Pages 622-628

Decision of the German Federal Court of Justice dated 15 April 2010 - (Xa ZB 10/09)¹

Headword:

"Walzenformgebungsmaschine" (Roll-forming machine)

Article:

Sections 93(1) and 100(3), point 3 PatG (German Patent Law); Art. 103(1) GG (German Grundgesetz)

Keyword:

"Interpretation of the extent of protection conferred by a European patent - examination of decisions by the EPO and national courts - violation of the right to be heard"

Headnote

1. The German courts are required to consider decisions rendered by organs of the European Patent Office and courts in other EPC contracting states and pertaining to a largely similar issue and, where appropriate, address the reasons leading to a diverging result in the earlier decision. Insofar as points of law are concerned, this also applies, for instance, to the question of whether the subject-matter of a property right was obvious in the light of prior art.

2. Not every violation of this obligation breaches the relevant party's right to be heard.

Summary of facts and submissions

The respondent is the owner of utility model 201 22 096 (contested utility model) which relates to a roll-forming machine. The property right was applied for on 14 January 2004 by derivation (Abzweigung) from a European patent application. This patent application later led to the grant of European patent No. 1 339 508, which was maintained in amended form in opposition proceedings, likewise initiated by the appellant.

The appellant asserted in the present cancellation procedure that the subject-matter of the contested utility model was not protectable. The respondent defended the property right in amended form. The German Patent Office cancelled those aspects of the contested utility model that exceeded the defended version and dismissed the more extensive request for complete cancellation. The respondent defended the property right in further amended form before the appeal court. The Patents Court cancelled the contested utility model in its entirety.

The respondent is challenging this decision by means of an appeal (Rechtsbeschwerde) on a point of law for which leave to appeal had not been given and which is being opposed by the appellant.

The appeal on a point of law was dismissed.

Extract from the "Reasons"

II. ...

2. The respondent asserts in the appeal on a point of law that the Patents Court ignored its argument that the European Patent Office's opposition division had, on the basis of the same argument, upheld the European patent with claims 3 to 7 which were identical to claims 1 and 2 in the contested utility model. The respondent's right to be heard had thus been violated. Furthermore, the contested decision had failed to state the grounds.

Both objections are unfounded.

(a) It is established case law of the Federal Court of Justice that an incorrect, incomplete or insufficient ground does not justify an appeal on a point of law that is exempt from the authorisation requirement under Section 100(3), point 6 PatG.

Rather, a decision is deemed to lack the necessary grounds within the meaning of the said provision only if one of several independent means of attack or defence is omitted in the grounds (BGHZ (decision of the Federal Court of Justice in Civil Matters) 173, 47 point 16 - Informationsübermittlungsverfahren II (Information transmission method II) and other authorities). An independent means of attack or defence in this sense exists only if the facts would themselves establish, extinguish, bar or preserve a right (Federal Court of Justice, decision dated 03.12.1991 - X ZB 5/91, GRUR 1992, 159, 161 - Crackkatalysator 11 (Cracking catalyst 11)). This includes the question of inventiveness or inventive step, not however an individual factor that has to be considered when confirming or denying that question.

In the present proceedings, the Patents Court had to address, for instance, the non-protectability objection based on citations D8 and D11 and the respondent's submissions directed against that objection. These requirements were fulfilled by the contested decision. The Patents Court has shown why, contrary to the respondent's view, it considers the subject-matter of the contested utility model obvious in the light of the prior art. The respondent's reference in this context to the differing assessment by the European Patent Office's opposition division does not constitute an independent means of defence in the sense described above, as it is merely one of the arguments upon which the respondent based its submissions relating to the protectability of the subject-matter of the defended claims. That the Patents Court did not explicitly address the opposition division's view could, at most, justify finding an insufficiency or incompleteness in the contested decision. This is not sufficient for the application of Section 100(3), point 6 PatG.

...

(b) The ground for an appeal on a point of law under Section 100(3), point 3 PatG reflects the importance of the constitutional right to be heard (Art. 103(1) GG) for proceedings based on the rule of law in which all parties can exercise their rights effectively. Under this provision, the court is required to take cognisance of the parties' factual and legal submissions in order to determine their legal and procedural relevance to the decision. Furthermore, it cannot examine any information on which the parties to the proceedings did not have a chance to comment (BGHZ 173, 47 point 30 - Informationsübermittlungsverfahren II (Information transmission method II); Senate's decision of 22.9.2009 - Xa ZB 36/08, GRUR 2010, 87 point 12 - Schwingungsdampfer (Vibration absorber)). In general, it can be assumed that the court has also taken cognisance of and considered the parties' arguments it received, without it being required to explicitly address every argument in the grounds of its decision. However, if the court fails to address the main argument of a party in a matter that is of central importance to the proceedings, it is likely that the party's argument was not given due consideration, providing that, according to the legal position of the court, it was not immaterial or clearly unsubstantiated (BVerfGE (German Federal Constitutional Court) 86, 133, 146; BGHZ 173, 47 No. 31 - Informationsübermittlungsverfahren II (Information transmission method II)).

In the present case, the Patents Court did not have to explicitly address the assessment of the European Patent Office's opposition division in the grounds of the contested decision in order to protect the respondent's right to be heard, since the respondent had failed to produce the opposition division's decision or elucidate the grounds on which this decision was based. According to the files, the respondent had merely stated, "for completeness and the Senate's information", that the patent "had been upheld with claims identical to the present claims 1 and 3 to 7".

It is true that, when ruling in opposition, cancellation or revocation proceedings on the protectability of subject-matter which is identical or largely similar to subject-matter assessed earlier by the opposition division or a board of appeal of the European Patent Office, the Patents Court should, as a matter of course, consider the grounds on which the European Patent Office allowed or refused protectability. In general, the substantive rules governing that assessment are identical in terms of content. Divergent results therefore suggest that different prior publications were relied on, they were considered differently or the legal provisions governing the assessment were not understood and applied in the same manner. Admittedly, neither the European Patent Office nor the Federal Patents Court is bound by the other's past divergent assessments. However, in order to ensure as uniform an application of the law as possible, it is usually appropriate to pay attention to a divergent decision.

The Federal Court of Justice has considered it appropriate in earlier cases to evaluate decisions by the European Patent Office, holding them to be expert opinions of considerable weight (BGH (Federal Court of Justice), decision of 4.5.1995 - X ZR 29/93, GRUR 1996, 757, 759 - Zahnkranzfräser (Arch trimmer); decision of 5.5.1998 - X ZR 57/96, GRUR 1998, 895, 896 - Regenbecken (Storm-water tank)). The importance of expert opinions may have decreased in general in the light of more recent Federal Court of Justice rulings, which held that the question of whether the state of the art had rendered protectable subject-matter obvious required an assessment and therefore constituted a question of law (BGHZ 166, 305 point 28 - vorausbezahlte Telefongespräche (Prepaid phone calls); BGHZ 168, 142 point 11 - Demonstrationsschrank (Display case)). However, decisions of the opposition divisions and technical boards of appeal are considered noteworthy insofar as they address questions of law that are similar or identical to the ones addressed in proceedings before the Federal Patents Court or the Federal Court of Justice. Just as in other cases of potentially conflicting court decisions, it is necessary, both from the point of view of legal certainty as well as in the interest of harmonising case law in EPC contracting states, to consider decisions rendered by organs of the European Patent Office or other national courts and, where appropriate, reflect upon the reasons that led, in the earlier decision, to a result that the court called upon later to hear the case did not or did not readily share.

However, not every violation of the duty to reflect on earlier divergent decisions necessarily breaches the relevant party's right to be heard.

In that respect, what matters most are the facts and legal aspects that were invoked by the party. There is no indication in the appeal on a point of law that the respondent cited any facts or legal aspects it considered especially important relating to the opposition division's decision and on which the Patents Court should have explicitly ruled to avoid violating the right to be heard. A submission of this kind is all the more essential, given that the opposition division did not appear to explicitly address the fact that the subject-matter of the contested utility model would, in the opinion of the Patents Court, have been obvious to the person skilled in the art from reading D11 in combination with D8.

(c) The supplementary objection that the Patents Court should have permitted the appeal on a point of law under Section 100(2), point 2 PatG on the ground that it conflicted with an opposition decision by the European Patent Office is inadmissible. The decision on the admissibility of the appeal on a point of law under Section 100(2) PatG is not subject to review by the Federal Court of Justice. Irrespective of this, a diverging assessment by the European Patent Office and the Patents Court of the protectability of the subject-matter of an individual property right does not in itself constitute a reason to allow an appeal on a point of law.

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DE 1/10