UPC CFI, LD Hamburg, 16 June 2025: PI granted, weighing of interests and burden of proof

PI granted (Article 25 UPCA, Article 62(1) UPCA, R. 211.1(a) RoP). 

Standing to sue exclusive licensee (Article 47(2) UPCA). Given the Applicant's aim of obtaining unrestricted freedom to operate, there can be no reasonable doubt that patents registered after the agreement was concluded are also to be licensed. Insofar as the Defendant raises doubts about the incorporation of future property rights, these appear to be unfounded. The patent proprietor, which belongs to the same group of companies as the Applicant, is aware of the present proceedings. It can be assumed that the patent proprietor would have raised objections to the Applicant's present application if the Applicant had not been entitled to assert it before this Court. This should make it clear that the Applicant is also licensed to use the patent in suit. 

Sufficient degree of certainty regarding the validity of the patent in suit (Article 65 UPCA, R. 209 RoP) lacks if the Court considers it on the balance of probabilities to be more likely than not that the patent is invalid. The burden of presentation and proof for facts concerning the lack of validity of the patent in suit lies with the defendant. It should be noted that the assessment of these probabilities is based on an examination of how the Court – consisting of a panel including a technical qualified judge – would probably decide about the revocation of the patent in the event of a counterclaim on the merits. Decisions of other European Courts or decisions of the EPO concerning the same patent do not bind the Court but may provide helpful indications that the Court may take into account. 

Defendant was unable to demonstrate that feature group 1.1 was directly and unambiguously disclosed by the public prior use (Article 54 EPC). It can be noted that the attacked embodiment and the alleged prior use differ in their composition, so that no conclusion can be drawn regarding the measurements of the attacked embodiment with regard to the public prior use. 

Claim interpretation – skilled person (Article 69 EPC): the skilled person is taking the purpose of every patent claim into account, to provide the average person skilled in the art with a technical teaching which, when reworked, leads to the intended success of the invention. 

Weighing of interests (Article 62(2) UPCA). Above all, the balance of interests must take into account the probability of an erroneous decision and also the objective urgency in terms of the necessity of provisional measures with regard to equally possible proceedings on the merits. All aspects are to be weighed against each other in relation to each other. The Defendant sells a new machine, which can be used in a new environment and therefore in a new market and that can be operated with the attacked embodiment, the Applicant will suffer a lasting loss of market share of its electrolyte media, resulting in lower sales. The patent infringement, therefore, leads to subsequent business transactions for the Defendant, which are at the same time missed opportunities for the Applicant. [...] price erosion to the disadvantage of the Applicant occurs. 

No provision of security for enforcement (Article 82(2) UPCA, R. 211.5 RoP). absent reasons given by the defendant nor a provision of how damages would be calculated. The undue burden can for example be related to the financial position of the applicant, or to the foreign law applicable in the territory where the order for compensation shall be enforced, including the application of that foreign law. The Defendant applied in the objection for a security of enforcement. Apart from reproducing the wording of R. 211.5 RoP, no grounds were given for such an order. 

Decision on costs (Article 69 UPCA). The Court is of the opinion, like the Court of Appeal […], that a cost decision should be issued in inter partes proceedings for provisional measures, since it concludes the action.

IPPT2025016, UPC CFI, LD Hamburg, Steros v Otec