Magna PT s.r.o., Magna PT B.V. & Co. KG, Magna International France, SARL v. Valeo Electrification

This case concerns an Application for provisional measures filed by Valeo Electrification against Magna PT B.V. & Co. KG, Magna PT s.r.o., and Magna International France, SARL before the Düsseldorf Local Division of the Unified Patent Court (UPC_CFI_368/2024), decided on 31 October 2024.

The patent in suit, EP 3 320 604 B1, titled "Rotary electric machine equipped with a means of adjusting the angular position of the shaft," was filed on 7 July 2016 claiming priority from a French patent of 10 July 2015, and was granted on 2 March 2022. It was in force in Germany and France, with no opposition filed. The patent concerns rotary electric machines for motor vehicles with a cooling circuit allowing lubricating/cooling liquid flow.

On 2 August 2024, Valeo filed an infringement action (ACT_44736/2024). Defendant 1 filed a vindication action before the Paris Court of First Instance on 13 September 2024, and on 4 October 2024, Magna Automotive Holding (Germany) GmbH filed a revocation action at the Central Division in Paris seeking revocation of the patent in France and Germany. Valeo Electrification was the successor entity following a merger and renaming of the original registered assignee.

The Defendants raised several objections: (1) that Valeo was not the legitimate proprietor, arguing the patent had been unlawfully appropriated; (2) that the patent was likely invalid; (3) that Valeo delayed unreasonably in seeking provisional measures; and (4) that the balance of interests favored the Defendants.

The court addressed each objection. On entitlement, the court held that the material proprietor is deemed the patent proprietor for UPC proceedings, and the registered proprietor benefits from a strong rebuttable presumption (R. 8.5 RoP) that can only be rebutted in PI proceedings if the title is manifestly erroneous. The Defendants' good faith defense based on alleged unlawful appropriation failed because they had not brought a vindication action in due time before the national courts.

On validity, the court rejected reliance on general revocation rates of patents, holding that only the specific circumstances of the patent in suit matter. The court found the patent was not manifestly invalid.

On urgency, the court held there is no fixed deadline for filing provisional measures applications under R. 211.4 RoP; the question is whether the applicant's overall conduct shows enforcement is not urgent. The court found Valeo's delay (approximately 2.5 years from learning of the infringing activities) was not unreasonable given the complexity of the case.

On the balance of interests, the court weighed the harm to Valeo from continued infringement against the harm to the Defendants from the injunction, finding that the Defendants' claims of exceptional damage were not sufficiently substantiated, though the court acknowledged the need for a transition period for existing customer obligations.

The operative order: (I) The Defendants were prohibited from using the claimed embodiments in Germany and France, including manufacturing, offering, selling, importing, and possessing for those purposes; (II) An exception was granted for existing BMW delivery obligations (X1, X2, 1 Series, 2 Series Active Tourer, Mini Countryman models as of 8 October 2024), conditional on the Defendants providing EUR 500,000 security by 21 November 2024; (III) Recurring penalty payments of up to EUR 250,000 per non-compliance were imposed; (IV) Defendants were ordered to provisionally bear EUR 14,700 in costs as joint and several debtors; (V) The orders were made effective upon the Applicant providing EUR 2,500,000 in security; and (VI) The application was dismissed in all other respects. The parties were given 15 days to appeal.