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Consideration of new embodiments in the appeal proceedings (Düsseldorf Court of Appeal (OLG))

Düsseldorf Court of Appeal (OLG), Judgment of November 23, 2023 – 2 U 36/17

Decision Keyword:

Composition based on zirconium oxide and cerium oxide

Law applied:

EPC Art. 64 (1), (3))

German Patent Act (PatG) Sections 139 (2), 140a (3), 140b

German Code of Civil Procedure (ZPO) Sections 138 (4), 142, 421, 422

Summary: (Machine Translation)

  1. The subject matter of the proceedings at first instance is decisive for the assessment of core identity, which is why all those new embodiments that are identified as patent infringements on the basis of the decision considerations of the lower instance must also be dealt with in the appeal proceedings. A limitation of the patent claim made after the first instance judgement in the nullity proceedings must be disregarded when determining the subject matter of the dispute (of the first instance).
  2. When interpreting a patent claim, the basic question to be asked is how the average person skilled in the art understood the terms contained in the patent claim on the filing date or (if seniority is claimed) the priority date of the patent in suit. A change occurring over time, for example due to the discovery of better analytical methods, must not lead to either a restriction or an extension of the scope of protection, as a scope of protection that changes over time would not be compatible with the requirement of legal certainty. If the interpretation of a term mentioned in the patent claim or the value of a quantity mentioned in the patent claim depends on the method of measurement, the principle of legal certainty accordingly requires that the term or the value be defined in such a way as was possible for the person skilled in the art on the basis of his knowledge on the date of filing or priority with the methods of measurement available at that time.
  3. Section 142 Code of Civil Procedure (ZPO) does not release the party referring to a document from its burden of presentation and substantiation. Accordingly, the court may not order the submission of documents merely for the purpose of obtaining information, but only if the party has made a conclusive, fact-based submission.

Düsseldorf Court of Appeal, Judgment of November 23, 2023 – 2 U 36/17 –

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