In the Eye of the Cyclone: EnerDry's Patent of Steam Drying Successfully Enforced

In its April 6, 2017 judgment, Düsseldorf Higher Regional Court confirmed that German company BMA Braunschweigische Maschinenbauanstalt AG is infringing a patent of Danish company EnerDry A/S. A team led by patent law specialist Dr. Anton Horn of Heuking Kühn Lüer Wojtek successfully represented EnerDry A/S in the second instance as well.
 
EnerDry A/S, Denmark, is one of the leading companies in the area of steam drying. ‎It designs and manufactures steam drying systems on a global basis. Steam dryers are mainly used for drying beet pulp. Beet pulp is a residual product in the sugar beet industry, which can be dried to high-value animal feed. Steam dryers save large quantities of energy compared to conventional drying systems.
 
EnerDry holds numerous patents based on inventions by its founder and CEO Arne Sloth Jensen, including European Patent EP 1 070 223 B1. This patent relates to steam dryers with a specific type of cyclone‎, which substantially improves the capacity and efficiency of steam dryers. EnerDry as the exclusive licensee for this patent was of the opinion that BMA Braunschweigische Maschinenbauanstalt AG infringed the German part of this patent by offering certain steam dryers to potential German and international customers, in particular to a company in Sweden for which BMA actually built a steam dryer.
 
In May 2016, Düsseldorf Regional Court had already ruled in first instance that a patent infringement of European patent EP 1 070 223 was given. BMA appealed the ruling, but, as was ruled now, unsuccessfully, since Düsseldorf Higher Regional Court largely confirmed the first instance ruling. According to this judgment, BMA is no longer allowed to offer or manufacture patent-infringing ‎steam dryers in Germany. The judgment is based on BMA's publications and offers in general and the specific installation in Sweden. Other than the Regional Court in the first instance, however, the Higher Regional Court ruled that EnerDry was not entitled to ask for the withdrawal and destruction of already manufactured installations.

Previously, BMA had attempted to trivialize the scope of the judgment of first instance. In a press release, BMA stated that the judgment related only to “marketing material” and did not affect any actually built system. By judgment of October 14, 2016, a different chamber of Düsseldorf Regional Court had ordered BMA to refrain from publishing this press release, as it was misleading and did not correspond to the real scope of the judgment. This judgment has become final and non-appealable.
 
In addition, BMA had tried to avoid the verdict of patent infringement by filing a nullity action against the German part of the patent EP 1 070 223 B1 with the German Federal Patent Court in Munich. By judgment of March 7, 2017, the Federal Patent Court rejected this nullity action as well and maintained the patent as granted.
 
Jensen commented on the overall result as follows: “We are happy that the patent has been maintained and enforced successfully. We will monitor carefully if BMA complies with the judgments.” He added: “Competition is fine, but everyone should respect the intellectual property of others. It took us many years of hard work to improve and enhance the steam drying technology, and we will not tolerate that anyone copies our design in an illegal manner. We all should bear in mind that willful patent infringement is a crime.”
 
Update May 29, 2017: While the judgment of Düsseldorf Higher Regional Court is final, BMA may still appeal the Federal Patent Court judgment at the Federal Court of Justice.

Update January 14, 2019: Also the judgment of the Federal Patent Court is final, c.f. our press release of January 14, 2019 
 
Counsel to EnerDry A/S, Denmark
German lawyers: Heuking Kühn Lüer Wojtek
Dr. Anton Horn,
Birthe Struck, LL.M.,
Peter Horstmann (all Patent Law),
Dr. Georg Jacobs (Competition Law), all Düsseldorf
 
Danish patent attorneys: Budde Schou A/S, Copenhagen
Henrik Sten Nielsen,
Andreas Dahlquist
 
German patent attorneys: COHAUSZ & FLORACK, Düsseldorf
Andreas Thielmann