This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 6: Rules of Evidence in Intellectual Property Litigation
Federal Court of Justice (Bundesgerichtshof) of Germany [2020]: Case No. X ZR 111/18
Date of judgment: May 19, 2020
Issuing authority: German Federal Court of Justice (Bundesgerichtshof)
Level of the issuing authority: Appellate instance
Type of procedure: Judicial (Civin( �/span>
Subject matter: Patents (Inventions)
Plaintiff: S.
Defendant: F.
Keywords: Inventive step, Combination of prior art, Party-appointed expert, Court-appointed expert
Basic facts: Citing grounds of inadmissible extension, lack of practicability, and lack of patentability, the plaintiff challenges the validity of a patent for a sensor that detects the rate of rotation and tilt of a sense mass. The teaching of the patent is composed of features 1 to 5. The prior art document D4 discloses features 1 to 4 but not feature 5, which concerns the mounting of the tiltable masses on external anchors. Prior art document D7 discloses a rotation rate sensor having external anchors in accordance with feature 5, but with only one mass for tilting, not the two masses described in features 2 to 2.2 of the patent in suit.
The Federal Patent Court—which is staffed with technical judges—did not consider it obvious to combine documents D4 and D7. A private expert opinion submitted by the plaintiff and appellant considered the teachings of documents D4 and D7 to be easily combinable; a person skilled in the art would have been motivated to design the rotation rate sensor in a more robust manner, and, for this purpose, the construction from D7 would have been particularly interesting.
In the appeal proceedings, the plaintiff requested the hearing of a court-appointed expert.
Held: The Federal Court of Justice, having the power to review findings of fact as well as law, upheld the decision of the Federal Patent Court and dismissed the action for invalidation of the patent in suit, finding it had not been obvious to combine documents D4 and D7.
Relevant holdings in relation to rules of evidence in intellectual property litigation: Like the Federal Patent Court at the first instance, the Federal Court of Justice did not consider it obvious to combine D4 and D7, because an external mounting of the tiltable masses based on D4 would not have been possible without further consideration (para 84). There was therefore no indication to combine both teachings (para 85). “In D7, only the replacement of one type of suspension by the other is described as advantageous. This did not give the skilled person any indication that a combination of both measures could also be advantageous.”
The Federal Court of Justice does not deviate from the factual findings of the private expert engaged by the plaintiff. Rather, the question of whether there was an indication from D7 to improve the teaching from D4 is a question of law, not to be decided by an expert (para 87).
Relevant legislation:
Section 56 of the European Patent Convention (EPC)
Sections 87, 88 and 117 of the Patent Act of Germany
Sections 529 of the German Code of Civil Procedure