BSH defends vacuum cleaner patent against Electrolux

After a long-standing dispute between BSH and Swedish company Electrolux, the German Federal Court of Justice has found EP 14 34 512, which is owned by household appliance manufacturer BSH, to be fully valid (case ID: X ZR 19/21). In doing so, the court overturned a first-instance ruling by the Federal Patent Court. In 2019, the court had fully nullified the patent.

Parallel infringement proceedings at the Düsseldorf Regional and Higher Regional courts, which were suspended pending a decision on the patent’s validity, could now resume.

Historic proceedings

For years, the parties have fought in various disputes over vacuum cleaner technology. As early as 2007, infringement proceedings concerning German patent DE 101 48 509, and utility model 201 22 492 were underway, the priority of which is claimed by EP 512.

Düsseldorf Regional Court dismissed BSH’s infringement action in October 2008. The company filed an appeal against this decision, with the action extended to include EP 512. At the end of 2009, the German Patent and Trade Mark Office (DPMA) nullified DE 509. A few months later, it also deleted the utility model while simultaneous opposition proceedings were pending at the EPO for EP 512. Therefore, the Higher Regional Court initially suspended the appeal proceedings in the infringement action (case ID: I-2 U 139/08).

Second generation

A few years ago, BSH filed another lawsuit regarding the second generation of Electrolux’s vacuum cleaner. According to the patent holder, this new embodiment also infringes EP 512. In 2018, BSH initially failed in its request for a preliminary injunction against Swedish competitor Electrolux at Düsseldorf Regional Court (case ID: 4c O 71/18). On appeal, the Higher Regional Court overturned the first-instance ruling in summer 2019 and imposed a preliminary injunction against Electrolux (case ID: I- 2 U 4/19).

Shortly before, the Technical Boards of Appeal had confirmed the validity of EP 512 in the opposition proceedings at the EPO (case ID: T 0621/15) . However, a nullity action against the German part of the patent was still pending at the Federal Patent Court.

The parties then entered into licensing negotiations, which initially failed. In spring 2020, Electrolux again offered the patent holder a contractual agreement.

A short time later, the Federal Patent Court indicated in a qualified notice that EP 512 would likely be destroyed. Electrolux then lowered its original offer for a licence. BSH responded by filing suit at Munich Regional Court to determine whether the parties had entered into a binding licence agreement covering all family members of EP 512. (case ID: 7 O 8011/20). The court dismissed the action in early 2021.

First null, then valid

In a September 2020 ruling, the Federal Patent Court declared the German part of the patent null and void. It had previously announced this in the qualified notice (case ID: 5 Ni 25/18). BSH appealed against this decision. With the current ruling, the Federal Court of Justice has now overturned this first-instance decision, thus confirming the German part of EP 512 to the extent upheld by the Technical Boards of Appeal.

Meanwhile, infringement proceedings on the merits are pending at Düsseldorf Regional Court for infringement of the second generation of vacuum cleaners (case ID: 4c O 49/19) and at the Higher Regional Court for the first generation of products (case ID: I-2 U 139/08). The proceedings concern different products which are protected by the same patent family. The courts are now likely to resume proceedings.

Roman Sedlmaier

Swedish CJEU referral

In parallel with the German proceedings, BSH and Electrolux have fought in Sweden since the beginning of 2020. Here, BSH’s infringement action covers the German as well as Austrian, Spanish, French, British, Italian, Dutch and Turkish parts of EP 512.

In May 2022, the Swedish Court of Appeal referred a question to the CJEU concerning the jurisdiction of Swedish courts for ruling on infringement proceedings arising from non-Swedish parts of patents (case ID: E-339/22).

Representation changes

In the nullity proceedings, BSH Haushaltsgeräte relied from the outset on patent attorney Norbert Struck of Gille Hrabal. He also conducted the opposition proceedings at the EPO. Litigator Roman Sedlmaier and patent attorney Jan Gigerich of IPCGS assisted Struck at the Federal Court of Justice, where Sedlmaier pleaded the case.

Norbert Struck

BSH initially retained the small IP boutique IPCGS for the declaratory action at the Regional Court in Munich, which then joined the nullity proceedings in the second instance. The team is also coordinating the Swedish proceedings. It is working with Advokatbyrån Gulliksson in the proceedings before the CJEU.

Beginning in 2003, the two name partners of IPCGS Sedlmaier and Gigerich advised BSH parent company Robert Bosch during their time at the law firm Frohwitter. Here, they handled the licensing of a patent portfolio for mobile communication.

When IPCom took over the portfolio, leading to a patent dispute with Nokia, Roman Sedlmaier represented Bosch in a high-profile FRAND case. In 2017, he and Gigerich left Frohwitter and founded IPCGS.

Reimann Osterrieth Köhler Haft, which later merged to form Hoyng ROKH Monegier, brought the first infringement action for BSH in 2007. A team from Düsseldorf IP boutique Wildanger Kehrwald Graf v. Schwerin & Partner took over in the appeal proceedings. The company is a regular client of partner Eva Geschke. In the present case, Ole Dirks took the lead.

Electrolux turns to old friends

Christian Harmsen

Electrolux has relied on Christian Harmsen of Bird & Bird in patent litigation matters for over 20 years. The Düsseldorf partner represented the Swedish kitchen appliance manufacturer in the infringement proceedings and in the declaratory judgment action before the Munich Regional Court.

In the nullity proceedings, a patent attorney team from mixed firm Meissner Bolte took the lead. It also conducted the opposition proceedings at the EPO for Electrolux and is active for the client in prosecution.

In the CJEU proceedings, Electrolux instructed the Swedish law firm Westerberg & Partners Advokatbyrå.

For BSH:
Gille Hrabal (Düsseldorf): Norbert Struck (patent attorney)
IPCGS Gigerich Sedlmaier (Munich): Roman Sedlmaier (partner), Jan Gigerich (patent attorney and partner)
In-house (Munich): Ernst-Peter Heilein (Head of IP3), Michael Krammer (both patent attorneys)

Gernot Schröer

For Electrolux:
Meissner Bolte (Munich): Markus Schlögl, Gernot Schröer (both partners and patent attorneys)
Bird & Bird (Düsseldorf): Christian Harmsen (partner), Tobias Wilke

Federal Court of Justice, 10th Senate
Klaus Bacher (presiding judge), Nina Marx, Helga Kober-Dehm, Hartmut Rensen, Patricia Rombach