UPC CFI LD Düsseldorf, 11 december 2023: Ex parte provisional injunction, subject to security

Ex parte provisional injunction under penalty of € 10.000 per product or € 30.000 per day and order to hand over devices, all subject to a security of € 500.000. 

Order to be served by claimant’s counsel. 

Direct use of the invention (article 25 UPCA). Element of suppression (“Unterdrückung”) is fulfilled. 

The prosecution history is in principle not to be taken into account when interpreting the patent. Article 24 (1) (c) UPCA in conjunction with Article 69 EPC conclusively determine which documents are to be used in the interpretation of the patent claims determining the scope of protection, namely the patent description and the patent drawings. Mere statements made during the grant procedure do not initially have any significance in limiting the scope of protection. At most, they can have an indicative meaning as to how the person skilled in the art can understand the feature in question (cf. on German law similarly BGH, NJW 1997, 3377, 3380 - Weichvorrichtung II). However, there is no mention of the fact that the simultaneous output of sound signals and voice messages is absolutely necessary for the realisation of the technical teaching of the patent in suit, based on its overall content, in the statement referred to by the defendants before the court in the grant proceedings (cf. Annex KAP 14). 

Indirect use of the invention (article 26 UPCA). Obvious from the circumstances that the defendants know that the accused embodiment is objectively suitable for being used in a patent-infringing manner, and also that the customers of the accused embodiment use it to carry out the patent-compliant process. 

Validity of the patent is sufficiently certain (article 62(4) UPCA, Rule 211(2) RoP). The fact that the patent in suit has not yet survived any adversarial legal validity proceedings does not preclude this. Even without such prior proceedings, the legal validity can be sufficiently secured. Summary examination of arguments brought in pending Swiss revocation proceedings. 

Urgency of the action (Rule 209(2)(b) RoP) The urgency required for the ordering of interim measures is only lacking if the injured party has been so negligent and hesitant in pursuing his claims that, from an objective point of view, it must be concluded that the injured party is not interested in enforcing his rights quickly, which is why it does not seem appropriate to allow him to claim interim legal protection (see also UPC_CFI 2/2023 (LK München), order of 19 September 2023, p. 84 f.). 

Ex parte provisional measures (Rule 212 RoP) Credible that applicant it is threatened with irreparable damage without the issuance of an ex parte order due to the delay associated with the involvement of the opposing party. The fact that the "ISPO Munich 2023" trade fair had already ended at the time the application for interim measures was filed does not preclude this. A prior hearing of the defendant does not promise such a gain in knowledge that it would be justified to wait with the issuance of an order against the background of the damage threatening the applicant. With regard to the legal validity, the Local Board has before it both the action for revocation brought by the respondent 1) before the Federal Patent Court of Switzerland and the petitioner's reply in this regard (Annexes KAP 15 and KAP 16). 

Enforceability of the order subject to providing security for appropriate compensation ordered (Rule 211(5) RoP). Set at amount in dispute, given that enforcement damage are at this time difficult to estimate for the local division

IPPT20231211, UPC CFI, LD Düsseldorf, Ortovox Sportartikel v Mammut Sports