Landgericht Mnchen I Regional Court Munich I Injunctions

Landgericht München I Regional Court Munich I Injunctions and Flexibility in Patent Law The scope and style of injunctions- specific orders or a duty to abstain? 4 -5 April 2019 – LMU, Munich – Dr. Matthias Zigann

Agenda Part I: The scope and style of injunctions - specific orders or a duty to abstain? Part II: Does cease also include recall? The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 2

Requirements by statutes Sec. 253 Code of Civil Procedure - Statement of claim: (2) The statement of claim must include: 2. Exact information on the subject matter and the grounds for filing the claim, as well as a precisely specified petition. Sec. 313 Code of Civil Procedure - Form and content of the judgment: (1) The judgment shall set out: 4. The operative provisions of the judgment; The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 3

Requirements by statutes Sec. 890 Code of Civil Procedure - Forcing the debtor to cease and desist from actions, or to tolerate actions (1) Should the debtor violate his obligation to cease and desist from actions, or to tolerate actions to be taken, the court of first instance hearing the case is to sentence him for each count of the violation, upon the creditor filing a corresponding petition, to a coercive fine and, for the case that such payment cannot be obtained, to coercive detention or coercive detention of up to six (6) months. The individual coercive fine may not be levied in an amount in excess of 250, 000 euros, and the coercive detention may not be longer than a total of two (2) years. Sec. 883 Code of Civil Procedure - Surrender of specific movable objects (1) If the debtor is to surrender a movable asset or a number of specific movable objects, the court-appointed enforcement officer is to take them away from the debtor and to physically submit them to the creditor. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 4

Requirements by general case law Operative provisions of the judgment must be 1) executable 2) precisely specified The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 5

Requirements by general case law precisely specified ( = no interpretation needed): → defendant must be informed exactly about his obligations to pay, disclose information, to cease and desist from actions, or to tolerate actions to be taken → court /bailiff enforcing the judgment must be able to understand the subject of the operative provisions just by reading the wording without the need of referring to the reasoning of the judgment, the file, appendixes or other information → if a precisely specified wording is not possible reference may be made to appendixes of the judgment if these appendixes precisely specify the defendants obligations → vague operative provisions are not executable and therefore void The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 6

Material patent law If patent owner has shown a danger of repetition or of first infringement in respect to a specific product (= attacked embodiment) he is entitled to an injunction ordering the defendant to cease and desist from patent infringing actions in respect to - this specific product (= attacked embodiment) - “similar in core” (kerngleich) embodiments If in addition to that he as also shown a danger of first infringement in respect to further not yet specifiable embodiments - further not yet specifiable embodiments = patent claim language The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 7

Material patent law If patent owner has shown a danger of repetition or of first infringement in respect to a specific product (= attacked embodiment) he is entitled to an injunction ordering the defendant to cease and desist from patent infringing actions in respect to - this specific product (= attacked embodiment) In theory only! - “similar in core” (kerngleich) embodiments If in addition to that he as also shown a danger of first infringement in respect to further not yet specifiable embodiments - further not yet specifiable embodiments = patent claim language The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 8

Requirements by statutes → Patent owner may ask for • exactly what he is entitled to (OK) • more (action to be partly dismissed) • less (Sec. 308) Section 308 Code of Civil Procedure - Binding effect of the parties’ petitions (1) The court does not have authority to award anything to a party that has not been petitioned. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 9

Requirements by patent case law Wording of order to cease and desist from patent infringing activities has to name and describe specific activities (e. g. manufacture, use, import) and the specific form of infringement (= attacked embodiment) 1) by e. g. including photographs/drawings of the infringing product Scope = limited to exactly this product as shown in the photographs/drawings 2) by repeating the claim wording of the infringed patent claim and amending the wording in respect of those features which are under dispute between the parties or where the attacked embodiment deviates from the literal understanding of the wording of these feature (in particular in the case of an equivalent infringement) Scope = 1) plus “similar in core” (kerngleich) embodiments The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 10

Requirements by patent case law … 3) by repeating the claim wording of the infringed patent claim Scope a = 2) - if the relief sought is (as most of the times) limited to this scope although plaintiff did not file a precisely specified petition and the court clearly did not want to grant more Scope b = 2) plus other embodiments - only admissible if plaintiff has shown a danger of first infringement in respect to these other embodiments as well - The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 11

Requirements by patent case law … 4) by repeating the claim wording of the infringed patent claim without further amendments, including photographs/drawings of the infringing product with “namely” and mentioning in the reasons that the duty to abstain also extends to “similar in core” (kerngleich) embodiments Scope = 2) → plaintiff did not file a precisely specified petition → plaintiff did not amend the petition either → FCJ case law: petition is still admissible in case of literal infringement → judge finds for literal infringement → judge encounters difficulties to amend claim wording on his own → only alternative would be to draft according to 1 (= limited scope) → solution: hybrid of 1) and 3 a) The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 12

The Epilady/Improver Case Patent EP 123 456 B 1: Curved helical spring Attacked embodiment: Curved rubber rod with slits The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 13

Operative provisions of the judgment • The defendant is a patent infringer. • The patent is (valid and) infringed. • Defendant is ordered not be evil. • Defendant, you know what you have done, don`t do it again! • Defendant is ordered to stop what he is doing. • Defendant is ordered to abstain from infringing… - patents. - the plaintiffs patents. - EP 123 456 B 1. - Claim 1 of EP 123 456 B 1 within the territory of the Federal Republic of Germany. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • The defendant is a patent infringer. • The patent is valid and infringed. • Defendant is ordered not be evil. • Defendant is ordered to stop what he has done. X • Defendant is ordered to abstain from infringing: - patents. - the plaintiffs patents. - EP 123 456 B 1. - Claim 1 of EP 123 456 B 1 within the territory of the Federal Republic of Germany. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • Defendant is ordered to abstain from manufacturing, offering, placing to the market, using, importing or storing for these purposes within the territory of the Federal Republic of Germany - a device according to claim 1 of EP 123 456 B 1. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • Defendant is ordered to abstain from manufacturing, offering, placing to the market, using, importing or storing for these purposes within the territory of the Federal Republic of Germany • a device according to claim 1 of EP 123 456 B 1. X The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (1) Defendant is ordered to abstain from … - the Lady Remington Liberty as shown in the following photographs and drawings: The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (1) Defendant is ordered to abstain from … - the Lady Remington Liberty as shown in the following photographs and drawings: √ FCJ GRUR 2006, 311 – Baumscheibenabdeckung (Snag Cover) The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (2) Defendant is ordered to abstain from manufacturing, offering, placing to the market, using, importing or storing for these purposes within the territory of the Federal Republic of Germany - a depilatory device having a curved helical spring driven by a motor … (claim 1 of EP 123 456 B 1). The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (2) Defendant is ordered to abstain from manufacturing, offering, placing to the market, using, importing or storing for these purposes within the territory of the Federal Republic of Germany • a depilatory device having a curved helical spring driven by a motor … √ Düsseldorf Courts in cases of literal infringement, (claim of EP 123 456 B 1). even if the 1 infringement of a particular feature had been under dispute between the parties The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (2) Defendant is ordered to abstain from manufacturing, offering, placing to the market, using, importing or storing for these purposes within the territory of the Federal Republic of Germany X FCJ GRUR 1986, 803 – Formstein • a depilatory device having a (Shaped curved helical Brick) spring driven by. FCJ a motor GRUR… 1992, 40 [41] - Beheizbarer Atemluftschlauch (Heated Breathing Tube) Düsseldorf Courts in case of literal infringement, 2005, 569 – Blasfolienherstellung (claim of EPFCJ 123 GRUR 456 B 1). even if the 1 infringement of a particular feature had been under (Blown Extrusion-film Manufacture) dispute between the parties FCJ GRUR 2012, 485 – Rohrreinigungsdüse II (Go-devil Nozzle II) √ The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (3) Defendant is ordered to abstain from … - a depilatory device having a curved rubber rod with slits driven by a motor … (claim 1 of EP 123 456 B 1) (optional: in particular/namely the Lady Remington Liberty as shown in the following photographs and drawings: ) The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (3) Defendant is ordered to abstain from … • a depilatory device having a curved rubber rod with slits driven by a motor … √ (claim 1 of EP 123 456 B 1) FCJ GRUR 1986, 803 – Formstein (Shaped Brick) in particular/namely the Lady Remington Liberty as FCJ GRUR 1992, 40 [41] - Beheizbarer Atemluftschlauch shown in the following and drawings: (Heatedphotographs Breathing Tube) FCJ GRUR 2005, 569 – Blasfolienherstellung (Blown Extrusion-film Manufacture) FCJ GRUR 2012, 485 – Rohrreinigungsdüse II (Go-devil Nozzle II) The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (4) Defendant is ordered to abstain from … - a depilatory device having a curved helical spring driven by a motor … (claim 1 of EP 123 456 B 1) namely the Lady Remington Liberty as shown in the following photographs and drawings: Complaint and reasoning: duty to abstain also extends to “similar in core” (kerngleich) embodiments The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Operative provisions of the judgment • (4) Defendant is ordered to abstain from … - a depilatory device having a curved helical spring driven by a motor … (claim 1 of EP 123 456 B 1) √ in particular/namely the Lady Remington Liberty Regional Court Munich I, 7 th division as shown in the following photographs and (Hybrid) drawings: Complaint and reasoning: duty to abstain also extends to “similar in core” (kerngleich) embodiments The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann

Conclusion Part I Drafting a precisely specified petition is difficult but possible and advantageous: - In line with law and FCJ - Focus on exact features of attacked embodiment - Ready for a judgment by confession - Ready for enforcement by bailiff and/or different judges The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 27

Part II Does cease also include recall? The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 28

Does cease also include recall? German Patent Act Sec. 139 (1): Any person who uses a patented invention contrary to sections 9 to 13 may, in the event of the risk of recurrent infringement, be sued by the aggrieved party for cessation and desistance. This right may also be asserted in the event of the risk of a first-time infringement. Sec. 140 a (3): Any person who uses a patented invention contrary to sections 9 to 13 may be sued by the aggrieved party for recall of the products which are the subject-matter of the patent or for definitive removal of the products from the channels of commerce. The first sentence shall also apply in the case of products which have been produced directly by means of a process which is the subject-matter of the patent. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 29

Does cease also include recall? Recall Definitive removal of the products from the channels of commerce based on statutes No success owed Success owed The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 30

Does cease also include recall? German Code of Civil Procedure Sec. 308 (1): The court does not have authority to award anything to a party that has not been petitioned. Case Law: As a rule a preliminary injunction shall not prejudice proceedings on the merits. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 31

Does cease also include recall? FCJ Case Law Decision of 29 September 2016 – Case No. I ZB 34/15 – IIC 2017, 612 - Rückruf von RESCUEProdukten = Recall of RESCUE Products In the absence of indications to the contrary, the order to cease and desist a conduct that has given rise to a continuing interference is as a rule to be interpreted as encompassing not only ceasing such conduct, but also performing possible and reasonable acts to remedy the interference. This can include the obligation to exert influence on third parties to the extent possible and reasonable if this is necessary to eliminate the interference. Accordingly, an obligor who has been ordered to cease and desist selling a product must as a rule recall the product in order to ensure that products already delivered are not further sold by its customers. The question of which measures are appropriate to remedy a continuing interference under consideration of the principle of proportionality can be left to the execution proceeding if the obligor has not already claimed in the main proceedings that it is impossible or unreasonable for him to perform the actions necessary according to the situation to eliminate the interference. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 32

Does cease also include recall? FCJ Case Law Decision of 19 November 2015 – Case No. I ZR 109/14 - GRUR 2016, 720 – HOT SOX If debtor recalls in course of a preliminary injunctions demanding a cease and desist (only) obligor is obliged to compensate for these damages as well in case the preliminary injunctions is set aside later. Decision of 13 November 2013 – Case No. I ZR 77/12 - GRUR 2014, 595 – Vertragsstrafenklausel = Undertaking Decision of 4 May 2017 – Case No. I ZR 208/15 – GRUR 2017, 823 – Luftentfeuchter = Air Dehumidifier Undertaking to cease and desist (only) also includes obligation to recall. Decision of 11 October 2017 - Case No. I ZB 96/16 – GRUR 2018, 292 - Produkte zur Wundversorgung = Products for wound treatment Preliminary injunction demanding cease and desist (only) also includes obligation to ask downstream partners for the time being not to put the delivered products on the market. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 33

Does cease also include recall? Higher Regional Court Düsseldorf Decision of 21 September 2017 – Case No. I-2 W 4/17 - Beck. RS 2017, 142776 FCJ case law to be applied to preliminary injunctions in patent law as well. The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 34

Situation at the moment Recall based on a cease and desist order/obligation Recall based on a recall order/obligation giving rise to a continuing interference - No specific actions Specific actions In view to concrete further acts of infringement by third parties the defendant would benefit from and could influence. - Test on proportionality post grant Test on proportionality prior to grant PI possible PI generally not possible Non-compliance = coercive fine / coercive detention (Ordnungsgeld/-haft) Non-compliance = coercive penalty payment / coercive punitive detention (Zwangsgeld/-haft) The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 35

Situation at the moment Recall based on a cease and desist order/obligation Preliminary proceedings Main proceedings / Undertaking Obligation to ask downstream partners for the time being not to put the delivered products on the market Obligation to seriously request the customer to return the infringing products and to reimburse the costs which arise from such a return Identical text in operational part of the court decision / undertaking! The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 36

Conclusion Part II Ø interpretation needed ≠ precisely specified Ø Obligation to ask downstream partners for the time being not to put the delivered products on the market = final recall in practice Ø Uncertainties for stakeholders and courts, especially in preliminary proceedings - Amount of possible damages? - Amount of security? - Balance of interests? - Communication between court and applicant prior to grant may trigger FCC case law on fair trial (NJW 2018, 3631) → no ex-parte PI possible Ø Amendment of the law is preferred The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 37

Conclusion Part II Ø For the time being: - Correct interpretation of what is claimed and granted is essential and in the focus of all discussed FCJ decisions look back at slide 32: “in the absence of indications to the contrary” - Recommendation Be clear and concise and carve out anything not desired when drafting - petitions - undertakings - operational parts of court decisions! The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 38

Thank you very much for your attention! The scope and style of injunctions - Specific orders or duties to abstain? – 4 -5 APRIL 2019 - Dr. Matthias Zigann 39