Article 63

Permanent injunctions

1.   Where a decision is taken finding an infringement of a patent, the Court may grant an injunction against the infringer aimed at prohibiting the continuation of the infringement. The Court may also grant such injunction against an intermediary whose services are being used by a third party to infringe a patent.
2.   Where appropriate, non-compliance with the injunction referred to in paragraph 1 shall be subject to a recurring penalty payment payable to the Court.

Case Law

Court of Appeal

IPPT20241029, UPC CoA, Belkin v Philips
Manifest error of law that managing directors of a company are intermediaries within the meaning of Art. 63(1) UPCA solely on the basis of their function as managing directors. A managing director of a patent infringing company represents that company. This company cannot therefore be a ‘third party’ within the meaning of Art. 63 UPCA and Art. 11 of the Directive 2004/48. 
 

Court of First Instance

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO
Infringement of 4G standard essential patent: permanent injunction granted (Article 63 UPCA), Permanent injunction granted (Article 63(1) UPCA). Risk of repetition due to the infringing acts committed by the defendant in the past in the contracting states asserted in the present case. An understanding of a SEP as a chipped title for the enforcement of injunctions, which only serves to enforce higher licence fees, is irreconcilable with European law (Article 11 Enforcement Directive). Injunctive relief not precluded by FRAND objection (Article 102 TFEU). While the Plaintiff has behaved in accordance with the ECJ's programme of obligations addressed to it as SEP holder, the Defendants have not behaved in a targeted manner and in accordance with the practices of a party seriously interested in taking a licence in the negotiations for a FRAND -compliant licence within the meaning of the negotiating programme developed by the European Court of Justice in Case C-170/13 – Huawei v. ZTE, ECLI:EU:C:2015:477.

IPPT20241104, UPC CFI, LD Milan, Oerlikon v Bhagat
Patent infringement uncontested. Permanent injunction granted to prohibit repetition and prohibit future conduct (Article 63(1) UPCA). With respect to infringing conduct that has already been ascertained, it is up to the infringing defendant to prove that there is no risk of repetition; with respect to future conduct that has not yet been realised, the burden of proof lies with the claimant, by virtue of objective elements, such as the unambiguousness of the elements preparatory to the infringement, and subjective elements, with respect to the defendant's intention to proceed with the infringement. Recurring penalty (Article 63(2) RoP) allows for a better protection of the permanent injunction, considering that even after the execution of the measure ante causam there were indications to the market by the defendant of a willingness to market. 

IPPT20240913, UPC CFI, LD Munich, Philips IP v Belkin
Intermediary. In case of a patent infringement by a corporation its directors may be liable for injunctive relief as intermediaries but not for damages (Article 63(1) UPCA)