Local Division Düsseldorf UPC_CFI_177/2023 Order of 22 June 2023
myStromer AG, CH vs. Revolt Zycling AG CH Patent EP 2 546 134 B1
Part 3 of the RoP UPC deals with provisional measures. Pursuant to Rule 205, provisional measures are dealt with by way of summary proceedings, which consist of:
“(a) a written procedure; and (b) an oral procedure, which may include an oral hearing of the parties or of one of the parties”.
Consequently, Rule 212 of the RoP UPC provides for provisional measures proceedings without hearing the defendant. According to Rule 212(1), this is the case “where delay would be likely to cause irreparable prejudice to the applicant“. According to Rule 206(3), the applicant must state the reasons why the defendant should not be heard.
Such a case had to be decided by the Local Division Düsseldorf with Presiding Judge Thomas, Presiding Judge Klepsch as legally qualified judge and legally qualified Judge Kupecz.
The patent in dispute, EP 2 546 134 B1, relates to a combination structure of a bicycle frame and a motor hub, i.e. the main components of an e-bike. The patent is a bundled patent and is in force in Germany, Switzerland, Italy, Liechtenstein and the Netherlands.
The contested embodiment was not yet available on the market but could be test ridden at the important bicycle trade fair EUROBIKE, which took place from 21 June 2023 to 25 June 2023. The contested embodiment was also inspected at the Swiss headquarters of the defendant at the request of the applicant on 19 June 2023. However, the substantive results of this inspection had not yet been released.
The patent proprietor unsuccessfully requested a cease-and-desist declaration from the defendant on 22 June 2023, and thereupon applied for provisional measures, which were granted on the same day.
The defendant had filed a protective letter under Rule 207, which was taken into account by the court when deciding on the application. The defendant claimed that the patent was not infringed, that it was invalid and that the patent rights had been exhausted.
The court granted the application and gave the following reasons for its decision:
The contested embodiment infringed the patent literally, and the defendant had not disputed this in any significant way, either out of court or in the protective letter. Further, the defendant did not present any relevant prior art.
The application was urgent within the meaning of Rule 209.2(b) in relation to the current trade fair EUROBIKE 2023. It was neither argued (this can only refer to the protective letter) nor evident that the applicant had knowledge of the detailed technical configuration of the contested embodiment before the trade fair.
The validity of the patent was confirmed to the required extent. The patent grant was published in 2015 and no opposition or action for revocation had been filed against the patent to date.
The order for provisional measures was necessary because the exhibition of the contested embodiment at this trade fair could lead to a loss of the applicant’s sales and market share that would be difficult to reverse.
Finally, the court set the Applicant a time limit, calculated under Rule 213.1, of not more than 31 calendar days or 20 working days, whichever is longer, to file the main action.
Thus, also under the UPC Rules of Procedure, it is possible, in relevant cases, to obtain an order for interim measures very quickly (here, on the same day as the application was received) without hearing the opponent.
It is questionable whether, for a defendant who is expecting an application for provisional measures, it is advantageous to file a protective letter under Rule 207. Rule 209.2(d) provides that, when the court, in the exercise of its discretion under Rule 209.1(a), considers whether to notify the defendant of the application, it must take into account “a protective letter filed by the defendant“. The court must “in particular consider summoning the parties to a hearing if the defendant has filed a relevant protective letter.“
There would therefore appear to be a benefit in filing a protective letter. However, experienced patent judges, such as those working in the Düsseldorf Local Division, very quickly recognise whether the submission in a protective letter regarding the lack of infringement, the lack of validity and, if applicable, the granting of a licence, etc. is plausible and whether it appears to be well-founded. If this is the case, the court will order an oral hearing on the basis of the protective letter. If this is not the case, the protective letter makes it easier for the court to order provisional measures without hearing the defendant as it has already been able to examine the defendant’s arguments.
The filing of a protective letter is thus only advisable if there are good arguments to challenge infringement and/or validity.
Dr. Michael Wallinger for EPLIT