Following the introduction of a new product of the EGGER group, Swedish company Välinge International asserted numerous patents, initially out of court, and then filed complaints with respect to five patents at Mannheim Regional Court in 2009. The interim result: EGGER has not been sentenced under any of the patents; for two patents, this has now been confirmed by the Federal Court of Justice with legal effectiveness.
In the field of laminate floors, a main focus of production of the EGGER group, unusually many patents are in force, several dozen of which alone in Germany. Already before the introduction of the new product, EGGER, supported by patent lawyers of Cohausz & Florack and specialized lawyers of Heuking Kühn Lüer Wojtek, had carefully analyzed all possible patents. The Välinge patents were classified as not infringed and/or as not legally valid. EGGER therefore decided not to enter in any license agreements with Välinge. Consequently, the group, represented by the patent law team of Heuking Kühn Lüer Wojtek, then defended against the subsequent infringement charge. It filed nullity actions against two of these patents at the Federal Patent Court and filed objection against a further patent at the European Patent Office.
"Good care, an overall view and perseverance are frequently paying off. This also applies in patent law, if a company is faced with a multitude of patents," said Dr. Anton Horn, patent lawyer at Heuking Kühn Lüer Wojtek's Düsseldorf office. "This requires careful reviewing of all possible patents, both as regards infringement and legal validity, and then a consistent decision: What must be licensed and for what no royalties have to be paid, even at the risk that the patent holder could then file legal action," Horn continued.
The complaints filed by Välinge concerned the German parts of patents EP 0 877 130, EP 1 260 653, EP 1 084 317, EP 1 626 136, and EP 1 396 593.
Regarding the first two aforementioned patents, the infringement proceedings have now been concluded with legal effectiveness by decision of the Federal Court of Justice of November 13, 2013 (Case X ZR 147/12). Thus, the dismissals of the complaints in both previous instances have been confirmed. Nullity proceedings against these two patents are no longer pending.
With respect to the third patent (EP 1 084 317), the infringement complaint directed against EGGER was dismissed in the first instance and the appropriate appeal proceedings of Karlsruhe Higher Regional Court were suspended (Karlsruhe Higher Regional Court, Case 6 U 79/10). Background of the suspension are the parallel nullity proceedings before the Federal Patent Court, which were partially upheld in the first instance and at present are continued in the appellate instance at the Federal Court of Justice (Case X ZR 128/12).
The scope of protection of the fourth patent (EP 1 626 136) was substantially reduced in the objection proceedings before the European Patent Office. The appeal proceedings are still pending.
The fifth patent (EP 1 396 593) was declared null and void in full in the first instance by the Federal Patent Court. The appropriate appeal filed by Välinge is still pending at the Federal Court of Justice, Case X ZR 143/12. Välinge's infringement complaint was dismissed by Mannheim Regional Court and the appropriate appeal was suspended by Karlsruhe Higher Regional Court (Case 6 U 91/10).
Even if not all proceedings have been finally concluded yet, Gerold Schneider, EGGER group's IP Manager, declared already, "It was well worth the effort. We will continue to carefully observe and analyze the patent situation, and will then consistently make the necessary decisions. We will protect our business and avoid unnecessary royalty payments."
"While it is inconvenient to be sued from patents, it is not a disaster – if you are well prepared. Particularly manufacturing companies should both carefully and self-confidently deal with existing and registered patents. Knowledge is power – this also applies to patents," Horn added.
Counsel to Fritz Egger GmbH & Co. OG
Heuking Kühn Lüer Wojtek:
Dr. Andreas Urban (Lead),
Dr. Anton Horn,
Astrid Luedtke (both Patent Law), all Düsseldorf
Cohausz & Florack:
Dr. Thomas Rox, Dr. Jochen Kapfenberger (Patent Lawyers), Düsseldorf
Jordan & Hall:
Dr. Reiner Hall, Karlsruhe (representation before the Federal Court of Justice)