Provisional suspension of levy of execution

The Federal Supreme Court has specified the requirements with which the temporary suspension of the levy of execution of a patent infringement judgment can be achieved. The protection against enforcement by the court of appeal according to § 719 German Civil code in principle requires an application for protection according to § 712 in the appeal proceedings.

In its judgement “Filterpatrone” (26.03.2019 (X ZR 171/18)), the Federal Supreme Court (BGH) once again specified the procedure to achieve the temporary suspension of enforcement following a patent infringement judgement. In principle, protection against enforcement by the court of appeal is possible, provided that a corresponding application for protection is filed in the appeal procedure.

Application for protection in appeal proceedings

It is often assumed that the application for protection in the appeal proceedings must refer to § 719 (2) ZPO (ZPO = German Code of Civil Procedure), according to which the court of appeal orders the temporary cessation of enforcement – if enforcement would bring the debtor a considerable disadvantage – in the wording of § 719 “irreplaceable disadvantage”. Nor may no overriding interest of the creditor stand in the way of the temporary suspension of enforcement.

However, the protection against enforcement by the court of appeal according to § 719 ZPO in principle requires an application for protection according to § 712 ZPO in the appeal proceedings. This was already judged in the judgement on 04.06.2008 (XII ZR 55/08) as an official guiding principle of the BGH. The Court of Appeal was also not allowed to reject the application for protection on the grounds that the possibility of a temporary injunction under Sections 707 and 719 of the Code of Civil Procedure regularly replaced the protection against enforcement under Section 712 of the Code of Civil Procedure, the Federal Supreme Court had already clarified in 2008. This is because the protection against enforcement by the court of appeal under § 719 ZPO generally requires an application for protection under § 712 ZPO in appeal proceedings.

Enforcement protection according to § 719 ZPO requires in principle regard to § 712 ZPO

In the same way, the BGH ruled in the “Werkzeuggriff” judgment (25.09.2018 – X ZR 76/18) and again now in the “Filter cartridge” judgment (EP 1 986 760, plaintiff’s patent) of 26 March 2019. In the Filter cartridge proceedings, the defendants had lodged a non-admission complaint against the judgment (X ZR 19/16), which forced the defendant to refrain from infringing a patent. In addition, the defendants applied for a temporary suspension of execution under Sections 719 (1) and 707 of the Code of Civil Procedure. The BGH ruled, however, that an application under § 712 ZPO (Code of Civil Procedure) could not be regarded as a temporary suspension only because of the different objective. The protection against enforcement by the appellate court according to § 719 ZPO in principle requires an application for protection according to § 712 ZPO in the appeal proceedings. An application pursuant to § 712 (1) ZPO would also have had to be filed pursuant to § 297 ZPO in the oral hearing before the Court of Appeal.

“Irreplaceable disadvantage” through levy of execution

In addition, the BGH also commented on the content of the objection with which the defendants asserted an “irreplaceable disadvantage” through enforcement. The defendants were concerned that the plaintiff could obtain knowledge of the defendant’s trade and business secrets through enforcement. The fact that the plaintiff gains knowledge of business and trade secrets of the defendant through enforcement does not, however, in itself result in an irreplaceable disadvantage within the meaning of § 719 (2) ZPO, the Federal Court of Justice ruled.

The BGH clarified that the disadvantages for the debtor associated with the information and disclosure were to be regularly accepted within the scope of application of § 140 b PatG because of the higher weighting of creditors’ interests by the law. Nor would this be influenced by the fact that the disadvantages cannot regularly be replaced should the appeal judgment be set aside. The BGH ruled in the judgement “Werkzeuggriff” that the debtor’s duty to provide information also applies if the patent has already expired when the information claim is enforced.