The Dusseldorf Appeal Court has rejected Nazdar appeals and confirmed two 2018 judgements issued in Fujifilm’s favour.
On November 14, 2019, the Higher Regional Court of Düsseldorf, Germany fully confirmed two judgements issued on September 13, 2018 by the Regional Court of Düsseldorf against Nazdar’s UV inkjet inks 702 & 703 Series and rejected Nazdar’s and its German distributor Zaro’s respective appeals (docket nos. I-15 U 71/18 and I-15 U 72/18).
Rob Fassam, R&D director at Fujifilm Specialty Ink Systems (FSIS), said: “I am delighted that the Higher Regional Court in Dusseldorf has confirmed our position and the first instance judgement. This sends a clear message to anyone thinking of infringing our intellectual property”.
In 2017 FSIS had filed suit against Nazdar Co. US and Nazdar Limited, UK as well as its German distributor Zaro before the Regional Court Dusseldorf for infringement of its UV ink patents EP 1 803 784 B3 and EP 2 383 314 B3 in Germany by offering its 702 and 703 UV inkjet ink Series claimed to be chemically compatible with the original inks for Oce Arizona and Fujifilm Acuity printers.
The patents protect specific inkjet ink compositions, providing a range of properties including improved flexibility, jetting performance and adhesion. In first instance, the Regional Court of Dusseldorf issued injunctions against Nazdar and Zaro. In reaction to FSIS’s patent claims, Nazdar changed the chemical composition of its UV inkjet inks. However, Nazdar continued to market its UV inkjet inks as 702 and 703 Series, and did not indicate to customers the change in chemical composition in a way that FSIS considered necessary to avoid patent infringement.
Upon appeal by Nazdar/Zaro, the Higher Regional Court of Düsseldorf has fully confirmed the first instance judgement. Nazdar and Zaro therefore remain injuncted from offering, bringing into the market and use of patent infringing UV inkjet inks in the future in Germany and are sentenced to pay damages and render account. Furthermore, the Appeal Court upheld the first decision in that the change in chemical composition of the 702 and 703 Series is not sufficient to avoid infringement if Nazdar continues to market its UV inkjets inks as 702 and 703 Series without sufficient indication of the product change.
Finally, while without prejudice for the nullity proceedings filed by Nazdar against the patents before the German Federal Patents Court in Munich, the Higher Regional Court in Düsseldorf, like the first instance decision, did not follow Nazdar’s invalidity arguments and therefore rejected Nazdar’s motion to stay its decision. Meanwhile and in line with that, with judgement of January 14, 2020, the Federal Patent Court has also rejected the first nullity action of Nazdar against EP 1 803 784 B3 and fully upheld the patent (docket no. 3 Ni 2/19). The nullity action against the second patent EP 2 383 314 B3 is due to be heard 18 February, 2020 (docket no. 3 Ni 5/19). Due to the decision to uphold the first patent, FSIS is confident that the Federal Patents Court will similarly also uphold the second patent.
In the infringement proceedings, the Dusseldorf Appeal Court has not admitted a further appeal against its decision. Nazdar/Zaro may now only file an appeal against this decision of non-admittance within one month after service. However, even in such case the judgements remain enforceable without any further prerequisites. In the nullity proceedings before the Federal Patents Court in Munich, Nazdar may file appeals, but again FSIS is confident that, should such appeal be lodged, it would remain unsuccessful.
Fassam said: “We invest significant time and resource developing new and exciting technology that benefits the inkjet industry. We will continue to protect our investment by filing patents that cover our technology and will take appropriate action against those who infringe.”