The German Federal Court of Justice has upheld a European patent for paper technology owned by packaging solutions provider Ranpak. The dispute, which has been ongoing since 2015, is with Sprick GmbH Bielefelder Papier. Bardehle Pagenberg and Boehmert & Boehmert acted for each company respectively.
25 June 2020 by Amy Sandys
European patent EP 18 96 250 covers a design for paper technology for ‘Selectively tearable stock material for a dunnage conversion machine and method.’ The patent protects a design for perforated paper for a so-called dunnage conversion machine.
The machine allows the paper to avoid tearing during the conversion process. Such packaging is used in e-commerce to protect products delivered in cardboard boxes.
In 2015, the infringement proceedings began. Netherlands-based packaging solutions provider Ranpak faced German packaging system provider Sprick GmbH Bielefelder Papier at the Regional Court Düsseldorf (case no. 4a O 169/15) over the patent for paper technology. Ranpak claimed Sprick infringed the German part of EP 250.
Ultimately, the court granted an injunction against Sprick. The court also ordered a claim for a rendering of accounts, recall of infringing products, destruction of infringing products, and damages.
Sprick did not appeal the infringement decision. However, in 2015 Sprick also filed a nullity action at the German Federal Patent Court in Munich (case no. 4 Ni 7/17). This succeeded at first instance. However, Ranpak then appealed the nullity decision of the Munich court to the German Federal Court of Justice in Karlsruhe (case no. X ZR 154/18). Following an oral hearing on 16 June, the court rejected the previous nullity decisions. The judges upheld the patent, albeit to a limited extent.
The panel of five judges included new presiding judge Klaus Bacher, who is officially the presiding judge of the 10th Civil Senate at the German Federal Court of Justice. Bacher succeeded former presiding judge Peter Meier-Beck. The latter moved from the patent senate to the antitrust senate in 2019.
The mixed firm Bardehle Pagenberg has represented Ranpak for over 25 years. The relationship began via Bernhard Geissler, one of Bardehle’s founding partners, and was furthered by Peter Hess. Bardehle represents Ranpak in all its European IP work, litigation, counselling and for some patent filing.
Nils Schmid, partner at Boehmert & Boehmert, led the case for Sprick. The firm has worked with the client for over ten years.
Bardehle Pagenberg (Munich): Joachim Mader (patent attorney), Tilman Müller-Stoy, Stefan Lieck (all partners); Alexander Wunsch (patent attorney) Sebastian Horlemann
Boehmert & Boehmert (Munich): Nils Schmid (partner); Florian Malescha (patent attorneys)
Taylor Wessing (Munich): Jan Phillip Rektorschek (partner), Sabine Rojahn
German Federal Court of Justice, 10th Senate
Klaus Bacher (presiding judge), Klaus Grabinski, Nina Franziska Marx, Patricia Rombach, Hartmut Rensen