Syngenta v Sumi Agro UPC_CFI_201/2024

Order dated 27 August 2024 ORD_47657/2024[1]

Syngenta Limited (“Syngenta”) applied for a preliminary injunction against Sumi Agro (“Sumi”). Syngenta is the proprietor of European patent EP2152073 covering a herbicide composition. It filed a PI against Sumi’s product “Kagura”.

The decision provides some novel case law and also confirms some previous case law. A particularly notable point in the decision was the assessment of a risk of a first (or imminent) infringement:

Sumi argued that there was no infringement in the relevant UPC territory, because that they had marketed two different versions of Kagura. They claimed that the version sold within the UPC territory did not include a component necessary to establish infringement.

Syngenta, which had purchased Kagura outside the UPC territory in the Czech Republic for testing purposes, contested the existence of two versions. They argued that Kagura’s offer with respect to the UPC territory was an offer of one and the same infringing product claiming that there was only one registration of the product which implied that its formulation could not have changed without affecting its registration. Syngenta also added that the written testimony supporting two versions was not credible, noting that Sumi had never mentioned a second version during previous discussions about possible infringement. In addition, Syngenta held that even assuming that there were two different versions of Kagura, the non-UPC territory product posed at least a risk of first infringement within the UPC territory since it was reasonable to assume that the Kagura product sold in the Czech Republic was to be sold (as offered) in the UPC territory for the above reason that the formulation of the product could not be changed without affecting its registration.

The court agreed with Syngenta that Sumi, by selling the product outside the UPC territory, had created a risk of first infringement of patent-infringing compositions to be manufactured, advertised and distributed by them in the UPC territory in the future. It found that the risk of infringement was already present in the fact that Kagura’s advertising in the UPC territory did not refer to a changed formulation, so that the relevant public had to assume that the advertising referred to a product identical to the (infringing) product available on the Czech market.

Furthermore, the court held that even if there was a second version of Kagura, the risk of the first infringement (in the Czech Republic) had not been eliminated because Sumi had not taken the necessary steps to eliminate such a risk. The UPC largely followed the principles of national law, according to which an established risk of a first infringement can be removed by an appropriate actus contrarius, which in special circumstances can be done by a formal cease and desist declaration, preferably with a penalty clause. Since Sumi did not submit such a declaration (although this was discussed at the oral hearing), the risk still existed.

Apart from that, the LD Munich confirmed its previous case law in two respects:

As in Hand Held Products v Scandit (also discussed on EIP Amar[2]), which was issued on the same day, the court adopted the approach of a 2-month safe harbour for urgency, as opposed to the 1-month safe harbour established by the Düsseldorf court.

In addition, the Munich District Court confirmed its jurisprudence established in Hand Held Products v Scandit and reiterated that respondents in PI cases should focus on the three best validity attacks so that each attack can be fully considered given the constraints of summary proceedings.

Accordingly, the key takeaways for this decision are:

• Risk of first infringement: Distributing a patent-infringing composition outside the Contracting States and advertising it within the UPC territory can create a risk of future infringement
• Eliminating a risk of infringement: A risk of a first infringement can be removed by an actus contrarius, which may mean, in special cases that a formal cease and desist declaration is made which preferably includes a penalty clause
• Extent of examination in summary assessment: According to LD Munich, a full examination of all arguments against the patent’s validity is not possible in provisional measures; only the top three arguments will be considered (Hand Held Products v Scandit, UPC_CFI_443/2023 ACT_589207/2023 (LD Munich))
• Temporal Urgency: LD Munich grants a two-month period for urgency, departing from other divisions that grant only one month (Hand Held Products v Scandit, UPC_CFI_443/2023 ACT_589207/2023 (LD Munich))

[1] https://www.unified-patent-court.org/sites/default/files/files/api_order/D2C8356021A081BF59CD6DA6D87C4C61_en.pdf

[2] https://eipamar.com/en/knowledge-hub/article/upc-orders-provisional-injunction-in-relation-to-barcode-reading-software/