Context: The Unified Patent Court (UPC) has generally become the world’s number one forum for preliminary injunctions (PIs) and three of the five applications for provisional measures filed with the UPC in November went to Milan (December 3, 2024 ip fray article). It is now clear that all three Milan motions were ex parte PI requests (so urgent that the applicant asked the court not to hear the other side). ip fray has previously reported on two such requests by Pirelli that succeeded just in time for the EICMA motorcycle fair (November 19, 2024 ip fray article). The third one was related to EICMA as well, as discussed below.
What’s new: Meanwhile, the UPC’s Milan LD has also released the third such decision, dated November 5, 2024 (link to UPC case register). Israel’s Cardo Systems prevailed over Chinese rivals Asmax and Yiheng (link to profile on third-party website) on EP4240194 (“Fastening device, head-protective gear with such a fastening device”). EP’194 issued on October 9, 2024, meaning the PI came down within less than a month of grant.
Direct impact: Unlike the near-simultaneous Pirelli PIs, this one comes with a sales ban. Pirelli had been faced with the choice of either giving the other party a chance to defend itself or limiting the ex parte remedy to the trade show at issue. Not so here, where Cardo achieved a broad injunction, and for all of UPCland. An ex parte PI goes away, however, if the applicant doesn’t take the next steps to prevail on the merits.
Wider ramifications: The decision, while issued by a single judge and subject to a potential appeal, provides useful guidance on how to persuade the UPC to grant ex parte PIs.
Both sides of the dispute make entertainment systems (or components thereof) for motorcyclists using Bluetooth and Dynamic Mesh Communication (DMC) (explanation on Cardo’s website). This is about digital components incorporated into helmets.
The decision contains numerous annotated photos provided to the court by Cardo’s lawyers to make a prima facie infringement case. While this initial assessment by the judge is not formally binding on the UPC in the further proceedings, the judgment reflects a rather high degree of conviction on Judge Sam Granata‘s part. That may also serve to explain why he, unlike his colleagues, did not tell the moving party to limit its request to the trade fair or accept the delay caused by giving the non-moving side a chance to argue its opposition.
Judge Granata is normally based in Belgium, but helped out his Italian colleagues here. Based on his middle name and family name, he is, at least in part, from Italian descent. The language of proceedings in this case (like in so many others) is English anyway.
If courts have significant doubts concerning the validity of the asserted patent, they will shy away from ordering a PI. Here, the fact that the patent had been granted only about four weeks prior to the decision could have raised the concern that there had not yet been enough time for third parties (be it the defendants to this motion or other parties) to bring challenges. But two arguments weighed in favor of a sufficient likelihood of validity:
- The following reasoning is reminiscent of the “long-felt need” argument often advanced in the U.S.:
“During the prosecution proceeding at the EPO, the EPO has only identified three prior art documents: US 2014/173811 A1, US 2015286 117 A1 and US 2006/133068 A1. The Applicant argues that none of these prior art documents discloses or teaches the use of the magnets, the snap-lock elements and the securing element (in the securing for the fastening purposes and releasing position to release the functional unit) together. The Applicant convinces the Court that this is due to the nature of the Patent reflecting that the Patent overcame the challenges identified in the industry.” - Furthermore, Cardo pointed to another patent from the same family, presumably U.S. Patent No. 12,048,344 (granted in July 2024):
“A comparable patent has been granted in the United States with essentially the same claim language.”
There were 34 patent citations in the U.S., but Judge Granata either just focused on the fact that there had been a grant in another major jurisdiction or he looked at those citations and they didn’t change his mind concerning validity.
Apparently the litigation is continuing and now before not only a single judge, but a three-judge panel: Presiding Judge Pierluigi Perrotti, Judge Alima Zana and the previously-mentioned Judge Sam Granata.
Counsel for defendants is not listed in the public case register yet, however.
Counsel for plaintiff: Bird & Bird’s Tjibbe Douma, Giovanni Galimberti, Emilia Zalewska and Anna Koster; and Weickmann & Weickmann patent attorneys Dr. Markus Herzog and Manuel Millahn.