5.9.1 Limited de novo appeal
There is an appeal as of right against any final decision of a regional court to be filed with the competent higher regional court as the appellate court (Section 511(1)). Generally, preliminary rulings are not subject to appeal and cannot be “certified” for appeal unless the statute provides for it.182
The appellate court is also a “court of record,” so it is not strictly bound by the factual and evidentiary record of the “trial court.” Thus, the appellate court’s competence is not limited to genuine issues of law (Section 513(1)), but it can and must look de novo into the facts and can take new evidence if needed (Sections 529(1) and 538(1)).183 In 2002, this concept was modified as part of a comprehensive civil procedure law reform:184 the appellant can now only rely on new facts and evidence if there is a good reason for not having introduced those before the regional court (Section 531). Uncontested facts can, however, never be rejected as late-filed. In light of this reform, it is important to ensure that facts and evidence are submitted at the entry-level court, even if they possibly might not be relevant for the decision at that point (e.g., in light of a certain approach in claim construction).
5.9.1.1 Requirements of the appeal and particulars of appeal
The appeal must be filed within one month following the service of the regional court’s fully worded ruling on the losing party or appellant (Section 517). This is a statutory term that cannot be extended. The appeal is lodged by way of filing a notice of appeal with the appellate court (Section 519(1)). The appellant185 must provide “particulars of the appeal” (substantiating the basis for the appeal), which need to be filed within two months following the service of the decision (Section 520(2)). Without the appellee’s consent, that term can be extended by the presiding judge by up to one month.186 The extent to which the judgment is being contested must be set forth in the particulars, as well as a specific petition (request) as to how the judgment is to be modified. If the appellant has only lost in part, the judgment can only be contested to the extent the appellant’s requests were dismissed by the lower court. In such a scenario, both parties can appeal the decision.
5.9.1.2 Cross-appeal
If only one party files an appeal in time, the other party – that is, the appellee (“defendant in the appeal”) – can file a cross-appeal (Section 524). Such a cross-appeal must be filed within the appellee’s term for filing a response to the appeal (“statement of defense in the appeal”; cf. Section 524(2)). This term is important for the plaintiff that won before the regional court and wants to extend the claims on appeal (“modification of the suit filed” on appeal; cf. Section 533) because this is only possible by way of cross-appeal as this requires modifying the requests that were affirmed by the lower court. Such scenarios can, for example, arise if a further patent is to be added to the previous patent-in-suit. Such a claim extension through the introduction of a further patent-in-suit (and corresponding further requests) is also possible on appeal, even in the absence of the defendant’s consent, if it serves judicial economy. Indeed, it can even be required for a plaintiff under Section 145 of the Patent Act to add a related patent if there is a significant overlap in the features of the claims and the pertinent characteristics of the accused device relevant for infringement.187 A cross-appeal can only be directed against the appellant and not against a third party. Thus, it is not possible to add another defendant to the action even though this is possible under the general doctrine of claim modification (Sections 263 and 533).
5.9.1.3 Appeal process
The structure of the proceedings before the appellate court is similar to that of the proceedings before the lower court (Section 525). Thus, there is typically a further reply and rejoinder brief and only one final hearing unless the taking of evidence becomes necessary. With regard to the taking of evidence, the appellate courts are generally more prone than the lower courts to take expert evidence in complex matters. The structure of the hearing is also similar. Different from the practice of the regional courts, the appellate courts typically rule on the day of the hearing. While a remand to the lower court is possible, this is the exception and limited to certain cases in which the lower court only ruled on admissibility or in which the proceedings before the court of first instance were subject to a material irregularity (Section 538(2)). The general rule is that the appellate court decides “on the matter as such,” – that is, it makes a full decision on the merits of the case (Section 538(1)). This decision can be a judgment dismissing the appeal or affirming the appeal in modifying the judgment based on the appellant’s specific petitions (requests). It can also partially dismiss or affirm the appeal in that manner. The decision, however, does not need to be a judgment. It can also be an order for evidence or an order to stay the proceedings pending a nullity action. The appellate court generally exercises its discretion to stay the proceedings pending the nullity action or opposition against the patent in the same way as the court of first instance.
If, however, the plaintiff prevailed before the regional court – so that the plaintiff is the defendant in the appeal and therefore disposes of an enforceable injunctive relief – the appellate court ought to lower the standards for staying the case.188 The difference in this approach becomes clear when focusing on the consequences of enforcing an injunction that is subsequently reversed. If a first-instance decision granting permanent injunctive relief is reversed by an appellate judgment, the plaintiff is liable for damages the defendant suffered by the judgment being enforced (Section 717(2)). This is not the case for the enforcement of any relief granted or affirmed by an appellate judgment. The obligation of the plaintiff to reimburse the defendant in these cases is only determined by the rules of unjust enrichment, not damages (Section 717(3)).
5.9.1.4 Motions for a provisional termination of the enforcement of injunctive relief pending appeal
Motions for a provisional termination of the enforcement of injunctive relief have become practically very important in patent infringement matters. Injunctive relief is a relief as of right, so the court of first instance (even under the recently amended law), once infringement has been ascertained, does not have a general discretion with regard to ordering injunctive relief. Thus, injunctive relief is still the rule. However, the defendant can, upon filing the notice of appeal, turn to the appellate court requesting that the enforcement of the injunction be provisionally stayed (pending appeal; cf. Section 719(1)). This remedy has been frequently used by defendants in patent infringement matters. While originally such provisional terminations were absolutely exceptional, over the last decade, the appellate courts have been more prone to step in. This requires a determination that, based on a prima facie analysis, there are sufficient prospects for the appeal.189 Furthermore, it requires balancing the equities of the matter in terms of weighing the plaintiff’s interests in enjoining the defendant against the potentially irreversible harm inflicted on the defendant when enforcing the injunction. Thus, genuine equitable considerations that are typically considered in the Anglo-American system when making the decision whether to grant the injunction can be accommodated in the German system in connection with such a stay motion filed with the appellate court. However, one must bear in mind that notwithstanding the appellate courts’ increased awareness and sensitivity in this regard, such provisional terminations are still the clear exception. The plaintiff’s interest in enforcing the injunction generally outweighs that of the defendant, and the defendant is protected by way of the security bond that the plaintiff had to post to make the judgment enforceable pending appeal.