Law applied:
EPC Art. 64 para. 1, para. 3
PatG § 139 para. 1, para. 2, § 140a para. 1, para. 3, § 140b
ZPO § 96, § 138, § 286 para. 1 sentence 1
Summary:
If it is not possible to provide direct evidence of a specific feature of the device (here: adjustable attenuator), evidence can also be provided indirectly by demonstrating the corresponding function for the attacked embodiment (or that this is undisputed) and eliminating every possible alternative cause of the function as that of the use of the invention.
This requires that the plaintiff - firstly - demonstrates that only an exhaustive number of constructive possibilities are conceivable for the technical function in question and - secondly - that he excludes each of these alternative possibilities for the attacked embodiment with certainty.
If the expert was therefore unable to identify a specific design feature (e.g. an adjustable signal attenuation element required by the patent) in the accused embodiment and pointed out that the technical function in question can also be achieved in another way (e.g. by combining a constant signal attenuation element with a variable amplifier), the allegation of infringement cannot be conclusively justified by the fact that the block diagram known for the attacked embodiment does not provide any indications for such an alternative solution (constant attenuator & variable amplifier). For even if this were the case, the conclusion from the function to a certain construction is only valid if it is simultaneously claimed that there is no other alternative implementation possibility that could explain the function of the attacked embodiment instead.
Even if the defendant prevails in the legal dispute, he may be ordered to pay the costs of an objectively useless expert appraisal, which he has caused by his untruthful factual submission on the alleged features and/or functionality of the contested embodiment (Section 96 ZPO).
Düsseldorf Higher Regional Court, judgment dated August 10, 2023 - 2 U 14/19 -
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