Documents as such are no Pleas or Arguments

In the decision X ZR 19/20 “Tretkurbeleinheit” discussed a few days ago here, the German BGH provides a very interesting discussion on the nature and role of pleas and arguments in a patent nullity suit.

Technical judges in the German patent court are usually recrutited among the examiners of the German Patent and Trademark Office (DPMA). From their experience in patent application and opposition procedures, they are used to apply the principle of official investigation, e.g. that the court is entitled to investigate the facts of the case on its own initiative, i.e. without being bound to the submissions of the parties involved.

Though everybody is aware of the fact that the applicability of this principle in the nullity suit is very limited, it is the experience of the author of this not that the judges are sometines unable to resist to the temptation to look into parts of the documents other than those highlighted by the parties or to to assess the inventiveness of subject-matter base on combinations of prior art which had not been proposed by the plaintiff.

According to the BGH, this approach is incorrect.

With reference to the earlier decision X ZR 99/11 “Fahrzeugwechselstromgenerator”, the court judges that the typically unlimited and unmanageable prior art is transformed into a plea by the specific explanations as to which concrete contribution which part of which document shall make towards the alleged lack of patentability.

A document unaccompanied with indications of such concrete contribitions is not a plea or argument, whereas a new argument based on a document already on file is a new plea oar argument and therefore admissible only in the exceptional situatons defined in § 531(2) of the German Civil Procedural Act (ZPO).

The important consequence of this clearcut difference between new documents and new pleas is that the court is not entitled to develop its own arguments and indications relating to eventual relevant contributions of documents on file to the alleged lack of paetentability. Considering any such court-generated argument would violate the principles of impartiality and party disposition  (Margin no. 36 of the decision, page 19, 3rd line from the bottom).

This does not necessarily mean that each and every possible line of argument based on every available document should be filed from the onset. The case as initially filed could wel focus on the most promising lines of argumentations.

Accounting for the principles established in the decision “Fahrzeugwechselstromgenerator” , the decisive point on time is the preliminary opinion of the patent court under § 83(1) of the German Patent Act. The parties should go “all in” if this opinion is negative to them because failure to do so could result in the foreclosure of new document of new arguments based on old documents on the  2nd instance.

Keep Records of your Search Queries

In the matter X ZR 19/12 “Tretkurbeleinheit”, the German BGH had to decide on a new means of attack based on a certain document D7 submitted with the grounds of appeal in the 2nd instance.

As already discussed earlier (see here and here), the party submitting new means of attack in the 2nd instance has to establish that one of the exceptions mentions in § 531(2) 1st sentence of the German Civil Procedural Act (ZPO) applies, e.g. in this case that the reason for the late submission is not negligence in the 1st instance.

In the case at issue, the plaintiff had argued that he came across the document D7 only in the course of a supplementary search carried out when preparing the grounds of appeal. The BGH did not consider this sufficient and established that the party filing the new document in the appeal instance has to establish why the document could not be found using suitably chosen search profile in the search carried out in the course of preparing the nullity action in the first instance (headnote I).

The practical implication is that the plaintiff in the nullity suit should keep records of his search queries (IPC classes and catchwords) in order to eventually establish why the late-filed document could not be found earlier.

Semi-Nullification – BGH Polymerzusammensetzung

The BGH had to decide in a nullity appeal matter for a patent, the main claim of which was directed to a polymer composition. One ingredient of the composition was selected from a group comprising three different substances, which shall be named A, B, and C herein for the sake of simplicity.

The plaintiff had filed the nullity action requesting the nullification of claim 1 and other claims, insofar as the claims relate to or refer to compositions containing substance A.

The Bundespatentgericht had followed the usual practice and declared claim 1 invalid in its entirety, though only one of the three alternatives was attacked. Hitherto, a partial nullification of a claim was declared only if the patentee had filed a corresponding request, which was not the case here.

The BGH found that this does not comply with the disposition principle (non ultra petita) and that the Bundespatentgericht should have nullified only the part which was attacked, although the patentee did not submit a corresponding request with amended claims.

It will be interesting to see whether this decision will have consequences for cases where multiple alternatives in a claim are attacked and only one of them turns out to be invalid and for the cost distribution.

Please click here for the full text decision (in German).

Equality of Arms

In the case 4 Ni 43/10 (EP) "Bearbeitungsmaschine", the fourth senate of the Bundespatentgericht has rejected a new document as being late filed by applying the new rules for the German nullity procedure briefly discussed here.

While this alone may be already considered interesting for poeple used to the traditionally generous attitude of the Bundespatentgericht with regard to late filing, the even more intersting part of the decision is the senate's argument why the excuse presented by the plaintiff was not sufficient.

Our caselaw on novelty and inventiveness is based on the hypothesis that the person skilled in the art is aware of or is at least able to easily find every piece of prior art in his technical field. Some of us may have had doubts whether this assumption reflects the actual knowledge of a real-life engineer but a defence based on the argument that the inventor was unfortunately not aware of the most relevant piece of prior art is clearly doomed to failure in most jurisdictions.

In the case at issue, the plaitiff had argued that the document submitted lately was found only by chance and only very late despite of having taken all due care. The Bundespatentgericht rejected this excuse by referring to the principle of equality of arms ("Waffengleichheit"). It would be unfair to support an attack on the above hypothesis that the skilled person would have found the document easily while at the same time using problems to find the document to support the plaintiff's case.

The full text decision can be found here and the headnote here.

Cough and Stuffy Nose in Karlsruhe

Traditional analysis tools - not fancy enough for patent folks?

Given that November in Karlsruhe is very much alike November in the rest of Europe, our readers might find it not very surprising that the Xth senate of the BGH was very much interested in cough syrup the last days.

Cough syrup smells like eucalyptus and citrus fruits ever since this blogger can remember. It is therefore more surprising by far that the EPO has granted a patent in 2004 with a claim 1 reading: “A pharmaceutical composition for administration in the form of hard or soft gelatine capsule comprising eucalyptus oil and orange oil.”

Gelomyrtol, a product that smells like eucalyptus and orange oil, was available in the form of capsules long before the filing date of the application. Was its composition available to the public?

Well, a simple-minded ordinary man would say if it smells like eucalyptus and orange oil then it contains eucalyptus oil and orange oil. What else?

The official pharmaceutical description (“Rote Liste”) mentions that Gelomyrtol is a plant extract containing inter alia substances called d-Limonen (which makes up 90% of orange oil), a-Pinen and 1,8-Cineol (the main ingredients of eucalyptus oil).

In the nullity proceedings, the patentee argued that despite of the suspicious scent and the revealing chemically pure ingredients, the mix of essential oils could have been synthesized otherwise than by mixing eucalyptus oil and orange oil such that the composition was not directly and unambiguously derivable for the skilled person (in particular by a skilled person with a stuffy nose, I would like to add).

The senate did not follow this argument – but did not rely on their noses either. Actually the judges did not even mention the fragrance but found that the indications in the pharmaceutical description were sufficient for the skilled person to establish a manageable number of hypotheses on the potential composition, one of which could then be confirmed with the available analysis tools. These tools, again, did not include the nose but rather gas chromatography and mass spectroscopy.

The full decision (XZR 120/11 of October 23, 2012 “Gelomyrtol”) in German language can be accessed here.

New Matter in 2nd Instance Nullity Proceedings - BGH "Fahrzeugwechselstromgenerator"

In an attempt to modernize the nullity procedure at the Bundespatentgericht, the German Patent Act has been reformed with effect as of October 2009. New features include the issuance of a preliminary opinion of the Bundespatentgericht (§ 81(1) PatG) identifying the points considered by the senate to be of particular relevance for the trial as well as improved possibilities of the BGH acting as the 2^nd instance to reject new matter as late-filed (§ 117 PatG).

The decision “Fahrzeugwechselstromgenerator” (decicion of August 28, 2012, X ZR 99/11) was, according to this blogger’s knowledge, the first one to interpret these new rules.

In the case at issue, a supplementary expert opinion was submitted in the 2^nd instance. The supplementary expert opinion sought to clarify and concretize issues addressed in an earlier expert opinion of the same (privately appointed) expert submitted in the 1^st instance at the Bundespatentgericht. The BGH found that clarifications, explanations and concretizations of matter discussed in the 1^st instance are not considered as new matter.

Further, the plaintiff had brought forward a new novelty/inventiveness attack which was, however, based on documents which had already been in the 1^st instance procedure. The arguments were considered new matter.

According to the now applicable German Code of Civil Procedure (ZPO), new matter may be admitted in the 2^nd instance inter alia if the failure to bring the matter forward in the 1^st instance is not the result of a negligence of the submitting party.

In the case at issue, the Bundespatentgericht had expressed its preliminary opinion that the main attack against the validity brought forward in the 1^st instance was convincing and finally decided to basically follow the plaintiff’s request. The BGH found that, given that the main attack was successful in the 1^st instance, there had been no requirement for the plaintiff to submit auxiliary lines of argument. As a consequence, the failure to submit the new arguments in the 1^st instance was not negligent and the new matter was allowable.

The BGH and the Bundespatentgericht clearly want to avoid excessively voluminous files resulting from parties submitting each and every possible argument even on the most remote aspects of the case. However, the allowability of the new argument could have been more problematic if e.g. the senate of the Bundespatengericht had changed its mind during the oral proceedings.

The lesson to learn is that a party might keep some trump cards up the sleeve when it is on the winning road. It is, however, better to play out everything you have if the preliminary opinion of the Bundespatentgericht is not favorable four your party at the latest.