The UPC Court of Appeal (“CoA”) has sided with the Düsseldorf Local Division in upholding a preliminary injunction (PI) granted in respect of sales of Mammut’s avalanche rescue device in Germany and Austria.
The CoA determined that there was a clear probability of infringement in respect of Ortovox’s patent number EP3466498 (the “Patent”), which claims an avalanche transceiver device and a method of operation for the same, whilst also dismissing Mammut’s invalidity attacks.
The CoA’s decision is lengthy (at 43 pages), but the key arguments advanced by the parties and reasoning adopted by the CoA are briefly summarised below. Please note that the information contained in this article is based on an English translation of the decision published in German.
BACKGROUND
In November 2023, Mammut (a Swiss company) displayed its new avalanche rescue devices, Barryvox S2, at a sports trade fair in Munich. Ortovox filed for a PI before the UPC (Düsseldorf Local Division) on the grounds that the devices being marketed by Mammut infringed the Patent. The provisional measures were granted on an ex-parte basis in December 2023. Mammut subsequently requested a review of the ex-parte order (pursuant to Rule 212(3) of the UPC Rules of Procedure (RoP)), but it was upheld. Mammut went onto appeal the first instance decision, which was heard by the CoA in Luxembourg in July.
A central aspect of the case concerned the interpretation of the terms “sound signal” and “voice message” included in claim 1 of the Patent. Mammut argued that such terms are unclear and that a narrower interpretation of the features claimed should be adopted such that its product (which is equipped with voice assistance) falls outside the scope of the Patent. In contrast, Ortovox considered the terms to be explicitly defined in the Patent, a “sound signal” referring to any acoustic signal relevant to the search for an avalanche victim, in contrast to “voice messages” which concern information in the form of spoken words.
Another argument advanced by Mammut was that Ortovox had unreasonably delayed in seeking interim relief, undermining the apparent urgency in respect of the application sought. Yet Ortovox’s position was that it had acted swiftly once it first became aware of the potential infringement. Ortovox was first able to discern the version of the devices on display at the trade fair on 28 November 2023 and filed its application before the UPC on 1 December 2023.
Mammut also challenged the validity of the Patent on the grounds of lack of novelty and obviousness.
COURT OF APPEAL DECISION
The CoA adopted the same approach to claim interpretation as they had advanced, last year, in 10x Genomics v Nanostring (see summary here). In short, whilst the patent specification is to be used to assist in interpreting the claims, it is the claims, as construed, that provide the “decisive basis” on which to define the scope of protection afforded by a patent.
However, despite the Düsseldorf Local Division contending that prosecution history should not generally be used as an aid to claim interpretation, the CoA declined to provide guidance on the availability and application of file wrapper estoppel in the UPC, adopting the same position it had taken previously in VusionGroup v Hanshow (see summary here).
On the facts, the CoA agreed with Ortovox that the patent specification indicates that any signal directed to the search for a buried avalanche receiver constitutes a “sound signal”, and is not limited only to certain acoustic signals. As a result of the broader interpretation of the claim features, the CoA concluded that it was “predominantly probable” that Mammut’s product infringes claim 1 of the Patent (pursuant to Article 62(1) of the UPCA). On summary examination, it was also found that Mammut’s product makes use of the process claimed in claim 13 of the Patent (which claims features that correspond to those in claim 1), giving rise to indirect patent infringement.
In respect of validity, the CoA considered in detail the inventive step and novelty arguments advanced by Mammut, by reference to four prior art documents. Whilst the CoA expressly followed the EPO’s approach to assessing novelty (pursuant to Article 54(1) EPC), it made no reference to (nor implicitly adopted) the EPO’s problem solution approach. The CoA overall ruled that the prior art was not novelty-destroying and that the combination of the various signalling mechanisms outlined in the Patent created a distinct solution to that disclosed in the prior art. As such, a finding that there was no inventive step was held not to be “overwhelmingly probable”.
Having concluded that the Patent was likely infringed and valid, the Court weighed up the parties’ interests, including the likely harm resulting from the injunction either being rejected or imposed (pursuant to Article 62(2) UPCA and Rule 211(3) RoP). The CoA concluded that the balance overall fell in Ortovox’s favour.
Firstly, in respect of delay, the CoA declined to specify any fixed period by which a delay would be deemed unacceptable, making clear that it is a fact specific assessment. It did, however, remark that the patentee could only realistically bring a PI application when it had sufficient evidence to point to likely infringement. Therefore, the ‘delay period’ may not commence on the very first indication of possible infringement. On the facts, the CoA considered that Ortovox acted promptly, having filed its PI application within a few days of realising the possible infringement.
The CoA also made clear that there is no requirement for a patentee to demonstrate a risk of irreparable harm if an injunction is not granted; it was sufficient that Mammut would be depriving Ortovox of the “market opportunity” afforded by the Patent by offering for sale a competing product that (more than likely) infringes the Patent.
Mammut’s additional argument, that it is in the public interest to allow potentially life-saving devices onto the market, was quickly dismissed by the CoA on the basis that other similar devices were already publicly available.
Finally, on a procedural note, the CoA confirmed that RoP 263, which allows a party to apply to the Court for leave to change its claim or to amend its case, also applies to proceedings regarding applications for interim measures (and not just substantive proceedings).
COMMENTARY
The CoA continues to demonstrate its swift handling of multi-faceted applications for provisional measures. Unsurprisingly, it followed the same approach as adopted in its previous PI decisions, both in respect of claim interpretation and validity - although clarity on the UPC’s position on file wrapper estoppel would be welcome.
This decision, however, contrasts with its recent ruling in VusionGroup v Hanshow and Nanostring v 10X Genomics, in which the CoA overturned the PIs granted by the Munich Local Division. This is in fact the first time that the CoA has upheld a PI imposed by a lower instance court, demonstrating that it will carefully consider each case on its facts.
This is of course not the end of the matter, with the infringement and revocation claims to be heard in a substantive trial next month. We await to see whether the Düsseldorf Local Division follows suit or whether it reaches a different conclusion on infringement and validity (or at least adopts different reasoning).
