Complete destruction of an entire device is not necessary if it is possible to destroy only an individual part of the entire device or to change a technical feature in such a way that the entire device no longer falls within the scope of protection of the patent. The prerequisite is that this is a measure which precludes the restoration of the patent-infringing state. This was decided by the Düsseldorf Higher Regional Court (OLG) in its judgment of November 5, 2020, file number I-2 U 63/19, reprinted in GRUR-RR 2021, p. 15 et seq.
The judgment was based on the following facts:
The applicant is the proprietor of a European patent relating to connecting elements for a floor covering, which consists of a first and a second partial element. According to the patent, the partial elements each have hollow chambers and connecting openings via which they can be connected to one another by connecting means and which, in the assembled state, form a connecting channel in which a connector is arranged. The connecting elements are characterized in particular by the fact that the connecting openings of the partial elements, through which the connecting means are guided, are designed as elongated holes.
The defendant offered, used and distributed in the Federal Republic of Germany connecting elements for floor segments of a floor covering which made use of all features of the patented teaching. The plaintiff therefore brought a claim against the defendant for a direct patent infringement.
The Düsseldorf District Court (LG) found that the patent in suit had been infringed directly and awarded the plaintiff the claims under the Patent Act, with the exception of the asserted claim for destruction of the entire device. Destruction of the entire device, consisting of a first and a second part element, connector and connecting means, was disproportionate. Destruction of only the first partial element of the challenged connecting elements was sufficient. This already ensures that the defendant can no longer use the overall device according to the patent. Alternatively, the defendant could redesign the first part element in such a way that the connection openings are formed as round holes instead of elongated holes. In this case, too, it was sufficiently certain that the defendant would no longer be able to make use of the patent.
The defendant’s appeal was unsuccessful.
The plaintiff did not challenge the limitation of the destruction claim in the appeal proceedings, which is why the OLG only dealt with the proportionality of the tenor of partial destruction. The defendant argued in opposition to the destruction claim that it did not own or possess an entire device, but only the individual components. Furthermore, the terms of its contract stipulated that its customers were not allowed to assemble the partial elements to an entire device that complied with the patent.
The OLG did not agree with either of these arguments.
All components from which the connecting parts can be assembled according to the patent are in the possession of the defendant. They were only (currently) not assembled in accordance with the patent. However, a respective assembly is not required by the patent claim. Rather, according to the patent, the individual component elements are to be designed in such a way that they form a connecting channel when combined. In other words, all that is required is that the components are suitable for being assembled to form the protected device. If all elements of an overall invention were in the possession of the patent infringer and if there were indications that these were to be assembled into the subject matter of the invention by the infringer himself or – attributable to him – by a third party, these individual parts would also be subject to destruction.
The OLG also rejected the defendant’s objection that an assembly of the individual parts by its customers in accordance with the invention was excluded on the basis of its contractual terms. After all, there was no guarantee that customers would adhere to this condition, nor that the defendant would enforce the obligation in the event of a breach.
Furthermore, the OLG pointed out that destruction was not already disproportionate because the defendant had already been ordered to cease and desist and was thus prevented from combining the individual parts into the entire device according to the patent. On the one hand, the claim for destruction would be of no avail in such an assessment, and on the other hand, a future risk of commission would not be required for the claim for destruction under Sec. 140a Patent Act..
The OLG confirmed the LG’s view that the destruction of the entire device would be disproportionate if even partial destruction would lead to the patent no longer being used. Complete destruction is also to be ruled out if a technical feature was modified in such a way that the entire device no longer fell within the scope of protection of the patent (as was the case here with a round hole instead of an elongated hole) and this represented an equally suitable alternative to complete destruction. Whether an equally suitable alternative exists would depend on whether the patent-infringing condition could be restored by subsequent manipulations – also by third parties – and the patent-infringing product could be put back on the market. Only if this could be ruled out, a limitation of the destruction claim could be taken into consideration..
Decisions on partial destruction or amendment as milder measures to total destruction are rare (e.g. Frankfurt (Main) Higher Regional Court GRUR-RR 2017, 289 – Legekopf: no destruction claim after expiry of the patent). In the case law of the courts – in particular the Düsseldorf courts – the disproportionate nature of the destruction of the entire product is regarded as an exception requiring special justification and is applied very restrictively. Even if the restrictive application of Sec. 140a (4) Patent Act can sometimes lead to serious damage to the infringer and represent a considerable waste of resources, the law grants priority to the rights of the patent proprietor as a matter of principle. This ratio of rule to exception in Sec. 140a PatG is justified by the legislative objective: Besides the general preventive deterrent effect and the sanction character, the destruction claim serves primarily to eliminate the consequences of a patent infringement. The patent-infringing goods are to be irretrievably removed so that a renewed infringement of intellectual property rights is permanently precluded.
Against this background, the practical decision of the Düsseldorf Higher Regional Court is very welcome as a concrete example of when destruction of an entire device is exceptionally not necessary to achieve these legal objectives. In the event of a patent infringement, this ruling provides manufacturers of an overall device consisting of several parts with instructions on how to check the respective individual parts for patent-free and irreversible modifications and how to avoid complete destruction of the device and thus unnecessary destruction of value and resources through appropriate redesign. It remains to be seen whether the German Federal Court of Justice (BGH) will agree with this ruling. The defendant has filed a non-admission appeal pending before the BGH (Case No. X ZR 110/20).
