Tackling questions of law and questions of fact, again …

The annual INGRES event of 2 July 2019 (‘Praxis des Immaterialgüterrechts’) has been very interesting and enjoyable, as always. I am not intending to anticipate the full report about the event that will be prepared by Estelle SEILER for publication in sic!, but there was one specific discussion following-up on Susanna RUDER‘s presentation that I am still digesting.

Susanna had opened the discussion with the following (somewhat provocative) questions:

May the court correct a claim construction mutually agreed upon by the parties? If so, under which conditions?

May the court correct divergent claim constructions of the parties if they both are wrong? If so, under which conditions?

In first place, this gave rise to some discussion about the difference between questions of fact on the one hand (governed by the principle of party presentation [Verhandlungsmaxime]), and questions of law on the other hand (which the court may freely assess).

Michael RITSCHER teased the Supreme Court judges in the room with the remark that aspects are typically considered questions of law when the Supreme Court wants to decide on them. Else, they are (only) questions of fact and remain untouched by the Supreme Court.

In reply, Kathrin KLETT clarified that a question of fact is something about which evidence can be gathered. A legal issue, on the other hand, is something that can be discussed.

Next, on an abstract level of the discussion, there was some agreement that claim construction is a question of law. And I fully concur therewith — in general. But life is complicated. In an attempt to nail the abstract discussion down with an example, I mentioned the following example of a nullity case (adapted from some thoughts on this Blog here):

A claim feature of the attacked patent is “round” (rund);

The parties mutually agreed that “round” means “circular” (kreisrund).

The patent is only attacked for lack of inventive step / obviousness because the prior art on file only showed a polygon, but no circular shape (i.e. “round” as mutually agreed upon by the parties). Let us further assume that the attack for lack of inventive step is weak, for any reason whatsoever.

But: In a single, isolated example 97 on page 35 of the patent, the shape of a “polygon” is used. Neither party ever pointed to that example.

Now, just imagine the potential consequences if the court points to that example on page 35 and corrects the claim construction mutually agreed upon by the parties: The prior art on file would in fact be novelty destroying. I argued that this should not happen because it contravenes the principle of party presentation (Verhandlungsmaxime).

Interestingly, Mark SCHWEIZER jumped in and said that there are two separate issues involved: First, the court should indeed not pinpoint to the example on page 35. Second, he confirmed that in his view claim construction is a question of law which can and should be adressed by the court.

I did not manage to follow-up on this remark. Now, what does that mean when both issues are intermingled in a specific situation like the example above? In my perception, proper claim construction can only be done in light of the specification. But may the court only construe the claim in light of the specification to the extent pleaded?

Any thoughts, anyone? Or would someone please get this clarified in a case to be decided by the FPC? 😉

Reported by Martin WILMING


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One Reply to “Tackling questions of law and questions of fact, again …”

  1. There is a well known principle is that a court should not go ultra petita, and hence can only decide on what is claimed.

    But if what is claimed by both parties is manifestly wrong, I would say that the court should be allowed to give its opinion on claim construction, and decide on the correct construction to be given to a claim, and hence draw the correct conclusion.

    Otherwise it could mean that the parties, for whatever reasons, come to an agreement on some topic and force the court in a specific way of thinking.

    May be this is acceptable in certain parts of law, but not in IP, where there are tangible features to be dealt with.

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