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If at first you don’t succeed…..

In two decisions by the German Supreme Court (BGH X ZR 77/12 and BGH Xa ZR 10/07) , the same prior art document was examined with respect to the same claims of the same patent in two nullity proceedings. Germany has a bifurcated patent system so that validity is examined first at the German Patent court and the second instance is the Supreme Court and separately from the court that decides on infringement.

In the earlier decision (BGH Xa ZR 10/07) one piece of prior art was considered not relevant to novelty as certain features of the independent claim were not explicitly disclosed.

In the later decision (BGH X ZR 77/12) the same piece of prior art was considered to implicitly disclose the features that had been decided in the first case as not being explicitly present in that document.


This is almost certainly an usual event. It shows however how in an adversarial court system it is important to present the court not only with the best evidence but also every argument that the court is to consider.


What is public or a publication?

The recent Suffolk Tech v. AOL and Google decision of the CAFC in USA has a lot of interesting comments on what is accessible to the public and what is a publication (

The words of the statute ( 35 U.S.C. 102(a) (pre-AIA) ) are:

……. described in a printed publication…..

Since the 1952 date when this came into force all sorts of different ways have appeared to make information available to the public such as poster sessions, emails, websites, databases  etc. Do all of these meet the requirement of being a „printed publication“?

In the case in point the invention was described in a 1995 UseNet newsgroup post posted by a college student. One reason why the case is interesting is to compare it with the EPO’s approach to internet publications.

In its decision affirming the publication  the CAFC relied upon :

  • Case law had not placed much importance in the word „printed“. Various references were cited such as “Because there
    are many ways in which a reference may be disseminated  to the interested public, „public accessibility“ has been
    called the touchstone in determining whether a reference  constitutes a „printed publication“ bar under 35 U.S.C.  § 102(b).” SRI Int’l, Inc., 511 F.3d at 1194 (quoting In re  Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). “
  • The record indicated that at the time, only  people with access to a university or corporate computer  could use newsgroups. BUT this subset of people would be more likely to be  skilled in the art.
  • There was no difficulty in finding the post because although not fully indexed, the UseNet group was structured in a hierarchical manner that would have allowed someone interested in the topic to identify the particular group and read the posts.
  • The information had been sufficiently disseminated as the post in question resulted in at least six responses in the week following the publication.

This level of detail is usually not required for a disclosure at the EPO. The EPO tends more to decide whether a document was available to the public – actual access by the public not being required.




UK judges set „suitable for“ straight

One of the old „chestnuts“ of patent law is the effect of the word „for“ in the preamble of a claim. The EPO has special rules for this. One of the questions is whether the EPO, when considering claim language for clarity, novelty and inventive step uses the same test as the European national courts do. 

EPO Guidelines for Examination

Part F – Chapter IV-15

4.13 „Apparatus for …“, „Method for …“, etc.
If a claim commences with such words as: „Apparatus for carrying out
the process etc…“ this must be construed as meaning merely
apparatus suitable for carrying out the process. Apparatus which
otherwise possesses all of the features specified in the claims but
which would be unsuitable for the stated purpose or would require
modification to enable it to be so used, should normally not be
considered as anticipating the claim……….

However, if the known product is in a form in which it is in fact suitable
for the stated use, though it has never been described for that use, it
would deprive the claim of novelty…….

In contrast to an apparatus or product claim, in case of a method claim
commencing with such words as: „Method for remelting galvanic
layers“ the part „for remelting …“ should not be understood as meaning
that the process is merely suitable for remelting galvanic layers, but
rather as a functional feature concerning the remelting of galvanic
layers and, hence, defining one of the method steps of the claimed
method (see T 848/93)………

A distinction does however have to be made where the claim is
directed to a method or process aiming at a certain purpose, when it
comprises physical steps which result in the production of a product
(i.e. the claim is in fact directed towards the production of a product). In
this case, the purpose (intended use) is to be understood in the sense
that the method or process has to be merely suitable for that use,
rather than comprising the use as an integral method step.

The UK case is Rovi Solutions Corporation & Anor v Virgin Media Ltd & Ors [2014] EWHC 1559 (Pat) (15 May 2014) and is reported by IPKat:

The interesting claim interpretation point arose when Virgin argued that the words “suitable for” in the claims encompassed cases where hardware is merely capable of being programmed to do something (but is not actually programmed to do so). That would mean that any computer which was not actually programmed to carry out the relevant function would still be „suitable for“ carrying it out and hence would be relevant to novelty. On the other hand, Rovi argued that hardware alone would not be “suitable for” carrying out a given function in the absence of appropriate software. 

The Judge cited Floyd J in Qualcomm v Nokia, who had held that “If the apparatus has to undergo physical modification before it can be used, then prima facie it is not suitable for use and does not infringe”.  The Judge in the Rovi case held that programming a computer to do something “is the equivalent of the  physical modification of Floyd J’s example”. 

However by doing so the judge inadvertently raised a further issue. If a computer program installed on a computer is „equivalent to a physical modification“, then such a program becomes a „technical“ feature – and hence is statutory patentable subject matter. 

Sometimes taking court action in Europe pays off

This is based on a report by Dennis Crouch and David Hricik of Patently-O:


with respect to the case Kelley Drye & Warren, LLP v. Orbusneich Med. Co. Ltd., BVI, 2014 WL 1814204 (Conn. Super. Ct. Apr. 4, 2014).

This case relates to a law firm – Kelley Drye (KDW) – trying to get their fees paid by their client Orbus. But that is not what is interesting.

Orbus had filed suit for patent infringement and related common law claims against Boston Scientific. The case was filed in the Eastern District of Virginia, but then transferred to Massachusetts. Then, Boston Scientific moved for reexam and the suit was stayed.

Orbus then turned to a  replacement law firm whose  strategy was for Orbus to file a number of European actions, including ones in Germany, UK, Ireland, and the Netherlands.

This had the required effect – in 2013, Orbus and Boston Scientific came to a settlement resulting in a one-time payment to Orbus and a worldwide patent license for Boston Scientific.

The situation in USA following the new AIA act, is that there are a considerable number of past-grant attacks against patents. As shown in this case a post grant re-exam can delay infringement proceedings in USA.

However, due to the bifurcation system in Germany, which allows infringement cases to proceed independent of nullity actions there can be a better chance of reaching settlement.