LD Munich, August 27, 2024, order on provisional measures, UPC_CFI_74/2024

• In certain cases, there could be a direct infringement of a device claim if the patent infringer appropriates the actions of its customer in the sense of an “extended workbench” (in German: “verlängerte Werkbank”) and it would be unreasonable to hold the infringer liable only for indirect patent infringement.
• Due to the risk that the boundaries between the legal consequences of direct and indirect infringement are blurred, direct infringement of a device claim can only be assumed if a specifically outlined completion of the patent-compliant device can be expected with “certainty”.
• This is the case, for example, if a kit for assembly into a complete device is supplied by the customer including assembly instructions and the complete device does not function if it is assembled in a different way.
• However, if it is possible that the customer produces a patent-compliant overall device, but at the same time there is a large number of deviating programming options and possibilities for assembling the hardware components, the necessary “certainty” is lacking.

For the decision between an absolut ban (unrestricted injunction) and a relativ ban (restricted injunction) in case of indirect infringement, it must be considered whether the risk of direct patent infringement by the customers of the indirect patent
infringer can be sufficiently averted by a relative ban, for example, on the basis of warning notice, and whether and with what effort it appears possible to redesign the product in such a way that it is no longer suitable for use according to the patent.

In proceedings for provisional measures, it is not possible to fully examine all arguments raised against the validity of the patent . Rather, the number of arguments raised against the validity must generally be reduced to the three best arguments from the perspective of the opponent.

LD Munich confirms its case lase regarding the urgency period of two months (contrary to LD Düsseldorf with the urgency period of one month).

• LD Munich decided that the enforcement security is necessary as the applicant is based in the US and , the defendant argued that proceedings for the recognition and enforcement of a foreign damages title in the US would result in considerable legal costs which, even if successful, would not have to be reimbursed under applicable US law.
• Enforcement security is allowed only by means of a deposit, R. 211.5 RoP. A bank guarantee is not allowed to avoid the discussion of which bank is suitable as guarantor and which guarantee conditions appear to be sufficient to fulfill the purpose of the guarantee.

There is generally no reason for a basic cost decision in the proceedings for provisional measures, if the proceedings for provisional measures are followed by proceedings on the merits.