A recent decision by the Luxembourg Court of Appeal (CoA) marks the first time that the UPC’s CoA has considered an ex parte Preliminary Injunction (PI), and the first time any PI awarded by the UPC has been upheld through the courts of both First Instance and Appeal.

Whilst much of the decision concerns validity and infringement of the patent, and therefore relates to facts of the specific case, the decision also addresses a number of procedural questions as to what submissions form part of appeal proceedings, and what factors are to be considered in deciding to grant or reject provisional and protective measures.

Background – Preliminary Injunction ordered by Düsseldorf Local Division

In late-November 2023, Mammut presented a new avalanche rescue device, the Barryvox® S2, at the ISPO Munich trade fair. In advance of the event, the product had received the ISPO Award “for its innovative technology and features that enable faster and more accurate location of buried victims”.

Ortovox’s patent EP 3466498 was granted in 2019. The claims of the patent are directed to an avalanche transceiver, which aids search attempts with both audio and voice signals, and a method of operating such. Mammut has launched a national nullity action against the Swiss part of the patent, which action remains pending before the Federal Patent Court in Switzerland.

This is not the first time the parties have clashed. The German national courts found in Ortovox’s favour back in 2010, in relation to infringement of Ortovox’s patent DE 10 2004 027314 by Mammut’s Pulse Barryvox avalanche beacon. This dispute ended seemingly harmoniously, with a licensing agreement giving Mammut the worldwide and perpetual right to use the German Ortovox patent and the associated international patent family.

Shortly after a presentation of the Barryvox® S2 device in Munich, Ortovox applied to the UPC’s Düsseldorf Local Division (LD) for an ex parte PI (meaning that the hearing would be held without the alleged infringer being involved), having already sent a warning letter directly to Mammut. The application was successful, and the Düsseldorf LD decided to order the PI (only the second to be awarded by the UPC ex parte) just 10 days later. The PI prohibits Mammut from selling the devices in Germany and Austria (UPC states in which the patent was in force) and has been in place since 11th December 2023.

As Mammut had not had the opportunity to defend itself at the initial PI hearing, it requested review of the PI order before the LD. However, in the oral proceedings held in March 2024, Mammut was unsuccessful – the PI was upheld and Mammut was ordered to provisionally reimburse Ortovox’s costs.

Undeterred, Mammut appealed to the Luxembourg CoA, which issued its decision to uphold the PI on 24th September 2024.

The recent decision is detailed and comprehensive, and the Court clearly considered the technical and legal issues with reasonable depth before coming to its conclusions. Even where arguments or documents were, ultimately, found not to form part of the proceedings on formal grounds, the CoA has given some indication as to their merits or relevance to the case. Whilst much of the decision relates to validity and infringement of the patent, the decision also examines points of law and gives insights as to the CoA’s approach, which could prove helpful for parties engaging with the UPC.

What can be relied upon in Appeal Proceedings?

The CoA emphasised that the subject-matter of appeal proceedings is limited to the submissions made during proceedings, which had led to the appealed decision. In this case, the ex parte proceedings in which the PI was ordered, and the first instance proceedings in which it was upheld. The content of related proceedings (specifically, the main proceedings at the UPC for infringement, a counterclaim for invalidity and the national nullity proceeding before the Swiss patent court) does not form part of the appeal, even if those proceedings are referred to by the parties.

For the purposes of ordering the ex parte PI, the Düsseldorf LD as the Court of First Instance (CFI) had looked to the arguments raised in the co-pending Swiss nullity proceedings and in Mammut’s response to Ortovox’s warning letter. The rationale being that, in the absence of any protective letter, these documents could help the CFI to predict what counter arguments might be raised by the alleged infringer. However, once Mammut had had the opportunity to put forward its case in the review and appeal proceedings, the subject-matter of the appeal was to be limited to that which the parties elected to submit.

In making its case, Mammut also pointed to statements made by Ortovox and by the examiner during prosecution of the patent before the EPO, arguing that such statements would lead to a different interpretation of certain claim features.

The CoA elected not to clarify the question of whether statements made during prosecution at the EPO are to be used to interpret the claims of a patent (waters which have been muddied by somewhat conflicting decisions by the CFI and CoA in VusionGroup SA v Hanshow Technology & others, and in 10x Genomics v Curio Bioscience). In this case, the CoA decision instead comments on the merits of the arguments, reasoning that as the statements from prosecution did not, in fact, support Mammut’s arguments, there was no need to answer the question definitively. Going forward, it will be interesting to see how the UPC will address the issue of prosecution history and claim interpretation in cases where the history would be decisive for claim interpretation.

Based on these aspects of the CoA’s decision, it seems reasonable that the UPC might well, in certain circumstances, consider the broader landscape around an action. However, parties cannot expect to rely on this, and should ensure that everything they wish to rely on in a given UPC proceeding is expressly submitted for those proceedings.

Admissibility

During the first instance proceedings, the CFI rejected two of Mammut’s submissions as inadmissible. The first, a prior art document, was submitted one day before the oral proceedings. The second, arguments in relation to the scope of the license agreement between the parties which has been in place since shortly after the German national infringement decision in 2010, were submitted after the oral proceedings before the CFI.

The CoA in this present case admitted the prior art document into appeal proceedings, on the basis that consideration of the document in the proceedings would not cause a delay, and as Ortovox had had sufficient opportunity to consider the documents and make its rebuttal. The decision also notes that the CoA can exercise its discretion to admit submissions which were rejected at first instance, and emphasises that correctness of the CFI’s original decision to reject the submission is irrelevant.

Mammut’s submissions on the scope of license agreement were not admitted by the CoA, as the license agreement related to neither the patent nor the device version to which the present case relates.

The CoA also confirmed correctness of the CFI’s decision in rejecting the submissions, explaining that, as a Court may announce its decision orally at the end of oral proceedings, the decision can only be based upon submissions made before this point. The submissions in question, filed ten days after the oral hearing, therefore could not form basis for the CFI’s decision.

Substantive consideration of Validity and Infringement

Whilst we will not go into the technical details here, it is notable that the Court’s commentary on validity of the patent is extensive, spanning almost 100 paragraphs and touching on sufficiency, novelty over four documents, and inventive step. Whilst validity may not be confirmed to the hilt, it was certainly more than a passing consideration for the CoA in upholding the PI.

Mammut had argued its non-infringement case in part on the basis that there was no such thing as “the” Barryvox® S2 device. There were different versions of the device in the test phase, not all of which would have included a voice support feature as required by the claims.

Whilst a product on display at a trade show may not be the final product, the CoA endorsed the CFI’s view that the point of view of the public is relevant for assessing whether there is a sufficient degree of certainty that infringement of the patent holder’s rights is imminent. In this case, it would be reasonable for the public to expect that the version of the device presented at the trade fair would correspond to that which could be ordered online, given the absence of any contrary indication.

Both courts had also pointed to the fact that the voice support feature had been mentioned in the justification for the device receiving the ISPO award. In patent law, not even all good publicity is always good publicity.

Balance of interests

When deciding whether to grant an application for provisional measures such as a PI, the CoA affirmed that a UPC court has the discretion to weigh up the interests of the parties and in particular to take into account the potential harm for either of the parties resulting from the granting or the refusal of the injunction (Art. 62(2) UPCA). The Court must also consider whether there has been any unreasonable delay in seeking the provisional measures (R. 211(4) RoP), the rationale being that if a party has been unreasonably lax in asserting its rights, then granting of the measures may not be vital to that party’s interests.

In this case, the CoA highlights that irreparable harm is not a necessary condition for ordering of provisional measures ex parte, contrary to Mammut’s assertion.

Rather, R. 212(1) RoP provides that “The Court may order provisional measures without the defendant having been heard, in particular where any delay is likely to cause irreparable harm to the applicant…” When weighing up the interests of the parties, it is the balance that is decisive and, in this case, the CoA found the CFI’s conclusion that Ortovox’s interests prevail to be correct.

The CoA was also asked to consider whether the interests of third parties should be included when weighing-up potential harms. In this case, Mammut considered such third parties to include avalanche victims, whose survival rates may be impacted due to the absence of the Barryvox® S2 from the market. The CoA did not feel the need to answer this question definitively, as the facts of the case (Mammut’s contested design having only existed as a prototype, and the availability of other avalanche transceivers) meant that the alleged disadvantages to the third parties are “at best of a theoretical nature”.

The question of what constitutes an “unreasonable delay” in this context has been contentious even between different Local Divisions of the UPC. The Munich LD has indicated that application for a preliminary injunction filed within two months of the applicant becoming aware of the alleged infringement would normally be considered reasonable (SharkNinja v. Dyson), whereas the Düsseldorf LD errs towards a one-month time frame (as it had indicated in the order given in the first instance).

In the present case, Mammut’s presentation at the ISPO Munich trade fair from 28th to 30 November 2023 followed presentations of prototype “Barryvox® S2” devices at another trade fair in the US, from 8th to 13th October 2023, at which time the device was examined by an Ortovox employee. Ortovox was also made aware, in early November 2023, that a “Barryvox® S2” could be pre-ordered from Mammut group’s business-to-business platform. Ortovox sent Mammut a warning letter on 28th November 2023, and applied for the PI on 1st December 2023.

Were the presentation of the device in the US considered to constitute the start of the waiting period, the delay in applying for the PI would have been approaching two months, falling between the Munich and Düsseldorf LDs’ previous interpretations of what delay is normally “reasonable”.

However, the CoA did not need to pick any side this time. As the device inspected at the US trade fair was one of a number of prototypes, the CoA notes that it could not have been assumed with any certainty by Ortovox, which device might ultimately be offered and sold in Germany and Austria. The situation was not clarified by knowledge that a version could be pre-ordered online. The first time that Ortovox could have a reasonable expectation that the alleged infringement was imminent was therefore on 28th November 2023, when they were allowed to see the displayed version in Munich.

In view of this, the CoA endorsed the CFI’s assumption that Ortovox had not waited unreasonably long to bring its application on 1st December, commenting that “Ortovox rather filed it quickly”.

A cliff-hanger …

Whilst the decision leaves open questions of whether statements made in the grant procedure are to be used for interpreting the patent claims, and whether third-party interests are to be included in the weighing-up of parties’ interests, the decision does provide a number of significant points for users of the UPC to keep in mind:

• The subject of the appeal proceedings is limited to the order or decision under appeal – in an appeal dealing with an order for provisional measures, the content of related main proceedings at the UPC will not form part of the appeal, even if those proceedings are referred to by the parties.
• Irreparable harm is not a necessary condition for ordering of provisional measures ex parte.
• Because a Court can announce its decision at the end of the oral hearing, decisions from the UPC can only be based upon submissions made before the end of the oral hearing.
• It would be reasonable for the public to expect that the version of a device presented at a trade fair would correspond to that being offered for sale, absent any contrary indication.

The Barryvox® S2, however, is still out in the cold. Mammut remains prohibited from selling its devices in Germany and Austria and will be until at least the hearing in the main proceedings, which is scheduled for 26th November 2024. When we do get the decision, no doubt the winning party will be celebrating on the slopes.