Requirements for a claim for destruction under Sec. 140a Patent Act with respect to a complete device or parts thereof (Higher Regional Court of Düsseldorf, judgment of 5 November 2020, Case No. I-2 U 63/19)
The Regional Court found a literal infringement of the patent in suit, concerning a connecting element for floor segments of a floor covering, and ordered the defendant to cease and desist and, inter alia, to destroy the infringing product.
The destruction claim was limited in the first instance to a destruction of the first sub-components of the fastener in the direct or indirect possession of the defendant and at the same time the defendant was granted the right to remodel the first sub-components in terms of their form instead of destroying them.
The Higher Regional Court of Düsseldorf dismissed the admissible appeal of the defendant and essentially confirmed the first instance judgment. The limitation of the destruction claim remained unchallenged by the defendant. As regards the destruction claim, the Higher Regional Court of Düsseldorf therefore only dealt with the proportionality of the tenor of partial destruction. Here it was noted that all components characterising the connector according to the invention were in the possession of the defendant but were merely not assembled according to the invention. However, the Court found that although the patent claim describes the technical conditions of the object in its assembled state, it does not require it to be assembled. In the view of the Higher Regional Court of Düsseldorf, this understanding also resulted from the recognised principle of effective legal protection, according to which direct protection under § 9 Patent Act was also available, for example, regarding a combination invention.
To avoid gaps in the protection of rights, the same must also apply to a destruction claim where all elements of an entire patented device are in the possession or ownership of the infringer and there are indications that these are to be assembled into the object of the invention by the infringer himself or – attributable to him – by a third party. In such case, these individual parts are also subject to the destruction claim. This must apply in any case if the infringer has previously placed a corresponding entire device on the market. If, however, it is possible to destroy only a part of the patented product or modify a technical feature thereof in such a way that it no longer falls within the scope of protection, a complete destruction of the entire device would not be justified. A proportionality test under Sec. 140a (4) Patent Act would then no longer be required.
Annotation:
The decision should be welcomed and shows that in the case of patent infringement of a device consisting of several individual parts, it may be possible to enforce a claim for the destruction of individual parts but this is not absolutely necessarily. For each individual case, it must be examined which modifications are possible to exclude an infringement and as a “milder measure”, where applicable, the infringer must be given the opportunity to modify – possibly only with regard to individual sub-components – instead of a complete destruction of the entire product.
