A decision by the European Patent Office has finally ended a dispute between patent holder AVL and its competitor Maha Maschinenbau. The Technical Boards of Appeal, which destroyed a patent for exhaust gas control technology, overturned a decision of the Opposition Division.
18 October 2021 by Konstanze Richter
EP 2 414 808 B1, which the EPO’s Technical Boards of Appeal has recently destroyed, protects a system for taking exhaust gas samples from internal combustion engines. The automotive industry relies heavily on the system, which is applied to test benches or rigs on which exhaust gas values are tested and determined. AVL owns the patent.
On test benches and rigs, a dilution tunnel calms injected air in order to measure the particle density. Diesel generally produces large, heavy particles, whereas petrol combustion emits very small particles. To test diesel engines as well as gasoline engines, test benches originally needed two dilution tunnels. EP 808 concerns the use of only one dilution tunnel for both types of engines.
Major car manufacturers such as BMW and Daimler, as well as testing organisations such as TÜV, regularly use these test benches and rigs.
With over 11,000 employees globally e and subsidiaries in 30 countries, patent holder AVL is one of the largest suppliers in this field. The Austrian company develops systems for CO2 reduction and tests drive systems in the automotive and other industries.
In 2013, AVL sued German competitor Maha-AIP at Düsseldorf Regional Court for infringement of its German patent DE 10 2009 015 188 B4 (case ID:4a O 79/13) and EP 808 (case ID: 4 O 113/13). Both patents protect the same technology. The application for EP 808 B1 refers to the priority of DE 188.
The defendant responded to the infringement action by filing oppositions against the patents at the German Patent and Trademark Office (DPMA), and at the EPO. At the same time, Japanese measuring device manufacturer Horiba also filed an opposition against EP 808. However, Düsseldorf Regional Court suspended both infringement suits pending the ruling on validity.
The Federal Patent Court then revoked the German patent in 2016, but in October 2017 the EPO’s Opposition Division decided to maintain EP 808 in an amended form according to an auxiliary request filed in August 2014. Maha filed an appeal against this decision. But other opponent Horiba did not join the appeal.
The definition of a ‘dilution tunnel’ as set out in claim one of the patent played a major role in the validity dispute. While the Opposition Division interpreted the term much more broadly, the Board of Appeal found that no clearly-defined structural features could be derived from the term “dilution tunnel”. Thus, the wording left room for interpretation for a person skilled in the art.
Now the EPO’s Board of Appeal reversed the decision of the Opposition Division and revoked the patent for lack of inventive step. In this it followed the German Federal Patent Court when revoking the DE 10 2009 015 188 B4.
At no point had the courts prevented Maha or AIP from selling their products on the German market. The courts issued no preliminary injunction, and no judgment in the main proceedings.
Patent owner AVL relied on Düsseldorf-based patent attorney firm ter Smitten Eberlein-Van Hoof Rütten, which since 2008 has regularly acted for the Austrian client in filings. Patent attorney Peter Rütten specialises in automotive and engine technology, and exhaust gas purification. Thomas Musmann of Rospatt Osten Pross provided legal advice in both infringement proceedings.
Munich-based patent law firm Merh IP regularly acts for Maha and its subsidiary AIP, especially in patent filing. In addition, the team also advises on technical issues in infringement cases, for example alongside Arnold Ruess for Polaris in the patent dispute with Nvidia.
Merh IP and Hogan Lovells have a longstanding working relationship, particularly in mobile phone disputes. In the current infringement dispute at Düsseldorf Regional Court, Hogan Lovells partner Steffen Steininger defended Maha. He had previously worked for the client in the dispute over the German AVL patent.
Andrew Hards of Munich-based patent attorney firm Global IP Europe acted for Japanese opponent Horiba. The team also includes two Japanese patent attorneys. However, Horiba was not involved in the appeal proceedings.
For AVL Emission Test Systems
ter Smitten Eberlein-Van Hoof Rütten Daubert (Düsseldorf): Peter Rütten
For AIP/MAHA Maschinenbau Haldenwang
Merh IP (Munich): Herbert Skreinig, Bruno Matias
European Patent Office, Technical Boards of Appeal 3.4.02
Roland Bekkering (presiding judge), André Hornung, Bernhard Müller, Hans-Christoph von Gronau, Georg Decker