Short Summary
Versah LLC, an exclusive licensee of European Patent EP 3 402 420 B1 directed to a rotary osteotome with enhanced flute profile for dental autografting, sued HaeNaem Co., Ltd. and Adin Dental Implant Systems Ltd. for infringement. The defendants manufacture and sell dental burs marketed under names such as 'Total Haenaem Bur Set' that allegedly infringe the patent's claims regarding continuously negative rake angles on cutting and densifying faces. A third defendant, Adin Dental Implant Systems GmbH, was dismissed from the case following an out-of-court settlement. The Local Chamber Düsseldorf addressed issues of standing as exclusive licensee, the admission of a late-filed auxiliary request, and the principles for assessing direct infringement of a product claim.
Detailed Summary
The plaintiff, Versah LLC (a Michigan, USA entity), brought an infringement action against HaeNaem Co., Ltd. (Republic of Korea) and Adin Dental Implant Systems Ltd. (Israel) concerning European Patent EP 3 402 420 B1. The patent, titled 'Autografting tool with enhanced flute profile and methods of use,' was filed on January 17, 2017 claiming priority from a January 14, 2016 US application, published on November 21, 2018, and granted with publication of the grant mention on July 1, 2020. The patent is currently in force in Germany, Austria, Denmark, Italy, Belgium, Finland, France, the Netherlands, and Sweden. The patent proprietor is Huwais IP Holding LLC, founded by Dr. Salah A. Huwais, with Versah LLC acting as exclusive licensee. Claim 1 of the patent defines a rotary osteotome comprising a shank establishing a longitudinal axis of rotation, a body extending from the shank with an apical end, a plurality of helically spiraling flutes with cutting faces defining rake angles and densifying faces defining heel-side angles, a stopper section, and lands with working edges. The characterizing feature requires that each flute is formed with a continuously negative rake angle along the entire length of both the cutting face and the densifying face.
The defendants develop, manufacture, and distribute rotary osteotomes marketed for bone densification and reimplantation of bone material, including kits sold under designations such as 'Total Haenaem Bur Set,' 'Total Haenaem Bur Kit for Sinus,' and 'Haenaem Bur Kit for Expander.' The contested embodiments are individual burs designated L1824S, S2228S, L263S, and L628S, with the plaintiff primarily relying on the L2632 (also called L263S or L26(29)32) bur to demonstrate the alleged infringement.
The plaintiff sought injunctive relief and other remedies against the defendants for the manufacture and distribution of the contested burs. A third defendant, Adin Dental Implant Systems GmbH (Düsseldorf), was originally sued but the plaintiff withdrew the action against this entity on May 23, 2025, following an out-of-court settlement. The Local Chamber Düsseldorf issued an order on June 2, 2025, terminating the proceedings against Adin Dental Implant Systems GmbH, with the plaintiff bearing the portion of court costs attributable to that defendant and each party bearing their own costs otherwise.
On February 19, 2026, the plaintiff filed an additional auxiliary request 2a, seeking its admission under Rule 30(2) of the Rules of Procedure, the maintenance of the patent in the amended form of auxiliary request 2a, and corresponding infringement findings. The defendants opposed the admission of this late-filed auxiliary request, arguing it was filed out of time, and alternatively sought revocation of the patent in the limited scope of auxiliary request 2a should it be admitted. The Chamber reserved its decision on the admission of this further auxiliary request.
The defendants also filed a counterclaim for revocation of the patent. The subject matter of the proceedings thus encompassed both the infringement action and the revocation counterclaim.
& Analysis
The Chamber established a key legal principle for the assessment of direct infringement of a product claim: the decisive factor is whether the challenged embodiment is objectively capable of fulfilling the features of the patent claim, given its nature and suitability for use. This principle guides the analysis of whether the contested burs, as rotary osteotomes with specific flute geometries, fall within the scope of the patent's claims.
The proceedings also addressed the plaintiff's standing as an exclusive licensee to bring the infringement action, and the procedural question of whether the late-filed auxiliary request 2a should be admitted into the proceedings.
Final Order & Ruling
The decision was pronounced on August 25, 2026, following an oral hearing on July 14, 2026, by a panel comprising Presiding Judge Thomas as rapporteur, legally qualified Judge Dr. Schumacher, legally qualified Judge Agergaard, and technically qualified Judge Dr. Daniel. The proceedings were conducted in German. The Chamber's ruling addressed the infringement claims, the revocation counterclaim, the standing of the exclusive licensee, and the admission of the further auxiliary request, with the decision on the latter being reserved.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Court of Appeal. Understanding the court's reasoning in Versah LLC, c/o Salah Huwais, DDS, 2000 Spring Arbor Rd., Su, Rechtsanwalt Ole Dirks, Wildanger, Kehrwald, Graf von Schwer vs HaeNaem Co., Ltd., 194, Jisan-ro 175beon-gil, Jinwi-myeon, P, Adin Dental Implant Systems Ltd., Alon Tavor POB 1128, Afula is valuable context for structuring arguments or assessing risk in similar proceedings.
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