Envipco and the operator of the German bottle deposit system DPG have settled their long-running dispute over a technology for sorting returnable bottles. The settlement should avert significant economic damage to the German deposit system. Vending machine, beverage and retail companies were also involved in the proceedings.
4 March 2021 by Mathieu Klos
Dutch Envipco Holding and DPG Deutsche Pfandsystem jointly announced a settlement agreement in February. Both parties agreed on a resolution of all pending legal disputes in Germany. As such, the two parties did not face each other in other countries. The dispute concerns bottle deposit systems in Germany.
DPG will make a onetime lump-sum payment of €1.85 million to Envipco. The Dutch company withdrew the appeal against the revocation of patent DE 10 2006 011 143 B4 and three related infringement actions.
In 2017, Envipco filed suits against beverage manufacturer Gerolsteiner at the Regional Court Mannheim (case ID: 2 O 80/17), retail company Netto at the Regional Court Düsseldorf (case ID: 4b O 48/17) and manufacturer of bottle labels Rako at the Regional Court Hamburg (case ID: 327 O 152/17).
Envipco accused the three companies of infringing German patent DE 143. This protects a technique for reading security features.
It is unclear why Envipco did not sue DPG as the operator of the deposit system or Tomra as the largest manufacturer of reverse vending machines directly. However, the three defendants are important participants in the deposit system. Most likely, this increased the pressure on DPG.
As a result, DPG joined all infringement proceedings as co-defendant. Tomra only joined Gerolsteiner and Netto as co-defendant.
The German deposit system is the most advanced in Europe. Several billion glass and PET bottles and aluminium cans are in circulation, most of which require a mandatory deposit. All German supermarkets have machines where customers can return empty bottles and cans. Germans recycle 95 percent of these, according to the Federal Environment Agency.
DPG operates this system, which turns over an estimated several billion euros per year. A shutdown of the machines due to a patent infringement would have meant serious economic consequences. Therefore, the lawsuits were met with huge resistance.
In 2016 DPG filed an opposition against the granting of the patent at the German Patent and Trademark Office. Netto and Tomra later joined the opposition. Quiss AG, a manufacturer of turnkey image processing solutions, also participated in this case but is not involved in the infringement suits against the deposit system.
The German Patent and Trademark Office revoked the Envipco patent in June 2019 (case ID: 10 2006 011 143.5). The Dutch company filed an appeal and since then, the infringement proceedings in Düsseldorf, Mannheim and Hamburg have been stayed.
The parties did not comment on the reasons for the settlement. However, the revocation of the disputed patent may have contributed to this. Another possible reason is a change in management at Envipco.
Simon Bolton, the new CEO of Envipco comments, “Settling the IP and other litigation matters in Germany at this time is appropriate for the company. It allows the company to be fully focused on building the organisation and executing to deliver on the exciting DRS opportunities ahead.”
Envipco is a Netherlands-based holding company. It develops and operates reverse vending machines (RVMs), automated technological systems for the recovery of used beverage containers. Envipco is not currently active in the German market, although it is considered extremely attractive market for the company. Competitor Tomra manufactures the majority of the returnable bottle machines.
Most parties involved in the proceedings worked with their go-to firms from the beginning. Bird & Bird has a long-standing relationship with Envipco. It conducted the proceedings with a mixed team of lawyers and patent attorneys led by Düsseldorf partner Felix Rödiger.
Conversely, Tomra changed horses during the trial. Initially, the vending machine manufacturer was represented by a Munich-based patent attorney firm. Later, however, Hogan Lovells partner, and dual-qualified lawyer and patent attorney, Martin Fähndrich took over the litigation.
Bird & Bird (Düsseldorf): Felix Rödiger (lead), Jonas Smeets (Düsseldorf, both IP), Felix Harbsmeier, Moritz Neidel (Hamburg, both patent attorneys), Jörg Witting (Düsseldorf, anti-trust law), Benedikt Burger (Frankfurt, insolvency law), Michael Brooks-Zavodsky (Düsseldorf, litigation), Alexander Csaki (Munich, public law)
K&L Gates (Berlin): Klaus Schubert (lead), Julia Goetz; Christiane Schweizer (patent attorney)
Eisenführ Speiser (Berlin): Joachim von Oppen (patent attorney)
Hogan Lovells (Düsseldorf): Martin Fähndrich, Frederic Mühlenbruch
Meissner Bolte (Munich): Tobias Wuttke (lead), Stefan Zech, Florian Henke (both patent attorneys)
CMS Hasche Sigle (Cologne): Gerd Schoenen, Simon Biermann
btb Bungartz Baltzer (Cologne): Klaus Bungartz (patent attorney)
Esche Schümann Commichau (Hamburg): Oliver Stegmann
Kehl Ascherl Liebhoff & Ettmayr (Munich): Andreas Ascherl (patent attorney)
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