This was reported last week by Henrik Holzapfel and Christian Dölling in the National Law Review and by Florian Mueller on FOSS Patents. The set-up for the referral is that German patent litigation is bifurcated, meaning that the district courts hear infringement trials, but validity challenges are litigated separately (either as opposition proceedings before the EPO or the Deutsches Patent- und Markenamt, or in nullity actions before the Bundespatentgericht). Validity challenges take longer than infringement trials, which gives rise to the "injunction gap"--meaning that a court may enter an injunction against an accused infringer in an infringement action, only to have it determined several months later that the patent in suit was invalid. (For an interesting take on this issue, see this recent post on IPKat.) Bifurcation also affects preliminary injunction practice, in that German courts generally do not grant preliminary injunctions in patent cases unless the patent in suit has survived a validity challenge in of these other forums (though there are exceptions, as Holzapfel and Dölling note, citing the Düsseldorf Oberlandesgericht’s 2008 decision Olanzapin, for discussion of which see my book pp. 243-44 and this 2017 blog post). Anyway, the Munich I District Court has now referred the following matter to the CJEU, as announced in a press release:
Ist es mit Artikel 9 Abs. 1 der Richtlinie 2004/48/EG vereinbar, dass im Verfahren des einstweiligen Rechtsschutzes letztinstanzlich zuständige Oberlandesgerichte den Erlass einstweiliger Maßnahmen wegen der Verletzung von Patenten grundsätzlich verweigern, wenn das Streitpatent kein erstinstanzliches Einspruchs- oder Nichtigkeitsverfahren überstanden hat?
Holzapfel and Dölling translate this as "Is it in line with Article 9(1) of Directive 2004/48/EC for the Higher Regional Courts having jurisdiction at final instance in proceedings for interim relief to refuse in principle to grant interim measures for infringement of patents if the patent in dispute has not survived opposition or nullity proceedings at first instance?" Mueller translates it as ""Is it a correct application of Art. 9 para. 1 of Directive 2004/48/EC that higher regional courts, whose decisions cannot be appealed further in preliminary injunction proceedings, generally deny injunctive relief over patent infringement if the patent-in-suit has not survived an opposition or nullity proceeding in the first instance?" By way of comparison, here is the text of article 9(1) of the IP Enforcement Directive:
1. Member States shall ensure that the judicial authorities may, at the request of the applicant:
(a) issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by national law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the rightholder; an interlocutory injunction may also be issued, under the same conditions, against an intermediary whose services are being used by a third party to infringe an intellectual property right; injunctions against intermediaries whose services are used by a third party to infringe a copyright or a related right are covered by Directive 2001/29/EC;
(b) order the seizure or delivery up of the goods suspected of infringing an intellectual property right so as to prevent their entry into or movement within the channels of commerce.
Anyway, the press release indicates that the referring court doesn't think that German practice is in conformity with article 9(1), because a recently-granted patent is effectively denied the possibility of preliminary injunction relief; moreover, patent owners don't have the ability to control whether their patents will be subject to a validity challenge. In addition, the release notes that patents, unlike some other forms of IP, are issued only after there has been an examination for compliance with the requirements of patentability. True, but as Mueller points out, a substantial number of these patents are invalid. Further, even in non-bifurcated systems, preliminary injunctions tend to be rare in patent infringement actions, precisely because it is difficult for a court to determine, at some an early stage, that the patentee is likely to succeed on the merits in the face of (the typically inevitable) validity challenge. (Under Federal Circuit case law, for example, a court should deny a preliminary injunction if there is a “substantial question” of validity. See Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009).)
Although I am not well-positioned to guess what the CJEU will do, I would hope that at a minimum it determines that the patentee must demonstrate a likelihood of validity, beyond the mere fact that the patent has been granted, before a court may issue a preliminary injunction. Anything short of that poses a substantial risk to competition and innovation, in my view, given the large number of patents that are, in fact, invalid. Alternatively, I don’t know that it would be wrong for the court to hold that you simply can’t get a preliminary injunction in a bifurcated system absent proof that the patent has survived a validity challenged or other exceptional circumstances: after all, having a bifurcated patent system is a choice, not an entitlement—isn’t it?
For further discussion of preliminary injunctions, see Norman V. Siebrasse et al., Injunctive Relief, in Patent Remedies and Complex Products: Toward a Global Consensus 116, 122-25 (Brad Biddle et al. eds. 2019), available at https://www.cambridge.org/core/services/aop-cambridge-core/content/view/4BF0CDC6D7FE0085E7B8DE0134C9923C/9781108426756c4_115-159.pdf/injunctive_relief.pdf. For a country-by-country analysis, see selected portions of Patent Law Injunctions (Rafal Sikorki ed. 2019).
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