Law applied:
Code of Civil Procedure (ZPO) § 138 para. 4
German Patent Law (PatG) § 14
Summary:
ZPO § 138 para. 4
In patent infringement litigation, the party against whom a claim is asserted may generally be required to respond specifically to the opponent's submissions on the technical features of the embodiments under attack.
PatG § 14
1. The question of whether and to what extent rights from a patent are exhausted by the marketing of products is to be assessed according to the law of the country of protection (supplement to BGH, judgment of February 22, 2022 - X ZR 103/19, GRUR 2022, 1209 para. 42 - Bakterienkultivierung).
2. A ‘covenant not to sue’ generally results in the exhaustion of rights with respect to products placed on the market on that basis.
3. For the question of whether a ‘covenant to be sued last’ leads to exhaustion, it is of particular importance whether the contracting party, in the course of events normally to be expected, must fear being held liable by the patent proprietor for infringement of the patent.
4. Consent to the marketing of a product may be deemed to be consent to the marketing of a major device equipped with it if that is the only commercially reasonable use.
5. Consent to the marketing of a product may lead to exhaustion of rights with respect to a larger device equipped with it if all the properties and functions defined in the patent are realized by the product covered by the consent and the other components of the larger device are of no significance in this respect.
BGH, Judgment of January 24, 2023 - X ZR 123/20 -
Download Judgment (machine translation)
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