We are saddened by the sudden demise
of our long-time colleague and friend
Jürgen Schneider
who passed away after
a short and serious illness.
In deep mourning and with
the greatest respect we say goodbye
to a wonderful person.
The Plaintiff in the proceedings is the exclusive licensee for the German portion of the European patent concerning an “Apparatus for the drying of moist particulate materials in superheated steam.” Defendant manufactures and supplies machines and equipment for “fluidised-bed evaporation dryers.” Defendant manufactures these dryers according to the individual requirements of its contractual partners and, therefore, does not offer any standard products. Defendant was in possession of a demonstration model located in its domestic facilities that showed the operating principle of fluidised-bed evaporation drying. Defendant also exhibited different versions of evaporation dryers on its website, at trade fairs and in workshops. However, neither the demonstration model nor the embodiments thus presented realised all features of the patent in suit. Nevertheless, Defendant installed an evaporation dryer that realised all features of the patent in suit at a customer’s facility in a patent-free country. The extent to which this evaporation dryer that was installed in a patent-free country was based on a domestic offer to sell by Defendant and not just on discussions in a patent-free country remained in dispute between the parties.
The District Court of Düsseldorf convicted Defendant of making patent-infringing offers. The Court bases this judgment on the presentation of the demonstration model in the domestic facilities of Defendant and the presentation of various versions of evaporation dryers on the website of Defendant and at trade fairs and in workshops. As mentioned, none of these products thus presented, in and of themselves, realised all features of the patent in suit. In support of its judgment, the District Court explained that whether the presented products realise all features of the claim of the patent in suit is irrelevant. Rather, what matters is solely the objective explanatory value of Defendant’s advertising. Defendant presented those demonstration models and exemplary embodiments in the expectation that a corresponding evaporation dryer would be demanded by the relevant sector of consumers being addressed, with all participants realising that each of these evaporation dryers would be adapted to the requirements of the respective customer. Thus, Defendant has in principle also expressed that it is able to manufacture and supply an evaporation dryer according to the invention. The Regional Court rejected as unsubstantiated the argument of Plaintiff regarding Defendant’s offer related to the system actually built in a patent-free country (namely, a system that realised all features of the patent in suit). According to the court, Plaintiff had not provided any pleadings regarding the content of the offer.
The Higher Regional Court of Düsseldorf ultimately upheld the judgment of the Regional Court but based its decision solely on Defendant’s offer concerning the system built in a patent-free country. Because the exact content of the offer was not known to the Court and was in dispute between the parties, the Higher Regional Court drew a conclusion about the corresponding offer based on the finished system. According to the Court, it must be assumed that an earlier offer relates to the product (in accordance with the patent) that is subsequently actually built or delivered. That offer does not yet have to include all features in accordance with the patent at the time it is submitted as long as the offer’s specifics—possibly even carried out only in a patent-free country—are still within the scope of the original subject of the offer, thus merely developing and not changing it.
The present decision of the Higher Regional Court of Düsseldorf follows, first of all, the Court’s existing case law in considering all preparatory actions as offers that are to make possible or promote the subsequent conclusion of a transaction regarding a proprietary product (see, for example, Higher Regional Court of Düsseldorf GRUR-RS 2015, 18679 – connecting piece). In contrast, the BGH [Bundesgerichtshof = Federal Court of Justice] regards as an offer any action that according to its objective explanatory value visibly offers the product to the demanding parties for their acquisition of the power of disposition (BGH GRUR [Gewerblicher Rechtsschutz und Urheberrecht = German Association for the Protection of Intellectual Property] 2006, 927 – plastic hanger), and for this it is not necessary for the product to be already manufactured or for the offer to be regarded legally as a contractual offer (Kühnen, Handbuch der Patentverletzung [Manual of Patent Infringement], 9th edition, part A, recitals 224 + 225). For trademark law, the 1st Civil Division of the BGH has even tightened the requirements for what constitutes an offer because according to the Division merely exhibiting a product at a trade fair does not constitute an inherent invitation to purchase of the (patent-infringing) product (BGH GRUR 2010, 1103 – praline shape II; BGH GRUR 2015, 603 – cookie bar and BGH GRUR 2017, 793 – Mart-Stam chair). The Regional Court of Mannheim has also applied this case law of the 1st Civil Panel to patent law (LG [Landgericht = Regional Court] of Mannheim, InstGE 13, 11 – suction cup). The Higher Regional Court of Düsseldorf has already rejected this view (Higher Regional Court Düsseldorf GRUR-RS 2014, 16067 – sterile container)—with the exception of a pure competitions— and then appears to further lower the requirements for the argument about offers and their contents.
Already the first-instance decision of the District Court of Düsseldorf is thus only seemingly based on the case law of the BGH. In the decisions BGH GRUR 2003, 1031 – coupling for optical devices and BGH GRUR 2005, 665 – mudguard, the BGH considered that patent infringement through an offer has taken place even if the advertising for a product does not show all features of the patent claim as long as the product referred to in the advertising coincides in its actual configuration with the technical teaching of the patent claim.
The District Court of Düsseldorf then wanted to see the act of patent infringement as starting with the offer if the overall picture of individual offers shows that Defendant is prepared to manufacture a (not yet existing) product even in a patent-infringing manner.
The Higher Regional Court has sustained this decision merely in terms of the legal effect, but (returning to the earlier view of BGH case law) it has focused on the concrete individual action. However, in so doing, the Higher Regional Court has not examined the content of the offer itself, but instead has drawn a conclusion from an actually manufactured and installed system (in a patent-free country) to Defendant’s offer sent by Defendant from its domestic principal office. The Higher Regional Court did not accept the Defendant’s objections that this offer did not yet exhibit all features of the patent; rather, the respective construction planning and meetings were only conducted at the installation location in a patent-free country. To the extent that these changes and additions to the offer are still within the scope of the original domestic offer’s subject, they are to be regarded as already a part of the original offer.
Although the Higher Regional Court again bases its interpretation of the concept of the “offer” again on the presence of an actually existing or customisable embodiment, it situates the requirement that all features of the patent have recognisably been realised in this offer at a later point in time. The recognisability is not yet required at the time the offer is made; rather, it is sufficient if the product actually manufactured later realises all features. A conclusion may be drawn here based on the realised embodiment about the content of the offer.
Conclusion: By its decision, the Higher Regional Court significantly expands the options of a domestic patent holder for attacking acts of infringement abroad. Even if a patent-infringing product is manufactured and delivered exclusively in a patent-free n country, a conclusion may be drawn—if the infringer is based in the country where the patent is protected—about a patent-infringing domestic offering. The burden of proof then falls on the potential infringer to make its case and to present any evidence showing that it either has not made an offer from its company’s domestic principal place of business or that the product actually delivered represents a complete modification and not just a refinement or completion of the subject of the original offer. Because the patent holder as a rule has no access to the contents of the offer, according to case law up to now he ran the risk that his argument regarding an infringer’s offers would be rejected as unsubstantiated. However, the patent holder can only claim the privileging by means of the inference from the actual embodiment if it is established or is ascertainable that the item delivered or built in a patent-free country actually realises all features of the patent.
We are saddened by the sudden demise
of our long-time colleague and friend
Jürgen Schneider
who passed away after
a short and serious illness.
In deep mourning and with
the greatest respect we say goodbye
to a wonderful person.
