Family Affairs - BGH X ZR 77/10 "Treppenlift"

Family Affairs - BGH X ZR 77/10 "Treppenlift"

Hitherto, the german judicial system had the reputation that it's first instance has the character of being closer to alternative dispute resolution (ADR) than to a real trial. Indeed, the possibilities to file furhter arguments, requests or evidence have been fairly generous as compared to e.g. those of our friends in good old England.

Indeed, the efforts made in the first instance to convice the judge have sometimes been fairly poor because the parties felt that it would be sufficient to get their stuff together when things are getting serious in the 2nd instance.

In an attempt to tighten up the procedure, the general procedural rules (ZPO-Zivilprozessordnung) has been amended as of 2002 and similar amendments have been introduced in §83 and §117 of the patent act (PatG) as of October 2009 for the nullity procedure. In a nutshell, arguments, requests and evidence is considered late if it could have been filed earlier.

Still, some of my colleagues are not yet very used to this and the case-law, in particular in patent matters, is not yet very detailed.

The decision “Treppenlift” BGH X ZR 77/10 is, as far as I know, one of the first decisions where the supreme court (BGH) has overruled the decision of the 2nd instance upper district court which considered a defence argument as being late-filed.

The case at issue had 2 defendants, one of which was a natural person A and the second was a a corporate body B, the manager C of which was married to A. A argued in the 2nd instance that the original inventor of the patent in suit was actually her husband C and that the invention was unlawfully usurpated by the plaintiff.

However, the right to raise the unlawful usurpation as a counterclaim is limited to the injured party C, who was, himself, not party of the infringement procedure and who had transferred the right to enforce the rei-vindication claim to A only after the completion of the 1st instance.

The upper district court found that, given the close relation between C and the defendants, this defence argument could have been filed earlier. After all, C had been personally attending to the procedure, although not as a party but only in his function as a representative of a party.

The BGH found that this reasoning was incorrect because there was no duty to C to transfer his rights at a given time and that A and B could not have argued with the unlawful usurpation prior to this transfer. As a consequence, the late-filing was due to the late completion of this transfer of rights rather than to any negligence of the parties.


In wonder if the denfence that late-filed material had been in the possession of a close relative will work for other cases as well.

New Option to Challenge 2nd Instance Litigation Decisions in Germany

The German double-tracked system of litigation suits held at the lower and upper district courts on the one hand and a parallel nullity suit at the German Patent Court and the Federal Court of Justice (BGH) on the other hand is facing changes. The former practice of the district courts to stay the litigation procedure until the ruling in the nullity procedure has reached legal force is gradually superseded by an accelerated practice of deciding on the infringement without waiting for the ruling in the nullity suit in cases where the district court holds that the invalidation of the patent is improbable.

The 2nd instance decision in the litigation suit may be revised by the BGH only in exceptional cases where the Upper District Court has admitted such a revision, which should be done e.g. in cases interests of the general public beyond the individual case are affected. The decision not to admit a revision may be appealed within a term of one month and the grounds for the appeal have to be supplied within a term of two months from the date of notification of the decision.

The BGH has now decided in the case “Crimpwerkzeug III” (X ZR 193/03) that a ground for admitting the revision is given as soon as the BGH bases its decision in a nullity appeal procedure onto an interpretation of the claim deviating from the interpretation used by the upper district court in the judgement in a decisive point. Moreover, if this ground occurs after the expiry of the delay for filing the grounds for the appeal against the non-admission, it may be enforced by means of a request for restitutio in integrum.

In the case under dispute, the alleged infringer had been sentenced for infringing a patent against which a nullity suit was pending. The decision not to admit a revision was appealed at the BGH, who decided to stay this appeal procedure until the nullity suit, which was pending at the BGH likewise, was terminated. The Patent was upheld mainly by arguing that the point-like nature of “supporting points ... formed as thrust faces” was the clue to inventiveness, whereas the district court had held that the larger thrust faces of the allegedly infringing product could still be interpreted as “supporting points” despite of them clearly not being point-like.

According to the BGH, the impossibility to resolve such a discrepancy between the claim interpretations would lead to a loss of confidence into the jurisprudence as a whole and into the German double-tracked system in particular. This entails a sustainable effect of the decision on the interests of the general public beyond the individual case being sufficient for admitting the revision.

This new loop-hole may be opened by the underlying party in a 2nd instance litigation procedure with a co-pending nullity suit by filing an appeal against the decision not to admit the revision and to request the BGH to stay the appeal procedure until the termination of the nullity suit. Additional grounds focusing on discrepancies in the claim interpretation employed by the two courts may then be handed in later by requesting a restitutio in integrum.