ID cards and passport producer Bundesdruckerei may continue to produce ID documents using embossed plates from manufacturer VTT. The Berlin Regional Court dismissed a claim by Credit Card Supplies, that Bundesdruckerei and VTT had infringed its German patent.
8 September 2020 by Konstanze Richter
US company Credit Card Supplies, based in Marlborough, Massachusetts, owns the German patent DE 10 2004 041 434 B4. The patent protects a process for embossing 3D structures in sheet metal, which are used on hot-cold laminating presses to produce identity documents and credit cards. However, the US company claimed VTT and Bundesdruckerei had infringed its patent DE 434 B4.
VTT Verschleißteiltechnik in Langenhagen, near Hanover, manufactures high-tech lamination plates for creating secure documents, such as passports, driving licences, national IDs, bank and health insurance cards. These products all feature integrated security components. Bundesdruckerei is a customer of VTT, using the latter’s plates to produce ID cards and passports.
However, Credit Card Supplies claimed both companies had infringed its German patent. The company sued for injunction, information and damages before the Regional Court Berlin in 2019 (case ID: 16 O 10/19). Because defendant Bundesdruckerei is based in Berlin-Kreuzberg, the Berlin court had local jurisdiction. Usually, patent cases in Germany tend to go to the courts in Düsseldorf, Munich or Mannheim.
Bundesdruckerei and VTT responded by filing a nullity suit at the Federal Patent Court (Case ID: 3 Ni 26/19). Previously, Bundesdruckerei had attacked the patent with opposition proceedings. However, the court upheld the patent in both instances.
In the infringement case, VTT argued that the process used in manufacturing its embossed sheets does not correspond to the patented process. Therefore, argued VTT, its process does not infringe the patent. The court agreed with this argument and dismissed the suit at the first instance. As a result, Credit Card Supplies has announced that it intends to appeal the judgment.
However, an injunction would have far-reaching consequences because Bundesdruckerei, which belongs to the German state, produces documents and devices for secure identification. In addition to passport and ID card systems, this includes high-security cards, document verification devices and security software, as well as banknotes, stamps, travel visas, vehicle documents and tobacco revenue stamps.
If the patent dispute forced the company to halt production, it could have a serious impact on areas where such official documents are required.
Lorenz Seidler Gossel arrived at the case through independent patent attorney Peter Riebling, who represented Credit Card Supplies in the opposition proceedings. He regularly calls in Lorenz Seidler Gossel for infringement cases. Philipp Neuwald led the current case, while patent attorney Wolfgang Behr advised on technical questions.
Boehmert & Boehmert has advised Bundesdruckerei on patent filing for many years. The company develops its own technologies, such as electronic access systems. For the current infringement proceedings, patent attorney Thomas Bittner called in Munich partner and litigator Michael Rüberg. Bundesdruckerei also mandated the Frankfurt based patent team from Linklaters around Julia Schönbohm
Patent attorney Thorsten Rehmann from Gramm, Lins & Partner specialises in mechanical engineering. Previously, Rehmann has worked for VTT for various patent applications at the EPO. VTT also retained the mixed firm for the infringement case. Gramm, Lins & Partner recently stood out for its work for Bury in the prominent dispute between Nokia and Daimler over connected cars patents.
For Credit Card Supplies
Lorenz Seidler Gossel (Munich): Philipp Neuwald, Wolfgang Behr (patent attorney)
Gramm, Lins & Partner (Braunschweig): Hanns-Peter Schrammek, Thorsten Rehmann (patent attorney)
Boehmert & Boehmert (Munich): Michael Rüberg, Thomas Bittner (patent attorney); associate: Lars Eggersdorfer
Linklaters (Frankfurt): Julia Schönbohm
In-house (Frankfurt): Till Prömmel (Lead Technology Intellectual Property), Oliver Ulrich
Regional Court Berlin, 16th Civil Chamber
Dirk van Dieken (presiding judge)