On February 2, 2018, the German District Court of Düsseldorf decided that Ulrich Windmöller Consulting GmbH & Co. KG (UWC) may not offer or grant any licenses on the UWC patent rights which are based on the priority applications DE 10 2006 058 655, US 13/214,175, DE-U1-20 2011 107 236.7 and EP 2011008659.2.
Unilin argued that UWC had no right to terminate Flooring Industries’ exclusive right to sublicense these patents. On this basis, the Court issued an order prohibiting UWC from offering or signing any license agreements on the patents. UWC was also ordered to pay the majority of the legal costs of the proceedings and will be fined up to 250,000 Euro for every license offered or granted.
“Unilin welcomes the swift decision of the Düsseldorf court”, states Bart Van der Stockt of Unilin. “We have, under the exclusive license agreement with UWC, granted several sublicenses on the UWC patent rights and this decision supports our position that we still have the exclusive right to do so. As communicated earlier to the industry, Unilin is of the firm opinion that the licensing activity of UWC and I4F on the Windmöller patents is unlawful, and we are happy that the court confirmed this.”
Unilin supports UWC in their recent efforts to assert their patents against companies which have not entered into a license agreement on such rights with Unilin. Unilin will however not accept that actions are taken against companies which obtained a license on such rights from Unilin, for example Jiangsu Beier Decoration Materials Co Ltd (BBL) and others.
The decision of the court of Düsseldorf may be opposed by UWC.