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UPC – G. Pohl-Boskamp v. Aldi et al. – Order re Provisional Measures

15 Jan 2025

Michael Kobler

Bardehle Pagenberg

G. Pohl-Boskamp GmbH & Co. KG v pharma-aktiva GmbH, ALDI SÜD Dienstleistungs-SE & Co. oHG, ALDI Nord Deutschland Stiftung & Co. KG, ALDI SE & Co. KG, UPC, Court of First Instance, Local Division Mannheim, Case no. UPC_CFI_541/2024

Cease-and-desist declaration, contestation of facts, requirements re. validity and urgency, claim for information

By decision of 20 December 2024, the Mannheim Local Division ordered the four Respondents, manufacturer pharma-aktiva GmbH and three companies of German supermarket chain ALDI, to refrain from manufacturing and/or distributing a lice spray in Germany and/or Austria based on infringement of European patent EP 1 993 363 (“EP ‘363”), owned by Applicant G. Pohl-Boskamp. While continuing the UPC case law on validity and urgency, the reasoning of the decision also includes some interesting new aspects regarding provisional measures.

Facts of the case/technical background
Pharma-aktiva GmbH manufactured the attacked product in Germany, and ALDI promoted the attacked product on their website(s), including in a leaflet for the week of August 12, 2024, and the product was offered and sold in supermarkets in Germany and Austria. Applicant made several test purchases after one of their employees had first found the product on August 13, 2024, and conducted laboratory tests, before filing their application for provisional measures with the UPC on September 20, 2024.

Applicant asserted direct infringement of independent claim 1 of EP ‘363, which is directed at a composition for combating ectoparasites and/or their ova, with specific proportions of a low viscosity linear polysiloxane and a higher viscosity linear polysiloxane and at least one spreading agent.

Two interesting aspects of this case are that

(1) pharma-aktiva GmbH had issued a cease-and-desist declaration to Applicant in reaction to a warning letter based on an alleged violation of unfair competition law and that
(2) Respondents had stated that they were in the process of destroying any attacked products in store and stopped distributing such products.

Decision by the Local Division
The Local Division decided largely in favor of Applicant, granting the requests for injunctive relief and seizure of the attacked products based on infringement of claim 1 of EP ‘363 and ordering provisional cost reimbursement, but dismissing Applicant’s request for information.

Legitimate interest – cease-and-desist declaration
The Court found that Applicant had a legitimate interest in bringing legal proceedings, since the cease-and-desist declaration by pharma-aktiva GmbH did not prevent the distribution of patent-infringing products under a different name and with different packaging, since it was based on unfair competition and did not refer to the wording of the asserted claim 1 of EP ‘363. Therefore, Applicant’s omission to mention the declaration was irrelevant.

This means, a contrario, that a cease-and-desist declaration referring to the asserted patent claim(s) must be mentioned in any application for provisional measures or infringement action, and that such declaration may lead to the application or action being dismissed due to lack of a legitimate interest, insofar as the asserted claims are already included in the declaration.

Claim construction and contestation of facts
The claim construction part of the reasoning is relatively short, explaining that the viscosity values required by claim 1 of EP ‘363 had to be present at room temperature and that a spreading agent pursuant to the claim was a means supporting the spreading of the composition in the hair and increasing its creeping properties.

Regarding the realization of the claim features, the Court found that Respondents did not validly contest the facts stated by Applicant and that, therefore, these statements were to be held to be true pursuant to Rule 171.2 RoP. Indeed, Respondents’ defense was limited to contesting that Applicant had carried out the laboratory tests for identifying proportions and viscosity correctly and conclusively. However, contrary to their secondary burden of proof, they did not contest the specific values submitted by Applicant based on these tests. Notably, the Court also found that such obligation to contest specific facts – rather than only the method by which they were obtained – applied not only to the manufacturer of the attacked product, but also to distributors and retailers like ALDI.

Validity and urgency
With regard to the requirements of validity and urgency, the Local Division follows the already established UPC case law:

The order confirms that a patent does not have to be “battle-tested”, i.e. survived two-sided proceedings, and that the Respondent(s) must substantiate and, given the case, prove that it is more likely than not that patent-in-suit is invalid (cf. CoA, order of February 26, 2024, in NanoString v 10x Genomics, UPC_CoA_335/2023). In the section on validity, the Court addresses Respondents validity attacks in detail but dismisses them in the end.

With regard to urgency, the Court also confirms that, contrary to the so-called Duesseldorf practice in national patent infringement proceedings, there is no general “urgency deadline” of one month, in particular since substantiating infringement required laboratory tests and finds that filing a request for provisional measures within six weeks was sufficient in the case at hand.

Weighing of interests
Factors in favor of Applicant when weighing the Parties’ interests were that – in addition to infringement being uncontested (cf. above) and validity confirmed to a high degree of certainty – EP ‘363 will lapse in July 2026 and that the attacked product was sold at a fifth of the price of the Applicant’s own product. On the other side, the cease-and-desist declaration did not tip the scale in favor of Respondents because it did not prevent them from producing and marketing the product under a different name and with a different packaging, and neither did the destruction of stored products or the distribution stop, because those also meant that an injunction did not affect Respondents as much.

Claim for information
The Court left it open whether Respondent(s) can be ordered to provide information pursuant to Art. 67 UPCA in provisional proceedings, in principle, pointing to the main counter-argument that the transfer of information cannot be undone and that, therefore, the result of the subsequent main proceedings is anticipated in that regard. The Court found that, in any case, a communication of information can only be ordered under special circumstances, which Applicant did not show in the case at hand. In this course, the decision mentions product piracy cases as an example for such special circumstances, where there is a large number of infringing products with unknown distribution channels and waiting for the main proceedings would effectively obstruct the enforcement of patent rights.

The decision by the Mannheim Local Division can be accessed here (only in German).

Take aways:
This decision confirms that a cease-and-desist declaration should be worded based on the patent claim(s) in question to avoid infringement proceedings, and that merely stopping distribution of products without such cease-and-desist declaration may well be regarded as irrelevant by the Court. Finally, it is also one of the first steppingstones on the path to specifying how to (validly) contest facts.