Ortovox wins at UPC Court of Appeal in avalanche rescue devices dispute
The UPC Court of Appeal has upheld the sales ban against Mammut's avalanche rescue devices in Austria and Germany. The applicant Ortovox is thus the first company ever to successfully enforce a PI application in both UPC instances.
26 September 2024 by Mathieu Klos
Mammut is still unable to sell its Barryvox avalanche rescue devices in Austria and Germany. The UPC Court of Appeal yesterday upheld the preliminary injunction against the Swiss company, as issued by the local division Düsseldorf in April (case ID: UPC_CoA_182/2024 and APL_21143/2024).
Towards the end of 2023, Mammut had presented its new Barryvox devices at the Munich ISPO sports trade fair. However, competitor Ortovox believed the new model infringed EP 3 466 498, which protects a method of operation and search device for avalanche victims. EP 498 is valid in nine European countries, including Austria and Germany.
The sales ban against Mammut in Germany and Austria had been in place since December. At the request of the patent holder, Düsseldorf local division had prohibited Mammut from selling a new version of its Barryvox devices via an ex-parte PI (case ID: ACT_589655/2023). Ortovox enforced the judgment directly.
No success at Court of Appeal
But Mammut was unable to put forward a defence in December’s ex-parte proceedings and thus issued a request to review the ex-parte order. In April, Mammut failed in its bid to overturn the ex-parte PI. As laid out by the UPC’s Düsseldorf local division, Mammut has also failed to gain permission to sell its products again. Mammut appealed to the Court of Appeal in Luxembourg.
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- Patricia Rombach
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- Rian Kalden
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- Ingeborg Simonsson
However, Mammut was unable to persuade the second panel of the Court of Appeal under presiding judge Rian Kalden. Other members of the panel were judges Ingeborg Simonsson and Patricia Rombach. The three legally qualified judges were assisted by the two technically qualified judges Eric Augarde and Max Tilmann.
Next battle in November
Despite yesterday’s ruling, the dispute is not over. Ortovox is seeking a permanent injunction against the competitor’s products and is also suing Mammut in a main proceeding for infringement of EP 498 at the Düsseldorf local division (case ID: ACT_2379/2024 UPC_CFI_16/2024).
The court under presiding judge Ronny Thomas has scheduled the oral hearing for 26 November 2024. Mammut has filed a counterclaim for revocation against EP 498.
As things stand at present, both parties will again rely on their regular counsel from the PI proceedings in the main proceedings.
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- Miriam Kiefer
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- Oliver Jüngst
Ortovox relies on a team from Kather Augenstein around partner Miriam Kiefer and associate Robert Knaps. Patent attorney Michael Siebel from IP firm Hofstetter Schurack provides support.
The Swiss sports outfitter Mammut relies on a Bird & Bird team around partner Oliver Jüngst and counsel Moritz Schröder, as well as Basel-based patent attorney Fabian Leimgruber from ThomannFischer.
Surviving both UPC instances
The PI against Mammut is the first PI to survive both UPC instances. The US biotech company 10x Genomics obtained a PI against NanoString at the local division Munich in 2023. However, this was then overturned by the Court of Appeal in early 2024. The court reasoned the patent-in-suit would be unlikely to survive a nullity action brought by NanoString and therefore rejected the PI claim. That ruling has set the legal framework for PI applications to the UPC.
Subsequently, VusionGroup also failed at both instances with its PI application against Hanshow for infringement of a patent for electronic labels. The courts ruled Hanshow’s product does not fall within the scope of the patent-in-suit.
