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ACT 23636/2024

—·(EP number not stated in excerpt - herbicide composition patent)

Case details
Status
—
Action
Provisional measures
Category
Provisional Measures
Parties
Claimants
Reps: Matthias Zigann; Walter Schober; Tobias Pichlmaier
Division
Munich LD
Judges
Language
—
First decided
Aug 27, 2024
Decisions
  • 2024-08-27
    PI grantedPreliminary injunctionApplication for provisional measures

    Munich Local Division granted a preliminary injunction (inter partes) against respondents ordering them to cease and desist from manufacturing, offering, placing on the market, using, exporting or possessing a herbicide composition (Kagura) infringing a patent with claims directed to a composition, across multiple UPC contracting states. The court held that for a product composition claim the applicant need only allege and prove the composition had all features of the claim; it is not required to explain why the composition had those features. Distributing infringing products outside contracting states while advertising under the same name inside creates a risk of first infringement. An actus contrarius is insufficient to eliminate such risk; a cease-and-desist declaration with penalty clause is required. Respondents may revoke the injunction if applicant does not commence main proceedings within 31 calendar days.

    Legal issues:Provisional measures (Art. 62 UPCA, R. 206 RoP)Product composition claim - burden of proofRisk of first infringementCease-and-desist declaration requirementValidity assessment in PI proceedings (best 3 arguments rule)Temporal urgency (2 months rule - Munich LD)
Documents
  • D2C8356021A081BF59CD6DA6D87C4C61_en.pdf2024-08-27ENGLISH
Plain-English summary

An unnamed applicant (proprietor of a herbicide composition patent) obtained a preliminary injunction from the Munich Local Division against respondents manufacturing and distributing the 'Kagura' herbicide product, covering multiple UPC contracting states. The court established key procedural principles: that product composition claims require proof only that the composition has all claim features (not why), that cross-border distribution combined with domestic advertising creates risk of first infringement, and that only a cease-and-desist declaration with a penalty clause (not an actus contrarius) sufficiently eliminates infringement risk. The Munich Local Division maintained its two-month temporal urgency window, diverging from Düsseldorf's one-month approach.

Accepted arguments
What the court agreed with — by party.

  • For a product composition claim, it is sufficient to allege and prove the composition had all features of the claim; applicant need not explain why the composition had those features

    ClaimantLegal basis: Art. 25 UPCA

    Note: The Munich Local Division held that the burden of pleading and proof for a product composition claim requires only demonstrating the composition's features, not explaining the mechanism or reason those features are present.

  • Distributing infringing composition outside contracting states while advertising under the same name within contracting states creates risk of first infringement within contracting states

    ClaimantLegal basis: Art. 62(1) UPCA

    Note: The court found that cross-border distribution and advertising under the same product name creates a legally cognisable risk of first infringement in contracting states where the patent is valid.

  • Cease-and-desist declaration without penalty clause is insufficient to eliminate risk of first infringement; actus contrarius not sufficient

    Claimant

    Note: The court held that only a cease-and-desist declaration with a penalty clause adequately eliminates risk of first infringement; an actus contrarius alone is insufficient.

  • Temporal urgency of two months applies (Munich Local Division practice)

    ClaimantLegal basis: R. 211.4 RoP

    Note: The Munich Local Division adhered to its two-month urgency window, diverging from the Düsseldorf Local Division's one-month approach, citing diverging case law.

Rejected arguments
What the court did not agree with — and why.

  • Application for seizure of goods should be maintained in full

    Claimant

    Reason: The applicant partially withdrew the seizure application; the remaining injunction application was successful.

Key legal principles
Doctrines and rules cited in the reasoning.
burden of proof for product composition claims: allege and prove composition features, not reasons for themrisk of first infringement from cross-border distribution and advertisingcease-and-desist declaration with penalty clause required to eliminate infringement risk; actus contrarius insufficientnumber of validity arguments in PI proceedings limited to best three from respondent's perspectivetemporal urgency in Munich Local Division: two months (diverging from Düsseldorf's one month)summary proceedings: full legal issue examination but limited to selected number of issues

Browse other cases on this principle.

Claim construction notes

The patent claim was directed to a herbicidal composition comprising at least one sulfonylurea herbicide, at least one HPPD-inhibiting herbicide, and at least one saturated or unsaturated fatty acid from 1% to 95% by weight. The claim construction issue was primarily about what the applicant must prove for a composition claim (that the composition has all claimed features), not what mechanism produced those features.