This article was first published in Kluwer Patent Blog [July, 2024].

The reasons for the decision are now available in the case of Ballino v UEFA and others, following an oral hearing on 3rd of June 2004 in the Hamburg local division. As was previously known, the panel comprising Presiding Judge Sabine Klepsch, Judge-rapporteur  Dr. Stefan Schilling, and legally qualified Judge Samuel Granata dismissed the application for provisional measures and ordered Ballino to pay costs, including those incurred by the defendants in filing the protective letter.

The case relates to an EP patent covering a method and system for detecting an offside situation – the “connected ball technology” – which was due to be used in the Euro championship starting on 14 June 2024. There had been no challenge to the patent prior to these proceedings, although there is now a revocation acting action pending before the Paris central division of the UPC (ACT_27358/2024 UPC_CFI_230/2024).

Urgency

Ballino’s predecessor wrote to the Kinexon Defendants in October 2023 to allege infringement (it was undisputed that this knowledge was attributable to Ballino). They responded in November 2023, explaining the basis on which they did not infringe (namely that no sound vibration sensor was used, as required by the patent). A further letter was sent by the Claimant in February 2024, following which the Kinexon Defendants filed a protective letter on the 4 March 2024 at the UPC. Ballino then filed proceedings for preliminary relief preventing direct, indirect, literal, and equivalent infringement of the patent in Germany and the Netherlands; requested an interim costs award and an order the defendants pay a penalty of €100,000 per day in the event of a breach of the requested order. It later supplemented that request with conditional auxiliary requests. The Defendants requested refusal of the application or alternatively a security payment of in excess of €1,000,000 for the enforcement of the preliminary injunction; and an order for its costs including in filing the protective letter.

Applying the approach to urgency adopted in 10x v Curio, the Hamburg Local Division determined that the application lacked urgency.  In the circumstances, it would have been clear to the Claimant following the Kinexon Defendant’s response in November that judicial recourse would be necessary to settle the matter.  The Local Division was not aware of any further steps taken by the Claimants at that time to investigate the facts or technology, including obtaining a sample of the balls which it knew were used in the FIFA 2022 World Cup. Nor did the Claimant contact UEFA at all in advance of issuing proceedings. As such, the Claimants did not “diligently initiate and complete the required steps” at an early enough stage and the claim lacked urgency.

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