Düsseldorf, March 20, 2023 – In its “Electromigration” ruling handed down on January 10, 2023 (X ZR 6/21), the Federal Court of Justice (Bundesgerichtshof – BGH) addressed the question of obvious prior use in connection with reverse engineering. Among other things, the case concerned a semiconductor chip installed in a smartphone, the obvious prior use of which the judges confirmed. The European patent in question (EP 3 036 768) was declared partially invalid with effect for the Federal Republic of Germany.
In its judgement, the Federal Court of Justice upheld the decision of the Federal Patent Court (Bundespatentgericht) (case no: 2 Ni 21/20 (EP)), stating that the “not too remote possibility” of knowledge (see Federal Court of Justice – “Stiletto heel” ruling of November 25, 1965, IA ZR 117/64), which is a requirement for obvious prior use, also exists if the relevant features of a chip can only be recognized by reverse engineering.
“Up to now, there has been comparatively little German case law on the matter of reverse engineering in relation to obvious prior use. This decision by the Federal Court of Justice is therefore particularly relevant,” says Gottfried Schüll, patent attorney and partner at Cohausz & Florack (C&F). C&F believes the ruling will be of particular interest to the mobile communications industry: “As the cost of reverse engineering in this field is often very high, the ruling brings greater clarity regarding its legal acceptance,” says Dr. Martin Rütten, patent attorney at C&F.
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