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HEUKING KÜHN LÜER WOJTEK
Our Expertise in Patent Litigation
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Heuking Kühn Lüer Wojtek ...
is an independent German law firm which is
active internationally
was established in 1971
has more than 400 lawyers in eight locations in
Germany
with an office in Zurich (Switzerland)
offers full service
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Our Offices
Berlin
Chemnitz
Hamburg
Düsseldorf
Cologne
Frankfurt
Zürich
Munich
Stuttgart
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The Members of the Patent Litigation Team
Dr Anton Horn
Rechtsanwalt
Certified Specialist
Lawyer in Intellectual
Property Law
Partner
Dr Sabine Dethof
Rechtsanwältin
Certified Specialist
Lawyer in Intellectual
Property Law
Salaried Partner
Birthe Struck, LL.M.
Rechtsanwältin
Certified Specialist
Lawyer in Intellectual
Property Law
Senior Associate
Philipp Schröler
Rechtsanwalt
Certified Specialist
Lawyer in Intellectual
Property Law
Senior Associate
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What Others Say About Us
Anton Horn,
among Germany‘s Best Lawyers in the area “Intellectual Property Law” and “Technology Law”
Handelsblatt Germany‘s Best Lawyers 2014, 2015, 2016, 2017, 2018, 2019, 2020 and 2021
“The “very strong and reliable” patent team at Heuking knows just what it takes to prevail in
infringement and nullity proceedings before the German courts. This year alone it has been duking it
out in a medical technology dispute on behalf of ECHOSENS and in infringement proceedings on
behalf of packaging leader Brødrene Hartmann, in addition to countless other cases in various sectors.
Captaining the patent group is Anton Horn, a litigator whose reputation precedes him. “Anton is a real
pleasure to work with. He has exceptional knowledge of the law, the case law and the practices of the
various courts. His extremely structured approach allows him to bring the client onboard and to obtain
all technical or factual input needed.” “Anton is enthusiastic, very sharp and on top of all the detail. He
cares very much about the cases that he tackles and goes above and beyond.” “I would recommend
Anton for his qualitative, results-driven work, as well as for his transparency and smooth
communication with the client.” For patent mandates that are interlaced with antitrust issues, the firm’s
secret weapon is Sabine Dethof: she comes equipped with a doctorate on the subject, and is
particularly well versed in healthcare and the lifesciences.
IAM Patent 1000: The World’s Leading Patent Professionals, 2020
Dr. Sabine Dethof,
among Germany‘s Best Lawyers in the area “Intellectual Property Law”
Handelsblatt, Germany‘s Best Lawyers 2021
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What Others Say About Us
"The litigation team of the full-service law firm is well positioned, especially in D'dorf. A wide technical
range in their litigation work also benefits them because of their roots in medium-sized companies in
many different sectors.”
Juve Handbook 2019/2020
Anton Horn offers clients expertise in relation to patent disputes, including infringement and
enforcement proceedings. Clients commend him for being "diligent and thorough.“
Chambers Global /Europe, 2021
(Germany / Patent Litigation / Ranked Lawyers Band 5)
“Heuking Kühn Lüer Wojtek PartGmbB’s mainly represents mid-sized companies and clients from
different industry sectors not only in infringement procedures, but regularly also in corresponding nullity
actions, especially appeal proceedings before the Federal Court of Justice. The range of advice
includes patents from medical technology, mechanical and plant engineering, packaging and Life
Sciences. Head of practice is Anton Horn”.
LEGAL 500 / LEGAL 500 EMEA, 2020
Patent litigation - ranked: tier 4
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Dr ANTON HORNRechtsanwalt; Certified Specialist Lawyer in Intellectual Property Law
Member of the preliminary examination committee
"Certified Specialist Lawyer in Intellectual Property Law" of the Düsseldorf Bar Association
Admitted to the Bar in 1999
Born on 26 April 1970 in Braunschweig
Languages
• German, English, Spanish and Italian
Education and previous employment
• Worked at a commercial law firm in Mexico City (1998-1999)
• Research assistant at the International Law Institute at the University of Munich (1997-1998)
Lectures (selection)
• „Das neue Recht zum Schutz von Geschäftsgeheimnissen und seine Folgen für öffentliche Aufträge“, 21 September 2018, Düsseldorf
• “Die Durchsetzung von Patenten außerhalb des Mainstream”, 12 June 2013, Düsseldorf
• “The Effects of the European Patent Package on Conventional EP Patents”, 18 April 2013, Düsseldorf
• “Workshop Patent Law in Europe”, PRIP, 18 October 2010 in Tokyo, Japan
Publications and Newsletter Articles (selection)
• „Rechtliche Vorgaben für einen neuen Anlauf zur Ratifizierung des UPC-Übereinkommens – Wie kann es trotz Brexit und Entscheidung des BVerfG noch gerettet werden?“, May 2020, Mitteilungen der deutschen Patentanwälte (Aymaz/Horn/Karaosmanoğlu)
• “The co-owner of a patent as a plaintiff in patent infringement proceedings”, 2016 (Horn/Dethof)
• “Patents and Prison” in Newsletter IP, Media & Technology 1/2011
• “Patent Pending – On advertising with patents“, in Newsletter IP-IT-Media 1/2009
• “Patents open doors – The right to inspection under patent law ”, in Newsletter IP-IT-Media 2/2008
• ”Patent Law Treaty“ in World Intellectual Property Rights and Remedies, loose-leaf collection, New York, December 2008 ff. (Horn/Dethof)
Dr Anton Horn
Georg-Glock-Straße 4
40474 Düsseldorf
Germany
T +49 211 600 55-379
F +49 211 600 55-370
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Dr SABINE DETHOFRechtsanwältin; Certified Specialist Lawyer in Intellectual Property Law
Admitted to the Bar in 2007
Born on 16 July 1975 in Erfurt
Languages
• German, English and Spanish
Education
• “Promotion” (Phd) at the University Göttingen (2009)
• Legal Trainee (Referendarin) at the Regional Court of Wuppertal (2003-2005)
• Studied in Göttingen and Salamanca/Spain (1994-2001)
Lectures
• “Workshop Patentverletzung: Feindliche Lizenzangebote – Was tun?”, 19 June 2015 in Munich
• ”Workshop Patent Infringement“, 25 March 2010 in Düsseldorf
Publications and Newsletter Articles
• “The co-owner of a patent as a plaintiff in patent infringement proceedings”, 2016
(Horn/Dethof)
• “At the Scene Trade Show – effective proceeding against foreign patent infringers”, in
Newsletter IP, Media & Technology 2/2011
• “Innovation and harmony – a risky couple“, in Newsletter IP-IT-Media 2/2010
• “Marktabgrenzung in der Telekommunikation” (“Market delimitation in telecommunications“), Göttingen 2009
• ”Patent Law Treaty“ in World Intellectual Property Rights and Remedies, loose-leaf collection, New York, December 2008 ff. (Horn/Dethof)
• “The London Protocol takes effect – easier access to the European patent“, in Newsletter IP-IT-Media 1/2008
Dr Sabine Dethof
Georg-Glock-Straße 4
40474 Düsseldorf
Germany
T +49 211 600 55-379
F +49 211 600 55-370
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BIRTHE STRUCK, LL.M.Rechtsanwältin; Certified Specialist Lawyer in Intellectual Property Law
Admitted to the Bar in 2013
Born on 10 May 1984 in Hameln
Languages
• German and English
Education
• Research Assistant at COHAUSZ & FLORACK (2012-2013)
• Advanced Master’s degree program (LL.M.) on Intellectual Property Law at the University of Düsseldorf (2011-2012)
• Legal Trainee at the Regional Court of Essen (2009-2011)
• Universities of Gießen and Münster (2003-2008)
Publication
• “Geheimnisschutz: Neues Gesetz birgt Herausforderungen“, IT-Director, 2019
• “Prüfen, schützen, überwachen“, Interview Handelsblatt, 2018
• “Patent Litigation – Quick Guide to Proceedings in Germany”
Lecture
• Das neue Recht zum Schutz von Geschäftsgeheimnissen und seine Folgen für öffentliche Aufträge“, 16 November 2018, Düsseldorf
Birthe Struck, LL.M.
Georg-Glock-Straße 4
40474 Düsseldorf
Germany
T +49 211 600 55-379
F +49 211 600 55-370
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PHILIPP SCHRÖLERRechtsanwalt; Certified Specialist Lawyer in Intellectual Property Law
Admitted to the Bar in 2011
Born on 30 July 1982 in Haltern
Languages
• German and English
Education
• Lawyer in two corporate law firms in Düsseldorf, focus in IP-law (2011-2018)
• Legal Trainee (Referendar) at the Regional Court of Münster (2008-2010)
• University of Münster (2002-2007)
Publications (selection)
• "Is there a future for medical device SPCs?” in Bio-Science Law Review, Volume 16, Issue 3, November 2017 (together with Andrew Hutchinson and Nicholas Fischer)
• Comment on Higher Regional Court of Cologne 6 U 121/15 - Privacy policy in contact forms in WRP 2016, 890 (together with Sascha Kuhn)
• "Plagiarism - how to protect yourself" in Playground@Landscape, 06/2014 (together with Dr. Fabian Ziegenaus)
• "The development of keyword advertising", WRP 2014, 800 (together with Marc Dümenil)
• Comment on BGH I ZR 53/12 - FLEUROP in MMR 2014, 126ss.
• Comment on BGH I ZR 175/12 - Loyalty Points Action in WRP 2014, 64ss.
• "Issues re extension and termination of temporary discount offers under unfair competition law" in GRUR 2013, 564ss.
• “Enforcement and assertion of injunctive relief in foreign EU countries“ in WRP 2012, 185ss.
• “Protection of Applied Arts“ in: Handbook of Art and Law, edited by Hoeren/Holznagel/Ernstschneider, Frankfurt a.M. 2008, Peter Lang Verlag
Philipp Schröler
Georg-Glock-Straße 4
40474 Düsseldorf
Germany
T +49 211 600 55-379
F +49 211 600 55-370
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Heuking marks successful end to a patent dispute over medical technology
With its decision of February 4, 2020, the Federal Court of Justice, Germany’s highest court in patent matters, rejected a request of the Chinese company Hisky Medical
Technologies Co. Ltd. This has the consequence that the judgment of Düsseldorf Higher Regional Court, obtained by the French company Echosens S.A. in March 2018, is now
final and non-appealable. Based on this judgment, Hisky’s “FibroTouch – FT-1000” device was banned from the German market due to the infringement of the German part of the
Echosens’ VCTE patent EP 1 169 636 B1.
French company Echosens is a leading provider of non-invasive medical devices dedicated to the assessment of chronic liver disease with FibroScan®, a device using patented
and validated VCTE™ for liver stiffness assessment, and CAP™ for steatosis quantification.
Throughout these proceedings, Echosens has been represented by the patent litigation team of the law firm HEUKING KÜHN LÜER WOJTEK, with the assistance of patent
attorneys from COHAUSZ & FLORACK, and additionally by Dr. Reiner Hall for the review proceedings before the Federal Court of Justice.
Criminal proceedings are still pending in Austria because of the allegation of deliberate infringement of the Austrian part of the same European patent EP 1 169 636 B1 and of
Echosens’ FibroScan® trademark.
Legal Counsel at Heuking:
Dr. Anton Horn
Dr. Sabine Dethof
Legal counsel at the Federal Court of Justice:
Dr. Reiner Hall
21 February 2020
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Action for annulment successful: teff patent in Germany expired
By filing an action for annulment, the patent law team of the law firm of Heuking Kühn Lüer Wojtek ensured that the disputed teff patent no longer exists in Germany. The granting
of the European teff patent was perceived as great injustice in Ethiopia, because it protected a well-known foodstuff by a European company under patent law. The plaintiff in the
nullity action, Dr. Anton Horn, Head of the Heuking patent team, filed a lawsuit against this injustice. Now the way is clear for less expensive teff flour, which is particularly popular
with people who need or prefer gluten-free foods.
The “teff patent” (EP 1 646 287) protects a flour made from teff (“Eragrostis tef”), a type of grass that has been cultivated in Ethiopia and Eritrea for more than 5,000 years. Teff is
gluten-free and rich in proteins, vitamins, and minerals. Particularly among people with gluten intolerance (celiac disease), it is enjoying increasing popularity worldwide.
The patent law experts at Heuking Kühn Lüer Wojtek examined the case and arrived at the conclusion that the patent had been granted wrongly. As the Dutch patent holder failed
to respond to an out-of-court letter, the law firm filed a patent nullity suit with the Federal Patent Court in Munich on March 29, 2019.
In response to the action for annulment, the patent holder waived the German part of the teff patent in a brief dated June 13, 2019. This waiver has been entered in the patent
register of the German Patent and Trade Mark Office. Consequently, there is no longer a teff patent in Germany.
“Patents are important, and it is just as important to avoid wrongly granted patents. This is especially true when they monopolize traditional knowledge and disadvantage
consumers. It is therefore a great success that the teff patent no longer exists in Germany,” said Dr. Anton Horn.
6 August 2019
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Patent dispute over egg packaging: Brødrene Hartmann defends its imagic® patent
On December 18, 2018 the German Federal Court of Justice decided on the validity of a patent relating to a product design of egg packages with a particular combination of major
planar surfaces, egg-shaped areas and supporting ribs. The Federal Court of Justice ruled that the German part of the European patent EP 1 373 100 B1 is valid if its claim 1 is
combined with the granted claims 29 and 30, which relate to a specific pattern of supporting ribs. The owner of this patent is the Danish company Brødrene Hartmann, which is a
leader in moulded fibre packaging solutions for eggs and fruit. The patent corresponds to Hartmann’s imagic® egg packages.
With its decision, the Federal Court of Justice reversed a first instance decision of the Federal Patent Court dated January 31, 2017. The decision is final and non-appealable. The
claimant of first instance, and defendant in the appeal proceedings, was the company Omni-Pac Ekco GmbH Verpackungsmittel.
Brødrene Hartmann was represented by lawyers of the German law firm Heuking Kühn Lüer Wojtek, in collaboration with patent attorneys of the firms Cohausz & Florack
(Germany) and Budde Schou A/S (Denmark).
The trial team was led by lawyer Dr. Anton Horn. "We are happy that the highest German court in patent matters acknowledged the innovative nature of the imagic® product
design. This is a good basis for taking appropriate steps against companies that infringe the patent and use its specific pattern of supporting ribs", commented Horn.
Counsels to Brødrene Hartmann, Denmark
Lawyers
Heuking Kühn Lüer Wojtek:
Dr. Anton Horn
Birthe Struck, LL.M. (both Düsseldorf)
Patent attorneys
COHAUSZ & FLORACK, Düsseldorf / Germany:
Andreas Thielmann (German patent attorney and European Patent Attorney)
Budde Schou A/S, Copenhagen / Denmark: Jan Sørensen (Danish patent attorney)
Court docket numbers of the validity proceedings
Federal Court of Justice: X ZR 37/17, judgment of December 18, 2018
Federal Patent Court: 3 Ni 10/16 (EP), judgment of January 31, 2017 (mainly reversed by the aforementioned decision of the Federal Court of Justice)
Court docket number of the patent infringement proceedings
Regional Court of Düsseldorf: 4c O 32/14 (stayed with court decision of February 26, 2015; reactivation requested by Brødrene Hartmann with motion of December 19, 2018)
17 January 2019
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Patent for steam drying affirmed by the German Federal Court of Justice
The patent law team of Heuking Kühn Lüer Wojtek, jointly with patent attorneys from Denmark and Germany, again prevailed in a patent nullity case before the German Federal
Court of Justice. In its January 8, 2019 ruling, the Federal Court of Justice granted the lawyers’ motions and ruled that the German part of patent EP 1 070 223 B1, held by Danish
company EnerDry A/S, is legally valid. The action for annulment and the appeal brought by BMA Braunschweigische Maschinenbauanstalt AG, which had already been
unsuccessful at the court of first instance, were therefore dismissed. This dismissal is final and non-appealable.
The patent concerns steam drying systems for the drying of biomass. After having been used for sugar production, sugar beet residues are dried and used either as animal feed or
as fuel for energy production. Drying with superheated steam is more energy-efficient than conventional drying methods. Steam drying equipment, sometimes up to 20 meters high,
play a key role in the use of renewable raw materials worldwide. The patent concerns the steam cleaning and contributes considerably to increasing efficiency. The inventor is Arne
Sloth Jensen, General Manager and majority shareholder of EnerDry and an internationally recognized expert in steam drying.
This patent played a key role at Düsseldorf Regional Court (Case No. 4b O 111/14) and Düsseldorf Higher Regional Court (Case No. I -2 U 51/16). It was decided in this patent
infringement case that certain steam drying systems offered by BMA infringed the patent (cf. our press releases dated May 23, 2016 and April 28, 2017). This decision is also final.
The patent law team was led by Dr. Anton Horn, Partner and Certified Specialist Lawyer in IP Law, and Birthe Struck, LL.M., Senior Associate and Certified Specialist Lawyer in IP
Law, both at Heuking Kühn Lüer Wojtek. “We are pleased that the highest German court in patent matters has once again recognized an invention by one of our clients,” Horn said.
“This invention is based on considerable development work with accordingly high costs, and it may not be adopted by competitors free of charge,” added Struck.
Counsel to EnerDry A/S and ASJ-IPR A/S, both Denmark
Heuking Kühn Lüer Wojtek:
Dr. Anton Horn, Lawyer, Düsseldorf / Germany
Birthe Struck, LL.M., Lawyer, Düsseldorf / Germany
COHAUSZ & FLORACK:
Andreas Thielmann, Patent Attorney, Düsseldorf / Germany
Budde Schou A/S:
Jan Sörensen, Danish Patent Attorney, Copenhagen / Denmark
14 January 2019
15
Patent dispute over medical technology: Echosens continues its victorious ways
8 March 2018
French company Echosens is continuing its series of victories in the field of liver diagnostic devices. With its March 1, 2018 ruling, Düsseldorf Higher Regional Court
confirmed that Chinese company Hisky Medical Technologies Co. Ltd. is not allowed to offer or market its “Fibrotouch FT-1000" product in Germany, thus upholding
Düsseldorf Regional Court's April 20, 2017 judgment. Echosens was represented in the trial by Heuking Kühn Lüer Wojtek, in collaboration with a large international
team.
Hisky Medical Technologies Co. Ltd. had filed an action for annulment at the Federal Patent Court, which it withdrew, however, a few days before the hearing in
February 2018. The Federal Patent Court had previously issued a preliminary written assessment that the nullity action was unlikely to succeed and that the patent
would remain in effect without restrictions.
The Düsseldorf trial team was led by lawyer Dr. Anton Horn, who commented on the outcome of the trial as follows: "This is nothing less than total victory. This ruling is
key to protect our client's patented technology against imitation. The loud and clear message even outside of Europe should not be underestimated."
Echosens developed a disruptive technology that allows the non-invasive assessment of liver stiffness. Slight vibrations produce shear waves in the tissue, the
propagation of which is observed by ultrasound. The speed of the propagation of the shear wave allows physicians to draw conclusions about the liver health status,
without the need for painful liver biopsy. This is of particular relevance for the diagnosis of liver fibrosis and steatosis in patients with chronic liver diseases. This
technology is protected among others by European patent EP 1 169 636 B1. Echosens sells the relevant diagnostic devices worldwide under the "FibroScan" brand.
The initial trial was conducted by Viennese law firm DORDA. In Vienna, Echosens was able to have an exhibited device confiscated by police in April 2015 on the basis
of an appropriate court order issued by Vienna Regional Court for Criminal Matters. During the trial, the Austrian Patent Office issued an expert opinion on the validity of
the patent, which showed that the patent was expected to be legally valid. In addition, a court expert confirmed the patent infringement. Some of the evidence obtained
in Austria also played a major role in the Düsseldorf trial. The Düsseldorf Higher Regional Court ruling is not yet final.
Counsel to Echosens SA, France
Heuking Kühn Lüer Wojtek: Patent attorneys: COHAUSZ & FLORACK, Düsseldorf In-house
Dr. Anton Horn, Philipe Walter, Michel Kaminsky Sophie Ribes, Paris
Dr. Sabine Dethof,
Peter Horstmann (all Patent Law, all Düsseldorf)
In the Austrian trials, and also participating in the German trials: Austrian patent attorneys: French patent attorneys:
Lawyers: DORDA, Vienna WILDHACK & JELLINEK, Vienna Camus Lebkiri, Paris
Axel Anderl, Michael Stadler Alexandre Lebkiri,
Bernhard Heinzl Vincenzo Ardizzone
16
Hybrid lawn – Heuking Kühn Lüer Wojtek wins judgment by admission
11 May 2017
Heuking Kühn Lüer Wojtek's patent experts successfully enforced IP rights of Dutch company Sisgrass B.V. On June 27, 2017, Düsseldorf Regional Court ruled that a
South German manufacturer of sports field machines infringed the German part of European patent EP 3 029 199 and German utility model DE 20 2016 104 072.5.
These IP rights relate to machines implanting individual artificial lawn threads into a natural lawn, much like a large sewing machine. The lawn keeps the pleasant
characteristics of a natural lawn and is also significantly more resistant due to the implanted synthetic fibers. Numerous sports fields, in particular soccer fields, hockey
fields, and rugby fields, are being treated with this technology at the current time.
In particular, the patented technology uses a drum, by means of which the synthetic fibers are transported near the lawn surface, are cut and inserted into the substrate.
A South German company manufactured sports field machines with this technology and sold them among other things to a company in North Rhine-Westphalia that
uses them in the construction of sports facilities. Since an out-of-court agreement could initially not be achieved, Sisgrass B.V. decided to sue both companies at
Düsseldorf Regional Court for infringement of the patent and the associated German utility model.
In the course of the proceedings, the manufacturer issued a formal admission. Düsseldorf Regional Court subsequently issued a judgment by admission. In particular,
this prohibits the manufacturer from producing and offering further such machines. With regard to all other aspects, a settlement agreement was found.
The second defendant, which bought and used these machines, has not yet issued such an admission. The court proceedings are therefore still pending against that
defendant. The company has still not filed a statement of defense more than two months after the expiry of the relevant deadline. According to the Court's schedule, the
Court of First Instance will issue a decision only after a court hearing to be held on January 16, 2018.
Dr. Anton Horn, Head of Heuking Kühn Lüer Wojtek's Patent Litigation Team, commented as follows: "It is not often the case that the defendant unconditionally
acknowledges the claims asserted in the complaint. The fact that an experienced mechanical engineering company has taken this step in this case after being advised
by lawyers and patent attorneys confirms our conviction that the patent of Sisgrass B.V. is legally effective.“
George Mullan, the CEO of the patent holder, added: "Innovation and competition are important. Each company should make its contribution and respect other market
participants' rights. Anyone who fails to comply with these rules and who does not want to conclude a sensible agreement must expect consequences. Not only
production but also use of patent-infringing machines is illegal.“
Düsseldorf Regional Court, Civil Division 4b
Counsel to Sisgrass B.V., Amsterdam, The Netherlands Dutch lawyers: Case 4b O 113/16
Heuking Kühn Lüer Wojtek Vondst Advocaten N.V., Amsterdam (NL) Presiding Judge: Dr. Daniel Voss
German lawyers: Ricardo Dijkstra
Dr. Anton Horn,
Birthe Struck, LL.M., Dutch patent attorneys:
Peter Horstmann (all Patent Law), all Düsseldorf EP&C, Rijswijk (NL), Walter Hart (European Patent Attorney)
17
In the Eye of the Cyclone: EnerDry's Patent of Steam Drying Successfully Enforced
28 April 2017
In its April 6, 2017 judgment, Düsseldorf Higher Regional Court confirmed that German company BMA Braunschweigische Maschinenbauanstalt AG is infringing a patent of Danish
company EnerDry A/S. A team led by patent law specialist Dr. Anton Horn of Heuking Kühn Lüer Wojtek successfully represented EnerDry A/S in the second instance as well.
EnerDry A/S, Denmark, is one of the leading companies in the area of steam drying. It designs and manufactures steam drying systems on a global basis. Steam dryers are mainly used
for drying beet pulp. Beet pulp is a residual product in the sugar beet industry, which can be dried to high-value animal feed. Steam dryers save large quantities of energy compared to
conventional drying systems.
EnerDry holds numerous patents based on inventions by its founder and CEO Arne Sloth Jensen, including European Patent EP 1 070 223 B1. This patent relates to steam dryers with a
specific type of cyclone, which substantially improves the capacity and efficiency of steam dryers. EnerDry as the exclusive licensee for this patent was of the opinion that BMA
Braunschweigische Maschinenbauanstalt AG infringed the German part of this patent by offering certain steam dryers to potential German and international customers, in particular to a
company in Sweden for which BMA actually built a steam dryer.
In May 2016, Düsseldorf Regional Court had already ruled in first instance that a patent infringement of European patent EP 1 070 223 was given. BMA appealed the ruling, but, as was
ruled now, unsuccessfully, since Düsseldorf Higher Regional Court largely confirmed the first instance ruling. According to this judgment, BMA is no longer allowed to offer or manufacture
patent-infringing steam dryers in Germany. The judgment is based on BMA's publications and offers in general and the specific installation in Sweden. Other than the Regional Court in the
first instance, however, the Higher Regional Court ruled that EnerDry was not entitled to ask for the withdrawal and destruction of already manufactured installations.
Previously, BMA had attempted to trivialize the scope of the judgment of first instance. In a press release, BMA stated that the judgment related only to “marketing material” and did not
affect any actually built system. By judgment of October 14, 2016, a different chamber of Düsseldorf Regional Court had ordered BMA to refrain from publishing this press release, as it
was misleading and did not correspond to the real scope of the judgment. This judgment has become final and non-appealable.
In addition, BMA had tried to avoid the verdict of patent infringement by filing a nullity action against the German part of the patent EP 1 070 223 B1 with the German Federal Patent Court
in Munich. By judgment of March 7, 2017, the Federal Patent Court rejected this nullity action as well and maintained the patent as granted.
Jensen commented on the overall result as follows: “We are happy that the patent has been maintained and enforced successfully. We will monitor carefully if BMA complies with the
judgments.” He added: “Competition is fine, but everyone should respect the intellectual property of others. It took us many years of hard work to improve and enhance the steam drying
technology, and we will not tolerate that anyone copies our design in an illegal manner. We all should bear in mind that willful patent infringement is a crime.”
Update May 29, 2017: While the judgment of Düsseldorf Higher Regional Court is final, BMA may still appeal the Federal Patent Court judgment at the Federal Court of Justice.
Counsel to EnerDry A/S, Denmark
German lawyers: Heuking Kühn Lüer Wojtek Danish patent attorneys: Budde Schou A/S, Copenhagen German patent attorneys: COHAUSZ & FLORACK, Düsseldorf
Dr. Anton Horn, Henrik Sten Nielsen, Andreas Thielmann
Birthe Struck, LL.M., Andreas Dahlquist
Peter Horstmann (all Patent Law),
Dr. Georg Jacobs (Competition Law), all Düsseldorf
18
EGGER successfully concludes extensive patent proceedings with Heuking Kühn Lüer Wojtek
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. (…)
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). (…)
29 January 2014
19
Precious prevails - Heuking Kühn Lüer Wojtek succeeds with Wegold in dispute over dental alloys
14 November 2013
Heuking Kühn Lüer Wojtek's patent law team led by Düsseldorf-based partner Dr. Anton Horn successfully advised and represented
Wegold Edelmetalle GmbH in enforcing a patent against several imitators. The company's patented silver dental alloy (EP 1 432 381
B1/DE 602 15 369) is characterized by specific mechanical properties such as high stability and ceramic bonding ability, as well as its
versatility, especially in the field of veneering.
Heuking Kühn Lüer Wojtek successfully enforced this patent against several imitators. In addition to numerous licensing contracts, a
total of three trials were held before Düsseldorf Regional Court. Two of them ended in settlement agreements before the hearing. In all
cases, compensation for damages was paid retroactively for the infringing acts. For the future, either license contracts against payment
were entered into or cease and desist declarations with penalty clause were filed.
In one of the cases, no amicable agreement could be reached. By judgment of November 5, 2013, Düsseldorf Regional Court found in
favor of the patent infringement complaint (Case: 4a O 8/13; opposing party: Oridima-Dentalinstrumente GmbH & Co. KG). The
judgment is not yet legally effective. The patent holder will consistently enforce its patent in the future as well and will continue to
proceed against imitators.
Counsel to Wegold Edelmetalle GmbH
Heuking Kühn Lüer Wojtek, Düsseldorf: Dr. Anton Horn, Dr. Sabine Dethof, Birthe Struck, LL.M.
Stork Bamberger, Hamburg: Dipl.-Chem. Ute Stork, Patent attorney
Nuremberg-Fürth Regional Court again dismissed a patent infringement action brought by Interessengemeinschaft für
Rundfunkschutzrechte GmbH & Co. KG (IGR) against Topfield Europe GmbH. Topfield is thus continuing its winning streak
in the trials that are garnering nation-wide attention. The current ruling of February 10, 2011 is not yet final.
Subject of the trial was a patent for searching stations in TV receivers (EP 0601554). Nuremberg-Fürth Regional Court now
decided that no "searching for frequencies" in accordance with the patent is carried out by the Topfield satellite receiver.
The use of a transponder list in which the known frequencies of the satellite transponders is stored does not constitute
"searching" in accordance with the patent.
IGR had also brought action against Topfield under two other Grundig patents (EP 0512206 and EP 0612150). These
infringement proceedings were finally dismissed or suspended. Additionally, Topfield had filed nullity suits against the
patents in return. All three patents were consequently declared invalid in whole or in part by the Federal Patent Court.
Currently, the appeals are pending before the Federal Court of Justice.
Cologne-based Topfield Europe GmbH and its Korean parent company Topfield Co. Ltd. have been legally represented by
Cologne lawyer Friederike Kienitz already since 2005. Since 2007, Heuking Kühn Lüer Wojtek's Düsseldorf-based patent
law team (including Dr. Anton Horn, Partner, and Dr. Sabine Dethof, Associate) has been assisting in matters of patent law.
It also represented the client in this trial. Patent lawyer Philipe Walter (COHAUSZ & FLORACK) was called on to provide
counseling services.
20
Series of Successes in Patent Dispute Over TV Receivers: Heuking Kühn Lüer Wojtek Again Successful for Topfield
21 February 2011
Heuking Kühn Lüer Wojtek's Düsseldorf-based patent law team jointly with the Düsseldorf patent attorneys of COHAUSZ &
FLORACK obtained a preliminary injunction at Munich I Regional Court (presiding judge Dr. Peter Guntz) during the
"bauma 2010" trade show on behalf of CP Test A/S which is part of Danish group Per Aarsleff A/S.
The preliminary injunction is based on the infringement of patent EP 0 737 262 B2 by Finnish company Junttan Oy, which
offered a patent-infringing pile driving rig with laser measuring system at the open-air ground of "bauma", the world's largest
trade show for construction machinery. CP Test A/S had previously developed and patented a corresponding system. It was
possible to serve and enforce the preliminary injunction still during the trade show at Junttan Oy's booth.
(…)
Counsel to CP Test A/S:
Law firm of Heuking Kühn Lüer Wojtek, Düsseldorf; Dr. Anton Horn (Partner) and Melanie Künzel, LL.M. (Associate);
Patent attorneys COHAUSZ & FLORACK, Düsseldorf, Andreas Thielmann (Partner, Lead).
21
Blow of the Hammer – Heuking Kühn Lüer Wojtek Obtains Preliminary Injunction at "bauma 2010" Trade Show
against Patent-Infringing Pile Driving Rig with Laser Measuring System
18 May 2010
In its April 16, 2010 ruling, Mannheim Regional Court dismissed the complaint of Swedish company Välinge Innovation AB
against German EGGER Group. (…) The complaint was based on three patents which protect certain embodiments of
locking profiles for floor panels (EP 0877130, EP 1260653 and EP 1084317). The market for such glueless floor panels
which among others are sold in home improvement and DIY stores is very large and is characterized by a large number of
technical innovations and appropriate patents. The legal dispute concerned, in particular, the question whether the locking
profiles exhibit some "play" at a certain position. (…)
“(…) The entire industry will register this judgment with high interest," Dr. Anton Horn, partner at Heuking Kühn Lüer Wojtek
in Düsseldorf, and specializing in patent law, comments on the outcome of the trial. (…) The nullity complaints additionally
filed by the EGGER group against the German parts of the patents-in-suit are pending at the Federal Patent Court. (…)
Heuking Kühn Lüer Wojtek will also be participating in these nullity proceedings.
Düsseldorf-based attorneys Dr. Andreas Urban, Dr. Anton Horn and Astrid Luedtke (Heuking Kühn Lüer Wojtek)
represented the succeeding EGGER companies. At the infringement proceeding, they enlisted the assistance of patent
attorneys Dr. Thomas Rox and Dr. Jochen Kapfenberger (both COHAUSZ & FLORACK Düsseldorf), who will additionally
act as attorneys of record in the nullity proceedings.
22
No more "play"-ing around - Patent Infringement Complaint Against Laminate Floors Dismissed
Heuking Kühn Lüer Wojtek Again Successful on behalf of EGGER Group
27 April 2010
Law firm Heuking Kühn Lüer Wojtek achieved an important win for BIOTEC Biologische Naturverpackungen GmbH & Co.
KG (Emmerich) in a patent infringement dispute that has been ongoing since 2007: With its judgment of April 16, 2010, the
Tribunal de Grande Instance in Paris dismissed the pending patent infringement complaint of Italian bioplastics
manufacturer Novamont S.p.A. in its full extent. (…)
About three years ago, Novamont S.p.A. filed a complaint against both BIOTEC and its French shareholder, Sphère SA, in
Paris, Turin and Milan. (…) BIOTEC is a leading developer and manufacturer of biodegradable materials distributed under
the Bioplast label. (…) This market keeps gaining in importance worldwide since crude oil-based plastic materials are
replaced by biodegradable alternative products. (…)
BIOTEC was counseled and represented by Dr. Anton Horn (Partner) and Melanie Künzel, LL.M. (Associate) of Heuking
Kühn Lüer Wojtek's Düsseldorf-based patent law team. They led and coordinated all proceedings and commissioned local
law firms to act as attorneys of record. Dr. Arwed Burrichter (COHAUSZ & FLORACK, Düsseldorf) provided considerable
support with respect to the chemical and technical aspects and regarding the nullity of the three patents-in-suit.
Attorneys Julien Horn and Francine Le Péchon-Joubert of law firm De Gaulle Fleurance (Paris) and patent law firm
Novagraaf (Eric Enderlin and Nadège Lagneau) provided counsel in the now successfully concluded French trial. In Italy,
Milan-based law firm Trevisan & Cuonzo (Gabriel Cuonzo und Laura Orlando) and patent law firm Barzano & Zanardo
(Antonella de Gregori) act on behalf of BIOTEC. Novamont S.p.A. is represented by attorneys of law firm Lovells LLP both in
France and in Italy (France: Dominique Ménard; Italy: Prof. Luigi Mansani and Giovanni Ghirardi).
23
Natural Success - Heuking Kühn Lüer Wojtek Achieves Important Win in European-Wide Patent Infringement
Dispute Regarding Biodegradable Material
23 April 2010
In a substantial patent dispute over fire protection technology, Cologne-based FOGTEC Brandschutz GmbH & Co. KG
(www.fogtec.de) and Finnish Marioff Corporation Oy (www.marioff.com) agreed on an out-of-court settlement on November
17, 2008. The parties thereby resolved four patent infringement disputes before Regional Court and Higher Regional Court
Düsseldorf as well as three patent nullity proceedings before the German Federal Patents Court. FOGTEC was granted a
worldwide license in three of the four involved Marioff patents.
Subject matter of the proceedings were particular fire fighting systems of the Cologne-based company which are based on
an innovative high-pressure water mist technology. With this technology, water is atomized at high pressure allowing it to
fight fires with very small amounts of water as opposed to conventional sprinkler systems. This extremely effective
technology is used among others in tunnels and in rail vehicles.
FOGTEC Brandschutz GmbH & Co. KG was represented by Dr. Anton Horn, Partner and Melanie Künzel, LL.M., Associate
(both Heuking Kühn Lüer Wojtek, Düsseldorf) as well as by Philipe Walter, Patent Attorney, COHAUSZ & FLORACK.
24
Fire Out - Patent Dispute Over Fire Protection Technology Settled
23 March 2009
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26
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