US-based Rogers Corporation ("Rogers"), a worldwide technology leader in providing materials-based solutions, asserted two patents against KCC Corporation of Seoul, South Korea, in Germany through its German affiliate. In both proceedings, over the last weeks, important milestones were achieved by Rogers:
In the first proceedings, on January 8, 2020, the Higher Regional Court of Karlsruhe issued an order to take evidence. This order was rendered in proceedings against KCC Corporation and its German subsidiary KCC Europe GmbH regarding direct copper bonded (DCB) substrates produced by KCC in South Korea. Rogers filed complaints against both KCC companies on December 3, 2015 for infringing the German part of the European Patent 1 412 307 (in the following: "EP '307") by selling DCB substrates manufactured using a process protected under claim 1 of EP '307. At first instance, the Regional Court of Mannheim had initially dismissed the complaints by decisions of May 9, 2017. On appeal, however, the Higher Regional Court of Karlsruhe did not follow the Regional Court's construction of claim 1 of EP '307; instead, it ordered that a court expert should examine whether KCC's process realizes the asserted claim features of EP '307.
In the second proceedings, on December 20, 2019, the Regional Court of Duesseldorf issued a judgment finding that KCC Corporation infringed a further patent of Rogers. This patent, the German part of the European Patent 1 061 783 (in the following: "EP '783") relates to ceramic-metal multiple substrates, which are typically known as "DCB master cards" in the industry. In addition to finding that KCC Corporation is liable to pay damages to Rogers Germany GmbH in principle, the Court, among other things, also ordered KCC Corporation to refrain from offering and distributing patent-infringing DCB master cards in Germany. This judgment is provisionally enforceable if Rogers provides a corresponding security and subject to appeal.
The judgment was based on inspection proceedings initiated by Rogers in the spring of 2016. Based on a corresponding order by the Regional Court of Duesseldorf, DCB master cards presented by KCC at the "PCIM Europe" trade fair in Duesseldorf (May 10-12, 2016) were inspected by a court expert and seized. The court expert examined KCC's seized master card and prepared three expert opinions. On the basis of these expert opinions, Rogers Germany GmbH filed a patent infringement complaint against KCC Corporation before the Regional Court of Duesseldorf on May 28, 2018, leading to the positive infringement judgment of December 20, 2019.
KCC initiated validity challenges against both patents. With regard to EP '307, KCC Europe GmbH filed a nullity complaint with the German Federal Patent Court against Rogers Germany GmbH on March 3, 2016. By judgment of April 10, 2018, the Federal Patent Court dismissed KCC's nullity complaint in its entirety (see our press release of April 26, 2018). KCC's appeal against this decision is currently pending. The validity of EP '783 was first challenged by an opposition notice filed with the European Patent Office (EPO). The EPO Opposition Division upheld claim 1 of EP '783 in amended form, which formed the basis of the successful infringement complaint before the Regional Court of Duesseldorf. After the appeal against the EPO decision had been withdrawn, KCC Europe GmbH filed a nullity complaint with the German Federal Court with regard to EP '783 in the summer of 2019. The nullity proceedings regarding EP '783 are still pending.
"Rogers is a technology leader in providing materials-based solutions in many different application areas, and we will enforce our patent rights to protect our substantial investment in innovation," said Robert C. Daigle, Senior Vice President and Chief Technology Officer of Rogers Corporation, the parent company of Rogers Germany GmbH. DCB substrates are used for high performance power electronics applications. They consist of electrically insulating industrial ceramics and copper foil directly bonded to each other, and – because of this direct bonding – they have high thermal conductivity, superior heat spreading capability and low thermal expansion properties. Rogers and KCC are competitors on the inter-national market for DCB substrates and the above-mentioned proceedings are part of larger litigation between Rogers and KCC of international relevance.
Representatives of Rogers: BARDEHLE PAGENBERG (Munich)
Prof. Dr. Tilman Müller-Stoy (Attorney-at-Law, Certified IP lawyer, Commercial Mediator (MuCDR), Partner)
Tobias Kaufmann (German and European Patent Attorney, Partner)
Dr. Stefan Lieck (Attorney-at-Law, Certified IP Lawyer, Partner)
Dr. Axel Berger (German and European Patent Attorney, Partner)
Dr. Michael Kobler (Attorney-at-Law, Counsel)
Dr. Dominik Woll (Attorney-at-Law, Senior Associate)
Representatives of KCC: Bird & Bird (Duesseldorf, Munich)
Dr. Meyer (Attorney-at-Law), Dr. Kinkeldey (German and European Patent Attorney), Dr. Kuta (Attorney-at-Law), Dr. Obermeier (Attorney-at-Law)
6th Civil Senate of the Higher Regional Court of Karlsruhe (docket no. 6 U 70/17 and 6 U 71/17):
Presiding Judge at the Higher Regional Court Voß
Presiding Judge at the Higher Regional Court Dr. Stecher
Judge at the Higher Regional Court Prof. Dr. Singer
4bth Civil Chamber of the Regional Court of Düsseldorf (docket no. 4b O 44/16 and 4b O 45/18):
Presiding Judge at the Regional Court Dr. Voß
Judge at the Regional Court Terlinden
Judge at the Regional Court Dr. Gruneberg