Empirical Data on Patent Litigation in Europe and China; ACTA & TPPA; New Book on Patent Misuse

1.  I thought that readers might be interested in a couple of new papers that take an empirical look at patent litigation in Europe.  While this may not seem directly related to the topic of patent remedies, these papers do include some discussion of remedies and enforcement.  

The first is Katrin Cremers, Max Ernicke, Fabian Gaessler, Dietmar Harhoff, Christian Helmers, Luke McDonagh, Paula Schliessler, and Nicolas van Zeebroeck, Patent Litigation in Europe, available here.  Here is the abstract:

We compare patent litigation cases across four European jurisdictions – Germany, France, the Netherlands, and the UK – covering cases filed during the period 2000-2008. For our analysis, we assemble a new dataset that contains detailed information at the case, litigant, and patent level for patent cases filed at the major courts in the four jurisdictions. We find substantial differences across jurisdictions in terms of case loads. Courts in Germany hear by far the largest number of cases in absolute terms, but also when taking country size into account. We also find important between-country differences in terms of outcomes, the share of cases that is appealed, as well as the characteristics of litigants and litigated patents. A considerable number of patents are litigated in multiple jurisdictions, but the majority of patents are subject to litigation only in one of the four jurisdictions. 

The other is Christian Helmers, Luke McDonagh, and Brian Love, Is There a Patent Troll Problem in the UK?, available here.  Here is the abstract:

This paper reports the findings of an empirical study of patent suits involving non-practicing entities (NPEs) in the U.K. between 2000 and 2010. Overall, we find that NPEs are responsible for 11% of all patent suits filed in the U.K. during this period. Though this is a small percentage by U.S. standards, our study suggests that patent trolling might not be as uniquely American as conventional wisdom suggests. We also find little support for many common explanations for Europe’s relative scarcity of NPE activity. For example, we find that NPEs litigating in the U.K. overwhelmingly assert high-tech patents – even more so, in fact, than their U.S. counterparts – despite higher barriers to software patentability in Europe. Our study does, however, tend to support fee-shifting as a key reason for the U.K.’s immunity to NPEs. We see evidence that the U.K.’s loser-pays legal regime deters NPEs from filing suit, while at the same time encouraging accused infringers to defend claims filed against them. U.K. NPE suits are initiated by potential infringers more often than by NPEs; rarely end in settlement; very rarely end in victory for NPEs; and, thus, result in an attorney’s fee award to the potential infringer more often than a damages award or settlement payment to the patentee. Together, these findings tend to support patent reform bills pending in the U.S. that would implement a fee-shifting regime for patent suits, and may also serve to quell concerns that Europe’s forthcoming Unified Patent Court will draw NPEs to Europe.

Two other related papers by a subset of the same authors are Christian Helmers & Luke McDonagh, Patent Litigation in the UK;  An Empirical Survey 2000-2008, J. Intell. Prop. L. & Prac.(2013) 8(11):  846-61, and Christian Helmers & Luke McDonagh, Trolls at the High Court?, available here.  Yet another paper on a related topic is Stefania Fusco's Markets and Patent Enforcement:  A Comparative Investigation of Non-Practicing Entities in the US and Europe, available here.

2. Also interesting is Kimberlee Weaterall's recently posted paper Ignoring the Science:  What We Know About Patents Suggests Dire Consequences from ACTA and the TPPA, available here.  The abstract reads:

This forthcoming chapter looks at what research into the operation of the IP system, and particularly IP enforcement, tells us about the issues facing research-based firms, focusing on the ‘science’ side of IP, particularly patents, and using research, and information about domestic developments, to critique the approach taken in the most recent IP negotiations to affect the Asia-Pacific Region – namely, the Anti-Counterfeiting Trade Agreement (ACTA), concluded in late 2010, and the Trans-Pacific Partnership Agreement (TPPA), which at the time of writing is under negotiation. While much of the literature on patents in ACTA and the TPPA has focused on the (very important) impact on access to medicines, this chapter is concerned with the likely impact on the patent system more generally. We have grown used to hearing that the latest efforts at international IP standard-setting, the ACTA and proposals for IP in the TPPA, will have a deleterious impact on digital copyright law and on access to essential medicines. We have heard much less about the potential impact on the patent system as a whole – a much less sexy topic, no doubt, but in the long term, equally important. The patent research explored in this article suggests that both ACTA and the US’ TPPA proposal are not likely to be helpful in addressing the most pressing issues in patent law today; they risk being positively counterproductive, and exporting to the world the US’ own ‘patent crisis.’ The thought of a flood of low quality patents issuing from patent offices throughout the Asia-Pacific, should give everyone – including the negotiators of these and future agreements – serious pause.

Professor Weatherall has this to say in particular with regard to remedies:

A second issue is that ACTA-style detailed enforcement provisions uncritically adopt US or EU domestic arrangements. This could have some unintended side effects. One, as I have noted elsewhere, is the foreseeable impact of empowering officials (for example customs officers) with significant powers of seizure, determination of infringement and destruction of imported goods in countries still battling significant levels of official corruption. Secondly and more subtly, ACTA (and equivalent text in the US TPPA proposal) embodies an ‘all services platinum standard’ model of courtroom enforcement proceedings, where IP owners can seek preliminary measures (such as injunctions and measures to preserve evidence such as Anton Piller orders); obtain information from an alleged infringer regarding the channels of distribution of the alleged infringing goods, and a full suite of remedies including injunctions (including against third parties), damages, accounts of profits, costs orders, and orders for the destruction of goods and implements. Such a ‘full service’ standard is expensive and may not be appropriate for all IP cases or all jurisdictions. More importantly, it could have the side effect of forestalling countries’ attempts to address the cost barrier, for example by experimenting with low cost alternatives for small claims (including low cost administrative alternatives).

She also notes that "allow for treble damages for infringement giving patent holders a further threat to convince challenges to settle (Article 12.4)," though so far the U.S. appears to be standing alone with regard to this proposal.

3.  For empirical data on patent infringement cases and administrative enforcement in China, Mark Cohen’s China IPR Blog is an excellent source.  You can download the Supreme People’s Court White Paper on Intellectual Property Protection in Chinese Courts 2012 from this April 2013 post, here.  More recently, Mr. Cohen has blogged on the number of administrative enforcement actions in China this year, here.  

4.  This also isn't exactly a remedies issue, but it's related.  My friend Professor Daryl Lim just sent me a copy of his new book, Patent Misuse and Antitrust Law:  Empirical, Doctrinal and Policy Perspectives (Edward Elgar 2013).  This is, I think, the first book-length treatment of a difficult topic and is a most welcome addition to the literature.

More on the Innovation Act's provisions on attorneys' fees; upcoming roundtable on U.S. Supreme Court cases on attorneys' fees

1.  The Innovation Act was approved by the U.S. House of Representatives last week, as I reported here.  It may or may not be enacted into law.  Among the most important provisions of the bill are the provisions on attorneys' fees (section 3(b)).  To better understand them also requires some understanding of section 3(c) on joinder of interested parties.  I quote both sections below, in their entirety:

(b) FEES AND OTHER EXPENSES.—

(1) AMENDMENT.—Section 285 of title 35, United States Code, is amended to read as follows:

"§ 285. Fees and other expenses

(a) AWARD.—The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust. 

(b) CERTIFICATION AND RECOVERY.—Upon motion of any party to the action, the court shall require another party to the action to certify whether or not the other party will be able to pay an award of fees and other expenses if such an award is made under subsection (a). If a nonprevailing party is unable to pay an award that is made against it under subsection (a), the court may make a party that has been joined under section 299(d) with respect to such party liable for the unsatisfied portion of the award.

(c) COVENANT NOT TO SUE.—A party to a civil action that asserts a claim for relief arising under any Act of Congress relating to patents against another party, and that subsequently unilaterally extends to such other party a covenant not to sue for infringement with respect to the patent or patents at issue, shall be deemed to be a nonprevailing party (and the other party the prevailing party) for purposes of this section, unless the party asserting such claim would have been entitled, at the time that such covenant was extended, to voluntarily dismiss the action or claim without a court order under Rule 41 of the Federal Rules of Civil Procedure."

(2) CONFORMING AMENDMENT AND AMENDMENT.—

(A) CONFORMING AMENDMENT.—The item relating to section 285 of the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows:

‘‘285. Fees and other expenses.’’.

(B) AMENDMENT.—Section 273 of title 35, United States Code, is amended by striking subsections (f) and (g).

(3) EFFECTIVE DATE.—The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after the first day of the 6-month period ending on that effective date.

 (c) JOINDER OF INTERESTED PARTIES.—Section 299 of title 35, United States Code, is amended by adding at the end the following new subsection: 

'‘(d) JOINDER OF INTERESTED PARTIES.—

(1) JOINDER.—In a civil action arising under any Act of Congress relating to patents in which fees and other expenses have been awarded under section 285 to a prevailing party defending against an allegation of infringement of a patent claim, and in which the nonprevailing party alleging infringement is unable to pay the award of fees and other expenses, the court shall grant a motion by the prevailing party to join an interested party if such prevailing party shows that the nonprevailing party has no substantial interest in the subject matter at issue other than asserting such patent claim in litigation.

(2) LIMITATION ON JOINDER.—

(A) DISCRETIONARY DENIAL OF MOTION.—The court may deny a motion to join an interested party under paragraph (1) if—(i) the interested party is not subject to service of process; or (ii) joinder under paragraph (1) would deprive the court of subject matter jurisdiction or make venue improper.

(B) REQUIRED DENIAL OF MOTION.—The court shall deny a motion to join an interested party under paragraph (1) if—(i) the interested party did not timely receive the notice required by paragraph (3); or (ii) within 30 days after receiving the notice required by paragraph (3), the interested party renounces, in writing and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue.

(3) NOTICE REQUIREMENT.—An interested party may not be joined under paragraph (1) unless it has been provided actual notice, within 30 days after the date on which it has been identified in the initial disclosure provided under section 290(b), that it has been so identified and that such party may therefore be an interested party subject to joinder under this subsection. Such notice shall be provided by the party who subsequently moves to join the interested party under paragraph (1), and shall include language that—(A) identifies the action, the parties thereto, the patent or patents at issue, and the pleading or other paper that identified the party under section 290(b); and (B) informs the party that it may be joined in the action and made subject to paying an award of fees and other expenses under section 285(b) if—(i) fees and other expenses are awarded in the action against the party alleging infringement of the patent or patents at issue under section 285(a); (ii) the party alleging infringement is unable to pay the award of fees and other expenses; (iii) the party receiving notice under this paragraph is determined by the court to be an interested party; and (iv) the party receiving notice under this paragraph has not, within 30 days after receiving such notice, renounced in writing, and with notice to the court and the parties to the action, any ownership, right, or direct financial interest (as described in paragraph (4)) that the interested party has in the patent or patents at issue.

(4) INTERESTED PARTY DEFINED.—In this subsection, the term ‘interested party’ means a person, other than the party alleging infringement, that—(A) is an assignee of the patent or patents at issue; (B) has a right, including a contingent right, to enforce or sublicense the patent or patents at issue; or (C) has a direct financial interest in the patent or patents at issue, including the right to any part of an award of damages or any part of licensing revenue, except that a person with a direct financial interest does not include—(i) an attorney or law firm providing legal representation in the civil action described in paragraph (1) if the sole basis for the financial interest of the attorney or law firm in the patent or patents at issue arises from the attorney or law firm’s receipt of compensation reasonably related to the provision of the legal representation; or (ii) a person whose sole financial interest in the patent or patents at issue is ownership of an equity interest in the party alleging infringement, unless such person also has the right or ability to influence, direct, or control the civil action.’’

I believe the basic idea behind the provision on "interested parties" is to enable recovery of fees under some circumstances from someone who has an interest in a shell company patent assertion entity.  (See the bill's section 4 on transparency of ownership as well.)  A discussion on an IP law professors' listerv yesterday, however, prompts the following hypothetical.  Suppose that Inventor A assigns her rights to her Employer, B (a commonplace situation).  The assignee B at some point thereafter assigns the patent to patent assertion entity C.  C sues D.  If C loses but can't pay D's attorneys' fees, can D recover from B (assuming all the procedural hoops specified above have been satisfied)?  B, after all, was the original "assignee" of the patent and therefore under a literal interpretation of section 3(c) above is an "interested party."  But that really doesn't make sense if B has made a complete assignment of the patent to C, which is where the provision allowing B to renounce any interest in the patent could come into play.  (Or perhaps a court could just interpret the language to refer only to someone who is a current assignee, not a former assignee who has since assigned its interest to another assignee.)  But if B has merely licensed the patent to C or made something short of a full assignment, it looks like B could still qualify as an interested party (unless it renounces whatever interest it retained, I guess).  Perhaps one could say that as a licensor B has an obligation to supervise C's decision to litigate.  Of course, if C is a nonexclusive licensee, it can't sue anyway; if C is an exclusive licensee, B should be joined anyway.  See Roger D. Blair & Thomas F. Cotter, The Elusive Logic of Standing Doctrine in Intellectual Property Law, 74 Tulane Law Review 1323 (2000).

2.  On Tuesday, December 10, Erin Dungan and I will be leading an ABA Roundtable discussion on the pending U.S. Supreme Court cases on attorneys' fees in patent litigation.  The event will be held from noon to 1 p.m. at Briggs & Morgan, 2200 IDS Center, 80 South Eighth Street, Minneapolis, MN  55402.  For the discussion paper, see here.  For my previous blog post on these two cases, see here.

Friday miscellany: Sidak on the meaning of FRAND; Astrazeneca and Stryker damages awards

1.  J. Gregory Sidak has published an article titled The Meaning of FRAND, Part I:  Royalties, in 9(4) Journal of Competition Law & Economics 931-1055 (2013), available here.  Here's the abstract:

What does it mean for a patent holder to commit to a standard-setting organization (SSO) to license its standard-essential patents (SEPs) on fair, reasonable, and nondiscriminatory (FRAND) terms? When is a royalty FRAND? Drawing from both legal theory and economic theory, I propose an interpretation of FRAND that distinguishes and reconciles the conflicting definitions of FRAND and provides courts a practical approach to identifying FRAND royalties. A proper understanding of a FRAND royalty requires recognizing the combinatorial value of standard-essential patents. That recognition reveals the fallacy in attempting to apply the “ex ante incremental value” rule to the determination of a FRAND royalty. FRAND royalties divide the aggregate royalties generated by the standard among the holders of patents essential to the standard. Such a division should maximize the surplus resulting from the standard's creation. It must also satisfy an individual-rationality constraint for the patent holder and the licensee, thereby encouraging continued participation in the setting and implementation of open standards, as opposed to greater reliance on proprietary standards.

At some point next week, this blog will feature commentary on the paper by me and by guest-blogger Professor Norman Siebrasse of the University of New Brunswick Faculty of Law.  

2.  The U.S. District Court for the Southern District of New York on Wednesday awarded Astrazeneca $76 million damages against generic drugmaker Apotex in a pharmaceutical patent infringement case.  Here is a link to the decision, a write-up on the decision from the PatLit blog, and an article from Reuters.  Professor Siebrasse and I probably will both be blogging on this matter as well in the near future; there's an interesting question regarding the meaning of non-infringing alternatives, among other things.

3.  Another very big U.S. damages award ($70 million in lost profits, which the judge trebled, plus attorneys' fees) that just came to my attention was Stryker Corp. Inc. v. Zimmer Inc., No. 1:10-CV-1223, 2013 WL 6231533 (W.D. Mich. Aug. 7, 2013).  Looks like it just recently became available on Westlaw.  Here is a link to a Reuters article about it, and another to a Law360 article.  I'll probably be blogging on this one too after I've had some time to read and digest it.

4.  The blog turns seven months old today.  So far we've had over 20,000 page views.  Thank you readers!

U.S. House of Representatives Approves Innovation Act; Would Make Awards of Attorneys' Fees More Common

At 1:13 p.m. Eastern time, the U.S. House of Representatives approved Congressman Goodlatte's Innovation Act, which is intended to rein in patent trolls.  I've previously blogged on the bill, here.  The text of the bill as reported out of committee is here.  It was approved subject to two amendments that were made during the course of the vote.  These were:

An amendment, offered by Mr. Goodlatte, numbered 1 printed in Part A of House Report 113-283 to makes a few technical and clarifying changes. Specifically, under Section 3(d), it clarifies that the exception in paragraph one applies to biosimilars, it also adds an exception for actions seeking relief based on competitive harm, and ensures that the provision is not subject to reverse gamesmanship. Under Section 6(d) it makes clarifying changes that ensure that foreign courts cannot terminate licenses to US IP. Extends time required by the agencies to complete the various studies and reports required in the bill.  

and 

An amendment, offered by Mr. Rohrabacher, numbered 7 printed in Part A of House Report 113-283 to strike 9(a) from the bill and reorder the remaining subsections of Section 9.

The vote on the bill as amended was 325-91.

Some changes from the version of the bill introduced in October and the version that was reported out of committee and approved by the House are in the section on attorneys' fee awards (section 3(b)(1), which if enacted into law will amend section 285 of the Patent Act).  Most importantly, in the version introduced in October, the relevant language read:

AWARD.—The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position of the nonprevailing party or parties was substantially justified or that special circumstances make an  award unjust. 

The language now reads:

AWARD.—The court shall award, to a prevailing party, reasonable fees and other expenses incurred by that party in connection with a civil action in which any party asserts a claim for relief arising under any Act of Congress relating to patents, unless the court finds that the position and conduct of the nonprevailing party or parties were reasonably justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust.

I'm not sure what the difference is between "substantially justified" and "reasonably justified," but if the bill eventually becomes law I guess we'll find out what the latter term means.  Off the top of my head, I would expect that in the typical case the nonprevailing party's position and conduct would be "reasonably justified," so that fee awards will remain the exception, not the rule.  They just won't be as rare as they are at present.  (I therefore disagree with the usually insightful Tony Dutra at BNA's Patent, Trademark and Copyright Journal when he write that this section "would create a 'loser pays' scheme in most cases . . . ."  I suppose you could say it would create a presumption that the loser pays, but I suspect that in the typical case the presumption will not be too difficult to overcome.  But maybe I'll be proven wrong.)

For readers who aren't familiar with the U.S. constitutional system, passage by the House doesn't mean the bill has been enacted into law.  A vote on companion legislation in the Senate has not taken place, and any bill that eventually is jointly approved by both the House and the Senate would still have to be signed by the president to become law (though that seems likely). 

Correction.  As Mr. Dutra notes in his report, there were two other amendments which passed on voice vote.  These were (and as above, I'm quoting from the Office of the Clerk of the U.S. House of Representatives House Floor Activites for December 5, 2013):

An amendment, offered by Mr. Polis, numbered 3 printed in Part A of House Report 113-283 to require claimants to provide additional disclosure information in any pre-suit notification to establish a willful infringement claim.

and 

An amendment, offered by Ms. Jackson Lee, numbered 6 printed in Part A of House Report 113-283 to require the Director to conduct a study regarding the economic impact of the changes in current law resulting from Sections 3, 4, and 5 of the bill on the ability of individuals and small businesses owned by women, veterans, and minorities to assert, secure, and vindicate their constitutionally guaranteed exclusive right to their inventions and discoveries.

Declaratory Judgment of Damages Liability for Indirect Patent Infringement in Germany: The Fräsverfahren Judgment

On May 7, 2013, the German Federal Supreme Court (BGH) handed down its judgment in Case No. X ZR 69/11 (Fräsverfahren), on appeal from the Munich Oberlandesgericht.  The case is reported in GRUR 7/2013, pp. 713-17, under the title "Hinreichende Wahrscheinlichtkeit des Schadenseintritts bei mittelbarer Patentverletzung" (Adequate Probability of Damages by Indirect Infringement).  The decision can also be accessed from the BGH's website, here, and in an English-language translation found in 44 IIC 837-843 (2013) (or so I understand; I haven't received my copy of the November issue yet).  In addition, Professor Siebrasse has alerted me to a recent English-language article on the decision by Nadine Heiartz and Diana Fichtner of Bardele Pagenberg, available here; and here's another short write-up from the Grünecker firm. 

The following points of substantive law are helpful in understanding the decision.  First, as reflected in this case (and contrary to the general rule in the U.S.) is that someone can be liable for indirect infringement even if there is no evidence that anyone directly infringed.  Specifically, section 10 of the German Patent Act (English translation available on WIPO's website) states:

(1) A patent shall have the further effect that any third party not having the consent of the patentee shall be prohibited from offering or supplying within the territory to which this Act applies to any other persons, other than such persons authorized to use the patented invention, means relating to an essential element of said invention for use of the invention within the territory to which this Act applies, if said third party knows or it is obvious from the circumstances that such means are suitable and intended for use of the invention.
(2) Subsection (1) shall not apply when the means are products generally available in commerce, except if said third party intentionally induces the person supplied to commit acts prohibited by the second sentence of Section 9.
(3) Persons performing the acts referred to in Section 11, nos. 1 to 3, shall not be considered within the terms of subsection (1) as persons entitled to use the invention.

For more on contributory patent infringement under German law, see Thomas Kühnen, Patent Litigation Proceedings in Germany paras. 228 et seq. (6th ed., Frank Peterreins tr. 2013). 

Second, the reason the plaintiff is asking for a declaratory judgment of damages liability is that this is one way for the plaintiff to proceed to the next step of obtaining discovery and proving up those damages.  For an overview of the procedural issues involved, see Kühnen, supra, paras. 1048-49.  

Third, if the plaintiff succeeds in obtaining the declaratory judgment, the final set of issues would involve quantifying those damages.  Generally, the patentee is entitled to recover the damages caused by the customer for which the contributory infringer is responsible.  See Kuhnen, supra, para. 1028. 

Returning to the Fräsverfahren case, the defendant made and sold software which, the court concluded,  was suitable and intended for use in the practice of the plaintiff's patented milling process.  The plaintiff sued the defendant for indirect infringement and prevailed on liability.  On the declaratory judgment issue, the BGH held that the plaintiff didn't have to prove that the defendant had delivered infringing merchandise to customers, in order to obtain the declaratory judgment of damages liability.  It sufficed that the software had been offered for sale; the judgment of contributory infringement by itself created an adequate probability of direct infringement, for which a declaratory judgment of damages liability could arise.  The key language can be found in paragraphs 21-23 of the BGH's judgment:

Ein auf Feststellung der Schadensersatzpflicht gerichteter Klageantrag ist, sofern eine Schutzrechtsverletzung vorliegt, schon dann begründet, wenn eine gewisse Wahrscheinlichkeit für den Eintritt eines Schadens besteht. Diese braucht nicht hoch zu sein. Ob und was für ein Schaden entstanden ist, bedarf keiner Klärung, wenn nach der Erfahrung des täglichen Lebens der Eintritt eines Schadens mit einiger Sicherheit zu erwarten ist. Hierfür genügt es in der Regel, wenn zumindest eine rechtswidrig und schuldhaft begangene Verletzungshandlung vorliegt (BGH, Urteil vom 20. Mai 2008 - X ZR 180/05, BGHZ 176, 311 = GRUR 2008, 896 Rn. 26 mwN - Tintenpatrone I).

Als Verletzungshandlung in diesem Sinn reicht entgegen der Auffassung des Berufungsgerichts eine mittelbare Patentverletzung im Sinne von § 10 PatG grundsätzlich aus. Zwar ist im Falle einer mittelbaren Patentverletzung nur derjenige Schaden zu ersetzen, der durch die unmittelbare Patentverletzung der Abnehmer des Mittels entsteht (BGH, Urteil vom 7. Juni 2005 - X ZR 247/02, GRUR 2005, 848, 854 - Antriebsscheibenaufzug). Hieraus ist aber, wie der Senat klargestellt hat, nicht zu folgern, dass die hinreichende Wahrscheinlich-keit eines Schadenseintritts nur dann zu bejahen ist, wenn mindestens eine unmittelbare Verletzungshandlung festgestellt worden ist. Grundsätzlich reicht es vielmehr aus, wenn die Voraussetzungen einer mittelbaren Patentverletzung vorliegen (BGH, Urteil vom 13. Juni 2006 - X ZR 153/03, BGHZ 168, 124 = GRUR 2006, 839 Rn. 29 - Deckenheizung).

Entgegen der Auffassung des Berufungsgerichts sind diese Grund-sätze nicht nur dann heranzuziehen, wenn eine mittelbare Patentverletzung durch Liefern von zur unmittelbaren Verletzung geeigneten und bestimmten Mitteln feststeht. Sie gelten auch dann, wenn lediglich die Verletzungsform des Anbietens festgestellt ist.

I'd translate this as follows (with the appropriate caveat that I am not a professional translator; for what is sure to be a better translation, consult the one in IIC noted above): 

An application for a declaratory judgment of damages liability is well-grounded, as long as an infringement of rights is present, if a certain probability of the occurrence of injury is also present.  But this doesn't need to be high.  Whether and to what extent this arises needs no clarification, if in the experience of daily life an injury can be expected with reasonable certainty.  In this regard, it generally suffices if at least one unlawful and culpable infringing act is present.

Contrary to the opinion of the appellate court, however, an indirect infringement in terms of section 10 of the Patent Act does not in principle suffice as an act of infringement in this sense.  To be sure, in the case of indirect infringement only the specific harm suffered is to be compensated which results from the direct infringement by the customer.  Nevertheless, this does not mean, as the Senate has made clear, that an adequate probability of injury is only to be affirmed if at least one act of direct infringement is established.  Rather, as a basic principle it suffices, if the conditions for indirect infringement are present.

Contrary to the opinion of the appellate court, these fundamental principles are to be applied not only when it is established that an indirect infringement has occurred by the delivery of means that are suitable and intended for direct infringement.  They also apply when merely the infringing content of the offer is established.