Local division Munich, UPC_CFI_755/2024, order of 09.12.2024
UPC_CFI_791/2024, procedural order dated 11.12.2024
The Unified Patent Court (UPC), Munich Local Division, has issued two Anti-Anti-Suit-Injunctions (AASI) within a short period of time by way of preliminary injunctions pursuant to Rule 206 et seq. of the Rules of Procedure (RoP) against measures taken by US courts.
Facts of the case:
The applicants were owners of standard-essential patents, while the defendants, as users or manufacturers, distributed products that were subject to the respective standard. A patent infringement action was already pending before the Munich Local Court. The defendants then applied to a US District Court for an injunction prohibiting the patent holders from bringing/continuing the infringement action or enforcing a judgment.
Decision:
The court enjoined the defendants from pursuing proceedings for an Anti-Enforcement Injunction (AEI) or Anti-Suit Injunction (ASI) in the U.S. or seeking similar relief that might prevent the patentees from enforcing their rights before the UPC.
Legal reasoning:
The court based its jurisdiction to issue an AASI on Article 32(1)(a) and (c) of the UPCA, which governs jurisdiction for patent infringement actions and preliminary injunctions.
It clarified that not only the use of a patent constitutes an infringement, but also any restriction of the patent holder’s property rights, for example by prohibiting the judicial enforcement of the patent.
According to the court, the requested prohibitions on litigation and enforcement before US courts violate the fundamental right to effective legal protection (Article 47(2) of the EU Charter of Fundamental Rights) and constitute an unlawful interference with the patent proprietor’s quasi-proprietary right (Article 17(2) of the EU Charter of Fundamental Rights). In addition, German law is also applicable in accordance with Article 24(1)(e) of the UPCA and thus also Article 19(4) of the Constitution.
Urgency:
The Chamber affirmed the urgency of issuing a preliminary injunction, as waiting until the conclusion of the US proceedings would be unreasonable. A self-refutation of urgency through unreasonable delay (Rule 211.4 VerfO) was denied, as there were only 20 or 29 days between knowledge and filing of the application.
Proceedings without a hearing:
The decisions were made without a prior hearing of the defendants. The reason given for this was that a hearing could lead to countermeasures, including an application for a Temporary Restraining Order in the USA, which would further accelerate the proceedings there. A hearing could have shortened or even nullified the protection sought from the UPC through an AASI.
Provision of security:
Pursuant to Rule 211.5 of the Rules of Procedure, the applicants were ordered to provide a security deposit or bank guarantee in the amount of the value in dispute of the infringement proceedings.
Classification:
With these decisions, the UPC builds on the already established case law of the Regional Court and Higher Regional Court of Munich and develops it further.
Jurisdiction is necessary to safeguard the rule of law, albeit problematic in terms of content. Both the defensive measures taken by European courts and the prohibited interventions by US courts appear to be excessive. However, the fundamental error lies in the existence of the ASI/AEI by US courts, which are contrary to international law (see ECJ, judgment of 07.09.2023, C-590/23, Charles Taylor ./. Starlight Shipping, and OLG Düsseldorf, decision of 17.06.2024, NJOZ 2024, 949).