[UPCKat] Preliminary injunctions in the UPC: CUP&CINO v Alpina Coffee Systems

The UPCKat getting into the spirit of the 
proceedings

As part of our UPCKat reporting on the latest UPC developments,  the IPKat is kicking off a series of reporting on preliminary injunctions that analyzes the development of preliminary injunction case law from the UPC.  With our guest UPCKat team in the form of UPC advocate and guest UPCKat Agathe Michel-de Cazotte and members from the team at Carpmaels we kick off the first post in the series going back to September 2023 and the Vienna local division.  

Over to the team to report on 13 September 2023 decision in CUP&CINO Kaffeesystem-Vertrieb GmbH & Co KG v Aplina Coffee Systems GmbH (UPC_CFI_182/2023):

Background to the case

The patent in suit related to a method and device for producing milk foam. The patentee, CUP&CINO, requested a preliminary injunction against a coffee machine with milk frothers manufactured by the defendant, Alpina Coffee Systems. 

The Vienna Local Division rejected the request on the basis that there was no infringement of the patent in suit. 

Guidance on the interpretation of the patent

Relatedly, it gave guidance on the scope of protection of a European Patent: it must be interpreted based on (the well-known) article 69 (1) EPC and its interpretive Protocol together with article 24 (1)(c) Unified Patent Court Agreement (see p. 14). CUP&CINO had argued that Alpina Coffee Systems’ product realised all features of claim 2. The question of interpretation came up in relation to the length of a line, as claim 2 did not include any mandatory specifications for that length. The Court considered that the length of the contested embodiment was far removed from the length required by the patent (see p. 14-18).   

Because there was no infringement, relevant topics such as the weighing of the parties' interest and the question of urgency are left open by the Court (see p. 18). Nevertheless, this case is still worth a further analysis as the Court commented on opt-outs and recoverable costs in PI proceedings.  

A request to opt-out after PI proceedings have been filed is invalid  

Rules 5 and 5A Rules of Procedure (RoP) cover the possibility to opt-out from the exclusive competence of the UPC, or to withdraw such opt-out. Rule 5(6) RoP includes an exemption to that rule and determines that if an “action” has been filed prior to opt out, the opt-out will be ineffective. This has the effect that pending proceedings cannot be removed from the jurisdiction of the Court by using opt-outs to prevent for example an expected negative decision (p. 12).

After the preliminary injunction proceedings were filed by CUP&CINO on 27 June 2023, CUP&CINO lodged an application to opt-out the patent in suit on 6 July 2023. More than a month later, CUP&CINO lodged another application, but this time to withdraw that opt-out (apparently the patent attorney who requested the opt-out was not authorisesd).

The Court considered whether the application for PI proceedings was admissible given the opt-out application. The Court decided that it was, and that the opt-out application was invalid based on Rule 5(6) RoP, given that an “action” also includes PI proceedings (see p. 11-12). This UPCKat noticed that this scenario had also occurred in a revocation action filed by Bitzer against a Carrier patent.  It will be interesting to see if a court decides differently on this topic in the context of validity proceedings.  

Costs 

The Court furthermore decided on the recoverable costs. CUP&CINO was ordered to reimburse the costs incurred by Alpina Coffee Systems. CUP&CINO unsuccessfully tried to turn this into a provisional reimbursement of costs argument. The Court confirmed that as the unsuccessful party in preliminary injunction proceedings, it must reimburse the costs of Alpina Coffee Systems, even if they would be ultimately successful in proceedings on the merits (see p. 19). This is one of the very few first instance decisions to date in which the court ordered that costs be paid."