Upon submission of the Munich Regional Court (see our June 2021 article), the Court of Justice of the European Union (CJEU) has ruled on German court practice regarding preliminary injunctions in cases of patent infringement where the validity of the patent in question has not already been confirmed in opposition or nullity proceedings. While the CJEU ruling seems to favor patent proprietors, it remains to be seen whether the ruling in fact leads to a change in practice by the German courts.
CJEU on preliminary injunctions in Germany – change in court practice required?
The CJEU, in its judgment of April 28, 2022 (Case C-44/21), has ruled that a court practice denying in principle interim measures for infringement of patents in case the validity of the patent in question has not (yet) been confirmed in first instance opposition or nullity proceedings is incompatible with European law. Furthermore, national case law that is incompatible with this ruling must not be applied by the competent courts.
The Munich Regional Court was prompted to submit the matter to the CJEU upon the Munich Higher Regional Court adopting a practice already applied by other German courts handling the majority of patent infringement cases in Germany. According to this practice, preliminary injunctions in patent infringement proceedings are regularly refused by the courts if the validity of the patent in conflict has not already been challenged without success at least in first instance proceedings. This practice has led to criticism, as patent proprietors saw themselves unable to attain a preliminary injunction against an infringing party when the validity of their patent had not previously been attacked – a factor outside the proprietor’s direct control.
It is to be noted, however, that both the development and the current practice in this regard vary between different courts.
According to the case law of the Düsseldorf courts, a preliminary injunction in patent cases can only be issued if both the question of patent infringement and the validity of the right to injunctive relief can be answered clearly in favor of the proprietor.
According to this case law, a sufficiently certain legal existence of the right to injunctive relief can generally only be assumed if it has already survived opposition or nullity proceedings in the first instance (Düsseldorf Higher Regional Court, judgment of May 29, 2008 - 2 W 47/07; Düsseldorf Higher Regional Court, judgment of April 29, 2010 - 2 U 126/09).
Therefore, in order for a preliminary injunction to be issued on the basis of a patent, a positive decision on the validity of the patent must already exist. However, this requirement may be waived in exceptional cases. Such an exceptional case exists, for example, if the party accused of infringing the patent has already participated in the granting procedure with their own objections, so that the granting of the patent is factually equivalent to the decision in a two-sided opposition procedure. Another example is the case where the patent relied upon is generally recognized as eligible for protection, e.g. due to the existence of well-known licensees. If objections to the legal validity of the patent prove to be groundless even on summary examination, or if there are exceptional circumstances which make it unreasonable for the owner of the patent to wait for the outcome of the opposition or nullity proceedings, this is also considered an exceptional case (Düsseldorf Higher Regional Court, judgment of April 29, 2010 - 2 U 126/09).
The Higher Regional Court in Karlsruhe agrees with the Higher Regional Court of Düsseldorf regarding this issue, applying the same standards (cf. e.g. Karlsruhe Higher Regional Court, judgment of September 23,2015 – 6 U 52/15).
The case law of the Higher Regional Court of Munich regarding this issue has recently changed.
According to the previous practice of this court, it was not necessary for the patent to have survived first instance opposition or nullity proceedings for the issuance of a preliminary injunction in patent matters. A high probability, i.e. sufficient certainty, of legal validity of the patent was considered sufficient for granting an injunction (Munich Higher Regional Court, judgment of July 26, 2012 - 6 U 1260; Munich Higher Regional Court, judgment of May 18, 2017 - 6 U 3039/16). The court based this practice on the fact that interim legal protection arising from a granted patent would otherwise be factually excluded for a certain period of time.
In this previous practice, prospects of success of an appeal against the patent were included in the required weighing of interests. In this context, remaining doubts about the legal status of the patent usually led to the rejection of the request for an injunction. Thus, the interest of the alleged infringer in not being sued on the basis of an IP right without a certain validity in summary proceedings, which limit the possibilities for knowledge and defense, were preserved. An assessment was to be made of the prospects of success of legal validity proceedings in the specific case in dispute. (Munich Higher Regional Court, judgment of, July 26, 2012 - 6 U 1260/12).
However, this view was overturned by the higher regional court of Munich in its decision of December 12, 2019 (6 U 4009/19). In this decision, the court, in a deviation from its previous practice and following the Higher Regional Courts of Düsseldorf and Karlsruhe, assumed that the issuance of a preliminary injunction based on a patent or a utility model can only be considered if both the question of patent infringement and the validity of the right to injunctive relief can be clearly affirmed in favor of the applicant.
If there are no exceptional circumstances which sufficiently prove the validity of the injunction right (patent or utility model), it would be reasonable for the applicant to assert his claims in main proceedings and for the defendant, on the other hand, not to be exposed to the risk that the validity is assessed incorrectly by the infringement courts in infringement proceedings. The patent proprietor's interest in enforcing his property right was found to be sufficiently satisfied by the possibility of raising injunctive claims in main proceedings. This is considered to be justified by the fact that it is not the task of the infringement court to anticipate the outcome of proceedings on the validity of rights by way of a summary decision made in proceedings for interim legal protection. In this regard, it is noted that proceedings for interim relief are not geared towards a decision on the validity and proceedings on the validity usually conclude at a considerably later time.
In view of the exceptions explained above that were already applied by the courts to the general rule of “no interim measures without previous confirmation of the patent in opposition or nullity proceedings”, some courts have already hinted that they saw no need to adapt current practice, since interim measures were not denied “in principle”.
In his comment (GRUR 2021, 466) on the order for reference of the Munich Regional Court (21 O 16782/20), Dr. Thomas Kühnen, Presiding Judge at the Düsseldorf Higher Regional Court, states that in his view the principles developed by the case law of the higher courts represent a balanced approach that takes into account the interests of both sides. According to such assessment, the risk of an unjustified injunction was only accepted where necessary in view of the legal interest of the patent proprietor because his legal action could not be postponed, but the risk was avoided where no immediate intervention was required or the potential damages were so serious that they could not be reasonably accepted in an overall assessment.
It therefore remains to be seen whether the CJEU judgement will in fact lead to a change in court practice.