September 2023 One of the first decisions by the Unified Patent Court to issue a preliminary injunction was made on 22 June 2023, by the UPC Local Division of Düsseldorf, Germany. The injunction is worded such that it covers all UPC member states where the European patent is in force.
The application for the issue of an injunction resulted from a dispute between myStromer AG, the proprietor of European Patent No. 2546134, and RevoltZycling AG, the alleged infringer of the European patent in question. The Judge’s reasoning for issuing the preliminary injunction is straightforward, however the circumstances under which the injunction was granted are particularly interesting.
Prior to myStromer AG’s application for a preliminary injunction, RevoltZycling AG filed a protective letter outlining a number of defences. A protective letter or protective brief may be filed by the respondent at any time and typically contains evidence and arguments as to why any future application by the proprietor for provisional measures, such as preliminary injunctions, should be rejected by the UPC.
MyStromer AG then requested that their application be dealt with urgently, providing reasoning that the infringed embodiments of their European patent were due to be displayed at an upcoming trade fair. The Court accepted this reasoning and the application for a preliminary injunction was considered an urgent case under Rule 209.2 (b) of the Rules of Procedure.
The Court was quickly able to conclude, firstly, that infringement had taken place and, secondly, that the European patent was valid, since the respondent had not provided any prior art to suggest otherwise.
Once the Court had decided on the point of infringement, it was able to deal with the respondent’s defence arguments raised in the protective letter very quickly and it was able to reject them without ever hearing the respondent. This resulted in the issue of an ex parte injunction, despite the respondent’s efforts to avoid an injunction by filing a protective letter.
The three interesting factors surrounding the grant of this preliminary injunction are summarized below…
- The proprietor, myStromer AG, filed an urgent application for a preliminary injunction to be issued and the injunction was issued later that same day. This should be a warning to potential infringers that the UPC is prepared to respond to applications for preliminary injunctions extremely quickly and even on the same day in particularly urgent cases.
- The injunction was issued ex parte. Of course, it has always been at the discretion of the Judges to decide if they wish to hear the opposing party before issuing an injunction. However, this decision alerts us that, at the UPC in particular, if the proprietor has a convincing reason for the urgency of the case, the Court is likely to issue the injunction ex parte.
- This decision reminds potential infringers to consider not just the benefits but also the potential drawbacks of filing a protective letter. In this case, the respondent, RevoltZycling AG, filed a protective letter and instead of preventing the injunction it may have actually enabled the Judge to issue the injunction ex parte, with reasoning that there was no need to hear the respondent since their arguments were already set out in the protective letter. Hence, potential infringers should be aware that filing a protective letter may not always be the wisest choice.
