By judgment dated April 10, 2018 (docket no. 3 Ni 29/16 (EP)), the German Federal Patent Court dismissed a nullity complaint filed by KCC Europe GmbH against the German part of European patent 1 412 307, owned by Rogers Germany GmbH. The attacked patent relates to a method for manufacturing metal/ceramic composite materials that are, for example, widely used as circuit boards.

Rogers Germany GmbH’s European patent 1 412 307 (“the patent”) provides for a simple, yet highly robust method for manufacturing metal/ceramic composite materials via the so-called Direct Bonding process. The Direct Bonding process – also referred to as “Direct Copper Bonding”, or “DCB” for short when copper is used – is usually carried out on industrial scale in big conveyor belt furnaces and reaches temperatures above 1,000 °C. During the process, the control of oxygen in the atmosphere surrounding the ceramic substrate and the metal foil is of crucial importance. The patent addresses this problem and suggests accommodating the components in a capsule during the manufacturing method in accordance with claim 1.

KCC Europe GmbH filed a nullity complaint against the German part of the patent, alleging that the claimed method lacks (i) sufficient disclosure, (ii) novelty over three prior art documents, and (iii) an inventive step over several prior art teachings. The patent proprietor, Rogers Germany GmbH, defended itself against all attacks and requested that the patent be maintained as granted.

Following a half-day oral hearing on April 10, 2018, the third Senate at the Federal Patent Court rejected KCC Europe GmbH’s complaint in full, thus maintaining the attacked patent as granted. KCC Europe GmbH was ordered to bear the costs of the proceedings based on a value in litigation of EUR 5 million. The decision is open to appeal.

The nullity proceedings are part of a bigger infringement dispute between Rogers Germany GmbH and KCC Europe GmbH as well as KCC’s Korean parent company, KCC Corporation. Infringement appeal proceedings between Rogers Germany GmbH and the KCC entities based on the now fully maintained patent are currently pending before the Higher Regional Court of Karlsruhe.

Representatives of Rogers Germany GmbH: BARDEHLE PAGENBERG (Munich)

Tobias Kaufmann (German and European Patent Attorney, Partner)

Dr. Axel B. Berger (German and European Patent Attorney, Partner)

Prof. Dr. Tilman Müller-Stoy (Attorney-at-Law, Partner)

Dr. Michael Kobler (Attorney-at-Law)

Representatives of KCC Europe GmbH: Bird & Bird (Munich)

Dr. Daniela Kinkeldey (German and European Patent Attorney)

Dr. Andreas Obermeier (German and European Patent Attorney)

Dr. Matthias Meyer (Attorney-at-Law)

Martin Wagner (Attorney-at-Law)

Federal Patent Court (Third Senate):

Presiding Judge Walter Schramm, Judge Dr. Martin Jäger, Judge Rüdiger Kätker, Judge Dr. Andrea Münzberg, Judge Dr. Carola Wagner