UPC: Urgent or not – that is the question here

In a recently published order, the Lisbon Local Division has further clarified the requirements for granting provisional measures.

We have already reported on provisional measures before the Unified Patent Court (UPC) on various occasions (see for example here). The Court of Appeal of the UPC has also already commented on the requirements for the granting of provisional measures. However, this does not prevent the various Local Divisions of the Court of First Instance from deciding in particular on individual questions regarding the requirements for the granting of provisional measures and thus ensuring greater legal certainty.

This is also what the Lisbon Local Division did in its order dated 15 October 2024  (UPC_CFI_317/2024, ORD_52116/2024). The application for provisional measures under Article 32(1)(c) of the Agreement on a Unified Patent Court (UPCA) had been brought by Telefonaktiebolaget LM Ericsson (Ericsson), which is also the proprietor of the patent-in-suit EP 2 819 131 B1 (title: "Inductor layout for reduced VCO coupling"). The Lisbon Local Division dismissed the application for lack of urgency.

Course of proceedings and party submissions

The application for provisional measures was filed by Ericsson on 14 June 2024. It is based on an alleged infringement of the patent-in-suit through the sale of notebooks in which two specific WiFi modules are installed. The WiFi modules have been installed in the notebooks since 2019 and 2021 respectively. The plaintiff carried out test purchases of various notebooks in Portugal on 5 May 2024, 10 June 2024 and 22 July 2024. On 12 October 2023, the plaintiff had already initiated proceedings in the USA regarding the same WiFi modules. Defendant no. 1) is the holding company of the ASUS Group and as such the owner of the domains through which ASUS products can be purchased in the UPCA Contracting Member States, including Portugal. Defendant no. 2) is the logistics partner of Defendant no. 1) for the EU. Defendant no. 3) is an authorized distributor for products of Defendant no. 1), at least in Ireland and the Netherlands. The defendants, one of which is based in Ireland, were given the opportunity to respond to Ericsson's application and filed the respective brief on 31 July 2024. In said brief, they criticized the lack of (local) jurisdiction of the Lisbon Local Division. They also argued that there was no infringement of the patent-in-suit and that the patent-in-suit was not valid. Finally, the urgency required for granting provisional measures was lacking. Replic and rejoinder were exchanged by the parties. In addition, a technically qualified judge was called in at the defendant's request. On 12 September 2024, an oral hearing was held in Lisbon at the Local Division sitting with the three legally qualified judges Lopes, Granata and Rinkinen and the technically qualified judge Pascasio.

The order of the Local Division - (international) jurisdiction

First of all, the Lisbon Local Division deals with the question of whether it or the UPC as such has international jurisdiction and is also competent to hear the case.

The international jurisdiction of the UPC is governed by Art. 31 UPCA, which refers in this respect to the EU Regulation No. 1215/2012 (Brussels I Regulation) and to the Lugano Convention. The parties have not disputed the international jurisdiction of the UPC. The Local Division also considers the UPC to have international jurisdiction and refers to Art. 4 (1), 7 (2), 71, 71a and 71b Brussels I Regulation as well as Art. 32 (1) (c) and 83 (2) UPCA to justify its international jurisdiction.

The UPC's competence to hear applications for provisional measures follows from Art. 32 (1) (c) UPCA.

The (local) competence of the Local Division was disputed by the defendants. However, the Local Division assumes its local competence pursuant to Art. 33 (1) (a) UPCA. Accordingly, the Local Division in the Contracting Member State of the UPCA in whose territory the actual or threatened infringement has occurred or may occur has local competence. The defendants argue against the local competence of the Lisbon Local Division that the allegedly infringing products do not make use of all features of the claims of the patent-in-suit and that Art. 33 (1) (a) UPCA does not refer to intermediaries. According to the Local Division, however, the objection of lack of patent infringement is irrelevant for the question of (local) competence, as it is an objection to the merits of the action. In addition, Art. 33 (1) (a) UPCA is also applicable to intermediaries. Since the plaintiff had challenged a patent infringement in Portugal, among other places, the Local Division had local competence accordingly.

Requirements for granting provisional measures

At the beginning of the examination of the merits of the action, the Local Division summarizes the requirements necessary for granting provisional measures: The plaintiff must be entitled to commence actions before the UPC under Art. 47 UPCA (under Art. 47 (1) UPCA this is the case, for example, with the patent proprietor), the patent-in-suit must be valid and patent infringement must have occurred or be imminent. The UPC may order the plaintiff to submit all reasonably available evidence to satisfy itself with sufficient certainty that the aforementioned requirements are met, see Rule 211.2 of the Rules of Procedure (RoP). In addition, urgency and the weighing of interests are required for granting provisional measures, see Rules 209.1 lit. b), 211.2 and 211.3 RoP. These requirements must be met cumulatively; if one is not met, the application must be dismissed.

Furthermore, the Local Division agrees with the opinion of the Court of Appeal, according to which it is sufficient for the required degree of certainty of the court for granting provisional measures if the court considers the entitlement of the plaintiff and the validity as well as the infringement of the patent-in-suit to be more likely than unlikely. In principle, the plaintiff bears the burden of presentation and proof for the existence of the above-mentioned requirements. In inter partes injunction proceedings (written and/or oral hearing of the defendant) – as here – the burden of presentation and proof for the (lack of) validity of the patent-in-suit lies with the defendant.

Furthermore, the Local Division clarifies that it is not necessary for the UPC to comment on all requirements if one requirement is clearly not met, but that the Local/Regional Divisions are also not prevented from commenting on the (other) requirements that are not met.

Urgency

Here, too, the Local Division begins with some general remarks and the derivation of the urgency requirement, which is not expressly to be found in the UPCA. The requirement of urgency arises from the exceptional nature of actions for provisional measures, which includes a shortened procedure and is therefore characterized by a summary examination and speed (see Rule 10 RoP for the procedural stages in the main proceedings and Rule 205 RoP for the proceedings concerning provisional measures).

According to the Local Division, there is a lack of urgency if the court comes to the conclusion from an objective point of view that the plaintiff was not really interested in enforcing his rights immediately. This was the case here. The Local Division follows the defendant's reasoning, according to which the plaintiff must have been aware of the challenged WiFi modules (long) before the (first) test purchase on 5 May 2024. This follows, on the one hand, from the product launch as early as 2019 and 2021 and, on the other hand, from the initiation of proceedings in the USA concerning the same modules as early as October 2023. It can be inferred from this that the plaintiff actively observed the relevant markets, which is why it must have been aware of the product launch in 2019 and 2021. Moreover, the plaintiff had not stated when exactly it had become aware of the allegedly infringing modules, but had only referred to the date of the (first) test purchase. The plaintiff's representatives were commissioned on 15 April 2024 to examine, among other things, the WiFi modules at issue. Consequently, the Local Division finds that, due to the lack of submission of a concrete date of first knowledge of the alleged patent infringement, there is no other possibility than to consider the market launch of the modules (2019 or 2021) as the relevant date for assessing urgency. From this point in time, urgency is lacking and the action therefore had to be dismissed.

Patent infringement and validity of the patent-in-suit

Irrespective of the lack of urgency, the Local Division then goes on to explain the patent infringement and the validity of the patent-in-suit.

First of all, the Local Division deals with the validity of the patent-in-suit and comes to the conclusion that it is more likely than not that the patent-in-suit will prove to be valid in (imaginary) main proceedings. In doing so, it deals in detail with the defendant's objections to legal validity (inadmissible extension; lack of novelty and lack of inventive step) but considers each of these to be unfounded.

In the following, the Local Division states that an infringement of the patent-in-suit is more likely than not. The statements of the Local Division on the individual infringing acts are interesting and can be generalized: Accordingly, domain owners are also patent infringers insofar as patent-infringing products are offered and/or sold under the domains. Also intermediaries who fulfill tasks serving a patent infringement – here: storage of the notebooks containing the attacked WiFi modules – are also to be regarded as patent infringers, cf. also Art. 63 (1) sentence 2 UPCA.

Practical consequences of the order

In proceedings regarding provisional measures, applicants or plaintiffs are required in their own interest to inform the UPC of the date on which they first became aware of the alleged patent infringement. This time or date is the starting point for the assessment of urgency. If this date is not provided, the UPC may refuse to issue provisional measures on this basis alone if, for example, the market launch of the allegedly infringing product took place some time ago.

Defendants or respondents are well-advised in their own interest to raise all objections that speak against granting of provisional measures, even if a condition for granting such measures is (supposedly) clearly not fulfilled.