Shenzhen Comen and Maucher Jenkins overturn PI at Düsseldorf Regional Court

Chinese companies Shenzhen Comen Medical Instruments and Shenzhen Mindray Medical Instruments are currently fighting over a patent for a valve used in respiratory devices. In November 2022, the latter company had accused Shenzhen Comen of infringement after it exhibited its products at the Medica trade fair in Düsseldorf. This resulted in the city’s regional court handing down a preliminary injunction.

However, the PI did not cover the entire machine, only the specific valve. In May 2023, after a second round of proceedings, the court concluded that Shenzhen Comen did not infringe the patent and withdrew the injunction (case ID: 4b O 82/22).

Trouble at the trade fair

EP 3 102 271 B1 concerns a device and method for a valve with low resistance, specifically for controlling the flow of at least one fluid through at least one channel. Medical professionals commonly use such respiratory apparatus in anaesthesia machines or in medical ventilators, for example to allow a patient to breathe artificially if they are unable to breathe independently.

The dispute began in November 2022 at the Medica trade fair. Shenzhen Comen exhibited its Comen V3 and Comen V8 ventilators, both of which contain a removable valve used in its repiratory devices. Due to nuances in the German system, when a company rents a booth at a trade fair in Germany, it becomes an official, albeit temporary, place of business. As such, during the trade fair, Shenzhen Mindray presented Shenzhen Comen with a warning letter to cease displaying the apparently infringing valve.

When Shenzhen Comen failed to respond, on 17 November – the last day of the fair – Shenzhen Mindray presented it with a preliminary injunction, issued by Düsseldorf Regional Court against the V3 and V8 valves. The injunction prohibited Shenzhen Comen from selling the two products in Germany and also required the company to pay the costs of the infringing items.

Shenzhen Comen disputes PI

Since Shenzhen Comen is domiciled in China, with no EU premises, injunctive relief could only be enforced at the trade fair. With the contested valves exhibited for such a short time, the plaintiffs did not have to prove EP 271 in opposition or nullity proceedings at first instance.

However, on 27 April the Düsseldorf Regional Court heard an application to annul the preliminary injunction, based on what the defendant said was its failure to take into account a small step in its product relating to the valve. Based on the evidence, the court overturned its initial determination of a PI, instead annulling the application and ordering Shenzhen Mindray to bear the cost of proceedings. Parallel proceedings on the merits are also ongoing in China.

Michael Nielen

Array of expertise

When Shenzhen Comen was first presented with the preliminary injunction, it had no legal representation in Germany. It thus turned to UK and German firm Maucher Jenkins, which also has offices in Beijing and Shenzhen.

Michael Nielen, partner and head of litigation for Maucher Jenkins in Germany, led the team, which involved lawyers from three of its offices, including Shenzhen. Handong Ran, partner at the Shenzhen office, is accompanying the client in parallel proceedings in China.

Shenzhen Mindray relies on CMS Hasche Sigle, which also deployed several lawyers from across its offices in Germany. Partners Winfried Bullinger, who is an expert in copyright law, and Stefan Lüft, who is experienced in patent law, led the team.

Developments in teams

For Shenzhen Comen Medical Instruments
Maucher Jenkins (Freiburg): Michael Nielen, Johannes Lange (patent attorney) (both partners); associate: Ulrike Kaufmann, Cheng Yang (Munich, patent attorney)
Maucher Jenkins (Shenzhen): Handong Ran (patent attorney, partner)

For Shenzhen Mindray Medical Instruments
CMS Hasche Sigle (Berlin): Winfried Bullinger (Berlin), Stefan Lüft (Munich) (both partners); associate: Sven Krause (Düsseldorf)

Düsseldorf Regional Court, 4b. Civil Chamber
Daniel Voß (presiding judge), judge Nottmeier, judge Schröder

Update 22.9.2023: The Higher Regional Court Düsseldorf has now overturned the first-instance court’s second decision, which overturned an original PI. Thomas Kühnen, presiding judge of the 2nd Civil Senate, decided to reinstate the original preliminary injunction granted by the regional court at the end of 2022. Kühnen and his fellow judges found the first-instance court had wrongly withdrawn the PI in May 2023.

With its latest decision, the Higher Regional Court reinstated the sales ban for respiratory machine valves of a certain type (case ID: I-2 U 64/23). In addition, Shenzhen Mindray Medical Instruments, as the original defendant, must bear the majority of the costs of the proceedings.

In addition to the law firms already involved in the first proceedings, Stephan Neuhaus and patent attorney Caroline Bley from Allen & Overy supported the CMS team in the second instance. They represented the patent owner, Shenzhen Mindray Medical Instruments. Neuhaus came to the instruction through contacts of Allen & Overy partner from the Shanghai office, Jill Ge.

The dispute was one of Thomas Kühnen’s final hearings, before his retirement in January 2024.

JUVE Patent updated this news on 22.09.2023 to reflect the latest developments in the case between Shenzhen Comen and Shenzhen Mindray.