UPC CFI LD Dusseldorf, 31 October 2024: PI for direct and literal infringement with carveout for BMW supplies

23-11-2024 Print this page
IPPT20241031, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna

Provisional injunction granted for direct and literal infringement with carveout for BMW supplies (R. 211 RoP, Article 62 UPCA, Article 25 UPCA, Article 69 EPC). 

It is more likely than not that the patent in suit is infringed by the offer and distribution of the challenged embodiments in the territory of the Contracting Member States Germany and France (R. 211.2 RoP). On summary examination, the challenged embodiments make direct and literal use of the technical teaching of claims 6 (challenged embodiments I and II) and 13 (challenged embodiment II). 

 

Strong rebuttable presumption that the registered patent proprietor is the material patent proprietor entitled to bring actions (Article 47(1) UPCA, Article 138(1)(e) EPC). 

In PI proceedings – in which only a “sufficient degree of certainty that the applicant is entitled to commence proceedings pursuant to article 47 UPCA” is required (R. 211(2) RoP) – this presumption can only be rebutted if the title is manifestly erroneous. At least not more likely than not that the patent is invalid on the basis of Article 138(1)(e) EPC: Defendants never challenged Valeo’s entitlement to the patent before filing the Application for provisional measures and the infringement action. 

 

Slovakian manufacturing company is liable for the offering and delivering of the challenged embodiments, even if the order does not cover the territory of Slovakia (Article 25 UPCA). 

The Düsseldorf Local Division has already decided that companies which are members of a group and play a key role in a distribution network for the infringing product – such as a sole manufacturer or a European sales and marketing hub – may be considered as infringers even if they are located outside the Contracting Member States but supply their products to other members of the group located in the Contracting Member States, while those companies distribute those products on the European market, including at least one Contracting Member State where the patent in suit is valid. On this basis, Defendant 2) is liable for the offering and delivering of the challenged embodiments, even if the order does not cover the territory of Slovakia. A more extensive order covering manufacture in Slovakia, which is not a Contracting Member State yet, is not considered in the case at hand. 

The Defendants are cumulatively liable because they act in a close and interdependent relationship due to their structure as a large group of companies. 

 

Sufficient degree of certainty that the patent is valid (R. 211(2) RoP). On the basis of the understanding of the scope, the validity of the patent in suit is reasonably certain: the validity of the patent in suit is more likely than its invalidity. Decisions of other European Courts or decisions of the EPO concerning the same patent do not bind the Court but may provide helpful indications which the Court may take into account. Not general revocation rates of patents, but only the patent in suit is relevant (see R. 211.2 RoP “patent in question”). To assess novelty the entire content of the prior art document must be determined (Article 54 EPC).

 

Written statement submitted after the end of the oral hearing cannot be taken into consideration (R. 195 RoP). 

 

Temporal urgency and unreasonable delay; no fixed deadline of one month, but depends on the circumstances of the individual case (Article 62 UPCA, R. 209(2) RoP, R. 211(4) RoP). 

The temporal urgency required for the order of provisional measures is lacking only if the infringed party has been so negligent and hesitant in pursuing its claims that, from an objective point of view, it must be concluded that the infringed party has no interest in the prompt enforcement of its rights and that it is therefore not appropriate to order provisional measures. 

The waiting period within the meaning of R. 211.4 RoP is to be measured from the date on which the Applicant is or should have been aware of the infringement which would have enabled him to file a promising Application for provisional measures in accordance with R. 206.2 RoP. 

Whether a delay is unreasonable within the meaning of R. 211.4 RoP depends on the circumstances of the individual case […]. Although irreparable harm is not a necessary condition for ordering provisional measures it has to be assessed whether it is unreasonable for the Applicant to wait until the conclusion of the proceedings on the merits, taking into account that an order in the PI proceedings may be reversed. 

 

Limitation of the scope of the preliminary injunction as far as supplies to BMW are concerned as a very special exception necessary because of weighing the interests of the defendant (Article 62(2) UPCA, R. 211.3 RoP). 

Not necessary to decide whether the interests of third parties should also be taken into account […], because the harm alleged by the Defendants in the present case affects themselves, at least in form of possible recourse claims by their customer. 

 

Adequate security for damages is normally to be given for damages in case the provisional measures are revoked, unless the specific case exceptionally requires otherwise (R. 211(5) RoP).

 

 In line with previous case law of the Düsseldorf Local Division, there is no reason for a decision on the obligation to bear legal costs. The background of this case law is that neither Art. 69 UPCA nor R. 118.5 RoP constitute a suitable basis for a decision on the obligation to bear the costs in PI proceedings. […].

 

IPPT20241031, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna