Context: As we discussed earlier this month, the Unified Patent Court (UPC) has become the world’s most important forum for preliminary injunctions (PIs) over patents (December 3, 2024 ip fray article).
What’s new: Today the UPC’s Mannheim Local Division (LD) granted pharmaceutical company G. Pohl-Boskamp a PI (PDF (in German)) against an anti-lice spray over a patent that is set to expire in 1.5 years and despite the fact that the patentee took more than a month between becoming aware of the alleged infringement and filing the motion.
Direct impact: The defendants (who include a German retail chain and its Austrian subsidiary) will presumably appeal. It is difficult to predict whether the PI will remain enforceable.
Wider ramifications: The reasoning will encourage other patent holders to turn to the UPC, and to give serious consideration to filing in the Mannheim LD, with PI requests in comparable circumstances.
The patent-in-suit is EP1993363 (“composition for combating ectoparasites and their ova”) and particularly focuses on killing head lice and their eggs while minimizing any adverse toxicological effects on the human body. Head lice do not just go away by shampooing one’s head. It takes something stronger.
That patent will expire on July 17, 2026. The fast-approaching expiration of an asserted patent is viewed differently in some jurisdictions than in others. Under the eBay standard in the United States, defendants may get traction with an argument that a short remaining period of a hypothetical continued infringement limits the harm caused to the patentee. However, German courts generally take the opposite view and believe that it strengthens the patentee’s interest in enforcement if there is a risk that there would otherwise be no more enforcement prior to expiration, or not much of it.
Here, the Mannheim LD adopted the German approach, but its balancing of the interests has more aspects than that one. In that context, the question of urgency is also addressed. The patentee did not file the PI request (formally called “application for provisional measures in the UPC) within a month of becoming aware of the alleged infringement, but the court believes that in the specific circumstances of this case, the amount of time that passed (from August 13 to September 20, 2024) was reasonable, given the need for proper laboratory analysis.
The defendants (pharma-aktiva GmbH, ALDI SÜD Dienstleistungs-SE & Co. oHG, ALDI Nord Deutschland Stiftung & Co. KG, ALDI SE & Co. KG and Hofer Kommanditgesellschaft) tried to defuse the situation through a cease-and-desist covenant that the court found lacking and wanting because it would not have prevented them from offering a patent-infringing substance under a different label.
The patent-in-suit was not battle-tested, but the court was unconvinced of the defendants’ invalidity contentions. The court applied a standard comparable to preponderance, with the burden being on the defendants.
What the court did not grant the patentee was an order that the defendant provide certain information on its distribution channels. The decision notes that the patentee did not show that there were special circumstances warranting such an order.
Panel: Presiding Judge Professor Dr. Peter Tochtermann, Judge Dirk Boettcher (“Böttcher” in German) and Judge Mojca Mlakar (Ljubljana, Slovenia).
Counsel for plaintiff G. Pohl-Boskamp: Simmons & Simmons’s Sebastian Horlemann.
Counsel for defendant pharma-aktiva: Lorenz Seidler Gossel’s Dr. Matthias Ringer.
Counsel for the ALDI (retailer) defendants: Von Rohr’s Dr. Alexander von Foullon.