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Rule 211: Order on the 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, Sibio Technology Limited, Umedwings Netherlands B.V. / Abbott Diabetes Care Inc. (Case/ Registry number: ACT_14944/2024, ORD_30434/2024)
Example of decision on sufficient interest for provisional measures, despite unilateral cease-and-desist declaration: "Abbott does not accept Sibio’s unilateral cease-and-desist declaration. Furthermore, Abbott has sufficiently demonstrated that Sibio c.s. did not fully comply with their own unilateral declaration to cease and desist. Firstly, even though their declaration was rendered on 23 April 2024, Abbott undisputedly was able to place an order for a GS1 device on 29 April 2024 in both Germany and the Netherlands. Delivery of the device was made on 3 and 4 May 2024, respectively. Secondly, after Sibio c.s. was made aware of this and, according to their submissions, had “reorganized its sales activities”, Abbott was still able to purchase another GS1 device on 17 May 2024 through the website sibionicsshop.com, where the GS1 device was still offered in Dutch to the Dutch public. This was not disputed by Sibio c.s.
Given Sibio c.s.’ breaches of their cease-and-desist declarations, it is understandable that Abbott considers that it cannot properly rely on Sibio c.s.’ undertakings. As pointed out by Abbott, the declarations do not include an irrevocable penalty payment in case of breaches. Indeed, the only commitment is that the amount of the penalty is left to be determined by Abbott and to be reviewed by this Local Division. This would require Abbott to initiate new proceedings before this court instead of simply executing the order sought.
On the other hand, according to their submissions, Sibio c.s. has left the markets where the patent is in force. This court therefore fails to see any legitimate interest on their part in opposing the preliminary injunction sought. Abbott’s interests therefore outweigh any interests of Sibio c.s."

Court of Appeal - Luxembourg (LU), Order dated 13/05/2024, SES-imagotag SA / Hanshow Technology Co. Ltd, Hanshow France SAS, Hanshow Germany GmbH, Hanshow Netherlands B.V. (Registry number : APL_8/2024 ORD_17447/2024)
Example of decision on the interpretation of claim features: “38. In its order in 10x and Harvard v Nanostring (UPC_CoA_335/2023 App_576355/2023), the UPC Court of Appeal held that a sufficiently certain conviction under Rule 211.2 RP in conjunction with Art. 62(4) UPCA requires that the Court considers it at least predominantly probable that the patent is infringed. According to this standard, the Court of Appeal find that, based on the parties’ submissions and the evidence available in these summary proceedings, there is not a sufficient degree of certainty that the appellees infringe the patent in suit with the accused products. “
“46. Since, on a balance of probabilities, the appellant’s products do not fall within the scope of protection of the injunction patent, the Court of First Instance was right to reject the application for interim measures and right to order the appellant to pay the costs of the proceedings at first instance. The Court of Appeal therefore dismisses the appeal.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 30/04/2024, Curio Bioscience Inc./ 10x Genomics, Inc (Case number: UPC_CFI_463/2023 ORD_23580/2024)
Example of decision on the ordering of provisional measures by the local division: “In this light, the local division assumes that the subject matter of patent claim 14 will prove to be patentable with sufficient certainty, at least in the alternative underlying the allegation of infringement. The validity of patent claim 1 requires no further discussion, since the local division has already been unable to establish any (indirect) infringement of this patent claim.”
“3. Based on these principles, the validity of the patent at issue is sufficiently certain to the extent relevant in the present case. The patent at issue was granted in 2019 without any objection having been lodged against its grant. On summary examination, the Defendant’s arguments do not have the potential to give rise to significant doubts as to the validity of patent claim 14 of the patent at issue.
a) The fact that the Applicant has decided to file auxiliary requests in the light of the Defendant’s submissions does not in itself give rise to any doubts as to validity. The formulation of such auxiliary requests is rather an expression of legal caution. This is already necessary because the Court of Appeal addressed the possibility of the inadmissibility of auxiliary requests in the second instance in its Order of 26 February 2024, but ultimately left the question open (UPC_CoA_335/2023, Order of 26 February 2023, GRUR-RS 2024, 2829, para. 116 - Nachweisverfahren).”
“Since the Defendant has failed in the urgent proceedings to significantly dispute at least an infringement of patent claim 14 of the patent at issue, the local division is convinced on summary examination of an infringement of the patent at issue by the actions of the Defendant. Furthermore, the Defendant has failed to create significant doubts about the validity of the patent at issue. To the extent that the Defendant in this context points out that it had very little time to verify the validity of the patent at issue, the local division cannot agree with this, especially since almost 2 ½ months passed between the service of the application for the ordering of provisional measures and the oral proceedings. This is close to the period of time envisaged by the Rules of Procedure for the preparation of the Statement of defence, including a possible Counterclaim for revocation, in the main proceedings (R. 23 and R. 25.1 RoP). Finally, the local division is ultimately also of the clear conviction that the ordering of provisional measures is necessary in the present case due to the infringement of the patent at issue, both substantively and temporally.”

Court of First Instance - Düsseldorf (DE) Local Division, Order dated 29/01/2024, 10x Genomics, Inc./ Curio Bioscience Inc. (Case number UPC_CFI_463/2023, ORD_3015/2024)
Example of decision on the right for the panel to call a technically judge to determine whether the existence of the disputed patent is sufficiently secured to consider issuing a provisional measures order: “In principle, provisional measures can only be ordered if the legal existence of the patent in dispute is sufficiently guaranteed, art. 62(4) EPC in conjunction with R. R. I. R. 211.2 of the Rules of Procedure. It is therefore incumbent on the panel of judges to form a sufficient idea of the existence of the right on the basis of the parties’ arguments and, in particular, to examine whether any objections raised against the validity of the contested patent are such as to create reasonable doubt as to the validity of the contested patent (UPC_CFI_452/2023 (LK Düsseldorf), order of December 11, 2023). Although ex officio recourse to a technically qualified judge is only mentioned in R. 34 of the Rules of Procedure, and thus in the provisions relating to the procedure on the merits, art. 8(5), 2nd sentence EPC confers on the panel of judges, in general and therefore also in urgent proceedings, the right to call in such a judge on its own initiative, after hearing the parties, if it deems it appropriate (also UPC_CFI_2/2023 (LK München), UPC_CFI_214/2023 (LK Helsinki)).”

Court of First Instance - Munich (DE) Local Division, Order dated 19/09/2023, NanoString Technologies Inc., NanoStrings Technologies Germany GmbH, NanoString Technologies Netherlands B.V. v. 10x Genomics, Inc., President and Fellows of Harvard College (Case number UPC_CFI_2/2023, ACT_459746/2023)
Example of decision assessing the sufficient degree of certainty that the applicant is entitled to commence proceedings