LD Munich, 19 September 2023, decision and orders on preliminary measures, UPC_CFI_2/2023

The requirements of Rule 206 RoP only need to be formally presented. If any requirement is missing materially, this does not lead to inadmissibility of the request for provisional measures. The material assessement is governed by Rule 211.2 RoP.

The requirement of a concise description of the action which will be started before the Court, including and indication of the facts and evidence which will be relied on in support of the main proceedings on the merits of the case (Rule 206.2(e) RoP) does not apply to requests for provisional measures under Art. 62 UPCA, as in this case, the intended injunction does not differ from the final order in the main proceedings. Rule 206.2(e) RoP evidently relates to requests under Art. 60 and 61 UPCA, which can be filed for the preparation of main proceedings. Thus, Rule 206.2(e) RoP must be teleologically reduced so that it does not apply to requests under Art. 62 (1) UPCA.

Rule 211.2 RoP requires that the applicant provides reasonable evidence to satisfy the Court with suffient degree of certainty that the patent in question is valid. In provisional measure proceedings with only a summary assessment, the LD Munich considers it sufficient if the asserted patent is more likely to be valid than invalid. The high revocation rates in opposition and nullity proceedings does not increase the likelyhood of invalidity of the asserted patent, as it is necessary to assess the validity of the asserted patent as such.

Since the Respondent relies on invalidity of the asserted patent, the Respondent bears the burden of proof for the facts on which the alleged invalidity is based (Art. 54 UPCA). Art. 62 (4) UPCA and Rule 211.2 RoP do not reverse the burden of proof by stating that the Court can require the Applicant to provide evidence, as these are discretionary means for the Court. However, Rule 206.2(d) RoP requires that the Applicant includes arguments for the validity of the patent in the application for provisional measures, which includes information on pending invalidity actions against other patents from the patent family of the asserted patent.

Rule 206.2 (c) RoP requires that the application for provisional measures shall contain the reasons why provisional measures are necessary. For the determination of the required necessity, circumstances of time and materiality are relevant. The time circumstances are derived from Rule 209.2(b) RoP, according to which the “urgency” shall be taken into account, and Rule 211.4 RoP, according to which the Court shall have regard to any unreasonable delay in seeking provisional measures. The material circumstances are derived from Rule 211.3 RoP, according to which in particular the potential harm for the applicant shall be taken into account.

In the case at hand, the Court found that the filing of a request for provisional measures on June 1, 2023, based on a European Patent with Unitary Effect that was granted on May 11, 2023, fulfilled the time requirements, as the request was filed on the first possible day. The possiblity of an earlier assertion of the national parts of the European Patent in national infringement proceedings does not contradict this.

In the decision C-170/13 (Huawei ./. ZTE), the CJEU decided that the owner of a standard-essential patent (SEP), who has committed to the standard setting organization to grant anyone a license under fair and reasonable (FRAND) conditions, abuses their dominant market position if they do not provide a specific written license offer to a willing licensee. However, the LD Munich found that this case law is only applicable for SEPs for which a licensing committment has been made to the standard setting organization. This licensing committment is not present in other scenarios such as for de-facto standards. Thus, in cases without a licensing committment by the SEP owner, the licensee must provide a specific license offer under non-discriminatory conditions. The patent owner only abuses their dominant market position if they reject such an offer.