In the aforementioned decision, the 10th Civil Senate of the German Federal Court of Justice ruled for the first time that, under patent law, a claim for residual damages with respect to acts for which this claim is statute-barred may also be calculated on the basis of the infringer's profit, and is not restricted to the license analogy method of calculating damages. Accordingly, even where the claim is statute-barred, the infringer is to render accounts with regard to the profit made, deductible costs and advertising carried out.
Facts of the case
The Plaintiff is the proprietor of a lapsed patent relating to a power supply device for providing a supply voltage for electrical devices. The Defendant supplies power supply devices, particularly for German manufacturers of airline seats.
The Regional Court of Mannheim had allowed the action for an injunction, information and rendering of accounts, recall and declaration regarding the obligation to pay damages. The obligation to render accounts also extends to information relating to advertising carried out, production costs and the profit made for acts committed prior to January 1, 2007, thus during the period for which claims are statute-barred.
The Defendant's appeal was largely unsuccessful. The Higher Regional Court of Karlsruhe merely restricted the obligation to pay damages for acts committed in the period for which claims are statute-barred to the restitution of the profit obtained, pursuant to the provisions of the law of unjust enrichment.
In the appeal on points of law, the Defendant opposed the order relating to the rendering of accounts, which included providing information on advertising carried out, production costs and the profit made for the acts committed in the period for which claims are statute-barred. It argued that the Plaintiff is not entitled to use the method taking into account the infringer's profits to calculate its claim for (residual) damages for acts committed in the period for which the claim is statute-barred and that the obligation to provide the aforementioned information is only owed where this method of calculation is also admissible.
The decision of the German Federal Court of Justice
The Senate found that, where the patent proprietor has a claim for residual damages with respect to acts for which the claim is statute-barred, the scope of this claim is not restricted to the method of calculating damages based on the license analogy approach. Instead...