In a dispute with Hörmann, Assa Abloy is no longer allowed to manufacture and distribute certain shapes of its industrial doors in Germany. The Higher Regional Court Düsseldorf partially upheld an infringement action brought by Hörmann, in doing so overturning a first-instance ruling.
11 August 2021 by Konstanze Richter
The subject of the dispute between Assa Abloy and Hörmann was the latter’s patent EP 2 103 771 B2, which protects a warehouse door with a wicket door. This has a low threshold to prevent tripping and thus meets the requirements for an escape door.
The European Patent Office had upheld the patent in modified form during opposition and subsequent appeal proceedings in early 2020. Defendant Assa Abloy was one of eight opposing parties, and one of the three appellants.
Assa Abloy Entrance Systems manufactures sectional doors, which are used in warehouses. In one of its product catalogues, the Swedish manufacturer offered them in two possible versions. One version features a cap on the threshold of the escape door, which raises its threshold. The second version lacks this element and, according to Hörmann, infringes its EP 771.
Hörmann sued competitor Assa Abloy for patent infringement in 2016. However, Düsseldorf Regional Court dismissed the action at the end of 2020 (case ID: 4b O 76/16). Hörmann then appealed this decision. The Higher Regional Court Düsseldorf, on the other hand, ruled that the second version of the door without the threshold element infringed the patent. In doing so, the court upheld the action (case ID: I-2 U 58/20).
As a result, the Swedish defendant may not manufacture or market the infringing sectional door in Germany. According to the judges, the doors have identical characteristics to those manufactured by Hörmann.
However, the Higher Regional Court Düsseldorf ruled that the alternative door design, where the threshold is covered with a steel cap and thus has a trip hazard, did not infringe the patent. Consequently, the defendant may continue to sell these in Germany.
A central issue of the dispute was whether an intermediate product of the manufacturing process, in this case the door without a threshold element, infringes a patent if the end product – namely, the door with a cap on the threshold – does not infringe. This situation regularly arises in chemical patents.
Assa Abloy no longer distributes the catalogue on the German market and does not sell the intermediate form without the threshold element in the country.
GvW Graf von Westphalen partner Sebastian Heim has advised Hörmann since the beginning of the proceedings. At that time, the Munich-based patent litigator was still working for Beiten Burkhardt. In spring, he moved with a team to GvW Graf von Westphalen, where he is building up the German law firm’s IP practice. Beiten Burkhardt had also represented the client in the dispute against Novoferm. Matthias Stecher was the lead partner at the time.
Boehmert partner Klaus Seranski advised on technical issues. The patent attorney regularly advises Hörmann on filing and prosecution, but also in validity proceedings. Seranski also represented the German garage door manufacturer in the opposition and appeal proceedings concerning EP 771 at the EPO.
Hoyng ROKH Monegier has advised Assa Abloy for years. Düsseldorf patent litigator Martin Köhler represented the client from the start of the infringement proceedings. Bremen patent attorney Udo Tappe represented the Swedish manufacturer in the opposition and appeal proceedings.
GvW Graf von Westphalen (Munich): Sebastian Heim (partner)
Boehmert & Boehmert (Munich): Klaus Seranski (partner)
For Assa Abloy
Hoyng ROKH Monegier (Düsseldorf): Martin Köhler (partner); associate: Larissa Otten
Zacco (Bremen): Udo Tappe
Düsseldorf Higher Regional Court, 2nd Civil Senate
Thomas Kühnen (presiding judge)