UPC Lisbon LD clarifies burden of proof for establishing urgency in preliminary injunctions (PI) cases

Requirements for granting preliminary injunctions

First of all, the decision dated 15 October 2024 clarifies that the requirements for granting preliminary injunctions – validity of the patent, actual or imminent infringement, urgency and balance of interests – are cumulative, thus allowing the court not to address all of them if one is not satisfied.

Urgency

Regarding the threshold for assuming the requirement of “urgency”, the Lisbon LD then makes clear that the “specific and exceptional nature of provisional measures proceedings” require the Court to be “convinced” of the urgency involved. In this regard, the “prevention of irreparable harm to the holder of an intellectual property right and the immediate cessation of infringement of a patent or prevention of imminent infringement” should be fundamental factors in granting provisional measures.

Thus, the consideration of the “urgency” provided for in R 209.2(b) RoP is related to the need for early and prompt protection of the applicant's right to avoid further damage resulting from delays in resolving the case on its merits.

The applicant is expected to be diligent in seeking provisional measures against the alleged infringer in a timely fashion once it has become aware of the infringement.  Any unreasonable delay in initiating the proceedings, taking into consideration the factual circumstances, may lead to a finding that the temporal urgency required for the ordering of provisional measures is lacking.

The case at issue

In the case at issue, the defendant Asustek demonstrated that it had sold computers incorporating the contested chip modules on European markets since 2021, a fact which had also been published on various websites. Based on this and the fact that applicant Ericsson had filed ITC proceedings in the US based on the same contested modules against another company in October 2023, it had to be assumed that the launch of the contested product in Europe could hardly have remained unnoticed by Ericsson.

 Ericsson, for its part, did not mention the exact date it became aware of the launch of the defendant’s products incorporating the contested modules. Ericsson relied solely on the date it conducted a test purchase in May 2024, without revealing in more detail when it in fact recognized that the contested modules would be incorporated in Asustek’s product.

Decision

The Lisbon LD agreed with Asustek that it was reasonably unlikely that the date of the test purchase was the date when Ericsson first became aware that the purchased products contained the contested modules. Consequently, the court found that Ericsson failed to indicate the date on which it first became aware of the alleged infringement. However, such date would mark the point in time from which any unreasonable delay must be evaluated, in particular for the purpose of assessing whether Ericsson diligently carried out the necessary tasks to provide evidence of the infringement and to prepare the case in due course.

According to the Lisbon LD, the burden of establishing urgency and due diligence in initiating proceedings are not satisfied if the applicant fails to provide the Court with the exact date when it became aware of the infringement, particularly when the Court has no other factual or objective temporal indication beyond the date the infringement commenced.

As a result, the Lisbon LD dismissed Ericsson’s application for lack of urgency, even though it indicated that it deemed it more likely than not that the patent in suit was valid and infringed.

Takeaways

• This decision by the Lisbon LD shows that to be successful applicants should take utmost care in preparing an application for provisional measures before the UPC.
• Besides taking the necessary steps to timely and diligently verify the suspicion of infringement once having become aware of the launch of suspected products, to be able to meet the burden of proof for urgency applicants should thoroughly document and submit the timeline of taking the various steps:
  • starting from becoming aware of the infringement,
  • conducting test purchases,
  • performing the necessary steps for the infringement analysis
  • up to the filing of the application for provisional measures.