The UPC's approach to preliminary injunctions
The UPC opened its doors for business just over a year ago. From a patentee perspective, one of the attractions of the new Court was the ability for patentees to obtain preliminary injunctions that covered all the UPC participating member states, including key strongets such as Germany, France and the Netherlands.
There was much speculation in the lead up to the start of the UPC as to whether the UPC would adopt a pro-patentee approach, reflected in the wide-spread granting of preliminary injunctions, or take a more conservative approach.
The decisions so far, most of which have been heard in the German Local Divisions, confirm that the preliminary injunction is, indeed, a powerful tool for patentees at the UPC. However, it is also clear that at both first instance and appeal, the UPC will review the evidence and arguments in detail on a case-by-case basis. This has led to a fairly balanced approach requiring the patentee to bring a strong claim with the necessary supporting evidence.
This article explores three of the practical issues that have been considered by the UPC in the first 12 months.
1) Validity and infringement
The UPC will routinely look at the issues of validity and infringement in significant detail. This is demonstrated in a number of the preliminary injunction decisions we have seen to date.
The standard was set in 10x Genomics Inc & others v NanoString Technologies Inc & others1, being the first preliminary application heard at the UPC. It was heard before the Munich Local Division. The decision was issued on 19 September 2023 and ran to over 100 pages. The preliminary injunction was granted.
Sufficient certainty
One of the issues addressed in the decision was the requirement imposed by Article 62(4) UPC Agreement and Rule 211(2) Rules of Procedure, that there must be "sufficient certainty" that the patent in suit is valid and infringed.
When considering the meaning of "sufficient certainty", the Court considered that a preliminary injunction application was a provisional (as opposed to final) remedy which had only limited discovery requirements. It, therefore, followed that the standard of likelihood must be lowered and, therefore, a "likelihood bordering on certainty cannot be demanded". In practice, this means that it must be more probable than not that the patent in suit is valid and infringed.
It is noteworthy that on appeal, the Court of Appeal, issuing its decision on 26 February 2024, disagreed with the Munich Local Division, finding that on the balance of probabilities that it was more likely than not that the patent in suit was invalid for obviousness over the D6 prior art. So the preliminary injunction was overturned.
Permitted scope of an invalidity challenge
In the recent case of Dyson Technology v SharkNinja2, the UPC considered the permitted scope of an invalidity challenge in a preliminary injunction application. This case was part of a wider global dispute between Dyson and SharkNinja and related to EP 2,043,492 entitled "a hand-held cleaning appliance" covering the structure of a vacuum cleaner for user-ease. The decision was issued on 21 May 2024 by the Munich Local Division. The preliminary injunction was granted in favour of Dyson.
In relation to the permitted scope of an invalidity challenge, the Court confirmed that the limit was the three strongest invalidity attacks only.
This may be challenging for respondents in the future and it will be interesting to see whether subsequent decisions follow suit.
2) The timing of the preliminary injunction application and delay
The UPC will assess whether an application for a preliminary injunction has been made in a timely manner, to ensure that there has not been an "unreasonable delay", pursuant to Rule 211(4) of the Rules of Procedure.
What amounts to an "unreasonable delay" has now been considered a number of times by the UPC.
10x Genomics v NanoString
For instance, in the 10x Genomics v NanoString case referred to above, the Court confirmed that it was necessary to determine when the applicant first became aware of the infringing activity (or intended infringing activity) to assess whether there had been an unreasonable delay in making the application. However, in this case, given that the application for the preliminary injunction was made on 1 June 2023, being the first day that the UPC was open, there could be no question that there was any questionable delay.
myStromer AG v Revolut Zycling
In myStromer AG v Revolut Zycling3, the Dusseldorf Local Division issued the decision on 22 June 2023 which was the same day as the application itself was made. It related to myStromer's patent EP2,546,134 entitled "combined structure of bicycle frame and motor hub".
As the patentee, myStromer's assertions of urgency were based on the fact that Revolut Zycling was showing the infringing bike at the famous Eurobike 2023 trade show in Frankfurt from 21 June 2023, being the day before the application was made. It appears that myStromer was not aware of the infringing product until 19 June 2023, immediately before the trade fair – so it was clear that myStromer acted very quickly in making the preliminary injunction application. This was certainly helpful in ensuring that the preliminary injunction was granted.
10x Genomics v Curio Bioscience
The case of 10x Genomics v Curio Bioscience before the Dusseldorf Local Division is less clear cut, but an application where, nevertheless, the Court favoured the arguments of the patentee. Evidence showed that Curio Bioscience's kit had been sold for a number of years and, therefore, it was Curio Bioscience's position that the patentee, 10x Genomics, should have brought the application much earlier. However, the Court disagreed – holding that the evidence supported the position that 10x Genomics did not know about Curio Bioscience's kit until October or November 2023. Since the application was made in December 2023, there had not been an unreasonable delay even though, in reality, Curio Bioscience's kit may have been around on the stronget for much longer than this.
Dyson Technology v SharkNinja
However, the most specific guidance on this issue has been provided in the Dyson Technology v SharkNinja case referred to above.
In relation to the question of delay, the Court held that if the applicant files the preliminary injunction within two months of becoming aware of the allegedly infringing products – to allow for investigation and infringement/validity analysis – then this should support a finding that there has not been an unreasonable delay.
Of course, this decision does not mean that an application that is made after two months will automatically fail, but it does provide a good practical steer for how the UPC looks at this issue. It seems likely that persuasive reasons will need to be shown why a delay of more than two months is reasonable.
3) Use of the prosecution history in preliminary injunction applications
In the first instance decision of VusionGroup SA v Hanshow Technology & others4, the Munich Local Division issued a decision on 20 December 2023 refusing to grant a preliminary injunction because the Court was not satisfied with a sufficient degree of certainty that infringement could be made out.
Of particular interest, and some surprise, the Court allowed the consideration of the prosecution history of the patent in suit to construe the granted claims.
Subsequently, the Court of Appeal failed to grapple with this issue in its decision, issued on 13 May 2024. It maintained the Munich Local Division's non-infringement finding, but made it clear that this finding did not require the review of the prosecution history and, therefore, it did not need to address whether, in practice, the prosecution history can be considered when determining the construction of an EP patent.
However, this issue was also considered in the 10x Genomics v Curio Bioscience case referred to above. In this case, the Court made it clear that the prosecution history should not be used in relation to the question of claim construction.
Whilst the Court did not criticise the Munich Local Division in the VusionGroup case referred to above, it certainly did not endorse it.
Conclusion
Overall, the decisions so far on preliminary injunctions are positive for patentees because there is a clear message from the UPC that preliminary injunctions will be granted in appropriate circumstances. However, the decisions also clearly demonstrate that the Court is not overtly pro-patentee and will only grant a preliminary injunction after careful consideration on the facts and evidence when it is just and appropriate to do so.
In most cases, the UPC is willing to delve into the detail and this clarifies the importance for patentees to ensure that they present their case in the most robust way possible to ensure the best chance of prevailing.
Footnotes
1 UPC_CFI_ 2/2023
2 UPC_CFI_443/2023
3 UPC_CFI_177/2023
4 UPC_CFI_292/2023
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.