Munich Appellate Court on Making vs Repair

by Rüdiger Pansch, rospatt osten pross

And here we are again with more recent decisions on the bulk container paradox (see Brian's post Bottling the After-Market; Max's post on Patent Law and Philosophy; my post on Entitative Elements of Bulk Containers).

Imagine you have an IBC (Intermediate Bulk Container), just as this one:

Image

Now, you open the upper crossbars, take out the original inner plastic bottle and re-place it with your own plastic bottle (so called "rebottling"). Do you make a new IBC, or do you just repair the old product? Do you commit a patent infringement by making a new embodiment, or do you just use the old embodiment in respect to which the patentee’s rights remain exhausted?

In two recent judgments of 28 July 2011 (docket nos. 6 U 3411/10 and 6 U 3412/10), the Munich Court of Appeal denied patent infringement. Just as in the first instance, replacement of the bottle was considered a repair of the original IBC and not a making of a new IBC.

The two judgments are applying assessment criteria as laid down in three decisions of the Federal Supreme Court on different technical items (Bundesgerichtshof: “Flügelradzähler” [2004] GRUR 758; “Laufkranz” [2006] GRUR 837; “Pipettensystem” [2007] GRUR 769). Which parts embody the entitative elements of the invention? Which parts are improved by the invention? Is the bottle nothing more than a mere object of the improved cage?

The judgments explicitly dissent from the judgment of the English High Court of Jus-tice, Court of Appeal, [2011] EWCA Civ 303 in re. Schütz vs Werit of 29 March 2011. The Court of Appeal found for patent infringement overruling the decision of the London High Court of Justice, [2010] EWHC 660 (pat) of 31 March 2010.

In both Munich judgments, leave to a second appeal was granted. Both proceedings are now pending at the Federal Supreme Court. We will keep you updated.