1. Previous on the doctrine of equivalents
The doctrine of equivalence aims to guarantee an adequate reward for the contribution of the inventor to the state of the art in the field of tension with legal certainty. At the same time, there are uncertainties as to the assessment of the three conditions for extending the scope of patent protection. In order for an embodiment deviating from the literal meaning of the patent claim to come within its scope of protection, it must resolve the problem underlying the invention by objectively equivalent means, the person skilled in the art must be able to consider the embodiment as having the same effect and consider equivalent solution.
It may be sufficient for the objective equivalent effect of a means that the effect required according to the patent claim is achieved only to a limited extent. This understanding of the objective equivalent effect was recently confirmed by the Federal Court of Justice in its Kranarm (crane arm) decision. With this judgment, the FCJ further consolidates its case law on equivalent realization in the case of deteriorated embodiments (BGH GRUR 1999, 909 – Spannschraube; BGH, GRUR 2005, 1005 – Bratgeschirr; BGHZ GRUR 2012, 1122 – Palettenbehälter III; BGH GRUR 2015, 361 Kochgefäß; BGH GRUR 2021, 574 – Kranarm). The HRC Düsseldorf also follows this case law and shares the interpretation of the FCJ.
In a recent judgment of March 18, 2021 (Case n ° 2 U 18/19), the HRC Düsseldorf partially reverses a judgment of the RC Düsseldorf and condemns the defendants. Considerations focus on the question of when divergent pleas have the same objective effect and when new factual submissions by the claimant may be taken into account in the appeal body.
2. The actuator and the lifting column
The plaintiff brought an action against the defendants on the basis of claim 1 of its pending patent entitled “An Actuator”. Much of the claim relates to an actuator actuated by means of a motor. Such actuators are used for example in modular furniture such as beds, armchairs or tables. The applicant’s patent claim provides, inter alia, for the following feature:
“At least the electric motor is mounted in a well-fitting recess in a plastic foam block tidy and secure in the cupboard. ”
The patent at issue is based on the task of reducing the noise level of linear actuators without significantly increasing costs. When adjusting furniture by means of such actuators, noises are produced due to vibrations or gear noises. According to the invention, the aforementioned characteristic is intended to reduce this noise level and thus to achieve noise attenuation.
The defendants sell lifting columns which can be installed in offices, for example. Contrary to the wording of the feature at issue, the contested embodiment did not include a coherent part in plastic foam. However, there were three individual pieces of foam plastic around the engine. These had no contact with each other even when installed, and therefore did not form a closed surface.
3. The decision of the HRC
The CR had rejected the literal infringement. According to the technical teaching of the patent, a block of plastic foam should be understood as a compact element. This one could certainly consist of several parts, which however had to represent a unit when assembled. The term “block” signifies a certain compactness. In this regard, the patent at issue presupposed that individual parts were arranged with each other in the cabinet. The attacked embodiment did not have such a connection. In this regard, the CR denied a literal offense. Likewise, the CR ruled out an equivalent offense. The defendants had disputed that the contested embodiment was just as suitable for sound insulation as a block of plastic foam. The applicant has not been able to counter this with sufficient justification.
The HRC also finds that there is no literal infringement, but finds an equivalent infringement. This is based in particular on other arguments of the applicant.
The applicant submitted a test report on appeal. This listed the noise development of various lifting columns. The comparison included elevator columns without a foam block, those with a one-piece foam block and an elevator column with a three-piece foam arrangement comparable to the embodiment under attack. In the unloaded state, the use of a one-piece foam block reduced noise development by 15%, that of a three-piece arrangement by 10%. In this regard, the Court found that the sound insulation of the contested embodiment was approximately 5% less effective. With a weight load of 40 kg, the resulting sound insulation deviated only by 2%.
Following the case law of the FCJ (more recently crane arm), the HRC declared that it does not prevent equality of effect if the effects according to the invention are not achieved 100%. It might be sufficient for equal effect that the effect required according to the patent claim is achieved only to a limited extent. From the point of view of an appropriate reward for the inventor, inclusion in the scope of protection was also appropriate if the effects according to the invention were essentially achieved, i.e. to a practically still extent. considerable. For this purpose, the effect according to the patent and a weighting of the deficits of the embodiment determined on this basis were decisive. In the present case, the patent in dispute was not intended to prevent any development of noise. The decisive factor was cost-effective reduction of the noise level. This was essentially achieved even with a maximum deviation of 5%.
The claimant had only submitted the decisive test report in the appeal court to the HRC. In this regard, the Court had to determine whether it could base its decision on the report. This was possible in this case because the defendants could not substantially challenge the report, so the submission was considered uncontested under Sec. 138 by. 3 German Code of Civil Procedure (ZPO). After submission of the test report, the defendants should have stated precisely and truthfully how the achievable noise reduction of the contested embodiment differed from the values claimed by the plaintiff. By submitting a contradictory test report with partly implausible values, the defendants failed to do so. As the argument was therefore unchallenged, the Applicant’s new factual argument had to be taken into account in the appeal proceedings. However, since it would have been possible for the plaintiff to submit a test report already at first instance, she had to bear the costs incurred by the appeal procedure in accordance with Art. 97 par. 2 ZPO.
4. Achieve the goal with consistency
The decision of the HRC Düsseldorf fits perfectly into the case law of the FCJ. Thus, it again becomes clear under what conditions also deteriorated embodiments are covered by the scope of protection of a patent claim under the doctrine of equivalence. In this regard, the decision of the CHR is to be welcomed, as it offers additional legal certainty, at least with regard to deteriorated embodiments.