Applications for provisional measures before the UPC – what may be granted?

‘Means-plus-function’ wording is very common in patent claims, but how is this being interpreted by the UPC?  And can an order for information from the defendants be requested in provisional measures applications? 

• The Court of Appeal (CoA) of the Unified Patent Court (UPC) has considered these issues in a request for provisional measures in a case between Abbott Diabetes Care Inc. (Abbott) and Sibio Technology Limited (Sibionics) (UPC_CoA_382/2024, February 14, 2025). 
• The CoA also considered what the skilled person may derive from a patent specification and stated that implicitly disclosed subject-matter may also be considered as part of its content. 
• Additionally, the CoA confirmed that the issuance of a general injunction can be justified based on the likelihood of a single type of infringement.
• Finally, the CoA confirmed that orders for information from the defendants may be requested and granted in applications for provisional measures.  

This case exemplifies how far-reaching an application for provisional measures before the UPC can be. In less than a year from start to finish (including this appeal), the UPC awarded an applicant a provisional injunction across 14 EU member states. Furthermore, the defendant has been ordered to provide information relating to distribution, quantities, third parties etc. and faces significant penalties for violation or non-compliance.  

Summary of the Dispute:

• Patent at Issue: EP 3 831 283, owned by Abbott, covers an on-body device for continuous glucose monitoring (CGM).
• Contested Embodiment: In March 2024, Abbott filed an application for provisional measures based on alleged infringement of the patent by Sibionics’ GS1 CGM product.
• Procedural Background: Abbott’s application for a preliminary injunction was initially denied in June 2024 by the Court of First Instance (The Hague LD), leading to this appeal.  The oral hearing for the appeal was held on 27 November 2024.

Key Highlights

Claim Interpretation – what is the meaning of “means plus function”?

• The CoA stated that “means-plus-function features must be understood as any feature suitable for carrying out the function.” 
• In this particular case, the words ‘configured to’ were understood to mean ‘suitable for’. 
• This broad interpretation is likely to impact future patent claims and their enforcement.

Added subject matter - is the EPO ‘gold standard’ being applied by the UPC?

• According to the CoA, it is not required that a claim uses the exact wording found in the original application, provided the skilled person is able to “derive [it] directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed”. 
• The CoA also stated that “implicitly disclosed subject-matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall also be considered as part of its content.”
• This looks like a more liberal interpretation of added matter than the ‘gold standard’ applied by the EPO.  

Showing one instance of infringement can justify a general preliminary injunction

• The CoA held that the issuance of a general injunction can be justified based on the likelihood of a single type of infringement. The CoA stated: “A general injunction may be justified even if it is not shown that a patent is infringed by all possible infringing acts. One type of (likely) infringement suffices as a basis for a general preliminary injunction, which includes all possible ways of infringing.”
• This means that if the UPC finds that one type of infringement is likely, it may issue a preliminary injunction that covers all possible ways of infringing the patent. This approach means that a patent holder can stop various forms of infringement without having to prove each one individually.

Can an application for Provisional Measures include a request for information? 

• Art. 67 UPCA relates to the power of the UPC to order a party to provide certain information. The question considered was whether this power was one that could be requested in provisional measures proceedings.
• The CoA explicitly stated that Art. 67 UPCA is applicable to provisional measures proceedings.  An applicant for provisional measures may therefore ask the UPC to order a defendant to provide information relating to distribution, quantities, price, third party involvement etc, as set out in Art. 67 UPCA. 
• The CoA stated that such orders can be issued in provisional measure proceedings "provided that there is an urgent interest and such measures are proportionate".  
• Interestingly, the CoA did not order the defendant to provide information relating to price.  Price information is considered “primarily relevant in relation to the calculation of damages”. It had not been substantiated why price information is relevant prior to a decision on the merits.  Also the applicant had not “sufficiently indicated why it has an urgent interest to obtain the requested information”. 

Outcome

• The CoA concluded that it was more likely than not that the patent would be held valid for no added subject matter and for novelty and inventive step. The CoA also found that Sibionics’ GS1 CGM product likely infringed Abbott’s patent.
• As a result, the CoA set aside the June 2024 order of the CFI (The Hague LD) and granted a preliminary injunction against Sibionics.  The CoA also ordered Sibionics to provide Abbott with the requested information relating to distribution, quantities, third parties etc. Sibionics also faces potential penalties of EUR 10,000 per violation, plus EUR 100,000 per day for each day that a violation or non-compliance continues.

Comment

This case exemplifies how far-reaching an application for provisional measures before the UPC can be.  In less than a year from start to finish (including this appeal), Abbott secured an injunction across 14 EU member states. Furthermore, Sibionics has been ordered to provide information relating to distribution, quantities, third parties etc. and also faces significant potential penalties for violation or non-compliance with the order.