Fives successful with damages claim in UPC appeal

French mechanical engineering company Fives and competitor Reel are fighting over EP 17 40 740 B1. It protects a compact service module for installations for the electrolytic production of aluminium.

In August 2022, Düsseldorf Regional Court found that Reel had infringed Fives’ patent. In August 2023, shortly after the launch of the UPC, Fives brought an action against Reel before the new court requesting the determination of damages.

From Düsseldorf to UPC

The UPC local division in Hamburg dismissed a claim by Fives for the determination of damages in December 2023. According to judge Sabine Klepsch, the UPC had no jurisdiction to determine the amount of damages in this case. Klepsch based her decision primarily on the fact that this type of claim is not listed in the new court’s jurisdiction catalogue.

Fives appealed the decision. Now the Luxemburg Court of Appeal around presiding judge Rian Kalden and judges Ingeborg Simonsson and Patricia Rombach ruled that “the Court has jurisdiction to decide on acts of infringement committed before the entry into force of the UPCA, as long as the European patent invoked has not yet lapsed at that date” (case ID: UPC_CoA_30/2024).

The dispute between Fives and Reel could have a global impact on aluminium production. Industry in China, Canada and Russia in particular produce the metal on a large scale.

The judgment is also of great importance for other patent infringement cases in which national courts have already established the infringement and validity of a patent – and thus, in principle, the infringer’s liability for damages – but have not yet set the amount of damages. Patent owners can now also have the amount of damages set by the UPC, provided that the patents have not been opted out.

On a national level, the German Federal Patent Court confirmed the patent in May 2022. In November last year the Federal Court of Justice dismissed the appeal and confirmed the validity of  EP 740 (case ID: X ZR 114/22).

After the spin-off

Fives has relied on a team around Bonabry partner Konstantin Schallmoser since the start of the dispute, including Daniel Hoppe and Carl-Alexander Dinges.

Schallmoser also represented the client in the first-instance proceedings in Hamburg, at that time he was partner in the Paris office of Preu Bohlig. Together with other Preu Bohlig partners from Hamburg and Munich he split off at the beginning of this year and formed the new law firm Bonabry.

Patent attorney Denis Boubal from French firm Plasseraud provided assistance in technical matters.

Hogan Lovells also advised its client Reel in the German proceedings, with a mixed team led by lawyer Benjamin Schröer and patent attorney Andreas Schmid.