Burden of proof and standard of proof for circumstances outside the scope of the patent claim
In its today’s decision UPC_CFI_324/2024, UPC_CFI_487/2024, the Munich Local Chamber ruled on the infringement of a patent for certain pile drivers and its legal validity. The question of infringement concerned, among other things, whether a pile driver (not covered by patent protection) rests on a surface in the pile driver tip.
In the rammer tips at issue, the addition of a groove wall made it possible for a pile end to become jammed. A groove of a certain thickness in the rammer tip at issue did not prevent the rammer pile from penetrating completely to the bottom of the groove.
The jamming depended on the dimensions of the wall thickness of the pile end. However, this did not rule out the possibility of a pile with a different wall thickness coming into contact with the groove bottom. Which of the technical options shown (jamming/reaching the groove bottom) was used depended on the wall thickness of the pile used and thus affected the design of the pile, which is not the subject of the patent in suit.
The court’s assessment:
For the question of infringement of the patent in suit, it is not decisive whether existing pile drivers are dimensioned in such a way that they can reach the groove bottom of the contested embodiments in accordance with the patent. If a device (in this case, the pile tip) has the necessary suitability, it is irrelevant whether the characteristics and effects according to the patent are achieved regularly, only in exceptional cases or only by chance, and whether the user intends to achieve these effects. Potential suitability is sufficient!
The defendants were unable to convince the court that it is not technically feasible to provide pile drivers whose front end can reach the bottom of the groove of the contested embodiments. Specifically, they were unable to convince the court that the wall thickness of a pile driver would be too thin if it reached the bottom of the groove in accordance with the patent.
Only if it is technically impossible to manufacture a pile driving pile whose front end can reach the bottom of the groove of the contested pile driving tips when they are attached or driven in would a patent infringement be ruled out here. The defendant would have had to prove this by means of tests (possibly also by calculations). A mere statement without further evidence did not convince the Unified Patent Court.
We are eagerly awaiting the appeal decision.
The decision was rendered in German: