Many practitioners in Germany thought the doctrine of equivalence to be rather at its end following two Supreme Court (BGH)-decisions in 2011 (“Okklusionsvorrichtung” and “Dyglycidverbindung”). Now, the renowned Higher Regional Court Duesseldorf has – in my eyes, correctly – made clear that the old dog is still alive.

Background

According to standard practice of the BGH, equivalence has three prerequisites: (i) an identical effect attributed to the alternative means; (ii) perceptibility of the alternative solution for the skilled person; and (iii) equivalence in value.

The BGH uses the following formula to describe the third prerequisite (equivalence in value) in detail: The reflections in which the skilled person has to engage in order to arrive at the modified embodiment must be so orientated towards the meaning and content of the technical teaching protected in the claim that the skilled person will take the deviating embodiment with its modified means into consideration as a solution equivalent in value to the one at issue (like this namely the “decision quintet” of 12.3.2002, BGH GRUR 2002, 511, 512 – Kunststoffrohrteil; GRUR 2002, 515, 517 – Schneidmesser I; GRUR 2002, 519, 521 – Schneidmesser II; GRUR 2002, 523, 524 – Custodiol I and GRUR 2002, 527, 529 – Custodiol II; see also already BGH GRUR 1986, 803, 805 – Formstein; GRUR 1988, 896, 899 – Ionenanalyse). I personally prefer to put this prerequisite negatively as follows: It is necessary to ask whether, despite the fact that it has already been established that the embodiment achieves the identical effect and was perceptible, the person skilled in the art might, at least in principle, have been dissuaded from regarding the deviating solution as equivalent in value to the claimed solution, precisely because of the technical value judgment expressed in the patent and its claims (cf. Haedicke/Timmann, Patent Law – A Handbook, 2013, § 6 mn. 169 et. seq.).

In the two BGH-cases mentioned above, the BGH stated that the third prerequisite would not be met, in particular, if the specification of the patent in suit itself mentioned two alternative solutions, of which only one was explicitly claimed as being part of the invention. Under these circumstances, the public had to assume that the patent proprietor made a decision only to protect the one solution as claimed and to leave the other unprotected, just as in a “selection invention”. The alternative solution of the attacked embodiment could only fall within the scope of protection, even under the doctrine of equivalence, if it differed from the solution variant mentioned only in the description similar to the solution that was actually claimed.

Decision of the Higher Regional Court (Oberlandesgericht) Duesseldorf

The Higher Regional Court Duesseldorf now clarified that the BGH-principles mentioned above are to be understood as an exception and must not be applied excessively. The question is whether the language of the patent specification and the claims suggest that the patent proprietor made the deliberate decision to exclude the alternative solution mentioned only in the specification from the claimed subject-matter by form of a waiver. The principle of legal certainty does not demand to exclude any and all alternatives mentioned in the specification or similar alternatives from protection under the doctrine of equivalence, but only requires that if there is any doubt, it must be assumed that the exclusion is deliberate, which is at the expense of the patent proprietor (see already Haedicke/Timmann, Patent Law – A Handbook, 2013, § 6 mn. 173).

The Higher Regional Court allowed a further appeal to the BGH due to the general importance of the case.

Consequences

Following this – welcome – clarification, it is worth while to consider an infringement under the doctrine of equivalence even if the alternative solution of the attacked embodiment is either explicitly mentioned in the specification of the patent in suit or similar to an embodiment mentioned only in the specification.

OLG Duesseldorf, decision of 7 Nov 2013, docket No. I-2 U 29/12 – WC-Sitzgarnitur
click here for the full German text of the decision

Dr. Henrik Timmann
rospatt osten pross – Intellectual Property Rechtsanwälte


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