The District Court of Düsseldorf established in a decision rendered on 28 July 2011 that ter Hürne GmbH & Co. KG et al, which is a Välinge licensee, has infringed the patent EP 1 415 056 B1 (owned by the Classen group) when marketing floor panels with a 5G Original profile.
The decision is not final and ter Hürne has recently filed an appeal against the decision to the Higher Regional Court. One circumstance that could have an impact on the appeal proceedings is that the District Court's decision in some central points is deviating from the claim interpretation made by the European Patent Office in a decision issued on 20 September 2007. The written decision from the court have clarified the interpretation of certain claim features and thus Välinge will commercialize and launch a modified 5G-C profile that is outside the scope of the Düsseldorf decision.
The current court case only concerns the 5G Original profile with a "bow-shape tongue" (an old version not licensed anymore) and "bristle tongue," not any of Välinge's many other fold down locking systems such as 5G-C, 5G-S or 5-G W.
Välinge and ter Hürne are committed to respect other parties' intellectual property rights and ter Hürne will now, despite the pending appeal and nullity action (see below), change the profile of its floor panels to another type of Välinge's 5G systems.
One circumstance that could affect the proceedings at issue is that a nullity action has been filed against the German part of EP 056. Välinge believes that the broad interpretation made by the District Court could increase the possibilities to reduce or nullify the patent in the coming nullification action. Furthermore, the District Court of Düsseldorf will - before a final decision in the litigation between Classen and ter Hürne - try the two court cases that Välinge has initiated against Classen and two of its customers with respect to the marketing of Megaloc products.
It should be mentioned that the vast majority of Välinge's 5G licensees are not affected by the decision, since they either have an non-assertion undertaking from Classen on 5G based on a previous cross license agreement or due to the fact that they use technology that is outside the scope of the Düsseldorf decision. The verdict has further only a limited impact on the licensing business, since Välinge has not sold any licenses on such systems since 2009.
District Court of Düsseldorf renders preliminary decision against Välinge licensee
September 9, 2011