A guide to the UPC and the UP - Flipbook - Page 285
15-26 More specifically, the term “intermediary” has been widely construed to cover “any person who
carries a third party’s infringement of a protected work or other subject-matter in a network”. 38
Further, the services of internet service providers (the intermediaries) are used by infringers as
they allow “customers to access protected subject-matter made available to the public on the
internet by a third party”. 39 When balancing the various rights at issue, the blocking injunctions
granted have been held not to infringe the substance of the internet service providers’
freedom to conduct business. 40
Scope of the Injunction
15-27 As a matter of principle, a decision is based on the matter in dispute. How the matter
in dispute will be determined under the RoP is uncertain, but it is of importance as it
affects the width of an injunction. There are two approaches as follows:
– An injunction could be framed following the wording of the claims of the patent, resulting in
an injunction that is wide enough to restrain any infringement, not just prohibit the
particular product or process that has been pleaded. This is the common approach in a
number of Contracting Member States including the Netherlands 41 as well as the former
Contracting Member State, the UK 42 or
– An alternative approach, for example, is taken by some courts in Germany. The injunction is
framed by the wording of the claim in conjunction with the alleged infringing product or
process and generally only extends to embodiments which are identical or essentially
identical to the alleged infringing product or process.
15-28 The second, narrower form of injunction has an advantage in that the injunction will be much
easier to interpret, particularly for an enforcement authority which has not been involved in the
main proceedings and, especially, if that enforcement authority is a layperson with regard to
patent law (for example, a bailiff) as there can be no opening for a second interpretation of the
scope of the matter in dispute. However, in some cases, a design-around can be easily
generated making the injunction effectively worthless. Since there is nothing in the RoP to
deal with such a situation, the claimant will have to file a second infringement action on the
merits 43 and, if necessary, apply to the Court for a provisional injunction. 44 When considering
the application for a provisional injunction, the Court will take the reasoning, especially the
claim construction, of the first decision into account when exercising its discretion. 45
15-29 In comparison, in the case of a generally worded injunction, the concern would be that if, for
example, the enforcement authority is a national court specialising in patent litigation, it may
use its discretion to decide on whether a particular product or process falls within the scope of
the matter in dispute. The very situation that the Unitary Patent Package was intended to
harmonize could therefore be re-established: there could be diverging decisions by national
courts over the scope of protection. This would, in turn, lead to a fragmentation and distortion
of the overall enforcement of the Court’s decision and even to forum shopping for enforcement
proceedings based on broad claim (re-)interpretation by the local enforcement authority.
The question then arises as to whether it would be possible to revert to the original division of
38
39
40
41
42
43
44
45
UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH (C-314/12) ECLI:EU:C:2014:192 at [30].
(C-314/12) at [32].
art.16 Charter of Fundamental Rights of the European Union (OJ No. C 364, 18.12.2000, p.1).
The Netherlands Supreme Court (the Hoge Raad) in Euromedica v Merck 15.04.2005, ECLI:NL:HR:2005:AS5238, held that, to the
extent that future acts are covered by an injunction in general terms, the scope of the injunction can be deemed limited to
acts regarding which there can be no serious doubt that, in view of the grounds on which the injunction was handed down,
they constitute infringements.
In Coflexip v Stolt Comex Seaway [2000] EWCA Civ 242 at [63], the Court of Appeal held that the narrow injunction granted
by the court at first instance was incorrect in ambit, despite such injunctions being the normal form in Germany.
art.32(1)(a) UPCA.
art.62 UPCA.
r.211(2) RoP.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 275
