Online shopping is booming. E-commerce giants such as Amazon, ebay and the likes distribute their products to customers all over the world in cardboard boxes. These boxes often contain paper dunnage products to fill the void in the box and to protect the shipped product.
RANPAK Corp. (NYSE “PACK”) (“RANPAK” below), is a technology leader in recycled and recyclable paper dunnage technology and holds a number of corresponding European and US patents amongst others. One of these patents, the European patent EP 1 896 250 B1 (“the Patent” below) protects an inventive design of a perforated paper for a dunnage conversion machine, wherein the perforations avoid undesired tearing of the paper during the conversion process, still allowing a reliable separation of the dunnage products in a subsequent step.
In 2015, RANPAK successfully sued Sprick GmbH Bielefelder Papier- und Wellpappenwerke & Co. (“SPRICK” below) with BARDEHLE PAGENBERG for infringing the German part of the Patent at the Regional Court of Düsseldorf (case no.: 4a O 169/15). On October 27, 2016 the Regional Court of Düsseldorf granted, inter alia, an injunction against SPRICK as well as claims for rendering of accounts, recall of infringing products, destruction of infringing products and damages. SPRICK did not appeal this decision.
However, SPRICK had filed a nullity complaint against the German part of the Patent with the German Federal Patent Court in Munich (case no.: 4 Ni 7/17 (EP)) in 2015 and succeeded at first instance. RANPAK appealed this decision with BARDEHLE PAGENBERG to the German Federal Court of Justice in Karlsruhe (case no.: X ZR 154/18) and was now successful. An oral hearing was held under strict health safety measures on June 16, 2020 and the panel of five Judges led by the new Presiding Judge Dr. Bacher upheld the Patent in the scope of claim 3 as granted which had been successfully asserted in the parallel infringement case.
Representatives of RANPAK Corp.: BARDEHLE PAGENBERG (Munich) Joachim Mader (Lead German and European Patent Attorney, Partner) Prof. Dr. Tilman Müller-Stoy (Lead Attorney-at-Law (Rechtsanwalt), Certified IP lawyer, Commercial Mediator (MuCDR), Partner) Dr. Stefan Lieck (Attorney-at-Law (Rechtsanwalt), Certified IP Lawyer, Partner) Alexander Wunsch (German and European Patent Attorney, Counsel) Sebastian Horlemann (Attorney-at-Law (Rechtsanwalt), Commercial Mediator (MuCDR), Senior Associate)
Representatives of Sprick GmbH Bielefelder Papier- und Wellpappenwerke & Co.: Boehmert & Boehmert (Munich) Niels T. F. Schmid (Patent Attorney, Partner) Florian Malescha (Patent Attorney) Taylor Wessing (Munich) Dr. Jan Phillip Rektorschek (Attorney-at-Law, Partner) Dr. Sabine Rohjan (Attorney-at-Law, Of Counsel)
German Federal Court of Justice, Xth Senate Dr. Klaus Bacher (Presiding Judge at the Federal Court of Justice) Dr. Klaus Grabinski (Judge at the Federal Court of Justice) Dr. Nina Franziska Marx (Judge at the Federal Court of Justice) Dr. Patricia Rombach (Judge at the Federal Court of Justice) Dr. Hartmut Rensen (Judge at the Federal Court of Justice)