A mush­room-shaped clamping bolt, a posi­tioning pin, a groove arranged centrally on the back. All these make the tool clamping system of the B 1440 pretty special. So special, in fact, that Uhlmann applied to have it patented in 2012 for use on all blister machines and blister lines devel­oped after 2012. And so inno­v­a­tive that our main competitor copied it outright. That prompted us to take legal action – and rightly so, as the Irish High Court recently ruled. But the road to victory in our first patent dispute was long. Dr. Sebas­tian Binder, Corpo­rate Intel­lec­tual Prop­erty Manager of the Group, and Diet­rich Jaedicke, Strategic Product Manager at Uhlmann, share their story with us on behalf of everyone involved.

“It all started about five years ago while we were system­at­i­cally combing through and eval­u­ating all our patents. Our job was to iden­tify which ones were still rele­vant, and which of them were partic­u­larly impor­tant to Uhlmann in terms of their value and the compet­i­tive edge they provide” says Jaedicke. Once iden­ti­fied, it was clear that we had to actively protect these patents, and to go about it with our ears and eyes wide open.”

Spotted on the internet

The special features of the B 1440 tool clamping system caught his eye in a place they had no busi­ness being: “On our main competitor’s home­page, we discov­ered a picture of a tool showing some­thing that got our alarm bells ringing. This was a clear case that our patent was being infringed!” Jaedicke and Binder, who have been taking care of patent affairs at Uhlmann since 2016, got to the bottom of the matter. Because, according to Binder, “Uhlmann does not just ‘collect’ patents – which would be a very expen­sive hobby given that they some­times come with a six-figure price tag – we also enforce them.”

But to do this, you need evidence. And to get that, you need moti­vated employees: “We held training courses to sensi­tize colleagues who deal directly with customers to iden­tify the patented Uhlmann tool on the basis of special features,” Jaedicke explains. It’s not easy asking a customer for permis­sion to take a photo of a tool part because you suspect that a competitor has copied some­thing. But thanks to the tact and sensi­tivity of our service staff, Uhlmann managed to secure the first photo­graphic evidence of a patent infringe­ment in 2017. Never­the­less, the competitor was not in the least coop­er­a­tive: a meeting at the ACHEMA 2017 trade show with company repre­sen­ta­tives got us nowhere.

This was a clear case that our patent was being infringed!

Diet­rich Jaedicke, Strategic Product Manager

This marked the begin­ning of a phase of nego­ti­a­tions that lasted until the settle­ment reached this year. “Uhlmann is not the type of company that imme­di­ately resorts to the sledge­hammer approach and liti­gates. We wanted to try to settle this dispute out of court first”, Binder explains. Also, Uhlmann decided, in the words of Binder, to “care­fully reach out to our customers” so that they, too, are aware that we protect our intel­lec­tual prop­erty rights.

A tough struggle

In the case of the B 1440 tool clamping system, this took a lot of perse­ver­ance: Since attempts to reach an out-of-court settle­ment failed, Uhlmann was ulti­mately forced to file a lawsuit in 2018. “For us, it wasn’t about securing maximum damages for the patent infringe­ment, but actu­ally getting it stopped.” So at the same time, we continued our efforts to reach an out-of-court settle­ment,” says Binder. Further episodes included an equally unsuc­cessful court-ordered medi­a­tion, several post­poned court hear­ings, the competitor’s claim that our patent was invalid, numerous expert opin­ions, as well as draft contracts and meet­ings.

For us, it wasn’t about securing maximum damages for the patent infringe­ment, but actu­ally getting it stopped.

Sebas­tian Binder, Corpo­rate Intel­lec­tual Prop­erty Manager

Last-minute remorse

The virtual trial before the Irish High Court was finally slated for March of this year. And lo and behold: “A week before the hearing, the other party approached us and asked whether a settle­ment was still possible. Within two days, we had a contract ready to sign that satis­fied all the condi­tions we had spec­i­fied”, says Binder. Under the terms of the contract, the competitor may no longer infringe on the patent. In addi­tion, they had to pay damages and draw up a list of the customers who had received the tool – including the serial number: In future, service staff who see the tools at customers’ sites will be able to note down the number and we will know from the list whether it is a new tool and there­fore whether the injunc­tion has been breached. And that really is not advis­able: The contract has been equated to a court ruling, so any viola­tion would be treated as a crim­inal offence.

Diet­rich Jaedicke and Dr. Sebas­tian Binder are happy with the outcome to which many colleagues have contributed: “The design depart­ment, product manage­ment team, the service staff and many more – we could not have done it without them”, says Binder. Many Uhlmann eyes see better than one.