Abstract

What is the law good for if it cannot be enforced? This question is currently virulent in patent law, especially when it comes to the enforcement of injunctive relief claims. From the German perspective, a question arises: does a patent infringement have to automatically result in an injunction (as is the situation currently according to Sec. 139 of the Patent Law Act) or should exceptions be made in special cases? In particular, the automotive industry and also the IT sector demand a modernisation of this provision by introducing a proportionality test, as even the smallest patentable components in networked products can lead to the entire production being blocked in the event of a successful injunction action. Similar problems exist in US patent law. The enforceability of Czech patent law also faces challenges that need to be solved. For this reason, the fifth seminar on the topic ‘Enforcement of Patent Law in Civil Proceedings’ took place on 26 November 2019 at Charles University Prague.

I. Introduction to the topic

Coming together is a beginning, staying together is progress, working together leads to success.’ (Henry Ford). This success is reflected in the fifth bi-national seminar to discuss certain – so to speak – ‘hot topics’ of Intellectual Property law. Therefore it was a great pleasure for Dr. Tomáš Dobřichovský1 to open the seminar of Charles University Prague and the Institute of Intellectual Property, Technology Law and Media Law (IGETeM). While the previous seminars had focused above all on theoretical issues,2 this seminar was an opportunity to discuss issues which are currently challenging in practice. The first panel dealt with injunction claims under German and US patent law. Benjeman von Rueden3 gave the first presentation, on the topic ‘Balancing the equities: Injunctive Relief after eBay v MercExchange, LLC’. This presentation analysed the status of the discussion on the basis of the case law from the US perspective. Subsequently, Dr. Sven Hetmank4 dealt with injunction claims under German patent law, focusing on the topic ‘Injunctive Relief in German Patent Law and under the UPCA’. In this regard, he presented, primarily, the Heat Exchanger decision issued by the German Federal Court of Justice and pointed out its impact on the practice.5 The second panel focused on the practical aspects of the enforcement of patent claims in Czech patent law. The panel was opened by a lecture by Dr. Petr Holý,6 who provided insights with regard to ‘Practical Aspects of the Enforcement Directive Application in the Czech Republic’. The second panel was then concluded by a lecture of Dr. David Petrlík on the subject ‘Intensity of Judicial Review in the Czech Patent Cases’. In conclusion the results and questions were discussed in a plenary under the direction of Dr. Dobřichovský.

II. Balancing the equities: injunctive relief after eBay v MercExchange, LLC (Benjeman von Rueden)

At the beginning of his presentation Mr. von Rueden differentiated between monetary damages and the injunctions when it comes to patent protection. He then focused in his remarks on the latter. In addition to the International Trade Commission of the United States, the main emphasis of his presentation was on the procuring of injunctions before federal district courts. First, he briefly traced the stages of appeal in US law. He then discussed the eBay v MercExchange case,7 which concerned a business method patent of the injured party (MercExchange) which had been infringed by eBay and Half.com. The unique feature of this case was the decision of the District Court, as the judge did not grant an injunction to be followed by a jury determination of infringement, which was contrary to the common practice. In the next instance, the Federal Circuit Court of Appeal declared that it was the rule that injunctions should be liberally granted absent exceptional circumstances and thus overturned the denial of the injunction. The Federal Circuit’s instruction to issue an injunction was further appealed and the Supreme Court had to decide on the question. The Supreme Court’s ruling therefore dealt with the advantages and disadvantages of routine injunctions and came to the following conclusions: both § 261 and § 154(a)(1) of 35 USC speak in favour of routine injunctions. § 261 stated that ‘Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefore.’ § 154(a)(1) states:

‘Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, of the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.’

On the other hand, § 283 of 35 USC states that:

‘The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.’

According to the Supreme Court, the general fairness aspects should also be taken into account. The court concluded that granting of the injunction is subject to the following four conditions, which must be proven by the plaintiff:

  1. the plaintiff has suffered an irreparable injury;

  2. remedies available at law (money damages) are inadequate to compensate for that injury;

  3. considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted;

  4. the public interest would not be disserved by a permanent injunction.

The first two conditions are often addressed together, as they are related. An irreparable injury is present or money damages are inadequate, if, for example, the infringed party and the infringing party are direct competitors, thus an injunction is necessary to prevent loss of market share, or prospective irreparable harm is usually required. The first two factors may prove difficult to satisfy if the infringed party does not utilise the invention or the injured party shows willingness to license. With regard to the third aspect the question arises of how much the infringing party is harmed by an injunction, and respectively how much the infringed party is harmed by no injunction being granted. Points to consider when answering the question are, for example, if there is a small benefit compared to paralysis of business, if the balance of power is comparable to a ‘David vs Goliath’ scenario or how central is the product to the business of the plaintiff or the defendant. In addition, a sunset period8 can be used to tailor an injunction. The last aspect ‘Public interest would not be disserved’ serve to weigh the benefit to public against the benefit to the infringed party. In this respect Mr. von Rueden pointed to the double negative wording. In particular, the fact that injunctions incentivise research and development must be taken into account and can justify an injunction, whereas the points that the public is served by diversity of products or the public may be harmed by rapid removal of products from the market are not taken into account. As an example of the last point Mr. von Rueden cited the Johnsen & Johnsen Vision Care, Inc. v CIBA Vision Corp. case,9 which involved the sale of contact lenses where the general public had already developed trust in the product. In this case, the public interest would have been disserved if the Court had ruled in favour of an injunction.

Mr. von Rueden ended his presentation with several statistics regarding injunctions and gave an overview of the effects of the eBay decision. After evaluating nearly 200 cases, it was determined that in 70% of the cases an injunction was granted by the district court.10 Of the injunctions granted, 88% were subsequently affirmed on appeal, while 53% of denied injunctions were affirmed.11 Notable exceptions to the trend are that patent assertion entities overwhelmingly tend to receive monetary damages only. Injunctions are less often granted in matters involving medical devices. In conclusion, Mr. von Rueden noted that: (i) the party seeking an injunction must address the four equitable factors; (ii) prospective harm may be crucial; and (iii) if an injunction is granted, it is likely to be affirmed on appeal.

III. Injunctive relief in German patent law and under the UPCA (Dr. Sven Hetmank)

Following the lecture by Mr. von Rueden, Dr. Hetmank gave an overview of the German perspective. He divided his presentation into four parts: (i) Germany’s ‘automatic injunctions’ under dispute; (ii) the leading Heat Exchanger case; (iii) the legal framework in European and German law; and, finally, (iv) whether future case law in Germany should switch from ‘automatic injunctions’ to proportionate remedies.

For the first part, Dr. Hetmank referred to the wording of Sec. 139 of the Patent Law, according to which ‘[a]ny person who uses a patented invention contrary to Secs. 9 to 13 may, in the event of the risk of recurrent infringement, be sued by the aggrieved party for cessation and desistance.’ He pointed out that the courts interpreted the term ‘may’ very strictly, with the result that an injunction is granted almost automatically if a patent infringement has occurred. The discussion is thus similar to the situation in the United States, which is particularly problematic in the above-mentioned ‘David vs Goliath’ cases. In this respect, Dr. Hetmank posed three questions: (i) would an injunction always be the fair and adequate response? (ii) should it be appropriate to switch from almost automatic injunctions to proportionate remedies? and (iii) should courts grant more individually tailored remedies? To answer those questions he focused on non-practicing entities (NPE, also known as ‘patent trolls’) and complex products. By contrast, he omitted the issue of public interests, e.g. in cases of essential pharmaceuticals, and standard essential patents (SEP).

First, Dr. Hetmank focused on the Heat Exchanger decision12 of the Federal Court of Justice, in which the chamber had to decide on air slots in the driver’s seats of convertible cars. The heating systems in the patent claims are inserted into the backrests of the seats and essentially consist of a bladed wheel-shaped fan, a PTC heating element (PTC = Positive Temperature Co-efficient) and a special air duct. An air flow generated by the blower is guided through the PTC element and heated the exits in the neck area of the vehicle occupants. The patent claim 1 states ‘heating system, which has – in contrast to usual vehicle heating and air systems – a separate extra-heater, including a distinct heat exchanger.’ Dependent claim 3 specifies that heating wires are additional means of heating. The infringer used a wheel-shaped fan, a PTC heating element (which are equal to heating wires) and a special air duct. The first and second instance courts13 dismissed the complaints due to lack of infringement. The courts held that a comparison of claims 1 and 3 made clear that the patent-in-suit differentiates between the terms ‘heat exchanger’ (used in claim 1) and ‘heating wire’ (used in claim 3). According to the courts, the defendants’ heating system did not include a ‘heat exchanger’ as claimed in claim 1. The Federal Court of Justice, on the other hand, came to the conclusion that there was at least an infringement under the doctrine of equivalents.

The second question was if it is necessary to grant the defendants a ‘use-by’ period, which the Federal Court of Justice denied. Injunctive relief must generally be available without any restrictions. Such restrictions can be accepted only in very exceptional cases (Sec. 242 of the German Civil Code: Performance in good faith), for instance if the economic impact of an immediate enforcement of injunctive relief would lead to severe consequences for the infringer. In the specific case the defendants’ heating system was not an essential component because it leaves the core usability of the vehicle unaffected. The defendants did not show any goodwill by reaching out to the plaintiff in order to enter into a licence agreement. On the basis of the court’s considerations Dr. Hetmank concluded that a limitation of the effect of a patent by granting a use-by period can only be justified if the economic consequences of immediate compliance with an injunction to cease and desist hit and disadvantage the infringer in the individual case due to special circumstances beyond the impairments associated with its claim as intended to such an extent that the unconditional prohibition appears unreasonable. Dr. Hetmank then assessed the Heat Exchanger decision in respect of Art. 41(2) of TRIPS,14 Art. 3(2) of Directive 2004/48/EC15 and Art. 12 of Directive 2004/48/EC.16 He also took into account Art. 63 of the UPCA,17 but came to the conclusion that there is no indication as to how interests should be weighted.

As his last point he raised the question of whether future case law in Germany should switch from ‘automatic injunctions’ to proportionate remedies. First, he stated that cease-and-desist claims should remain the rule for patent infringements and should not become an exception requiring a specific justification. It is necessary to find the most accurate ‘market price’ of a patented invention which provides for the most adequate reward and incentive for the inventor. Second, he noted that not all peculiarities of US law are transferable to EU and German law because the costs of law enforcement are lower and rights can be enforced more quickly. Moreover, damages under German patent law are much lower, following a licence analogy and not the approach of what are known as ‘treble damages’. Otherwise damages without injunction might be insufficient because the entitled party regularly only receives from the infringer what the infringer would have had to pay anyway within the framework of a licence. Third, Dr. Hetmank stated that courts should nevertheless further expand their discretion. Potential criteria for limiting injunctive relief could be: (i) would the loss suffered by defendant be out of proportion to an appropriate license fee? (ii) is the invention one of many which are embodied in the product? and (iii) how easily could the patent infringement have been detected? By contrast, the fact that an ‘NPE’ is suing should probably not be a criterion, because NPEs are compatible with the patent system.

IV. Practical aspects of the application of the Enforcement Directive in the Czech Republic (Dr. Petr Holý)

In the first contribution related to Czech civil proceedings, Dr. Holý focused on three essential aspects of the application of the Enforcement Directive18 in the Czech Republic.

First, he analysed the conditions under which it is possible to grant a preliminary injunction. He highlighted that, as in many other legal systems, the Czech courts have discretion with regard to granting such injunctions and they decide based on, in particular, the criterion of urgency.19 In this respect, the courts usually take into account three circumstances, i.e.: (i) whether the infringement is still pending; (ii) whether the plaintiff reacted timely and adequately after the discovery of the infringement; and (iii) whether the plaintiff made an attempt to find an extrajudicial solution prior to the court application.

Regarding the first aspect Dr. Holý stressed that pending infringement is usually considered as a sufficient reason for issuing a preliminary injunction because the potentially caused damage is still increasing. By contrast, if the infringement has already ceased, the court will usually not grant an injunction, unless the plaintiff demonstrates that the defendant will probably repeat the infringement and a preliminary injunction may be a means to prevent this repetition. The plaintiff should file the application for preliminary injunction within days, at the most weeks, after the discovery of the infringement. After this deadline the court will usually consider that there is no urgency and it will refuse to grant an injunction. The situation is different only if the plaintiff used this period for extrajudicial negotiations without knowingly tolerating the infringement. A preliminary injunction cannot be granted during an appeal procedure. The appeal court can only repeal the negative decision of the court of the first instance, but it cannot change that decision and issue a preliminary injunction. Furthermore, the first instance decision may lack any statement of reasons when it fully accepts a request for a preliminary injunction. By contrast, it must contain such reasons when it dismisses or only partially accepts a request.20

Second, Dr. Holý focused on the possibilities which a rightholder has in order to acquire information on the infringement. He noted that in patent infringement cases one of the biggest challenges is assessment of the scope of the infringement and the corresponding damage. The rightholder is usually able to detect single or few cases of the infringement but it is difficult for him to have a full overview thereof. For this purpose, the rightholder can have recourse to Sec. 3 of Statute No. 221/2006 Sb., which implements the Enforcement Directive and according to which a third party must give to the plaintiff information about the scope of the infringement. This obligation is also applicable to the defendant itself.21 However, when defendants are in practice requested to provide information, they usually do not react, they claim that they do not have any information or they provide information which is incomplete or useless. Contacting their business partners – even when such persons are known – is not of much help either, as it is usually the defendant who holds the useful information. In these circumstances the most efficient approach is to file directly to the court an application containing all the claims, namely a request for an injunction ordering the ceasing of the infringement, a demand for information and a claim for compensation of damage. In so doing the plaintiff requests the court to deliver only one decision or, where appropriate, to decide on the damage claim in separate proceedings. In this respect Dr. Holý drew attention to the fact that the applicable rules do not specify the scope of the information which can be required from a defendant. Therefore, when the court approves the claim for information it should clearly describe the documents which a defendant must provide. The defendant will then have to prove that the information was complete and precise and, if it fails to comply, it may be subject to pecuniary sanctions.

Third, Dr. Holý focused on calculation of the damage caused by the patent infringement. He highlighted that rightholders sometimes wrongly assume that it is sufficient to prove the existence of damage. However, they must bear in mind that, as in all other cases, they must demonstrate the compliance with all the general conditions of responsibility. This means that, in addition to breach of law and existence of damage, they must also demonstrate a causal link. In this context Dr. Holý recalled that there are two types of damages in patent infringement cases: immaterial damage and material damage. For immaterial damage the typical remedy is satisfaction, which is usually also immaterial, such as apology or publication of the judgment. Regarding the material damage, there are three main categories: (i) reasonably spent costs; (ii) real lost profit; and (iii) hypothetical lost profit. In practice, reasonably spent costs usually do not present any significant problems. By contrast, the parties sometimes misunderstand the difference between real lost profit and hypothetical lost profit. The first notion includes the profit which the rightholder would have acquired with a reasonable level of certitude if there had not been any infringement. It is usually difficult for a plaintiff to prove such profit. This demonstration can, however, be facilitated if the plaintiff has pending licence agreements. In such a case, the lost profit can be calculated on the basis of royalty fees which the defendant would have paid under those agreements.22 The notion of hypothetical lost profit includes compensation of the profit which the rightholder would have received in a fair trade under similar circumstances. For such a claim it is not required to prove real damage, but the plaintiff must prove typical profit. When the plaintiff does not have any pending licence agreements, it can rely on the typical royalty fee in the sector in question. The plaintiff may also invoke Sec. 2955 of the Czech Civil Code and Sec. 138 of the Czech Civil Procedure Code, according to which, when it is impossible to determine exactly compensation for damage, the court shall determine it according to all the circumstances of the case. However, such an approach is very rare and courts are very reserved to define the damage on the basis of these provisions.

V. Intensity of judicial review in Czech patent cases (Dr. David Petrlík)

In the second contribution related to Czech civil proceedings Dr. Petrlík focused on intensity of judicial review in Czech civil patent cases. First of all, he recalled that the patent courts should follow in substance five steps when deciding on an alleged infringement of a patent. They should: (i) examine the validity of the patent when a party challenges it; (ii) determine the features of the claim which concerns the alleged infringement; (iii) establish the features for which the parties agree that the allegedly infringing product has them; (iv) perform the literal interpretation of the disputed features of the patent; and (v) if the features of the said product do not fall within the literal meaning of the claim, assess whether these features constitute the technical equivalents thereof.

Unfortunately, Czech civil courts do not often follow these steps. In particular, they tend not to carry out detailed comparisons of features of patents and of the allegedly infringing products.23 They prefer to make a general reference to an expert opinion which assessed this question and they use it to conclude whether the product concerned is or is not within the scope of the patent.24 Dr. Petrlík highlighted that such an approach is unlawful for two reasons. Firstly, a judgment applying this approach does not contain a sufficient statement of reasons. Secondly, by acting in such way the court de facto delegates judicial power to experts.25 With regard to this second point, it is already problematic that civil courts sometimes seek the assistance of experts in what is known as the field of ‘patents and inventions’. Appointment of experts with such ‘expertise’ is questionable on its own. An expert should have expertise in the technical field in question in order to assess how a person skilled in the art would understand the features of the claim. A general expertise in ‘patents and inventions’ is not useful because such a person cannot be considered as a person skilled in the art in question, such as, for example, physics or chemistry. The court itself must have the expertise with regard to ‘patents and inventions’. Furthermore, civil courts ask these experts inappropriate questions. The court should ask the expert how a person skilled in the art would understand a feature and, on that basis, the court should itself conclude whether the product is in the scope of the claim. However, civil courts ask experts to conclude directly whether allegedly infringing products are in the scope of patent claims.26 Finally, courts accept the conclusions of experts without making such conclusions to a sufficiently critical assessment.27 The courts should make their own conclusion and use expert opinions only as a relevant basis of the decision, assessing in particular the credibility of the opinion. These issues also involve the assessment of technical equivalence of features.28 In this respect, the High Court of Prague justified e.g. its conclusion on equivalence by stating that ‘the expert sufficiently explained the theory of technical equivalents’.29 However, it is not for an expert but for the court to define this theory, define the criteria and assess them.

As regards the validity of patents, Dr. Petrlík highlighted that in Czech patent cases the parties do not often raise any objections of invalidity.30 Furthermore, even when they raise such an objection, the courts sometimes disregard it and refuse to examine it.31 However, since such an objection constitutes one of the main defences of the defendant, the court should either stay the proceedings and await the decision of the Office of Industrial Property on validity or make itself an assessment of whether the patent is valid.

On the other hand, the Municipal Courts and the High Court went to an opposite extreme in some decisions when they extended significantly the protection of utility models – and analogously of patents – by a conception that a competitor may not use a product having most of the features of the claim. For them this constitutes anti-competitive conduct because the products are similar and the consumers may confuse such products.32 Such an approach seriously affects the very principles of industrial property and legal certainty, because the undertakings cannot understand the boundaries of intellectual property rights.

Dr. Petrlík concluded that the most serious issue facing current Czech civil patent case law is a very low intensity of judicial control because the courts rely blindly on the opinions of experts, even for the crucial question of whether an allegedly infringing product is within the scope of a patent claim. What is worse, these experts do not have the relevant expertise. The main reason for this practice is that there is an insufficient number of patent cases which would make it possible for judges to build up a solid expertise in their assessment of patent infringements. On the other hand, despite the low number of cases, the Czech administrative courts and the Office of Industrial Property have adopted a more appropriate approach. They make a more detailed comparison of features of the claims,33 they rely on experts only to a certain extent and they have both defined the doctrine of equivalents.34 Dr. Petrlík expressed a hope that the civil courts will follow this example in the years ahead.

VI. Discussion

The discussion was driven by practical questions about proving facts and the use of expert opinions. The first question was about the extent of proof in the United States and Germany and in particular about the distribution of the burden of proof. Mr. von Rueden explained that, in contrast to German law, the jury decides in the United States about the infringement, whereas the judge rules on injunctions. The judge has to balance the given facts to come to a ‘fair’ decision, where the four factors mentioned in Mr. von Rueden’s presentation are seen as four ‘elements’ to make it clear that this is an individual test that must be proven in each individual case. The decision is often preceded by a discovery period, in order to give the jury the necessary knowledge. During this period the plaintiff must present information and evidence. Both parties can also hire experts to inform the jury about the factual circumstances. This is often described as a ‘battle of the experts’. At the same time, various interests and different priorities are pursued, bearing in mind that the defendant generally wants to extend the period for as long as possible. The discovery schedule can therefore easily last up to 30 months, so that the proceedings can be prolonged. Another question concerned the possibility of forum shopping in the United States. Mr. von Rueden referred to the so-called ‘rocket docket’, which refers to courts that are known for the speedy disposition of cases. This is notably the case for the United States District Court for the Eastern District of Texas. If the case-relevant facts also involve trade secrets or if they are affected, it is necessary to involve a neutral person who gathers the facts to inform the jury and the judge but keeps secret what he sees. A subsequent question concerned experts and their opinions in the decision-making process. Dr. Hetmank pointed out that although a judge uses the expert opinions, he/she draws his/her own conclusions in the decision. By contrast, according to Dr. Petrlík and Dr. Holý, Czech courts rely much more on expert opinions.

VII. Concluding remarks

In his concluding remarks, Dr. Dobřichovský summarised that special attention must be paid to the question of patent law enforcement in civil proceedings. It remains to be seen to what extent a rigid, automated injunction can still lead to satisfactory results in practice or must be changed with regard to proportionality aspects. The considerations from US patent law are the first starting points which could be taken into account in a reform of Sec. 139 of the German Patent Law to make it more flexible. From the Czech perspective, in addition to the question of how to obtain information about an infringement and how to calculate the damages in a specific case, problems arise with regard to the use of experts. When it comes to expert opinions, it must be ensured that the court does not blindly rely on these opinions and instead builds its own solid expertise in assessment of patent infringement. This in turn requires a development in case law.

Aside from today’s topics, there is still much room for further questions and discussions but the comparison of Czech, US and German patent law has provided a good first insight into the practice and has shown first approaches to solutions.

Footnotes

1

JUDr, PhD, lawyer and assistant professor at the Institute of Copyright, Industrial and Competition Law of the Faculty of Law of Charles University in Prague.

2

The previous conference reports have been published in: GRUR Int 2018, 1020 ff; GRUR Int 2019, 560 ff and GRUR Int 2020, 1 ff.

3

Patent attorney (US) and attorney-at-law, partner at Viering, Jentschura & Partner mbB, Germany.

4

Habilitand at the Institute of Intellectual Property, Technology Law and Media Law (IGETeM), TU Dresden, attorney-at-law.

5

For an overview of the current discussion see, for example, Franziska Kurz, Hanno Magnus and David Berger, ‘Enforcing Patents Smoothly: From Automatic Injunctions to Proportionate Remedies. Tagungsbericht über die Veranstaltung am 22.3.2019 an der Friedrich-Alexander-Universität Erlangen-Nürnberg’ GRUR Int 2019, 658 ff; Sascha S Zhu and Marcel Kouskoutis, ‘Der patentrechtliche Unterlassungsanspruch und die Verhältnismäßigkeit. Die vollstreckungsrechtliche Lösung über die Anpassung des § 712 ZPO im Patentgesetz’ GRUR 2019, 886 ff; Martin Stierle, ‘Der quasi-automatische Unterlassungsanspruch im deutschen Patentrecht. Ein Beitrag im Lichte der Reformdiskussion des § 139 I PatG’ GRUR 2019, 873 ff; Ansgar Ohly, ‘„Patenttrolle” oder: Der patentrechtliche Unterlassungsanspruch unter Verhältnismäßigkeitsvorbehalt? Aktuelle Entwicklungen im US-Patentrecht und ihre Bedeutung für das deutsche und europäische Patentsystem’ GRUR Int 2008, 787 ff.

6

Attorney-at-law and patent attorney at Rott Růžička Guttmann a spol.

7

eBay Inc. v MercExchange, LLC 126 S.Ct. 1837 (USA, 2006).

8

Meaning a provision of a law stating that it will automatically be terminated after a fixed period.

9

712 F. Supp. 2d 1285 (M.D. FL 2010).

10

Ryan T Holte and Christopher B Seaman, ‘Patent Injunctions on Appeal: An Empirical Study of the Federal Circuit’s Application of eBay’ 92 Wash. L. Rev. 145 (2017).

11

Holte and Seaman (n 10) 145.

12

BGH, GRUR 2016, 1031, 1031 ff – Wärmetauscher.

13

LG Mannheim, judgment of 17 January 2012, 2 O 112/07; OLG Karlsruhe, judgment of 7 August 2013, 6 U 12/12, GRUR-RS 2016, 15028.

14

‘Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.’

15

‘Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.’

16

‘Member States may provide that, in appropriate cases and at the request of the person liable to be subject to the measures provided for in this section, the competent judicial authorities may order pecuniary compensation to be paid to the injured party instead of applying the measures provided for in this section if that person acted unintentionally and without negligence, if execution of the measures in question would cause him/her disproportionate harm and if pecuniary compensation to the injured party appears reasonably satisfactory.’

17

‘Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement. The Court may also grant such injunction against an intermediary whose services are being used by a third party to infringe a patent. Where appropriate, non-compliance with the injunction referred to in paragraph 1 shall be subject to a recurring penalty payment payable to the Court.’

18

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights.

19

Judgment of the Constitutional Court of 8 October 2019, II. ÚS 2471/19.

20

Judgment of High Court of Prague in case 3 Cmo 184/2018.

21

Judgment of the Supreme Court of 28 February 2012, 23 Cdo 4407/2011.

22

ie 19 Cm 148/2008 – EUR 5,000 for each even incomplete month.

23

See, for example, the judgment of the Municipal Court of 22 March 2011, 19 Cm 154/2008 – rod fastening device.

24

This can be observed in, for example, the judgment of the High Court of 5 October 2015, 3 Cmo 351/2014 – Hop-up Chamber in which the High court ruled that it follows from the expert opinion that the product in question had 16 of 18 features, without explaining which ones are the same and which ones are different.

25

See judgment of the Municipal Court of 26 May 2016, 15 CM 10/2013-448 – Schmaky in which the Municipal Court identified an inappropriate expert who was an expert in ‘patents and inventions’ but not in the chemicals sector. On appeal, the High Court did not criticise the Municipal Court for this, even though the appellant questioned it. Furthermore, the Municipal Court incorrectly defined the question to be answered by the expert and the courts relied unconditionally on the expert’s conclusions without carrying out their own independent analysis of whether the substance was a technical equivalent and whether the product therefore fell within the scope of the patent.

26

See the judgment of the Municipal Court of 18 March 2015, 19 Cm 134/2010-461 – fluidised bed boiler and the judgment of the High Court of 21 June 2016, 3 Cmo 272/2015 – fluidised bed boiler, 4.

27

See, for example, the judgment of the Municipal Court of 26 May 2016, 15 CM 10/2013-448 – Schmaky and the judgment of the High Court of 23 May 2017, 3 Cmo 234/2016-528 – Schmaky.

28

ibid.

29

See the judgment of the High Court of 23 May 2017, 3 Cmo 234/2016-528 – Schmaky, 8.

30

See the judgment of the Municipal Court of 26 May 2016, 15 CM 10/2013-448 – Schmaky.

31

See the judgment of the Municipal Court of 18 March 2015, 19 Cm 134/2010-461 – fluidised bed boiler.

32

The judgment of the High Court of 5 October 2015, 3 Cmo 351/2014 – Hop-up Chamber.

33

See the judgment of the Municipal Court (ruling as the Administrative Court) of 30 October 2018, 8 A 235/2015 <www.nssoud.cz> or decision of the Office of Industrial Property of 12 October 2015, Ref. File No CZ / EP 2017560 / D053525 / 2014 / ÚPV or from 25 April 2016, Ref. EN / EP 2197301 / D15034950 / 2015 / IPO.

34

ibid.

Acknowledgement

Special thanks to JUDr. Petra Žikovská for the joint planning and organising of the seminar.

This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic-oup-com.libproxy.ucl.ac.uk/journals/pages/open_access/funder_policies/chorus/standard_publication_model)