LD Düsseldorf, September 6, 2024, order of the court of first instance, UPC_CFI_165/2024 and UPC_CFI_166/2024

Art. 25 UPCA (right to prevent the direct use of the invention) constitutes uniform substantive law and Art. 62 (1) UPCA (provisional and protective measures) uniform procedural law, which takes precedence over national patent laws so that these provisions need to be interpreted independently by the Court.

A situation of imminent infringement may be characterised by certain circumstances which suggest that the infringement has not yet occurred, but that the potential infringer has already set the stage for it to occur. The infringement is only a matter of starting the action and the preparations for it have been fully completed. These circumstances must be assessed on a case by case basis and the burden of presentation and proof in this regard lies with the Applicants. In the present case an imminent infringement requires that all pre-launch preparations must have been completed in such a way that an offer can be made at any time. Rather than looking at individual events in isolation, it is necessary to make an overall assessment of the activities.

The LD Düsseldorf agrees with the LD Paris (UPC_CFI_495/2023) as to when and under which circumstances Art. 33 (1) (b) UPCA is applicable. The requirement of “commercial relationship” between the Defendants implies a “certain quality and intensity”, but shall not be interpreted too narrow. The fact of belonging to the same group (legal entities) and having related commercial activities aimed at the same purpose (such as R&D, manufacturing, sale and distribution of the same products) is sufficient to be considered as “a commercial relationship”. Thus, the competence of the LD Düsseldorf is given if one of the Defendants serves as a hub for sales and marketing in Europe and supplies its products to the other Defendants, including one Defendant which has its residence in Germany where the LD in Düsseldorf is located.

A further Defendant of the group of the Defendants sued separately (UPC_CFI_166/2024) and Celltrion Healthcare B.V. had initiated already proceedings on the merits before the District Court of The Hague in October 2023, seeking revocation of the Dutch part of the patent in suit and a declaration of non-infringement (“Dutch proceedings”) and therefore raised a lis pendens objection.

The Court refused this objection and decided to maintain jurisdiction to rule on the application for provisional measures and not to stay the proceedings in favour of the Dutch proceedings.

Art. 29 Brussels Ibis is not applicable as (i) not the same parties are involved and (ii) the two cases do not have the same cause of action. Re. (i) the Court held that the identity of Celltrion Healthcare B.V. and Defendant 7) was not proven until the end of the oral hearing in the present case. Re. (ii) the Court held that this is obvious for the injunction in respect of all Contracting Member States of the UPCA except the Netherlands because the declaration of non-infringement in the Dutch proceedings only effects the Netherlands. Moreover, the Court pointed out that this it also is true for the injunction in respect of the Netherlands as the Dutch proceedings concern main proceedings, whereas the present case concerns provisional measures which are not covered by Art. 29 Brussels Ibis due to their limitation in time as illustrated by R. 213.1 RoP.

Art. 31 (1) Brussels Ibis does not apply due to a lack of the “same cause of action” as shown above.

Even if Art. 30 (1) Brussels Ibis does not require the “same cause of action”, the Court exercises has discretion to stay the proceedings or not. In the present proceedings a stay of the proceedings is incompatible with the urgent nature of provisional measures taking into account that the application is based on urgency and seeking a preliminary injunction against an imminent infringement in order to avoid irreparable harm. Thus, urgency is a compelling argument against any delay caused by a stay of proceedings.

Claim interpretation is the common basis on which both the validity issue and the infringement issue are to be decided (reference to UPC_CoA_335/2023 and UPC_CFI_7/2023). The interpretation of the patent is not only mandatory for the Court, but also for the parties, who must submit their views on their proposed interpretation in their briefs.

It is the task of the parties to present their technical arguments to the Court in a concentrated and comprehensible form. In particular, the technical argumentation must be focused and precise for the Court in order to be able to comply with the ambitious time limits set by the law. This is even more true in PI proceedings.

Merely referring to a party’s expert opinion or merely copying sections of the party’s expert opinion into the party’s technical briefs is not considered concentrated and comprehensible.

The Court held that the further Defendant sued in parallel infringement proceedings (UPC_CFI_166/2024 ) and Defendants 1) to 7) are cumulatively liable because they acted in a close and interdependent commercial relationship based on their structure as a large group of companies. Defendant of UPC_CFI_166/2024 supplies the products to Defendant 1) who distributes the products to other local subsidiaries where they will be commercialized in the single national territories of the UPCA Contracting Member States. Thus, Defendant of UPC_CFI_166/2024 and Defendant 1) are the “spiders in the web” in providing biosimilar products for the European market, the latter being the “gatekeeper” for Europe. Thus, the actions of the Defendants are attributed to the Defendant of UPC_CFI_166/2024 and vice a versa.

Rule R. 295 RoP (stay of proceedings) refers to actions and is therefore not applicable to applications for provisional measures.

R. 158 RoP requires a substantiated presentation of facts concerning the financial situation of the other party which give rise to a legitimate concern about a risk of insolvency or indications of a lack of assets (reference to LD Munich, UPC_CFI 514/2024 and RD Nordic-Baltic, UPC_CFI_380/2023).

The mere fact that the enforcement of a cost claim outside the territory of the UPC is practically burdensome is not sufficient.

The Court held that Defendants can claim interim costs.

If, as in the given case, the application for provisional measures is unsuccessful, the applicant is likely to refrain from filing an action on the merits (cf. R. 213.1 RoP). Thus, there is no decision on the merits in the sense of R. 118.5 RoP and therefore no possibility to decide on the costs. Thus, this is likely to be an unintended gap that opens the way to the corresponding applicability of R. 118.5 RoP in this scenario.

If there are no proceedings on the merits, the Defendant’s costs of proceedings may be claimed as part of the damages to be reimbursed pursuant to R. 213.2 RoP.