Press release of January 17, 2011

Networking and communications technologies company Cisco wins before the German Federal Supreme Court: Bardehle Pagenberg successfully represents the California based enterprise in patent litigation that had lasted over seven years. (X ZR 68/06 and X ZR 69/06)

In a patent law suit which started in July 2004, the market leader in the field of computer networks, Cisco Systems, Inc. successfully invalidated a European and a German patent asserted against it by the German telecommunications equipment company Teles AG. In March 2010, the German Federal Supreme Court confirmed in second instance the nullity decisions by the Federal Patent Court. Teles’ subsequently filed request to re-open the proceedings, claiming violation of the right to be heard, was rejected by the Federal Supreme Court in July 2010.

The two patents were directed to a method of backing up with the conventional telephone network a phone call made over the Internet. When the quality of the Internet connection degraded beyond a certain threshold, the Internet call should automatically be rerouted over the telephone network without interrupting the ongoing call. Teles alleged that a large number of Cisco’s intranet and Internet routers used this technology.

Teles filed a complaint for patent infringement against Cisco in July 2004 at the Mannheim District Court, Germany’s second most frequently used forum for patent cases. The Mannheim District Court found the patents not infringed by Cisco and dismissed the complaint. Teles appealed to the Karlsruhe Court of Appeals, which stayed the infringement proceedings because in the meanwhile, the Federal Patent Court in Munich had held the patents invalid. This holding of invalidity was now confirmed by the Federal Supreme Court.

The inventions were found obvious over two prior publications, which in combination disclosed all features of the patent claims. One of the publications was from the field of Internet telephony, while the other one was related to ISDN technology. Teles had claimed that the skilled person would not have combined the two publications because the engineers working in the field of Internet technology were totally separate from those working on conventional telephone networks like the ISDN. The Federal Supreme Court confirmed that such a separation had existed in the past, but found that Cisco had successfully shown that at the filing date of the patents, first co-operations between the experts of the two fields had already started.

After this final invalidation of the patents, Cisco is now safe from an injunction against its products in Germany, and from the damages claims asserted by Teles. Furthermore, the German invalidity decisions may strengthen Cisco’s position in the pending law suit in the United States, were Cisco sued Teles for a declaratory judgment of patent invalidity and non-infringement, and Teles countersued for infringement. Legal representatives of Cisco Systems, Inc.:

Bardehle Pagenberg (Munich):
Johannes Lang (Patent Attorney and European Patent Attorney, Partner),
Dr. Jochen Pagenberg (Attorney-at-Law),
Dr. Christof Karl (Patent Attorney and Attorney-at-Law, Partner)

Legal representatives of Teles AG.:

Dr. Osterloh und Osterloh – attorneys-at-law at the Federal Supreme Court (Karlsruhe): Dr. Eilert Osterloh (Attorney-at-Law)

Patent attorneys Maikowsky & Ninnemann

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