MB Digitalprint may continue to manufacture and sell its water-repellent aluminium composite sheets in Germany. The Federal Patent Court in Munich has nullified the patent of competitor Winwall.
20 January 2021 by Konstanze Richter
The Federal Patent Court in Munich has nullified the patent of MB Digitalprint’s competitor, Winwall. EP 25 62 002 protects a procedure whereby double-coated composite aluminium sheets are painted several times in different finishes, which seals them (case ID: 3 Ni 5/18). The sheets allow for customised wall design for all kinds of walls.
Furthermore, the process ensures the sheets are water-repellent. The sheets are therefore used in wet rooms such as bathrooms, or in outdoor areas such as building façades.
Winwall, which is based near Munich, owns the patent. In 2017, managing director Thomas Schneider filed an infringement suit against shower cubical provider Schulte Home (case ID: 21 O 15601/17) and its supplier MB Digitalprint at the Regional Court Munich. The latter responded with a nullity suit at the Federal Patent Court. The court postponed the nullity dispute hearing, originally slated for March 2020, due to the COVID-19 pandemic.
Meanwhile, the Regional Court put the infringement suit on hold pending clarification of the patent’s validity. If the patent holder does not appeal the Federal Patent Court’s ruling, the proceedings will likely resume.
Observers are not yet certain whether it will do so. However, it seems likely, given the wide spectrum of possible uses and resulting economic importance.
Further European patents exist for a similar technology for use on glass and acrylic sheets. Another patent filed for plastic composite sheets is currently in the process of being granted by the European Patent Office.
The United States Patent and Trademark Office (USPTO) has already granted a corresponding patent for acrylic sheets. JUVE Patent understands that opponents have filed complaints against the patent for aluminium composite sheets, which is currently in the filing process.
Initially, Frankfurt-based patent attorney firm Fuchs conducted the nullity suit for MB Digitalprint. Then, later, Pinsent Masons partner Michael Schneider brought in patent attorney Marc Wachenhausen of WBH Wachenhausen. The two often work together in patent disputes, for instance for Neovasc Tiara against Edward Lifesciences subsidiary CardiAQ over implants for mitral heart valves.
MB Digitalprint relied on Pinsent Masons for the infringement proceedings. The contact arose through Munich-based corporate law partner Ulrich Lohmann, who had already worked for the other defendant Schulte Home. Lohmann, who moved to Meister Rechtsanwälte in 2019, was a founding partner of Pinsent Masons’ first German office in Munich. He brought patent litigator Michael Schneider on board for the patent dispute.
Patent attorney firm Richter Gerbaulet Thielemann Hofmann represented patent holder Thomas Schneider in the nullity suit. Name partner Andreas Hofmann had already assisted in filing the patent at the EPO. His Hamburg colleague Hannes Gerbaulet frequently works with Taylor Wessing partner Gisbert Hohagen, bringing him in for the infringement proceedings.
Initially, Sara Burghart worked on the case with him. However, in November 2018, she joined Sandoz as lead IP counsel.
For MB Digitalprint
WBH Wachenhausen (Munich): Marc Wachenhausen (patent attorney)
Pinsent Masons (Munich): Michael Schneider
Rinkler (Karlsruhe): Axel Rinkler (lawyer admitted to the Federal Court of Justice)
For Thomas Schneider/Winwall
Richter Gerbaulet Thielemann Hofmann (Munich): Andreas Hofmann (patent attorney)
Taylor Wessing (Munich): Gisbert Hohagen, associate: Sebastian Kratzer
Hall (Karlsruhe): Reiner Hall (lawyer admitted to the Federal Court of Justice)
Federal Patent Court, 3rd Senate (3 Ni 5/18)
Walter Schramm (presiding judge)
Federal Court of Justice, 10th Senate (X ZR 32/21)
Klaus Bacher (presiding judge), Fabian Hoffmann, Helga Kober-Dehm, Nina Franziska Marx, Tim Crummenerl
Update 24.10.2022: On 18 October 2022, the Federal Court of Justice has rejected an appeal in the second instance (case ID: X ZR 32/21), thus destroying the German part of EP 002. As a result, the Regional Court Munich (case ID: 21 O 15601/17) should also now withdraw the pending infringement action. MB Digitalprint can continue to sell its products in Germany.
EP 002 is one patent in a patent family which protects the same process as for painting aluminium sheets, but for other substrates. Examples include plastic, acrylic, or plexiglass and polyethylene. MB Digitalprint has also filed oppositions against EP 25 62 004 and EP 21 58 095, with the EPO recently revoking the latter. However, in the US the process is protected by a corresponding US patent (US 8,714,766 B2). Another patent, EP 25 62 003, is still in the granting process, while opposition proceedings against EP 004 remain ongoing.
Both parties relied on the same teams in the appeal proceedings as in the nullity proceedings at the Federal Patent Court. In the meantime, litigator Michael Schneider moved from Pinsent Masons to Eisenführ Speiser, bringing the mandate to his new firm. In the appeal proceedings, Gisbert Hohagen also acted without his associate Sebastian Kratzer.
Additionally, in the appeal proceedings Axel Rinkler and Reiner Hall represented WBH Wachenhausen and Thomas Schneider, respectively. Both lawyers, who are attorneys-at-law admitted to practice before the Federal Court of Justice, have many years of experience in patent litigation.
JUVE Patent updated this article on 24.10.2022 to reflect the latest developments in the nullity proceedings.