[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　A German company sued Spain Bellota The company sells under the name "Kit Bellota" Adapter kit, Indirect infringement (indirect infringement) Its European patent in force in Spain (Indirect tort usually means: Occurs before the direct infringement, Provide assistance for direct infringement, Usually provides the content of assistance "Relates to the basic elements of the infringed invention" ) . The disputed adapter kit consists of a notched gear and an adapter, The German company argued that the adapter kit copied the core of its patented invention.

　　The European patent in question is for a method to reduce the frequency of vibration during scoring in a ceramic chip cutter, Contains only one separate claim, The claim describes all the elements of the inventive method.

　　The plaintiff argues that the defendant's adapter suite combines the following two elements, Indirect infringement of its patent rights: (1) A handle or notched gear; and, (2) One adapter. Defendant when selling the disputed adapter kit, The product may be used in cutting machines sold by Plaintiff.

　　Bellota Company argument, The patent in question protects "A method for reducing vibration frequency during the marking process of ceramic chip cutting machine" , Not the cutting machine itself; and, Constituting indirect infringement requires confirmation that the disputing behavior can achieve the technical effect of the method patent, But the plaintiff failed to submit any evidence "Kit Bellota" The adapter kit has the effect of reducing vibration frequency. 　　The plaintiffs previously held another similar patent that was already in the public domain, Is cited as the nearest prior art in the present patent. In addition, The plaintiff also mentions, The application of the patent in this case to the European Patent Office has been blocked, It starts with a product patent application, But only the method patents were granted.

　　The court of first instance rejected the plaintiff's claim, After the appellate court hears the appeal, Overturn the judgment of first instance, identification Bellota The company infringed the plaintiff's patent.

　　 [conclusion]

　　The appeals court first established the scope and boundaries of the rights of the European patents in question, And reiterates that Spanish law is already in place "European patent convention" The first 69. 1 Strip and its "Implementation rules" about "Scope of European patent protection" Relevant explanation of, Substantial adjustments have been made. For that matter, An understanding of the content of the claim, Both extremes should be avoided: Strictly literal limits on interpretation, or, Subjective arbitrary interpretation (namely, Compared with the examiner's opinion on the patent specification and drawings, Give priority to the extent to which the patentee expects protection) . On the basis of ensuring fair protection for the patentee, Ensure that the third party can reasonably determine the scope of patent protection.

　　The second judgment upheld the appellant's grounds of appeal, Held that the patent in question did not mention what was said "plane" Extends the entire surface of a handle or notched gear, Therefore, Whether the use of the adapter extends all surfaces of the notched gear, It does not affect the scope of patent protection. This is part of the defense's rebuttal. What really matters is the scope of the patent, As described in Step 1 of the method patent, The kit is combined with the notched gear handle used, Including a flat surface. Judge that, The combination of the plastic kit and the notched gear achieves the same technical effect described in the method patent.

　　The court held that, The key question to be resolved on appeal, Whether there is evidence that the alleged infringing product can achieve the effect of reducing vibration frequency, This is also the technical effect sought by a protected method patent. The plaintiff before the first trial, An expert report was submitted as evidence.

　　The court held that, The said expert report submitted by the plaintiff, The purpose is to respond to the questions raised by the defendant in his plea, Should be adopted. The plaintiff in his first expert report, Emphasize all steps to prove that the alleged infringing product contains a patent for a protected method, It is inferred that the product can also achieve the technical effect of the protected patent——Reduce vibration frequency. Therefore, Court decision, The expert report does not explicitly state that the suspected infringing products can be realized "Reduce vibration frequency" Technical effect of, But judging from the report, This conclusion is justified. Therefore, Only if the defendant challenges the conclusion, A new expert report is necessary.

　　Therefore, Determination of judgment, The evidence is available to prove the defendant Bellota The company's suite of adapters does "Reduce vibration frequency" Effect of. Since the alleged infringing product also includes the protected method step 2, Therefore, The original notice stated that the defendant's grounds for indirect infringement should be supported.

　　When the appellate court calculates the defendant's exact damages, The following calculation standards of German enterprises have been adopted:

　　 (1) Net unit price of notched gear sold by German enterprise in Spanish market, namely, Use a weighted average selling price minus the cost of production or purchase and all direct business costs.

　　 (2) So the net unit price times that Bellota From the company 2014 Total number of infringement kits sold since 2000, and (sole-selling) Number of notched gears.

　　 [comment]

　　In practice, The final finding of indirect infringement is rare, This case provides us with a valuable opportunity to understand the difficulties in determining the fact of infringement. The need to explain the scope of the claim, The importance of action taken by the patentee in the proceedings with the European Patent Office, And the opportunity to submit expert reports at different stages of the proceedings and so on, Are decisive factors in determining the verdict.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights