Pages 89-93

INFORMATION FROM THE CONTRACTING / EXTENSION STATES

DE Germany

Judgment of the Bundesgerichtshof (Federal Court of Justice), 10th Civil Senate, dated 24 September 1991

(X ZR 37/90)*

Headword: Beheizbarer Atemluftschlauch (Heatable breathing airhose)

Article: 64(1) and (3), 69(1) EPC and Protocol on Interpretation

Sections 10, 14 Patent Law

Keyword: "Extent of protection conferred by the patent – no extension of protection to objects lacking essential features of the claimed invention - precept of legal certainty" - "Indirect patent infringement"

Headnote

1. Whoever stresses the particular significance of one feature in a patent specification cannot assert any claims under patent law against use of an object lacking this feature.

2. Section 10 Patent Law contains - as the very position of this provision within the Law shows - no extension to the arrangements regarding the extent of protection conferred by the patent under Section 14 Patent Law (= Article 69(1) EPC). The "patented invention" referred to in Section 10(1) Patent Law is the invention protected in accordance with Section 14 Patent Law or Article 69(1) EPC.

Summary of Facts and Submissions

The plaintiff is the proprietor of (...) European patent No. 214976 (the patent in suit), which relates to a device for the heating-up of an aerosol. Claim 1 of the patent in suit reads as follows:

"Device for the production of an aerosol displaying a flexible spiral-shaped breathing air hose (5), by way of which the aerosol produced by an atomiser chamber (1) is conductible to the patient, wherein at least one heating wire for the heating-up of the aerosol produced is arranged in the breathing air hose (5), characterised in that the heating wire or wires is or are arranged in the spirals of the breathing air hose (5) or form these and that an acoustical and/or optical signal transmitter is arranged for the indication of a deviation of the temperature, measured at the exit of the breathing air hose (5), of the outflowing aerosol from a definite temperature."

The application for the patent in suit claimed the priority of (...) German utility model No. 84 15 364 (utility model in suit), which was entered in the utility model register on 4 October 1984 (...). Claim 1 of this - since cancelled - utility model in suit read as follows:

"Device for the production of an aerosol, in which the aerosol produced is conductible from an atomiser chamber to the patient by way of a flexible spiral-shaped breathing air hose and heating wires serve to heat up the aerosol produced, characterised in that the wire or wires is or are embedded in the walls of the breathing air tube."

The plaintiff holds the defendant liable for infringement of the patent in suit.

The defendant distributes flexible, spiral-shaped breathing air hoses for aerosol atomisers. The outer and inner walls of these hoses have a ribbed and grooved cross-section extending in a spiral along the longitudinal axis of the hose. Heating wires are accommodated in the internal grooves and - following the spiral of the cross-section - are run along the internal wall.

The plaintiff maintained before the Landgericht (Regional Court) that the distribution of these hoses represented an indirect infringement of the utility model in suit. In this respect he asserted that the hoses were functional elements custom-built for use in the device protected by the utility model in suit. The Landgericht essentially allowed the plaintiff's action.

The defendant appealed against this decision. During the appeal procedure Claims 1 and 2 of the utility model in suit were deleted owing to an insufficient level of invention. The plaintiff thereupon based his action on the patent in suit which had been granted in the interim.

The Oberlandesgericht (Regional Court of Appeal) allowed the defendant's appeal and dismissed the plaintiff's action. On appeal on a point of law against this dismissal in the lower courts, the plaintiff further pursues his action.

Reasons for the Judgment

The plaintiff's appeal is not allowable.

I. The appeal court holds that the object of the patent in suit is the following features of a device for producing an aerosol:

1. It has a flexible spiral-shaped breathing air hose,

2. by way of which the aerosol produced by an atomiser chamber is conducted to the patient.

3. At least one heating wire for the heating-up of the aerosol produced is arranged in the breathing air hose.

4. The heating wire or wires is or are arranged in the spirals of the breathing air hose or form these.

5. An acoustical and/or optical signal transmitter is arranged for the indication of a deviation of the temperature, measured at the exit of the breathing air hose, of the outflowing aerosol from a definite temperature.

The appeal makes no criticism here. There is no obvious error in law.

II. 1. In the appeal court's opinion the contested hose makes no use of the object of the patent in suit even if it is assumed for the plaintiff's benefit that it puts into effect features 1 to 4 of the patent in suit. For it does not have, and provides no substitute for, the signal transmitter in accordance with feature 5 of the patent in suit. And this feature is not entirely of secondary significance for the protected device since it alone solves the second part of the problem of the protected invention, which in the patent specification in suit is seen as no less important than the first part, i.e. making immediately detectable any deviations in the temperature of the aerosol from a pre-selected temperature. The plaintiff himself considered this feature essential for in the course of the grant proceedings he took it, on his own initiative, from a sub-claim and included it in the main claim.

It is moreover questionable whether a patent in which the content of the patent claims is the decisive factor in establishing the extent of protection conferred by the patent can be assumed to be infringed at all if the contested embodiment lacks one feature without substituting it in any way. Nor does an infringement of the patent in suit obtain when hoses displaying only features 1 to 4 of the patent in suit are manufactured, since an object with only these features would in any case not be eligible for protection, being obvious from the state of the art on the priority date of the patent in suit.

2. The appeal against this assessment is not allowable.

(a) In the dispute in question a direct patent infringement (Articles 64(1) and (3) and 69(1) EPC, Sections 9, second sentence, (1), and 139 Patent Law) does not obtain irrespective of whether - and this has not yet been decided by the Senate -partial patent protection can be recognised at all under Article 69(1) EPC (and Section 14 Patent Law), the extent of such protection, if any, and whether the partial combination as such needs to be patentable. It would be incompatible with the precept of legal certainty expressly mentioned in the Protocol on the Interpretation of Article 69(1) EPC to extend patent protection to an object that lacked a feature stressed as being of particular significance in the patent specification. (...)

The appeal unsuccessfully contests that an expert would realise from the substance of Claim 1 of the patent in suit that feature 5, which was originally contained in a sub-claim, in no way contributed to solving the "actual problem of the invention", i.e. evenly heating up the aerosol throughout the entire breathing air hose without any direct contact with the heating wires used for the heating process, but was merely an additional measure - an advantageous design of the solution brought about by the device with features 1 to 4. It is not obvious from the patent specification that feature 5 was originally contained in a sub-claim. Furthermore, in view of the aforementioned precept of legal certainty, facts arising in the course of the grant procedure cannot be taken into account in establishing the extent of protection conferred by a patent.

Contrary to the opinion expressed in the appeal it is not obvious from the "substance of Claim 1 of the patent in suit" that the signal transmitter according to feature 5 is not one feature of a combination of the features 1 to 5, but rather supplements the combination of features 1 to 4. On the contrary, the fact that feature 5 is contained in the main claim and not in one of the subordinate sub-claims indicates that protection is sought for the combination of all five features. No grounds for believing the opposite can be found in the patent description which, under Article 69(1), second sentence, EPC, is also to be used as a means of interpretation.

(b) The Oberlandesgericht (Regional Court of Appeal) rightly found the action not allowable even on the grounds of indirect patent infringement (Article 64(1) and (3) EPC in conjunction with Section 10(1) Patent Law).

(aa) The purpose of standardising the concept of the risk of indirect patent infringement in Section 10 Patent Law is to prevent unauthorised use of the protected invention right from the start. It therefore prohibits even the offering and supplying of means enabling the person supplied to use the protected invention without authorisation. It is however a requirement that there be a risk of unauthorised use of the protected invention as such, i.e. with all its features. Section 10 Patent Law contains - as its position within the Law shows - no extension to the arrangements regarding the extent of protection conferred by the patent under Section 14 Patent Law (= Article 69(1) EPC). The "patented invention" referred to in Section 10(1) Patent Law is the invention protected in accordance with Section 14 Patent Law or Article 69(1) EPC.

(bb) The plaintiff (...) did not maintain that the contested hose had the required qualities or properties. On the contrary, he held that the defendant and other fellow applicants "could successfully market the patent in suit without feature 5" (...) and that incidentally not even he himself - the plaintiff - had made use of this feature yet.

(cc) (...) Since the employment of features 1 to 4 of the patent in suit in a device for heating up an aerosol does not alone constitute use of the patent, neither a direct nor indirect infringement obtains and the appeal is proved to be unfounded.

DE 2/93