Disc brake dispute between Meritor and BPW

Meritor is a US company based in Troy, Michigan. It manufacturers brakes, axles, gearboxes and other parts for the automotive industry. German defendant BPW Bergische Achsen, situated just east of Cologne, is an automotive supplier active in the same market segment. Both parties are suing each other at the Regional Courts Düsseldorf and Mannheim over their patents and utility models.

The Düsseldorf judgment concerns the German part of European patent EP 1 441 142, which protects a force transmission device for a disc brake in trucks. The judges ordered defendant BPW to cease and desist, provide information and render accounts. BPW says it will appeal the decision. Additionally, a nullity suit against the patent is also pending at the Federal Patent Court. A hearing date has been set for the beginning of 2021.

Damage control

The Regional Court Düsseldorf has suspended a further case concerning an expired utility model (DE 20 2005 005 798), as the judges await a decision on validity from the German Patent and Trade Mark Office (DPMA). The hearing is scheduled for October 2019. However, since the contested utility model has already expired, the dispute is primarily concerned with possible damages.

Boris Kreye

The dispute was set in motion by a suit at the Regional Court Mannheim (case ID: 2 O 160/17), where the plaintiff BPW is suing Meritor over one of its patents (DE 10 2004 002 571). The patent covers a protective right for a brake caliper for a disc brake for trucks.

However the suit has been suspended to await the outcome of a parallel nullity suit at the Federal Patent Court. Another suit concerning a utility model (DE 20 2004 021 249) is also pending in Mannheim.

Long-term consulting

Bird & Bird partner Boris Kreye has advised US client Meritor for over ten years. The contact stems from the personal acquaintance between Kreye and the chief patent counsel at Meritor, Scott Confer. In the current case, the firm represented the automotive supplier with a mixed team of lawyers and patent attorneys.

A team of litigators around partner Köhler from Hoyng ROKH Monegier represented BPW Bergische Achsen, supported by the Düsseldorf patent attorney firm Bungartz Christophersen. The firm’s patent attorneys regularly work for the German automotive supplier on patent applications. Furthermore, Hoyng ROKH Monegier has a long-standing client relationship with BPW.

Martin Köhler

For Meritor:
Bird & Bird (Munich): Boris Kreye (lead), Simon Reuter, Arne Wolf (patent attorney)
In-house (Troy): Scott Confer (chief patent counsel)

For BPW Bergische Achsen
Hoyng ROKH Monegier (Düsseldorf): Martin Köhler (lead); Thomas Misgaiski
Bungartz Christophersen Partnerschaft (Düsseldorf): Ulrich Christophersen (patent attorney)
In-house (Wiehl): Michael Schwarz (head of patent), Arthur Neumann

Regional Court Düsseldorf, 4a civil chamber
Tim Crummenerl (presiding judge), Carsten Haase (deputy presiding judge)