Direct Patent Infringement Of Combination Patents And Recall From Obligors Abroad If Patent-Free Replacement Deliveries Are Possible – Higher Regional Court Of Düsseldorf In 'Beheizbarer Boden Für Viehställe'

Author:Mr Stefan Lieck and Dominik Woll
Profession:Bardehle Pagenberg

In the above-mentioned decision (judgement of July 19, 2018, docket no.: 15 U 43/15), the Higher Regional Court deals with three legal aspects:

First, the Senate confirms its previous case law according to which in the case of combination patents, not only contributory but direct patent infringement is present if the offered or supplied part of a claimed entire device already shows all material features of the idea of the invention, and only an insignificant "everyday ingredient" is necessary at most for it to be completed.

Second, the Senate also confirms its previous case law according to which an obligor abroad is subject to the claim for recall as well.

Finally, the Higher Regional Court considers recall of the patent-infringing products against reimbursement of the purchase price disproportionate if the customer can be provided a patent-free product as a less severe means in exchange for the infringing embodiment.

Facts and circumstances

The plaintiff is the proprietor of two patents that both relate to a heatable floor for livestock stalls. The claimed floor systems consist of a plurality of hollow, rectangular plate bodies, whose cavities are filled with a heat carrier fluid (e.g. water) and heatable by means of heating lines. Between the upper and the lower shells of the plate bodies, there are pipe sockets open on the side, whose lateral openings are oriented in the direction of a filling opening at the edge of the upper shell. This way, during filling, bubble-free distribution of the heat carrier fluid at the underside of the upper shell is achieved, which results in particularly efficient heating of the upper shell.

The defendant, which is located in Spain, has been offering so-called "NON-AIR" filling systems since 2012, which also ensure bubble-free filling of the cavity with water. The systems are supplied without a heat carrier fluid as the customers themselves usually have water available with which they fill the systems.

Since 2015, the defendant has been offering modified embodiments - which are undisputedly patent-free - where the lateral openings of the pipe sockets are no longer oriented in the direction of the filling opening.

The plaintiff inter alia asserted claims for recall against the defendant for direct patent infringement.

The Regional Court of Düsseldorf basically found for the plaintiff and ordered the defendant, particularly due to direct patent infringement, to recall the supplied products against...

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