Press release dated June 5, 2023
RANPAK Corp. (“RANPAK” below) (NYSE: PACK) is a global leader of environmentally sustainable, paper-based packaging solutions for e commerce and industrial supply chains and holds a number of corresponding European and US patents amongst others. One of these patents, the German part of European Patent 0 776 760 B2 (“the Patent” below) protected an innovative design of a cushioning conversion machine for converting paper stock into cushioning pads made from paper with a plurality of sensors, allowing for the production of paper pads of various lengths. The Patent particularly protected automatic on-demand production of a paper pad upon removal of the previous pad from the machine’s exit.
RANPAK filed a patent infringement action against Storopack Deutschland GmbH & Co. KG (“STOROPACK” below) based on infringement of claim 1 of the Patent by STOROPACK’s PAPERplus® Classic and Classic2 cushioning conversion machines on September 18, 2019, before the Regional Court of Mannheim (court docket: 2 O 112/19). The Regional Court pronounced its decision on August 3, 2021, finding infringement of claim 1 of the Patent by STOROPACK’s PAPERplus® Classic and Classic2 machines. Since the Patent lapsed in July 2015, there was no basis for a claim for injunctive relief, but STOROPACK was found to be liable for damages and ordered to render accounts for all infringing activities from September 2009 until the lapse of the Patent. STOROPACK was also ordered to render accounts inter alia regarding the distribution of consumables for these machines, such as STOROPACK’s PAPERplus® paper, even after the lapse of the Patent.
STOROPACK filed an appeal against the Regional Court’s decision on September 1, 2021 (court docket: 6 U 245/21). In its decision of February 22, 2023, the Higher Regional Court largely dismissed STOROPACK’s appeal. Like the Regional Court, the Higher Regional Court found infringement of claim 1 of the Patent by STOROPACK’s PAPERplus® Classic and Classic2 machines and confirmed that STOROPACK is liable for damages and obliged to give information and render accounts, including on consumables for these machines and including on revenue made after the expiration of the Patent because of infringing activities committed during the lifetime of the Patent. Only regarding the latter issue, the Higher Regional Court admitted a legal appeal to the Federal Court of Justice.
On 27 March 2023 RANPAK filed a lawsuit for damages against STOROPACK seeking damages of rounded EUR 122 million before the Regional Court of Munich I which is ongoing.
In a parallel lawsuit by RANPAK against STOROPACK’s general partner (“Komplementärin”) Storopack Hans Reichenecker GmbH, the Regional Court of Mannheim (court docket: 7 O 210/14, judgment of December 4, 2015) and the Higher Regional Court of Karlsruhe (court docket: 6 U 9/16, judgment of March 10, 2021) had already issued similar decisions, finding infringement of claim 1 of the Patent by STOROPACK’s PAPERplus® Classic and Classic2 machines, including consumables for these machines and including revenue made after the expiration of the Patent. Upon appeal by STOROPACK, the Federal Court of Justice admitted the appeal on points of law regarding the latter issue (court docket: X ZR 30/21). These proceedings are still pending; the oral hearing was scheduled for November 14, 2023.
In prior proceedings regarding the validity of the Patent initiated by Storopack Hans Reichenecker GmbH, the Federal Patent Court had revoked the Patent in first instance (court docket: 3 Ni 12/16 (EP)), while the German Federal Court of Justice upheld the Patent in its entirety upon RANPAK’s appeal (court docket: X ZR 26/17) by final decision of May 7, 2019. STOROPACK filed a second nullity action before the Federal Patent Court on February 23, 2022 (court docket: 8 Ni 14/23 (EP)). This second nullity action is still pending. However, the Federal Patent Court already issued the so called qualified opinion on February 3, 2023, stating that the second nullity action will have to be rejected according to its preliminary view.
Representatives of RANPAK Corp.: BARDEHLE PAGENBERG (Munich, Germany):
Prof. Dr. Tilman Müller-Stoy (Lead Attorney-at-Law (Rechtsanwalt), Certified IP Lawyer, Commercial Mediator (MuCDR), Partner)
Joachim Mader (Lead German and European Patent Attorney, Partner)
Dr. Michael Kobler (Attorney-at-Law (Rechtsanwalt), Counsel)
Alexander Wunsch (German and European Patent Attorney, Counsel)
Sebastian Horlemann (Attorney-at-Law (Rechtsanwalt), Commercial Mediator (MuCDR), Counsel)
Representatives of Storopack Deutschland GmbH & Co. KG:
Hoyng ROKH Monegier (Duesseldorf, Germany)
Dr. Mirko Weinert (Lead Attorney-at-Law, Partner)
Dr. Beatrix Kuhlmann (Attorney-at-Law, Senior Associate)
DREISS Patentanwälte (Stuttgart, Germany)
Dr. Thomas Knapp (Patent Attorney, Partner)
Higher Regional Court of Karlsruhe, 6th Senate
VorsRiOLG Andreas Voss (Presiding Judge at the Higher Regional Court)
RiOLG Christoph Lehmeyer (Judge at the Higher Regional Court)
RiLG Benjamin Stihler (Judge at the Regional Court)