First video examination of witnesses before the 10th Civil Division of the Federal Supreme Court – Saddle manufacturer Prestige Italia prevails with KLAKA and Farago
Munich, 18.09.2020: The Corona pandemic is also necessitating new approaches in patent proceedings: In a patent invalidity case, witnesses were heard by video link before the 10th Civil Division of the Federal Supreme Court. As Presiding Judge Dr Bacher pointed out during the in-person hearing on 15 September, this was the first time in the history of the court that this procedure had been chosen. Corona-related restrictions on attendance meant that the possibility of such video examination of witnesses, expressly provided for in Sec. 128a of the Code of Civil Procedure, had now also become necessary at the Federal Supreme Court.
The subject matter of the underlying legal dispute is an action for nullity brought by the well-known Italian company Prestige Italia S.p.A. against the Australian company Hammersmith Nominees Pty Ltd. as proprietor of European patent EP 1 783 093. The patent at issue concerns a specific design of riding saddles. Both parties are major competitors worldwide in the field of manufacturing such saddles.
After the in-person hearing on Tuesday, which included the video examination of a witness in Italy, the Federal Supreme Court declared the German part of the patent at issue to be null and void in accordance with Prestige Italia's application (Case No.: X ZR 145/18). The Federal Patent Court’s first-instance decision dismissing the action was thus completely reversed on appeal. The Supreme Court has not yet published the grounds for its decision.
Prestige Italia was represented in the nullity proceedings by patent attorney Peter Farago-Schauer, Munich. KLAKA Rechtsanwälte was involved on the plaintiff's side from the beginning, under the leadership of partner Dr. Stefan Eck at all instances.
The opposing side was initially represented by Boehmert & Boehmert, at second instance before the Federal Supreme Court most recently by Dr. Christian Rohnke of the Karlsruhe law firm Rohnke Winter.
Parallel infringement proceedings before the Düsseldorf Higher Regional Court are currently still suspended in the light of the nullity proceedings. At this court, Dr. Eck is Prestige Italia’s lawyer, and Peter Farago-Schauer is involved as patent attorney. As a result of the legally binding invalidation of the European patent for the Federal Republic of Germany, there can now be no doubt that Hammersmith Nominees does not have the claims asserted and that the infringement action is unfounded.
The family-owned company Prestige Italia is one of the world's leading manufacturers of riding saddles and other riding accessories. Founded in 1974, the company manufactures high-quality horse saddles for virtually all uses.
Lawyers for Prestige Italia S.p.A., Trissino, Italy
KLAKA Rechtsanwälte Munich
Dr. Stefan Eck, Attorney at Law, partner (patent law, litigation)
Patent Attorney Peter Farago-Schauer
Federal Court of Justice
Presiding Judge Dr. Bacher
Judge Dr. Grabinski
Judge Dr. Kober-Dehm
Judge Dr. Rensen