GERMANY TRENDS AND DEVELOPMENTS Contributed by: Dr. Peter Klusmann, Gregor König, Dr. Dirk Schüßler-Langeheine and Dr. Lasse Christian Weinmann, Hoffmann Eitle
patent infringement, irrespective of where and when they materialize. It would be unfair if profits resulting from patent infringement would remain with the infringer. In the first case decided by the FCJ in 2023 (FCJ X ZR 30/21 - “Upholstery conversion machine”), the infringer did not only sell the protected machine but also had agreements in place with their customers on maintenance and supply of use materials for the machine. The patent holder claimed damages not only for the sale of the pro - tected machine but also for the additional ser - vices and supplies, irrespective of whether such services or supplies were conducted before or after patent expiry. The FCJ stated that the patent owner might claim all infringer’s profits resulting from the infringing act (ie, sale of the protected product) unless (exceptionally) the attribution of the rele - vant profits to the infringement would be unjusti - fied. Such an exception would only apply in rare cases, for example, if the infringer made addi - tional profits by reinvesting the profits caused directly by the infringement. Based on such reasoning, the FCJ ruled that the infringing sales of the machine caused both the sale of maintenance contracts and the sale of used materials. The market opportunities incor - porated in the patent covering the machine also included the profits made by selling additional services. According to the FCJ, the damages claim for these additional services is not limited to the duration of the patent but rather includes the profits made with additional services after patent expiry as long as these sales were also caused by the infringing sale of machines during the duration of the patent.
In the second case decided by the FCJ in 2024 (FCJ X ZR 104/22 - “Evaporation dryer system”), an offer for the sale of a machine protected by a patent in force in Germany was made from Ger - many, while the subsequent sale of the machine took place in Sweden where the parallel patent had already expired. The patentee also claimed damages for the profits resulting from the sale in Sweden. The FCJ confirmed that the profits made by the sale in Sweden resulted from the infringing offer in Germany. The profits made in Sweden were associated with the market opportunity reserved for the patentee, who may, therefore, in principle, claim the infringer’s profits made in Sweden. However, as only the offer took place in Ger - many, the patentee is only entitled to a fraction of the infringer’s profit, which can be attributed to the infringing offer. The FCJ sent the case back to the Higher Regional Court to assess the relevant facts of the case and determine the appropriate contribution factor, ie, to what extent it was relevant for the profit generation that the offer was conducted from Germany. In patent disputes in the life sciences, there are numerous cases and constellations where cer - tain acts of infringement or elements relevant for infringement are conducted in a country with patent protection and while a patent is in force (eg, manufacture and/or final batch release of an infringing product, or customization of a product for a patent-protected use), while subsequent activities resulting in significant commercial prof - its (eg, sales of the relevant product) are con - ducted in a country without patent protection or after patent expiry. The recent FCJ decisions strengthen the patentee’s position for claiming full damages resulting from patent infringement.
111 CHAMBERS.COM
Powered by FlippingBook