UPC CoA, 14 February 2025: Provisional measures granted: added matter not more likely than not
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Impugned order revoked (Article 75 UPCA) – provisional measures granted (Article 62 UPCA).
Claim interpretation (Article 69 EPC). As a general principle of interpretation, means-plus-function features must be understood as any feature suitable for carrying out the function. As an exception to the mentioned general principle, where the function is carried out by a computer or similar apparatus, the means-plus-function features are interpreted as means adapted to carry out the respective steps/functions.
Not more likely than not that the patent contains added matter (Article 138(c) EPC). In order to ascertain whether there is added matter, the Court must thus first ascertain what the skilled person would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed, whereby implicitly disclosed subject-matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall also be considered as part of its content. Where, as here, the patent is a divisional application, this requirement applies to each earlier application. The assessment of added matter cannot be restricted to only those parts of the original application which the patent proprietor indicated as a basis for an amended claim during the examination proceedings at the EPO, since a proper understanding of these parts also requires an assessment of their content in the context of the disclosure of the application as a whole. It is not required that a claim uses the exact same wording as used in the original application, as long as the skilled person would derive the combination of features from the whole application.
Urgent interest (R. 209.2(b) RoP). Abbott cannot reasonably be denied an injunction for being cautious not to accuse Sibionics of infringing acts prior to having done a thorough investigation by an independent third party, whereby in view of possible validity attacks it also anticipated the possibility that it might have to rely on more limited dependent claims.
Weighing of interest; irreparable harm (Article 60(5) UPCA; Article 62(2) UPCA). The interest of Sibionics to be able to enter and stay on the market during proceedings on the merits do not outweigh the interests of Abbott by an immediate injunction. The damages of Sibionics due to later market entry should the injunction be lifted in proceedings on the merit will be easier to quantify, whereas Abbott’s damages due to the long term effect of price erosion is difficult to quantify, also in view of its influence on the price of similar devices marketed by third parties and on the prices set by insurers. Sibionics discounts will ead to a negative price spiral which, especially in this type of market, is very difficult to reverse, thus causing irreparable harm to Abbott.
No limitation of injunction to specific infringing products (Article 62(1) UPCA). The need for a limitation of the issued injunction to the specific infringing products cannot be inferred from Art. 62(1) UPCA. The scope of the general injunction requested by Abbott – which always has to be interpreted in the light of the reasoning underlying the order whereby the injunction is issued – is sufficiently clear, and not too broad.
No leave to change claim for the first time in appeal to cover the territory of Ireland (R. 263.2(a) RoP). Such a request could reasonably have been made during the proceedings before the CFI, but Abbott explicitly chose not to do so. Justification cannot be found in the fact that the CFI – wrongly – considered Ireland to be a Contracting Member State and issued an injunction covering that territory in another action.
Measures mentioned in Article 67 UPCA may also be ordered in the framework of provisional measure proceedings, always provided that there is an urgent interest and such measures are proportionate (Article 62 UPCA).
No security for enforcement (R. 352.1 RoP). Not substantiated why serious difficulties would be expected in connection with the recovery of any possible damages from Abbott, which is a US based listed company with several subsidiaries in Europe and undisputed global sales of US$ 43.7 billion in 2022. Sibionics poses the hypothesis that it might have to file for bankruptcy if the injunction is issued without such a security, however without any substantiation.
