If a patent in the granted version and also in a limited version is defended in the first instance, any grounds of appeal must challenge any supporting consideration. The BGH issued a ruling on the inadmissibility of an appeal in German patent nullity proceedings.
Appeal in patent nullity proceedings concerning an egg carton
The origin of the guiding principle decision lies in a legal dispute over a European patent on an egg carton. The patent at issue EP 1 373 100 describes a display and shipping package for eggs or similar fragile articles which combines the respective advantages of an egg box (pattern of supporting ribs) and a large surface area for information and, where appropriate, good advertising possibilities.
The Federal Patent Court had declared the patent in dispute null and void at first instance for the territory of the Federal Republic of Germany in its entirety (3 Ni 10/16 (EP)) and justified this decision with the lack of novelty of the patent, since the prior art had already been disclosed. Specifically, the BPatG referred to the disclosures made by US patent 2 978 162 on a shaped pulp egg carton (GDM1) and US patent 101 892 on a honeycomb egg carton (GDM4). GDM1 and GDM4 had suggested to the expert that the packaging should be made of opaque pulp and designed with an essentially flat top wall, the BPatG had stated in the grounds for the judgment. The appeal of the proprietor of the patent in dispute was directed against this.
BGH regards the grounds of appeal as inadmissible
However, the BGH considered the grounds of appeal to be inadmissible. The appellate court only attacked the considerations with which the patent court justified the harmfulness to novelty of the GDM4 as erroneous and referred with regard to the GDM1 only to its first-instance submission, the Federal Court of Justice stated in its ruling. The reason for the appeal to GDM1 was only given as a reply and after the expiry of the period for filing an appeal. What is required, however, is an indication in the appeal, which is understandable in itself, of which certain points of the contested judgment the appellant contests and why. If the patentee has defended the patent in dispute in the first instance both in the granted and in a limited version, he must, if he also wishes to defend the granted version before the Federal Supreme Court, challenge any independent supporting reason with which the Federal Patent Court did not consider the patent in dispute to be legally valid in the granted version and declared it invalid in this respect, the Federal Supreme Court ruled.
Lead decision
An appeal shall be inadmissible if the patent proprietor who is unsuccessful in the patent nullity proceedings before the patent court does not, by stating the grounds of appeal, challenge every independent, self-supporting legal consideration with which the full or partial nullity of the contested patent is justified in the judgment under appeal.
Support ribs in egg carton – State-of-the-art?
However, the BGH contradicted the considerations of the BPatG regarding GDM4. The BPatG had ruled that the feature of a pattern of supporting ribs connecting the basic areas of the egg-shaped compartments results from the disclosure by GDM4, and is not based on inventive step in relation to GDM1, since the extension of the supporting ribs in the direction of the bottom of the package is a measure which, depending on the desired stiffening, is at the discretion of the skilled person.
The BGH contradicted this view. Contrary to the opinion of the Patent Court, the extension of the supporting ribs to the ground is not a measure which the skilled person wishes to take depending on the desired stiffening. Although GDM4 reveals floor-deep support ribs, the BGH justified its decision by stating that the design of the egg carton with symmetrical upper and lower parts deviates from GDM1. Since the position of the supporting ribs has an effect on the stability of the egg box, the extension of the supporting ribs to the ground does not constitute an arbitrary measure of the expert but requires a construction deviating from the state-of-the-art.
The European patent 1 373 100 was therefore partially declared invalid with effect for the Federal Republic of Germany in the version of the patent in dispute granted.
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Sources:
Judgement BGH X ZR 37/17 (in German)
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