Germany: Clarification of the case law on repair and reconstruction
In its recent decision X ZR 55/16 – Trommeleinheit, the German Federal Court of Justice (FCJ) further clarifies previous case law on the exhaustion of patent rights.
The plaintiff is an original equipment manufacturer (OEM) and seller of toner cartridges comprising a photosensitive drum unit. The defendant recycles OEM cartridges by replacing the photosensitive drum of the drum unit with a non-OEM spare part.
Independent claim 1 of the patent in suit (EP 2 087 407) is directed to a drum unit comprising a photosensitive drum and a particular coupling member that can be engaged with a driving shaft. The coupling member allows removal of an inserted cartridge from a device (e.g. a printer) perpendicular to the rotational axis of the driving shaft. Independent claim 25 (not asserted) is directed to a cartridge comprising said drum unit.
One important aspect of this case relates to the question of exhaustion of patent rights, specifically whether the replacement with non-OEM parts represents a permissible repair or an impermissible reconstruction. In this regard, the FCJ deviated from the view adopted by the previous instances (LG Düsseldorf – 4a O 44/14, OLG Düsseldorf – I-15 U 47/15) and finally dismissed the infringement action.
The FCJ follows up on established case law, especially X ZR 97/11 – Palettenbehälter II, according to which a two-step test should be applied based on the actual understanding of the market: if the replacement is not understood as a usual maintenance measure, there is an impermissible reconstruction, otherwise reconstruction can only be asserted if the technical effects of the invention are reflected in the replaced part.
The FCJ emphasised that the relevant reference point for assessing the actual understanding of the market is the asserted drum unit, whereas the device sold by the plaintiff is the cartridge as a whole. It criticised the fact that the previous instance decisions circumvent this problem by relying on a hypothetical understanding of the market – apparently coming down on the side of reconstruction. The FCJ held that in such a scenario, where there can be no established facts regarding the actual understanding of the market, the only relevant question is whether the technical effects of the invention are reflected in the replaced part.
In this respect, the FCJ negated the question of reconstruction and argued that the technical effect is reflected in the coupling member and not in the replaced drum which is a mere object participating in the inventive effect.
The present decision illustrates that care should be taken in drafting product or apparatus claims at different integration levels and in selecting the patent claims on which to base infringement proceedings.