Sunday, February 14, 2021

Annotated translation of referral to ECJ of availability of preliminary injunctions over battle-untested patents: Munich I Regional Court

Earlier this week I translated what, if affirmed (as I hope), will be a landmark antitrust ruling by the Munich I Regional Court against Google in the health information context. Last month I had already reported on another key decision from Munich: a preliminary reference to the European Court of Justice of a question concerning the availability of preliminary injunctions over battle-untested patents. Note that the reasons for the two occurrences of the word "preliminary" in the previous sentence are independent of each other: the term "preliminary reference" describes the presentation of questions of EU law to the bloc's top court by a national court regardless of whether such reference occurs in connection with preliminary injunctions or (which is almost always the case) in a full-blown proceeding just prior to final judgment. "Preliminary" means that the ECJ answers the question, and then the national court resumes its proceedings and enters its judgment, as opposed to a traditional appeal from a final judgment.

When I saw the question referred to the ECJ, I already noticed that it was very well written, and I wish the Dusseldorf Regional Court had done a similarly good job in that Nokia v. Daimler case (I agree with the Dusseldorf court's intent, but in terms of craftsmanship, the Munich court's work is--though I oppose its objective and had serious issues with that Munich panel last year over what I considered to be insufficient coronavirus prevention measures--hands-down superior by virtue of its clarity, structure, and focus).

The companies and organizations advocating proportionality in patent remedies should think hard about whether this referral to Luxembourg presents an opportunity to raise proportionality issues under the EU directive in question. There may not be another opportunity to challenge Germany's near-automatic patent injunction regime before the top EU court for years, given that I don't expect any regional or higher regional court to refer a proportionality-centric question to the ECJ. A court of final appeal would theoretically have to refer questions of EU law to the ECJ, but practically there are reasons why that could also take many years or never happen at all, the most important one of which is that German patent cases are typically settled early on.

As almost always, my translations are not optimized for elegance as I take hardly any liberties, striving to stay true to the original. And where it appears appropriate, I add explanations in [brackets], especially where I draw comparisons to U.S. law.


Munich I Regional Court

Case no. 21 O 16782/20

In the case brought by

[anonymized except for the legal form]

- Movant - [as I explained in the Google antitrust context, preliminary injunction proceedings in Germany are separate cases, so Movant in this case also means Plaintiff]

Counsel to Movant: [anonymized]


1) [anonymized except for the legal form]

- Non-Movant - [for the reason stated above, this also means Defendant]

2) [anonymized except for the legal form; both non-movants are from the same corporate group]

- Non-Movant -

Counsel to Non-Movants: [anonymized]

over a request for a preliminary injunction,

Presiding Regional Judge Pichlmaier, Regional Judge Dr. Schacht, M.A., and Regional Judge Dr. Fricke of the Munich I Regional Court - 21st Civil Chamber - enter the following


Preliminary reference is made of the following question to the Court of Justice of the European Union in accordance with Art. 267 TFEU, for the purpose of interpreting Art. 9(1) of Directive 2004/48/EC of the European Parliament and of the Council of April 29, 2004, on the enforcement of intellectual property rights:

Is it compliant with Article 9(1) of Directive 2004/48/EC that certain higher regional courts, whose decisions cannot be appealed further in preliminary injunction proceedings, generally deny injunctive relief over patent infringement if the patent-in-suit has not survived an opposition or nullity proceeding in the first instance?

[Opposition proceedings take place before the European Patent Office or a national patent office, such as the German Patent and Trademark Office, if a party opposes the grant of a patent within a nine-month window of publication of the grant. Nullity proceedings can be brought before the Federal Patent Court of Germany with no such time limit. Regional courts hear patent infringement cases in the first instance, but defendants do not have a full invalidity defense: instead, under Germany's infamous "bifurcation" system, the regional courts assess the likelihood of invalidity, and if their standard is met, they order a stay pending the parallel validity determination. In that context, regional courts all too often decline to analyze certain invalidity contentions, particularly if a defendant argues that the claimed invention lacks an inventive step.]


Movant has requested this Court to enter a preliminary injunction that would prohibit Non-Movants from offering or distributing connectors that practice the teachings of European patent EP[number redacted] that was issued to Movant.

1. Legal framework [in fact, this section discusses purely the statutory framework, not yet the appellate case law]

[European] Union law

The following passages are excerpts from the recitals of Directive 2004/48/EC:

(1) The achievement of the Internal Market entails [...] [same omission as in original] creating an environment conducive to innovation and investment. In this context, the protection of intellectual property is an essential element for the success of the Internal Market. The protection of intellectual property is important not only for promoting innovation and creativity, but also for developing employment and improving competitiveness.

[Note that older EU laws refer to the Internal Market; at this point, it is called the Single Market.]

(2) The protection of intellectual property should allow the inventor or creator to derive a legitimate profit from his invention or creation. It should also allow the widest possible dissemination of works, ideas and new know-how. [...] [same omission as in original]

(3) However, without effective means of enforcing intellectual property rights, innovation and creativity are discouraged and investment diminished. It is therefore necessary to ensure that the substantive law on intellectual property, which is nowadays largely part of the acquis communautaire, is applied effectively in the Community. In this respect, the means of enforcing intellectual property rights are of paramount importance for the success of the Internal Market.

(22) It is also essential to provide for provisional measures for the immediate termination of infringements, without awaiting a decision on the substance of the case, while observing the rights of the defence, ensuring the proportionality of the provisional measures as appropriate to the characteristics of the case in question and providing the guarantees needed to cover the costs and the injury caused to the defendant by an unjustified request. Such measures are particularly justified where any delay would cause irreparable harm to the holder of an intellectual property right.

(24) Depending on the particular case, and if justified by the circumstances, the measures, procedures and remedies to be provided for should include prohibitory measures aimed at preventing further infringements of intellectual property rights. [...] [same omission as in original]

Directive 2004/48/EC sets out:

Article 9

Provisional and precautionary measures

1. Member States shall ensure that the judicial authorities may, at the request of the applicant:

(a) issue against the alleged infringer an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid, on a provisional basis and subject, where appropriate, to a recurring penalty payment where provided for by national law, the continuation of the alleged infringements of that right, or to make such continuation subject to the lodging of guarantees intended to ensure the compensation of the rightholder; [...] [same omission as in original]

[The term "interlocutory injunction" that is found in the EU's Enforcement Directive would make more sense with respect to preliminary injunctions in U.S. proceedings, which are entered as an interim decision the very same case in which a final judgment will come down later. In Germany, it is theoretically possible to seek only a prelimininary injunction without ever litigating the same matter in a main proceeding (though either party is free to seek clarification in a main proceeding, and it would be disadvantageous with a view to a subsequent award of fees if a prevailing movant obtained a PI but didn't have it affirmed in a main proceeding.]

National law

Art. 58 of the German Patent Act (PatG) states in its current form:

The grant of the patent will be published in the patent journal. The patent document is published simultaneously. As per publication in the patent journal, the patent legally takes effect.

Art. 139 of the [German] Patent Act states in its current form:

(1) Against him who practices a patented invention in violation of articles 9 through 13, the holder of the infringed patent is entitled to an injunction if there is a risk of a recurring violation. This claim is also available if a first-time infringement is imminent.

Art. 935 of the [German] Code of Civil Procedure (ZPO) states in its current form:

Preliminary injunctions concerning the disputed matter are available when there is concern that an alteration of the status quo thwarts or substantially complicates the enforcement of a party's right[s].

Art. 940 of the Code of Civil Procedure states in its current form:

Preliminary injunctions are also available for the purpose of adjudicating a preliminary status quo with respect to a disputed matter, provided that such adjudication, particularly in the event of enduring legal relationships, appears necessary in order to avert substantial harm, or to prevent violent acts that threaten to be committed, or for other reasons.

2. Circumstances of the originating case [i.e., the case before a national court from which a preliminary reference to the top EU court is made]

a. Movant requested on December 14, 2020, to bar Non-Movants by means of a preliminary injunction from the infringement of European Patent EP[number redacted] (hereinafter referred to as the "Patent-in-Suit"). [Literally, it is called the "Injunction Patent" in the original, as--I'll repeat myself--a preliminary injunction proceeding in Germany is not a main proceeding; however, I chose the term that makes the translation as a whole easier to read, especially for the U.S.-based majority of my readers.]

The patent application from which the Patent-in-Suit was granted is dated March 5, 2013. In a letter dated May 8, 2020, counsel to Non-Movants, on behalf of the second Non-Movant, submitted to the patent examiner reasons for which the patent should not be granted. On November 26, 2020, the patent finally issued and the publication of its grant was scheduled for December 23, 2020. On January 15, 2021, the second Non-Movant filed with the European Patent Office an opposition to the grant of the Patent-in-Suit. This referring Court, based on Movant's pleadings, deems the enforceable patent to be infringed by certain products offered by Non-Movants. This referring Court deems the validity of the patent, starting from its examination by the European Patent Office as well as taking into consideration Non-Movants' pleadings with in their opposition filing [with the EPO] of January 15, 2021, not to be in jeopardy.

b. This Court considers itself to be prevented from the issuance of the requested preliminary injunction solely by the jurisprudence of the Munich Higher Regional Court, which makes the final decision. [Footnote 1 then explains: "Under German law, there are no appeals in preliminary-injunction proceedings from the second instance, the higher regional court; the Federal Court of Justice does not hear preliminary injunction appeals."]

According to the case law of the Munich Higher REgional Court it does not suffice for the grant of emergency relief in the event of a patent infringement that the asserted patent was granted by its issuing authority--here, the European Patent Office--after careful examination and that the question of validity undergoes a judicial assessment even in connection with a decision on a motion for a preliminary injunction. Instead, the Munich Higher Regional Court makes it a requirement that, beyond the qualified examination of patentability by the patent office at the prosecution stage, there must be a decision by the European Patent Office (EPO) in an opposition or appellate proceeding or by the Federal Patent Courtin a nullity proceeding, which decision must affirm the validity of the asserted patent. Therefore, the examination underlying the issuance of the patent should not be sufficient for the presumption of validity of a patent; instead, the validity of the examined and issued patent should have been assessed one more time by the issuing authority or, respectively, the Federal Patent Court.

The pertinent judgment by the Munich Higher Regional Court of December 12, 2019 (appellate case no. 6 U 4009/19; published in GRUR 2020, 385) contains the following passage:

"In accordance with common opinion [meaning jurisprudence and potentially also including academic papers] the grant of a preliminary injunction in patent infringement proceedings is an option only if both the question of infringement as well as the validity of the asserted intellectual property right must be answered so clearly in the moving party's favor that an erroneous decision, which would have to be corrected in a [full-blown] main proceeding cannot seriously be expected. In accordance with the Dusseldorf Higher Regional Court's case law (cf. citations in its judgment of December 14, 2017, appellate case no. 2 U 18/17, juris Tz. 18, as well as Kuehnen, Patent Litigation Proceedings in Germany, 12th edition, chapter G margin no. 42) and of the Karlsruhe Higher Regional Court (GRUR-RR 2009, 442 = InstGE 11, 143; GRUR-RR 2015, 509) there can generally be a sufficiently reliable presumption of validity of the asserted patent only if the asserted patent has survived an opposition or nullity proceeding in the first instance, i.e., there already must have been a decision confirming the validity of the patent in an opposition or appellate proceeding before the European Patent Office (EPO) or in a nullity proceeding before the Federal Patent Court. [...] [same omission as in original]"

Nowhere do the pertinent German statutes presuppose a first-instance decision in a validity proceeding as a requirement for emergency relief to prohibit the infringement of a patent. This would not be reconcilable with the fact that the legal force of a patent (such as its enforceability in court) take effect upon publication of its grant (Art. 58(1) PatG; Art. 97(3) EPC)--as opposed to entering into force only at a later point (first-instance decision in an opposition or nullity proceeding). German statutory law is therefore, in this referring Court's opinion, entirely consistent with Directive 2004/48/EC. However, not only do national laws have to be in conformity with [European] Union law, but the same requirement also obligates national courts to make decision or, respectively, interpret national laws in a form that is consistent with the objectives of a[n EU] directive; where that is not the case, jurisprudence needs to alter course (see, European Court of Justice (Grand Chamber), decision of April 17, 2018--C-414/165 (Vera Egenberger / Evangelisches Werk für Diakonie und Entwicklung eV).

[The previous sentence additionally--and particularly forcefully--opens the door to raising proportionality issues under the EU's Enforcement Directive, as the point one could and should raise here is that the injunction statute of German patent law, Art. 139 PatG, also needs to be interpreted in a manner consistent with the Enforcement Directive's proportionality requirement, which German courts clearly refuse to do.]

The [aformentioned higher regional courts'] case law derives the requirement of a first-instance decision in a validity proceeding, by way of interpretation, from Art. 940 Code of Civil Procedure; urgency (essential within the meaning of Recital 22 of Directive 2004/48/EC) to grant a preliminary injunction should only be presumed if the validity of the asserted patent has been validated by a first-instance opposition or nullity proceeding. However, in the opinion of this referring Court, such construction is irreconcilable with Directive 2004/48/EC and, therefore, contravenes EU law:

Art. 9(1) of the Enforcement Directive seeks to ensure that provisional measures can be ordered against a patent infringer in order to bar continued infringement. But the [appellate] case law this order is challenging by means of a preliminary reference does not enable such measures, as a just-granted patent--as here--cannot yet have undergone a validity proceeding (opposition or nullity proceedings can occur only post-grant). Even many of the patents that had been granted a long time ago have frequently not yet undergone such a validity proceeding by the time emergency relief is sought; naturally, the patentee cannot even influence in any way whether a patent is challenged post-grant by means of an opposition or a nullity complaint. A provisional measure is then, even in the event of an acute infringement issue, generally available only after a validity proceeding (to be initiated by a third party) has been completed in the first instance, which can take many months or even years. During all of this time, continued infringement would have to be accepted under the [appellate] case law challenged by means of this reference, even though a patent--unlike other intellectual property rights--is under the law subjected to a thorough and qualified examination before it is issued and can be legally enforced. [Footnote 2 then explains: "It is noted in this context that this referring Court, too, subjects a patent to a summary assessment of validity in the process of deciding on a motion for a preliminary injunction; if the non-moving party pleads substantial reasons for doubt in its validity, a preliminary injunction does not issue."]

The fact that the challenged [appellate] case law allows exceptions from the principle of having completed in the first instance an adversarial validity proceeding does not change this referring Court's view that the challenged [appellate] case law and, in particular, the interpretative approach discussed above contravene European [Union] law; an interpretative principle contrary to European [Union] law does not become compliant with European [Unio] law by granting certain exceptions and, thereby, restoring, at best, partial compliance with European [Union] law.

What the [appellate] case law (Munich Higher Regional Court, GRUR 2020, 385) contemplates is that the grant of a preliminary injunction without a first-instance decision in a validity proceeding is an option if

  • ["]the non-moving party already participated in the patent examination procedure with its own contentions, effectively converting prosecution into an inter partes proceeding, i.e., if the contentions presented have already been examined by a qualified examiner;

  • the asserted patent is generally deemed to be valid;

  • the invalidity contentions brought against the asserted patent prove untenable even on the basis of a summary determination; or

  • egregious circumstances, such as market dynamics, exceptionally make it unacceptable for the moving party to await the outcome of an opposition or nullity proceeding."

But in the present case, none of the exceptions applies, as the Munich Higher Regional Court applies them so restrictively that in practice--such as in this case--they are of purely theoretical relevance. While the second Non-Movant participated in the examination of the asserted patent with its own contentions, the Munich Higher Regional Court's case law (see its order of November 26, 2020; appellate case no. 6 W 1146/0; apparently not published yet) requires that the contentions presented in the examination proceeding are identical to those presented later at the preliminary-injunction stage. If a non-moving party--as in this case--also presents other contentions at the preliminary-injunction stage than those presented during examination, validity is deemed to be uncertain. The other exceptions listed above do not apply here either.

Therefore, this referring Court presently feels forced--contrary to its own understanding of Art. 9(1) of Directive 2004/48/EC--to deny emergency relief in this present case as the Patent-in-Suit has not yet survived an adversarial validity proceeding and none of the exceptions [appellate] case law allows from this principal requirement would apply.

With the following question, this referring Court requests an interpretation of Art. 9(1)(a) of Directive 2004/48/EC, particularly of the following passage:

"may, at the request of the applicant [...] issue [...] an interlocutory injunction intended to prevent any imminent infringement of an intellectual property right, or to forbid {...] the continuation of the alleged infringements of that right"

This step is taken as this referring Court concludes from the literal meaning of the statute that the possibility of provisional measures is not ensured under national law if such injunctions are denied because no first-instance opposition or nullity proceeding has taken place.


Is it compliant with Article 9(1) of Directive 2004/48/EC that certain higher regional courts, whose decisions cannot be appealed further in preliminary injunction proceedings, generally deny injunctive relief over patent infringement if the patent-in-suit has not survived an opposition or nullity proceeding in the first instance?

[Judges' signatures]

Share with other professionals via LinkedIn: