Federal Court of Justice issues another positive decision for Las Navas Garcia

In February, the German Federal Court of Justice once again upheld Las Navas Garcia’s EP 1 455 175 (X ZR 137/22). The Spanish company had sued Herzog, a manufacturer of analysis systems, for patent infringement. The dispute concerns analysis furnaces for determining the purity content of mined iron ore. This technology is used, for example, in iron ore mines in Australia, South Africa and China.

Konstantin Schallmoser

In initial proceedings, Las Navas Garcia successfully took action against Eltra, the manufacturer of the analysis furnaces. The Federal Court of Justice upheld the patent in October 2024 (X ZR 145/23). Las Navas Garcia has now turned against Herzog Maschinenfabrik from Osnabrück, which installs these furnaces in its analysis systems. According to the ruling, Herzog must now provide information. The plaintiff Las Navas Garcia must then calculate its claim.

It is likely that the team led by Konstantin Schallmoser from the law firm Bonabry will then file a claim for damages with the UPC on behalf of Las Navas Garcia. This is a path that the team has already taken in the Fives vs Reel case. In this dispute between the two mechanical engineering companies, the UPC Court of Appeal in Luxembourg ruled that the UPC has jurisdiction for a damages claim, even if national courts have ruled on the patent infringement.

Damages opportunities due to UPC

This decision opens up new opportunities for companies that have obtained a positive national decision on patent infringement to claim damages. Due to different procedural rules, damages litigation before the UPC could be faster and cheaper than, for example, before national German courts. However, the case of Fives vs Reel has not yet reached the stage where this has been confirmed in practice.

Peter Meyer

Las Navas Garcia is a long-standing client of Schallmoser. Stephanie Thewes from Preu Bohlig‘s Munich office also played a role in the proceedings. At the turn of the year, the Paris and Hamburg teams of Preu Bohlig and a Munich partner split off under the name Bonabry, but they continue to represent some clients together. Patent attorney Manfred Witzany from Ingolstadt also represents Las Navas Garcia.

Initially, Rüdiger Erfurt from the law firm Schindhelm in Osnabrück represented Herzog in the infringement proceedings at the Munich Regional Court. After the first-instance judgment in July 2019, the company switched to Peter Meyer from Simmons & Simmons for the subsequent nullity and information proceedings. Pär Reiß from Stolmár & Partner is assisting as patent attorney. Matthias Koch represented the company on appeal at the Federal Court of Justice.