Nipro wins dispute over dialyser patent with Taylor Wessing and Betten Resch

Fresenius’ EP 1 671 695, which protects a “hollow fibre dialyser comprising curled hollow fibres”, expired in 2021. The current proceedings therefore mainly concerned the question of damages.

Mannheim Regional Court found the patent to be infringed in June 2020. Nipro then lodged an appeal, but the Higher Regional Court initially suspended the infringement proceedings until the Federal Patent Court had ruled on the patent’s validity.

Amended in opposition

In its nullity action, the Japanese medical technology manufacturer challenged the German part of the patent on the grounds of added matter. In opposition proceedings, the EPO upheld EP 695 in amended form in February 2021.

After the Federal Patent Court also upheld the German part of the patent in late 2022 (case ID: 3 Ni 11/21), Karlsruhe Higher Regional Court confirmed the first-instance Mannheim decision in March 2024 and declared the patent infringed (case ID: 6 U 111/20). An appeal against the denial of leave to appeal is currently pending before the Federal Court of Justice.

Simultaneously, an appeal against the Federal Patent Court’s validity ruling was pending. In its latest ruling, the Federal Court of Justice has now reached a different conclusion than the first instance and declared EP 695 invalid (case ID: X ZR 50/23). The grounds for the judgment are not yet available. The appeal against the denial of leave to appeal in the infringement proceedings is therefore moot.

Alongside the German proceedings, the parties are also in dispute in France and Belgium. The Judicial Court Paris revoked the French part of the patent in late 2024 due to lack of inventive step. An appeal is pending. In Belgium, the first instance court ruled that the patent was valid but not infringed. This case is now under appeal.

Japan connection

Nipro relied on a team from Taylor Wessing and patent attorneys from Betten & Resch in both the infringement proceedings and recent nullity action. Munich-based Taylor Wessing partner Christian Lederer has close contacts in Japan, which led to his involvement in the case. He regularly advises Japanese chemical and semiconductor company Nichia, for example.

Anja Lunze and Verena Bertram supported Lederer in the Nipro proceedings. He frequently works with patent attorneys at Betten & Resch. Munich partner René Günther had already filed an EPO opposition for Nipro. Federal Court of Justice lawyer Rainer Hall assisted in the nullity case.

Taylor Wessing also represented Nipro in Belgium. The Brussels litigators worked alongside lawyers from Dutch firm Nauta Dutilh and patent attorneys from Patentwerk. In France, August Debouzy’s IP practice, led by Grégoire Desrousseaux, represents the Japanese medical technology manufacturer.

One team fits all

Fresenius Medical Care instructed litigation firm Quinn Emanuel. Marcus Grosch’s team is known for handling infringement and nullity proceedings as well as EPO oppositions, sometimes without patent attorney support. For instance, he represented Netflix in the EPO opposition against a DivX patent and in the nullity suit against Broadcom’s German patent. Litigators Andreas Duensing and Stefan Fuchs supported Grosch in the EP 695 case.

The patent attorneys at Lorenz Seidler Gossel, who handled the patent filing and EPO opposition proceedings, provided technical advice.

In France, Fresenius relies on Aramis’ former IP practice. The team led by litigator Benjamin May moved to Jeantet in early 2024. Crowell & Moring represented the German dialysis manufacturer in Belgium.