ECJ on Interim Measures in Germany – Reactions in Case Law and Literature
After the Munich District Court asked for clarification, the European Court of Justice (ECJ) has commented on German court practice regarding preliminary injunctions in patent infringement cases where the validity of the patent in question has not already been confirmed in opposition or nullity proceedings. While the ECJ ruling seems to favor patent owners, it remains to be seen whether the ruling will actually lead to a change in the practice of the German courts.
The decision of the ECJ
In its judgment of April 28, 2022 (Case C-44/21), the ECJ ruled that a court practice that in principle rejects interim injunctions in patent infringement cases where the validity of the patent in question has not (yet) been confirmed in first instance opposition or revocation proceedings is incompatible with European law. Furthermore, national case law that is incompatible with this judgment may not be applied by the competent courts.
The reason for the Munich Regional Court to ask the ECJ for a decision was the adoption by the Munich Higher Regional Court of a practice already applied by other courts in a high number of patent cases. According to this practice, preliminary injunctions in patent infringement proceedings are regularly rejected by the courts if the validity of the granted patent has not already been unsuccessfully challenged at least in the first instance proceedings. This has led to criticism, as patent owners have found themselves unable to obtain a preliminary injunction against an infringer if the validity of their patent had not previously been challenged – a circumstance over which the patent owner has no direct influence. Both the development and the current practice in this regard vary from court to court.
Reactions to the ECJ decision
The ECJ decision has caused quite a stir and has been widely criticized.
For example, in his opinion (GRUR 2021, 466) on the order for reference of the Munich Regional Court (21 O 16782/20), the presiding judge at the Düsseldorf Higher Regional Court, Dr. Thomas Kühnen, criticized the fact that the case law in question had not been accurately reproduced by the Munich I Regional Court in the order for reference. The exceptions developed by this case law, in which a temporary injunction can be issued despite unexamined legal status, were incorrectly presented as conclusive, and the reasons which led in the case law in question to not issue a temporary injunction in patent matters simply for the sake of the granted patent were not discussed. It was also disregarded that only one out of three patents survives an attack on the validity of the patent. The technically often very complex subjects of invention are frequently not reliably verifiable for an infringement court staffed only with legal experts as to whether they are new and inventive compared to the prior art. The principle of proportionality must also be observed in Directive 2004/48/EC (Enforcement Directive), so that the interests of the alleged infringer must also be taken into account when deciding whether to issue a preliminary injunction. The approach of the LG München I, he argues, takes the grant of the patent and its technically amateurish review by the infringement court as the basis for whether or not the patent is provisionally enforced, and therefore does not make any assessment of the circumstances of the individual case.
Pichlmaier, presiding judge at LG München I (GRUR 2021, 557), responds to this comment and rejects the criticism of the incorrect presentation of the facts. The order for reference was merely based on the case law of the Munich Higher Regional Court, which had been correctly reproduced and which, for example, unlike the Düsseldorf Higher Regional Court, ¬ assumed conclusive exceptions. Moreover, the subject of the submission was the practiced principle of the OLG case law and not an individual question. The error rate of the patent offices cited by Kühnen, which often leads to a destruction of the patents in retrospect, was not mentioned in the OLG case law and thus was not taken into account in the submission. The argument of technical complexity cited by Kühnen could only apply to individual cases, but could not be used for the principle developed in the case law in question. This argument had also not been mentioned in the case law of the Munich Higher Regional Court.
The presiding judge at the BGH Deichfuß also notes (GRUR 2022, 800) that the ECJ in its decision had proceeded from a factual situation incorrectly reproduced by the LG München I in its order for reference. According to this decision, the issuance of a preliminary injunction for patent infringement “regularly” requires that the patent for the injunction has already survived opposition or nullity proceedings in the first instance; existing exceptions are not applied. This paints a false picture of German case law practice. However, it follows from the recitals and provisions of the Enforcement Directive that a schematic approach is prohibited, which results in the requirement for legislation and national courts to duly consider all objective circumstances of the individual case. Since the case law to date is completely different from that reproduced in the order for reference of the Munich Regional Court I, the decision of the ECJ does not give any reason to deviate from the previous case law practice; this is factually convincing and should be retained.
This ruling is also viewed critically in the literature. Although the decision is considered to be consistent (Keßler/Palzer in EuZW 2022, 562), it is noted, similarly to Kühnen, that German case law is significantly more differentiated than assumed by the ECJ decision. The ECJ answered a reference question that in fact did not arise in this form, which is why it is doubtful whether the court practice will change. In any case, there was no compulsion under EU law to adapt, since the Enforcement Directive did not require enforcement of intellectual property rights at any price, because all measures made possible by it were subject to proportionality. This is due to the fact that the enforcement of intellectual property rights regularly leads to collisions of conflicting fundamental rights. Doubts as to the existence of rights must therefore be taken into account in the context of the balancing of interests required by this reservation. In addition, the threat of liability under Section 945 of the German Code of Civil Procedure would sufficiently inhibit the patent proprietor’s frivolous application for preliminary injunctions.
It is further noted (Schmitz/Zilliox in GRUR-Prax 2022, 314) that although the ECJ rightly points out that a presumption of validity applies to patents as of the publication of their grant, the case law developed by the higher regional courts in practice leads to the refusal of interim relief for granted patents because the courts generally reject the urgency due to the lack of a validity procedure. With the present ruling, it is to be expected that the number of applications for injunctions based on patents without a completed validity procedure will increase. Whether the courts will be more generous in issuing preliminary injunctions in the future as a result of the ruling seems questionable, since the national judges had understandable
reasons for setting high requirements for the legal validity of the patent for invalidity. Moreover, the securities in favor of the defendant mentioned by the ECJ would practically rarely provide sufficient protection against the economic consequences of an unjustified injunction. All in all, one of the main hurdles for applicants seems to have been removed and there is now at least the possibility of obtaining a rapid injunction in preliminary injunction proceedings, even if the legal validity is uncertain.
Overall, it therefore remains to be seen whether the ECJ ruling will actually lead to a change in case law.