Decision Keyword:
THERAPY OF THROMBOEMBOLIC DISORDERS WITH RIVAROXABAN
Law applied:
EPÜ Art. 64 para. 1
PatG § 139 para. 1
PatG § 9
PatG § 83
PatG § 124
Code of Civil Procedure (ZPO) § 935, § 940
IntPatÜbkG Art. II Section 6 para. 1 sentence 1 no. 2
Summary:
1. As a rule, it can be assumed that each feature of a patent claim has an independent meaning when taken on its own. However, this does not preclude the possibility that, in individual cases, interpretation of the patent claim on the basis of the description may reveal that a particular feature is already implicitly contained in another feature and that there is therefore “overdetermination.”
2. The fact that, according to the product information, the patent-protected once-daily application for a specific patient group is only to be "considered" in the contested embodiment does not preclude a meaningful adaptation. A patent-protected form of application does not have to be "prescribed" or at least "recommended" in order to be able to assume such an adaptation. Rather, it is sufficient that the prescribing physician is specifically directed to the patent-protected form of use by the product information.
3. A patent infringement with equivalent means is generally to be denied if the description discloses several possibilities for achieving a specific technical effect, but only one of these possibilities has been included in the claim (Federal Supreme Court (BGH), GRUR 2016, 921 para. 52 — Pemetrexed, inter alia with reference to Federal Supreme Court (BGH), GRUR 2011, 701 - Occlusion device). However, this only applies if the specific means, including the properties from which the (same) effects of the means according to the patent result, were disclosed directly and unambiguously in the patent specification.
4. The causality between the injunction and the disadvantages invoked by the infringer, which is required for the application of Section 139 (1) sentence 3 PatG and thus for the exclusion of the claim for injunctive relief, presupposes that these disadvantages are also covered by the protective purpose of the norm (denied in the case in dispute).
5. The objection of unlawful exercise of a right ("patent trolling") based on Section 124 PatG is not admissible in infringement proceedings as long as it can be asserted in nullity proceedings that the patent was wrongly granted. In any case, the objection that the specific examiner would not have granted the patent if certain facts had not been withheld from him is irrelevant, provided that these facts could not objectively have prevented the patent from being granted.
6. In the case of an application for a preliminary injunction for alleged patent infringement, a balancing of interests must be carried out within the scope of the reason for an injunction. In the event of an attack on the legal validity of the patent (whether successful or likely to occur in the near future), the infringement court must examine whether the (future) legal validity of the injunction patent appears to be sufficiently secure and, consequently, make a prognosis as to whether the patent is likely to prove legally valid in the validity proceedings.
7. If, taking into account the submissions of both parties, the infringement court is not convinced of the future legal validity, the remaining doubts are generally to the detriment of the claimant in the balancing of interests, unless, due to special circumstances, the creditor's interest in immediately stopping the conduct in dispute is, in exceptional cases, nevertheless to be considered greater than the defendant's interest in the undisturbed continuation of the conduct that may be objectively unlawful. In this regard, reference may be made to the case law of the Higher Regional Courts, although this is not an exhaustive list of exceptions. Rather, a comprehensive weighing of the interests of both sides based on the circumstances of the individual case is always required.
8. If the Federal Patent Court has issued a qualified indication pursuant to Section 83 (1) sentence 1 PatG that is likely to confirm the legal status, it must generally be assumed that such an indication, as a qualified statement of fact by the Federal Patent Court, which is responsible by law for reviewing the decisions of the granting authorities and which expresses itself sufficiently clearly in favor of the patent's protectability, from the perspective of the infringement court, generally leads to the conclusion that the legal status is secure to such an extent that an injunction can be issued in the event of a (committed or imminent) patent infringement. Something else applies in this case only if the reference is clearly inaccurate (i.e., readily apparent to a panel of judges without technical expertise) and it can also be assumed with certainty that the senate of the Patent Court that issued the reference will depart from this reference in the decision it is to render. The mere fact that the infringement court, after weighing the arguments put forward by the parties, also considers a different assessment to be possible is therefore not sufficient to override the assessment in the Federal Patent Court's qualified reference.
9. In the view of the Senate, there are weighty arguments in favor of the view that even prior art that has become known or introduced subsequently only justifies a departure from the assessment of the Federal Patent Court in a qualified reference if, according to the new submissions, the provisional assessment in the reference clearly cannot (or can no longer) be upheld.
Munich Higher Regional Court, final judgment of April 10, 2025 - 6 U 3325/24 e –, GRUR-RS 2025, 12678
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