Press release of March 7, 2016

The Regional Court of Mannheim had ruled at first instance (docket no. 7 O 100/13), on March 21, 2014, that Expresso Deutschland GmbH and its Managing Director at that time were infringing the German part of the European patent EP 1 019 311 B1 relating to a lifting carriage, the patent proprietor being the Swedish company Pronomic AB. Expresso was accordingly ordered, inter alia, to cease manufacturing, offering for sale and marketing in Germany "lift2move" lifting carriages (formerly known as "Lift&Drive"), which fall within the scope of protection of patent claim 1 (without any provisional enforcement of the cease-and-desist order).

Upon appeal by the Defendants, the Higher Regional Court of Karlsruhe has now, at second instance, substantially upheld the judgment of the Regional Court of Mannheim by judgment dated February 24, 2016 (docket no. 6 U51/14).

The Higher Regional Court of Karlsruhe refused permission to appeal on points of law against the judgment. The Defendants still have the option of bringing a complaint against denial of leave to appeal to the German Federal Court of Justice. [Update from 04.11.2016: The defendants have filed a complaint against denial of leave to the German Federal Court of Justice.] Significant parts of the judgment of the Higher Regional Court of Karlsruhe are provisionally enforceable until the Defendants provide security in the amount of EUR 525,000 where no security has been provided by the Plaintiff, or if the latter has provided security, then in the same amount as the latter. [Update from 10.07.2017: In the meantime, the parties have reached a mutual agreement.]

For further details, the judgment of the Higher Regional Court of Karlsruhe can be viewed here.

The reason for the litigation was that Expresso was previously a German distributor of lifting carriages patented by Pronomic. However, in 2012, Expresso and Pronomic terminated their cooperation after Expresso had begun to manufacture and sell its own lifting carriages, which are now the subject matter of the appeal judgment.

Particular features of the proceedings:

In the course of the first nullity complaint, Expresso Deutschland GmbH obtained a partial revocation of the German part of the European patent 1 019 311 B1 to the extent of granted patent claims 1, 3, 7, 10 and 11 before the German Federal Patent Court (judgment dated June 18, 2015; docket no. 1 Ni 20/14). Pronomic lodged an appeal against this judgment, on which a ruling is still pending (docket no. X ZR 127/15).

Following the judgment of the German Federal Patent Court, Pronomic limited the demand for relief in the infringement proceedings to infringement of dependent claim 2, as this was not attacked by the first nullity complaint and was therefore still legally valid. The Higher Regional Court of Karlsruhe also considered this limited claim to have been infringed and found against the Defendants accordingly. A second nullity complaint, which was filed by Expresso Deutschland GmbH after the judgment of the German Federal Patent Court but before the judgment of the Higher Regional Court of Karlsruhe, and which extends, inter alia, to patent claim 2 (now found to be infringed) and is still pending a ruling, could not justify a stay of proceedings according to the Higher Regional Court of Karlsruhe, as the latter deemed revocation of the patent-in-suit to the extent of claim 2 as asserted to be unlikely. The Higher Regional Court of Karlsruhe took the view that Expresso also had to accept the objection that the first nullity complaint was not extended to patent claim 2 in due time.

Representatives of Pronomic AB: BARDEHLE PAGENBERG (Munich, Germany)
Dr. Tilman Müller-Stoy (Attorney-at-Law, Partner)
Dr. Hans Wegner (German and European Patent Attorney, Partner)
Dr. Benjamin Ruckert (German and European Patent Attorney)

Representatives of Expresso Deutschland GmbH, u. a.: Fritz Patent- & Rechtsanwälte (Arnsberg and Lippstadt, Germany)
Marco Hoffmann, Jörg Graefe

Higher Regional Court of Karlsruhe, 6th Civil Senate:
Dr. Schmukle (Presiding Judge), Prof. Dr. Singer, Dr. Rombach

Date

Author