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Elimination of the infringing circumstance by modification (Karlsruhe Court of Appeal (OLG))

Karlsruhe Court of Appeal (OLG), Judgment of November 22, 2023 – 6 U 140/21

Decision Keyword:

Pressure wave treatment

Law applied:

EPC Art. 64 (1), (3)

German Patent Act (PatG) Section 9 Sentence 2 No. 1, section 10 (1), section 140a (1), (3), (4)

Summary: (Machine Translation)

  1. The complete physical destruction of a directly infringing product cannot be demanded if it is disproportionate. This comes into consideration in particular if the patent-infringing condition can be eliminated in another way, e.g. by a modification.
  2. As part of the required overall balancing of interests, not only the interests of the infringer, but also the interests of the (different) owner as well as general prevention and the sanction intended by the destruction must be taken into account. Weighing up all the circumstances, ordering destruction by means of destruction may be disproportionate due to the patent-free solution that can easily be implemented by means of a software update on the one hand and the considerable value of the attacked overall device on the other, given average culpability and sufficient general prevention and sanction.
  3. The fact that the infringer is permitted to modify (here software update) the infringing objects into a patent-free design instead of destroying them in the sense of destruction does not mean that the same restriction would generally be justified and must be applied in the case of a recall pursuant to Section 140a (3) PatG (German Patent Act). Rather, even if a change to a part of the overall device already irreversibly results from the patent infringement, the claim may nevertheless exist without restriction if its patent-compliant design was the reason for the sale of the object and the infringer would then retain the customer base, which it owes largely to the patent infringement, by supplying the alternative technology.
  4. The order for destruction by way of "conversion" can be made by handing the property over to the bailiff and carrying out the act with the bailiff and under his/her supervision.

Karlsruhe Court of Appeal (OLG), Judgment of November 22, 2023 – 6 U 140/21 –

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