In its recently published decision “Zungenbett” (judgment of 5/10/2016 – X ZR 21/15), the Federal Court of Justice found that a term which is used both in the preamble and in the characterizing portion of a patent claim has to be interpreted, as a general rule, uniformly. With this reasoning, the Court of Justice dissented from the opposite view of the Court of Appeals of Düsseldorf and, as opposed to this lower instance court, confirmed the patent infringement in the case at issue.
The general rule used by the Federal Court of Justice does not appear to be self-evident, as only a year ago the same court found, with regard to the relationship between claim and description, that a distinction between two terms in the description does not necessarily apply to the claim, i.e. the term “blocking” in the claim can comprise “restricting” although the description uses both terms side by side (judgment of 13/10/2015 – Luftkappensystem).
In its “Zungenbett” judgment, the Federal Court of Justice further held that it is irrelevant in claim construction whether an element of the claim appears in the preamble or in the characterizing part. This clarification is welcome, as the same court indeed had taken an element’s position into account for its interpretation (judgment of 22/12/2009 – X ZR 55/08).