Licensing agreement

Benteler takes patent licence from Faurecia after long dispute

French company Faurecia Intérieur Industrie and supplier Benteler have reached an agreement following a long dispute over patent licences. Now the two automotive industry suppliers have ended several legal disputes over various patents in Germany, Spain and the Czech Republic.

26 July 2021 by Konstanze Richter

Faurecia, Benteler Benteler has taken licenses from Faurecia regarding dashboard crossmembers for car interior ©peshkova/ADOBE STOCK

Faurecia Intérieur Industrie, based in Nanterre, France, manufactures dashboards, center consoles and door panels for car interiors. It owns two patent families, EP 2 499 038 and EP 2 542 462, both of which concern dashboard crossmembers. Competitor Benteler supplies structural parts to the automotive industry, including VW for its MQB (Modular Transverse Toolkit) platform.

However, Faurecia considered both patent families infringed by Benteler’s products, with the parties fighting in several European courts since 2019.

In Spain (case ID: 1588/2020-3) and the Czech Republic (case ID: 41 Cm 45/2019), the French manufacturer sued for patent infringement. In Germany, the defendant pre-empted the patent owner and filed for a negative declaratory action at the Regional Court Düsseldorf (case ID: 4a O 30/20). Benteler wanted the court to clarify that the company did not infringe the patents in Germany. The hearing was scheduled to take place in October 2021.

Axel Oldekop

At the same time, Benteler initiated several proceedings to challenge the patent’s validity. This included an opposition against EP 038 before the EPO, a nullity suit before the Federal Patent Court against EP 462 (case ID: 1 Ni 6/20 (EP)) and a nullity suit against the Czech part of EP 038 before the Czech Intellectual Property Office.

The EPO’s opposition division upheld EP 038 in a limited form. Both parties lodged an appeal, which was still pending. The other infringement and validity proceedings were also still pending. Now the parties have agreed on a settlement.

As such, Benteler will take a licence from Faurecia for both patent families. The parties have agreed not to disclose further details of the settlement.

Coordination from Germany

Faurecia relied on an interoffice team from Preu Bohlig. Munich lead partner Axel Oldekop has a long-standing client relationship with the French automotive supplier. He also took over the international coordination of the individual proceedings in Germany, the Czech Republic and Madrid.

Axel Verhauwen

Axel Verhauwen

Nicolas Cornet of Lavoix provided support on technical issues. For years, the patent attorney firm has regularly advised Faurecia, for example in application proceedings at the EPO. However, the case was the first major collaboration between Preu Bohlig and Lavoix.

Benteler and Krieger Mes von der Groeben also have a relationship going back many years. Düsseldorf partner Axel Verhauwen regularly advises the client in patent disputes, filing the nullity suit for Benteler in the current case.

Patent connections

Mayer Brown also has a long-standing relationship with Benteler, particularly in corporate law. IP partner Christoph Crützen led the negotiations for the agreement in cooperation with Martin Pohl, Head of IP Management at Benteler.

He also coordinated the work of the law firms in the individual jurisdictions.

Bochum patent law firm Bockermann Ksoll Griepenstroh Osterhoff filed both the nullity suit at the Federal Patent Court, and the opposition at the EPO. Name partner Peter Ksoll also regularly acts for Benteler in application proceedings.

Christoph Crützen

For Faurecia
Preu Bohlig (Munich): Axel Oldekop, Konstantin Schallmoser (Paris); associate: Carl-Alexander Dinges (Hamburg)
Lavoix (Paris): Nicolas Cornet (patent attorney)
Abril Abogados (Madrid): Ignacio Temiño; associate: Jorge Oria Sousa-Montes
Šindelka Lachmannová
(Prague): Karel Šindelka, Eva Lachmannová
In-house (Nanterre): Christophe Vougny (Group Intellectual Property Director), Jérôme Mézière (Head of Intellectual Property), Lorleï Guery, Aurélia Roux, Anne-Caroline Groussin, Anne Delerable.

For Benteler
Mayer Brown (Düsseldorf): Christoph Crützen; associates: Maximilian Kücking, Benjamin Beck, Nina Gierschner
Krieger Mes & Graf v. der Groeben (Düsseldorf): Axel Verhauwen
Bockermann Ksoll Griepenstroh Osterhoff (Bochum): Peter Ksoll (patent attorney)
Elzaburu (Madrid): Colm Ahern
Havel & Partners
(Prague): Jan Šturm, Tomas Havelka, Anna Hlavacova
In-house (Paderborn): Martin Pohl (Head of IP Management)