1. In September and October 2023, the Munich
Local Division of the UPC decided two applications for preliminary injunctions,
both filed by 10x Genomics, Inc. and the President and Fellows of Harvard
College against NanoString Technologies Inc., NanoString Technologies Germany
GmbH, and NanoString Technologies Netherlands B.V. The decision in the first case, UPC CFI 2/2023,
is available on the UPC’s website in the original German and in
English. I have previously noted other
commentary on the first decision, which resulted in the granting of a
preliminary injunction, here; the second decision, which denied the request for
preliminary relief, has been noted here.
Matthias
Leistner has now published an article titled Einstweilige Unterlassungsverfügung
des EPG wegen patentverletzung: Die
Lokalkammer München bohrt dicke Bretter (“Preliminary Injunctions in the
UPC against Patent Infringement: The Munich
Local Division Tackles Some Hard Problems”), GRUR 22/2023, 1578-86. (The idiom “bohrt dicke Bretter” literally
means “drills thick boards.”) Here is
the abstract, in my translation from the German:
The first decision on the merits of
the Munich Local Division of the UPC touches on numerous essential procedural
and substantive questions: the wording of
the request and its relationship with the patent claims and the inquiry into
validity; orders concerning validity in expedited proceedings and relatedly the
burdens of pleading and proof; the need for legal protection and urgency;
objections and proportionality—just to state the most important. The Local Division is off to a good
start. In the following, the decision is
analyzed for purposes of practice and discussed.
Dr.
Leistner compares the decision to Hermione’s handbag in Harry Potter, in terms
of the number of things that the court fit into one package. More seriously, Dr. Leistner approves of the court's adoption of the "preponderant likelihood" (überwiegende Wahrscheinlichkeit) test for evaluating validity, as opposed to something more stringent, in view of the fact (also noted by the commentator below) that the UPC can call upon the expertise of technically qualified judges--though he also notes that in addition the UPC (correctly) considers the probability of infringement and validity as having some relevance to the overall balancing of the interests of the parties. He also expresses concern that, if the defendant is excluded from the market on the basis of a patent that is subsequently invalidated and, under the CJEU's decision in Bayer v. Richter, is denied compensation ex post, the defendant's harm may turn out to be (unnecessarily) irreparable. (It is to be hoped that the CJEU's somewhat surprising partial about-face in Mylan v. Gilead (see here) may help to alleviate this concern.) Finally, the author argues that, although the court rejected the defendant's arguments that granting the preliminary injunction would be disproportionate, the fact that it gave careful consideration to those arguments may mean that in other (albeit uncommon) cases, on other specific facts, the facts that the accused product is a "complex" product or that the plaintiff is an NPE, could be relevant.
2.
Tilmann Müller-Stoy has published an article titled Prüfungsmaßstab für den
Rechtsbestand bei einstweiligen Anordnungen vor dem Einheitlichen Patentgericht,
(“Standards for Evaluating Validity in regard to Provisional Orders before the
UPC”), Mitteilungen der deutschen Patentanwälte 11/2023, 486-89. Here is the abstract, again in my
translation:
The UPC finally commenced
operations on June 1, 2023. Among the
first proceedings lodged were related motions requesting provisional
measures. This raises the practically
significant question of what legal standard the UPC should adopt for evaluating
validity in connection with motions for preliminary relief. Above all, a new system for resolving patent
disputes needs standards that are as clear and understandable as possible. An overly flexible, necessarily vague
standard undermines predictability and does not adequately conform to these
requirements. In consideration of the
text of the provisions the UPC is to apply and especially in view of the fact,
that aside from legally qualified judges technically qualified judges have been
appointed, it should be decisive whether, after rigorous examination, validity
is more probable than invalidity.
Remaining doubts can be taken into account relative to their weight and in
combination with whatever other factors inform judicial discretion of how to
balance the relevant interests. Thus are justice and reasonableness served in the
individual case.