In a partial invalidity action, a limited defence is only possible within the attacked scope of protection. In the judgment of June 13, 2023 - X ZR 47/211 obtained by MB Hannover, PA Gerstein together with attorney Dr. Hall for the client WAGO, a family-owned world market leader in spring clamping technology, the Federal Court of Justice has now clarified that there is a need for legal protection for picking out part of the features of an unchallenged patent claim. In the previous instance (BPatG judgment of 19.02.2021 - 6 Ni 51/18), the wording "one of several variants of a sub-claim not challenged in this respect" from the BGH judgment "Ankopplungssystem"2 was interpreted broadly and also referred to partial features.3 This would then be detached from the scope of protection.
In an action for partial invalidity, there is no judicial review of the non-challenged patent claims. When defending the challenged claims by including originally disclosed features, the limit of the unchallenged scope of protection must be observed, which is maintained without examination and is not an object of dispute due to the lack of attack. There is no need for legal protection for its inclusion.4 Instead, a limitation procedure would have to be carried out.
In the leading decision, the Federal Court of Justice now clarifies that there is an interest in legal protection if the challenged claim is only supplemented by some of the features of an unchallenged sub-claim.5 Meier-Beck has already aptly formulated this earlier: "Certainly, the possibility of defending oneself with individual features of an unchallenged sub-claim remains unaffected by this."6
This not only plays a role in German patent nullity proceedings and, according to the subsequent decision of September 12, 2023 - X ZB 12/20 "Tischgrill"7 in utility model nullity proceedings, but also in nullity proceedings before the UPC. The need for legal protection is also examined by the UPC and leads to the same result under the UPC Agreement (UPCA) and UPC-Rules of Procedure (RoP). However, caution is required, as the nullity plaintiff is obliged to demonstrate the inadmissibility of the limited defence in accordance with Rule 32 para. 1 lit. a RoP UPC. No reliance should be placed on a judicial rejection of the limited defence.
When defending the patent proprietor, it should be noted that an excessive number of auxiliary requests is inadmissible under Rule 30(1)(c) of the UPCA if this creates a confusing and unreasonable procedural situation. The restriction of the possibility to amend patent claims to the reply to the nullity action already leads to a strict corset for the patent proprietor's defence. The auxiliary requests with the underlying defence strategy must therefore be determined stringently and conclusively at an early stage.
A detailed article on this topic has been published in GRUR-Patent 09/2023.
1 BGH Judgement of. 13.6.2023 - X ZR 47/21 - Connection terminal, GRUR-RS 2023 19626.
2 BGH GRUR 2017, 604 para. 30 - Coupling system.
3 So BPatG GRUR-RS 2021, 11432 para. 57-62.
4 BGH GRUR 2017, 604 para. 24-31 - Coupling system with further references.
5 BGH GRUR-RS 2023 19626 (Ls) + para. 150-151 - Connection terminal.
6 Meier-Beck GRUR 2018, 977 (984).
7 BGH GRUR 2023, 1526 - Table grill.
