2025 Week 10
We love having a couple of contrasting UPC decisions here at UPC Weekly. This time we have two new preliminary injunction (PI) decisions by the UPC Court of Appeal which go in different directions. These help to shed further light on the ground that the patentee needs in order to satisfy the court that:
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the relevant product (probably) does infringe the patent
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the PI is necessary
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the patentee has acted with the required urgency
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the balance of interests favours the PI being granted
Legal framework
Where do these requirements come from? Article 62 UPCA provides the basis for preliminary injunctions to restrain patent infringement. Article 62.2 UPCA suggests that the court should take account of the competing interests of the patentee and alleged infringer. This is further emphasised in the Rules of Procedure (RoP) in Rules 206 and 211:
Rule 206 – Application for provisional measures
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2. An Application for provisional measures shall contain:
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(c) the reasons why provisional measures are necessary to prevent a threatened infringement, to forbid the continuation of an alleged infringement or to make such continuation subject to the lodging of
guarantees;
(d) the facts and evidence relied on in support of the Application, including evidence to support the claim that provisional measures are necessary including the matters referred to in Rule 211.2 and .3;
Rule 211 – Order on the Application for provisional measures
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2. In taking its decision the Court may require the applicant to provide reasonable evidence to satisfy the Court with a sufficient degree of certainty that the applicant is entitled to commence proceedings
pursuant to Article 47, that the patent in question is valid and that his right is being infringed, or that such infringement is imminent.
3. In taking its decision the Court shall in the exercise of its discretion weigh up the interests of the parties and, in particular, take into account the potential harm for either of the parties resulting from the
granting or the refusal of the injunction.
4. The Court shall have regard to any unreasonable delay in seeking provisional measures.
In UPC Weekly 2024 Week 34 we provided a round-up of the PI decisions up to that point and in UPC Weekly 2024 Week 36 we reviewed three further PI decisions at first instance, one of which we are revisiting here.
Biolitec Holding v Light Guide Optics – PI refused by UPC Court of Appeal
Biolitec applied for a PI on 14 August 2024 at the UPC LD Düsseldorf, based on EP 3685783 B1, against competitor Light Guide Optics. The patent was a third generation divisional, granted on 17 July 2025 and then opposed at the EPO by Light Guide Optics two days later.
The alleged infringement was Light Guide Optics’ “Infinity Side Fiber”, an optical probe intended for insertion along a varicose vein to irradiate the interior of the vein.
The Local Division refused the PI. Interestingly, they did this without a hearing and without any submissions from the defendant. In the view of the Local Division, the patentee had not substantiated why a PI was necessary.
A key point was that the “Infinity Side Fiber” had been on the market and competing with the patentee’s products since at least 2021. Accordingly, granted a PI would change the status quo. There was no evidence that a PI was required in order to protect Biolitec’s market share pending the main infringement proceedings.
Biolitec argued that the exhibition of the “Infinity Side Fiber” at an upcoming trade fair should be taken into account. However, there was no evidence that this would significantly change the market share position.
Biolitec also tried to argue that customers would stock large volumes of the products, that there may be upcoming tenders that would be affected by the competing product and that there may be price erosion.
The Court of Appeal dismissed all these arguments, agreeing with the Local Division that there was insufficient evidence that a PI was necessary to the extent that Biolitec could not await the outcome of the infringement proceedings on the merits. However, it was clear that Biolitec demonstrated the required urgency in starting the PI application – this was filed a month after grant of the patent, which would normally be fast enough. However, urgency itself is not sufficient. The patentee must also show why grant of a PI is necessary where doing so would disturb the status quo in the market.
Sumi Agro v Syngenta – PI approved by UPC Court of Appeal
This is the UPC Court of Appeal decision in the appeal from the decision of the UPC LD Munich, granting a PI based on EP 2152073 B1. We reviewed that first instance decision here. The PI was granted to restrain Sumi Agro’s 2023 version of its product Kagura.
In the appeal, there remained a dispute as to whether the claims were infringed and whether the patent was valid. New evidence had been submitted in the appeal by both parties. Most of this had been rejected by the Court of Appeal. However, new evidence from Syngenta concerning analysis of the Kagura 2024 product was allowed because this could not have reasonably been filed at first instance.
Accordingly, in the appeal there was evidence from Syngenta to show that the Kagura 2023 product and the Kagura 2024 product infringed the patent. The difference between the products was that different rapeseed oils from different suppliers were used. In the appeal, Sumi Agro explained that the Kagura 2023 product was no longer on the market anywhere. Therefore, relying on infringement based on the 2023 product alone, the necessity of a PI would need to be reconsidered.
In the view of the Court of Appeal, Sumi Agro would have needed to provide a full counter-analysis of the products in order to rebut the accuracy of Syngenta’s analysis. They had not done so and so the Syngenta analytical results were taken to be correct.
After interpreting the scope of protection, the court decided on balance that the Kagura 2024 product infringed the patent.
Sumi Agro’s attacks on novelty and inventive step failed. Sumi Agro tried an argument that the technical effect of the invention was not provided across the scope of the claims. This argument was based on the Examples in the patent only occupying in a narrow range of 63.5-68.5%, compared with a claimed range of 1-95%. There was no substantiation of this argument with evidence and so the Court of Appeal dismissed it, deciding that the patent does enough to persuade the skilled person that the technical effect is achieved across the scope of the claim.
Next the Court of Appeal turned to the questions of necessity and weighing of the interests of the parties. Syngenta’s product is Elumis and the alleged infringement is about 60% cheaper. Syngenta argued that the competing product would significantly cut into their market share. The Court of Appeal considered it credible that there would be permanent price erosion. It was also relevant that a herbicidal composition has a seasonal demand and that the decision on the merits may come too late for this season.
Sumi Agro argued that Syngenta should have provided evidence of how the sales have been affected while both products were on the market. But the Court of Appeal said that this was not necessary in this case. A PI is available even before actual sales (e.g. making or offering). Therefore, it should not be necessary to wait for actual sales, and their effect, before being able to award a PI.
Considering whether Syngenta had acted with the required urgency, the Court of Appeal concentrated on the risk of infringement presented by the 2024 product. The original PI application had been filed on 30 April 2024. The defence was filed on 4 June 2024 by Sumi Agro explaining the 2023 and 2024 products. Syngenta obtained a sample of the 2024 product on 4 July 2024. Various customs and transport issues meant that analysis was not completed (in the US) until 9 September 2024. Sumi Agro filed their appeal on 18 September 2024 and Syngenta filed their response to the appeal on 11 October 2024 with the 2024 product evidence. The Court of Appeal said that Syngenta had therefore acted with sufficient urgency with respect to the 2024 product.
Compare and contrast
These appeal decisions are similar in that they upheld the decision at first instance. But the key differences seem to be the status quo in the market in the two cases and the way in which the patentees set out their evidence and arguments about how the alleged infringement would lead to irreparable harm. It is interesting to see how the Court of Appeal separates the issues of necessity and urgency in the two cases. Urgency is always required and if the patentee delays unduly, this may be reason enough not to award a PI. But for a PI to be necessary, the patentee in these cases needed to show why they could not reasonably be expected to wait for the outcome of the main infringement proceedings on the merits.
