JUVE Patent Ranking Germany 2024 – 5 stars for Kather Augenstein

We are delighted that Kather Augenstein has been awarded 5 stars in the category Litigation: Lawyers in the JUVE Patent Ranking Germany 2024 published today. With this special recognition, our boutique law firm has achieved the top Tier 1 position this year and is thus one of the leading IP specialists in Germany.

Congratulations to our Recommended and Leading Individuals, Dr. Peter Kather, Dr. Christof Augenstein, Christopher Weber and Miriam Kiefer LL.M., as well as to the entire Kather Augenstein team for this outstanding achievement.

In this year’s evaluation, JUVE Patent emphasizes the particular clout of our team of experts in complex proceedings before national courts and the UPC. “The team is already one of the most active at the new court, handling a significant number of high-profile cases across a wide range of industries, including mobile communications, automotive and medical technology.”

Particularly mentioned in the current ranking are: Christof Augenstein, who is described as “creative, practical and responsive” by clients and as “friendly but firm” by competitors; Peter Kather, who is valued as “very client-focused with outstanding strategic and procedural advice” by clients and as “very experienced” by competitors; Miriam Kiefer, who is recognized for her “excellent case management and ability to respond to client needs”; and Christopher Weber, who is singled out for his “technical expertise and international savvy”.

You can find the complete ranking here.

Juristinnen erzählen – Dr Katharina Brandt as guest in ITM Münster’s interview podcast

In the 10th episode of  Juristinnen erzählen, hosted by the Institute of Information, Telecommunications and Media Law at the University of Münster, Dr Katharina Brandt has the opportunity to talk about how she started her career at Kather Augenstein.  Interviewed by Katharina Börms, she shares her enthusiasm for patent law and some of the challenges she faced as a young lawyer.

During her law studies with a focus on information, telecommunications and media law (ITM) at the University of Münster, Katharina completed additional training in intellectual property law. After her first exam, she completed a doctorate in patent law and joined Kather Augenstein as an associate in 2021. Since then, she has advised and represented national and international companies in various industries in all areas of intellectual property, with focus on patent law.

This interview is of particular interest to young professionals and anyone who is still in training.

We wish you pleasant listening! Click here for the podcast.

Provisional protection of secrecy in summary proceedings before the UPC

Local Division Düsseldorf, procedural order of 23 February 2024 – UPC_CFI_463/2023 – 10x Genomics/Curio Bioscience

In its procedural order of 23 February 2024, the Düsseldorf Local Court dealt with the question of how provisional protection of secrets is to be guaranteed in urgent matters.

I. Facts of the case

On 4 December 2023, Applicant filed an application for interim measures with the Local Division Düsseldorf.

Before the expiry of the opposition period (R. 209.1 (a) VerfO) and before filing of the notice of opposition, Opponent requested that measures be ordered for the provisional protection of confidential information. By procedural order dated 14 February 2024, the Local Division deferred its decision on the requests until Opponent had filed its opposition and submitted a request for the protection of confidential information. In this context, it also explained the detailled procedure for the protection of confidential information provided for by the case management system, according to which the Division can initially issue orders for the provisional protection of (allegedly) confidential documents.

By filing the opposition together with the Exhibits on 15 February 2024, Opponent applied for protection of the confidential information contained therein. In a procedural order dated 16 February 2024, the Local Division granted Applicant’s authorized representatives named in the proceedings access to the unredacted version of the documents submitted and obliged them to confidentiality – also vis-à-vis Applicant – under threat of a penalty payment. At the same time, the parties were given the opportunity to comment on which persons should have access to the information until the final decision on the protection of confidentiality.

Opponent requested that access to the information be restricted to four legal representatives known by name who undertake not to take part in any license negotiations in the field of the teaching of the patent for a period of five years. On auxiliary basis, an employee from Applicant’s legal department, who is also not involved in any business decisions, should also be granted access, whereby this employee should also undertake not to take part in any license negotiations in the field of the teaching of the patent for 5 years.

Applicant, on the other hand, requested access to the (allegedly) confidential information for the lawyers of the law firm mandated by Applicant and for two named, reliable persons at Applicant. On auxiliary basis, it requested access for the lawyers of the law firm mandated by Applicant actually handling the case, two paralegals and the two named, reliable persons at Applicant.

II. Order of the Local Division Düsseldorf

In the provisional confidentiality order, the Local Division Düsseldorf restricts access to the redacted information until a final decision on the request for protection of confidentiality on the part of Applicant to the lawyers of the law firm mandated by Applicant actually dealing with the case, two paralegals and one of the named, reliable persons at Applicant. These persons are obliged to maintain confidentiality also vis-à-vis Applicant. The information may not be disclosed outside the proceedings. Applicant must ensure that only the reliable person has access to the information.

Based on Art. 9(1) and (2)(a) Directive (EU) 2016/943, Art. 58 UPCA and R.262 ROP, the Division finds that access to (alleged) trade secrets can be restricted to a limited number of persons. Until a final order on protection of confidentiality is issued, access can be further restricted in order to ensure effective protection of trade secrets. The request for protection of confidentiality can also be discussed with the party with the redacted versions of the documents concerned.

In the present case, however, the special characteristics of the summary proceedings must not be disregarded. Deadlines for briefs are short. Extensions of deadlines are generally ruled out and the date for the oral hearing is often scheduled at short notice. All of this must be taken into account when determining the group of people who should have access to the information in order to ensure a fair procedure. Accordingly, the party affected by the order on provisional protection of confidentiality order must be fully able to work, taking into account the confidentiality interests of the opposing party, and be in a position to comment on each point raised by the opposing party in the case. In accordance with its order of 14 February 2024, the Local Division thus comes to the preliminary conclusion that, as a rule, four attorney representatives (two partners and two associates to support them), two patent attorney representatives and three representatives of the client must be granted access in summary proceedings, whereby this group of persons can be extended by two paralegals if necessary. However, this is again subject to a case-by-case examination, as the group of persons may not exceed the number necessary to ensure that the right of the parties to the proceedings to an effective legal remedy and a fair procedure is observed, in accordance with R. 262.6 s. 1 of the Rules of Procedure.

Applying this to the present case, the Local Division finds:

1). Applicant’s patent attorneys are not to be granted access, as the redacted information is of a purely commercial and non-technical nature.

2). Insofar as Applicant requests access for three partners and one associate of the mandated law firm, the Local Division has no objections. Restricting access to legal representatives who are not involved in pending proceedings concerning the same area of law before the UPC would unreasonably restrict Applicant’s choice of legal representatives. In addition, the legal representatives would be significantly hindered in the exercise of their profession without this being justified by overwhelming interests on Opponent’s side. Sufficient protection is guaranteed by the confidentiality order under threat of coercive measures.

3). In addition, access must be restricted to the employee at Applicant named in Applicant’s auxiliary request, who, according to Applicant, is the main coordinator of its patent disputes and the central internal person in the day-to-day management of Applicant’s litigation. Both Art. 9 Directive (EU) 2016/943 and R262a.6 ROP stipulate that at least one natural person of the party must be granted access. The fact that this employee may be involved in commercial decisions of Applicant, without this being explained in more detail, does not justify a different decision. The confidentiality order under threat of penalty payments also offers sufficient protection in this respect. Accordingly, Applicant does not have to prove that it has implemented procedures to protect the redacted information. Ordering an obligation not to take part in any license negotiations in the field of patent teaching for five years would disproportionately interfere with Applicant’s right to exercise his profession.

Kristin Jochheim & Charlotte George

Leaders League Rankings 2024 – Kather Augenstein awarded again as one of the leading law firms for patent and trademark litigation in Germany

In this year’s Leaders League Rankings 2024, Kather Augenstein has again been recognised as one of the leading law firms in intellectual property law for patent and trademark litigation.

In the latest Rankings 2024, the Kather Augenstein team was rated “excellent” Tier 1 in patent litigation category and “highly recommended” in the field of trademark litigation.

Further information about the team can be found here.

The Pharmaceutical Intellectual Property and Competition – Christopher Weber and Dr Benjamin Pesch publish on recent developments in intellectual property and competition law in the pharmaceutical sector in Germany

The Pharmaceutical Intellectual Property and Competition, now in its 5th edition, rovides a practical overview of pharmaceutical intellectual property issues, including the nexus of patents, exclusivity rights and related competition issues.

With a focus on current developments, the guide serves as a valuable tool for managing global risks in this field – analysing key legal and regulatory aspects in major jurisdictions worldwide.

Our team of authors, Christopher Weber and Dr Benjamin Pesch, have again written the German chapter in this year’s edition, which covers the principles and current developments of intellectual property and competition law in the German pharmaceutical sector.

“The Pharmaceutical Intellectual Property and Competition” is published this year on  Lexology, the exclusive platform for all The Law Reviews publications.

Read the editor’s foreword here.

Christoper Weber and Dr Benjamin Pesch will be pleased to answer any detailed questions you may have.

CoA of the UPC – Decisive circumstances for changing the language of the proceedings before the UPC

CoA of the UPC, decision of 17 April 2024 – UPC CoA 101/2024 – 10x Genomics Inc. / Curio Bioscience Inc.

In its decision of April 17, 2024, the Court of Appeal of the Unified Patent Court laid down guidelines for a request to change the language of the proceedings pursuant to Art. 49 (5) UPCA, R. 323 RoP.

I.         Facts of the case

The parties are involved in a summary proceeding before the Local Division Düsseldorf. Both parties are US-companies. Opponent was represented by a law firm based in London. However, Opponent’s legal representative is also admitted to the bar in Germany and is capable of speaking German. Opponent claims to be an SME.

After the oral hearing, Opponent filed a request to change the language of the proceedings to English, which the court of first instance rejected. Opponent appealed against this decision.

II.       Decision of the Court of Appeal

The Court of Appeal overrules the decision of the court of first instance.

The court clarifies that when deciding on a request to change the language of the proceedings, all relevant circumstances have to be taken into account. Relevant circumstances should primarily be related to the specific case and the position of the parties.

Of particular importance is the language of the patent which the patentee (here: Applicant) chose when filing the patent application. Having chosen a language, the patentee has to take into account that it might have to carry out proceedings in that language.

The language of the concerned technology field, i.e. the language primarily used in the technology field, is also relevant.

Finally, the nationality or domicile of the parties is a relevant party-related circumstance. A party must be able to fully understand what is submitted on its behalf by its representative and by the opposing party.

In contrast, the language skills of a party’s representative are not relevant. The nationality of the judges is also not a relevant aspect.

If the outcome of balancing the interests of the parties is equal, the position of the opponent  is decisive.

Applying these general principles, the Court of Appeal came to the conclusion that Opponent’s interests in the change of the language of the proceedings prevail. In particular, having to negotiate in a different language is a heavier burden for Opponent than for the Applicant. This is because Opponent is in any case a smaller company than the Applicant.

III.     Conclusion

In its decision, the Court of Appeal lays down guidelines for a request to change the language of the proceedings. The language of the patent and the language of the technology field concerned are of particular importance here.

If a party does not speak the language of the proceedings, this circumstance is not compensated for by the language skills of its legal representative.

It remains to be seen whether the use of the English language in proceedings before the UPC will increase after this decision. Since European patents are often written in English language, this is an aspect that might speak for English as language of the proceedings. However, this is not the only relevant aspect.

In this respect, it also has to be considered that the Plaintiff generally has the possibility to determine the language of the proceedings according to R. 14.2 RoP.

Marco Berlage

Undercover at spoga+gafa 2023 – Kather Augenstein and Uexküll & Stolberg secure favourable judgement on the cost for Stiga

Successful at trade fair. On behalf of our client Stiga S.p.A., we were able to obtain a preliminary injunction against Topsun Europe for an infringing act at the “spoga+gafa 2023 – die Garten-Lifestyle-Messe” in Cologne. The infringement was confirmed by the Higher Regional Court of Düsseldorf in a favourable judgement on the costs, after Topsun was liquidated.

Patent infringements at trade fairs are always something special. They have the advantage that preliminary injunctions – if founded – can be issued exparte partes and at short notice. Service and enforcement can also take place at the infringer’s trade fair booth. However, the infringement, i.e. the actual offering, can often only be proven during the trade fair itself. A visit to the trade fair stand and quick actions are essential. We were therefore in action at the trade fair for our client Stiga against Topsun Europe, the Czech subsidiary of the Chinese company Zhejiang Zhongjian Technology Co. Ltd.

Stiga is well known to gardeners and gardening enthusiasts. The company, based in Castelfranco Veneto (TV), Italy, is a leading European manufacturer and distributor of garden machinery and equipment, and is the European market leader in ride-on category. Stiga is the owner of a large number of industrial property rights, including European Patent EP 2 193 703 B1 (EP 703).

According to DIN standards, lawn tractors must have a device that checks the presence of the driver and brings the engine to a standstill within the prescribed space-time limit when the driver leaves the driver’s seat. The subject of EP 703 is such a safety device that requires no adjustment and ensures correct operation of the tractor on slopes or rough terrain.

Stiga had already examined tractor models from Zhejiang Zhongjian Technology’s “TOPSUN series” in the run-up to the trade fair and found four of them infringing EP 703. However, no business activities in Germany were known until the trade fair. Our client therefore instructed us to check the trade fair presentation for possible infringements and to assert Stiga’s rights if necessary. Our visit to the Topsun Europe’s booth shortly after the opening of the trade fair brought certainty – an infringing lawn tractor was presented there and all infringing models were shown in a brochure, which an employee showed on request. A warning letter was served on the same day, which was a requirement for the subsequent measures.

The Regional Court of Düsseldorf issued the preliminary injunction we applied for just one day later. The enforcement followed in the morning of the third day of the trade fair, just 48 hours after the opening. Topsun Europe had to remove the presented model and the brochures from the booth and attach a disclaimer to an advertising banner.

The injunction was confirmed in the first instance following an opposition and an oral hearing. After Topsun Europe had been liquidated and deleted from the Czech commercial register, the parties agreed in the appeal that the proceedings were settled and only disputed regarding the costs. This judgement was also in our client’s favour. In a detailed and well-reasoned decision, the Higher Regional Court Düsseldorf was convinced that the disputed lawn tractors infringed the patent in suit and that Topsun Europe should therefore be ordered to bear the costs.

It should also be mentioned that both courts had no doubts about the validity of EP 703. This is remarkable, as the German courts generally only consider the validity to be sufficiently secured if a first-instance decision on the validity has already been issued. However, this has not yet been the case.

However, only the Federal Patent Court will make a final decision on the validity. Zhejiang Zhongjian Technology filed a nullity action in October 2023, the decision on which is still pending. Based on the progress to date, however, we are optimistic that this decision will also be in Stiga’s favour. Stiga continues to defend itself against the distribution of the infringing products of Zhejiang Zhongjian Technology in Europe. It is currently conducting another lawsuit against them in Italy, before the Tribunal of Turin, for infringement of EP 703 and two further patents.

In the proceedings, our clients were supported by Mr. PA Lars Manke from Uexküll & Stolberg. Christopher Weber and Sophie Prudent from Kather Augenstein argued on behalf of Stiga.

The Legal 500 Germany Ranking 2024 – Kather Augenstein again awarded as one of the leading law firms for patent litigation in the field of intellectual property

The highly regarded The Legal 500 Germany Ranking 2024 has again recognised the team at Kather Augenstein as one of the leading IP boutique law firms for patent litigation in the field of intellectual property.

This recognition is based on client, peer and colleague feedback and underlines our consistently outstanding performance and expertise.

Managing Partner Miriam Kiefer LL.M., who leads the expert team and coordinates national and international disputes, is again highlighted for her outstanding litigation work. Sören Dahm, an integral part of the partner core team, is recommended for his legal advice to clients in trade mark, design and competition law proceedings.

Dr Christof Augenstein and Christopher Weber are both again recommended in the exclusive circle of leading individuals for patent litigation and competition law litigation. We are proud that Senior Partner Dr Peter Kather was selected to the Hall of Fame in 2022 and is confirmed again this year in this special category.

We want to thank our clients, peers and colleagues for the trust they have placed in us!

For more details of the full ranking results, please click here.

Higher Regional Court Dusseldorf (Glatiramer acetate) – fault in the enforcement of a preliminary injunction from a subsequently revoked patent

In its judgment of 12 October 2023, the Higher Regional Court Düsseldorf dealt with the question of whether the patent proprietor enforcing a preliminary injunction is at fault if the patent is later revoked.

1. Facts

The proceedings before the Higher Regional Court of Düsseldorf concerned a generics company’s claim for damages under Sec. 945 German Code of Civil Procedure, which was kept off the market by an injunction.

Initially, the Defendant’s patent was upheld by the Opposition Division at first instance. The Plaintiff filed an appeal against this decision. The Defendant then obtained a preliminary injunction against the Plaintiff, which it enforced.

Following the revocation of the patent in suit, the Plaintiff filed an action to the Regional Court Düsseldorf. In its judgment of 29 September 2022 (docket no. 4c O 48/21), the Regional Court Düsseldorf ruled that the Plaintiff was entitled to damages under Sec. 945 of the German Code of Civil Procedure.

2. Judgement of the Higher Regional Court Düsseldorf

On appeal, the Higher Regional Court Düsseldorf dealt with the question of whether the defendant was at fault because it had obtained and enforced a preliminary injunction based on a patent that was later revoked.

It is true that the claim under Sec. 945 German Code of Civil Procedure is independent of fault and is structured as risk liability. However, the Higher Regional Court thus countered any concerns with regard to the conformity of the rigid risk liability of Sec. 945 German Code of Civil Procedure with the Enforcement Directive.

In the opinion of the Higher Regional Court, the Defendant had acted negligently because it could have recognized that a revocation of the patent in suit was possible and foreseeable if it had exercised the due care required. The patent proprietor may only rely on the validity of a first-instance decision on the validity of the patent if a subsequent amendment of the decision was not foreseeable. This applies in particular if the case law has changed unexpectedly.

Anyone who obtains and enforces a preliminary injunction during an ongoing legal attack, even if this was unsuccessful in the first instance, is deliberately acting at their own risk that this may later prove to be unjustified from the outset.

3. Conclusion

It is difficult to prove culpability in the case of unwarranted IP warnings. In addition, the requirements for culpability in these cases are high. In principle, the grant of the patent may be relied upon if the patent proprietor does not have a knowledge advantage over the granting authority or is not subject to special duties of care.

However, the Higher Regional Court Düsseldorf has now lowered the hurdles for a patent proprietor to be at fault if it acts from its patent without authorization. The patent proprietor can proceed from a patent that was upheld at first instance. However, it may not rely on the validity of this decision but must rather expect the possibility of revocation.

Marco Berlage

UPC on access to written pleadings and evidence

The Central Division Munich has rejected two separate requests based on Rule 262.1 (b) RoP requesting access to the content of the court file of two revocation actions. The Court found that a “reasoned request” requires a concrete and verifiable legitimate reason that can be weighed against the party’s interest to deny access.

The Nordic-Baltic Regional Division found contrary to this, that “reasoned request” shall only require the Applicant to provide a credible explanation for why he or she wants access to the pleadings or evidence.

I. Central Division Munich: Wish to form an opinion on validity is not a legitimate reason

The first order was delivered on 20^th September 2023 (docket number CFI 1/2023). The Applicant asked for full access to the content of the register, including all written pleadings and evidence filed in a revocation action. The Applicant solely stated that the patent at issue and its legal validity were of interest to one of the Applicant’s clients. The parties to the main proceedings were invited to submit comments and the Claimant raised the argument that it was not possible to assess whether there was in fact a reason to grant the access as the client of the Applicant remained anonymous. Following this the Applicant solely requested the access in his own name. As the reason for the request he now argued that it was his wish to form an opinion on the validity of the patent.  

The Judge-rapporteur (following “JR”) rejected the request as he found that the Applicant did not show a legitimate reason to access the register. This is interesting as Rule 262.1 RoP solely mentions a “reasoned request”, thus not explicitly stipulating a legitimate reason. However, the JR concludes that there was no intention to create a “default” right of access to written pleadings and evidence. He substantiates this finding with the wording of the Rule – making a clear distinction between decisions and orders that shall be published whereas written pleadings and evidence shall only be available upon reasoned request – following with the structure and history of the Rule. Therefore, the JR concludes that reasons have to be provided that justify departing from the default situation where third parties can solely view the register and take note of the existence of documents but not their content.

The Court therefore “concludes that Rule 262.1 (b) RoP requires a concrete and verifiable, legitimate reason for making available written pleadings and evidence upon a request by a member of the public”.

In the decided case the Applicant did not show this required reason. He had argued that he wished to form an opinion on the validity of the patent and that this was for him as a member of the public and a patent attorney of personal and professional interest. The JR found that this wish cannot be accepted as a sufficiently concrete, legitimate reason. The request therefore did not only lack concrete and verifiable information, but the Court also did not see why access to the written pleadings and evidence would be useful or necessary in order to form an opinion on the patent. The JR refers the Applicant to the study of the patent and the public prosecution history as well as prior art.

II. Central Division Munich: Wish to be informed for the purposes of education and training is not a legitimate reason

The Court decided similarly in another case. This second order was delivered on 21^st September 2023 (docket number CFI 75/2023). The requesting party asked for copies of the Statement of Revocation and the Letter for Service on the Patent Proprietor in another revocation action. In this request the Applicant argued that it wanted to be informed about the proceedings before the UPC for the purpose of education and training. After having been invited to submit comments, the Claimant in the main action argued that a third party shall not be permitted to use the “carefully constructed pleadings (prepared at a not insignificant cost)” with a view to advancing its own interests.

Again the JR meticulously refers to the wording and history of the Rule and comes to the conclusion that a request for access to written pleadings and evidence pursuant to Rule 262.1 (b) RoP must pertain to the reasons for access per se. The JR finds that the reasoned request forms the basis of the decision after consulting the parties and that it has to be assessed on the basis of all facts and circumstances whether there is indeed a legitimate reason.

In this case the JR did not find a legitimate reason as the Applicant had failed to show concrete and verifiable information. Apart from this the Court did not see why the requested documents would be useful or necessary for said purpose as the Applicant could read the Courts orders and decisions. The JR found that the provided reason was also insufficiently concrete and verifiable so that the JR was not even able to weigh this reason against the (commercial) interest of the Claimant in denying access.

Lastly, the Court clarified that irrespective of the lack of a legitimate reason there is no legal basis to make available the copy of the Letter for Service as it is neither “written pleadings” nor “evidence” in accordance with Rule 262.1 (b) RoP.

III. Nordic-Baltic Regional Division: Credible explanation is sufficient

The Nordic-Baltic Regional Division also had to decide on a request according to Rule 262.1 (b) RoP. This order was delivered on 17^th October 2023 (docket number CFI 11/2023). Here the Applicant requested access to documents in an infringement proceeding that was withdrawn even before all Defendants had been served with the statement of claim.

The JR acknowledged the decisions of the Central Division Munich but found that in the Nordic-Baltic Regional Divisions view the written procedure shall in principle be open to the public unless the Court decides to make it confidential. Therefore the JR concluded that “reasoned request” within the meaning of Rule 262.1(b) RoP has to be understood to mean that the Applicant needs to provide a credible explanation for why he or she wants access. This information could then be relevant when determining whether there is a need to keep information confidential.

The Applicant had explained that he was interested to see how the claim was framed, particularly since it was filed in parallel with cases in other divisions. This explanation was sufficient in the view of the Nordic-Baltic Regional Division.

IV. Leave to appeal

It should be noted that the Court in all orders stated that a clear and consistent interpretation of “reasoned request” and the consistent application of Rule 262.1 (b) RoP is especially important. Therefore, the Court has granted leave to appeal the Orders. The Nordic-Baltic Regional Division additionally only ordered access to the statement of claim for 7^th November 2023. This was intended to give the Claimant sufficient time to appeal and apply for suspensive effect.

The UPC has to find and establish its jurisdiction in this first months of operation regarding many smaller and bigger questions. The application of Rule 262.1 (b) RoP might be one of those smaller questions, however, it concerns the very important issue of the access of the public to UPC Court files. It should be appreciated that the Court has perceived the different opinions on Rule 262.1 (b) RoP and did therefore grant the leave to appeal. It should be expected that a decision on this issue will be handed down by the Court of Appeal in the coming months.

Dr Katharina Brandt