/ Created by Hans-Joachim Meyer, Felipe von Heereman

BGH Decision "Drum Unit"

Replacing the drum is a permissible maintenance measure

Düsseldorf, 29.05.2018 – In its decision "Drum Unit" from October 24, 2017 (X ZR 55/16), the Federal Supreme Court (BGH) dealt with the issue of distinguishing between a (non-permitted) new production and a (permitted) maintenance measure of a patent-protected product which was placed on the market with the consent of the patent holder.

The case concerned a European patent granted for a drum unit of a toner cartridge in a copying or printing machine. The patent holder is a Japanese company that manufactures and sells printers, copiers and toner cartridges. The patented drum unit, which is inserted into the toner cartridge, comprises a photosensitive drum and a coupling element connected to the drum. This is designed in such a way that the drum can also be removed from the cartridge perpendicular to its axis of rotation. The patentee had filed a suit for patent infringement against a recycling company that sells the plaintiff's remanufactured cartridges and replaces the respective cartridge drum for this purpose.

According to previous case-law (cf. BGH judgment "Palettenbehälter II" ["Pallet Container"], X ZR 97/11 from July 17, 2012), it generally only came down to the question of whether the technical effects of the invention are reflected in the exchanged part(s) if the general market would expect that such part(s) would need to be exchanged during the service life of the protected product. This jurisprudence has now been supplemented by the BGH in the "Drum Unit" descision. Unlike in the "Palettenbehälter" case, the drum unit was only put the market as part of a multi-part device. According to the BGH, the criterion of what the general market assumes is ruled out in this particular case, since there are no justified customer expectations in this respect. It is therefore only important whether the technical effects of the invention are reflected in the exchanged parts.

Since the defendant merely replaced the drum of the drum unit, whereas the patent was granted because of the special coupling element of the drum unit, the BGH saw the replacement of the drum as a customary maintenance measure and thus not as a patent infringement.