General IP Topics

Steroidbeladene Körner (steriod loaded granules) – BGH 2011 Mitt 100
The verdict deals with damages claims founded on the execution of a first instance verdict which is subsequently overruled. If the patent owner poses a security after the release of a favourable first instance verdict for the purpose of the execution of this verdict, he is generally liable for damages caused by this execution. This can be avoided only if and insofar as the patent owner clearly undertakes not to deduce any rights from the verdict against the debtor.

Hubkippvorrichtung (Stroke-Tilt Lifter) – Düsseldorf OLG 2006 Mitt 129 = 5 InstGE 251
In this decision, the Düsseldorf Regional Appeal Court emphasizes the importance of the causal relationship between the infringement action and the infringer’s profit. It is necessary, in each individual case, to establish the proportion of the infringer’s profit that can actually be attributed to the infringement of the intellectual property right. While the Düsseldorf Regional Appeal Court has held that the Supreme Court’s decision on overheads (see below) also applies in principle to patent law, in practice this judgment means that the consequences of the Supreme Court’s ruling are moderated, so that excessive damages are not awarded.

Abstreiferleiste (cleaning strip) – BGH 2003 IIC 818
To begin with, the Federal Supreme Court confirms the rule that a res judicata effect not only applies to the contractual basis of a claim, which was actually introduced into legal proceeding (here: invalid know-how contract), but also expands to a competing claim basis such as, e.g., unjustified enrichment. However, the court allows for an exception if it is unambiguously clear that the verdict shall not contain a decision on the competing claim basis.

Gemeinkostenanteil (Share of Overheads) – BGH 2001 GRUR 329 = 2002 IIC 900
Germany‘s Federal Supreme Court relinquishes its previous case law regarding the calculation of damages on the basis of an infringer‘s profits. By adding in overheads, infringers were frequently able to show a loss on infringing sales. Now overheads can be deducted only in exceptional cases. This greatly increases an infringer‘s risk of being found liable for damages.

Druckbalken (Pressure Beam) – BGH 1985 GRUR 512 = 1987 IIC 108
Germany‘s Federal Supreme Court grants the holder of an intellectual property right an opportunity to demand from an alleged infringer an inspection of the alleged object of infringement under Section 809 of the German Civil Code. With its ​“Faxkarte” (“Fax Card”) decision in the year 2002 (2003 IIC 331), the Federal Supreme Court further clarified the rulings on this subject by loosening the strict requirements that had been in effect until then.