The Federal Court of Justice confirmed that a nullity defendant can defend its patent to a limited extent only insofar as it is attacked by the nullity plaintiff. The limited defence of the patent in dispute by combining an attacked claim with an uncontested subclaim or with one of several variants of an uncontested subclaim is inadmissible.
Case date: 01 March 2017
Case number: X ZR 10/15
Court: Federal Court of Justice of Germany
A full summary of this case has been published on Kluwer IP Law.
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It seems that the proprietor cannot defend himself in combining an invalid independent claim with a dependent claim.
This is due to a legal problem, cf. free translation of § 29 of the decision:
Because the limited defence against a partial nullity claim even to the extent of an unchallenged dependent claim would boil down to a counter-claim by the patentee against the claimant for invalidity of the patent in dispute to the extent of the unchallenged dependent claim. Such a lawsuit is not provided for in the law and therefore cannot be subject to of a limited defence of the nullity defendant.
What is then the possible defence of a proprietor facing a nullity claim?