UPC decision: Interim injunction

Rule 211.1 and Rule 212.3 of the Rules of Procedure of the Unified Patent Court: The patent at issue protects a combination structure of bicycle frame and motor hub. The contested embodiment has been available for test rides at the "Eurobike 2023" trade fair in Frankfurt am Main since June 21, 2023. In addition, an order form is available on the respondent's website in both German and English and can be used to order the contested embodiment via the specialist dealers listed on said website. At the request of the applicant, the contested embodiment was inspected at the respondent's registered office in Switzerland on 19 June 2023. The results of this inspection, in terms of content, have not yet been released. With a brief dated 22 June 2023, the applicant unsuccessfully issued a warning to the respondent; the applicant filed a request for an interim injunction on the same day. 

The respondent filed a protective letter with the Unified Patent Court on 19 June 2023. In it, they invoke exhaustion. In addition, they deny any infringement of the patent at issue by the contested embodiment. The court recognized that the contested embodiment directly and literally infringes the patent at issue. In particular, the design of the contested embodiment – as judged from the functional description thereof provided in the protective letter – wherein the internal thread is not located directly in the hole of the second fork, but in a sensor attached to it, is still covered by the protective scope of the patent at issue, which does not exclude such a multi-part design of the second fork. 

No exhaustion according to article 29 of the Agreement on a Unified Patent Court has occurred either, as the Federal Supreme Court of Switzerland already correctly stated in parallel injunction proceedings. In addition, the applicant can demand an interim award of costs from the Respondent according to Rule 211.1(d) Rules of Procedure. As the applicant has not explained in greater detail how they arrived at the sum of € 16 000, the court has granted them an interim award of costs only with regard to the court costs incurred by law. The validity of the patent at issue is secured to the extent required for the issuance of a provisional order. 

The notice of grant of the patent at issue was already published in 2015, without any opposition having been filed against the patent at issue or a national revocation action having been brought to date. Nor has the respondent been able to present relevant prior art, either before the court or in its protective letter. The court has issued the provisional measures without prior hearing of the respondent. The applicant has credibly demonstrated that any delay is likely to cause irreparable harm to them according to Rule 212.1 Rules of Procedure. "Eurobike 2023" is an important leading trade fair that has considerable relevance for the entire industry. It enables the respondent to make contact with potential customers and thus establish its own market presence. It is obvious that the exhibition of the contested embodiment at this trade fair can lead to a loss of sales or market share for the applicant that can hardly be reversed. 

In the operative part of the order, the wording of claim 1 was stated, as particularly requested by the respondent (the more abstract main application for prohibition "in accordance with the claims of the patent at issue" was not granted). The applicant was ordered to provide security in favour of the respondent within a period of 10 days from the service of this order, in the form of a deposit or a bank guarantee in the amount of € 500.000 (UPC June 22, 2023, CFI 177/2023).

 

Rule 353 of the Rules of Procedure of the Unified Patent Court: A rectification was requested according to Rule 353 Rules of Procedure to the preceding injunction order, stating that the respondent is to refrain from offering the protected combination structure in Germany, the Netherlands, France, Austria, and/or Italy; i.e., Austria was added compared to the issued title. 

According to the applicant, the omission of Austria constituted an obvious slip. The request for rectification was not granted, as in the opinion of the court, it does not represent an incorrect or incomplete declaration of what the court actually intended. Rather, the order for provisional measures was issued based on the content of the request, in which Austria was neither mentioned in the requests nor in the statement of the grounds. The fact that the applicant sought a preliminary injunction concerning all member states of the Unified Patent Court where the patent at issue is in force in the more generally formulated main request, does not lead to a different assessment considering the overall content of the application (UPC, June 30, 2023, CFI 177/2023).