Wednesday, May 21, 2014

Urgency as a requirement for a preliminary injunction in Germany

I discuss the topic of preliminary injunctions in Germany at pages 243-44 of my book, and I've addressed some more recent case law and commentary on this blog here and here.  One of the requirements for obtaining a preliminary injunction is evidence of Dringlichkeit (urgency) "not only in a strictly timely sense but also in the sense of imminent harm, which, however, must be balanced against the interests of the defendant" (pp. 243-44).  My November 10, 2013 post discussed three recent cases which addressed the urgency requirement, among other matters.  In the first, the Judgment of September 20, 2012, 1-2 U 44/12, reported at GRUR-RR 241 (2013), the Düsseldorf Oberlandesgericht (appellate court) concluded that the mere fact that a generic manufacturer has been granted regulatory approval to market a generic version of a drug does not by itself prove that an infringement is imminent, particularly where the approval will not lapse even if the generic manufacturer hasn’t used it before the expiration of the patent. In the second,  the Judgment of Jan. 17, 2013, 1-2 U 87/12, reported at GRUR-RR 236 (2013), the same court asserted that the moving party need not act with the greatest possible speed, but rather that the key question is whether he has acted with such inattention and hesitancy that it be unfair to grant him preliminary relief.  In the third, the Judgment of Nov. 20, 2012, 4b O 141/12, the Düsseldorf Landesgericht (trial cour) held that the urgency requirement was not undermined by the fact that the patent owner had waited about a month after receiving an expert report on whether the defendant was infringing before filing its application for a preliminary injunction.

A recent decision that just came to my attention is the Judgment of Oct. 24, 2013, 327 O 326/13 of the Hamburg Landesgericht, reported in  GRUR-RR 137 (2014).  The moving party owns a patent on a coronary stent and sought a preliminary injunction against a firm that was advertising an allegedly infringing stent in a catalogue downloadable from its homepage.  The opposing party had exhibited a stent--to which the "CE" mark certifying that the product conforms to EU regulations had not yet been affixed--at a trade fair in Paris in May 2012 at which representatives of the moving party's parent corporation had been present.  The parent corporation also published a business report in March 2013 mentioning the opposing party's product as a competing product, and providing information on its coating, diameter, and sizing.  Nevertheless, the moving party asserted that it first had notice of the alleged infringement on May 27, 2013, when it downloaded information on the product from an advertising catalogue on the opponent's website.  It then filed its application for a preliminary injunction on July 3, 2013, which the court granted the following day.  

The judgment of October 24 lifted the injunction, however, on the ground that the moving party had not made a sufficient showing of urgency.  In this regard, the opponent offered evidence that (1) it had not only exhibited a model of the stent at the May 2012 Paris trade fair but also had included its product in the exhibit catalog (Messefolder) and in another 2012 trade show catalogue; and (2) the folder had been downloadable from the firms' homepage as early as November 1, 2012.  The moving party conceded that its parent company had perhaps become aware of a scanned copy of the opponent's product catalogue in June or July 2012, but that its patent counsel in Israel had not been able to deduce the complete structure of the product from that copy.  The court concluded that the Paris display alone was not enough to give rise to a fear of imminent infringement in Germany, particularly since the product was not yet CE-certified; and neither was the March 2013 company report, which did not permit a  conclusion as to the concrete form of the competing product.  But, the court concluded, the parent company must have had some further information between summer 2012 and March 2013, the scope and content of which the moving party had not made clear.  In particular, the March 2013 report mentioned the product as having a diameter of from 2.5 to 4 mm--the size for which the CE certificate was obtained--while the product mentioned in the trade fair catalogue mentioned a diameter of from 2-4 mm.  It was probable that the moving party either had or could have gathered enough information to proceed earlier than it did.  

The result seems consistent with the discussion of urgency in Thomas Kühnen, Patent Litigation Proceedings in Germany, paras. 1801-12 (Frank Peterreins tr., 6th ed. 2013).  Para. 1864 in particular states:
If the patentee has tangible hints for infringing acts of the defendant, he must not disregard them, but has to follow up on them.  If this is not done, so that his inactiveness appears--from an objective view--as a disinterest in enforcing his own legal positions, urgency gets lost.
For further discussion of whether a party who displays an allegedly infringing product in an exhibition catalogue at a trade fair in Germany is, or is not, making an offer to sell the product in Germany, see this post and this post from the Kluwer Patent Blog,

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