Zimmermann & Partner Patentanwälte mbB
What key skills does a world-class patent litigator need to succeed before the German courts?
World-class patent litigators must unite technical expertise, legal knowledge, creativity, linguistic proficiency, management and communication skills, and team-building capabilities. But even this rare combination of skills is not enough. A world-class patent litigator must also have a quick mind that can analyse complex information in a short timeframe and communicate it in simple terms for technical lay persons, such as judges. They must be willing to develop unconventional ideas and think outside of seemingly unalterable doctrines, swiftly alternating between a creative mode and a mode of conventional stringent thinking in order to ensure that their new thinking has a solid footing. They need to understand the quality of an argument from the judge’s perspective and to anticipate and weigh potential counterarguments. Personal integrity and consistency are important to lend credibility to pleadings in court. As even the slightest weakness in a patent litigation case may be exploited by the other party, communication and team-building capabilities are crucial to ensure that all team members work together constructively and efficiently, so that no piece of relevant information is overlooked. This requires both cooperative and leadership qualities, especially in the large international teams that handle top-profile litigation cases, as these often comprise people with different personal, cultural and linguistic backgrounds.
What has been your most memorable case
One case in which I represented an alleged infringer was memorable for involving a steep uphill battle. The patentee had already won an infringement suit against another competitor based on the same patent and the validity of the patent had been confirmed by the Federal Supreme Court. My client’s products and those of the competitor were very similar, and the patentee chose the same infringement venue in which it had already obtained a favourable ruling. In addition, the infringement had been supported by highly suggestive experimental data and further backed by the opinion of a court expert. My enormous efforts to find better prior art were of no avail, except for increasing my and my team’s technical expertise in the complex physics and chemistry involved. The client was on the brink of seeking an unfavourable settlement. At this point, we needed creative thinking paired with stringent analysis of the proposed ideas to turn the case. We realised that the previous infringement verdict against the competitor was based on an assumption about physical and chemical interactions, but – based on what we had learned from the literature revealed by the prior art search – the underlying physical model might not be complete. We considered a physical-chemical effect whose presence would challenge the foundation of the previous infringement reasoning and determined that certain high-precision measurements could show it. Our analysis convinced the client to allow us to have such expensive measurements made. These not only confirmed the presence of the physical-chemical effect, but also explained why the experimental data in the previous suit had rendered results suggesting an opposite outcome.
What impact is AI having on the German patent system, particularly in relation to established legal concepts and patentability?
AI has made its way into mainstream applications and will have a fundamental impact on science, business and private life. It will also have implications for the essence of the patent system. Some established legal concepts, which have been more or less stable for decades, may have to undergo a paradigm shift. Among these, the ‘skilled person’ and their ‘knowledge’ are the most noteworthy. The skilled person is a fictitious person whose perspective is adopted to assess what technical teaching is conveyed and whether an invention is new, involves an inventive step and is disclosed in a manner sufficiently clear and complete for it to be carried out. When the concept of the skilled person is changed to allow them to rely on AI, then they become (even) less human and more cyborg. AI is an extremely useful tool for prior art searches that can also assist the skilled person in recognising structures, patterns or technical teachings that would have been invisible to them otherwise. AI substantially affects the skilled person’s general knowledge when added to the intellectual toolbox that they rely on when performing their due tasks. As such, AI will ultimately determine what technical teachings are within the skilled person’s reach. Further, a skilled person augmented by AI will likely challenge the customary concept of ‘technical field’, which hitherto limits the skilled person’s horizon and has been determined in the past by the problem that the invention purports to solve. This is because AI may not be bound by the limitations of a technical field – at least not in the way established by patent offices through regular practice. This will lead to situations where inventions deemed as pioneering nowadays may be perceived in the future as trivial and within reach of a skilled person who can rely on AI. Other concepts, such as ‘inventorship’, which are classically associated with an exceptional and personal achievement of a human being, will also need revision and adaption in a new AI world. In addition, an AI system operating on a given training data set may lead to a new source of disclosure that goes beyond the established manifestations (written, oral or public use) and which may constitute information made available to the public “in some other way” as stipulated in Article 54 of the European Patent Convention.
What other emerging technologies are having the biggest impact on your practice, and how do you stay abreast of these?
There are two aspects to consider. The first concerns emerging technologies that are the subject of the litigation cases that I lead. These technologies include 5G and higher telecommunication systems, flexible displays and 3D displays, among others. The key for staying abreast of developments in these fast-evolving technical fields is purely human in nature – cultivating curiosity, practising openness to new thoughts and concepts, and taking pleasure in learning, in order to build the foundation of technical knowledge and the legal arguments derived therefrom. The second aspect concerns emerging technologies that are affecting the way that I practise, such as communication tools that have become particularly important in the current covid-19 environment and other tools that facilitate information transfer. While remote conferencing systems may be useful and convenient for handling teams in international litigation cases, they cannot bring international teams together in the same way that in-person meetings allow for the full scale of human interaction. It remains to be seen whether virtual or augmented reality will bring some relief in this respect. High-quality and fast machine translation may be extremely useful in the context of large-scale searches for potential prior art.
With the German Federal Constitutional Court upholding the constitutional complaint against the UPC Agreement, how likely is it that we will see the creation of the UPC in the foreseeable future?
The decision of the German Federal Constitutional Court has slowed down the pace with which the UPC is being implemented. However, clarifying the constitutional concerns is important and necessary in order to put the new system on a solid footing that can persevere even under pressure. I am confident that, despite unfortunate developments such as Brexit, there are good reasons to believe in, and further pursue, the European idea. I trust that we will eventually see the unified patent system in action.
What are the biggest challenges currently facing SEP holders in the fields of electrical engineering, telecoms and semiconductor technology?
With telecommunication and semiconductor technologies becoming ubiquitous in the age of information, there is a tendency for previously unrelated technical areas to become increasingly intertwined. This creates new battlefields. For example, the automotive industry has enjoyed a comparatively peaceful existence in its sector for many decades. But since modern cars are now packed with electronics, the automotive industry is facing fierce attacks from patent assertion entities on the basis of acquired telecommunication and semiconductor patent portfolios. In response to this, there has been a call, particularly from the German automotive industry, to soften the injunctive relief claim in Germany. If this softening comes into effect, SEPs in Germany will be devalued to a certain extent, which cannot be in the interest of SEP holders that have risked high investments in R&D in these fields or that have bought patents from companies that have done so.
Proposed reforms to the German Patent Act aim to speed up nullity actions and streamline them with infringement proceedings. How necessary is this and do the proposals go far enough?
Streamlining the separate infringement and nullity proceedings in Germany, including harmonising their timeframes, is very important for the effective enforcement of justified patentee claims and for establishing legal certainty for all parties. Accelerating nullity proceedings will contribute strongly to this effective enforcement and will strengthen the international importance of Germany as a patent litigation venue. However, the timeframes will not be well synchronised if opposition proceedings accompany infringement proceedings, because opposition proceedings could become the slower proceedings while excluding simultaneous nullity proceedings. This exclusion should be lifted for an alleged infringer against which infringement proceedings are initiated, while it could remain in place for other cases or parties. Further, care needs to be taken that despite the fast timeframes for nullity proceedings, the quality of preliminary opinions and decisions by the Federal Patent Court do not deteriorate. The court should be provided with adequate resources, including the number and quality of the judges.
What are the main implications of the German Federal Supreme Court’s recent decision in Sisvel v Haier for SEP owners?
The Federal Supreme Court decision in Sisvel v Haier advances the court’s earlier decision in Orange Book Standard with the aim of finding a way to bring its previous findings into conformity with the requirements of the Huawei v ZTE decision handed down by the European Court of Justice. The Sisvel decision puts the infringer under a higher obligation to cooperate and helps SEP owners to obtain an injunction more easily.
How can multinationals best protect themselves against patent trolls?
While the term ‘troll’ has negative connotations, it should be kept in mind that patent trolls usually purchase their patents from legitimate companies that have invested in R&D and collected interests that the patent system wants them to have. Selling patents to patent trolls can be an important option for manufacturers looking to monetise the economic value of their assets. What appears to be unfair is an asymmetry in that, unlike the original patent owner, patent trolls cannot be counter-attacked by a patent infringement suit on the grounds that they are NPEs. As such, the potential infringer is left with only defensive means. Specifically, in view of injunctive relief, the risk of the potential infringer suffering irreversible economic damage is much higher than that of the patent troll. This risk can be addressed by asking the court to set the security deposit required for the patent troll to enforce the injunction at a reasonably high value.
How do you expect European IP practices to develop in the next five years?
If the UPC system becomes a reality within the next five years, it will fundamentally change patent litigation venues for high-profile cases within the European patent system, whereas prosecution before the patent offices will remain largely unaffected. Apart from the impact of the UPC, if realised, the European patent environment should remain stable, provided that Europe’s economic power does not shrink considerably. The implications of AI on the patenting system will not be felt within the next five years, but can be expected in the years thereafter.
Joel Nägerl has a PhD in physics and is a German and European patent attorney. His main practice area is patent litigation, where he advises and represents large multinationals in numerous high-profile international disputes covering the telecoms, electrical engineering, semiconductor technology and optics fields. Dr Nägerl also serves as an appointed court expert at the Dusseldorf Higher Regional Court and coauthored the Handbook on Patent Law (CH Beck Verlag, 2013).
Click here to see his IAM Patent 1000 2000 profile.