Key takeaways
Re urgency requirement in case of provisional measures:
– Applicant’s burden to present/prove: the gaining of knowledge of the infringing embodiment, the potential infringement, and its prompt verification.
– Defendant’s burden to present/prove: the evidence from which it can be inferred that the applicant must have had prior knowledge and from which hesitant conduct can be inferred.
The applicant generally bears the burden to present and prove the gaining of knowledge that the infringing embodiment exists, the potential infringement, and its prompt verification. The relevant period extends from the time of becoming aware of the infringing embodiment as a potentially infringing product until all facts and evidence are available that are required to substantiate the facts of infringement.
It is presumed that the applicant must have been aware of the potentially infringing product if the applicant should have been aware of the potentially infringing characteristics according to conventional understanding and the ordinary course of events. The defendants bear the burden of presenting and proving the evidence from which it can be inferred that the applicant must have had prior knowledge and from which hesitant conduct can be inferred. If such indications are substantiated by the defendants, it is then up to the applicant why it could not have been aware of them and why it acted with sufficient promptness in this regard. (mn. 100)
The court may require the applicant to satisfy the court with a sufficient degree of certainty that the applicant is entitles to commence proceedings according to Art. 47 UPCA.
Pursuant to Rule 211.2 RoP, the court may, in the course of its decision-making, request the applicant to submit all evidence at his disposal in order to satisfy itself that the applicant is entitled to initiate proceedings, that the patent in question is valid, and that his right is being infringed or is at risk of being infringed. In summary proceedings, the applicant must generally respond to such an order within a short period of time, which requires adequate preparation for the proceedings. The applicant must therefore only apply to the court if he has reliable knowledge of all the facts that make legal action in the proceedings for provisional measures appear promising, and if he can substantiate these facts. (mn. 97)
Division
Local Division Düsseldorf
UPC number
UPC_CFI_1927/2025, UPC_CFI_1928/2025
Type of proceedings
Proceedings for provisional measures
Parties
Claimant: Ottobock SE & Co. KGaA
Defendants: BrainPortfolio Inc., BrainRobotics Inc.
Patent(s)
EP 3 001 984
Body of legislation / Rules
R. 211.4, R. 209.1 lit. b) RoP
