Preliminary Injunctions in Germany, Part 2

As a follow-up to my recent post on preliminary injunctions in Germany, I'd also note three recent cases of interest, two from the Düsseldorf Oberlandesgericht and reported in GRUR-RR 6/2013 by Dr. Ingve Björn Stjerna, and one from the Düsseldorf Landesgericht and reported in GRUR-Prax. 2013, Heft 9, p.203, by Dr. Philipp Cepl. 

The more recent of the two appellate decisions is the Judgment of Jan. 17, 2013, 1-2 U 87/12, reported at GRUR-RR 236 (2013), which the reporter headlines with the title “Voraussetzungen für Erlass einer einstweiligen Verfügung gegen Generika-Hersteller” (Conditions for Granting a Preliminary Injunction Against a Generic Manufacturer).  The case states that, under Harnkatheterset (see previous post), the requirement of having a validity judgment in favor of the patent holder can be dispensed with when, inter alia, special circumstances are present, and that such circumstances generally are present when a generic drug manufacturer allegedly infringes and engages in aggressive price competition.  The court also engaged in its own review of the evidence of validity and was not persuaded that the patent was invalid.  In addition, the court concluded that the lower court had applied the urgency (Dringlichkeit) requirement too strictly.  The applicant need not act with the greatest possible speed; rather, the decisive question is whether he has acted with such inattention and hesitancy that it wouldn’t be fair to grant him preliminary relief.       

The other is the Judgment of September 20, 2012, 1-2 U 44/12, reported at GRUR-RR 241 (2013), which the reporter titles “Voraussetzungen der Erstbegehungsgefahr einer Patentverletzung” (Conditions for the Danger of Imminent Infringement”).  The appellate court concluded that the mere fact that a generic manufacturer has been granted regulatory approval to market a generic version of a drug does not by itself prove that an infringement is imminent, particularly where the approval will not lapse even if the generic manufacturer hasn’t used it before the expiration of the patent.  In addition, the court stated that it would not be difficult for the patentee to monitor the market for evidence of any infringement that may occur.

The third decision, from the Düsseldorf trial court, is the Judgment of Nov. 20, 2012, 4b O 141/12.  The court decided that the urgency requirement was not undermined by the fact that the patent owner waited about a month after receiving an expert report on whether the defendant was infringing before lodging an application for a preliminary injunction.  The court nevertheless denied the preliminary injunction, on the ground that there was, in fact, no infringement.

Also of interest is the decision, reported a few weeks back by Florian Mueller on Foss Patents (see here and here), in which the Karlsruhe Oberlandesgericht stayed an injunction that Motorola had obtained against Apple, on the ground that it was likely the patent in suit (related to "push" email) will be invalidated by the Bundespatentgericht.  Mr. Mueller informs me that this case did not involve a preliminary injunction, but rather what Americans would refer to as a "permanent" injunction, meaning an injunction entered after a full-blown trial on the merits.  In Germany, however, such an injunction is only provisionally enforceable pending appeal and the patentee must post a bond (as it would to secure a preliminary injunction).  For further discussion, see this write-up by Klaus Haft et al., Injunctions in Cases of Infringement of IPRs.