More money at last! – New case law on damages for patent infringements

The year 2024 is still young. It is already becoming apparent that it will be a year in which landmark court rulings on the amount of damages will be handed down. Judgments in so-called "amount proceedings", in which the exact amount of damages is disputed, have been rare in Germany to date. It is therefore all the more pleasing that some aspects will be clarified by the highest court this year.

I.   BGH "Upholstery conversion machine"

The German Federal Court of Justice (“BGH”) kicked things off with the landmark decision "Polsterumarbeitungsmaschine" (English: Upholstery conversion machine, case no. X ZR 30/21). The issue here was whether the patent infringer must also hand over profits that it has made from non-infringing transactions, provided that it was able to make these transactions due to a previous patent infringement. This concerns, for example, profits from maintenance contracts, spare parts and consumables. Yes, said the BGH, even if these additional and follow-up transactions were made after the expiry of the patent term. It is decisive and sufficient that the profit was made possible by the patent infringement. This decision deserves approval. It is in line with the law and takes economic reality into account.

II.   Further BGH Decision to Follow

The German Federal Court of Justice will soon issue another decision on the amount of damages (case no. X ZR 104/22), in which we are involved as counsel. The issue is whether the patent proprietor can demand the surrender of profits if the infringer based in Germany has offered a patent-infringing system in Germany and then constructed this system in a patent-free country. The Regional Court and the Higher Regional Court of Braunschweig were of the opinion that the patent proprietor was left empty-handed in such a constellation, even if the infringer received the proceeds in his German bank account. We consider this decision to be wrong and asked the BGH lawyer Dr. Reiner Hall to filea petition for leave to appeal.. With success: In its decision of January 23, 2024, the Federal Court of Justice allowed the appeal, hopefully deciding on the merits soon and remaining true to its line.

III.   Scientific Discussion

Last but not least: We have contributed an article on this topic to the commemorative publication for Prof. Dr. Thomas Kühnen: "Calculating the amount of damages in cross-border cases". This commemorative publication will be presented at the ceremony on February 2, 2024. In this publication, we explain why a profit that could be achieved with the help of foreign intermediate steps must also be surrendered if the process leading to the profit was set in motion by a domestic patent infringement.

IV.  Outlook and Further Information

The topic of "calculation of damages" will therefore be present in legal practice and legal scholarship this year.

Upon request (to patent@heuking.de), we will be pleased to send them free of charge:

• a copy of the BGH decision "Polsterumarbeitungsmaschine" (file no. X ZR 30/21),
• a tabular evaluation of numerous German court decisions on the calculation of the amount of damages for patent infringement.

We will also report on the outcome of our BGH proceedings. For regular information on patent law topics, please follow us on LinkedIn: Patent@HEUKING.