Lights on

Valeo has successfully defended two patents in the dispute over headlight technology. After partly losing its nullity suit in the first instance, Taiwanese auto lamp manufacturer Depo has now lost on appeal at the German Federal Court of Justice.

10 December 2018 by Mathieu Klos

Valio, Depo, German Federal Court of Justice ©fotoyou/STOCK.ADOBE.COM

The second instance ruling upholds the judgment of the German Federal Patent Court from spring 2017. The dispute revolves around fastening and ventilation technology for headlamps, which Depo Auto Parts markets worldwide.

Amendments made

Valeo Vision, the French subsidiary of global automotive supplier Valeo Group, claimed some Depo headlights infringe its patents. It thus filed suits for injunction, damages and recall at Düsseldorf Regional Court and the Commercial Court in Barcelona. Depo filed the current nullity suit (case IDs: X ZR 16/17 and X ZR 41/17) as a response to these infringement claims.

While the patent EP 0 764 811 (ventilation) was upheld in its current form, the German Federal Patent Court maintained the patent EP 0 933 254 (fastening) in an amended form only, which had an effect on the parallel infringement cases. Düsseldorf Higher Regional Court ruled in Valeo’s favour in the infringement proceedings over the ventilation patent in the second instance in 2016.

In the first instance proceedings over the fastening patent, Düsseldorf Regional Court only partially upheld the suit; the second instance proceedings are still pending.

Depo has lodged an appeal against the rulings in both infringement cases.

Ongoing trust

Patent attorneys at Prinz & Partner have advised Valeo on intellectual property matters for around 20 years, for example in connection with confiscations of suspected pirated products by customs authorities at the Frankfurt Automechanika trade fair. The team around Strass advised on the current nullity suit.

Jürgen Strass, Prinz & Partner

Jürgen Strass

In the parallel infringement proceedings, a team headed by Bird & Bird partner Felix Rödiger stands alongside patent attorney Strass. Bird & Bird also represents the client in the Spanish proceedings.

However, Valeo does not work exclusively with Bird & Bird in patent litigation. The company  has retained Taylor Wessing’s Munich partner Gisbert Hohagen, as well as patent attorneys from Prinz & Partner, for infringement proceedings against various automotive suppliers before Munich Regional Court.

Depo has long relied on Norton Rose Fulbright in both infringement and nullity proceedings. The team led by Munich partner Clemens Rübel also worked in part with London-based Norton Rose lawyer Pietsch. The first contact with the client was established about four years ago through a recommendation from the London office, and the firm has since worked for Depo on a number of occasions, for example in proceedings against Daimler.

The Madrid-based IP law firm Baylos represents the Taiwanese manufacturer in the Spanish proceedings. The firm also works closely with international IP boutique Taliens, founded in 2017 by former Olswang lawyers in Munich and Paris.

For Valeo:
Prinz & Partner (Munich): Jürgen Strass, Bernhard Pfleiderer (both patent attorneys)

For Depo Auto Parts:
Norton Rose Fulbright (Munich): Clemens Rübel, associates: Tiffany Zilliox, Maximilian Schmitz,  Inga-Marlene Pietsch (London)

Bundesgerichtshof, 10th Civil Chamber (patent chamber)
Peter Meier-Beck (presiding judge)
Beisitzer: Klaus Grabinski, Jochem Gröning, Helga Kober-Dehm, Fabian Hoffmann

Further cases between Valeo and Depo

Germany: Higher Regional Court Düsseldorf (case ID: 4b O 21/15): suit upheld in July 2016, final

Higher Regional Court Düsseldorf (case ID: 4b O 13/16): oral hearing on 22/08/2019

Spain: Commercial Court no. 1, Barcelona (case ID: 185/2016 – Sección E): no current information