UPC CFI 486/2024 – Bioletic Holding Gmbh & Co KG v Light Guide Optics Germany GmbH and S.I.A. LIGHTGUIDE International

Expert Commentary

Full Decision Text

1 Düsseldorf local division UPC CFI 486/2024 Order of the Court of First Instance of the Unified Patent Court local division Düsseldorf issued on 5 September 2024 concerning EP 3 685 783 B1 LEADERSHIPS: 1. If draws the court the applicant's of his attention to the lack of prospects of success application for an Order for interim measures and the applicant then states in his subsequent statement that, in the event that the court to its previous opinion, adheres there is, in his view, no need for discussion further in an oral hearing, the court may reject without an oral hearing within the scope of the discretion granted to it.the application for an Order for interim measures 2. In addition to temporal circumstances, factual circumstances are also important for the Order of interim measures. Against this background, the applicant must specifically explain why his request for legal protection cannot already be adequately with an action on the merits and why interim measures therefore be orderedmust . KEYWORDS: Application for an Order for interim measures; rejection without an oral hearing; factual necessity of an interim order2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 2 APPLICANT: Bioletic Holding Gmbh & Co KG, legally represented by biolitec Holding GmbH, which is represented by the Managing Director Dr Wolfgang Neuberger, Untere Viaduktgasse 69, 1030 Vienna, Austria, represented by: Attorney-at-law Paul Szynka, Attorney-at-law Hannes Jacobsen, Lawyer Alexander Fischer, CBH Rechtsanwälte, Ismaninger Straße 65a, 81675 Munich RESPONDENTS: 1. Light Guide Optics Germany GmbH, represented by the managing directors Daumants Pfafrods and Arturs Krauklis, Werner-von-Siemens-Str. 39, 53340 Meckenheim, Germany 2. S.I.A. LIGHTGUIDE International, represented by the members of the Executive Board, Mr Aumants Pfafrods (Chairperson of the Board), Artūrs Krauklis (Member of the Board) and Māris Stafeckis (Member of the Board), Celtniecības iela 8, Līvāni, Līvānu nov., LV-5316, Latvia, STREITPATENT: EUROPEAN PATENT NO. EP 3 685 783 B1 PANEL/CHAMBER: PANEL JUDGES of the Düsseldorf local division: This order was issued by presiding judge Thomas, the legally qualified judge of the court. the as judgement judge of . Dr Thom rapporteur and the legally qualified Mlakar LANGUAGE OF THE PROCEEDINGS: German SUBJECT: R. 209.1., 2nd RoP - Application for an Order for interim measures Rejection without an oral hearing FACTS AND STATUS OF THE PROCEEDINGS In a document dated 14 August 2024filed an , the applicant application for an order for interim measures, the defendants to refrain from offering, distributing and storing an optical fibre for the treatment of venous diseases ("Lightguide Infinity Side Fiber"; hereinafter the attacked embodiment)requesting .2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 3 The applicant is the proprietor of the European patent with unitary effect EP 3 685 783 B8 (Annex CBH 6; hereinafter: patent in suit), which is based claiming four priorities (28 February 2008, 8 July 2008, 13 October 2008 and 27 February 2009). on a parent application of 2 March 2009, The patent in suit was divided on 5 May 2019 as the third divisional application from the previous second divisional application EP 15 181 794.7. The third divisional application was published on 29 July 2020 and the patent in suit was granted on 17 July 2024. The opponents of the application participated in the examination proceedings with a total of five third-party observations (dated 5 November 2020, 7 February 2022, 26 July 2023, 16 October 2023 and 24 November 2023) and have now filed an opposition against the patent in suit. The applicant is a medical technology company that develops laser fibres for minimally invasive, gentle laser therapies. The respondents are part of the LIGHT-GUIDE International Group (formerly "LGO" or Light Guide Optics). Defendant 1) is the German subsidiary of defendant 2) and acts as a European sales company. Following the change of name , it operates in business transactions of respondent 2)as "LIGHTGUIDE Germany GmbH". Respondent 2) is a "Sabiedrība ar ierobežotu atbildību" (limited liability company under Latvian law, "SIA"). It sometimes operates under the name "LIGHTGUIDE International Ltd." or under its old company name "Light Guide Optics International Ltd.", or "LGO" for short. The parties and their groups have been involved in national patent disputes since 2016 in relation to the product and property right family that is also relevant here. Several infringement actions, including from a sister patent, are before the Regional Court and the pending . Higher Regional Court of Düsseldorfthe Federal Court of Justice upheld the German part of the sister patent with restrictions,obtained from the applicant's group a preliminary injunction (LG Düsseldorf 4b O 81/21) against the defendant 1) in 2021 and resumed the infringement proceedings based on the sister patent. There, the defendants were of contributory as requested. convicted patent infringement With , the embodiment challenged herethey developed a workaround solution for the sister patent. Within one month of the grant of the patent in dispute, the applicant filed an application for an order for interim measures before the Düsseldorf Local Court. With regard to the factual necessity of the order for interim measures, the applicant essentially stated that it had the challenged embodiment as a workaround solution to the sister patent to . accept until the patent in dispute was grantedHowever, the challenged embodiment had already represented the product portfolio of the applicant's group . Each order of the challenged embodiment a direct competitor product to in recent yearsthus satisfied a demand that the applicant would otherwise have been able to satisfy and thus considerable damage caused to the applicant. Ordering interim measures is therefore necessary effective legal protection. It would only be possible to prevent the sale of the contested design in about a year's time with proceedings on the merits alone.for By Order of 15 August 2024, the rapporteur requested the applicant to submit additional information on the factual necessity of interim measures. Reference is made to the content of the Order (ORD 47228/2024). The applicant submitted information in :additional a document dated 19 August 20232024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 4 From the point of view, the fact , argues applicantthat it already the existence of the attacked embodiment as a direct competing product over in particular in favour of the factual necessity of ordering interim measures.'s hadhad to accept a longer period of time - during which no patent protection existed - and had not been able to Thus, it was decisive that the applicant lost profit due to a directly competing product, which was practically unenforceable in the context of a claim for damages due to known difficulties in the causal chain and in the calculation. take action against the defendantsThe claim for injunctive relief this compensation gap. Thus, the petitioner the question of which cases of application for interim orders within the meaning of R. 206 et seq. RoP remain raises if economic damages per se are not sufficient. The longer remaining term also of the patent in dispute does not speak against an injunction. Otherwise, the injunctive relief provided for by law would be fundamentally obsolete, as it could . always be economically compensatedThe applicant points out that in the past it always consistently and swiftly relation to the defendantsenforced the relevant family of property rights in . However, only secured applicantto a limited extent. After the sister patent had been restricted, it had only been possible to obtain a national judgement for contributory patent infringement. In addition, the defendants had subsequently developed the challenged embodiment as a workaround solution, which could now be pursued for the first time with the grant of the present patent in suit.the judgements had handed down the 's market situation In addition, in its submission of 19 August 2024, the applicant stated for the first time that, based on past trade fair appearances, it was to be expected that the defendants would also exhibit the attacked embodiment at the leading trade fair "MEDICA/Com- pamed" in Düsseldorf in November 2024. Proceedings on the merits could the not prevent . Tenders are another important sales channel. These tenders concern, for example, the long-term supply of hospitals (or similar healthcare facilities) and thus large quantities of the products concerned over longer periods of time. In addition, the products at issue here are medical devices that are used by doctors. There is a particularly high level of customer loyalty in the sector, as practising doctors are generally not "keen to experiment" and therefore prefer to use products with which they have already successfully treated patients. The applicant could customer relationships once lost demand lost by the applicant due to the defendants' appearance at MEDICA 2024 - possibly also via MEDICA 2025 - and the associated loss of market share for the not, or only with difficulty, (re)gain customer groups supplied by .or still untapped but the defendants In her Order of 21 August 2024, the rapporteur again pointed out that the submission on factual necessity is not sufficient to justify preliminary injunction proceedings.an order in the It essentially stated that the existence of directly competing products is usually the classic constellation in a patent infringement case. This is with the into accountpossible filing of an action on the merits. The present case is not comparable "Verschüttungs- gerät II" (UPC Agreement (LK Düsseldorf), GRUR 2024, 932) because no business transactions concerning seasonal goods that saturate the market for several years are at issue. The applicant's reference to the "MEDICA/Com- pamed" trade fairs taking place in approx. 3 months does not justify a different assessment. The mere general expectation of a possible offer of the attacked embodiment at a trade fair taking place in the distant future does not justify a different assessment.with the case2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 5 does not constitute a . suitable basis for ordering interim measuresIn particular, does not justify an order for provisional measures "in advance". Furthermore, the judge it it considersdoubtful that the merely presumed exhibition of the contested embodiment could take place if a is filed main action in a timely manner, especially since the opponents of the application have already filed an opposition against the patent in dispute. Furthermore, it is that the applicant is currently suffering or is likely to suffer damage to such an extent that compensation still not apparent . The in the main proceedings can no longer be reasonably expectedalleged customer loyalty already exists. The lost customer relationships or customers that have not been closed but have already been supplied would not be regained more effectively by an injunction than by an injunction in the main proceedings, especially as the products in question are for single use on the European market. The saturation of the market for six months or a year should be , especially able to be adequately compensated for by an injunction on the meritsin view of the remaining term of the patent in dispute. An intensification of damage with a previous term of four weeks is difficult to see. Finally, the rapporteur did not agree with the applicant's view that an interim injunction would serve as compensation for a possible method of calculating the loss of profit. Reference is made to the further content of the Rapporteur's Order of 21 August 2024 (ORD 47991/2024). By submission dated 23 August 2024, the applicant rejected the. withdrawal of the application It believes that the court can within the scope of the it under Rule already decide on the application now discretion to which is entitled 209.1 RoP, provided that it adheres . to its opinionIn its view, neither a statement by the respondents nor an oral hearing is required with only the applicant (Rule 201.1 (a), (c) RoP). Since the respondents were not adversely affected, the rejection could be the subject of appeal proceedings immediately in view of the urgent nature of the application. To avoid repetition, is made reference 23 August 2024.to the further explanations in the submission dated Applications The applicant submits the application, after hearing the defendantsthe following :, to issue I. The defendants are ordered to refrain from using devices for the endoluminal treatment of venous insufficiencies, in the territories of the Republic of Austria, the Kingdom of Belgium, the Republic of Bulgaria, the Kingdom of Denmark, the Republic of Estonia, the Republic of Finland, the French Republic, the Federal Republic of Germany, the Italian Republic, the Republic of Latvia, the Republic of Lithuania, the Grand Duchy of Luxembourg, the Republic of Malta, the Kingdom of the Netherlands, the Portuguese Republic, the Republic of Slovenia and/or the Kingdom of Sweden2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 6 to offer, place on the market or use or introduce or possess for these purposes, if they comprise a flexible optical fibre which a defines , longitudinal axisa proximal end and a distal end which can be received by the vein and which radiation-emitting which can be connected optically to a radiation source has surfaces of the optical fibre which set up for this purpose, radiation radiation source from the with respect to the longitudinal axis of the optical fibre in a lateral direction and radially and circumferentially onto a portion of the surrounding vein extending over an angular range, and a substantially having transparent cap which encloses the emitting surfaces and which is fused to the optical fibre and sealed thereto if this happensas follows: II. For each individual violation of the above Order, the defendants must pay the court a (possibly repeated) penalty payment of € 5,000.00 per testimony and/or, in the case of permanent offences such as offers on the Internet, up to € 5,000.00 per day. III. The defendants are further ordered to the devices referred to under I. to a bailiff for the purpose of safekeepinghand over , which shall continue until the existence of a claim for destruction has been finally decided between the parties or an amicable settlement has been reached. REASONS FOR THE ORDER: The application for an Order for interim measures must be rejected necessity.for lack of material I. The Chamber agrees with the Applicant that a dismissal of the application without hearing the Respondents and without an oral hearing is possible withindiscretion under Rule 209.1 (a) - (c), 2 RoP. the scope of its 1. In principle, the Board has discretion as to how it conducts . the proceedings on the Order for interim measuresRule 209.1 (a) - (c) RoP basically describes three scenarios. The Chamber may2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 7 - request ,the defendant to lodge an objection - summon the parties to an oral hearing or - summon .the applicant to an oral hearing in the absence of the defendant In addition, Rule 209. 2 RoP lists several aspects that the court when exercising its discretion. must take into account In addition to the urgency of the action (b), point (c) also states whether the applicant interim measures without hearing has applied for the defendant and whether the reasons for not hearing the defendant appear convincing. In connection with paragraph 1 of Rule 209 RoP, it is noticeable that the explicit enumeration always concerns scenarios in which the Chamber does not decide immediately. The defendant should either make a written statement or both parties should be heard orally or the application alone should heard orally. Conversely, from itRule 209.2 (c) RoP that an application by the petitioner is not mandatory for the court to decide without hearing the opponent, but that the court can also make this decision without such an application (see Tilmann/Plassmann/v.Falck/Dorn, Einheitspatent/Unified Patent Court, UPC RoP Rule 209, para. 13). This must apply a fortiori if the court decides .in the defendant's without hearing him 2. In the present case, the following speak in favour of a possible rejection of the application without hearing the defendants and without an oral hearing with the applicant alone:reasons The defendants prevail without the need for their participation. They are not adversely affected rejection of their application for an Order for interim measures. In this respect, is by the therealso no violation of the right to be heard because their interests are . safeguardedThey are entitled to their rights without the a defence on their part. need for Furthermorethe applicant not entitled to an oral hearing with her participation only (R. 209 1.c) RoP). The court has already two orders on the sole decisive legal question issued and the applicant has written two documents. An oral hearing with the applicant alone would be unnecessarily tedious because nothing more than an oral repetition of the previous submissions is to be expected. economical and in with Consideration It is therefore line4 of the preamble Rules of to the Procedure not to unnecessarily tie up of the court in finding a joint date for a video hearing - which may also be possible - that neither promises any further gain in knowledge nor is wanted by the applicant. In addition, the applicant is likely to save lawyer's fees as there is no need to attend a hearing.the scarce resources II. There still isno factual need for a temporary Order.2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 8 1. According to R. 206.2 (c) RoP, the application for an order for interim must measures contain, among other things, the reasons why interim measures are necessary to an imminent infringement prevent or the continuation of an alleged infringement or to link continuation to the provision of security. , for the necessity of ordering interim measuresthe According to the Rules of Procedureboth temporal and factual circumstances are. The fact that factual circumstances must also be taken into account when deciding on the Order for interim measures is evident from Rule 211.3 RoP, for example, according to which when deciding the possible damage that the applicant may suffer must taken into account . also be on the application for the OrderThe potential damage to the defendant, on the other hand, must be taken into account when balancing interests (UPC CFI 2/2023 (LK München), Order of 19 September 2023, GRUR 2023, 1513, 1525 - Nachweisverfahren; UPC CFI 452/2024 (LK Düsseldorf), Order of 9 April 2024, p. 27, GRUR-RS 2024, 7207, para. 124 - Orthovox v. Mammut; UPC CFI 463/2024 (LK Düsseldorf), Order of 30 April 2024 - 10x Genomics v. Curio Bioscience). The Order for interim measures is objectively necessary if the interests of the applicant in the individual case to be decided cannot be satisfied with a title in the main action due to special circumstances. 2. Having said this, the is factual necessity of the Order for interim measures still not apparent. a) Firstly, explicit reference , which the Chamber fully endorses and adopts.is made to the content of the rapporteur's Orders of 15 August 2024 (ORD 47228/2024) and 21 August 2024 (ORD 47991/2024) b) The partially repetitive statements of the applicant are able not to justify necessity.any factual aa) As already mentioned, the present case differs from the facts underlying the "Verschütungssuchgerät II" decision. While the aforementioned decision deals with , a trade fair matterthe applicant "postponed" the upcoming trade fair after the court's first Order without being able to provide concrete evidence as to whether the defendants will exhibit the challenged design form at all. The applicant's statements all refer to exhibitions at trade fairs in 2023 and their images in social media and have no reference to "MEDICA"/"Compamed" in November 2024. Even if one with the application due to wanted to assume continuation of an infringement , this in itself can initially only justify a claim for injunctive relief. a on the Internetthe offer of the attacked design form However, further requirements, which have already been mentioned several times, are necessary. for the Order of interim measures If, against this background, the applicant relies , on the circumstances known to herendeavours to draw on general life experience and believes that it cannot be assumed that the opponents of the application would be impressed by an action on the merits, she does not even comment on whether she warned the defendants after the patent in dispute was granted and whether and2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 9 how reacted. Sufficient time , especially in view of a trade fair in autumn.was after available for such a warning the patent in dispute was granted, even withinthe urgency period of one month used by the applicant bb) Even if one to accept all of the applicant's previous statements as sufficient, the applicant any case has innot to been abledemonstrate any currently ongoing or expected damage which, in the event that interim measures are not ordered, would be of such proportions that compensation in the main proceedings could be expectedno longer reasonably . If the applicant believes that the market saturation of approx. six months to a year relates to end customers, but that it distributes its products via intermediaries, this does not mean otherwise. It argues that the distributor LSO alone, which works for the defendants in France, brings more than 120,000 challenged versions onto the market every year according to the applicant's estimate and stocks them accordingly. This is evident from the written testimony of (Annex CBH 50). The witness, however, merely states the assumption that a corresponding stockpiling by customers or a significant increase in stock at LSO and other comparable distributors, which accordingly also a longer covers period of market supply, is expected. readily possible and possibly even to be This does not say anything precise about the specific period of stockpiling, nor how high an average consumption of the attacked embodiment is, which only is used once and then disposed of. The blanket reference to ongoing tenders, which as a basis in Italy for further tenders also are intended and which can lead to long-term commitments, is not sufficient to substantiate the above- mentioned damages. When the applicant states that, in its opinion, the in the context of the necessity test should damage to be taken into account not be limited patent, it is merely substituting its opinion for that of the Board.to the term of a recently granted Insofar as the applicant to the decision of the local division in The Hague of 31 July 2024 (Annex CBH 51, 51a), it is not apparent from the cited section that the local division even examined the factual necessity according to the above-mentioned substantive criteria. Furthermore, the sees itself Chamber in line with the decision of the Munich local division (order of 27 August 2024, UPC CFI 74/2024 - Hand Held Products v. Scandit). There, the court saw the threat of considerable long-term damage, which led to almost irreversible losses in market share for the applicant there, whereby the applicant there supplied technology sector at issue more than half of the leading companies in the and the at issue technology on more than was used 150 million devices. The customers trained their employees to use the acquired technology so that they refrained from purchasing another product in the short and medium term. In such a special case, the judgement is justified that the loss of market share can no longer be compensated purely in monetary terms, that a preliminary injunction be now mustissuedand that no decision on injunctive relief on the merits can be .awaited2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 10 Digitally signed by Ronny Thomas Date: 2024.09.05 14:44:54 +02'00' Ronny Thomas Presiding judge Thomas In contrast, hereno exorbitant damage has been shown , nor do the applicant's statements regarding the customer loyalty of doctors and periods of stockpiling go beyond assumptions or vague estimates. III. Orders the applicant to pay the costs by analogy pursuant to Rule 118.5 .RoP There is an . unintended loophole with regard to the bearing of costsIf the application for interim measures is also unsuccessful on appeal, the applicant will probably from refrain . bringing an action on the meritsThe obligation to bring an action then no longer applies. This means that in such a situation there is no decision on the merits within the meaning of Rule 118.5 Rules of Procedure and therefore no possibility of a decision on costs. In the standardised in Rule 213.1 RoP absence of alternatives, this is likely to be an unintended loophole that paves the way for the corresponding applicability of Rule 118.5 RoP. ORDER: I. The application for an Order for interim measures is dismissed. II. The applicant shall bear .the costs of the proceedings III. The appeal is authorised. DETAILS: ORD 47991/2024 for main file reference ACT 47064/2024 UPC number: UPC CFI 486/2024 Type of proceedings: Application for an Order for interim measures Issued in Düsseldorf on 5 September 2024 NAMES AND SIGNATURES2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com 11 Legally qualified judge Dr Thom Anna Digitally signed by Anna Bérénice Dr. Bérénice THOM Date: 2024.09.05 Dr THOM 14:40:42 +02'00' Legally qualified judge Mlakar Mojca Digital signed by Mojca Mlakar MlakarDate: 2024.09.05 14:42:31 +02'00' for the law firm Boudra-Seddiki Rachida Digitally signed by Rachida Boudra- Boudra- Seddiki Seddiki Date: 2024.09.05 14:41:41 +02'00'2024-09-05 LD Dusseldorf UPC CFI 486-2024 ACT 47064-2024 ORD 47991-2024 en-GBDeepL machine translation provided by www.veron.com

Key Holdings

• If draws the court the applicant's of his attention to the lack of prospects of success application for an Order for interim measures and the applicant then states in his subsequent statement that, in the event that the court to its previous opinion, adheres there is, in his view, no need for discussion further in an oral hearing, the court may reject without an oral hearing within the scope of the discretion granted to it.the application for an Order for interim measures
• In addition to temporal circumstances, factual circumstances are also important for the Order of interim measures. Against this background, the applicant must specifically explain why his request for legal protection cannot already be adequately with an action on the merits and why interim measures therefore be orderedmust .
• The application for an Order for interim measures must be rejected necessity.for lack of material
• The Chamber agrees with the Applicant that a dismissal of the application without hearing the Respondents and without an oral hearing is possible withindiscretion under Rule 209.1 (a) - (c), 2 RoP. the scope of its
• The applicant shall bear .the costs of the proceedings

Tags

• Appeal
• Costs
• Infringement
• Interim Measures
• Oral Hearing

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