Italian automotive supplier Metatron has won a long-running dispute with Volkswagen over natural gas vehicles. The German Federal Court of Justice declared a patent for a methane-injecting technology valid, thus overturning the first-instance decision. However, it's not over yet for VW.
31 January 2020 by Konstanze Richter
Patent EP 1 209 336 B1 protects a technology used primarily for injecting methane into internal combustion engines in natural gas-powered cars. Metatron saw its intellectual property rights infringed by Volkswagen and sued the German manufacturer in 2014 for injunctive relief, damages, information and the rendering of accounts before the Regional Court Munich (case ID: 7O5234/14). The court granted the application. The judges found that VW had infringed the patent with its gas injection systems in various models of its EcoFuel line (case ID X ZR 143/17).
The Higher Regional Court Munich confirmed a ruling from 2017 in the second instance (case ID: 6U2748/15) and denied VW leave to appeal. VW filed an appeal against the denial of leave to appeal.
Due to VW’s parallel nullity suit against the Metatron patent, the enforcement of the judgment in the infringement proceedings was suspended until the patent’s validity had been clarified.
In the meantime, VW continued to manufacture natural gas-powered vehicles. The ruling of the Higher Regional Court, argued VW, did not affect new cars anyway. VW claimed to have modified the technology in such a way that it no longer infringed the patent. However, Metatron doubted this. It has demanded, in addition to damages, injunctive relief until the patent expires in November 2021.
In summer 2017, a few months after the ruling from the Higher Regional Court Munich, VW’s nullity suit was successful. The Federal Patent Court declared two essential claims of EP ‘336 null and void (case ID 1 Ni 12/15 EP). Metatron appealed against that judgment and the Federal Court of Justice has now ruled in favour of the automotive supplier.
However, it’s not the end of the conflict. VW’s appeal against the denial of leave to appeal is still pending before the Federal Court of Justice (case ID: X ZR 22/17).
The patent attorneys of MFG as well as CBH partner and lawyer Stephan Gruber have a long-standing client relationship with VW, working on the case from the very beginning. This includes the infringement proceedings before the Regional and Higher Regional Courts Munich.
MFG, which spun off from Samson & Partner in 2011, works for VW mainly on patent applications for drive technology, but also in litigation. Gruber joined CBH from Preu Bohlig in mid-2017, shortly before the nullity ruling of the German Federal Patent Court, and brought the case with him. Prior to this, CBH had been advising VW for years on employee invention law.
Munich patent attorney Matthias Weigel advised Metatron on the nullity case. He was supported by lawyers from Taylor Wessing. They came to the case via the patent attorneys at Italian firm Bugnion, with which Weigel has cooperated for years. The team won the infringement cases together with the Bugnion patent attorneys Leonardo Firmati and Umberto Zermani. (Co-authors: Mathieu Klos, Christina Schulze)
Weigel & Kollegen (Munich): Matthias Weigel (patent attorney)
Taylor Wessing (Munich): Gisbert Hohagen, associate: Sebastian Kratzer
Reiner Hall (Karlsruhe): Reiner Hall (attorney appointed to the Federal Court of Justice)
MFG Meyer-Wildhagen Meggle-Freund Gerhard (Munich): Till Gerhard, Frank Meyer-Wildhagen (both patent attorneys)
CBH Rechtsanwälte (Munich): Stephan Gruber
Rohnke Winter (Karlsruhe): Christian Rohnke (attorney appointed to the Federal Court of Justice)
Federal Court of Justice Karlsruhe, 10th Civil Senate
Klaus Bacher (presiding judge), Nina Marx (judge rapporteur), Hermann Deichfuß, Klaus Grabinski, Fabian Hoffmann