Ex parte preliminary injunction against a trade-fair launch
Swiss patent CH 7xxxxx is granted on 14 June 2023, filed 2 March 2021, with priority from 12 March 2020. It claims a packaging machine comprising 'a rotating drum having a substantially cylindrical outer surface' and a folding station. The Swiss patent was granted without substantive examination. On 5 May 2025 competitor Rheinpack launches a machine at a Swiss trade fair; its drum is cylindrical and its folding station is identical. Patentee Nordpack sends a cease-and-desist letter on 7 May; Rheinpack refuses to stop. On 15 May Nordpack files an ex parte preliminary-injunction request in the Federal Patent Court, offering security of CHF 50,000. Rheinpack has a Chinese utility model, CN-U published 4 January 2020, showing a cylindrical drum and the same folding station. Nordpack argues that 'substantially cylindrical' distinguishes the Chinese drum, which it says is 'truly cylindrical' and therefore outside the claim.
1. Should the Federal Patent Court grant an ex parte preliminary injunction on these facts?
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The request faces a high bar. A preliminary injunction requires prima facie infringement, prima facie validity, urgency, and irreparable harm. The Swiss patent was granted without substantive examination, so validity is not presumed. The Chinese utility model was published before the 12 March 2020 priority date and discloses a cylindrical drum and the same folding station. The claim's 'substantially cylindrical' language is broad; on a normal construction it reads on a cylindrical drum. Nordpack's argument that 'truly cylindrical' falls outside 'substantially cylindrical' is counter-intuitive and likely to fail at the prima facie stage.
Ex parte relief is possible only where the urgency and irreparable harm justify proceeding without hearing the defendant. Nordpack waited ten days after the trade fair and sent a letter first; that is not necessarily fatal, but it weakens the urgency argument. The court may prefer an inter partes hearing or a protective measure, such as seizure of evidence, rather than an immediate injunction. The CHF 50,000 security is not the decisive issue if validity is doubtful.
On these facts, the court is unlikely to grant an ex parte injunction. The prior art is close, the claim is broad, and the patent has not been examined. At most, the court might grant a short protective order pending a hearing if Nordpack can show concrete irreparable harm.
2. How should the court assess novelty and claim construction in view of the Chinese utility model?
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The key issue is claim construction. 'Substantially cylindrical' must be interpreted in light of the description and the function of the drum. If the description says that minor surface deviations are tolerated to allow a seal to run, then 'substantially' includes a cylindrical drum with ordinary manufacturing tolerances. The Chinese utility model's 'cylindrical' drum would then anticipate the claim. Nordpack cannot use 'substantially' to exclude the very shape the claim was designed to cover.
For novelty, the court asks whether the Chinese document directly and unambiguously discloses all features of claim 1. It shows the cylindrical drum and the same folding station. If the remaining features are conventional and not disputed, claim 1 lacks novelty. If the Chinese document is silent on a feature, the court must decide whether that silence is a genuine difference or merely an implicit disclosure. Nordpack bears the burden of showing a prima facie valid claim; it cannot rely on the patent's grant.
Inventive step is secondary. If novelty is doubtful, the court should not grant a preliminary injunction based on a broad functional term. A narrower claim might survive, but Nordpack cannot obtain preliminary relief on a claim it has not yet narrowed.
3. What strategic options do Nordpack and Rheinpack have after the injunction request?
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Nordpack should consider narrowing the request to a concrete embodiment that is clearly distinguished from the Chinese utility model, or abandoning the ex parte route and seeking an inter partes injunction after a validity assessment. It should also review the prosecution history and any other prior art. If the patent is likely invalid, a quick settlement or a licence may be better than an expensive PI loss. Nordpack should preserve evidence of Rheinpack's actual machine and sales, because infringement and damages depend on the specific product.
Rheinpack should file a written opposition to the PI request, attaching the Chinese utility model and a claim chart. It can also seek security from Nordpack for damages if the injunction is later revoked. If the court grants an injunction, Rheinpack should comply while challenging validity and consider a nullity counterclaim. The trade-fair launch gives Rheinpack a commercial window, but ignoring an injunction risks contempt.
Both sides should prepare for an inter partes hearing. The court will focus on prima facie validity, claim construction, urgency, and the balance of harm. A CHF 50,000 security offer is modest for a packaging-machine launch; the court may require more.