In Germany, questions of patent infringement and validity are (somewhat controversially) tried separately in different courts. While the Federal Patent Court has exclusive jurisdiction over actions for nullity (section 81(4) of the Patent Act) with a possible appeal to the Federal Court of Justice, infringement proceedings are dealt with by the civil divisions of the Regional Courts (section 143(1) of the Patent Act). Decisions of the Regional Courts may be appealed to the Higher Regional Courts and, from there, to the Federal Court of Justice. Thus, in both nullity and infringement proceedings the Federal Court of Justice is the court of last Resort.

The dualistic system leading to a bifurcation of validity and infringement proceedings is particularly significant when both lines are working the same case from different angles. It is common practice for parties accused of patent infringement to challenge the patent's validity before the Federal Patent Court. If the Federal Patent Court, subject to an appeal, declares the patent null and void in its entirety, the infringement court will dismiss any claim that the patent has been infringed. However, it has been unclear to what extent the reasoning of the Federal Court of Justice in nullity proceedings shall have binding effect for courts in parallel infringement proceedings if the patent is upheld, or only partly declared void. This particularly concerns the Federal Court of Justice's interpretation of patent claims. On 2 June 2015, the Federal Court of Justice (X ZR 103/13) stated that an infringement court has to interpret patent claims independently. While it is established case law that the methodology of claim construction must be the same in nullity and infringement proceedings (X ZR 7/00), the infringement court shall, in neither law nor fact, be bound by the interpretation of the claims by the Federal Court of Justice in a parallel nullity proceeding. The construction of a patent claim was once again expressly characterized as a question of law. Thus, each court considering the claims has to conduct an independent legal analysis.

Tags: BGH, Bifurcation, Claim Construction, Dualistic System, Patent Infringement, Patent Nullity

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