What reach has your method claim? German Federal Court of Justice rules on scope of a patent claim covering coding and decoding method under the MPEG-2 Standard

by Reed Smith
Contact

As commonly known, the protection of a patented method does not stop at the application of that method, but encompasses the product directly obtained through that method. However, it is less clear whether only tangibles can be considered such a "product" or whether intangibles are covered as well. In contrast to the majority of the German scholars, the District Court of Düsseldorf has been less reluctant to follow a broad approach. It considered specific information – or more precisely: a specific way of representing information, namely MPEG-2 coded video data – capable of constituting the "direct product" of a patented coding method. Consequently, a potential infringer would not be able to escape his liability by merely transferring the "production site", i.e. the place where the method was to be applied, abroad if the resulting product would still be distributed in Germany. However, the same court denied protection for the result of a patented genetic testing method because the "produced" binary information ("yes" and "no"), in relation to the occurrence of a specific genetic mutation, was not deemed sophisticated enough to merit protection.

The German Federal Court of Justice has now seized the opportunity for clarification (X ZR 33/10 – "MPEG-2 Videosignalcodierung"). Subject matter of the patent at stake was another process for coding, transfer, storage and decoding of video signals in accordance with the international MPEG-2 standard. A patent pool commercialized the patent on behalf of the patentee through offering standard license agreements. The defendant, a DVD manufacturer located in Greece, refused to take a license and pay royalties. A third party, hired by the patentee, placed an order for 500 DVDs to be made on the basis of a DVD master carrying the already coded video data. After the Greek DVD manufacturer had shipped the ordered 500 DVDs to Germany, the patentee filed an infringement action with the District Court of Düsseldorf. The District Court and the Appellate Court of Düsseldorf both (as in the past) assumed infringement; certainly, transferring already MPEG-2 coded video data from the DVD master to a DVD did not infringe the patented method, but both courts found that those coded video data constituted a "product directly obtained" from the patented coding method, and thus held the delivery of the DVD to Germany to be infringing.

In essence, the Federal Court of Justice followed the approach taken by the District Court and the Appellate Court. It also held that a method for reducing the data volume in accordance with the MPEG-2 standard is a "production" method, which is a necessary condition as under German law only the products obtained by a production method can benefit from patent protection. Apparently, it did matter to the court whether an intangible electronic signal could, in particular when comprised in a tangible good such as a DVD, be reproduced, used and traded like an article of manufacture. The further requirement for patent protection was also met, namely that the coded video data had to be a "direct" product of the claimed (production) method. The defendant had challenged that the coded video data were transferred and saved several times in various storage units and data carriers when making the DVD master, and subsequently producing the DVDs. However, the data concerned remained essentially unchanged and unaltered, and the court concluded that the required intermediary storing and saving of data could be compared with the "packaging" of a product (the complaint was still dismissed as the court applied the doctrine of exhaustion of rights in relation to the making of the DVD master comprising MPEG-2 coded video data with the consent of the patentee).

One should note that the German Federal Court of Justice has now accepted that certain data may be the subject of an "extended" patent protection in the form of a product directly obtained through a patented method. However, one may assume that the "information product" will have to meet a certain standard or be of a certain quality. Unfortunately, the ruling does not provide guidance in this respect; for instance, does it matter whether the subject matter of such "direct product" would have to be considered patentable in order to benefit from patent protection? One would hope for further guidance on how to draw a line between a "production" method – where the "direct" product would be covered, and a mere processing of information – where this would not be the case.

In any case, the current ruling appears to be a good starting point to pay attention to proper claim drafting where an invention comprises a method to generate more or less complex information and data.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Reed Smith | Attorney Advertising

Written by:

Reed Smith
Contact
more
less

Reed Smith on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!