High Court upholds decision to reject preliminary injunction motion due to passivity

The claimants first initiated a main action against the defendants in May 2019 based on one of the claimant's patents. However, in February 2020, the main action was stayed pending the outcome of opposition proceedings at the EPO Opposition Division, on a motion by the defendants which the claimants had contested. Then, in August 2020, the claimants filed a motion for a preliminary injunction requesting interim relief against the same allegedly infringing acts as the main action. 

The Danish Maritime and Commercial High Court completely rejected the claimants' motion for a preliminary injunction, referring to the fact that the preliminary injunction proceedings in all essentials concerned the same alleged infringements as in the main action initiated 15 months earlier. On this basis, the Court held that the claimants had forfeited their right to assert the patent in preliminary injunction proceedings due to passivity and lack of urgency, as significantly longer time than reasonably necessary had passed between the initiation of the main action and the filing of a motion for a preliminary injunction. 

Read our newsletter regarding the case before the Danish Maritime and Commercial High Court.  

The High Court's decision

The claimants appealed the first instance decision to the Danish Eastern High Court. In the appeal case, the claimants submitted, inter alia, that the main reason for waiting 15 months before filing a motion for a preliminary injunction against the same alleged infringements as in the main action was that the claimants did not have the necessary evidence to render the alleged infringements probable. The High Court upheld the Danish Maritime and Commercial High Court's decision, noting that the claimants, at the time of filing the main action, must have been of the opinion that they had sufficient evidence to not only render it probable but to actually prove the defendants' alleged infringements. According to the High Court, this was especially supported by the statement of claim in the main action, in which the claimants stated that they had "ascertained" that the defendants had infringed the patent-in-suit.

The High Court did not attach any significance to the claimants' argument that passivity cannot occur in a preliminary injunction case when a main action exists concerning the same alleged infringements since the defendant in such a situation is already aware that the claimant wishes to enforce its right. Moreover, the High Court did not find it relevant that the ongoing main action was stayed pending the outcome of opposition proceedings at the EPO (against the claimants' protest), meaning that the patent would in all likelihood lapse before the claimants could obtain an enforceable decision. Nor did it make any difference to the High Court's assessment that the defendants in the main action, despite several requests from the claimants, refused to inform the claimants what products the defendants marketed in Denmark and what reagents these products contained. 

Finally, the High Court specifically noted that the relevant point in time for assessing whether a claimant has forfeited its rights due to passivity in a preliminary injunction case (by failing to pursue an alleged infringement with the required determination and urgency) is the time when the motion for a preliminary injunction is filed with the Court, and not the time when the defendant becomes aware of the claimant's intention to initiate a preliminary injunction case. Hence, the High Court confirmed that a claimant cannot suspend the "passivity period" merely by informing the defendant that the claimant plans to file a motion for a preliminary injunction. 

Kromann Reumert acted for the defendants in the case.