5.6.4 Statements of case and front-loading proceedings
5.6.4.1 Initial phase of the patent infringement action
The process starts, and the civil action becomes formally pending (“Rechtshängigkeit”), by serving the complaint (Sections 253(1) and 261(1) of the Code of Civil Procedure). Service of process is to be effected either under national rules115 (service on entities or individuals residing or present in Germany), European rules116 or the Hague Service Convention.117 It involves serving the complaint together with the court order setting a term for the defendant to file a response to the complaint (answer) and summoning the parties to the oral hearing (Sections 274(2) and 275(1)). Alternatively, the court can order preliminary proceedings in writing (“schriftliches Vorverfahren”), which is usually done if service is to be effected abroad (Section 271(2)).
If preliminary proceedings in writing are ordered, the defendant must file a notice of defense (“Verteidigungsanzeige”) to avoid a default judgment (Section 276(1) of the Code of Civil Procedure). The term for filing such a notice varies between two and four weeks. Upon filing the notice of defense, the court sets a hearing date. This hearing date is, using a terminus technicus of the Code of Civil Procedure, referred to as “advanced first hearing” (“früher erster Termin”). This term is misleading, however, as the hearing is typically the only oral hearing of the case (Section 275(2)). It is set toward the end of the expected process.
The first-instance proceedings before the regional court, by and large, take one year from the filing of the complaint to judgment, even though the details vary depending on the venue and the current workload in each venue, which change over time. Before the hearing, there is typically at least another round of briefing (reply and rejoinder). In many cases, the parties tend to file further briefs, which is possible even though, in many venues, this is not the bench’s most favored approach.
Certain venues have varied this general process. In Düsseldorf, for example, there can be a further (genuine) early hearing date following the service of process. The purpose of that early hearing is to record the prayers for relief (taking into account comments from the bench regarding the right way to phrase the prayers for relief). Furthermore, the date for the main hearing is set, as are the terms for all the briefs to be filed up to the final hearing date. The procedure of the Regional Court of Munich implements yet another variant, according to which there are two substantive hearing dates. The first hearing occurs right after the filing of the response brief and typically covers claim construction and infringement. The second hearing date is the final point in the process (at least two weeks after the rejoinder) and primarily deals with validity issues (e.g., with the stay motion with regard to ongoing nullity proceedings). The Regional Court of Mannheim generally discusses all relevant questions of the case within a single hearing.
5.6.4.2 Pendency of the action
Whenever pendency of an action is required by other statutes or international treaties, it is of paramount importance to appreciate that a German civil action (including a patent infringement action) is only considered pending upon service of process (Section 261(1) of the Code of Civil Procedure). Previously, this was a relevant point under the previously applicable Brussels I Regulation but this has now been resolved by Article 30 of the Brussels Ia Regulation, which uniformly refers to the filing of action as the decisive point in time. It is, however, still a crucial issue for entitlement actions (Article 61(1) of the EPC) filed with the German courts, particularly with the Munich court (situs of the EPO). For the European patent prosecution to be stayed, those actions need to become “instituted” before the grant of the European patent at issue (Rule 14(1) of the EPC), which is taken as technically “pending” with the meaning of the German Code of Civil Procedure. Thus, pendency must be achieved as early as possible, which is why, particularly when service abroad is at issue (e.g., through the Hague Convention process), filing the entitlement action in a different German judicial branch (e.g., administrative rather than civil) could be recommended to achieve pendency with the filing, rather than with the service.118
5.6.4.3 Basic requirements regarding the admissibility of the action in connection with the prayers for relief
Under the German Code of Civil Procedure, there are certain basic requirements that an infringement complaint must meet in order to be admissible: The complaint must name the parties (plaintiff and defendant) and the court (Section 253(2)(1)). The complaint must set forth the prayers for relief, also referred to as “requests” (“Klageanträge”). The infringement complaint must also set forth all of the specific facts that are required to arrive at the conclusions presented by the plaintiff to be the basis for the requested relief (Sections 253(2) and 138(1)). This includes not only the facts pertaining to standing to sue but also the infringing activities and the defendant’s liability. While issues of law, strictly speaking, do not need to be addressed by the parties (iura novit curia), claim construction, which is considered an issue of law, needs to be addressed to a certain minimum extent in order for the facts establishing infringement to be meaningful. Without a specific infringement mapping (i.e., putting the technical facts in the context of meaningfully explained terms of the claims), the infringement contentions are not sufficiently “specific.” Furthermore, setting aside the formal requirements under Section 253, the success of the proceedings is hinged upon a clear analysis of claim construction and infringement and how well the potentially critical issues are already set forth in the complaint, putting the plaintiff’s case on the right track.
Even though Section 253(2)(2) of the Code of Civil Procedure expressly states that the requests need to be “specific,” the courts are generally still satisfied with the use of the patent claim language for phrasing the requests. However, the case law of the FCJ encourages plaintiffs to specifically adopt certain key features to better caption the specific infringement mapping in the accused device or accused method.119 As a rule, this is no requirement for admissibility, though plaintiffs typically are better off waiting for a formal note from the bench before engaging in this exercise. It is important to realize that, in this regard, using the broader claim language or a more specific language taking up the infringement mapping does not per se affect the scope of the requested relief, as will be explained in the following section.
5.6.4.4 The scope of the action and the relief (the accused device and “Streitgegenstand”)
The relief based on the language of the patent claims is procedurally not tantamount to the scope of protection of the patent-in-suit (as defined in Article 69 of the EPC). On the contrary, the scope is – as a rule – limited to the accused device. “Accused device,” in this sense, is more of a conceptual or abstract term than a tangible term that would be limited to the very products as identified in the complaint by way of, for example, a product number. Under the case law of the FCJ, the accused device is defined by the specific technical characteristics that are referred to and relied upon for the infringement contention (complaint) or holding (judgment) under the asserted patent claim.120 Thus, the accused device does not encompass any and all devices falling within the scope of protection of the patent-in-suit, but its definition extends beyond the very products at issue.
Other products not mentioned in the complaint – and perhaps even unknown to the plaintiff – also (eo ipso) fall in that category if those are identical with respect to the technical characteristics on which the infringement mapping is based.121 Hence, it follows that, if a further product line becomes available during the course of the litigation, the plaintiff does not necessarily need to introduce it into the litigation. A different product line would also be part of the litigation – and form part of the accused device – if the relevant technical characteristics are identical. In this respect, the accused device in patent litigation is tantamount to the “procedural claim” (Section 322 of the Code of Civil Procedure), also referred to as “Streitgegenstand” (subject matter) of the litigation. This is a core feature in German jurisprudence.
The subject matter is defined by both the requests and the facts presented by the plaintiff to justify the underlying legal conclusions. It forms the groundwork for a number of further procedural elements, including the scope of the requested (injunctive) relief that is decisive for subsequent contempt proceedings. It is also relevant for assessing the admissibility of a claim modification during pendency of the action.
5.6.4.5 Modifications of the pending claim
The German process is generally very flexible, and changes can be accommodated even at a late stage of the proceedings. If new facts are introduced that change the “procedural claim” within the meaning of Section 322 of the Code of Civil Procedure, this is considered a “Klageänderung” (claim modification; Sections 263, 264). In a patent infringement case, this is typically the case if a different or modified “accused device” is introduced. It could, for example, be that the very same product as identified in the complaint implements several accused devices because different sets of technical aspects in that product can be invoked for independent infringement mappings of the same patent claims. The same would be true if a different product line was identified during the course of the litigation, and the infringement mapping resorts to technical characteristics whose essence deviates from the products previously identified in the complaint. Such a “claim extension” is very generously admitted into the proceedings. However, if introduced very late into the proceedings, the court could order a new schedule (i.e., push back the final hearing date and extend the terms in order to give the defendant a chance to address those changes).
5.6.4.6 Pleading standards
The facts presented in the complaint for showing infringement need to be sufficiently substantiated: the facts need to be specific, and the plaintiff must be concrete in showing how these facts are considered to realize the features of the asserted independent claims of the patent-in-suit. While no evidence for any of the asserted facts needs to be presented at this stage, there must be a sufficient basis for factual contentions. They cannot present pure speculation. If they do, the defendant does not need to contest the allegation at all – it would be procedurally discounted as insufficiently stated.
If the facts, however, are sufficiently specified, the defendant must react in substance by either admitting or denying (Section 138(2) of the Code of Civil Procedure). This implies that the defendant must specifically deny the individual factual items of the plaintiff’s factual infringement contentions. The defendant cannot just generally deny the factual allegations. It is also not sufficient to argue that the plaintiff’s conclusions as to why the accused device or accused method must work in a certain way (which frequently happens, e.g., in the field of electronics) are flawed, unless the factual allegation pertaining to the relevant characteristic of the device or method itself is expressly disputed. Facts that are not expressly disputed are generally to be deemed as having been acknowledged (Section 138(3)). While it is generally sufficient to just deny a certain factual allegation and not necessary disclose what the pertinent mechanism actually looks like, there are significant exceptions to this procedural rule that are referred to under the keyword of “secondary burden to substantiate” (“sekundäre Darlegungslast”).
While this is a general category of civil litigation, it has become particularly important in patent infringement cases in order to compensate for the lack of a general discovery. Based on the general principle of good faith, this also applies to the rules of civil procedure. The defendant in a patent infringement action is under an obligation to specify how certain aspects that are only known to them and that could only be discovered by the plaintiff with disproportionate effort actually function.122
Furthermore, the defendant’s denial ought to be as specific as the plaintiff’s contention. Thus, if the plaintiff presents a detailed and consistent explanation as to why and how the specifics of the accused device work, the defendant cannot just generally deny that. Rather, the defendant must engage in specific and detailed explanations at the same level. While there are generally limits in terms of equitable considerations (“Zumutbarkeit”) that can also accommodate relying on trade secrets, it is not sufficient to just refer to this without further detail. Furthermore, the defendant can be expected to make use of the legal means to protect confidential information (see Section 5.6.8 of this chapter, which is particularly relevant in connection with the most recent changes to the Patent Act (cf. Section 145a). If anything in this regime does not satisfy specific confidentiality interests, the defendant would need to substantiate this and would need to ask for a separate agreement with the plaintiff.
The same rationale just set forth for Section 138(3) applies to limiting the cases in which the defendant can deny an allegation by referring to their lack of knowledge. While this is generally possible if the facts concerned were neither actions of the party itself nor within its ken (cf. Section 138(4) Code of Civil Procedure), this rule is limited by establishing obligations to procure sufficient information. This is, for example, the case if the defendant has retained a third party to manufacture the product or perform the accused process:123 it cannot work to the advantage of the defendant that they use third parties to leverage its business. Furthermore, a dealer cannot claim to not have any detailed knowledge of the accused device because it is manufactured elsewhere and that the plaintiff should therefore turn to the manufacturer.124 Rather, the dealer must look into the facts – that is, examine the device or turn to the manufacturer for the specifics. The dealer can rely, however, on information from a trustworthy source (e.g., the manufacturer) and, unless the plaintiff shows that the information is flawed, does not need to engage in independent efforts to further explore the facts by examining the accused device.
5.6.4.7 Further briefs
Up to the hearing, the parties typically file at least two rounds of briefs (complaint, response, reply and rejoinder). Usually, there are further briefs exchanged right up to the hearing date, even though the judges do not tend to like this approach. The only practical and effective way to avoid it, however, is for the court to push back the hearing date if the plaintiff files late briefs too soon before the hearing.