Only private expert opinions of the defendant justify counter-assessments

The Federal Patent Court has issued a decision on the reimbursement of costs for experimental private expert opinions. Only in exceptional cases are expert opinions or counter-assessments necessary. The decision is a partial success for a subsidiary of 3M – after the declaration of nullity for the German part of it’s EU patent on polymer foam in 2015.

Patent owner of the patent in dispute being basis in the present case about reimbursement of costs is 3M Innovative Properties Company, a subsidiary of the U.S. technology company 3M, known among other things for its adhesive products and its registered trademarks Post-it and Scotch. It was the proprietor of European Patent No 1 102 809, granted with effect in the Federal Republic of Germany, concerning articles containing polymer foam and a process for their manufacture. The patent in dispute was invalidated after several years of proceedings by the Federal Court of Justice (BGH) in the Polymer Foam II judgment with effect for the territory of the Federal Republic of Germany – and at the expense of the defendant (judgment of 09.06.2015, Ref.: X ZR 101/13– Polymer Foam).

The judicial officer of the Senate fixed the costs to be reimbursed to the plaintiff by the defendant for nullity at 686,202.84 EUR. As requested by the nullity plaintiff, this cost decision included EUR 93,132.54 for the preparation of a total of seven private expert opinions, including the associated travel expenses of the expert. 3M Innovative Properties Company brought an action against this order for costs and was thus partially successful before the BPatG.

Principle of economical litigation

The yardstick was whether a reasonable and economically reasonable party could regard the cost-causing measure at that time (ex ante) as relevant, although the principle of economical litigation also applied. Private expert opinions are an integral part of the party’s submission and therefore, like the submission, cannot be reimbursed separately, but can only be reimbursed in exceptional cases. In particular, it is not sufficient for a private expert opinion to be submitted as a counter-assessment. It is often sufficient for the plaintiff to present the feasibility of the counter-opinion argumentatively.

Only exceptionally reimbursable are costs for private expert opinions if the party, in the absence of its own expert knowledge, can only satisfy its obligation to present its case or the burden of proof with the help of the private expert, or if the expert knowledge is not guaranteed for other reasons. The BPatG clarified that it did not matter whether the expert opinion ultimately had an influence on the outcome of the legal dispute.

Only private expert opinions of the nullity defendant justify counter-opinions

This changes, however, if the respondent for a declaration of invalidity does not merely dispute the feasibility of the citation by argument or across-the-board, but qualifies it with the help of a private expert opinion provided by him. Such a submission had to be substantiated in the same way, in this case a private opinion of the plaintiff was therefore necessary. In this connection, the court points out that another question is whether the respondent for a declaration of invalidity necessarily had to provide a private opinion. This question could not be decided in the present case.

Also the renewed denial of the executability of the teachings of the citations on the part of the nullity defendants, again based on a new experimental private expert opinion, makes a further private expert opinion of the plaintiff burdened with evidence and presentation necessary. However, this is already a borderline case, the court emphasized, because an endless spiral of expert opinions would by no means be regarded as necessary.

The situation was different with a pleading by the plaintiff, which had been submitted at the same time as the newly researched citation. Thus, the respondent did not even wait for the nullity defendant to dispute the feasibility of the doctrine. It also served to explain the technical relevance of its disclosures for the patent obstacles asserted, not to prove the feasibility of the doctrine, and was therefore not necessary, the court ruled.

A counter-opinion to the defendant’s expert opinion in order to prove the transferability of the teaching was just as unnecessary as a “professor’s expert opinion“, because this could also have been presented by the suitably qualified patent attorney’s representative of the plaintiff.

Request for a court expert opinion recommended

Nor was the counter-opinion necessary, with which the argumentation was to be supported in the interpretation of the subject matter of the patent and its (lacking) differentiation from the disclosure content of a counter-opinion. Instead, the plaintiff should have suggested that the application for a court expert opinion should have contained a corresponding procedural reference pursuant to Sec. 84 (2) Patent Law in conjunction with Sec. 39 ZPO. This is particularly true because the court – if it considered the investigation necessary – would not attach the same value to a private expert opinion as to the expert opinion of a court-appointed expert, the BPatG emphasises.

Lead decision of the BPatG

Experimental private expert opinions to prove the feasibility of citations

The costs for an experimental private expert opinion of the nullity plaintiff to prove the feasibility of the doctrine of a citation which he cites as harmful to novelty may be regarded as relevant and thus necessary for appropriate prosecution or legal defence, if the nullity defendant disputed the feasibility of the citation by submitting his own experimental private expert opinion.

Judgment is a partial success for 3 M

In total, the applicant for annulment can therefore only claim EUR 62,670 less costs for private expert opinions than initially applied for. The decision of the Rechtspflegerin of 16 August 2018 is set aside by the judgment to the extent that the amount determined therein exceeds EUR 623,532.84 of the costs to be reimbursed by 3M Innovative Properties Company to the plaintiff.

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