Temporal urgency for preliminary injunctions on a modified embodiment

In a recent decision (HRC Düsseldorf (2. Zivilsenat), decision of 27 May 2021 – 2 U 2/21; GRUR-RS 2021, 13946 – Insulinpumpe), the Higher Regional Court (HRC) Dusseldorf dealt with the issue of urgency in case of a modified embodiment.

I. Facts

By complaint of 3 April 2019, the plaintiff for the injunction proceeded against Opponent 1) on basis of two property rights. By decision of 13 Aug 2020, the Regional Court (RC) Dusseldorf sentenced Opponent 1) for infringement of one of the patents and dismissed the action for infringement of the second patent. The HRC Dusseldorf confirmed the dismissal of the action regarding the second property right.

In October 2020, Opponents 1) and 2) launched a new product on the market. Applicant’s legal representatives then made a test purchase on 7 Oct 2020 and forwarded the sample to Applicant, where it arrived on 13 Oct 2020. On 26 Oct 2020, Claimant’s chief engineer issued an affidavit with his test results, whereupon the Claimant filed a motion for a preliminary injunction on the basis of a third property right on the same day. The RC Düsseldorf followed the motion and upheld the preliminary injunction even after Opponents’ opposition of 12 Jan 2021.

Opponents filed an appeal against this decision. In their opinion, the preliminary injunction lacked urgency, because Claimant had also been able to take legal action against the predecessor products for the third property right in 2019. In contrast, Claimant claims that it only had become aware of the fact that the predecessor products also infringe the patent on which the injunction is based by the opposition and that it had no reason to investigate beforehand, especially since it had been allowed to rely on the fact that Opponents would at most launch a patent-free modification of the predecessor products on the market.

II. Decision

The HRC Düsseldorf repeals the preliminary injunction for lack of urgency.

The starting point is the Senate’s established case law that the decisive factor for the question of the existence of urgency is,

“whether the patentee has behaved in such a negligent and hesitant manner in asserting his claims for patent infringement that, from an objective point of view, the conclusion is given that he is not interested in a speedy assertion of his rights, so that it is also not appropriate to allow him to claim preliminary legal protection.”

The patentee did not have a general duty to observe the market, but he had a duty to investigate in the case of concrete indications. The urgency period would be only kept if he filed the motion for the preliminary injunction within one month after he had all knowledge and means for demonstration of allegations to the satisfaction of the court to reliably and promisingly pursue his rights.

After that, the HRC Düsseldorf states that urgency usually lacks in the following constellations if the infringement was recognizable from the beginning:

  • The patentee first requests a preliminary injunction with respect to certain property rights and later with respect to further property rights with respect to the same embodiment.

 

  • In response to a first injunction proceeding concerning a first patent, the infringer modifies the embodiment, but concerning the second patent of a second injunction proceeding, the embodiment has remained unmodified.

 

  • The patentee first conducts proceedings on the merits and then requests a preliminary injunction against a modification substantially the same as the predecessor product (“kerngleich”).

According to the opinion of the HRC Düsseldorf, the accusation of hesitant assertion of rights could thus also arise from the fact that the patentee does not take legal action against an embodiment which is modified with respect to the challenged embodiment, but substantially the same (“kerngleich”). The principles of “substantially the same”-infringement were therefore not only decisive for scope of the injunction, but also relevant for the question of urgency. The HRC Düsseldorf justifies this with the fact that the patentee had already been able to obtain a decision against the predecessor embodiments based on the further property right. Besides that, Applicant was not defenseless as he could still initiate an action on the merits based on the further protective right as far as sec. 145 German Patent act did not impede this.

If a patentee waited with the examination of further property rights for patent infringement and their assertion because he asserted claims against the embodiment in question based on other property rights, this indicated that the assertion of these property rights was not urgent for the patentee. Otherwise, the patentee could circumvent the urgency requirement by staggering his motions for preliminary injunctions with respect to different property rights.

In the present case, Claimant could have taken legal action against the predecessor products based on the third property already in 2019. Since the attacked embodiment is substantially the same as the predecessor products (“kerngleich”), the motion for the preliminary injunction of 26 Oct 2020 lacked urgency. In particular, Claimant could and should have examined the predecessor products for infringement of the third property right, since they were competing products, Claimant had examined the samples for infringement of the other two property rights anyway and it had already become apparent here that many of the features of the third property right had been fulfilled. Moreover, Claimant could not have relied on the fact that Opponents would merely bring a patent-free modification on the market.

Regarding Opponent 2), the HRC Düsseldorf further found that the latter had not been a party to the main proceedings. However, with regard to the issue of urgency, it was not permissible to take an approach that differentiated too much between the individual companies of a group:

“If a patentee is reluctant to take legal action against an attacked embodiment, this fundamentally affects the urgency with regard to action against all companies of a group that participate in the infringing acts with regard to this attacked embodiment. The patentee behaves inconsistently if he does not attack infringing acts of one company, but subsequently seeks preliminary legal protection against another company from the same group. Something different may apply if the nature or intensity of the infringing acts changes due to the cooperation of the second company, so that the patentee has reason for the first time to take legal action against the attacked embodiment, or action against a specific company of a group is initially not possible, for example, because timely service of the motion appears problematic.”

III. Assessment

From a legal point of view, no objection seems to speak against the assumption that a patent proprietor who does not take legal action, whether in preliminary injunction proceedings or an action on the merits, against an attacked device on basis of a certain property right gives the impression that the assertion of the property right is not urgent for him at this point. If the infringer subsequently brings a substantially the same embodiment (“kerngleich”) on the market, the concept of “substantially the same” (“Kerngleichheit”) speaks against a “restart” of the urgency period, because the patent proprietor could have already obtained a decision against the predecessor product that would have also covered the substantially the same embodiment (“kerngleich”).

The question arises to what extent the patent proprietor who does not assert all property rights against the predecessor product can still conduct an action on the merits against the substantially the same embodiment (“kerngleich”). The HRC Düsseldorf limits itself to “provided that sec. 145 German Patent Act does not speak against this”. Sec. 145 German Patent Act provides that a person who has brought an action under sec. 139 German Patent Act may bring a further action against Defendant for the same or a similar act on basis of another patent only if, through no fault of his own, he was not in a position to also assert this patent in the earlier litigation. The admissibility of a further action on the merits could only be justified to the extent that the infringement by the substantially the same embodiment (“kerngleich”) is considered to be a new fact which the patent proprietor has not been aware of at the time of the first action on the merits and with regard to which he would be excused in this respect. However, if the infringement by the predecessor product and the infringement by the substantially the same embodiment (“kerngleich”) are considered to be “similar acts” within the meaning of sec. 145 German Patent Act, it appears questionable whether sec. 145 German Patent Act would not speak against a further action on the merits. This is because what has been said applies here as well: If the patentee had asserted the property right in the first action on the merits, he would have a title against the predecessor product and, because of the substantially the same characteristic (“Kerngleichheit”), also against the variation.

From a practical point of view, the consequence of this case law is that a patent proprietor would always have to examine all property rights concerned for infringement with regard to a attacked device if there were concrete indications of infringement, and would then have to file a motion for a preliminary injunction or an action on the merits for all property rights which he considers to have been infringed. This is despite the fact that a decision on basis of one property right regularly brings him the desired injunction, information, rendering account, recall, removal from the distribution channels and destruction, and filing an action on the basis of several IP rights increases both the necessary efforts, especially in the case of large IP portfolios, as well as the cost risk for the patentee.

by Dr. Benjamin Pesch

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