Munich, April 30, 2021 – In a decision dated April 20, 2021, the Federal Court of Justice dismissed the appeal of Conradi + Kaiser GmbH against the non-admission of the appeal against the judgment of the Munich Higher Regional Court for lack of fundamental importance of the case (Case No.: X ZR 92/19). The Munich Higher Regional Court had previously found that there was no patent infringement in a negative declaratory action brought by Gum-Tech s.r.o. against Conradi + Kaiser GmbH. This decision is now final.
Since 1995, Gum-Tech, based in Slovakia, has been producing safety slabs made of recycled rubber granulate, which are used, among other things, in the form of lawn grating slabs for surfacing parks, gardens, camping sites or playgrounds. The dispute was whether these products infringe the German part of the European patent EP 2 019 169 B1 of the direct competitor Conradi + Kaiser.
In the first instance, the Munich Regional Court I had, among other things, affirmed the declaratory interest of the action, denied a violation of the first independent claim, but considered a violation of the second independent claim to exist and, as a result, dismissed the action (Ref.: 7 O 3773/18). In the appeal proceedings, the Higher Regional Court of Munich ruled that neither the first (in granted as well as in limited version) nor the second independent claim were infringed (judgment of September 19, 2019, ref.: 6 U 2558/18).
In parallel opposition proceedings before the European Patent Office (representative: Müller Schupfner & Partner), the first independent claim was restricted and the second revoked. This decision has since been confirmed by the Board of Appeal (file no. T2154/1).
It is noteworthy from a legal perspective that – as far as is known – this is the first time that a Higher Regional Court has applied the principles established by the Federal Court of Justice in the “Schneckenköder” decision on declaratory interest (Case No. X ZR 62/16). According to this, defendants must decide in the future whether they want to defend themselves at the level of admissibility with a lack of declaratory interest, or at the level of the merits with the existence of an infringement.
Representative Gum-Tech s. r. o. (Slovakia):
Müller Schupfner & Partner (Munich)
F. Peter Müller, Patent Attorney, Partner
Dr. Stephan Kratz, Patent Attorney, Junior Partner
Rohnke Winter (BGH)
DANUBIA Patent and Law Office (Budapest, Hungary)
Mihály Lantos, Hungarian and European Patent Attorney, Partner
Representing Conradi + Kaiser GmbH (Germany):
Hoyng ROKH Monégier (Düsseldorf, Germany)
Dr. Tobias J. Hessel, Attorney at Law, Partner
Lars Baum, Attorney at Law, Associate
Engel Rinkler (BGH)
Braun-Dullaeus Pannen Emmerling (Düsseldorf)
Markus Kreuzberg, Patent Attorney, Partner
Federal Supreme Court: X. Civil Senate, Presiding Judge Dr. Bacher, Dr. Grabinski, Judge Hoffmann, Judge Dr. Kober-Dehm and Judge Dr. Rensen
F. Peter Müller