This blog relates to the decision “Lungenfunktionsmessgerät” (lung function analyser) by the Higher Regional Court (Oberlandesgericht) of Duesseldorf (judgement of 24 February 2011, docket no. I-2 U 122/09). The court had to deal with the differentiation between direct and indirect patent infringement. The patent in suit, EP 0 606 351, provided for an apparatus for ascertaining prevailing lung function, in simple terms a device to check the lung function by analysing the amount of nitrogen monoxide in the exhalation air. This apparatus consists of three parts: a first part to evaluate the amount of nitrogen monoxide, a second part to compare the value of nitrogen monoxide evaluated with a corresponding value of a fully functional lung and a third part to interpret the results.

The attacked embodiment did only consist of a device for analysing the exhalation air to be connected to a standard computer and the software for comparing and interpreting the results to run on this computer. The computer itself was not offered by the defendant. Therefore the defendant contested to infringe the patent in suit directly as not all three parts of the protected invention are provided.

In its much elaborated judgement the Higher Regional Court found for direct infringement even though the attacked embodiment did not comprise all parts of the protected combination. In cases where the missing component is only a “run of the mill ingredient” being of minor importance for the underlying idea of the patent and where the buyer does already have the missing part or will definitely acquire it in order to use the other parts provided, there is only room for direct infringement. The underlying idea of the ruling is that providing a common commodity (like an ordinary computer) which is already in the possession of the buyer would be senseless. Under these circumstances, the supplier takes advantage of the buyer’s preparation wilfully. And even if such a common commodity had to be acquired separately this would not hinder to adopt it as the supplier’s own action. As standard computers are widely used in everyday life nowadays, all the buyer does is connecting the analysing device provided to such a computer and installing the software supplied with it in order to produce the functioning assembly. This cannot be regarded being more than adding an obvious part that is only of secondary importance to the general idea of the invention.

By this judgement the court picks up an established principle since long and strengthens the weight of direct infringement. It might not be breaking news, but run of the mill ingredients rarely are anyway.

Dr. Markus Lenßen, LL.M. (Cantab.)
rospatt osten pross– Intellectual Property Rechtsanwälte


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