Before proceeding to the post for today, I will note that the U.S. Supreme Court delivered two important IP-related opinions today, Amgen Inc. v. Sanofi and Andy Warhol Foundation for the Visual Arts v. Goldsmith. The first affirms a Federal Circuit decision holding that Amgen failed to enable a person of skill in the art to make and use the claimed genus of antibodies; the second affirms a Second Circuit decision holding that the purpose and character of the late Andy's Warhol unauthorized use of the plaintiff's photograph of the musician Prince did not weigh in favor of the use being a lawful fair use. Neither is about patent remedies, which is the subject of this blog, so I will leave it at that, but you can bet that I will be spending considerable time today reading through these two.
Anyway, for today's post, Stephan Neuhaus has published an article titled Die Dringlichkeit in zeitlicher Hinsicht bei der patentrechtlichen einstweiligen Verfügung: Zugleich Besprechung von LG Düsseldorf ˶Solarzelle II˝ und LG München I ˶Bortezomib II˝ (“Urgency in Relation to Timing in Preliminary Injunctions in Patent Litigation: Considering Together the Decision of the Düsseldorf Regional Court’s Decision in “Solar Cell II” and the Munich District Court I’s Decision in Bortezomib II”), 2023 GRUR-RR 200-04. Excerpts from the decisions themselves follow, at pp. 205-13.
To put the issues under discussion in context, in deciding whether to grant a preliminary injunction in a patent case, German courts consider whether the movant has shown “urgency” (Dringlichkeit); and, according to long-standing practice in both venues, typically there is no urgency if the movant, having become aware of the alleged infringement, delays filing its motion for more than one month. Also relevant here, however, is the CJEU’s April 28, 2022 decision in Phoenix Contact. As I wrote earlier this year, in a post discussing an article by Christian Heinze discussing two other decisions by the Munich and Düsseldorf courts:
. . . for a time, and subject to various exceptions, German courts generally denied requests for preliminary relief unless the patent in suit had previously withstood an opposition or validity challenge. On April 28, 2022, however, in the Phoenix Contact case, the CJEU ruled that there is no general rule precluding the entry of preliminary relief where the patent in suit has not yet survived a nullity challenge, and in the course of its decision stated that “European patents enjoy a presumption of validity from the date of publication of their grant.” . . . The author briefly notes the varying views of German commentators regarding how and to what extent Phoenix Contact changes German practice, and discusses two recent opinions that interpret the decision somewhat differently—with the Düsseldorf court stating that the CJEU didn’t mean there is a presumption (of validity) “in the legal sense,” and the Munich court adopting a sort of burden-shifting approach.
Anyway, coming back to the present matter, in the Solar Cell II case the Düsseldorf court concluded that the patent owner’s motion for a preliminary injunction was timely, even though the owner waited two years after warning the defendant of the latter's alleged infringement, given that there were several cancellation proceedings pending in the interim. (It's complicated, and I'm not going to review all the complications here.) Suffice to say that the relevant cancellation proceedings were decided in favor of the patent owner, which then filed its motion within one month. According to the court, this change in circumstances starts the running of a new one-year urgency clock.
The Munich case involved the alleged infringement of a utility model, from which a patent application had “branched off.” The EPO had indicated on April 11, 2022 that the claims of that application, which were identical to those in the utility model, would be granted. The court concluded that the owner of the utility model was aware of, and had sufficient grounds for asserting, its claim for infringement more than one month before it moved for a preliminary injunction (in June 2022). The Phoenix Contact decision, as noted above, had been rendered on April 28, and even if it took two weeks for the owner to learn of the decision (that is, by May 11), the motion for a preliminary injunction was filed more than one month after that date. (Interestingly, the court noted the possibility that a “rigid” one-month period may not be in conformity the IP Rights Enforcement Directive, but concluded that it didn’t matter on the facts here, where the owner delayed, despite having had a sufficient factual basis to proceed, in order to obtain additional legal advice, a step that could have been taken in parallel with its factual investigation.)
The author argues that the cases are consistent, and in particular that the Munich decision is consistent with the idea that the urgency clock could begin running anew upon changed circumstances, in particular a positive validity decision.
No comments:
Post a Comment