German Courts at Epicenter of Global Patent Battles Among Tech Rivals

By KEVIN J. O'BRIEN

BERLIN — Is Germany’s system of litigating disputes over patents bad for business?

Microsoft’s decision to move its European logistics and distribution headquarters to the Netherlands from Germany has generated a debate over patent law here, where it is easy to block the sale of a rival’s product even before an infringement claim is verified.

Microsoft cited the potential consequences of a lawsuit brought against it in Germany by Motorola Mobility as a factor in its decision to move its logistics center to the Netherlands from Düren, a small German town near the Dutch border.

Motorola Mobility has asked a court in Mannheim, Germany, to stop Microsoft from distributing its Xbox game consoles and Windows 7 operating system software because they employ a video streaming technology that Motorola claims to own. The court in Mannheim is scheduled to rule on Motorola’s request on April 17.

Microsoft is taking no chances. Thomas Baumgärtner, a Microsoft spokesman in Unterschleissheim, Germany, said the possibility that the court in Mannheim might grant Motorola’s request and ban the European distribution of the Xbox and Windows 7 had prompted Microsoft to seek a friendlier base.

The company began transferring its operations this year to a location in the Netherlands, which it will not disclose.

“The move is taking place as we speak,” Mr. Baumgärtner said last week.

In the last two years, Apple, Samsung, Nokia, Microsoft and Motorola Mobility have either introduced or defended themselves against patent claims in Germany. In one case, Apple won a ruling at a court in Düsseldorf that banned the sale of the Samsung Galaxy Tab 10.1 tablet computer in Germany. Samsung quickly modified the device, releasing the Galaxy Tab 10.1N a month later. Apple sued to block sales of the new device, but a court in Munich denied its request.

In March, Apple won a Munich court ruling against Motorola Mobility because Motorola had used one of Apple’s patented photo management technologies on its mobile phones. Motorola said it had modified the devices to remove the infringing technology.

Nokia is suing Apple in Düsseldorf and Mannheim, as well as in Britain and the Netherlands, accusing Apple of using 13 Nokia patents without authorization in its iPhone, iPad and iPod Touch.

The lawsuits, often claiming violations of patents that are considered essential parts of globally recognized mobile technology standards, prompted the European Commission to open investigations this year against Samsung and Motorola Mobility.

Joachim Henkel, a professor of management at the Technical University of Munich, said big international companies were often seeking to exploit the German system for strategic advantage.

Mr. Henkel said the prominent patent and intellectual property disputes in the mobile phone sector, which have also involved courts in Asia, Britain and the United States, were bogging down cutting-edge companies in court.

“All of these infringement cases in Germany, Europe, the United States and Asia are having a hampering effect on innovation globally,” Mr. Henkel said. “Usually, what masquerades as a patent dispute is in actuality a dispute motivated by business strategy.”

The process has turned the German patent courts in Mannheim, Düsseldorf and Munich into some of the most overworked in Europe.

Two-thirds of all patent claims in Europe are now filed in Germany, according to the Munich law firm Meissner Bolte, which does patent litigation. In a sense, Germany has become a destination for fast, effective one-stop patent challenges, much as Britain is for libel and the state of Delaware is for registration of American companies.

While these may benefit German law firms financially, technology experts and smaller German technology firms say the system is being abused to generate nuisance claims.

Determining the substance of a patent claim in Germany can take years. During that time, a rival can effectively be stopped from using a basic piece of technology, often without a legal reason that holds up in the end.

That was the case with Unitedprint, a company in Radebeul, Germany, that does online printing for small and midsize businesses. In 2006, Unitedprint was sued by a competitor, Vistaprint, of Bermuda, which said Unitedprint was using a piece of its patented design technology that enabled users to print business cards and fliers in high resolution.

The German Patent Court rejected Vistaprint’s claim in 2007, but Vistaprint appealed. Five years later, on March 22, the German Federal Court of Justice set the matter to rest, siding with Unitedprint. In its ruling, the German court said the European Patent Office, based in Munich, had erred in 1994 when it issued the patent at the center of the dispute.

Although Vistaprint lost on the legal issues, the company did succeed in getting Unitedprint to change its business operations. Beginning in July 2007, Unitedprint stopped using the patented technology at the heart of the dispute. It has since devised new methods of printing that do not make use of it, but the lawsuits were costly to defend.

Anja Sebald, the head of the legal department at Unitedprint, said it was simple for companies to obtain ownership rights to technology that was already in the public domain.

“It is often too easy to obtain a software patent from the European patent authorities,” she said. “Many times, the people awarding the patents don’t have the direct relevant expertise to make an informed judgment.”

Unitedprint is requesting a six-figure sum in euros from Vistaprint to recover legal costs.

Unlike the German patent system, the American system gives judges the option of awarding proportionate damages instead of granting outright injunctions that ban sales of disputed products in cases where “irreparable harm” cannot be demonstrated.

In Germany, if a court determines that a company legally holds a patent, it can issue an injunction to ban competing uses if asked.

There is no option of granting proportional monetary damages.

Some German businesses are clamoring for changes to better shield themselves from nuisance suits. In 2009, 200 small and midsize businesses created a lobbying group, the Bundesverband Informations- und Kommunikationstechnologie, based in Hamburg, with the goal of altering the legal system.

But the group’s members, which are primarily software and hardware companies, have so far been unable to persuade German lawmakers. In 2005, the German Parliament unanimously approved a nonbinding resolution urging changes to the system to limit abuse. But the call was never followed by action.

The last activity came in 2009, when the German Justice Ministry produced a favorable report on the issue, said Johannes Sommer, the managing director of the association. But since then, there has been little progress, he said.

“The topic is too complicated and the pressure from the German Mittelstand of small and medium-sized businesses has not been strong enough,” Mr. Sommer said.

Microsoft’s decision to move a business unit from Germany could prompt change. Microsoft had been running its European logistics business from Düren for more than a decade under a contract with Arvato, a unit of the German media conglomerate Bertelsmann.

But German businesses are reluctant to wade into a political debate publicly. Klaus Markus, an Arvato spokesman, said Arvato preferred not to comment on Microsoft’s criticism of the German patent litigation system. Likewise, a representative of Bitkom, the leading German technology industry group, declined to comment.

Both Microsoft and Google, which is acquiring Motorola Mobility, are members of Bitkom.

Mr. Sommer said that fear of nuisance patent claims was the top concern for many businesses.

“We are a very patent-holder-friendly country in Germany, to a fault,” Mr. Sommer said.

訴訟遭濫用 助長無謂控告案 不利創新…
德專利法漏洞 重傷企業

微軟擔心與摩托羅拉行動（Motorola Mobility）的專利糾紛可能有不利發展，決定將歐洲總部由德國遷至荷蘭。

近年來蘋果、三星、諾基亞和摩托等公司，也紛紛赴德國大打專利官司，此舉引發德國專利訴訟體系恐遭濫用、不利企業經營的討論。

紐約時報報導，微軟Xbox遊戲機和Windows 7可能遭德國曼海姆法院裁定禁售，因為摩托行動指控這兩項商品侵害其影音串流專利技術。

法院17日才會裁決，但微軟已決定另尋較友善的經商環境，今年起開始將德國杜倫的後勤及經銷業務轉移至荷蘭。

過去兩年，蘋果和三星的官司令人眼花撩亂，雙方有輸有贏。諾基亞則分別在德國杜塞道夫和曼海姆法院等地對蘋果興訟，指iPhone、iPad及iPod Touch在未經授權下使用了13項諾基亞專利。

但相關專利被公認是行動技術標準的核心部分。

慕尼黑科技大學教授漢克表示，跨國科技公司常利用德國專利訴訟體系漏洞，取得戰略優勢，令高科技業者官司纏身。

美國法官在無法確定有否不可挽回的損失時，可以選擇裁定損害賠償。

但德國法院無此選擇，通常會依專利所有權人的請求，直接禁售有爭議商品。

這使得曼海姆、杜塞道夫和慕尼黑法院在歐洲成為工作量負荷最大的幾個城市之一。法律事務所Meissner Bolte說，歐洲三分之二的專利案件集中在德國。

儘管這對德國法律事務所有財務助益，但科技專家和德國小型科技業者說，法律體系遭濫用，助長無謂訴案，令被告在經濟上付出慘痛代價。

漢克說：「所有在德國、歐洲和美國和亞洲的侵權案，都有不利全球創新的負面效應。在專利戰的假面下，通常是商業策略的考量。」

原文參照：
http://www.nytimes.com/2012/04/09/technology/09iht-patent09.html

2012-04-10/經濟日報/A8版/國際視野 編譯季晶晶