Recent Developments in UPC Preliminary Injunction Proceedings

In our first part we identified the key trends of the first 18 Months of the Unified Patent Court (UPC) and discussed some of the main legal topics addressed in the first decisions on the merits. 

We will now take a closer look at recent developments in preliminary injunction proceedings and current case law from the Court of Appeal.

Patent validity must be more likely than invalidity

According to the Court of Appeal, applicants seeking a preliminary injunction must demonstrate a “sufficient certainty” of both patent infringement and validity. The latter is met if the court considers it more likely than not that the patent is not invalid (10x Genomics v NanoString). That means a likelihood of more than 50% is sufficient to pave the way for a preliminary injunction if all other prerequisites are met. 

Focus on strongest validity attacks 

The Local Division Munich held that due to the summary nature of the validity assessment in preliminary injunction proceedings, a comprehensive examination of all validity challenges is not feasible. The number of arguments challenging the validity should therefore in general be limited to the three strongest attacks from the defendant’s perspective (Dyson v SharkNinja order of 21 May 2024, headnote 3; Hand Held Products v Scandit, order of 27 August 2024, headnote 4). 

This approach takes into account the fact that preliminary injunctions are fast-track proceedings, where only a summary decision is to be taken. However, in view of the potentially wide territorial scope of preliminary injunctions, it should not be forgotten that an injunction can have immense significance for the defendant, which also has the right to be heard (Art. 56(2) UPC Agreement). Certainly, it can be argued that a plethora of attacks on the validity may suggest that none of them is convincing, but the exact opposite may also be the case. 

While the approach taken by the Local Division Munich will be welcomed by patentees, it might be challenging for defendants to decide which three validity attacks will be the most convincing ones also from the judges’ perspective. 

Notably, the Court of Appeal assessed more than merely three invalidity arguments of the defendant in the preliminary injunction proceedings Mammut Sports v Ortovox Sportartikel, which might indicate a different approach than that of the Munich Local Division. However, the Court of Appeal has not explicitly overruled the “three-best-arguments approach”, so that defendants in preliminary injunction proceedings before the Local Division Munich should better be prepared to focus on their top three invalidity arguments at least in the hearing, even if bringing forward further possible invalidity challenges in writing.

Admissible arguments in preliminary injunction appeal proceedings

In the just-mentioned case Mammut Sports v Ortovox Sportartikel, the Court of Appeal also ruled that only evidence and arguments presented during the first instance preliminary injunction proceeding may be considered on appeal, excluding any additional arguments or evidence originating from parallel pending main proceedings. This approach ensures that preliminary and main proceedings remain procedurally distinct and stresses the UPC’s commitment to maintaining procedural efficiency. 

Urgency requirement

Another prerequisite for the grant of a preliminary injunction is the urgency requirement. According to the UPC Rules of Procedure the Court shall have regard to any unreasonable delay in seeking provisional measures (R. 211.4). The Local Divisions of the UPC have taken different approaches as regards the acceptable time frame for applicants seeking a preliminary injunction after completing their pre-trial investigations for infringement. 

In its decision of 3 June 2024 in Ballinno v UEFA, the German Local Division Hamburg pointed out that once a patent holder becomes aware of a potential infringement, it is obliged to act swiftly to investigate and clarify the facts, as well as to gather all necessary evidence to prove infringement. As soon as the applicant has gained the knowledge that reliably enables a promising legal action, it must file the application for a preliminary injunction within one month. The one-month time frame is also in line with two earlier decisions of the German Local Division Düsseldorf (10x Genomics v Curio Bioscience, order of 30 April 2024; Ortovox Sportartikel v Mammut Sports, order of 9 April 2024). 

On the other hand, the Local Division Munich has shown a more lenient approach, allowing up to two months for filing a preliminary injunction without considering an unreasonable delay (Dyson v SharkNinja, order of 21 May 2024; Hand Held Products v Scandit, order of 27 August 2024). 

The Court of Appeal has not yet decided how long the applicant may wait in specific after having acquired all the knowledge required to file a promising preliminary injunction request without unreasonable delay. In its recent order of 25 September 2024 (Mammut Sports v Ortovox Sportartikel) the Court of Appeal decided that the urgency deadline for an unreasonable delay depends on the circumstances of the specific case. Accordingly, it seems that the UPC tries to avoid setting a rigid deadline, in order to be able to address the specificities of each single case.

Accordingly, the Local Division Düsseldorf has picked this up and outlined in a subsequent order of 31 October 2024 (Valeo v Magna) that, while in its own previous orders an urgency period of one month was applied from the time a patent holder has gained all the knowledge of a potential infringement, this was not to be understood as a fixed deadline. Rather, it would depend on the specific circumstances of the individual case whether a delay is unreasonable. 

Court of appeal on the effective withdrawal of opt-outs

On 12 November 2024, the Court of Appeal set aside a ruling of the Local Division Helsinki in the AIM Sportv Supponor dispute. The Court of Appeal rejected the UPC’s competence to decide the case due to an opt-out of the patent, which had been filed by AIM Sport during the sunrise period on 12 May 2023. Although the opt-out was withdrawn on 5 July 2023, the Court of Appeal deemed the withdrawal ineffective, despite national proceedings pending before German national courts since 2020. 

The decision is based, among other things, on Art. 83(4) UPCA according to which an opt-out can be withdrawn at any time, unless an action has already been brought before a national court. The UPC Court of Appeal interprets the phrase ‘unless an action has already been brought before a national court’ in Art. 83(4) to refer only to actions brought during the transitional period, that is from 1 June 2023 onwards. According to the judges, national proceedings that were brought prior to the transitional period, whether still pending or not, do not stand in the way of an effective withdrawal of an opt-out. 

This decision provides patentees with more opportunities to bring opted-out patents back into the UPC system even if national litigation has been brought in the past. The Court emphasised that it would be important for patent proprietors to first obtain comfort and thus being able to first opt-out their patents and to get the opportunity to use the UPC system once such comfort was obtained. It will be interesting to see whether the industry will make use of this in the future. 

Conclusion

The recent case law emerging from the Court of Appeal and Local Divisions underscores the evolving framework of preliminary injunction proceedings within the UPC system. 

While procedural distinctions between preliminary and main proceedings are being carefully maintained, differing interpretations regarding the urgency criteria reveal a nuanced balance between procedural efficiency and flexibility. 

Furthermore, the Court of Appeal's stance on opt-out withdrawals highlights a more dynamic avenue for patentees to navigate the UPC system, even in cases of prior national litigation. These rulings collectively shape a complex but increasingly defined landscape, offering guidance for stakeholders while leaving room for case-specific considerations. 

As the UPC jurisprudence continues to develop, these precedents will undoubtedly play a pivotal role in shaping strategies and expectations in the realm of European patent enforcement.

The authors thank Robert Baumann, law clerk at Finnegan, for his valuable support in the preparation of this article.