Law applied:
Code of Civil Procedure Sec. 138, Sec. 308, Patent Act Sec. 139 et seq.
Summary:
(1) Since the infringement court is bound by the act of grant - and consequently also by its further fate in the proceedings on the validity of the patent - it is excluded to interpret the patent and/or to define the scope of protection in the infringement proceedings by which such subject-matter, which has been taken away from the patentee as subject-matter of protection in the proceedings on the validity of the patent, is again included in the patent and its protection. Unlike in the context of equivalent use (cf. BGH, GRUR 2016, 921 - Pemetrexed), it is irrelevant for which reasons - formal or substantive - patent subject matter was dropped in the prior art proceedings.
(2) If the patent in suit protects an LED comprising a phosphor in addition to an LED chip, and if the granted version of the claim has been limited in the state of the law proceedings by the fact that it is no longer sufficient that the phosphor "comprises" a garnet phosphor of a certain chemical constitution, but that it is now required that the phosphor "is" a garnet phosphor of the certain chemical constitution, this does not necessarily mean that an embodiment remains outside the scope of protection which, apart from the patented garnet phosphor, contains further non-garnet phosphors.
(3) Such an inference of non-use is only permissible if there is reason to believe that the partial revocation of the patent in suit was intended to limit the phosphors conclusively to garnet phosphors and to exclude any further non-garnet phosphor as being harmful to the invention.
4. In contrast, a literal use of the patent is to be assumed if the garnet phosphor of a certain chemical composition is required as a result of the partial revocation because it is responsible for the inventive advantages which could not be achieved with an arbitrarily small admixture of the garnet phosphor in a predominantly differently constituted non-garnet phosphor, and the attacked embodiment contains a patent-eligible garnet phosphor in sufficient quantity to bring about the patent-eligible effects, and the inventive effects are not lost by the presence of other other phosphors.
Court of Appeals Düsseldorf Judgement of. Dec 14, 2022 - 2 U 2/17 -
Download full Judgment (machine translation)
Picture credits: vladimirfloyd_AdobeStock.com