Biolitec v Light Guide Optics & S.I.A. Lightguide (UPC_CoA_540/2024)
Decision date:
24 February 2025
Osborne Clarke summary
- Biolitec brought an action for provisional measures (preliminary injunction) in the Düsseldorf LD against two Lightguide companies for alleged infringement of its European patent with unitary effect relating to laser fibres for minimally invasive laser therapies. The parties and their groups had been involved in patent disputes in several European countries since 2016 in relation to other Lightguide devices and another Biolitec patent from the same patent family.
- At first instance, the Düsseldorf LD dismissed Biolitec's preliminary injunction application without hearing the defendant due to lack of necessity. Biolitec had not demonstrated that the preliminary injunction was objectively necessary, that compensation in the main action would not be sufficient, and that potential harm would be caused to it as a result of the preliminary injunction not being granted.
- The Court of Appeal upheld the Düsseldorf LD's decision. It explained that provisional measures proceedings are "short and fast" with an "expedited procedure", meaning that they do not allow for full examination of the applicant's entitlement to commence proceedings, validity of the patent and the alleged infringement. As such, the expedited provisional measures procedure cannot be used if proceedings on the merits can be awaited. If proceedings on the merits can be awaited, then provisional measures are not necessary as proceedings on the merits offer more procedural safeguards.
- In weighing up the interests of the parties pursuant to Article 62(2) UPCA and Rule 211.3 RoP, the court will take into account the potential harm for either of the parties resulting from granting or refusing the preliminary injunction. The court will not only take into account the harm for either party, but also "the time factor"; that is, whether it is possible to await proceedings on the merits. Where any delay would cause irreparable harm to the patent owner, provisional measures are considered necessary (although irreparable harm is not a necessary condition for the ordering of provisional measures).
- The Court of Appeal held that the Düsseldorf LD rightly found that Biolitec had failed to demonstrate that a preliminary injunction was necessary to protect its market share or prices or for any other purpose that could not await a decision on the merits.
- The Court of Appeal stated that the fact that the Düsseldorf LD did not make any explicit findings on entitlement, validity or infringement did not disadvantage Biolitec in the discretionary weighing of the parties' interests. The Düsseldorf LD had "implicitly assumed" that the application must be rejected even if the court had been convinced with a sufficient degree of certainty as to entitlement, validity and infringement, because the necessity of the preliminary injunction had not been proved.
- In an attempt to justify the necessity of the preliminary injunction, Biolitec raised a new price erosion argument during the oral hearing at the Court of Appeal. Pursuant to Rule 222.2 RoP, requests, facts and evidence not submitted by a party during proceeding before the Court of First Instance may be disregarded by the Court of Appeal.
- In exercising its discretion in this regard, the Court of Appeal shall take into account whether the new submissions could not reasonably have been made during proceedings before the Court of First Instance (Rule 222.2(a) RoP) and the relevance of the new submissions for the decision on appeal (Rule 222.2(b) RoP). These points must be especially considered "when new requests, facts and evidence are introduced at the very last step of the oral hearing". The Court of Appeal decided that Biolitec had not justified why the price erosion argument could not reasonably have been raised during the first instance proceedings. The point was disregarded and Biolitec's appeal was rejected.
Issue
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