Context: The Unified Patent Court (UPC) is arguably the world’s leading jurisdiction now for preliminary injunctions against patent infringement (December 3, 2024 ip fray article).
What’s new: Two days ago, but publicly discoverable only now, the UPC’s Dusseldorf Local Division (LD) ordered provisional measures (i.e., a preliminary injunction) against the sale of a surgical tool (“Bojin Medical Drill Bits (Sterile)”) over EP2892442 (“Surgical, torque-transmitting instrument including associated tool”) (PDF (in German)). On this occasion, the panel explained the consequences of intentionally not showing up at the hearing: the court then decides on the basis of the written pleadings and the arguments made by the applicant (here, Aesculap AG) at the hearing. It does not merely enter a default judgment. Another clarification relates to the pleading standard for a denial of infringement and the liability of a company that neither makes nor has been definitively proven to distribute an accused product (here, Shanghai International Holding Corporation).
Direct impact: Given that the defendant did not even send counsel to the provisional measures hearing, it is questionable whether it will pursue an appeal. But the question of the extent to which it is liable could be the focus of a hypothetical contempt proceeding.
Wider ramifications: The clarifications provided here are important, though not all of them will be a universally relevant as some relate to outlier scenario. That said, and even though it’s not an appellate decision, it is a landmark ruling.
Liability of intermediary
This case is an outlier in at least one respect: the defendant, Shanghai International Holding Corporation, is neither a product maker nor has a test purchase been made from that company. What can be ascertained in an official register, however, is that this company helped with obtaining the CE marking and is named (on the product itself) as the European authorized representative (EAR) under the EU directive on medical devices. CE stands for the French term “ConformitĂ© EuropĂ©enne”, meaning compliance with EU regulations. The actual product maker is Shanghai Bojin Medical Instrument Co., Ltd., but Aesculap’s lawyers asserted that Shanghai International Holding Corporation is its European distribution arm and it would take too long to enforce the patent against the Chinese manufacturing and distribution companies within the Bojin group.
The court deemed the defendant liable, finding that it may be an infringer, but at minimum it is “an intermediary whose services are being used by a third party to infringe a patent,” which is sufficient to establish liability under the second sentence of Art. 63(1) of the UPC Agreement (UPCA). In a different case, Philips v. Belkin the Munich LD applied that rule against a corporate officer (September 13, 2024 ip fray article). The Court of Appeal (CoA), however, disagreed that merely being a corporate officer resulted in intermediary liability (November 2, 2024 ip fray article)
Effect of not showing up at provisional measures hearing
The UPC’s Dusseldorf LD provided its own English version of the two headnotes. In the first one, it says the following:
If the defendant informs the Registry that it does not wish to be represented at the oral hearing, and then fails to appear in the oral hearing, it will be treated as relying only on its written submissions. In a situation like this, the Court decides on the merits of the case in at least PI proceedings as if the defendant had been present in the oral hearing. The Court’s power is not limited to the possibility of issuing a decision by default.
In the case at hand, it appears that the defendant really wanted to minimize costs, and didn’t want to pay for its UK-based counsel’s trip to Germany.
It makes sense that someone’s intentional absence from a hearing would prejudice the other party if the outcome was a mere default judgment, which could be set aside as the result of a motion.
In this case, the ruling is based on both parties’ written pleadings, but only one party’s argument and representations made at the hearing.
Aesculap asked for an ex parte injunction (i.e., without hearing the other side), but the court felt that Shanghai International Holding Corporation should be heard.
Pleading standard for denial of infringement
The second headnote addresses something that applies to many more cases than the outlier scenario of a party uninviting itself from a hearing:
Even if the defendant can dispute the applicant’s initial statement equally in broad terms, it must respond and, taking into account its duty to tell the truth, declare whether it disputes the statement. This applies at least if the applicant substantiates its allegation of infringement with specific facts, rather than making a general allegation. For an assertion to be considered substantially contested, the defendant must dispute it. If the defendant fails to do so and merely makes general statements about the applicant’s burden of proof, the corresponding submission of the claimant is deemed undisputed, R. 171.2 RoP.
The order discusses the infringement allegations in detail, and those were apparently fairly specific.
Validity
Some invalidity contentions were brought, but fell short of what would have convinced the court that a previously unchallenged patent was likely to be invalid.
Balancing of interests
Aesculap was concerned about an infringing product competing with its own surgical tool. The Dusseldorf LD applied a principle from the CoA’s recent Insulet v. EOFlow ruling, which by coincidence also related to a medical device and according to which the harm from having a second player in a given market segment is particularly severe (May 2, 2025 ip fray article).
Defendant ordered to provide information needed to stop or prevent infringing acts
Insulet v. EOFlow also controlled the part about Aesculap’s request for information. To the extent that such information is reasonably required to stop or prevent infringing acts (such as figuring out the distribution channels), the Dusseldorf LD granted relief, but not information on profits or other information that is not needed for that narrow purpose.
Court and counsel
Panel: Presiding Judge (and here, judge-rapporteur) Ronny Thomas, Judge Dr. Jule Schumacher, Judge Mojca Mlakar (Ljubljana, Slovenia) and Technically Qualified Judge Max Tilmann.
Counsel for Aesculap: Kather Augenstein’s Miriam Kiefer, Carsten Plaga, Christoph Heringlake, and Winter Brandl patent attorney Michael Wegerer.
Counsel for Shanghai International Holding Corporation: IK-Ip Ltd‘s Philippa Eke and patent attorney Douglas Cole.