The ECJ On The Interpretation In Line With European Law Of The Legal Validity Of A Patent-in-suit

• Published date: 12 May 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation, Civil Law
• Law Firm: Bardehle Pagenberg
• Author: Ms Nadine Westermeyer, Stefan Lieck and Sebastian Horlemann

The ECJ on the interpretation in line with European Law of the legal validity of a patent-in-suit - a game changer in proceedings for a preliminary injunction due to patent infringement in Germany? (European Court of Justice, judgment dated April 28, 2022 - case no. C-44/21 - Phoenix Contact)

A general refusal of preliminary injunctions in patent litigation without a prior confirmation of the patentability of the patent-in-suit in first-instance validity proceedings at the least violates European law.

This is because:

'Article 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.'

Any existing (and even established) national case law is to be amended accordingly.

1. Facts and circumstances of the case

In Germany, the issuance of a preliminary injunction for patent infringement requires that a claim for injunction as well as grounds for the injunction exist and the weighing of interests shows that the interests of the applicant prevail. A claim for injunction exists if the patent is infringed. There are grounds for the injunction if the legal validity of the patent-in-suit is sufficiently certain, and the applicant keeps the 'urgency deadline', i.e., initiates court proceedings swiftly within a few weeks after obtaining knowledge of all essential circumstances of the patent infringement.

The question of which criteria must be fulfilled so that the legal validity of a patent-in-suit is to be deemed sufficiently certain is assessed differently in the case law of the German courts of lower instance. The Courts of Appeal of Duesseldorf and Karlsruhe generally assume a sufficiently certain legal validity of the patent-in-suit only if the patent-in-suit has survived first-instance two-party validity proceedings, i.e., opposition or invalidity proceedings, at the least (see Duesseldorf Court of Appeal , InstGE 9, 140/146 - Olanzapin, InstGE 12, 114 - Harnkatheterset; Karlsruhe Court of Appeal, judgment dated September 23, 2015, 6 U 52/15, GRUR-RR 2015, 509 - Ausrüstungssatz). However, various exceptions to this principle are established. In case of one of these exceptions, a preliminary injunction can be issued based on a patent even without a prior decision confirming its legal validity.

The particular reason given for this rule-exception-ratio is that about 70% of all patents are fully - or at least partly - revoked or declared invalid in validity proceedings , i.e., do not survive as granted, and that the legal validity of a patent-in-suit, which is often complex, can only insufficiently be assessed in summary proceedings by infringement courts which do not sit with any technical judges.

Up until 2019, the Munich Court of Appeal deviated from the above case law and held a legal opinion in line with the case law of the Court of Appeal of Hamburg: It did not assume the principle that a patent-in-suit must already have survived validity proceedings. Consequently, according to said case law, preliminary injunctions were particularly also issued for patents-in-suit which were 'fresh off the press' if, based...