ACT 14764/2025
—·EP4249647 +1 more: ELECTROLYTIC MEDIUM, ELECTROPOLISHING PROCESS USING SUCH ELECTROLYTIC MEDIUM AND DEVICE TO CARRY IT OUT
- Case details
- Status—ActionProvisional measuresCategoryProvisional Measures
- Parties
- ClaimantsReps: Sebastian Ochs (Grünecker Patent- und Rechtsanwälte PartGmbH); Björn-Alexander Bockelmann (Grünecker Patent- und Rechtsanwälte PartGmbH); Peter Milteny (Grünecker Patent- und Rechtsanwälte PartGmbH)RespondentsReps: Klaus Haft (Hoyng Rokh Monegier); Stefan Lenz (Lichti Patentanwälte Partnerschaft mbB)
- Division
- Hamburg LD
- Judges
- Sabine Klepsch · Presiding judge and judge-rapporteur
- Stefan Schilling · Legally qualified judge
- Petri Rinkinen · Legally qualified judge
- Rudi Goedeweeck · Technically qualified judge
- Language
- —
- First decided
- Jun 16, 2025
- 2025-06-16PI grantedPreliminary injunctionApplication for provisional measures
Hamburg Local Division granted a preliminary injunction ordering OTEC Präzisionsfinish GmbH to cease and desist from manufacturing, offering, placing on the market, using, exporting, or possessing in 18 UPC contracting states an electrolytic medium for electropolishing processes that infringes a patent for such a medium. The court held that validity is established on a balance of probabilities standard (more likely than not valid); the burden for invalidity lies with the defendant. The weighing of interests favoured the applicant as the defendant's product enabled new machine sales creating market opportunities lost to the applicant. The defendant's request for security for enforcement was denied as no sufficient facts (e.g. financial difficulties) were presented. Penalty of up to EUR 250,000 per non-compliance.
Legal issues:Preliminary injunction (Art. 62(2) UPCA, R. 209(2) RoP)Validity standard in PI proceedings (balance of probabilities)Burden of proof for invalidityWeighing of interestsSecurity for enforcement (R. 211.5, R. 213.2 RoP)Public prior use - 2025-06-16Application for provisional measures
The Hamburg Local Division (full panel: Klepsch, Schilling, Rinkinen, Goedeweeck) partially granted OTEC Präzisionsfinish GmbH's application for rectification (R. 353 RoP) of the provisional measures order of 16 June 2025 granted to Steros GPA Innovative S.L. concerning EP 4 249 647. The court corrected clerical mistakes (omitted letters) and certain erroneous references (water-in-oil to oil-in-water emulsion, a missing table reference, and a result table entry). However, the court rejected OTEC's request to alter the description of the 'skilled person' in the art, finding that this went beyond rectification of obvious slips.
Legal issues:Rectification of clerical mistakes and obvious slips in provisional measures order (R. 353 RoP)Distinction between rectifiable errors and substantive amendmentsElectropolishing / electrolytic medium technology
- D327E08E0F99EB13EF5DF07C4C574DA8_en.pdf2025-06-16ENGLISH
- Order%20rectificationsigned_SCH%20PR%20RG%20CB.pdf2025-06-16ENGLISH
Steros GPA Innovative S.L. obtained a preliminary injunction against OTEC Präzisionsfinish GmbH before the Hamburg Local Division for infringement of EP 4 249 647, covering an electrolytic medium for electropolishing. The court applied a balance-of-probabilities validity standard, rejected the defendant's unsubstantiated prior-use defence, and found the balance of interests favoured Steros because OTEC's product enabled new machine sales at Steros's expense. A subsequent rectification order corrected clerical errors in the PI order but declined to alter the court's legal assessment of the skilled person.
Patent validity established on balance of probabilities (more likely than not valid)
ClaimantLegal basis: Art. 62(2) UPCA; Rule 211.2 RoPNote: Hamburg LD held that in PI proceedings the validity threshold is met if the court considers it more likely than not that the patent is valid; burden of proof for invalidity lies with the defendant.
Public prior use requires all claim features to have been used previously
ClaimantNote: Court confirmed that a prior-use attack must cover each and every claim feature; defendant's prior-use argument failed to satisfy this standard.
Weighing of interests favoured applicant because defendant's product enabled new machine sales creating market opportunities lost to the applicant
ClaimantLegal basis: Art. 62(2) UPCANote: The contested embodiment, combined with sale of a new machine, opened a new market; patent infringement led to subsequent business transactions for defendant representing missed opportunities for claimant.
Request for security for enforcement
RespondentLegal basis: R. 211.5 RoP; R. 213.2 RoPReason: Defendant provided no reasoned application — merely reproduced the wording of R. 211.5 RoP without presenting facts such as applicant's financial situation or difficulties in enforcement.
Attacked embodiment contains only one fluid (a water-in-oil emulsion) preventing infringement
RespondentReason: Court found infringement established; the emulsion characterisation did not rebut the claim elements regarding non-conductive fluid and solid electrolyte particles.
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The claim requires: solid electrolyte particles retaining a conductive solution with conductivity >10 microS/cm; a non-conductive fluid immiscible in the conductive solution (not forming a single phase 0–100°C, not significantly conducting current at rest). The court interpreted 'non-conductive fluid' by reference to paragraph [0067] of the description, treating it as the 'defining element of the invention'. The defendant's argument that the product was merely a water-in-oil emulsion (single fluid) was rejected.