Heckler & Koch has cleared a stumbling block in a dispute over new assault rifle procurement for the German army. The arms manufacturer and its supplier Magpul have settled a patent case over the rifle's munition magazine. But a procurement dispute, also involving competitor Haenel, is ongoing.
4 March 2022 by Mathieu Klos
German weapons company Heckler & Koch and US magazine maker Magpul settled a patent dispute last week. According to reports from several media outlets, the two companies agreed that Heckler & Koch may offer and sell a magazine it developed itself in both the UK, and in EU countries.
The agreement applies especially to a tender currently underway by the German Armed Forces, although details remain scarce. Over the course of the tender for 120,000 new assault rifles, the question had arisen whether Heckler & Koch’s magazine for the rifle infringes Magpul’s EP 22 08 957. The EPO granted the patent in 2013 and it has never been challenged by competitors.
To eliminate doubt, Heckler & Koch filed a negative declaratory action at the Regional Court Düsseldorf against Magpul, although the court never heard the case. As part of the settlement, Heckler & Koch has now withdrawn the claim.
Although it has reached an agreement with Magpul, Heckler & Koch has removed only one hurdle to landing a major order for the new rifle. The main obstacle is a procurement dispute between competitor C.G. Haenel and the German Armed Forces.
For a long time, it looked as if the German Armed Forces procurement authority (Federal Office of Bundeswehr Equipment, Information Technology and In-Service Support, or the BAAINBw) would award Haenel the contract. The authority is responsible for awarding such defence contracts.
But in March 2021, the BAAINBw made an about-face. It ruled out Haenel in favour of Heckler & Koch, due to alleged patent infringement.
Last December, Düsseldorf Regional Court ruled that Haenel’s CR 223 assault rifle infringes a patent held by Heckler & Koch. Specifically, the rifle manufacturer enforced European patent EP 20 18 508 B1, which protects a type of rifle-locking system (case ID: 4a O 68/20). The dispute concerns the openings for rapid water drainage from the gun.
The court did not stay proceedings pending a nullity suit filed at the Federal Patent Court (case ID: 7 Ni 29/20), as the infringement proceedings only concern a part of the patent.
Haenel later appealed the Düsseldorf decision. JUVE Patent is not yet aware when Düsseldorf Higher Regional Court will hear the case. The same applies for the nullity case at the German Federal Patent Court.
Just two days ago, the Düsseldorf Higher Regional Court heard a lawsuit filed by Haenel against the German Armed Forces procurement office. Here, Haenel wants to clarify whether its exclusion from the tender due to allegations of patent infringement is legal.
Haenel argues that it does not infringe Heckler & Koch’s patent because the patent was wrongly granted. The court plans to announce its ruling on April 6.
In the patent proceedings, Heckler & Koch relies on IP law firm Hoyng ROKH Monegier. Partner Friedrich Samson-Himmelstjerna of Munich-based patent attorney firm Samson & Partner filed the patent application for Heckler & Koch in 2007. The firm is also responsible for the technical aspects of the dispute with Haenel.
Although Heckler & Koch’s negative declaratory judgment action was never heard by the court, Magpul was represented by Bird & Bird.
Preu Bohlig & Partner ‘s Christian Donle represents Haenel in the patent infringement dispute.
For Heckler & Koch
Hoyng ROKH Monegier (Düsseldorf): Klaus Haft (lead, partner), Mirko Weinert (partner); associates: Max von Leitner, Larissa Otten
Samson & Partner (Munich): Friedrich Samson-Himmelstjerna, Ralf Haft (both partners, both patent attorneys)
Bird & Bird (Munich): Christopher Maierhöfer (partner); associate: Dominic Igel
In another side to the story, the Düsseldorf Higher Regional Court has rejected C.G. Haenel’s appeal against a previous ruling. Now, the German Armed Forces will award a lucrative arms contact to Haenel’s south German competitor, Heckler & Koch. Previously, an infringement case brought against C.G. Haenel by manufacturer Heckler & Koch had halted the awarding of the valuable contract to the UAE-owned competitor.
Last year, Heckler & Koch filed an infringement suit against Haenel, causing the court to conclude that it cannot award a procurement contract to a company under investigation for patent infringement. The patent pertained to bore holes drilled into the weapon, to more efficiently release gasses and liquids.
After Heckler & Koch claimed infringement, Haenel hit back by filing a nullity action before the Federal Patent Court to overturn the patent.
In the patent revocation proceedings, Heckler & Koch had specified its very broad patent claim to certain rifles. This combination of patent-relevant features were not previously the subject of the Düsseldorf hearing. Since the validity ruling might have affected the survival prognosis of Heckler’s patent, the awarding senate had scheduled further hearing dates before reaching a final judgement.
In March of last year, the German government prevented Haenel from bidding for the contract. This prompted Haenel to pursue an official complaint against the German Armed Forced Procurement Authority.
Court documents detailed that the procurement office had excluded Haenel from the procedure due to ‘serious professional misconduct’ via patent infringement. Now, the German Federal government has opted to accelerate procurement for the Bundeswehr. This means the deal is considered to be certain.
Parts of this update originally appeared as ‘KDU-Mandant darf Sturmgewehr-Zuschlag an Heckler & Koch erteilen’ on www.juve.de, written by Sonja Behrens.
This article was updated on 24.06.2022 to reflect the latest decision of the Düsseldorf Higher Regional Court