CJEU referral

Munich court challenges German practice in PI proceedings

If a patent-in-suit is not yet proven in opposition or nullity proceedings, can a court refuse a preliminary injunction? The Regional Court Munich has now referred this question to the CJEU. The case law of Munich Higher Regional Court, and the patent courts in Mannheim and Düsseldorf, is under scrutiny.

21 January 2021 by Konstanze Richter

InterDigital, Xiaomi The Regional Court Munich is currently the forum for several anti-suit injunction proceedings ©dudlajzov/ADOBE STOCK

The referral regarding PI proceedings arises from a patent dispute between patent holder Phoenix Contact and Harting over EP 28 23 536. EP 536 protects a plug connector comprising a protective conductor bridge (case ID: 21 O 16782/20).

The current case forms part of a larger complex of proceedings concerning various patents and utility models relating to this technology. An opposing party filed an opposition at the European Patent Office against EP 536, which the office only granted in December 2020. However, the EPO had not yet reached a decision. Furthermore, no revocation claim is pending at the Federal Patent Court.

Phoenix Contact applied to the Munich Regional Court for a preliminary injunction. This would ban Harting from distributing its connectors. According to the patent holder, the company is infringing EP 536. The court followed Phoenix’s argument, declaring the patent infringed.

The court did not doubt the validity of the patent. However, the judges do not regard themselves as being in a position to grant a preliminary injunction This is because of the case law at the Higher Regional Court Munich.

Munich Court disputes PI proceedings

According to a judgment by the second-instance court in a dispute between Wago and Molex, it is not sufficient that a granted patent has its validity re-examined in the context of PI proceedings (case ID: 6 U 4009/19). In order to grant a preliminary injunction, the EPO or Federal Patent Court nullity proceedings must also prove the patent. Previously, Munich courts granted PIs much more easily.

The Munich Higher Regional Court judges followed the practice already established in Mannheim and Düsseldorf. In 2017 Thomas Kühnen, presiding judge of the Higher Regional Court in Düsseldorf, ruled that the legal validity of a patent-in-suit is only sufficiently secured once it has survived first-instance opposition or revocation proceedings. According to Kühnen, only then can the court grant a preliminary injunction on the infringement issue.

However, the Düsseldorf patent judges continue to issue PIs in exceptional cases. Namely, if the judges consider the patent-in-suit to be valid. Nevertheless, patent owners are currently referring to Hamburg as the patent court for a PI. According to patent experts, the court applies a lower standard to PIs than Munich, Mannheim and Düsseldorf.

Courageous decision

In its referral judgment on PI proceedings, Munich Regional Court considers this legal interpretation to be contrary to European law. It contradicts Directive 2004/48/EC. German law also makes no reference to the fact that a legal existence procedure is a prerequisite for a PI. This is noted by the Munich judges in their decision to refer the case to the CJEU.

Such a view is also incompatible with the fact that a patent becomes legally effective upon grant. Thus, a court can enforce a patent. In the present case, it was impossible for the patent, which the office had only just granted, to have gone through an opposition or even nullity procedure.

Therefore, the Regional Court Munich has now referred the following question to the CJEU: is it compatible with Article 9(1) of the Directive that the Higher Regional Court, in principle, extends an injunction for patent infringement, if the patent in dispute has not yet survived opposition or nullity proceedings at first instance?

Recently, the Düsseldorf Regional Court referred a Nokia vs. Daimler case to the CJEU for clarification on important FRAND issues. (Co-author Mathieu Klos)

For Phoenix Contact
CBH Attorneys at Law (Munich): Hannes Jacobsen (lead), associate: Paul Szynka
Maikowski & Ninnemann (Berlin): Christoph Schröder (patent attorney)

For Harting
Eisenführ Speiser (Hamburg): Tilman Müller; Klaus Göken, Jochen Unland (both patent attorneys, Bremen); associate: Soenke Scheltz

Regional Court Munich, 21st civil chamber
Tobias Pichlmaier (presiding judge), Anne-Kristin Fricke, Hubertus Schacht