Context: A Dutch non-producing entity named Ballinno, thinly capitalized (May 16, 2024 ip fray article), filed a preliminary injunction (PI) request against European soccer body UEFA and one of its technology providers with the Unified Patent Court’s (UPC) Hamburg Local Division (LD) shortly before the EURO 2024 soccer tournament in Germany over a technology related to offside detection (May 14, 2024 ip fray article). After the June 3, 2024 PI hearing, the court denied the motion (June 3, 2024 LinkedIn post by ip fray).
What’s new: Today, the defendants’ lead counsel in that action, Bardehle Pagenberg’s Professor Tilman Mueller-Stoy (“Müller-Stoy”) in German, shared the court’s written reasons (which had just become available) on LinkedIn. He also mentioned that the plaintiff had appealed. The decision discusses why the patentee was not entitled to a PI due to a lack of urgency and why there was no infringement.
Direct impact: The appeal is unlikely to succeed, and it is virtually inconceivable that a PI would come down before the EURO 2024 final on July 14, 2024.
Wider ramifications: It will take more decisions, particularly by the UPC’s Court of Appeal, before the UPC’s urgency standard becomes clear. At this stage, patentees seeking a PI in the UPC should act conservatively and file as soon as possible. The decision that became available today shows that a three-month delay way was deemed to completely undermine the patentee’s alleged sense of urgency. In a case involving different parties in Munich, a two-month delay was deemed reasonable. The technical complexity of an infringement theory may also be taken into consideration, so the amount of time that may pass between someone’s initial awareness of an infringement and the filing of a PI motion with the UPC may very well vary from case to case.
Here’s the 29-page written decision:
Here’s the first headnote, which talks about the urgency requirement:
“As soon as a patent proprietor has knowledge of the alleged infringement, it must investigate it, take the necessary measures to clarify it and obtain the documents required to support its claims. A longer period (here almost three months) without significant efforts to clarify the possible patent infringement has to be considered as not treating the matter with the necessary urgency.”
The headnote does not distinguish between more and less complex cases. The case at hand was considered technologically trivial, which is why the three legally qualified judges (Presiding Judge Sabine Klepsch, Judge Dr. Stefan Schilling and Judge Samuel Granata (from Belgium) determined they did not need the help of a technically qualified judge.
There is precedent in a (different) German UPC LD for a two-month delay being considered reasonable. The Munich LD granted Dyson a PI against SharkNinja and determined that it is reasonable to bring a PI motion within two months of the launch of an allegedly infringing product (June 6, 2024 ip fray article).
This does not mean that two months are a safe harbor until there is appellate case law (and even if there was one, it could theoretically change over time).
The relevant statute, Rule 209(2)(b) of the UPC’s Rules of Procedure (RoP), does not state a specific time limit:
2. In exercising its discretion pursuant to paragraph 1, the Court shall in particular take into account:
…
(b) the urgency of the action;
…
Whent he UPC was new, parties made the argument that they couldn’t file a PI request with the UPC before it accepted filings. That kind of argument is no longer relevant.
The plaintiff in this case, Ballinno, had a predecessor in title named Invit, which already became aware of the Connected Ball Technology at issue in September 2023. According to the decision, there was no dispute over the fact that the same person is behind and owns both companies, and apparently the same lawyers are involved as well. Therefore, the new entity can’t deny having acquired knowledge early only because there was a subsequent assignment. That makes sense. Otherwise anyone could just assign a patent to a new shell company in an end-run around the urgency requirement.
Ballinno tried to justify the delays, but in vain.
In addition to the lack of urgency, Ballinno also lost the infringement argument. The court could apparently have denied the PI on more grounds, but at least one claim limitation that requires the further processing of a sound signal is not met.
It’s hard to see how an appeal is going to be fruitful. The only purpose it serves is to show that even a plaintiff with a registered capital of only €1 has access to enough funding to appeal.
The decision was made by the three judges mentioned further above, with Judge Dr. Schilling having authored the decision in his capacity as judge-rapporteur.
The plaintiff was represented by Brinkhof’s Rien Broekstra.
The successful defendant was represented by Bardehle Pagenberg’s Professor Mueller-Stoy (as mentioned above), Dr. Stefan Lieck, Dr. Christian Haupt, Dr. Marius Fischer and Ann-Christine Hug (press release).