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UPC judges not necessarily aligned on claim amendments in preliminary injunction proceedings: Court of Appeal to discuss soon

Context: Despite the general vacation season, the Unified Patent Court (UPC) continues to put out new decisions and orders at a rather high frequency. You are encouraged to follow ip fray on LinkedIn, where you can find commentary on developments that can be provided in a few paragraphs, such as today’s LinkedIn post on another settlement and another switch to the language of the patent-in-suit. If you click on the bell in the upper right-hand corner of ip fray‘s LinkedIn page, you will get the additional benefit of notifications of new posts.

What’s new: Two decisions in unrelated cases issued today and reflected the need for clarification of the availability (or unavailability) of preliminary injunctions (PIs) over amended, and thereby narrowed, patent claims. The Court of Appeal (CoA) told Abbott (July 26, 2024 order (PDF)) that an extension of time was necessitated by auxiliary requests and advised the defendant (SiBio) that the admissibility of such amendments in PI proceedings would be discussed at the hearing, but they must prepare to discuss the amended claims as well (July 26, 2024 LinkedIn post by ip fray). In a case involving automotive suppliers Valeo (plaintiff) and Magna (three defendant entities), the Dusseldorf Local Division (LD) today granted leave to amend claims in a PI proceeding (July 26, 2024 order (PDF)).

Direct impact: Depending on how long it takes the CoA to decide the question in Abbott v. SiBio, there could be a window during which Valeo might be able to enforce a PI against Magna until it is lifted further to an appellate ruling in the medical case.

Wider ramifications: In Phoenix v. Harting, the European Court of Justice (ECJ) decided in April 2022 (judgment) that PIs over patents must not be restricted too much by a requirement for the patent to have been battle-tested against the same invalidity contentions. The question of whether a patent with respect to which a defendant raises validity issues sufficient to necessitate a narrowing of the claims during the PI proceedings should entitle its owner to a PI would also be an interesting one for the top EU court to resolve.

The question of access to UPC PIs over claims narrowed by amendment is an interesting one of statutory interpretation. It arguably also involves questions of proportionality (as in Phoenix v. Harting).

In the Dusseldorf case, Valeo narrowed the scope of its asserted claim by changing a logical OR combination (alternative elements) into an AND combination (making the presence of both a requirement for an infringement holding). Obviously, a switch from alternative to cumulative narrows the scope of the patent claim. As a result, a request for injunctive relief also gets limited: the scope of the injunction is determined by the scope of the claim language.

The Magna defendants raised various arguments to consider Rule 263 of the UPC’s Rules of Procedure (RoP) inapplicable to patent claims narrowed in a PI proceeding. While the Dusseldorf LD rejected those arguments, they are worthy of further discussion and could ultimately succeed in the CoA or (should the question wind up there) the ECJ:

  • The defendants argued that paras. 2 and 3 of Rule 263 RoP serve a fundamentally different purpose than para. 1. They said only para. 1 sets out the requirements for a claim amendment, while para. 2 and 3 are all about circumstances in which the court shall decide one way or the other. That distinction would benefit defendants because para. 3, if viewed in isolation, simply says “[l]eave to limit a claim in an action unconditionally shall always be granted,” which in this case would counsel in the patentee’s favor as it incontrovertibly narrowed a claim.
  • They interpret para. 3 as talking only about the legal claim (here, the infringement claim based on which they seek a PI), not a patent claim. They argue that the purpose of the rule is to allow any amendment that narrows the dispute, but they (plausibly) take the position that the claim amendment (regardless of whether it narrows the scope) makes the dispute more complex on the validity side.
  • They consider para. 3 as inapplicable to a “claim in an application for provisional measures” as it only says “claim in an action.” They argue that the RoP, other than Art. 32(1) of the UPC Agreement, consistently give “actions” and “applications” different meanings.

The Dusseldorf LD’s Presiding Judge (and judge-rapporteur) Ronny Thomas views para. 3 as a derogation from the second grammatical sentence of para. 1 (“Any such application shall explain why such change or amendment was not included in the original pleading”). At least according to the defendants, no explanation along those lines was given: instead, leave was sought based on para. 3 (if it’s a narrowing, you can always do it; no further questions asked).

Up to this point, ip fray believes Judge Thomas takes a position that makes more sense than the defendants’ somewhat far-fetched structural argument. There is nothing in the language or the hierarchy of paragraphs and subitems in Rule 263 that supports the defendants’ argument.

But even if one assumes that a narrowing of a claim will always be allowed by the court, one could still argue that para. 3 is relevant only to full-blown proceedings (“proceedings on the merits”) and not to PI proceedings; and one could still argue that it applies to a legal claim, not a patent claim, and that a narrower patent claim doesn’t mean a narrower legal claim that serves the policy goal of streamlining the litigation.

The Dusseldorf LD believes para. 3 applies to PI proceedings, too. It notes that “the use of language in this Rule is not uniform,” which suggests that reasonable people could disagree here. The English version talks about “claim in an action” and the German version about a “Klageanspruch” (“plaintiff’s claim” may be meant; it sounds more like “claim-in-suit” but that would not make sense because it would limit the applicability of that paragraph only to narrowed claims, not capturing situations in which, to provide just two examples, someone drops an accused product or a claim for injunctive relief over a standard-essential patent). ip fray (as it is written in a Francophone country) also looked at the French version, which says “demande” (meaning “complaint” or German “Klage” but also a request for a PI: the French title of Rule 206 is “Demande de mesures provisoires”). More than any other language version, the French version supports the applicability of the rule to PI proceedings, thereby supporting the Dusseldorf LD’s holding on a basis not found in that decision.

Judge Thomas also makes a structural argument: Rule 263 is in Chapter 1 (“General Procedural Provisions”) of Part 5 (“General Provisions”) of the RoP.

With the first and the third of the arguments stated above being unavailing, what about the second one, which is that what must be narrowed is a legal claim, not a patent claim? In that respect it is much harder to dismiss the defendants’ argument.

The order equates a narrower scope of a requested injunction to a narrower legal claim. If one looks at it from a policy angle, the unconditional permission of narrower claims undoubtedly makes sense if it streamlines the case: there will be less to discuss. But if there is litigation that also involves invalidity contentions, the defendants are right that the case is not simplified. It’s not that turning two alternative claim elements into two cumulative ones necessarily makes the case a whole lot more complicated, but it requires new arguments by the defendants, and theoretically there could be cases where this raises complicated technical questions.

There is, however, also a policy argument for allowing a plaintiff to change its complaint to the effect of seeking less (such as a less broad scope of injunctive relief). A narrowing in that sense, even though it may require a further exchange of arguments between the parties, is something worth encouraging.

The related part of the order does not discuss statutory interpretation as much as the specific circumstances and procedural history of this case. The focus could be different when the CoA hears Abbott v. SiBio, given the nature of appellate proceedings, which are more about how other cases would be impacted than just the one before the court.

The English word “claim” in para. 3 is ambiguous, but the only reasonable interpretation is “legal claim.” Here, again, the French version is not needed to arrive the same result, but particularly instructive: it talks about “limiter … une demande” and the term for patent claim would be “revendication.”

So the question is then whether one says a legal claim gets narrowed if the patent claim is narrowed, or only if, for instance, someone seeks only damages (in a main proceeding) and no longer an injunction.

The CoA may also have to think about the potential for gamesmanship. A patentee could seek a PI and then at an unreasonably late stage decide to narrow the claim scope. Is that a scenario in which the party deserves the benefit of para. 3, which is that it can rely on the court always granting leave?

There may be more questions to address than the ones discussed in the Dusseldorf order. As mentioned further above, there is a proportionality issue if a patent is weak enough to lead to shifting-sand positions. There is also the question of whether PI proceedings should be particularly fast and efficient.

It will be interesting to see how the CoA resolves this question.