The UPC is asserting itself already.
Having put down a marker that national law approaches were 'irrelevant' in 10x Genomics (No 1), the new preliminary injunction decision in 10x Genomics (No 2) shows what that looks like in practice.
The No 2 decision deals with the request for a preliminary on the EP 2 794 928 parent to the patent at issue in the first case. This time the preliminary injunction is refused by the Munich local division of the UPC.
The court arrived at this decision despite the fact that the applicants had already obtained injunctions against the first two UPC defendants, based on the German part of the patent in suit, in the Munich Regional Court (a decision which is under appeal).
An action for revocation of the patent is also pending before the German Federal Patent Court in respect of the German part, and that court has already given the preliminary opinion that the patent can only be maintained in amended form.
On infringement, a particular feature of the asserted patent claims was considered by the Munich local division of the UPC to have been 'left unexamined and open' in the parallel German proceedings. Although the applicants argued for an interpretation of this feature that was broader than the mere wording used, under Article 69 EPC and its Protocol, this raised difficult technical and legal questions that could not be answered satisfactorily in the context of a preliminary injunction.
Therefore, infringement was not sufficiently certain for the injunction to be appropriate.
On validity, the applicants argued that on the basis of the preliminary opinion of the Federal Patent Court, there were no far-reaching doubts about the validity of the patent. However, the Munich local division of the UPC held that the meaning of the preliminary opinion was clearly that the patent in suit could not be maintained in its granted version, even if it could be maintained in an amended form. And the local division stated that it had to consider the patent claims in their present form and not as they might be amended.
There were also questions about whether the applicant's favoured interpretation of the claim feature for infringement would impermissibly extend the scope of protection of the relevant claim. These too could not be resolved in the context of a preliminary injunction.
Consequently, validity was insufficiently secured for the purpose of awarding a preliminary injunction.
Given the decisions already made in Germany, the Munich local division of the UPC clearly means what it says when it talks about developing its own approach in case law.
Taylor Wessing leads the authorship of A Practitioner's Guide to European Patent Law: For National Practice and the Unified Patent Court.
