BGH patent infringement: delivery from foreign-based supplier

The German BGH ruled on damages in the case of delivery of a patent-infringing product from a foreign-based supplier – a continuation of a former BGH decision. The patent concerns a parking aid system for motor vehicles – the defendant is a Taiwan-based company, supplier to many car manufacturers:

In principle, the use of a patented object leads to patent infringement, as does the unlawful marketing of a product protected by a patent in Germany. But what is the situation in the case of a delivery?

The situation is particularly complicated if a foreign-based supplier also supplies customers located abroad with a product that is only protected by a patent in Germany. Does such a foreign-based supplier have concrete indications that make it appear obvious that the goods supplied were passed on to the German home market or offered there, also with regard to other foreign-based customers? This was the question in the present BGH ruling (BGH, X ZR 47/19).

BGH case law: delivery and recall from distribution

The German Federal Supreme Court (Bundesgerichtshof, BGH) has previously ruled that a delivery can also contribute to patent infringement in principle. In 2009, the BGH ruled that not only the person who intentionally participates in the use of the protected subject matter by a third party is jointly liable for a patent infringement, but also the person who enables use of the protected subject matter by a third party through his own conduct in breach of duty (BGH, Xa ZR 2/08). However, according to BGH, even such a breach of duty does not automatically give rise to an unrestricted claim to an injunction if the acts do not constitute a patent infringement in themselves.

The BGH has also already made important findings with regard to deliveries by a foreign-based supplier. A claim for recall from distribution channels is not excluded because the obligated party is domiciled abroad, the BGH determined in 2017 in its decision Abdichtsystem (X ZR 120/15). In addition, a supplier of a product protected by a patent in Germany who is domiciled abroad and supplies a customer who is also domiciled abroad is not automatically obliged to check or monitor the further use of the delivered goods by the customer. However, if the supplier is in breach of duty, it is generally obliged to provide an invoice for all deliveries to this customer.

Case constellation

The present appeal before the BGH centred on German patent 199 37 195 (patent in suit), which was filed in 1999 and published in March 2006; it has since lapsed. This patent relates to an ultrasonic transducer that can be used as part of parking assistance systems for motor vehicles.

The defendant is a Taiwan-based company that manufactures automotive parts and accessories, including ultrasonic transducers, at production facilities in China and Taiwan. It is a supplier to numerous automobile manufacturers. As a result, ultrasonic transducers manufactured by the defendant were placed on the market in Germany by its customer R./D., the relevant period for which was from December 2012. The plaintiff considered this to be an infringement of the patent in suit and claimed an injunction and damages against the defendant.

Obligation for the supplier to check for indications

The claim for damages was brought before the BGH (X ZR 47/19). In detail, the BGH dealt with the supplier’s duty to verify a patent infringement. It is true that a foreign-based supplier is not automatically obliged to check or monitor the further use of the delivered goods by the customer, the court explained, referring to the decision Abdichtsystem. However, the BGH explained that such a duty may arise if there are concrete indications of a patent infringement.

And such concrete indications were present, the BGH ruled. In view of the geographical location and the economic circumstances, it was therefore obvious that large-scale deliveries to the European Union were being made from production facilities in Morocco. Moreover, the plaintiff had informed the defendant in a letter of 22 November 2012 that the converters supplied by the defendant to R. would be used in vehicles of the D. L. type.

The court emphasised that the assumption of concrete indications for a review of the deliveries of the contested converters to Germany did not depend on whether the letter was written as a request for authorisation or as a warning, and likewise not on whether the patent proprietor at the same time threatened legal action or merely asked for comments. Concrete indications justifying the defendant’s duty to review arise from the information contained in the letter about the delivery of certain vehicle types to Germany, the BGH ruled.

No generalisations of the indications

However, generalisations regarding the circumstances under which a supply is made in a patent-free foreign country (the unlawfulness of offering or supplying to a particular customer) are not permissible, the highest German court explained. Rather, it must be clear from the courts’ decisions which characteristic elements of the facts of life give rise to a duty of review or supervision and therefore constitute the core of the prohibited conduct or the conduct giving rise to an obligation to pay damages. The BGH decided, however, that the finding pronounced by the Regional Court and confirmed by the Court of Appeal did not meet these requirements and overturned their decisions (OLG Hamburg and LG Hamburg).

The BGH even formulated this requirement as a leading decision. Accordingly, claims for injunctive relief, provision of information and damages also exist with respect to other customers (also for a foreign-based supplier) – but only to the extent that the same characteristic circumstances exist that justify the unlawfulness of the supply to the one customer who will offer the supplied goods or put them on the market in Germany despite patent protection existing there.

Due to the absence of these factual findings by the Court of Appeal, however, the case was ready for final decision (§ 563 (3) ZPO), the BGH ruled. Precisely in order to be able to determine the amount of damages, it had to be clarified whether the defendant also had concrete indications of deliveries or offers in Germany with regard to other customers. The wording “to deliver to third parties or to have them deliver to third parties” indicates purposeful action, but does not reveal the characteristic circumstances that distinguish inadmissible actions from admissible ones.

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