Case Law
Rule 206: Application for provisional measures

Court of First Instance - Munich (DE) Local Division, Order dated 27/08/2024, Scandit AG v. Hand Held Products, Inc. (Case/ Registry number: ACT_9216/2024, ORD_46277/2024)
Example of decision on the application of provisional measures: "1. In certain constellations, a direct infringement of a device claim can be recognized, namely if the patent infringer appropriates the actions of its customer in the sense of an extended workbench and it would be unfair from an equity point of view to hold the infringer liable only for a contributory patent infringement. However, there is always a risk that the boundaries drawn by the legislator between the legal consequences of direct and contributory patent infringement will become blurred. Therefore, liability for direct patent infringement can only be assumed in such cases if a specifically outlined completion of the patent-compliant device can be expected with certainty. This is unproblematically the case, for example, where a kit is supplied to the customer for assembly into a complete device, together with assembly instructions, and the complete device does not function if assembled in any other way.
2. However, the circumstances of the present case deviate from this in a decisive point. As a result of the contested program library, in connection with the videos and the documentation, it is possible, in the sense of a contributory patent infringement which constitutes an element of a risk, that the customer will produce a device in conformity with the patent. However, due to the large number of different programming options and possibilities for assembling the hardware components, this is not certain with the necessary concreteness.
3. In the case of a prohibitory injunction to prevent contributory patent infringement, it must always be considered whether a relative or absolute prohibition should be issued in view of the remaining possibilities of the infringer to offer or supply the essential means for other, non-infringing purposes. In particular, it must be considered whether the risk of a direct patent infringement by the customer of the contributory infringer can be sufficiently averted by a relative prohibition, e.g. on the basis of warnings, and whether and at what cost it appears possible to redesign the means so that they are no longer suitable for use in accordance with the patent.
4. In proceedings for the grant of provisional measures, a full examination of all the arguments raised against the validity of the patent-in-suit, which may be numerous as in nullity proceedings, is not possible. Rather, the number of arguments raised against the validity of the patent must generally be reduced to the best three from the respondent’s point of view (UPC_CFI_443/2023 ACT_589207/2023 (LD Munich), order of 21 May 2024, 3rd LS). The background to this is that while a summary assessment of factual issues is conceivable, a summary examination of legal issues is not. The court can either examine a legal issue or not. If the court decides to examine the issue, it will do so comprehensively. The only way to take account of the summary nature of the procedure is therefore to reduce the number of legal issues to be fully examined in this way. This is made clear by the requirement to limit the number of arguments to three. Since it is the respondent’s responsibility to challenge the presumption of validity, it is primarily the respondent’s responsibility to select the three arguments to be examined in detail by the panel in summary proceedings.
5. In view of the diverging case law on temporal urgency, which grants the applicant only one month, e.g. in UPC_CFI_452/2023 (Local Division Düsseldorf), order of 9 April 2024, GRUR-RS 2024, 7207, Rz. 128, the Local Division Munich adheres to its case law granting two months."

Court of First Instance - The Hague (NL) Local Division, Order dated 19/06/2024, Umedwings Netherlands B.V., Sibio Technology Limited /
Abbott Diabetes Care Inc. (Case/ Registry number: ACT_14945/2024, ORD_30431/2024)
Example of decision on an application for provisionnal measures denied: "In view of the above, there is no need to look into the other issues brought forward by Sibio c.s. and Abbott, as the above-mentioned issues regarding added matter led to the conclusion that it is more likely than not that claim 1 of the patent will be held to be invalid. All dependent claims relied on by Abbott suffer from the same problem. For the sake of clarity: claim 10 (which recites “an elastomeric sealing member (4714) disposed within the recess (4710)”) was not invoked by Abbott.
10. Consequently, the provisional measures are to be denied. Since the applicant did not prevail with its application, the present order terminates these proceedings, which means that there is no basis for a provisional reimbursement of costs as requested by Abbott.
Even if the applicant were to be successful in the proceedings on the merits, it will still have to bear the costs of these proceedings as the unsuccessful party. The applicant must therefore reimburse the defendant for the costs of the proceedings at first instance. For the purpose of the cost proceedings, the court sets the value of the action at EUR 4,000,000, as proposed by Abbott. Sibio c.s. did not object to this amount."

Court of Appeal – Luxembourg (LU), Order dated 26/02/2024, NanoString Technologies Inc.; NanoString Technologies Germany GmbH; NanoString Technologies Netherlandes B.V. / President and Fellows of Harvard College; 10x Genomics, Inc. (Case number UPC_CoA_335/2023, ORD_595990/2023)
Example of decision on the merits of the application for provisional measures: “1. Compliance with the requirements set out in R. 206.2(b) to (e) RoP concerns the merits of the application for provisional measures, the examination of which is the responsibility of the judge and must be considered by the judge when making orders under Rules 209, 211 and 212 RoP.
2. The patent claim is not only the starting point, but the decisive basis for determining the protective scope of a European patent under Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC.
The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.
This does not mean that the patent claim merely serves as a guideline but that its subject mater also extends to what, after examination of the description and drawings, appears to be the subject-mater for which the patent proprietor seeks protection.
The patent claim is to be interpreted from the point of view of a person skilled in the art.
In applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.
These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent.
3. A sufficient degree of certainty pursuant to R. 211.2 RoP, in conjunction with Art. 62(4) UPCA (see also Art. 9(3) Directive 2004/48/EC) requires that the court considers it on the balance of probabilities at least more likely than not that the Applicant is entitled to initiate proceedings and that the patent is infringed. A sufficient degree of certainty is lacking if the court considers it on the balance of probabilities to be more likely than not that the patent is not valid.
The burden of presentation and proof for facts allegedly establishing the entitlement to initiate proceedings and the infringement or imminent infringement of the patent, as well as for all other circumstances allegedly supporting the Applicant’s request, lies with the Applicant, whereas, unless the subject-mater of the decision is the ordering of measures without hearing the defendant pursuant to Art. 60(5) in conjunction with Art. 62(5) UPCA, the burden of presentation and proof for facts concerning the lack of validity of the patent and other circumstances allegedly supporting the Defendant’s position lies with the Defendant.”