Context: The Unified Patent Court (UPC) is arguably (December 3, 2024 ip fray article) the world’s most important forum for preliminary injunctions (PIs) over patents, called “provisional measures” in the UPC.
What’s new: In a decision dated June 16, 2025 and published today (PDF), the UPC’s Hamburg Local Division (LD) granted Spain’s Steros GPA a PI against Germany’s OTEC Präzisionsfinish over EP4249647 (“Electrolytic medium and electropolishing process using such electrolytic medium”). The patent has unitary effect, so the injunction applies in all 18 Contracting Member States of the UPC. This is a dispute about a technique for polishing metal surfaces. The panel held that the burden of persuasion on invalidity is for the defendant to bear; the balancing of interest can favor injunctive relief if the accused embodiment, in conjunction with another product sold by the defendant, opens up a new market in light of opportunity costs for the patentee; and enforcement security is not a given but requires a showing of a need for it.
Direct impact: The defendant will presumably appeal and seek an enforcement stay, which is not impossible to win but the hurdle is high and it may take time.
Wider ramifications: If affirmed by the UPC’s Court of Appeal (CoA), the legal holdings in Steros v. OTEC would be conducive to the UPC’s popularity among those seeking PIs.
OTEC’s argument that the exclusive license based on which the plaintiff entity is asserting the patent at issue was invalid for various reasons (including that the same person signed for both parties) did not get any traction.
On claim construction, the Hamburg LD applied the already well-established UPC standard two days before the European Patent Office (EPO) adopted it as well (June 18, 2025 ip fray article). Beyond that, the decision says:
Additionally, 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.
After a finding of literal infringement, the order discusses validity and starts with the CoA’s “more likely than not” requirement for an invalidity defense to succeed. It apparently bears significant weight in this wider context that there is a technically qualified judge on the panel in this case. Neither prior publications nor public prior use appear likely to the court to render the patent non-novel. There is no discussion of the inventive step, suggesting that the defendant wanted to focus on non-novelty arguments given the need to dissuade the court in a fast-track proceeding from granting an injunction.
The court then finds the urgency requirement satisfied (the PI request was brought within a month of publication of the grant of the patent-in-suit) and proceeds to the balancing of interests based on a non-exhaustive set of factors. The way the court describes the standard is balanced. In particular, the court is mindful of the possibility of an erroneous decision that could result from the fast-tracked nature of PI proceedings.
The panel views the two parties as direct competitors and discusses how a machine sold by the defendant named EF-One “is particularly suitable for smaller dental laboratories, thereby opening up a new market.” The EF-One itself is not the accused product in this action, but it “can also be operated with the attacked embodiment.” The sale of such a machine entails “recurring sales of electrolyte media which are typically obtained from the same manufacturer.” On that basis, the court holds:
Hence if 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. The parties compete in this new market, with the Defendant using the invention covered by the patent in suit. In this respect, the attacked embodiment deprives the Applicant of market shares despite its monopoly position under the patent in suit. The corresponding damages cannot simply be remedied, because when the Defendant launched the EF-One, which can be operated with the attacked embodiment, the damages will be further exacerbated, as the purchasers of the machines can/will also purchase the attacked embodiment from the Defendant.
The risk of price erosion due to the defendant’s products being sold at a lower price comes up as well. By contrast, the defendant can keep selling its EF-One machine per se, just not the infringing electrolyte media.
Finally, the decision explains that in an ex parte (without hearing the other side) scenario, security should “normally” be ordered, but the court has discretion when the defendant has actually been heard (inter partes proceeding). The defendant has the burden of proof on the need for security, such as based on a thin capitalization of the patentee.
Court and counsel
Panel: Presiding Judge (and here, judge-rapporteur) Sabine Klepsch, Judge Dr. Stefan Schilling, Judge Petri Rinkinen (Helsinki, Finland) and Technically Qualified Judge Rudi Goedeweeck.
Counsel for Steros GPA: Grünecker’s Sebastian Ochs, Bjoern-Alexander Bockelmann (“Björn-…” in German) and patent attorney Dr. Peter Miltényi (who speaks the plaintiff’s language, Spanish).
Counsel for OTEC: Hoyng Rokh Monegier’s Klaus Haft and Lichti patent attorney Stefan Lenz.