A Recent German Case on Urgency and Preliminary Injunctions

Several of the German decisions I've blogged about over the past three years have focused on the question of whether the party moving for a preliminary injunction has acted with the requisite "urgency" (Dringlichkeit) (see here, here, here, and here).  A recent addition to the mix is the Judgment of the Karlsruhe Oberlandesgericht of Sept. 23, 2015, 6 U 52/15, reported in the December 2015 issue GRUR-RR at pp. 509-12 under the title “Voraussetzungen für eine einstweilige Verfügung in Patentsachen") (Conditions for a Preliminary Injunction in Patent Cases).  The facts, a little complicated, are as follows.  Plaintiff is the owner of European Patent 2,295,299B1 for "[a] kit for inflating and repairing inflatable articles."  A company (designated "X" in the judgment) filed a postgrant opposition, which the EPO rejected on April 30, 2014.  This decision was affirmed on appeal on July 1, 2015.  The patent owner also commenced infringement proceedings against X, prevailing before both the district court and (on November 12, 2014) the court of appeals.  It was only during this appeal that the patent owner added a claim (successfully) for infringement of EP 2,295,299B1, pursuant to article 145 of the German Patent Act (stating that "Any person who has brought an action pursuant to section 139 may bring a further action against the defendant for the same or the same kind of act by virtue of another patent only where he was, through no fault of his own, not in the position to also assert this patent in earlier proceedings").  Meanwhile, the patent owner had become aware in May 2014 that a sister company of X was distributing this same accused product in Germany, but it held off sending a warning letter until November 26, 2014, that is, shortly after the appellate court's decision in the case against X.  The sister company rejected the warning on December 5, 2014, and as a result the patent owner filed a motion for a preliminary injunction that same day and sued the sister company for infringement on January 9, 2015.  The district court granted the preliminary injunction, and the sister company/defendant appealed.

On appeal, the court affirmed, rejecting the defendant's argument that the patent owner had not acted with the requisite urgency by waiting until December 2014, seven months after learning that the defendant was selling the accused product, to move for a preliminary injunction.  The patent owner had filed its motion within a month of learning that the defendant was not planning to pull the product from the market notwithstanding the infringement judgment against its sister X.  Had it proceeded earlier, its litigation risk would have been greater, and had it sought to join the defendant in the proceeding against X in which the claim was widened to include EP 2,295,299B1 the additional time saving would have been minimal.