Press release of March 14, 2010

Court of Appeals Düsseldorf on the infringement of a method claim in Germany when its features are partially realized abroad (decision of December 10, 2009, Case I-2 U 51/08 – Method of processing telephone calls).For infringement of a method claim in Germany, it can be sufficient if the infringer realizes at least one of the claimed method steps within Germany and the other claimed method steps outside Germany.

In the present case, the plaintiff asserted against the defendants a method claim relating to a method of processing prepaid telephone calls. The claimed method essentially works as follows: A calling party buys a ‘remote prepaid calling card’ of a service provider. On the calling card, a dial-in number and a PIN-number are imprinted, the PIN-number being hidden under a scratch-off layer. By dialing the dial-in number and then the PIN-number e.g. from a public phone booth, the calling party reaches a computing system of the service provider. The computing system is programmed to enable the calling party to place telephone calls to the called parties according to a predetermined credit. Upon entering the telephone number of the called party, the computer system establishes the connection between the parties. Once the predetermined credit is used up, the computer system cuts off the connection. 

Some of the claimed method steps, amongst others the step of offering remote prepaid calling cards for sale, were undisputedly realized by the defendants in Germany. However, according to the allegations by the defendants which could not be disproved by the Plaintiff, other method steps were realized in the UK, inter alia the programming of the computing system comprising a data bank in which the PIN numbers of the calling cards are stored and with which a connection is established, or a cut-off, depending on the remaining credit attributed to a certain PIN and the corresponding calling card.

The Düsseldorf Court of Appeals was the first German court having to decide the hitherto unresolved legal question whether it can be sufficient for assuming patent infringement in Germany if the infringer realizes only some of the claimed method steps within Germany and the other claimed method steps outside Germany.

The Court of Appeals Düsseldorf ruled that infringement in Germany can be found if at least one method step is realized in Germany and if the method steps realized by the infringer outside Germany may be legally attributed to at least one method step realized by the infringer within Germany. Such legal attribution requires that the infringer makes use of the method steps realized abroad so that these method steps have their effect in Germany, and that such effect in Germany must be intended by the infringer.

In the present case, the Court affirmed such intentional effect in Germany in particular, since the calling cards in dispute were specifically designed for use in Germany (German language user instructions; German dial-in numbers) and since the programming of the computing system enabled German customers to place calls in Germany, using the patented method as a whole. 

Remarks

The present decision is certainly of high and general importance for the enforceability of method claims (and probably also system claims) in Germany, in particular in the telecommunications or IT industry. Therefore, a legal appeal to the Federal Supreme Court was admitted by the Court of Appeals Düsseldorf, which was filed by the defendants and which is currently pending.It may be expected that the German Federal Supreme Court will confirm this decision: the Federal Supreme Court has already held in another recent case that an entity distributing infringing products to a retailer outside Germany is liable for patent infringement in Germany if the retailer puts the infringing products on the German market and if this must be expected by said entity (in the words of the court: if the infringing acts of the retailer were consciously and deliberately caused by said entity). This shows that the German Federal Supreme Court tends to liberally assume patent infringement in Germany in “cross-border” situations in which the actually attacked actions even fully take place outside Germany, but have an intended causative effect in Germany.The reported case law is clearly a powerful tool for patentees, and may entail significant risk for participants in a global market.

Representatives of Cards BVBA
BARDEHLE PAGENBERG (Munich):
Johannes Heselberger (Attorney-at-Law, European Patent Attorney, Partner),
Dr. Tilman Müller-Stoy (Attorney-at-Law, Partner),
Jörg Wahl (Attorney-at-Law)

Representatives of Lycatel
Osborne Clarke (Köln):
Prof. Dr. Michael Trimborn (Attorney-at-Law, Partner)

 

© BARDEHLE PAGENBERG 2010
First published in BARDEHLE PAGENBERG IP Report 2010/I

 

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