, applying Section 580(6) ZPO mutatis mutandis, on the fact that the patent which was the subject of the court's decision in the infringement proceedings has been validly revoked in opposition proceedings. ^[ 5 ] This also applies in the case of partial revocation, where the judgment in the previous infringement proceedings is thereby affected, for example because the infringement judgment did not establish the use of a feature additionally incorporated in the patent claim by the revocation decision. ^[ 6 ] At all events, it is essential that the defendant in the infringement proceedings was unable to cite the valid revocation of the patent at the time when the infringement case was heard (Section 582 ZPO). This requirement is met if the infringement judgment and, where relevant, the decision on payment in the assessment proceedings have become final.

The filing of an action for restitution is subject to a time limit of one month from the date on which the party concerned becomes aware of the cause for rescission (Section 586(1) and (2) ZPO). If the board of appeal revokes the European patent under Article 101(2), first sentence, EPC, this is the date on which the defendant in the infringement case becomes aware of the revocation. However, if the board of appeal does not decide on the objection itself, but instructs the opposition division to maintain the European patent to a precisely determined extent, the partial revocation forming the ground for restitution is only effected when the opposition division issues its decision implementing the instruction of the board of appeal to maintain the patent as amended. ^[ 7 ]

3. Action for recovery of damages paid, Section 812(1) BGB

If the defendant in the infringement proceedings has already paid damages on the basis of a court order, it may be possible to seek reimbursement on the ground of unjustified enrichment under Section 812(1), first sentence, BGB. This assumes that the plaintiff in the infringement case has obtained a financial advantage from the payment of damages and also that the legal ground for such payment has lapsed. German commentators have discussed whether this requires the final decision on payment to be set aside, following an action for restitution. ^[ 8 ] The likely answer is no. According to the case law of the Federal Court of Justice, objections that can be cited by the debtor in an action to avert enforcement under Section 767 ZPO because they arose after the end of the oral proceedings leading to the final judgment can still be relied upon after the enforcement has been completed, in an action on the ground of unjustified enrichment. ^[ 9 ] This view, if accepted, can also apply to claims for recovery of damages after the patent has been revoked.

4. Action for recovery of costs paid, Section 812(1) BGB

As mentioned above, where the court finds that infringement has occurred, it will order the defendant, as the losing party, to bear the cost of the proceedings. If he has paid the court fees and legal costs incurred by the plaintiff, he will have an obvious interest in recovering these amounts after the patent is revoked. He will also seek to recover his own legal costs from the plaintiff in the infringement proceedings. This requires, in both cases, that the decision on costs in the binding judgment on infringement is amended, and the legal basis for reimbursement of the plaintiff's costs by the defendant removed, ^[ 10 ] so that repayment can be demanded on the ground of unjustified enrichment under Section 812(1), first sentence, BGB and a legal ground arises for recovery of the defence costs from the plaintiff. This can only be achieved through an action for restitution under Section 767 ZPO.

II. Subsidiarity of revocation actions in case of pending opposition or appeal proceedings before the European Patent Office

1. Relationship between opposition or appeal proceedings and patent nullity actions

The relationship between pending opposition or appeal proceedings before the European Patent Office and a nullity action to be brought before the Federal Patent Court is governed by Section 81(2) PatG. An action to obtain a declaration of nullity is inadmissible as long as opposition may still be filed or opposition proceedings are pending. This applies equally to opposition proceedings before the German Patent and Trademark Office and the European Patent Office.

The Federal Court of Justice has ruled, moreover, that a nullity action is inadmissible with regard to pending opposition proceedings before the European Patent Office even if it is exclusively based on a national patent application with better prior-right effect under Article 139(2) EPC which can only be alleged in national revocation proceedings. ^[ 11 ]

2. Relationship between opposition or appeal proceedings and infringement actions

The admissibility of an infringement action, which under German law must be brought before a regional court with jurisdiction for patent cases and pursued independently of any action for nullity (following the principle of separation), does not depend on whether appeal or opposition proceedings can be instituted in due time before the European Patent Office or are already pending. However, where parallel appeal or opposition proceedings are pending before the EPO, the alleged infringer will generally request that the infringement proceedings be suspended under Section 148 ZPO. After the close of the hearing, the court dealing with the infringement case will then consider, independently of the request for suspension, whether the infringement action is admissible and allowable. If the answer is no, the court will take evidence, as necessary, regarding contested facts, or dismiss the action. If the answer is yes, it will continue to examine whether the proceedings are to be stayed. The main criterion governing this decision is the likelihood that the objection will succeed, having regard to the parties' submissions and the interim or other decisions already taken by the opposition division or the board of appeal. ^[ 12 ] As a rule, the infringement court will suspend the proceedings only if it sees a strong probability of success. The procedure in the case of a request for suspension with regard to parallel opposition or appeal proceedings is essentially the same as in the case of such a request with regard to parallel nullity proceedings before the Federal Patent Court or nullity appeal proceedings before the Federal Court of Justice.

III. Binding effect of BoA decisions to uphold the patent? Persuasive effect of BoA decisions for national courts and vice versa?

Decisions of the opposition divisions or the boards of appeal rejecting an opposition to a European patent have no binding effect on subsequent decisions of the German courts in nullity or infringement proceedings. ^[ 13 ] If a European patent is maintained in amended (limited) form, the reasons for the decision of the opposition division or board of appeal can be used, like a part of the description, to interpret the claims, though only insofar as they concern the amendment (limitation), ^[ 14 ] and only if the description is not also amended. ^[ 15 ]

According to the case law of the Federal Court of Justice, however, German courts are required to take note of decisions of the opposition divisions or boards of appeal and/or the courts of other EPC contracting states and, where necessary, to consider the grounds that led to a different result in the previous judgment. This rule also applies to questions of law, for example whether the subject-matter of the patent was obvious with regard to the prior art. However, not every breach of this requirement constitutes a violation of the relevant party's right to be heard. ^[ 16 ]

IV. Patentability of computer-implemented inventions: state of play, differences and way forward

The case law of the Federal Court of Justice on computer-implemented inventions is discussed in the following with reference to the Court's 2010 decision “Wiedergabe topografischer Informationen” ("Display of Topographical Information").^[ 17 ]

As the keyword indicates, the contested patent concerned a method for displaying a topographical map on the screen of a navigation system for vehicles. The patent claim provided for topographical information to be selected from a data structure, depending on the position of the vehicle, and displayed in a certain way, details of which were set out in the claims. This would make it possible to see on the screen a section of a topographical map that on the one hand corresponded to the actual perception of the driver of the vehicle moving in a particular direction, but on the other hand contained information, from a bird's-eye viewing position above and behind the vehicle, that would never be visible to the driver in reality, even under optimal conditions.

In examining the request for a declaration of nullity, based on an alleged lack of patentability, the first question to be addressed was whether the claimed subject-matter lay in a field of technology and could therefore count as an invention within the meaning of Article 52(1) EPC. The Federal Court of Justice answered this in the affirmative, on the basis of its case law that a method consisting in the execution of procedural steps with the aid of electronic data-processing already meets the requirement for technical character if it serves to process, store or transmit data by means of a technical apparatus. To this extent, it is irrelevant whether the claims comprise features of a non-technical as well as a technical nature and which of these features characterise the claimed teaching. ^[ 18 ]

It was also necessary to examine whether the matter was excluded from patentability because it was a program for computers or a presentation of information within the meaning of Article 52(2)(c) or (d) EPC. Here, the Court explained that a teaching is patentable only if it contains instructions for solving a specific technical problem by technical means, and that non-technical instructions are significant only insofar as they influence the solution of the technical problem by technical means. It is sufficient if a part of the features of the claimed teaching solves a technical problem. Patentability is not ruled out if the claims also comprise non-technical features. ^[ 19 ] In the case at issue, a technical solution to a technical problem consisted, at all events, in the fact that the topographical information was selected depending on the direction of travel and the position of the vehicle and that the data was displayed on the screen in an automated process in a specific way.

Finally, the Court had to consider whether the claimed method was new and involved an inventive step under Articles 52(1), 54 and 56 EPC. This was denied, on the basis that the claimed teaching was obvious to a skilled person having regard to the state of the art. Here, the Court took into account only the features that determined or at least influenced the solution of the technical problem. ^[ 20 ] These were, essentially, the instructions to determine the position of the vehicle at a given moment, to effect the display with the aid of electronic data-processing and, in selecting the solid angle for the viewing position, to take into account the motion of the vehicle and its simulated position at a given moment. The other instructions in the claimed process were of a non-technical nature, since they concerned a projection of topographical data suitable for use in navigation and as such were omitted from the assessment as to inventive step. ^[ 21 ] Since the technical features were known in the prior art and their combination was also obvious, the conclusion was that an inventive step was lacking. The Federal Court of Justice did not consider whether the assessment of novelty should also depend on technical features alone, as this was no longer relevant to the decision in question.

The approach developed in the "Wiedergabe topografischer Informationen" decision has been confirmed in several subsequent decisions of the Federal Court of Justice. ^[ 22 ] It corresponds essentially to the practice of the EPO boards of appeal, which was also cited in the court's decision.

V. Inventive step: problem-solution approach. Is there still room for harmonisation?

1. According to the Guidelines for Examination in the European Patent Office, the "problem-solution" approach to be followed in examining for inventive step involves three stages:

(i) determining the "closest prior art"

(ii) establishing the "objective technical problem" to be solved

(iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person. ^[ 23 ]

The Guidelines stipulate that deviation from this strictly schematic approach should be exceptional. The approach serves the interests of objective and predictable assessment in the examination procedure, ^[ 24 ] in which, under Article 18(2) EPC, only the applicant and one member of the examining division are normally involved. Its appropriateness in this context is not to be questioned here; however, for a court procedure conducted on an adversarial basis between two or more plaintiffs and defendants, its suitability is limited.

2. This applies in particular to the first step, determining the "closest prior art". Experience shows that, in nullity proceedings, the plaintiff generally presents several starting points (documents, public prior uses, etc.) in respect of inventive step. The court then has to assess whether the skilled person would actually have selected these starting points. According to the case law of the Federal Court of Justice, the choice of a specific starting point for the consideration of inventive step requires particular justification. This can be derived from the skilled person's endeavour to find, for a specific purpose, a solution better than or different from the solution provided in the prior art. ^[ 25 ] The test can be applied with one or more starting points (documents, public prior uses, etc.). There is no reason to limit the assessment of inventive step from the outset to the "closest prior art". Otherwise, there is the risk of an inadmissible ex post evaluation of the prior art with regard to what is "closest".

Ultimately, the same view would appear to prevail in the current Guidelines for Examination. The authors concede, with reference to several decisions of the boards of appeal, that in some cases there are several equally valid starting points for the assessment of inventive step and that, in the event of refusal, it is sufficient to show, on the basis of relevant prior art in respect of at least one solution, that the claimed subject-matter lacks an inventive step. In such a situation, there is no need to discuss which document is "closest" to the invention; the only relevant question is whether the document used is a feasible starting point for assessing inventive step. ^[ 26 ]

3. According to the case law of the Federal Court of Justice, the determination of the technical problem underlying a patent is part of claim construction. The technical problem follows from the actual technical effects of the invention. From the function of the individual features in the context of the patent claim, it is to be deduced what technical problem these features actually solve, individually and as a whole. What is said in the description about the aim of the invention may give some hints as to the correct interpretation of the claim. ^[ 27 ] However, it is not the exclusive starting point for assessing inventive step. The question is also to be considered whether the invention was suggested by the accomplishment of another task within the skilled person's field of activity. ^[ 28 ]

An illustration of this is provided by the Sonnenschutzmittel ["Sunscreen"] case that was the subject of a ruling of the Federal Court of Justice in 2011. ^[ 29 ] The facts can be summarised as follows. The patent concerned a cosmetic composition that could be used as a sunscreen. In the description it was explained that UV-A agent "A" had proved advantageous against UV-A radiation and that UV-B agent "B1" had proved to be highly absorptive for UV-B radiation. A combination of the two agents was therefore desirable. To provide increased stability, the composition was to include UV-B agent "B2" as well as "A" and "B1". According to the description, this was based on the finding that the desirable combination of "A" and "B1" becomes more effective and stable if "B2" is added.

The court held the combination of "A", "B1" and "B2" to be obvious with regard to the prior art. The basis for this was not the problem specified in the patent description, but the previously published document D3, which disclosed a combination of UV-B agents "B1" and "B2" as an efficacious composition against UV-B radiation. In D3, moreover, it was suggested that the combination of "B1" and "B2" be supplemented with a further agent against UV-A radiation. The court saw this as prompting the skilled person to consider the addition of a UV-A agent. D3 contained a long list of UV-A agents, which included "A" as a possible candidate. This, in the court's view, was not a sufficient reason for the skilled person to select this specific UV-A agent. However, a suggestion to this effect did arise from the fact, first, that "A", according to the report of the expert appointed by the court, was the only UV-A agent of its type authorised for use at the priority date, and second, that another previously published document contained indications that problems of stability affecting "A" as a UV-A agent can be solved with "B2" as a UV-B agent. Therefore, the claimed combination in the patent was in effect obvious.

4. Concerning the question whether the claimed invention was obvious with regard to the closest prior art and the objective technical problem for the skilled person, the case law of the Federal Court of Justice focuses in particular on whether there were additional incentives, suggestions, indications or other reasons to look for the solution of the objective technical problem in the way provided by the invention. This, exceptionally, is not required where the skilled person, on the basis of his technical knowledge and experience, would see plainly what has to be done to arrive at the invention. ^[ 30 ]

The Federal Court of Justice has further specified this approach, based on the notion of Veranlassung ["prompting"/"inducing"] in a large number of decisions dealing with individual cases. A detailed discussion of the relevant case law would go beyond the scope of this paper. However, the headwords of two recent decisions may serve to illustrate the direction of the court's thinking. First, the instruction that the body parts affected should be immobilised for several hours immediately after the injection of collagenase, in order to prevent diffusion into other parts of the body, was not obvious from the prior art merely because it was known at the priority date that complications arising a few days after the therapy can be treated by immobilisation. ^[ 31 ] On the other hand, if an engineering solution belongs to a general type of measure to which reference should be made in a large number of application cases according to the general expertise of the engineer approached, then a reason for referring to it may reside in the mere fact that the use of its functionality is objectively suitable in the context to be evaluated and no special circumstances can be ascertained that might suggest to an expert that its application is not possible, associated with difficulties or otherwise impractical. ^[ 32 ]

The Veranlassung concept, supplemented by the exceptional principle that the common general knowledge and experience of the skilled person is not to be excluded from consideration, is largely consistent with the "could-would" approach followed by the EPO boards of appeal, where the question is not whether the skilled person could have arrived at the invention through the prior art, but whether he would have done so. ^[ 33 ] The boards of appeal have pointed out that the assessment of inventive step must involve establishing the extent to which the skilled person had good reason, in the light of the closest state of the art, and taking into account the effect of the features by which the invention differs from this prior art, or the objective problem derivable from it, to adduce further prior art and apply its teaching to the process/apparatus of the closest prior art – or, in other words, whether any factor is discernible which points towards a combination of the teachings of the citations addressed. ^[ 34 ] Leaving aside the emphasis on the "closest" prior art, and broadening the focus to the prior art that from the point of view of the skilled person may be considered for the solution of the objective problem, the approach of the EPO boards is very similar to that of the Federal Court of Justice.