The Higher Regional Court of Düsseldorf recently confirmed German case law according to which an offer of a patent infringing product constitutes patent infringement, regardless of the infringer’s intention or capacity to actually deliver the product (“Occlusion Means” decision of 22 December 2008, file no. I-2 U 65/07).

The subject of the proceedings were certain medical devices, i.e. intravascular occlusion means used for blocking a patient’s vessel such as to prevent blood flow through an artery to a tumour or other lesion. The defendants had inter alia advertised such occlusion means on the internet.

The characterising portion of one of the patent claims at issue was directed to “clamps adapted to clamp the strands of the opposed ends of the device”. The defendants had argued that the products had not yet been marketed at the time of the internet advertisement due to a lack of capacity to deliver the product and therefore that no actual offer had been made at all.

The court rejected the defendants’ argument stating that the mere act of offering the product as such is one which shall be reserved to the patentee. This is in line with the Federal Supreme Court decision “Simvastatin” of 5 December 2006 (GRUR 2008, 221), in which an advertisement for a product during the lifetime of a patent, but expressly intended for sale after expiration of a patent, was also held to be an infringing offer in terms of patent law.

The defendants furthermore argued that the above mentioned claim was directed to a device having more than one clamp since it claimed “clamps” (plural). Their embodiment, however, would merely make use of one single clamp.

The court decided that this did not mean that the defendant’s device was not within the protective scope of the patent claim in terms of literal infringement. The claim needed to be interpreted in a technical, not merely philological sense, applying the common understanding of a person skilled in the art.

The word “clamps” used in plural would just be an indication of a certain category of means. The skilled person would interpret the claim at issue in such manner that clamps should be used where free ends of wire strands were present in order to prevent them from fraying. Therefore he would understand the claim also to encompass a device only showing one end of such wire strand because both ends of the strands had been bundled together requiring only one clamp to be used as protection against undesirable fraying.

The Higher Regional Court of Düsseldorf thus confirmed the interpretation of the Regional Court holding that the claim was literally infringed. The Higher Regional Court did not feel any need to apply the doctrine of equivalents to find infringement.

The defendants additionally argued that the patentee had waived its right to patent protection for such embodiments as a result of what had been said in the course of the patent prosecution proceedings.

The Higher Regional Court also rejected this objection. Statements made in documents from the prosecution should not be used to interpret the meaning or scope of claims under Article 69 of the EPC or the corresponding German provision. The person skilled in the art could only rely on the technical teaching as documented in the published patent specification.

The defendants also submitted in evidence the existence of a further patent which they alleged would cover their embodiment. The court did not review this any further. Consistent with previous German case law, the court held that for the purpose of determining the question of literal infringement, it was no relevance that a (further) patent had been granted for the infringing embodiment.

In summary, this decision of the Higher Regional Court of Düsseldorf deals with several important aspects of German patent law and as a result is likely to be relied upon by litigants in patent actions in the future.