Patent litigation in Europe: Key cases 2013

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Esther Pfaff, Mark Jones and other members of Hoffmann•Eitle Munich/London summarize key rulings on damages, claims limitations, validity and infringement.

German Federal Court of Justice (FCJ) rules on entitlement to damages for indirect infringement (X ZR 69/11, Milling Method).
In German patent litigation, damages are usually not assessed or granted in the main infringement proceedings, but later in separate court proceedings (Schadenshöheverfahren). In the infringement proceedings, the patentee only requests a declaration that they are generally entitled to obtain damages without a specific sum being fixed in the decision. Very often the parties then settle after the rendering of accounts by the defendant, and thus do not initiate further court proceedings to establish the amount of damages owed.

The FCJ has now clarified the conditions that must be met to obtain entitlement to damages in cases of indirect infringement in its decision Milling Method (Fräsverfahren of May 7, 2013, X ZR 69/11, published in GRUR 2013, at 713). A claim to entitlement to damages will be granted if the plaintiff has credibly shown that it did in all likelihood incur damages, however, whether the damages really were incurred and to what extent, does not have to be assessed or proven.

In cases of indirect infringement, an assessment of damages is generally more difficult since the means offered or delivered can often be used either in an infringing manner or a patent-free manner. An act of indirect infringement can, however, give rise to the issuance of an injunction. Such an injunction can be limited to ordering the defendant to put a disclaimer on its products to prevent the infringing use. Damages, however, will only be granted in cases of a later direct infringement, in other words when there is a causal link to the offer/delivery which was the subject of the infringement proceedings. Earlier German case law required that when asserting damages at least one single act of direct infringement had to be proven, ie, a use in an infringing manner based on the offer/delivery (cf. Judgments Antriebsscheibenaufzug, Higher Regional Court Düsseldorf, April 10, 200 2 U 6/02 and Tintenpatrone, FCJ May 20, 2008, X ZR 180/05).

The FCJ in Milling Method has now confirmed that an act of indirect infringement, such as an offer indicating the infringing use, is considered to be sufficient to be entitled to assert damages (this was already indicated in the FCJ judgment Deckenheizung published in GRUR 2006, at 839). In Milling Method, the patent in suit initially covered a milling method for a device with certain features, but was limited in nullity proceedings to a milling method for a turbine blade. The defendant had sold software as a manufacturing tool which used the milling method and offered the software program at a trade fair and in brochures precisely for manufacturing turbine blades. Request a free trial to read more.