Overview
McDermott Will & Emery has successfully represented Kanzler Verfahrenstechnik Ges. mbH in a series of patent cases against Technip France and Solvay S.A.
The patent dispute had been going on since 2012. Kanzler engineered a chemical plant for LEUNA-Harze to produce epichlorhydrin using glycerol from renewable raw materials. Epichlorhydrin is an important precursor material in the production of epoxy resins. Solvay, a leading supplier of epichlorhydrin, alleged two patents against the operation of the plant.
Upon opposition by Kanzler Verfahrenstechnik and others against the first Solvay patent (EP 1 772 446 or the ʼ446 patent), the European Patent Office (EPO) revoked the ʼ446 patent in 2013; revocation was confirmed in 2018. In view of the invalidity challenges against the ʼ446 patent, an infringement action on the merits that Solvay had filed against Kanzler Verfahrenstechnik before the Magdeburg District Court early on had been stayed.
Solvay’s second patent (EP 1 752 435 or the ʼ435 patent) proved to have more impact. Solvay filed for inspection and preliminary injunction proceedings against LEUNA-Harze. Even though Kanzler Verfahrenstechnik intervened in these proceedings, and even though Kanzler Verfahrenstechnik and others challenged the validity of ʼ435 patent, too, the Magdeburg District Court granted inspection proceedings and a related preliminary injunction against LEUNA-Harze.
In addition, Solvay prevailed in infringement proceedings on the merits before the Magdeburg District Court, in which again Kanzler Verfahrenstechnik intervened on the side of LEUNA-Harze. The Court did not stay the relevant infringement proceedings, and the EPO, in the first instance, dismissed all invalidity challenges. Solvay was also successful in the respective appeal of the infringement proceedings before the Naumburg Higher Regional Court, and the Federal Court of Justice did not grant a further appeal.
However, in the appeal of the invalidity proceedings before the EPO, Kanzler Verfahrenstechnik was finally successful: After a hearing on November 19, 2019, the EPO revoked the second ʼ435 patent, too, due to a lack of inventive step. The revocation of the ʼ435 patent was legally binding also on Technip France to whom Solvay had assigned the patent in 2019.
The McDermott IP litigation team representing Kanzler Verfahrenstechnik was led by partner Henrik Holzapfel and included Christian Dölling and patent attorneys of Meissner Bolte.
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