German weapons manufacturer Heckler & Koch has been successful in a first instance patent infringement suit against competitor C.G. Haenel. As well as a parallel patent battle, the two companies are also competing for a major contract from the German Armed Forces.
2 December 2021 by Christina Schulze
Düsseldorf Regional Court has ruled that C.G. Haenel’s CR 223 assault rifle infringes a patent held by competitor Heckler & Koch. Specifically, the rifle manufacturer enforced European patent EP 20 18 508 B1, which protects a type of rifle-locking system. The dispute concerns the openings for rapid water drainage from the gun.
The court did not award the claim for indemnification, as well as parts of the claims for damages, information, accounting, and recall for a specified period of time, based on the statute of limitations defence.
Furthermore, the court did not stay proceedings pending a nullity suit filed at the Federal Patent Court (case ID: 7 Ni 29/20), as the infringement proceedings only concern a part of the patent.
C.G. Haenel is likely to appeal the decision at the Düsseldorf Higher Regional Court.
The patent dispute is set against the background of a major contract from the German Armed Forces. For 60 years, its assault rifle supplier was Heckler & Koch. The army then awarded the contract to C.G. Haenel, which is a traditional German company known for producing hunting rifles.
For Heckler & Koch, the army’s decision to change suppliers is economically problematic. The company has filed an application for review under public procurement law.
Now the German Armed Forces procurement authority, the Federal Office of Bundeswehr Equipment, Information Technology and In-Service Support (BAAINBw), must comprehensively review the awarding of the contract.
Meanwhile, another aspect of the contractual dispute has come to the fore concerning which party submitted the most economical bid.
The procurement case from Haenel against the German Armed Forces continues in the second instance next year. Regardless, the patent proceedings continue and it is likely that the Federal Patent Court will hear the nullity case in the first half of 2022.
In parallel, Heckler & Koch filed a negative declaratory judgment action against rifle magazine manufacturer Magpul, which accuses the arms manufacturer of infringing its patents. Here, Magpul is represented by Bird & Bird partners Christopher Maierhöfer and Dominic Igel.
Preu Bohlig & Partner ‘s Christian Donle represents Haenel in the patent infringement dispute following a referral.
In addition, the company regularly works with patent attorney Christoph Engel from law firm, Patentschutzengel.
Partner Friedrich von Samson-Himmelstjerna filed the patent application for Heckler & Koch in 2007. In the infringement proceedings, the company relies on IP law firm Hoyng ROKH Monegier.
For Heckler & Koch
Hoyng ROKH Monegier (Düsseldorf): Klaus Haft (lead, partner), Mirko Weinert (partner); associates: Max von Leitner, Larissa Otten
Samson & Partner (Munich): Friedrich von Samson-Himmelstjerna, Ralf Haft ( both partners, both patent attorneys)
For C.G. Haenel
Preu Bohlig & Partner (Berlin): Christian Donle (partner)
Patentschutzengel (Suhl): Christoph Engel (patent attorney)
Düsseldorf Regional Court (4a O 68/20)
Bérénice Thom (presiding judge)