Short Summary
This case concerned an infringement action and a counterclaim for revocation regarding European Patent EP 3 225 320 B1, which relates to a device and method for measuring the straightness of rod-shaped workpieces. Following the complete revocation of the patent by the EPO Board of Appeal on July 4, 2024, the plaintiff withdrew the infringement action under Rule 265 RoP and sought a 60% reimbursement of court fees. The defendant sought a declaration that the revocation counterclaim had become moot under Rule 360 RoP and also requested a 60% reimbursement of court fees.
Detailed Summary
The plaintiff, MSG Maschinenbau GmbH, is the proprietor of European Patent EP 3 225 320 B1, which concerns a device and method for measuring the straightness of rod-shaped workpieces. The defendant, EJP Maschinen GmbH, manufactures, offers, and distributes in Germany devices for measuring the straightness of rod-shaped products under the designations "Straightness Control Type TQC" (accused embodiment 1) and "Total Quality Control Type TQC 2.0" (accused embodiment 2). The plaintiff filed an infringement action seeking injunctive relief, information, disclosure of accounts, destruction, recall, cost coverage for publication of the judgment, and damages or a determination of damages. The defendant denied infringement and filed a counterclaim for revocation of the patent, to which the plaintiff responded with auxiliary requests for amendment of the patent.
The EPO Board of Appeal revoked the patent in its entirety during oral proceedings on July 4, 2024 (case T-0367/23-3.4.02). Following this legally effective revocation, the plaintiff considered its infringement action to have lost its basis and sought to withdraw the action pursuant to Rule 265.1 RoP. Since the written proceedings had not yet been concluded, the plaintiff additionally sought reimbursement of 60% of the court fees pursuant to Rule 370.9(b)(i) RoP. In the event that the defendant did not withdraw the revocation counterclaim, the plaintiff declared its consent to a declaration of mootness under Rule 360 RoP. The defendant stated that it did not assert a legitimate interest within the meaning of Rule 265.1 sentence 3 RoP. Regarding the revocation counterclaim, the defendant sought a declaration under Rule 360 RoP that the counterclaim had become moot due to the revocation of the patent. The defendant also sought reimbursement of 60% of the court fees for the counterclaim pursuant to Rule 370.9(b)(i) RoP and Rule 370.9(c)(i) RoP applied analogously.
& Analysis: The court addressed the procedural consequences of the patent's revocation by the EPO Board of Appeal. The withdrawal of the infringement action under Rule 265 RoP and the request for a declaration of mootness regarding the revocation counterclaim under Rule 360 RoP were both grounded in the fact that the patent had been revoked in its entirety, eliminating the legal basis for both proceedings. The reimbursement requests for 60% of the court fees were based on the fact that the written proceedings had not yet been concluded.
Final Order & Ruling: The court was asked to grant the withdrawal of the infringement action under Rule 265 RoP, order reimbursement of court fees in the amount of 60%, and address the defendant's requests regarding the revocation counterclaim, including the declaration of mootness and reimbursement of court fees.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Munich (DE) Local Division. Understanding the court's reasoning in MSG Maschinenbau GmbH vs EJP Maschinen GmbH is valuable context for structuring arguments or assessing risk in similar proceedings.
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