April 2022

ECJ criticises practice of German instance courts in granting preliminary injunctions in patent infringement proceedings as contrary to European law

In its judgment delivered on 28 April 2022 (C-44/21), the European Court of Justice (ECJ) has rejected the practice developed by the German district and upper district courts, according to which issuing a preliminary injunction in patent infringement cases can generally only be considered if the validity of the patent has previously been confirmed in a two-sided procedure. In its order of 19 January 2021 (21 O 16782/20), the Munich District Court had referred to the ECJ the question of whether this practice was compatible with the EU Enforcement Directive 2004/48/EC. In its order for reference, the District Court had clearly indicated that, in its view, the case law initially developed by the Düsseldorf courts and also adopted by the Munich Upper District Court at the end of 2019 was contrary to European law. In its judgment, the ECJ followed suit and rejected the previous case law, according to which strict requirements must be met in summary proceedings with regard to the legal status of patents, which are sometimes technically very complex.

The order for reference of the Munich District Court, on which the ECJ ruled on 28 April 2022, has been controversially discussed in expert circles and the ECJ’s judgment has been eagerly awaited. After the landmark judgment of the ECJ, there is now likely to be a paradigm shift in case law and a more generous handling of preliminary injunctions in patent cases. The Munich District Court, which was occasionally heavily criticised for its submission to the ECJ, has now been confirmed in its opinion by the highest court.

The background to the judgment is the case law developed years ago, initially in Düsseldorf, on the issuing of preliminary injunctions in patent infringement cases. Since the courts have little time in these summary proceedings to deal with the validity of the patent in question, which often raises complex technical issues, the practice of Düsseldorf District Court and Upper District Court to only grant preliminary injunctions if validity is sufficiently secured has become established. As a rule, this requires a decision confirming validity in a two-sided procedure (opposition or nullity proceeding). However, other circumstances with equivalent content have also been recognised, such as comprehensive licensing of the patent. Even if the grant procedure was factually conducted like a two-sided procedure due to the participation of third parties, according to this case law the validity of the patent can be considered to be secured.

For a long time, the District Court and the Upper District Court of Munich had advocated a less strict case law. However, the Munich Upper District Court deviated from this in its judgment of 12 December 2019 (6 U 4009/19) and expressly followed the Düsseldorf practice. This, in turn, prompted the Munich District Court to submit the question to the ECJ whether such a restrictive handling of preliminary injunctions in patent cases is compatible with the EU Enforcement Directive, which expressly provides that owners of intellectual property rights must be granted the possibility to enforce these rights in summary proceedings.

The case, which the Munich District Court finally referred to the ECJ, is part of an extensive dispute between the two German companies Harting Deutschland GmbH & Co KG and Phoenix Contact GmbH & Co KG. A whole series of patent infringement disputes are pending between the two companies. In the case submitted to the ECJ, Phoenix had applied for an injunction against Harting as regards a patent on a housing for a heavy-duty plug connector. However, the Munich District Court considered itself prevented from issuing the injunction because, in its view, validity was not to be regarded as “secured” within the meaning of the latest case law of the Munich Upper District Court.

In all proceedings against Phoenix, including the reference proceedings decided on 28 April 2022, Harting relies on a team of patent attorneys (Klaus Göken, Jochen Unland) and attorneys-at-law (Sönke Scheltz, Tilman Müller) from Eisenführ Speiser. Eisenführ Speiser has been maintaining close relations with Harting for years and also represents the company in trademark disputes and patent applications.

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