BARDEHLE PAGENBERG successful for RANPAK against STOROPACK again – Higher Regional Court of Karlsruhe confirms finding of patent infringement by STOROPACK’s Classic and Classic2 cushioning conversion machines

Press release dated March 26, 2021

Online shopping is booming during the pandemic. This also increases the use of cardboard boxes and of paper cushioning products, like paper pads, placed into the boxes for protecting the shipped products.  

RANPAK HOLDINGS 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 Hans Reichenecker GmbH (“STOROPACK” below) based on infringement of claim 1 of the Patent by STOROPACK’s PAPERplus® Classic and Classic2 and Chevron and Chevron2 cushioning conversion machines on December 30, 2014 before the Regional Court of Mannheim (court docket: 7 O 210/14). The Regional Court pronounced its decision on December 4, 2015, finding infringement of claim 1 of the Patent by STOROPACK’s PAPERplus® Classic and Classic2 cushioning conversion 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 since December 30, 2004. STOROPACK was also ordered to render accounts regarding the distribution of consumables for these machines, such as STOROPACK’s PAPERplus® paper. With regard to the Chevron and Chevron2 machines, the Regional Court found no infringement. 

Both sides filed an appeal against the Regional Court’s judgment to the Higher Regional Court of Karlsruhe (court docket: 6 U 9/16). On appeal, the infringement proceedings were temporarily stayed until a final decision regarding the validity of the Patent in the parallel nullity proceedings initiated by STOROPACK. While the Federal Patent Court had revoked the Patent in first instance (court docket: 3 Ni 12/16 (EP), 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. 

After the Patent was upheld, the infringement appeal proceedings were resumed, and the Higher Regional Court of Karlsruhe announced its appeal judgment on March 11, 2021, confirming the Regional Court’s finding of infringement with regard to STOROPACK’s PAPERplus® Classic and Classic2 cushioning conversion machines and non-infringement with regard to the Chevron and Chevron2 machines. Furthermore, it was confirmed that STOROPACK must render accounts with regard to consumables, STOROPACK’s PAPERplus® paper in particular. Deviating from the first instance decision, the Higher Regional Court additionally ordered STOROPACK to remove the sensors for detecting removal of paper pads at the machine’s exits from all Classic and Classic2 machines distributed by STOROPACK since 2011 and prior to the expiration of the Patent at their customers and in their own possession and to destroy such sensors. In addition, RANPAK will be renewing its request for a full accounting so that a determination can be made of the damage caused by STOROPACK’s infringing acts.

A further legal appeal to the Federal Court of Justice was not admitted by the Higher Regional Court of Karlsruhe. 

Representatives of RANPAK Corp.: BARDEHLE PAGENBERG (Munich)
Prof. Dr. Tilman Müller-Stoy (Lead Attorney-at-Law, Partner)
Joachim Mader (Lead Patent Attorney, Partner)
Dr. Michael Kobler (Attorney-at-Law, Counsel)
Alexander Wunsch (Patent Attorney, Counsel)
Sebastian Horlemann (Attorney-at-Law, Senior Associate)

Representatives of Storopack Hans Reichenecker GmbH:
Hoyng ROKH Monegier
(Duesseldorf)
Dr. Mirko Weinert (Lead Attorney-at-Law, Partner)
Dr. Beatrix Metelski (Attorney-at-Law, Senior Associate)
Thorsten Gspandl (Attorney-at-Law, Associate)

DREISS Patentanwälte (Stuttgart)
Prof. Dr. Alexander Bulling (Lead Patent Attorney, Partner)
Dr. Thomas Knapp (Patent Attorney, Partner)

Higher Regional Court of Karlsruhe, 6th Senate
Prof. Dr. Stefan Singer (Vice-Presiding Judge at the Higher Regional Court)
RiOLG Christoph Lehmeyer (Judge at the Higher Regional Court)
RiOLG Dirk Böttcher (Judge at the Higher Regional Court)

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作者

Tilman Müller-Stoy
Attorney-at-Law (Rechtsanwalt), Certified IP lawyer, Commercial Mediator (MuCDR), Partner

Tilman Müller-Stoy

Joachim Mader
German and European Patent Attorney, Partner

Joachim Mader

Michael Kobler
Attorney-at-Law (Rechtsanwalt), Counsel

Michael Kobler

Alexander Wunsch
German and European Patent Attorney, Counsel

Alexander Wunsch

Sebastian Horlemann
Attorney-at-Law (Rechtsanwalt), Commercial Mediator (MuCDR), Senior Associate

Sebastian Horlemann