Doctrine of equivalents – not yet dead

In a decision of June 14, 2016 (X ZR 29/15 „Pemetrexed“) the Federal Court of Justice (FCJ) set aside a decision of the Higher Regional Court of Duesseldorf (appeals court) and remitted the case back to the appeals court for further consideration. In particular, the question was whether the attacked embodiment pemetrexeddipotassium infringes the patent in suit under the doctrine of equivalence. The patent was among other things directed to the use of pemetrexeddisodium for the manufacture of a medicament. The Higher Regional Court of Duesseldorf had rejected infringement under the doctrine of equivalence with reference to the decision Okklusionsvorrichtung (X ZR 16/09) of the FCJ.

As a reminder, in the decision Okklusionsvorrichtung the FCJ decided that generally there is no patent infringement under the doctrine of equivalents if the description of the patent discloses multiple alternatives of how a specific technical effect can be attained, but only one of these alternatives is recited in the claim. The FCJ considered this to be an “Auswahlentscheidung“ (selection decision) of the patentee, which precludes a variant that is disclosed in the description, but not recited in the claim, from protection under the doctrine of equivalents. It is to be emphasized that in the decision Okklusionsvorrichtung the variant, which was used in the attacked embodiment, was explicitly mentioned in the description.

In the case underlying the current Pemetrexed decision the FCJ considered these principles not to be applicable, since the patent did not disclose the variant pemetrexeddipotassium in individualized form, but merely the general class of antifolates, which encompasses the variant. The FCJ’s new decision limits the effect of the earlier decisions Okklusionsvorrichtung and Diglycidverbindung (X ZR 69/10) in that generally a “Auswahlentscheidung“ in the sense of the Okklusionsvorrichtung decision may require an explicit and individualized disclosure of the variant in the patent.