German Federal Supreme Court solidifies case-law on damages for patent infringement

According to this method of calculation, the infringer must surrender the profits made by infringing the patent. In the underlying case, the defendant was found to have infringed a patent relating to an upholstery machine.

The defendant manufactured and marketed such machines, including through leasing, and offered paper for use in its machines. The FSC ruled that the infringer's profits to be surrendered were not limited to the proceeds from the sale or lease of the machines, i.e. the infringing acts themselves.

It also includes profits from "ancillary" activities that do not constitute acts of use, but are causally linked to acts of patent infringement and have a sufficient connection to the infringing product.

In the present case, the FSC held that profits from the supply of consumables (i.e. paper) and from the conclusion of leasing and maintenance contracts for the upholstery machines could also be included in the calculation of the infringer's profit.

Furthermore, the FSC emphasised that this applies even to the supply of consumables and the conclusion of leasing and maintenance contracts made after the expiry of the patent, providing that they relate to sales or leases of machines which took place during the term of the patent.

The judgment relates to a specific case with its underlying facts. It therefore remains to be seen to what extent the FSC's reasoning can be generalised and applied to other cases. However, on the face of it, the FSC judgment seems to imply an extension of liability for damages, at least for certain types of business…