German court rules on the admissibility of a second infringement action based on the same patent

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

German court rules on the admissibility of a second infringement action based on the same patent

Sponsored by

maiwald-logo-cropped.PNG
rachit-tank-2cfz-fb08um-unsplash.jpg

Stefanie Parchmann and Damla Simsek of Maiwald Intellectual Property consider a patent case ruling by the German Federal Court of Justice

The German Federal Court of Justice (BGH), on November 3 2020, handed down its decision X ZR 85/19.

The BGH ruled that the admissibility of a second patent infringement suit is not automatically precluded by the lis pendens of a first infringement suit or by the legal force of a judgment based on the infringement of the same patent issued in a previous infringement dispute between the parties.

Rather, the decisive question is whether the infringing act the defendant is accused of is the same (which would render the second action inadmissible) or different (which would render the second action admissible despite being based on the same patent).

The patent in question (EP 1 373 672) relates to a sash for a window or a door, the sash comprising a profile frame, a rebate with a delimiting web and an adhesive layer.

An earlier legal dispute between the parties had resulted in a judgment handed down by the appellate court on February 16 2017 which banned the defendant from offering profile frames for use in sashes in Germany without an eye-catching guideline that the profile frames may not be used in a way that the adhesive layer reaches the delimiting web.

In the renewed, second action which has now been brought before the BGH, the plaintiff claimed that the defendant was contributory infringing the patent by offering window profile frames suitable to be used in the claimed window sashes. The question arose whether such second action might be inadmissible because the decision in the first legal dispute was already legally binding.

The BGH ruled that, first, Section 145 of the German Patent Law (PatG), which codifies the “concentration maxim”, did not preclude the second action. The reason being that said second action did not attack the same or similar infringing act based on a different patent, but rather a similar infringing act based on the same patent. Second, the court ruled that, for the same reason, the ne bis in idem rule did not render the second action inadmissible.

Thus, the action was found admissible despite being based on the same patent and being between the same parties. It was, however, dismissed on merits as no contributory infringement was found by the court.

It is of interest to note that, in spite of finding the action admissible, the BGH decided to issue a headnote that mentions the admissibility of a second patent infringement suit “may be precluded” by the lis pendens of a first infringement suit based on the same patent or the legal force of a judgment based on the infringement of the same patent issued in a previous infringement dispute between the parties (confirming X ZR 111/09).

 

Stefanie Parchmann

Partner, Maiwald

E: parchmann@maiwald.eu

Damla Simsek

Patent attorney trainee, Maiwald

E: simsek@maiwald.eu


 

more from across site and SHARED ros bottom lb

More from across our site

AI
Leaders at four firms share their hiring approach, including whether AI knowledge is a must-have for new staff
McKool Smith and Licks Attorneys are acting in the dispute, which alleges infringement of patents covering video-related technologies
Legacy firm Allen & Overy agreed a high-profile tie-up with US firm Shearman & Sterling in May last year
News of Verizon settling its lawsuit with Headwater Research and a copyright setback for AI firm Perplexity at a New York court were also among the top talking points
IPH, which owns several IP businesses in the APAC and Canada, reported a 16.5% increase in revenue and 13% jump in profit after tax
With Ireland’s government re-engaging with the idea of a UPC referendum, it provides a chance to improve the system further
US-based company says appointment of Jorge Ordonez shows its momentum as a private-equity-backed platform expanding in the IP services market
The firm hired an IP litigation team during the reporting period and has entered the Managing IP rankings for trademark work
Masaki Mikami of Marks IP explains how he helped prove acquired distinctiveness to secure protection for 'Pocky' in Japan
Daralyn Durie discusses the ‘amazing’ opportunity of working on an AI case, the value of celebrating women, and how to build the next wave of talent
Gift this article