The Bundespatentgericht: a popular forum

More than half of Europe’s patent litigation cases are handled by German courts. In the country’s bifurcated system, the Munich-based Federal Patent Court (Bundespatentgericht) takes care of nullity actions.

The court’s relatively low litigation costs have made it an attractive forum for large US smartphone companies to challenge their rivals’ patents, and over the last 12 months it has handed down judgments on dozens of high-profile cases, providing a window on to how certain patents will perform in other jurisdictions.

At the court’s helm is Beate Schmidt, a former director of the Office for Harmonization in the Internal Market and head of the German patent and trademark office’s (DPMA) main department. In the court’s 2013 annual report she, along with the court’s vice president Klaus Strößner, said that while the number of nullity proceedings remained very high, there were signs that the “highly litigious” actors in the mobile phone business might be willing to settle.

We spoke to her about whether this trend is continuing, and how the impending introduction of the Unified Patent Court (UPC) might affect court proceedings.

Why is the court such a popular forum for patent litigation?

The Federal Patent Court is a specialised court for IP matters—patent, trademark, utility models and design—and around half of the judges have a technical background (as former patent examiners), so they are especially qualified to take decisions on technical subject matter in patent and utility model proceedings.

It must be noted, however, that the court does not deal with infringement litigation—that lies in the hands of the regional courts in Germany (the Landgerichte/Oberlandesgerichte). On the other hand, because of the bifurcation in the German law system, those courts cannot decide whether a patent is valid or is to be cancelled, as decisions relating to this subject matter are dealt with exclusively by the Federal Patent Court.

"We welcome many delegations from all over the world, who are interested to learn about our experience as a specialised court with technically-trained judges."

So in many cases, when an infringement claim is pending (and there are many: currently around 1,200 in Germany), the defendant will decide to open a nullity claim before the Bundespatentgericht. In any case, court fees—compared with other countries, such as the UK or US—are quite reasonable and proceedings are relatively quick: two years or less for nullity claims. This and the quality of the decisions seem to be good reasons to start patent litigation before the court.

Can you see any trends emerging? Are you seeing more tech patents, for example?

It’s difficult to define clear trends in types of cases. Experience shows that there are changes from year to year. In recent years, the court had its share of cases related to the ‘patent wars’ concerning mobile and communication patents, as there are also quite a lot of pending infringement cases in this area in Germany.

There have been some settlements recently concerning these cases, but not enough data to give a precise explanation of what is happening.

Does the Bundespatentgericht serve many small to medium-sized businesses?

We do not have special statistics on this topic. Parties before the Bundespatentgericht come from entities of all sizes, depending also on the subject matter, but given the general structure of German industrial production I think it’s correct to say that we indeed do serve quite a number of small and medium-sized entities and even single inventors.

What are some of the most significant cases the court has seen in recent years?

There have been quite a few decisions where patents from Apple, but also from Microsoft and Nokia, have been cancelled—patent EP 0 845 124 for example [Microsoft’s mapping patent; see side panel]. Another one was EP 1 964 022, “Unlocking a device by performing gestures on an unlocked image” by Apple, and others.

In several cases, the Bundespatentgericht started preliminary rulings before the Court of Justice of the European Union (CJEU), for example in the Brüstle case concerning the exclusion from patentability of the use of human embryos for industrial or commercial purposes.

A number of cases have been brought before the CJEU in order to clarify provisions of Regulation (EC) no. 1610/96 of the European Parliament and of the Council of July 23, 1996 concerning the creation of a supplementary protection certificate for plant protection products; the latest case C 11/13 has just been decided by the court in Luxembourg.

What other roles does the court play?

Every two years the court—I dare to say successfully—organises an international symposium, alternating between patent or trademark-related topics, in order to discuss current topics together with judges from other jurisdictions, scholars and lawyers.

Judges of the court also take part, often as lecturers, in national and international conferences on IP and in training sessions for lawyers or judges in other countries. We welcome many delegations from all over the world, who are interested to learn about our experience as a specialised court with technically-trained judges.

How will the UPC affect the court’s working structure?

It’s difficult to foresee the impact of the UPC, as we are still waiting for more details about proceedings and costs. The working structure at the Bundespatentgericht could be affected insofar as the UPC will take over the competence to invalidate existing European patents.

Currently, at least 75 percent of the nullity claims before the Bundespatentgericht relate to the German part of a European patent—in future this will be dealt with by the UPC. However, as the new court will need some time to find its perfect working structure, and with the possibility of opting out of the UPC system during the next seven years, we hope that our court will continue to be busy.

It might well be that some of our judges will work for the UPC—only the future will tell.

A year in the life of the Bundespatentgericht

July 2013: Knud v Knut—der Eisbär

Berlin Zoo was quick to register the name of its most famous resident Knut, a polar bear rejected by its mother at birth in 2006 and raised by zoo keepers. It later filed an opposition based on the German trademark registration of the word Knud.

In a case that also appeared at the General Court of the EU, the court ruled there was no likelihood of confusion between ‘Knut—der Eisbär’ (Knut—the polar bear) and ‘Knud’, the German forename.

In its annual report, the court said: “The familiar first name ‘Knud’ does not limit the distinctiveness of goods associated with the famous polar bear that formerly resided in the Berlin Zoo.”

It said that it was debatable whether the principles developed to assess combined marks consisting of first and last names are applicable to the combination of names with other elements.

“The general public perceives the trademark in its entirety in any case as long as the element next to the first name does not designate a feature of the goods or services it identifies. This also holds true when the focus is directed towards a specific well-known animal.”

September 2013: The ‘bounce to update’ patent

It appeared that Apple had shot itself in the foot six years before it was called to defend one of its ‘rubber banding patents’ that cover the bounce-back effect seen in many of its iPhone functions at the Federal Patent Court last September.

European Patent EP 2 059 868, which covers a “portable electronic device for photo management” was filed at the European Patent Office in August 2007.

The court decided that a video of the company’s late chief executive Steve Jobs demonstrating the ‘bounce to update’ feature on the iPhone in January 2007 was prior art, as it took place before the patent filing, and that therefore the patent was invalid.

According to FOSSPatents, the court also rejected Apple’s proposed amended claims that attempted to distinguish the patent from what was seen in the video, finding them to be obvious from the video.

November 2013: The ‘push patent’

In one of its most highly publicised cases of the last 12 months, the court partially invalidated a European patent covering a system and method for synchronising email messages on mobile device and other devices—what has become known as the ‘push patent’.

The patent, opposed by Microsoft and Apple, covers a system for delivering email messages to a user’s devices, including mobile devices, in real time. It had already been invalidated in the UK in 2012.

In 2012, Apple fell foul of the very same patent, held by Google-owned Motorola Mobility, and had to disable the push email feature on its iCloud service in Germany.

The court found that the claims in the patent as granted were lacking inventive step. However, the patent holder submitted amended claims which the court decided were not obvious from the prior art cited in the proceeding and upheld the patent in the scope of the amended claims.

December 2013: Microsoft’s ‘FAT’ patent

In a decision that threatened the revenue from Microsoft’s Android system, the court invalidated the company’s File Allocation Table (FAT) patent EP 0 618 540 in its entirety. The patent covers a “common name space for long and short filenames”.

Microsoft’s proposed amendments were also rejected by the court. ZDNet reported that Microsoft had been using this patent, along with other ‘FAT’ patents since 2003, and had used it to persuade Android vendors to sign patent-licensing agreements.

According to FOSS Patents, the court decided that all the elements that distinguish the patented invention from the prior art did not satisfy European patent law’s technicity requirement.

February 2014: Michelangelo’s David and Botticelli’s Venus

In February, the court was applauded for its “liberal” ruling on the distinctiveness of a device mark. The applicant had applied for a device mark showing images of the heads of Michelangelo’s David and Botticelli’s Venus, brought together to appear as though David is looking into Venus’s eyes.

The application was filed to cover body and beauty-care products, pharmaceutical preparations, and related services.

The court overturned the decision of the DPMA that the mark lacked distinctiveness. Although it found that the DPMA had been correct in finding that the images of Venus and David are often used in advertising to signal beauty and health, it disagreed that the combination of the images lacked distinctiveness.

It did not rule on whether each of the characters may be registered individually as a mark, although it decided that the particular composition was unusual, and sufficiently distinctive.

February 2014: The mapping patent

In February, the court invalidated the German part of Microsoft’s European patent EP 0 845 124, which covers a computer system for “identifying local resources in a map” for lack of inventive step.

Microsoft had also asserted the patent against Google Maps and Google-owned Motorola Mobility's Android-based services. The invention is described as a way of superimposing information on to an existing map to show the location of places of interest.

If Microsoft’s patent had been upheld, and Motorola were found to be infringing the patent (and at one point when the case was being fought at the Munich Regional Court in March 2013, it looked as though this was likely to happen), it would have meant that Google Maps would have had to be shut down in the country.