German Federal Supreme Court solidifies case-law on damages for patent infringement
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Partner
Germany
Based in Düsseldorf, at the seat of one of the most important patent infringement courts in Europe, I am partner in our Intellectual Property Practice Group and a patent practitioner with a focus on specialist technical areas.
Counsel
Germany
Working as an associate in our intellectual property team in Düsseldorf, I provide advice to our German and multinational clients from various industries and sectors on all matters of IP law, with a special focus on patent litigation and patent licensing.
The German Federal Supreme Court (Bundesgerichtshof - BGH) has clarified its case law on the calculation of damages for patent infringement in a recent judgment of 14 November 2023 (docket no. X ZR 30/21). The court used the 'infringer's profit' method.
According to this method of calculation, the infringer must surrender the profits made by infringing the patent. In the underlying case, the defendant was found to have infringed a patent relating to an upholstery machine.
The defendant manufactured and marketed such machines, including through leasing, and offered paper for use in its machines. The FSC ruled that the infringer's profits to be surrendered were not limited to the proceeds from the sale or lease of the machines, i.e. the infringing acts themselves.
It also includes profits from "ancillary" activities that do not constitute acts of use, but are causally linked to acts of patent infringement and have a sufficient connection to the infringing product.
In the present case, the FSC held that profits from the supply of consumables (i.e. paper) and from the conclusion of leasing and maintenance contracts for the upholstery machines could also be included in the calculation of the infringer's profit.
Furthermore, the FSC emphasised that this applies even to the supply of consumables and the conclusion of leasing and maintenance contracts made after the expiry of the patent, providing that they relate to sales or leases of machines which took place during the term of the patent.
The judgment relates to a specific case with its underlying facts. It therefore remains to be seen to what extent the FSC's reasoning can be generalised and applied to other cases. However, on the face of it, the FSC judgment seems to imply an extension of liability for damages, at least for certain types of business…
