Casalonga UPC rules of procedure
Powered by Casalonga

 Case Law
Article 62: Provisional and protective measures

Court of First Instance - Munich (DE) Local Division, Order dated 27/08/2024, Sumi Agro Europe Limited, Sumi Agro Limited v. Syngenta Limited (Case/ Registry number: ACT_23636/2024, ORD_47657/2024)
Example of decision on the application of provisional measures: "1. In case of a product claim directed to a composition it is sufficient for the applicant to allege and prove that at the time of any act of use under Art. 25 UPCA by the respondent, the attacked composition had all the features of the patent claim or that there is an imminent danger that such an act of use directed to such a composition will be carried out by the respondent in the future. It is not on the applicant to plead and prove why the composition had all features of the patent claim.
2. Distributing a patent infringing composition outside the Contracting States and advertising a composition under the same name within the Contracting States, can create a risk of first infringement that patent-infringing compositions will be manufactured, advertised and distributed in the territory of the Contracting States in the future.
3. In the circumstances of this case, in order to eliminate the risk of first infringement, the respondents should have offered a cease-and-desist declaration with a penalty clause. An actus contrarius is not sufficient.
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 Appeal – Luxembourg (LU), Order dated 11/03/2024, NanoString Technologies Inc.; NanoString Technologies Germany GmbH; NanoString Technologies Netherlands B.V. / President and Fellows of Harvard College; 10x Genomics, Inc. (Case number UPC_CoA_335/2023 ORD_595990/2023 (26.02.2024) and ORD_12169/2024)
Example of decision on the standard of proof required from the applicant to establish the imminent infringement of his patent in order to benefit from provisional measures: “Since the order for provisional measures is issued by way of summary proceedings pursuant to R. 205 et seq. RoP, in which the opportunities for the parties to present facts and evidence are limited, the Court of Appeal agrees with the Court of First Instance that the standard of proof must not be set too high, in particular if delays associated with a reference to proceedings on the merits would cause irreparable harm to the proprietor of the patent as provided for in Art. 62(2) and (5), 60(5) UPCA (see CJEU, judgment of 28 April 2022, Phoenix Contact, C-44/21, EU:C:2022:309, para. 32 with reference to Art. 9(1)(a) Directive 2004/48/EC). On the other hand, it must not be set too low in order to prevent the defendant from being harmed by an order for a provisional measure that is revoked at a later date pursuant to Art. 62(5), Art. 60(8) and (9) UPCA, R. 213 RoP, Art. 62(2) UPCA, cf. also Art. 9(7) Directive 2004/48/EC.”

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 the right holder, in case of a request for provisional measures: The correct understanding of the term "sufficient certainty" must be based on the specific purpose of the conviction. In the case of Article 62(4)zand Rule 211(2) RoP, it must be taken into account in particular that it is a matter of ordering temporary provisional measures in summary proceedings (Rule 205 RoP) under Rule 213 RoP, not final orders within the meaning of Article 63 UPCA. In view of the provisional nature of the measures and the limited possibilities of discovery in summary proceedings in relation to proceedings on the merits, it follows that the standard of likelihood must be lowered. Therefore, a likelihood bordering on certainty cannot be demanded. Ultimately, for a sufficiently certain conviction of the validity of the patent at issue, a preponderant likelihood is necessary, but also sufficient. Therefore, for a sufficiently certain conviction on the part of the Court, it must be more probable that the patent is valid than not valid. “