Date: 1 September 2023
The company Inline3D specialises in the development and production of customised optical measuring systems for use in series production. For this purpose, the company has developed its own measuring system as well as its own measuring software, with which Inline3D is extremely successful on the market.
A competitor from Finland accused Inline3D of allegedly infringing two of its patents with its systems. In the absence of evidence for these allegations, the competitor requested that a court-appointed expert conduct a procedure for the preservation of evidence before the Düsseldorf Regional Court.
In general, according to Sec. 140c (1) Patent Act, a person who uses with sufficient likelihood a patented invention contrary to Sec. 9 to 13 Patent Act may be sued by the right holder or another entitled person for the production of a document or for inspection of an item in his control or a process which is the subject matter of the patent, if this is necessary for the purpose of establishing the claims of the right holder. A claim for production or inspection thus first requires a sufficient likelihood of patent infringement.
At the request of the competitor, the Düsseldorf District Court initially obliged Inline3D to produce certain documents, among other things. Inline3D successfully defended itself against this before the Düsseldorf Higher Regional Court. The Düsseldorf Higher Regional Court was unable to identify sufficient suspicion of patent infringement. Literally, it states in its judgement of 10 August 2023:
"The contested judgment must be amended for lack of prima facie evidence of a claim for an injunction and the application for a reference order must be dismissed. The Senate cannot establish the existence of the requirements of Section 140c (1) Patent Act."
With regard to the first patent, the Düsseldorf Higher Regional Court stated:
"A sufficient likelihood of patent infringement of the request patent 1 - which has meanwhile lapsed due to the passage of time - cannot be established, neither with regard to device claim 7 nor with regard to process claim 1. There are no concrete indications suggesting the possibility of an infringement with a certain degree of probability. A determination of the scope of protection of the claims in a manner in which the applicant for the injunction is dependent on the result of the requested production of documents is not seriously contemplated."
With regard to the second patent, the court stated in the judgment:
"Concrete indications suggesting the possibility of infringement with a certain degree of probability are not shown or otherwise apparent. [...] Concrete indications suggesting an infringement of the application patent 2 with a certain degree of probability are also not ascertainable in other respects."
The decision of the Düsseldorf Higher Regional Court is final.
The proceedings for Inline3D were conducted by patent attorney and attorney-at-law Dr Gerrit Schultz with the support of attorney-at-law Dr Michael Nielen and attorney-at-law Dr Ulrike Kaufmann.