Preliminary injunction proceedings in the event of patent infringement and legal validity of the injunction patent according to ECJ “Phoenix Contact/Harting”

In patent cases, the issuance of an preliminary injunction (PI) is possible in principle. However, in patent infringement cases, a technical issue has to be assessed, which the court will rarely be able to do in so-called summary proceedings (here, only a preliminary and cursory examination takes place) due to its complexity.

The case law (so far) also assumes this. In principle, it only considers the issuance of a preliminary injunction if both the existence of the patent and the patent infringement are clear. I.e., an erroneous decision to be revised in any subsequent main proceedings must not be seriously to be expected. This is a prognosis decision to be made by the court.

According to previous case law, as a rule, the legal validity of the injunction patent can only be assumed to be sufficiently secure if the injunction patent has already survived opposition or nullity proceedings in the first instance. Doubts about the legal validity of the injunction patent may already exist if the patent has been challenged by an opposition or nullity action. According to case law, a decision on the validity of the patent may be dispensed with in a few special cases, e.g. in generics cases, if the defendant has already participated in the grant proceedings with his own objections, if the objections to the validity of the injunction patent prove to be groundless even on summary examination, or if the patent is about to expire.

The ECJ referral by the Regional Court of Munich I (21st Civil Chamber)

The Regional Court of Munich I (21st Civil Chamber, Case No. 21 O 16782/20) had doubts about this case law and had recently referred the question to the European Court of Justice (ECJ) as to whether this case law was compatible with Art. 9(1) of the Enforcement Directive (Directive 2004/48). It had asked, in rather general terms, whether the issuance of preliminary measures against patent infringements can in principle be refused if the patent in question has not survived at least first instance opposition or nullity proceedings.

The ECJ's response

In its response (Case No. C-44/21 – “Phoenix Contact/Harting”), the ECJ emphasized that there is a presumption of validity for European Patents (EP) applied for from the date of publication of their issuance and that they therefore enjoy the full scope of protection of the Enforcement Directive from that date. Therefore, there was no need for a decision preserving the rights in a proceeding concerning the legal validity as a prerequisite for the merits of the injunction proceedings.

However, this presumption of validity cannot be absolute. The act of issuance as such does not yet justify the issuance of an injunction. In this context, the decision of the ECJ leaves the courts of instance the necessary freedom to develop criteria according to which it can be assumed with sufficient certainty that the injunction patent is valid in preliminary injunction proceedings. Finally, a schematic approach is prohibited and all circumstances of the individual case must be duly considered. The ECJ did not specify criteria for a prognosis decision regarding the legal validity which is incumbent upon the national instance courts.

Impact of the ECJ decision

The practical impact of the ECJ's decision is not yet fully apparent. It can be assumed that the instance courts will not deviate significantly from their previous case law, but rather implement the principles of the ECJ into it. Current examples:

• The Regional Court of Munich I (7th Civil Chamber) has addressed in recent decisions (September 29, 2022, Case No. 7 O 4716/22; October 27, 2022, Case No. 7 O 10295/22 – in each case not legally binding) the new ECJ case law despite the existence of generics cases: European Patents (EP) are subject to a presumption of validity from the date of publication of their grant. The Regional Court of Munich I seems to extend this to the infringement of German parts of patents. Therefore, in the context of the examination of the reason for the injunction, it must first be assumed the legal validity. It would then be up to the defendant to contest this presumption. If substantial and the board convincing reasons for the predominantly probable destruction of the injunction patent are presented and made credible, i.e. the presumption of validity is contested, it is again incumbent on the applicant to present and make credible that the legal validity of the injunction patent is sufficiently secured despite the challenges raised against it. The Regional Court of Munich I has structured this "presumption" as a mutual transfer of the burden of presentation and proof between the applicant and the defendant. The chamber further reaffirmed the requirement for doubts about the validity of the patent that, in principle, there must be an actual challenge of the injunction patent by opposition or nullity action, or that it must at least be foreseeable beyond doubt that the validity of the injunction patent will be challenged in due course.
   
• In contrast, in a recent decision (September 22, 2022, Case No. 4 b O 54/22 – not legally binding), the Regional Court of Düsseldorf has questioned whether (1.) the grant of the injunction patent as such is associated with a presumption of the injunction patent and (2.) whether this means a presumption in the legal sense. Such a presumption was in any case rebutted by the fact that the defendant filed an opposition against the grant and raised objections against the legal validity of the injunction patent, which in addition led to the revocation of the parent patent.

It remains to be seen how the higher regional courts will comment on and position themselves in relation to the ECJ decision. In any case, the ECJ decision does not call for a complete abandonment of previous case law. However, an increasing number of applications for preliminary relief is likely. By criticizing the current case law and referring the case to the ECJ, the Regional Court of Munich I has at least indirectly encouraged patent owners to file such applications for preliminary relief in Munich.

An outlook to the UPC

The new unitary patent system with the Unified Patent Court (UPC) also provides for preliminary relief, whereby according to the Rules of Procedure of the Unified Patent Court, the court must take into account when exercising its discretion whether the patent was maintained in opposition proceedings before the EPO or was the subject of proceedings before another court. The substantive significance and form remains to be seen. The involvement of technically qualified judges can significantly improve the (technical) quality of interim decisions.