The patent owner claimed infringement based on his European Patent EP 0 656 229, which was validated in Germany. The claims are directed to a manual pipette system including a syringe (7) and a manual pipette (1) for retaining the syringe in a pipette housing (2).

The object of the invention is to provide a pipette system for manual operation which allows a simplified and safe fixation of the syringe in the pipette and a simplified separation of the syringe from the pipette ensuring that the operator of the pipette does not have to touch the syringe. The syringe is a disposable syringe which has to be replaced before each re-use of the pipette system.

Claim chart

The Appeal court set up the following claim chart:

1.Manual pipette system with a syringe (7) and a manual pipette (1).
2.The syringe comprises a mounting portion (6) and a syringe plunger (17).
3.The pipette comprises
3.1in a pipette housing (2) a retainer (5) for the mounting portion
3.2in a retainer member (19) a plunger retainer (18) for the syringe plunger,
3.3locking means (26, 36) for reversibly locking the mounting portion and syringe plunger in their retainers, and
3.4plunger actuators (56, 23) for displacing the retaining member (19) in the pipette housing (2).
4.The mounting portion and the syringe plunger can be axially displaced through axial openings (9,20) of their retainers (5,18) to their locking postions.   
5The locking menas (26, 36) comprise manually actuable, radially displaceable gripping means (28, 36) for locking the mounting portion and the syringe plunger in theri locking positions:
5.1the gripping means (28, 36) have syringe gripping levers (26) which are pivotally mounted in the pipette housing (2) and plunger gripping levers (36) which are pivotally mounted in the receiving member (19);
5.2the syringe gripping levers and the plunger gripping levers each comprise a pair of arms, i.e a gripping arm (29,38) and an actuating arm (30, 39) 
5.3the syringe gripping levers (26) have at their internal sides of their actuating arms (30) contact surfaces (33);
5.4the contact surfaces (33) are adapted to be pivoted by actuation of their actuating arms (30) outwardly against the actuating arms (39) of the plunger gripping levers (36) so as to actuate the plunger gripping levers (36).
6.The mounting portion and/or the syringe plunger (17) when in their locking positions engage abutments (10, 21) in the retainers (5, 18) (claim 2).
7.The gripping menas (28, 38) are locking the mounting portion and/or the syringe plunger by engaging behind the abutments (claim 2).
8.The mounting portion is a syringe flange (6) (claim 3).
9..The syringe plunger (17) has a plunger collar (37) adapted to be engaged behind the gipping means (claim 4).

For good reasons the applicant had directed no claim to the syringe as such. All features of the syringe were known from prior art and the syringe could thus not be patented due to lack of novelty. However, the patent owner’s point of view is that the invention is commercially designed to ensure that the user of the pipette system has to cover his replacement demand exclusively with syringes delivered by the patent owner.

The defendant distributes syringes which are suitable to be used in the pipette system of the patent owner but also for other purposes. However the defendant espacially suggest that his syringes are suitable for the use witht the plaintiff's pipette holder.

The patent owner deemed the distributed syringes to be an essential element of his invention and therefore filed a law suit for contributory infringement. The “Landgericht” (court of first instance) dismissed the plaintiff’s claims; the Appeal court allowed the appeal as it ascertained that the syringe is especially formed to interact with the gripping levers of the pipette system. In order to interact according to the teaching of the invention, the syringe is espacially designed as protected by claims 2 - 4.

The Appeal court also permitted “Revision” (appeal for judicial review) for the defendant. With his appeal at the “BGH” (Federal Sufpreme Court) the defendant pursuit the dismissal of the plaintiff’s claims.

Defendant's arguments

The Defendant basically used two arguments:

A. The delivered element is a usual, commercially available product

The Appeal court erred, when it ascertained that the pipette system was especially formed to fit to the pipette system, as in fact the gripping levers of the pipette holder were especially designed to interact with usual, commercially available syringes. As the usual, commercially available syringes obviously were originally not espacially designed to fit into the pipette holder, they do not contribute in any way to the pipette system.

As a logical consequence the syringe should not be assessed as means relating to an essential element of the invention. 

B. The patent claim is unjustifiable too broad

As the patent claim is directed to a system consisting of two seperate commerically products, one product beeing an inventive subject matter (the pipette holder) and one product being non-patentable due to its lack of novelty (the syringe), the scope of protection of the system claim is too broad. Therfore, in a parallel nullification action the Defendant has requested to narrow the claim to a manual pipette for a syringe with a mounting portion and a syringe plunger.

The BGH confirmed the validity of the claim's scope

As a prior art element can constitute an essential element it is legally aceptable to claim the essential element in a system claim. The Federal Court confirmed its earlier case law:A patent applicant is entitled to ask for any form of a patent claim as long as it is patentable (new, inventive and industrial applicable) and complies with the technical teaching. (BGH X ZB 5/04– Mikroprozessor). The patent owner was therefore correct to claim pipette system comprising a pipette holder and a (commercially available) syringe. He was not obliged to restrict his patent claim to a pipette holder.

The BGH rejeced the patent infringement

The Federal Court firstly confirmed that any element which is suitable to functionally interact with one or more other elements of the protected claim to achieve the inventive must be considered as an essential element (BGH X ZR 48/03 – “Flügelradzähler”).

Being a feature of a patent claim usually already qualifies an element as an essential element. Only means, which are used when the invention is carried out, but do not contribute to the inventive idea are not functionally interacting and thus are not an essential element of the invention (BGH X ZR 48/03 – “Flügelradzähler”).

In case an element of an invention qualifies as an essential element, the fact that the features of the essential element are known from prior art is irrelevant for the protection of the overall inventive concept. The functionally interaction is a necessary prerequisite for a contributory infringment but not a sufficient condition.

As the exchange of the syringes is not modifying the idendity of the pipette system it could not be considered as a remanufacture of the pipette system. As only a remanufacture would be qualify to establish a patent infringement, the pure exchange of the syringes was considered to be within the sphere of normal use a person who has acquired a patented product is permitted under patent law.