Litigation Examples
Frank Peterreins has handled over 100 opposition cases (Opposition Divisions of the European Patent Office), including opposition appeal proceedings (Boards of Appeal of the European Patent Office); over 25 nullity cases (Federal Patent Court), including nullity appeal proceedings (Federal Supreme Court); and over 50 infringement litigation cases (District Court Mannheim, District Court Duesseldorf, District Court Berlin), including appeal proceedings (Upper Regional Court Duesseldorf and Upper Regional Court Karlsruhe).
Representative cases include:
Medical Devices
Gambro AB adv. Fresenius Deutschland GmbH (dialysis machines) Asserted a Gambro patent relating to dialysis machines with indirect measurement of sodium concentration in blood. Validity of the patent was confirmed by the German Federal Patent Court. Case subsequently settled.
Boston Scientific adv. Cordis Medizinische Apparate GmbH (drug-eluting stents) Asserted Boston Scientific patents relating to drug-eluting stents with drug-containing base coating and top coating for long-term drug release. Case settled together with multiple other cases.
Synthes, Inc. adv. Königsee Implantate GmbH (bone plates) Asserted three Synthes patents relating to bone plates and bone screws. Case settled.
Boston Scientific Corp. adv. Bayer Schering Pharma AG (balloon catheters for delivering drugs) Filed oppositions with the European Patent Office against patents of Bayer Schering Pharma AG relating to drug delivery balloon catheters for the treatment of restenosis. Opposition Divisions declared three patents invalid; appeal pending.
Boston Scientific Corp. adv. Ethicon Inc. (slings for treatment of incontinence) Filed an opposition with the European Patent Office against a patent of Ethicon relating to sling implants for the treatment of incontinence. Opposition Division declared the patent invalid. Decision was confirmed by the Board of Appeal.
Gambro AB adv. Tyco Healthcare, Inc. (dialysis catheters) Defended Gambro in a patent litigation brought by Tyco Healthcare based on a patent directed to dialysis catheters. The District Court Mannheim stayed the infringement litigation in view of the nullity action filed with the German Federal Patent Court. Subsequently, the Federal Patent Court declared the patent invalid.
Mechanical Engineering
BorgWarner, Inc. v. Honeywell Int’l, Inc. (automotive turbochargers) (W.D.N.C.) Represented BorgWarner in EPO opposition proceedings regarding the design and manufacture of turbocharger components. Three parallel US patents have been asserted in the US. Obtained $32.5 million settlement for client on eve of trial.
Gebr. Wöhr GmbH & Co. KG adv. SLS Engineering AG (casting machines) Defended Wöhr in a patent litigation brought by SLS Engineering AG relating to casting machines. District Court Mannheim stayed the litigation in view of the parallel invalidity case before the German Federal Patent Court. Case settled.
Zippo Manufacturing Company, Inc. adv. Jens Bleich and Jürgen Bleich (lighters) Filed a cancellation request with the German Patent Office against a German utility model relating to lighters. GPTO declared the utility model invalid. Decision was confirmed by German Federal Patent Court.
MEI adv. Japan Cash Machines (cash validators) Took over representation in an opposition case before the European Patent Office against a JCM patent. Opposition Division declared the patent invalid. Appeal pending.
Vamco International adv. Systeme + Steuerungen GmbH (feeding devices for stamping presses) Asserted a Vamco patent relating to feeding devices for stamping presses. District Court Mannheim confirmed infringement. Case settled during trial before the German Federal Patent Court.
ABB Turbo Systems AG adv. MAN B&W (turbo chargers) Asserted three patents of ABB relating to various aspects of turbo chargers. Case settled.
Faltec Falt- und Sondermaschinen GmbH & Co. KG adv. Karl Rabofski GmbH (folding machines) Successfully defended Faltec in a patent infringement case brought by Rabofski before the District Court Berlin. Filed a counter action to get the patent assigned to Faltec based on inventorship rights. After multiple witness testimonies, the litigation court stayed the litigation. German Federal Patent Court subsequently declared the patent invalid. Case settled in favor of Faltec after the court expert of the German Federal Supreme court confirmed the invalidity decision.
Industrie ILPEA S.p.A. adv. Kunststoff-Technik Scherer & Trier GmbH &/ Co. KG (molding parts for car bodies) Asserted an Ilpea patent relating to molding parts for car bodies against S&T. District Court Mannheim confirmed infringement, but German Federal Patent Court declared the patent invalid. The German Federal Supreme Court subsequently confirmed validity in nullity appeal proceedings. Case settled in favor of Ilpea after trial before the Upper Regional Court Karlsruhe in the infringement appeal proceedings.
Schreiber Foods Europe GmbH adv. Hochland, Reich, Summer & Co. (cheese packages) Sucessfully defended Schreiber Foods in a utility model infringement case brought by Hochland. District Court Frankfurt dismissed the action, and the German Patent Office declared the utility model invalid. Case settled in favor of Schreiber Foods during trial before the Federal Patent Court.
General Electric Deutschland adv. Schneider Electric SA (circuit breakers) Defended in a patent case based on three patents brought by Schneider Electric. Filed two nullity actions against Schneider Electric.
Drossbach GmbH & Co. KG adv. Hegler Plastic GmbH (machines for manufacturing corrugated plastic pipes) Defended Drossbach in a patent infringement case brought by Hegler. Case settled.
Software and Electrical Engineering
Bose Corporation adv. Lightspeed Aviation, Inc. (headphones) Asserted a Bose patent relating to noise-cancellation headphones. Case settled.
Schönfeld-Schnuck adv. University of Neuchatel (solar cells) Represented a client in an opposition case before the European Patent Office against a solar cell patent held by the University of Neuchatel. The patent had been asserted by Oerlikon as exclusive licensee against Sunfilm. The Opposition Division of the EPO declared the patent invalid prior to the trial in the infringement litigation case. The Board of Appeal confirmed invalidity of the patent.
Atmel Germany GmbH adv. Andreas Schueppen (Si-Ge technology) Successfully defended Atmel in an inventorship dispute brought by Schueppen who claimed an inventorship compensation of over 40 Mio EUR. Case was dismissed by the District Court Mannheim.
ODS Optical Disc Service GmbH adv. Members of MPEG LA (video coding techniques) Defended ODS in a patent suit brought by multiple members of the MPEG patent pool. Filed multiple nullity cases with the Federal Patent Court. Case settled.
Pantech adv. Phillips (video coding techniques) Filed an intervention in a nullity case before the Federal Patent Court which subsequently declared the Phillips patent invalid. Case settled.
Chemistry
Indspec Chemical Corp. adv. Sumitomo Bakelite Europe N.V. (resins for manufacturing tires) Asserted an Indspec patent relating to resins for manufacturing tires against Sumitomo Bakelite. District Court Duesseldorf confirmed infringement.