Sunday, July 9, 2023

A couple of recent discussions of preliminary injunctions in Germany and elsewhere

Last week on the Kluwer Patent Blog, several authors collaborated on a post titled Preliminary Injunctions:  A View from Young IP Law.  The post summarizes a “panel discussion on preliminary injunctions relating to patents at Young EPLaw 2023,” with a focus on the U.K., Belgium, Germany, and Italy, and “cover[s] three topics:  conditions to obtain a preliminary injunction, potential liability when enforcing that injunction, and looking ahead on preliminary injunctions, including in the UPC context.”  I commend the post to readers’ attention, and will only note here the authors’ discussion of Germany, where (as noted previously on this blog, here, here, here, and here) there remains something of a disagreement among the courts in Düsseldorf and Munich regarding whether, or the extent to which, the CJEU’s Phoenix Contact decision requires a modification of the Düsseldorf court’s “rule-exception” approach—namely, that a patent will be presumed valid only if it has survived a validity challenge, subject to various exceptions.  This is also the topic of a recent article by Nadine Westermeyer and Tilman Müller-Stoy, titled Prüfung des „hinreichend gesicherten Rechtbestands‟ des Patents im Verfügungsgefahren nach EuGH „Phoenix Contact‟—eine Renaissance? (“Examination of “sufficiently established validity” of the patent in the preliminary injunction proceeding after the CJEU’s “Phoenix Contact”—a renaissance?”, 6/2023 Mitteilungen der deutschen Patentanwälten, pp. 257-61.  The abstract, in my translation from the German, reads as follows:


In connection with the CJEU’s decision in Phoenix Contact, the validity of the patent at issue in a preliminary injunction proceeding, the requirements for establishing this, and the preexisting judicial practice of some of the Higher Regional Courts all come under discussion.  The present contribution aims for an EU-conforming of the case law on the basis of lawful, practical, and legally effective considerations.

These authors argue that Phoenix Contact imposes a rebuttable presumption of validity; and that, in view of the overarching examination for proportionality, a flexible, case-by-case approach is preferable to a rule-exception standard.

Going back to the Kluwer Patent Blog post, as noted above the authors there go on to discuss the consequences (if any) to the patentee of having obtained a preliminary injunction when the patent in suit is thereafter determined to be either noninfringing or invalid.  This too has been the subject of a still fairly recent CJEU decision (Bayer v. Richter), which I have noted here several times (see here, here, here here, here, and here), and which seems to permit EU courts to award no compensation to the wrongly-excluded defendant, at least where the patentee did not act in bad faith in obtaining the injunction.  The authors note another pending CJEU decision (Mylan) that may clarify Bayer, however, and discuss how national practice differs in the U.K. (no longer a member of the E.U., in any event), which typically requires patentees to post a cross-undertaking for damages; Germany, which typically awards compensation; and Belgium and Italy, where they often do not (though Italy appears to require compensation for wrongly-granted preliminary injunctions in trade secret cases).  I will need to delve more deeply into this, as I continue work on my book project on wrongful patent assertion.  

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