Reading Stief, Haedicke and Wünsche, with the memory of a decade fought in Germany

Takanori Abe of Abe & Partners brings the perspective of a lawyer with first-hand experience in the German courtrooms to Pharmaceutical, Biological and Chemical Patents, a valuable resource on case law.

There are already several thoughtful reviews of this book by European practitioners. They have rightly commended its high-quality English translations of the leading and landmark German decisions, collected at the end of the volume, as well as its clear and consistent organisation of the case law.

Another review from the same perspective would add little. If there is anything I can add, it is one thing only: that I was present, as a lawyer who had come from abroad, in the German patent courtrooms this book portrays.

I supported Nichia Corporation as its Japanese counsel and, for roughly ten years, was involved in its German patent litigation. I was present many times—twice before the Federal Court of Justice (BGH), and, beyond that, at the cases before the Regional Court and the Higher Regional Court in Düsseldorf and the Federal Patent Court (BPatG) in Munich.

This is a book that explains case law; it does not offer a vicarious experience of litigation. And yet what lies behind each line of that explanation looks a little different to someone who has been present in those rooms. What follows is an attempt to read some features of this book together with the memory of the courtroom that lies behind them.

To begin with, the book sets out, for each decision, a dedicated section on “the technical background and teaching of the patent at issue”, writing out the scientific and technical substance with the same density as the legal argument. So far as I know, few works of patent law record the technical background and teaching of every single decision with such consistency.

This manner reflects the character of German practice. The German patent judge does not leave to others, but argues in his own words, what the person skilled in the art knew and what incentive he had, from the state of the art, to try a given means.

I saw this many times—at the BGH, and at the Regional Court and Higher Regional Court in Düsseldorf. And the German lawyers and patent attorneys with whom I worked, and against whom I fought, likewise possessed a precision that carried technology and law through a single line of reasoning. Many German patent attorneys hold the qualification of European Patent Attorney, and the level of their technical understanding is striking. Judges, lawyers, patent attorneys alike take technology on directly—and this shared culture shows itself, unmistakably, in the density of the book’s account.

The book provides high quality English translations of the major BGH decisions in the life sciences and pharmaceutical sectors. In German patent litigation, the BGH’s case law was always central to the parties’ arguments. That the book presents each decision in a consistent form—the guiding principles, the course of the proceedings, the technical background and teaching of the patent at issue, and the court’s reasoning—is of help in understanding the thinking behind a decision.

The account of “the course of the proceedings”, in particular, quietly conveys one feature of German procedure. The German court gives a preliminary opinion in the course of the hearing. It is, for the court, an occasion to confirm its own view, and for the party against whom the opinion is given, a last opportunity. In a case in which I was involved, that preliminary opinion was, on one occasion, overturned. Behind the book’s spare procedural notes lies a process of that kind.

The reasoning on inventive step that the book addresses is, for me, no matter of the printed page. In the nullity litigation over Nichia Corporation’s basic white-LED patent (European Patent 936682), the Federal Patent Court held the patent invalid, but the Tenth Senate of the BGH (presided over by Judge Meier-Beck, as he then was) overturned that decision.

The mere fact that a substance and its properties are known, it held, does not make it obvious to arrive at its use in a different field; what is in question is the concreteness of the incentive. The court read for itself the very heart of the matter—how disparate technologies were to be combined—and rigorously excluded hindsight.

Whenever I read the reasoning the book organises under “reasonable expectation of success—incentive”—that the decisive axis is not the predictability of the specific result itself, but whether the person skilled in the art receives, from the state of the art, a suggestion to try the means in question—I remember that courtroom.

That I was able to gain such experience owes much to good fortune. From a young age, I had the opportunity to take part in a great many patent disputes, in Germany and also in the United States. I came to know, from the inside, that each jurisdiction has its own way of doing things. Each of those experiences has made me who I am. And I think, now, opening this book, how much I would have been helped had I then had at hand a single volume in which German law could be read in English, all the way into the logic of the decisions.

What makes the book so trustworthy is also the line-up of those who wrote it—people who embody that culture. The authors—one of Germany’s foremost patent litigators, a scholar who also sits as a judge of the Unified Patent Court, and a European Patent Attorney—are, each in his or her own position, practitioners who have taken on the work of carrying technology and law together, without dividing them. That three different specialisms are bound together in a single volume is what supports the book’s breadth of view and its sureness.

The thinking organised in this book is not a thing of the desk. I have seen it at work, in the courtroom itself. And so—as one who once stood, from the outside, in the German courts—I find myself just a little envious of the generation who will be able to hold this book.

This article reviews ‘Pharmaceutical, Biological and Chemical Patents’ by Tilman Stief, Klaus Haedicke and Sophia Wünsche, a guide to German pharmaceutical, biological and chemical patent case law.

Takanori Abe is a partner at Abe & Partners. He can be contacted at:  abe@abe-law.com