Reel and Hogan Lovells deflect damages suit in dispute with Fives ELC

French mechanical engineering company Fives ECL and competitor Reel are fighting over EP 17 40 740 B1. It protects a compact service module for installations for the electrolytic production of aluminium. The patent expired in March 2025. The parties, who operate in the market for specialised cranes used in aluminium smelters as part of the aluminium production process, are fighting over damages.

In August 2022, Düsseldorf Regional Court found that Reel had infringed Fives’ patent. The 4c Chamber headed by Sabine Klepsch at the time held that the defendant is obliged to compensate the claimant for all damages incurred as a result of the infringement (case ID: 4c O 1/21). Neither party appealed the decision. A parallel nullity claim was dismissed first by the Federal Patent Court then in the second instance by the Federal Court of Justice in November 2024 (case ID: X ZR 114/22).

Loss of a tender

In August 2023, shortly after the launch of the UPC, Fives ELC brought an action against the German subsidiary of Reel before the local division Hamburg. The French claimant asked the panel headed by Sabine Klepsch to determine damages.

Fives bases its claim on a tender for the project Alba Potline 6 in Bahrain, in which both Fives and Reel submitted offers in 2016. The claimant argues that, without Reel’s patent-infringing bid, it would have won the tender from the outset. A non-infringing alternative from the defendant would have been more expensive and not competitive, claims Fives.

Reel initially won the tender in early 2017. After the process was challenged and reopened, Fives ultimately won the contract in February 2017, but only after substantially lowering its price by €6.5 million from its original offer from December 2016. Reel argues that Fives failed to prove it would actually have won the contract at the original price and that the French company’s first offer had been too expensive.

Back to Hamburg

In December 2023, the UPC local division in Hamburg dismissed Fives’ claim. According to judge Sabine Klepsch, the UPC had no jurisdiction in this case. Fives appealed the decision.

In January last year the UPC Court of Appeal found that the UPC has jurisdiction to decide on acts of infringement committed before the entry into force of the UPCA, as long as the European patent invoked has not yet lapsed at that date (case ID: UPC_CoA_30/2024). The Court of Appeal then referred the case back to the local division Hamburg.

No damages for Fives

Once more, a panel under presiding judge Sabine Klepsch, including legally qualified judges Stefan Schilling and Mojca Mlakar, as well as technically qualified judge Max Tilmann, was called on to decide the case. The court dismissed Fives’ damages claim, judging that Fives failed to prove the company would have won the contract in the first place without the infringement (case ID: UPC_CFI_274/2023).

Furthermore, the judges ruled that in this case German law applies because the relevant events occurred before the start of the UPC on 1 June 2023. However, the court also pointed out that “since both national (German) law on damages and the UPCA are based on the same enforcement directive, in this case there should be no difference in the assessment of a claim for damages for loss of profit”.

Fives has appealed the decision.

Late last year, Reel International, parent company of the German subsidiary, filed a revocation action against EP 740 at the central division Munich. The patent previously survived the German nullity action (case ID: UPC-CFI-0002296/2025).

New kid on the block

Fives ELC has relied on a team from Bonabry since the start of the dispute. Paris-based partner Konstantin Schallmoser led the case together with Daniel Hoppe from the Hamburg office. Associates Isabel Werner, Yasmine Azzaoui, Christian Holtz, and Christian Kube assisted. Patent attorney Denis Boubal from French firm Plasseraud provided assistance in technical matters.

Hogan Lovells also advised Reel from the beginning of the dispute. In the German proceedings, two partners — litigator Benjamin Schröer and patent attorney Andreas Schmid — led the case. In the proceedings over damages, Benjamin Schröer took the lead, with assistance from associate Leonard Hollander.

However, a French team from Jones Day filed the revocation action at the central division Munich. Paris-based partner Thomas Bouvet is in the lead here.