BARDEHLE PAGENBERG enforces patent against HORNBACH on behalf of TOPSEAT

Press release dated December 12, 2019

TOPSEAT International, Inc. (“TOPSEAT”), one of the world’s leading manufacturers in the field of sanitary equipment, owns several intellectual property rights for its toilet seats. These IP rights include the European patent EP 3 205 497 which relates to a laminate composite toilet lid and seat with a decorative graphic layer and a protective layer. Seats according to the teaching of the patent are offered in a number of major DIY stores in Germany and other European countries.

In September 2018, TOPSEAT, represented by BARDEHLE PAGENBERG, filed a complaint for patent infringement with the Regional Court of Mannheim against the German DIY store chain Hornbach Baumarkt AG (“HORNBACH”). In its judgment dated June 21, 2019, the Regional Court of Mannheim (docket no. 7 O 122/18) confirmed that HORNBACH infringed TOPSEAT’s patent EP 3 205 497 and acceded to all demands made by TOPSEAT, including those for injunctive relief, information, damages and destruction.

First, HORNBACH challenged the judgment of the Regional Court of Mannheim and lodged an appeal against it. However, HORNBACH withdrew its appeal in November 2019. Since the appeal was withdrawn by HORNBACH, the judgment rendered by the Regional Court of Mannheim is final and absolute, and HORNBACH will no longer be allowed to offer and sell the toilet seats which make use of the teaching of the patent of TOPSEAT in the future.

One of the questions which this patent dispute was about deals with the relation between the claim for compensation (Art. 67 EPC, Art. II Sec. 1(1),(2) German Law on International Patent Treaties) and any potential right of prior use pursuant to Sec. 12 German Patent Act in cases where the claims as granted deviate from the version originally published.

For HORNBACH had invoked that such a right of prior use allegedly exists with respect to the (broad) subject matter of the patent claims in the published version of the patent application. The version of the patent claims that was granted later and, thus, the subject matter of the granted patent, was narrower, and HORNBACH was not able to prove use before the filing date regarding said narrower subject matter. With respect to that situation, the Regional Court of Mannheim held that only the subject matter for which the patent claims were granted is relevant for a claim for compensation. Any prior use which does not relate to the invention in accordance with the narrower version of the claims as granted is irrelevant. According to the Regional Court of Mannheim, nothing else applies to a potential admissibility of variations of subject matter previously used as the subject matter of the invention is infringed at any rate if the party using the invention before the filing date specifically adds features to which the protection was limited in retrospect.

Opposition proceedings are pending before the European Patent Office. TOPSEAT is confident that it will also prevail in these proceedings.

Representatives of TOPSEAT: BARDEHLE PAGENBERG (Munich)
Dr. Christof Karl (Attorney-at-Law & German and European Patent Attorney, Partner)
Pascal Böhner (Attorney-at-Law, Certified IP Lawyer, Partner)
Tobias Kaufmann (German and European Patent Attorney, Partner)
Liding Zhang (Patent Engineer)

Representatives of HORNBACH
Dr. Birgit Kramer (Attorney at Law), Allen & Overy, Munich
Dipl.-Ing. Eva Kohlstedde (Patent Attorney), Buse Mentzel Ludewig, Wuppertal

7th Civil Chamber of the Regional Court of Mannheim:
Presiding Judge at the Regional Court Dr. Tochtermann
Judges at the Regional Court Dr. Alles and Lehmeyer



Christof Karl
Attorney-at-Law (Rechtsanwalt) & German and European Patent Attorney, Partner; Attorney-at-Law admitted to practice in Germany and New York

Christof Karl

Pascal Böhner
Attorney-at-Law (Rechtsanwalt), Certified IP Lawyer, Partner*

Pascal Böhner

Tobias Kaufmann
German and European Patent Attorney, Partner

Tobias Kaufmann