Dusseldorf, September 11, 2019 - In its ruling on patent infringement dated May 14, 2019 (BGH X ZR 95/18), the Xth Civil Panel of the Federal Court of Justice upheld the decision of the Higher Regional Court of Düsseldorf from March 2018 on the existence and scope of the right of private prior use and thus rejected the appeal of the patent holder. The defendant, Wunstorf-based Hahlbrock GmbH, a manufacturer of molded parts made from fiber-reinforced plastics, has been permitted to continue using a particular method in radome construction that is patent-protected by G+H Kühllager- und Industriebau GmbH located in Mannheim. Itself a constructor of radomes according to the patent, G+H Kühllager- und Industriebau GmbH, a member of the G+H Group, is part of Vinci S.A., one of the world's leading groups for construction and construction-related services.

The disputed patent relates to a protective enclosure for radio communication equipment and a procedure for erecting such enclosures. The protected technical teaching of the disputed patent involves connecting two molded parts with graded edges that results in a space upon joining the two molded parts. This space can be filled with the material of the top layer without significant thickening when the two elements are connected. The defendant, Hahlbrock GmbH, had already delivered all required molded parts and accessories to third parties before the disputed patent was filed. Initially, however, the defendant had not assembled the protective enclosures itself with the parts it had manufactured and supplied. It did so at a later date (adopting a slightly modified assembly method as presumed by the Higher Regional Court of Düsseldorf) and was subsequently sued for the method implemented in this erection.

In its ruling dated May 14, 2019, the Federal Court of Justice in agreement with the decision of the Higher Regional Court of Düsseldorf concludes that the right of private prior use, in accordance with Section 12 of the German Patent Act, also covers routinely modified forms of implementation that are within the scope of protection of the patent but are not described in detail in the disputed patent.

With regard to the process claim of the disputed patent, the Federal Court of Justice confirmed that, within the scope of the right of private prior use, Hahlbrock GmbH may not only offer and supply to customers molded components and other parts required for protective enclosures for radio communication equipment but may also independently erect such protective enclosures, because, in the present case, the process claim of the disputed patent relates solely to the assembly of the individual molded components for purposes of completing a protective enclosure.

In the appeals proceedings, Hahlbrock GmbH was represented by Rohnke Winter, barristers at the Federal Court of Justice, and in both previous instances by law firm Wildanger Kehrwald Graf von Schwerin & Partner.