Daniel Hoppe-Jänisch recently published an article titled Die Rechtsprechung der Instanzgericthe zum Patent- und Gebrauchsmusterrecht seit dem Jahr 2013 ("The Patent and Utility Model Case Law of the Lower Courts Since 2013") in the December 2014 issue of GRUR RR. Here is the abstract (my translation from the German):
The essay follows the report appearing in the October 2013 issue of GRUR-RR. Included are selected decisions published since the middle of 2013. In contrast to the last essay, a section is also dedicated to the Arbeitnehmererfinderrecht [the law of employee-inventor rights]. The publication practice of the courts is still greatly varied, with the Düsseldorf courts still being especially active. The accumulation of decisions of Düsseldorf origin is attributable to this publication practice.
On the issue of remedies in particular, Mr. Hoppe-Jänisch discusses some cases on injunctions, including one in which he reports that the Düsseldorf district court concluded that a risk of recurring infringement is not eliminated by virtue of the fact that a defendant is no longer in possession of the challenged article and has ceased distribution, unless it is evidently incapable of making and distributing the patented article; and another in which he reports that the Hamburg district court held that the exhibition of a not yet marketable medicine did not give rise to a danger of imminent infringement (Erstbegehungsgefahr) through the introduction of an identical, marketable end product. Mr. Hoppe-Jänisch also discusses some cases on damages, including one on infringer's profits in which he reports that the Düsseldorf district court held that a court should consider whether the infringer chose a protected configuration despite the existence of technical alternatives (whereby it might be inferred that the infringer attributed significance to the invention for its sales success). On the other hand, the court suggested that a lower price for the infringing article could reduce the portion of the profits attributable to the infringement, if it cannot be established that precisely the use of the invention opened up the possibility of such a favorable price reduction. (Who has the burden of proof on this issue, I wonder?) The court also noted that the significance of the patent to the defendant's profit recedes to the extent the product also makes use of other protected rights. These other rights are to be considered, however, only if they are valid and actually being used, and the infringer bears the burden of proof on these issues. (I imagine that could turn out to be a double-edged sword for the infringer, if any such argument could be used against it in a proceeding involving one of those other protected rights!) Mr. Hoppe-Jänisch also mentions the OLG Karlsruhe's decision in Foliendruckverfahren, a case I blogged about here this past April, in which the court held (among other things) that on the facts of the case it was appropriate to use the entire value of the end product as the royalty base, and that the defendant may be liable for an additional payment where a real-world licensee would have had to pay a default payment for failing to pay its license fee on time.
Other sections of the paper discuss stays and preliminary injunctions, which I may address in a future post.