BGH-X ZR 31/21 "Power monitoring device"

The BGH confirms the "Signalübertragungssystem" decision: If a patent has expired or lapsed, the nullity plaintiff is to declare a special interest. If a nullity plaintiff provides substantial assistance to a third party in the infringement of a patent, the need for legal protection is to be affirmed, since at least due to this assistance, the nullity plaintiff must seriously fear that a claim for infringement of the patent in suit will also be asserted against it (vol. 22 and 23).

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Previous case law:

The case "Signalübertragungssystem" involved the patent in suit "Reduced complexity signal transmission system", which concerns a system consisting of a transmitter and a receiver for transmitting an input signal based on an acoustic signal, such as converted human speech.
The nullity plaintiff justified the need for legal protection for the nullification of an already expired patent on the grounds that this was necessary to protect the customers of its operating system (namely Android).

The nullity defendant and patent holder had already filed infringement suits. The plaintiff could thus not be expected to accept the associated uncertainty. A legitimate interest in legal protection was therefore given – even against a patent that had already lapsed. The BGH issued the following guiding principle:

"The interest in legal protection for a patent nullity action required upon expiration of the term of protection of a patent is to be denied only if a claim based on the intellectual property right can no longer be seriously considered."

Regarding the case:

In the decision "Leistungsüberwachungsgerät", the BGH once again confirmed that a general interest is not sufficient in order to retroactively bring down a patent that has already expired or lapsed. However, as already decided in the past, the hurdle should not be set too high if the plaintiff has reason to fear that claims could still be asserted against it for past acts even after the expiration of the term of protection. In such cases, an interest in legal protection could only be denied if such a claim can seriously no longer be considered (BGH, "Stammzellengewinnung", volume 16).

In the present case constellation, the patent concerned a "GPS-based performance monitor", i.e., a "tracker watch", in which a transmission of the collected data to a central collection point takes place, which evaluates the data.

The Federal Patent Court of Germany had initially denied a need for legal protection on the grounds that it was not the nullity plaintiff itself that was being sued for patent infringement, but a company affiliated with it. In the present example, however, it is the case that "customers who wish to use one of the devices challenged by the infringement suit conclude a contract with the [nullity plaintiff] for the processing of the data generated in the process". The customers are typically interested in using the acquired device as intended, which requires the conclusion of the aforementioned usage agreement with the nullity plaintiff, who thus provides substantial assistance in the patent infringing act. "At any rate, as a result of this assistance, the [nullity plaintiff] must seriously fear that claims will also be asserted against it for infringement of the patent in suit" (paras. 22, 23).

The need for legal protection was therefore affirmed. The BGH further confirmed that in such a case, although the nullity plaintiff is also acting in the interest of its customer or third parties, the nullification is also in its own interest, as it must fear being taken up on a recourse basis by the third party.

Conclusion:

As a result, the decision represents a continuation of the previous case law. If a patent has expired, a special, usually own interest in legal protection must be declared. Yet, if there are concerns about claims being asserted against oneself by third parties, an interest in legal protection on the part of third parties may be sufficient.

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Gez.

Florian Malescha

5.215

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