German patent law is on the move. After the recent referral to the European Court of Justice (CJEU) by the District Court Düsseldorf concerning several open questions on the FRAND requirement in patent disputes involving SEPs at the end of last year, 2021 kicks off with yet another referral to the CJEU. This time, the preliminary injunction (PI) practice in Germany is put to the test.
The referral by the District Court Munich, issued on 19 January 2021 (docket no. 21 O 16782/20), addresses the issue of what standard should be applied for the necessary establishment of validity of the patent in suit in PI proceedings. In remarkably explicit statements, the District Court Munich questions the current practice by its own Court of Appeal to allow a PI for patent infringement only based on a patent which has survived a two-sided invalidity proceeding, and considers it to be incompatible with Art. 9 para. 1 of the Directive 2004/48/EU on the Enforcement of Intellectual Property Rights (Enforcement Directive).
In Germany, motions for preliminary injunctions in patent cases are decided on by the District Court (Landgericht) level in first instance. These decisions can be appealed in a second instance by the respective Court of Appeal (Oberlandesgericht). However, there is no further appeal to the German Federal Supreme Court (BGH) that could lead to a unified standard of jurisdiction.
Over the years, however, jurisdiction of the most relevant Courts of Appeal for patent disputes in Germany (Düsseldorf/Karlsruhe/Munich) has become quite consistent regarding the requirements for issuing a PI based on patent infringement. As a general rule, a PI based on patent infringement is only to be issued if both the infringement and the validity of the patent in suit are established so clearly that an erroneous preliminary decision, which would have to be revised in main proceedings on the merits, is not reasonably to be expected.
According to the case law of the leading Courts of Appeal, the…