September 2011: Recent decision by the Federal German Supreme Court on the interpretation of claims in litigation proceedings (X ZR 16/09 – “Okklusionsvorrichtung” – Occluding device)

Legal context

According to the European Patent Convention, Article 69(1), the extent of the protection conferred by a European patent shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

Further, in German case law in litigation proceedings a doctrine of equivalence has been established to confer a protection if a feature realized by the alleged object of infringement has a) the same effect, b) is obvious for a skilled person, and c) has an equivalent value.

Facts of the case

According to a feature of the subject matter of the independent claim an occlusion device comprises a metal fabric formed of braided strands and clamps that are adapted to clamp the strands at the opposed ends of the device.

The patent description mentioned several embodiments, one embodiment describing in vague terms that the strands could be fixed at one end of the device, without giving any hint whether the other features of the claimed subject matter are also realized.

The alleged object of infringement had the general form of an occluding device according to the independent claims, however it did only disclose a single clamp arranged at one end of the device.

Decision rendered by the Federal German Supreme Court

In the decision, the Federal German Supreme Court alleges generally that in case of contradictions between the description and the claims, and in case some embodiments disclosed in specific section of the description have not been considered in the claims, these sections are not considered when interpreting the claims. The wording of the claims has priority over the description. In the present case, the judges were not convinced that the section describing an embodiment where the strands are fixed only at one end of the device is clearly an embodiment of the invention according to the granted independent apparatus claim.

With respect to the infringement with an equivalent feature, the judges decided that in case the description discloses embodiments with different alternative features, but only one of these features was selected in the claims by the applicant, this has to be considered when deciding whether a feature has an equivalent value. According to their opinion, the use of the non included features is not an infringement according to the doctrine of equivalence.


Conclusion

The Federal German Supreme Court clearly underlined the priority of the claims over the description. The description should be only considered as far it can be used for an interpretation of the claims.

In view of this decision, the claims and the description should be carefully drafted such that each disclosed embodiment of the invention falls under the literal protection of the independent claims. As a consequence of this decision, a protection to a disclosed embodiment, which does not fall under the wording of the claims or was excluded during the proceedings, may not be conferred under the doctrine of equivalence according to this decision.

Contact : Jacob Klinkisch