This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.
Session 4: Provisional Measures in IP Disputes (Part I)
Court of Justice of the European Union [2022]: Phoenix Contact GmbH & Co. KG v HARTING Deutschland GmbH & Co. et al., Case No. C‑44/21
Date of judgment: April 28, 2022
Issuing authority: Court of Justice of the European Union
Level of the issuing authority: Final instance
Subject matter: Enforcement of IP and Related Laws, Patents (Inventions)
Plaintiff: Phoenix Contact GmbH & Co. KG
Defendant: HARTING Deutschland GmbH & Co. KG, Harting Electric GmbH & Co. KG,
Keywords: Provisional measures, interim measures where the validity of the patent in question has not been confirmed
Basic facts: The request was made in proceedings between the Parties before the Munich I Regional Court (referring court), concerning an alleged infringement of a European patent held by Phoenix Contact. The European patent was granted in November 2020, inter alia for Germany. In December 2020, Phoenix Contact brought an application for interim relief before the referring court, seeking an injunction prohibiting HARTING Deutschland and Harting Electric from infringing the patent at issue. In January 2021, Harting Electric filed an opposition to that patent with the European Patent Office (EPO).
The referring court noted that it had reached the preliminary conclusion that the patent at issue was valid and that it was being infringed. However, that court stated that it was prevented from ordering an interim measure on account of the binding case-law of the Higher Regional Court of Munich, according to which, for interim measures to be ordered, the patent concerned must also be the subject of an EPO decision in opposition or appeal proceedings, or of a decision of the Federal Patent Court of Germany, in the context of invalidity proceedings, confirming that the patent concerned confers protection on the product in question.
Taking the view that such case-law was incompatible with EU law, the referring court presented to the Court of Justice of the European Union for a preliminary ruling the question whether it was compatible with Article 9(1) of the EU] Enforcement Directive 2004/48, for courts to grant interim measures for patent infringement in situations where the validity of the patent in dispute had not been confirmed in opposition or invalidity proceedings at first instance.
Held: The Court of Justice of the European Union held that that Article 9(1) of the EU Enforcement Directive 2004/48 “must be interpreted as precluding national case-law under which applications for interim relief for patent infringement must, in principle, be dismissed where the validity of the patent in question has not been confirmed, at the very least, by a decision given at first instance in opposition or invalidity proceedings.”
Relevant legislation:
Paragraphs 58(1), 139(1) of the Patent Act of Germany
Article 935 of the Code of Civil Procedure of Germany
Article 9(1) of the EU Enforcement Directive