1. Key takeaways
No uniform urgency period.
The urgency period is to be measured from the date on which the applicant is or should have been aware of the infringement. Whether a delay is unreasonable depends on the circumstances of the individual case. There is no fixed deadline by which the applicant must submit its application for provisional measures. The question is always whether the applicant's con-duct as a whole justifies the conclusion that the enforcement of its rights is not urgent.
Tailoring of injunction in view of potential considerable damage for a customer and ultimately the defendants through recourse claims.
The Court ordered a preliminary injunction but, subject to a security payment, limited it with regard to supplies within the framework and the scope of the existing delivery obligations for the manufacturing of specific product lines of a particular customer of the defendants.
The Court considered:
The applicant's submissions are sufficient to justify the need, in principle, to order provisional measures. The parties are direct competitors and it is difficult to switch from one solution to another in the relevant field of practice, both, in terms of technical implementation and in terms of the necessary approval procedures, including homologation. Once a car manufacturer has decided in favour of the defendants, the applicant's market is initially blocked in this respect.
On the other hand, the defendants have sufficiently explained and also substantiated by means of corresponding calculations that a partial production stop, which is at least imminent, may lead to considerable damage for its customer BMW and ultimately also for the defendants through recourse claims.
Active sales support suffices as infringing action.
In a constellation in which the defendants act in a close and interdependent relationship due to their structure as a large group, a defendant can be held responsible for the infringement of a patent if it actively supports the offer and distribution of the challenged embodiments even if the defendant itself has no direct sales and marketing activity.
Strong presumption for material proprietorship based on registration.
In case of European Patents, the material proprietor is deemed to be the patent proprietor for the purposes of proceedings before the UPC. The burden of presentation and proof is on the applicant to show that its entitlement is more likely than not. However, if the papplicant is registered in the European Patent Register or in the national register(s), it may initially rely on a rebuttable presumption in favour of its proprietorship This rebuttable presumption attached to the registered patent is a strong presumption which can only be rebutted in PI proceedings if the title is manifestly erroneous.
No entitlement objection without entitlement action before national courts.
If the defendant claims that the applicant is not acting in good faith because the applicant has unlawfully appropriated the patent in suit to its detriment, this cannot be taken into account in favour of the defendant in the weighing of interests if the defendant has failed to bring an entitlement action in due time before the national courts.
This standard is also to be observed with regard to a claim of invalidity for lack of entitlement.
Independent validity assessment.
A sufficient degree of certainty regarding the validity of the patent in suit is lacking if the Court considers it on the balance of probabilities to be more likely than not that the patent is invalid. The assessment of these probabilities is based on an examination of how the Court would probably decide about the revocation of the patent in the event of a counterclaim on the merits. Decisions of other European Courts or decisions of the EPO concerning the same patent do not bind the Court but may provide helpful indications which the Court may take into account.
General revocation rates not relevant for validity assessment.
In answering the question of whether the patent in suit is more likely to be invalid than not, no conclusions can be drawn from the general revocation rates of patents. Only relevant is the patent in suit.
2. Division
Dusseldorf Local Division
3. UPC number
UPC_CFI_368/2024
4. Type of proceedings
Proceedings on provisional and protective measures
5. Parties
Valeo Electrification (Applicant); Magna PT B.V. & Co. KG (Defendant); Magna PT s.r.o. (Defendant), Magna International France, SARL (Defendant)
6. Patent(s)
EP 3 320 604 B1
7. Body of legislation / Rules
Rule 206 RoP, Rule 209.2 RoP, Rule 211.4 RoP, Rule 8.5 (c) RoP, Art. 62 (1) UPCA, Art. 47 (1) UPCA, Art. 138 (1) (e) EPC
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