UPC decisions and orders

The Unified Patent Court (‘UPC’) reports are prepared by Darren Smyth, Sam Meacham, Liam Rhodes, Joel Todd, Eugene Chan, Iris Buckley, Dalton Tucker of EIP.

Abbreviations: For brevity, we use LD to refer to Local Division, RD to refer to Regional Division and CD to refer to Central Division; any reference to an Article (or ‘Art.’) without further reference refers to the Unified Patent Court Agreement[1] (‘UPCA’) and any reference to a Rule (r.) refers to a Rule of the UPC Rules of Procedure[2] (‘RoP’). PI refers to preliminary injunction. CoA refers to the UPC Court of Appeal.

Appeals

Decision on provisional measures upheld

Biolitec Holding GmbH & Co KG v Light Guide Optics Germany GmbH and SIA LIGHTGUIDE International

UPC_CoA_563/2024, APL_53716/2024

Court of Appeal Order dated 24 February 2025[3]

Background

This decision concerns an appeal brought by Biolitec Holding GmbH & Co. KG (‘Biolitec’) against the dismissal of its application for provisional measures by the Court of First Instance, Düsseldorf LD. The provisional measures sought to prevent Light Guide Optics Germany GmbH and S.I.A. LIGHTGUIDE International (‘Lightguide companies’) from using, offering, and selling the contested embodiment known as ‘Infinity Side Fiber’. The patent in suit (EP 3 685 783) relates to a laser fibre for minimally invasive radial laser therapies.

Necessity of provisional measures

According to Art. 62 of the Agreement on a Unified Patent Court (‘UPCA’) and r.211.1 of the Rules of Procedure of the Unified Patent Court (‘RoP’), the Court may order provisional measures against a defendant, such as an injunction, delivery up, and/or an interim award of costs to the applicant.

Pursuant to Art. 62(2) and r.211.3 as explained by the CoA in this decision, the Court may use its discretion on a case-by-case basis to grant provisional measures to the applicant. This includes a time factor, so the Court may assess whether the merits of the application can be assessed during regular proceedings, or whether an interim injunction, for example, is necessary to better protect the applicant from ‘irreparable harm’ (r.206.2(c)), albeit that irreparable harm is not a necessary condition in all cases.

The burden is on the applicant to demonstrate the necessity of provisional measures, for example to prevent threatened infringement or to forbid the continuation of alleged infringement, in accordance with r.206.2(c).

Grounds for the appeal

In the appeal, Biolitec presented five arguments to the Court:

Incorrect application of the necessity test

Biolitec claimed that the Court of First Instance incorrectly relied on a necessity test for provisional measures – outlined in Art. 62(2) and r.206.2 (c) – and submitted that the criterion of necessity is a mere ‘formal requirement’. Moreover, Biolitec claimed that an isolated necessity test exceeds the sufficient degree of certainty that is to be proven by an applicant (r.211.2). Biolitec claimed that Art. 62(2) and r.206.2(c) should be interpreted in the context of the Enforcement Directive, which does not provide basis for a necessity test.

The Court concluded that Biolitec’s arguments regarding the incorrect reliance on the necessity test were not persuasive. The Court emphasised that the necessity requirement outlined in Art. 62(2) and r.206.2(c) is not a mere formal requirement and should be considered when issuing provisional measures under r.211.

MEDICA trade fair

Biolitec also submitted that the Court of First Instance should have considered the MEDICA trade fair in November 2024 as a reason to issue provisional measures. Biolitec claimed that Lightguide companies might exhibit the contested ‘Infinity Side Fiber’ at the trade fair, which may harm their market position.

The Court noted that while the contested product was exhibited at MEDICA 2023, this alone does not sufficiently indicate it would be exhibited again in 2024. The Court emphasised that participation alone in the trade fair does not make it likely that the contested product will be exhibited. Therefore, the Court concluded that Biolitec’s argument did not justify the necessity of provisional measures.

Stock management

Biolitec presented evidence through a witness statement claiming that a typical distributor of Lightguide companies would annually sell around 120,000 units of the contested product. The witness suggested that even a single purchase could significantly impact the market situation due to the high volume of product typically sold. However, Biolitec failed to provide any concrete evidence to substantiate this claim. The Court concluded that this mere ‘personal estimate’ of purchaser activity was insufficient to justify provisional measures, as it could not be assessed with a sufficient degree of certainty.

Tenders

Lastly, Biolitec submitted that they suffered harm due to competition with Lightguide companies in public tenders. They cited two past tenders in Italy in 2023 but provided no specific information about the tenders themselves. The Court noted that Lightguide companies did not directly bid in the 2023 tenders, rather, it was their local distributor who participated, and that the patent was not granted at that time. Here, the Court found Biolitec’s arguments to be speculative and concluded that there was no evidence of ongoing competition regarding tenders.

Price erosion

During the oral hearing, Biolitec introduced a new argument, claiming that the alleged infringing activities of Lightguide companies would result in a reduction in price of their product. They claimed that moving from a market situation with only one product to one with two competing products could lead to price erosion. This argument had not been presented to the Court of First Instance.

The Court found this argument unconvincing. Aside from the fact that the arguments lacked any substantiation, r.222.2 allows the CoA to disregard any new arguments and evidence not presented during the initial proceedings. Biolitec failed to demonstrate that this newly introduced argument could not have been raised before the Court of First Instance.

Decision

The Court rejected the appeal, as Biolitec failed to demonstrate that provisional measures were necessary for any reason that could not await the decision on the merits. They further failed to prove any potential irreparable harm which may result from the refusal of a provisional injunction under r.211.3. Biolitec was ordered to bear the costs of the appeal proceedings.

FINAL DECISIONS

AGFA fails in its infringement claim against Gucci

AGFA NV v Gucci (various entities)

UPC_CFI_278/2023

Decision of 30 April 2025 (ORD_598576/2023)[4]

This decision from the Hamburg LD concerns AGFA’s patent EP3388490, which relates to decorating natural leather by applying a base coat ‘containing a pigment for providing an achromatic colour different from black’, and then inkjet printing a colour image on the base coat. We wrote about the patent previously,[5] but at the time it was not clear what was the alleged infringement.

The accused products are items in the ‘Pikarar Collection’, a limited-edition collection designed by Gucci in collaboration with the US-based illustrator Angela Nguyen, examples of which are shown below.

On infringement, a key issue was the scope of the phrase ‘achromatic colour different from black’, in view of the fact that the accused products are of an ivory background colour, as can be seen.

The Court noted that this feature had been narrowed during prosecution to delete the possibility of ‘a chromatic colour’, and that the description stated that ‘white, grey, and black are achromatic colours, as they have no dominant hue, meaning that all wavelengths are present in approximately equal amounts within those colours’. Therefore, the Court held that ‘the patent defines achromatic colours as colours that have no dominant hue, meaning that all wavelengths are present in approximately equal amounts within those colours. Achromatic and chromatic colours are mutually exclusive as chromatic colours have a dominant hue, i.e. one particular wavelength predominates. Black, though being considered achromatic, is explicitly excluded in the wording of the feature.’

The next question arising is the significance of ‘approximately’ in the passage from the description quoted. The Court considered that the import of ‘approximately’ was that ‘a colour can be achromatic within the scope of the patent if the spectral response was not perfectly flat, but if the deviations from the perfectly flat spectrum were such that the difference between the colour in question and the reference achromatic colour – white or grey – with a perfectly flat spectrum line was not perceptible to the average observer.’ The Court rejected a technical measurement ‘ΔE94’ as being relevant in this regard.

Based on this understanding of the claim term, the Court decided that the patent claim does not extend to an ivory base coat, as in the accused products. While there was admittedly present in the description a statement that the base coat could be ‘an off-white or a pale clay colour’, it was considered that this was a ‘chromatic colour’ that had been deleted from the scope of the claim during examination in order to distinguish from the prior art. The Court noted that a number of passages in the description, including example 3, were inconsistent with the granted claims and should have been deleted. Therefore, as is noted in the headnote of the decision:

‘The definition of claimed features based on the principle that a patent may be used as its “own lexicon” is limited to those parts of the description that are related to the feature in question.
Specifications in the description that are not consistent with the granted claims cannot serve as a basis of a broad interpretation of a claim.’

The court stated that observing that the claim had been amended during prosecution did not amount to taking all aspects of the prosecution history into account, seemingly leaving it open as to the extent that the wider prosecution history would be relevant to the issue of claim interpretation.

Overall, therefore the Court concluded that the infringement action must fail because the attacked embodiments do not make use of all features of claim 1, as their base coats are not achromatic. While the Court considered extensive technical information in the form of spectral response graphs and chromaticity (C*) measurements, and asserted that the approximate equal presence of all wavelengths cannot be decided by simply looking at the colour of the attacked embodiments, but requires the spectral response to be assessed, the technical analysis appears no more than to confirm the visual impression that the colour is ivory and not white. Other features of the claim were considered but in less detail, since the colour of the base coat was decisive.

The defendants counterclaimed for invalidity of the patent. The Court held as in initial matter that at the UPC a revocation counterclaim is not limited to the claims asserted in the infringement action (as AGFA had contended).

On the substance of the revocation counterclaim, the Court found the claims to be novel and involve an inventive step having regard to all the written prior art cited. In addition, an allegation of invalidity over prior use relating to products of the ‘Flora’ line sold by the defendants was rejected. The Flora products were held to be not novelty destroying as they also had an ivory colour. An inventive step attack based on the Flora products that was developed at the hearing was rejected as not having been set out in the written procedure. Since the Court found the patent as granted to be valid, the auxiliary requests were not considered.

Accordingly, both the infringement action and the revocation counterclaim were dismissed.

Printing plates patent held invalid

Fujifilm Corporation v Kodak GmbH, Kodak Holding GmbH, Kodak Graphic Communications GmbH

UPC_CFI_359/2023

Order of 2 April 2025 (ORD_598586/2023)[6]

This decision is part of the litigation between Fujifilm and Kodak. In this case, Fujifilm sued Kodak for the alleged infringement of EP 3 476 616 B1 (EP 616) by Kodak’s marketing of printing plate products marketed ‘SONORA X’, ‘SONORA XTRA-2’ and ‘SONORA XTRA-3’.

The alleged infringement relates to lithographic printing, a technique for producing high-quality prints at large scale, often used in printing newspapers and magazines. Lithographic printing has been around for over 200 years, but the invention in question concerns the dimensions of tiny pores in ‘white’ parts of a lithographic printing plate, that are filled with a chemical solution to make them ink-repellent. When ink is applied to the plate, the repulsion of ink leaves the ‘white’ parts ink-less, and a piece of paper subsequently pressed on to the plate will be coloured only in the non-white areas. The patent claims that the specific pore dimensions improve the number of prints that can be made after application of ink and prevent unwanted ink retention by the ‘white’ parts.

EP 616 is currently still in force in Germany and in the UK but has lapsed in all other EPC jurisdictions prior to the commencement of the UPCA on 1 June 2023. Fujifilm seeks amongst other things, a permanent injunction, and damages not only in Germany, but in a number of other EU countries as well. Unusually, Fujifilm also sought a permanent injunction and damages for infringement in the UK, which is currently not part of the UPC.

In response, Kodak counterclaimed against Fujifilm to challenge the validity of EP 616 for lack of novelty and for lack of inventive step. Kodak argued that the Sonora XTRA-3 did not infringe EP 616 as its embodiment did not fit within the claims. Furthermore, Kodak alleges that they have a prior use right pursuant to section 12 of the German Patent Act in conjunction with Art. 28, which allows them to continue manufacturing and distributing the infringing products in Germany. We summarise below the case and takeaway point from the case.

Jurisdiction

The panel hearing the trial consisted of three legally qualified judges and one technically qualified judge. As part of Fujifilm’s request for damages for infringement of EP 616 in multiple EU countries, the court first considered whether they have jurisdiction to determine damages for infringement of national patents of both UPC and non-UPC members which lapsed before the UPC was established on 1 June 2023, concluding that they did not.

The court came to this conclusion by reference to Art. 3(c), which, as the court put it,

‘vests upon the UPC jurisdiction over any pre-existing European patent which has not yet lapsed at the date of the UPCA’s entry into force, i.e., 1 June 2023.’

It had to decide the construction of Art. 3(c) to determine whether it had jurisdiction for the EP 616 national patents which have already lapsed.

The court construed ‘any European patent’ as meaning ‘any national part thereof’. However, the court considers that the UPCA acknowledges the legal effects of the EPC as distinct from the UPC, and therefore, Art. 3(c) cannot be the basis of transferring jurisdiction of national EP patents which have lapsed before the UPC was established just because one national part is still in force at that date. Art. 3(c) in general speaks of a European patent without differentiating between UPCA member and non-member states, therefore, if this were allowed, the UPC would have jurisdiction over infringement for both members and non-members of the UPCA provided a single EP patent was still in force when the UPC was first established, regardless of whether that EP patent is part of the infringement action or when the infringing acts took place.

Furthermore, the court point out that the purpose of the UPCA is clearly aimed at the future by referring to recital 2 of the UPCA, by which the member states to the UPCA consider the

‘fragmented market for patents and the significant variations between national court systems… detrimental for innovation, in particular for small and medium-sized enterprises which have difficulties to enforce their patents and to defend themselves against unfounded claims and claims relating to patents which should be revoked’.

There was nothing to suggest the contracting member states wished to give up jurisdiction of their national courts over national parts which lapsed before UPCA entered into force.

Prior use

Kodak then tried to rely on public prior use as a defence to the infringement action, by stating that the subject matter of EP 616 is anticipated by printing plate precursors being made available to the public before the relevant priority date of 31 August 2017.

The court did not allow Kodak to rely on this ground due in part to the timing in which Kodak submitted facts concerning this ground, which was only in their Rejoinder to Fujifilm’s Reply on infringement and in their Reply to Fujifilm’s Defence to Counterclaim. The Court did not allow reliance on those facts as allowing it would lead to procedural unfairness for Fujifilm, where they must either call for additional briefs or will not have the opportunity to answer those points.

As a result, the court relied exclusively on Kodak’s Statement of Defence and Counterclaim for Revocation for the fact analysis exercise on this ground. The court concluded from those pleadings that Kodak has not discharged the burden of proof to establish its public prior-use defence, but rather, the documents show that before the relevant priority date of 31 August 2017, the plates have been protected by a confidentiality regime. The court reached this conclusion as the tests on the plates were done internally and the report of those tests being marked as ‘confidential/or internal use only’; with the reports also indicating that the general public would not have access to the plates that were tested.

Amendments

Fujifilm also made several applications to amend the claims of EP 616 of which some were allowed. However, the court did not allow Fujifilm to amend specific subclaims so that they can be defended as an independent claim, because Fujifilm did not file a proper application for this. The court stated that the power to grant such a request originates from Art 76.(1), which is a strict principle of requiring the court to decide matters in accordance with the requests by the parties and not award more than is requested.

Therefore, a party which wishes to make such a request must make an application in accordance with r.30.1, which governs applications to amend. This includes claim amendments that change a dependent claim into an independent claim, because such a change will also change the subject matter of the patent and will mean that references made in other dependent claims will need to be changed accordingly. This interpretation of the rules would support the broader purpose of requiring a request be unambiguous in determining the subject matter and the order of priority in which the patent is defended.

The court further commented that even if they allowed Fujifilm’s request without a proper application, the interaction between that request and other requests that Fujifilm had made proper applications for would be unclear to the court; there would not be a natural order of priority of dependent claims in which the court should examine them, since they related to different aspects of the alleged invention. Ultimately the court rejected Fujifilm’s position on this issue.

Interpretation of claims, novelty and inventive step

The court interpreted the claims from the point of view of the person skilled in the art which it held was a chemist or physicist with a master’s degree or diploma from a university and usually a doctorate, specialised in the field of physical chemistry, with several years of experience in the production of lithography plate precursors and the relevant substrates. The court went on to hold that the independent claims were new but lacked inventive step over earlier patent documents that disclosed printing plates with the same pore dimensions.

Of note, the court had no qualms with the idea that the skilled person would combine multiple earlier patent documents to reach the invention. The court even went as far as to say that the skilled person would ‘browse the relevant patent literature’, and if doing so would yield the invention then the invention was obvious. While this doesn’t seem to be inconsistent with the approach taken by the European Patent Office, it is in marked contrast with the approach taken by national courts in some states party to the European Patent Convention, including the UK, where a combination of patent documents usually cannot be used to support a finding of lack of inventiveness (unless they expressly cross-refer to each other).

Decision

The court ultimately found that EP 616 was invalid, therefore, it was revoked in Germany and Fujifilm was ordered to bear the costs of these proceedings.

PROTECTIVE MEASURES

Evidence preservation order with high urgency

Data Detection Technologies Ltd v Doytec Automation Ltd

UPC_CFI_554/2024

Order of 25 September 2024[7]

This order to preserve evidence pursuant to Art. 60 concerns a machine manufactured by the defendant that was being displayed at a three-day trade fair. The application was made on day two of the trade fair and was referred to the standing judge, as is the case for extremely urgent matters. Although the application was filed before The Hague LD, the standing judge in this case was from the Milan LD.

Data Detection Technologies Ltd (‘DDT’, the applicant) is a manufacturer of ‘advanced counting and packaging solutions’. DDT is the proprietor of EP2569713 (‘EP713’, the patent at issue) titled ‘Method and Apparatus for Dispensing Items’. EP713 includes two independent claims: claim 1 relates a method for dispensing a predetermined number of discrete items into containers and claim 8 relates to an item dispenser as such. EP713 is a European patent which is validated nationally in nine contracting states of the EPC, including the Netherlands.

Doytec Automation Ltd (‘Doytec’, the defendant) is a China-based manufacturer of equipment for automated counting, weighing and packing, in particular for seeds and beans.

Suspicion of Infringement

Both DDT and Doytec were exhibiting at the trade fair ‘Seeds Meets Technology 2024’ which took place from 24-26 September 2024 in Zwaagdijk-Oost, Netherlands. DDT’s suspicions that Doytec was infringing EP713 arose as a result of two of DDT’s employees’ interactions with Doytec on the first day of the fair. The first employee observed a seed counting machine, called ‘C-1012’, on display at Doytec’s stand which they considered to be similar to the patented device made and sold by DDT. The second employee had a conversation with a Doytec representative who described a counting machine sold by the company possessing certain features of the claims of EP713.

In its application, DDT requested for the C-1012 (and related technical documentation) to be physically seized as a sample, and for a detailed description to be made by an independent expert.

Reasonably available evidence

Under Art. 60(1), the court may order for the preservation of evidence if the applicant presents ‘reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed’. Developing case law of the UPC suggests that the bar for evidence is fairly low. This is perhaps unsurprising given that the filing of an evidence preservation application implies that the applicant needs to obtain further evidence of infringement before starting proceedings on the merits. The presence of certain (but not all) claimed features,[8] or a similarity of the alleged infringing product with the patented product sold by the applicant,[9] have both previously been deemed sufficient to satisfy this evidence requirement.

In support of DDT’s application, the two employees provided written statements which included a summary of the features of the granted claims that they understood to be present in the C-1012, along with photos of the machine taken at the trade fair. The standing judge decided that infringement was ‘plausible’ on the basis of this evidence. The evidence therefore supported DDT’s claim that the patent was being infringed, but the judge noted that further evidence would be needed to prove the alleged infringement more conclusively.

Urgency and risk of destruction of evidence

The court may order preservation of evidence without the other party (Doytec in this case) being heard ‘where there is a demonstrable risk of evidence being destroyed’ (r.197.1). The court took the view that the matter was extremely urgent, because the trade fair ended the following day and Doytec is a Chinese manufacturer, so there was a likelihood that the evidence would at least cease to be available in Europe after the trade fair.

As a result, the measures were ordered without Doytec being heard. Additionally, in accordance with r.197.2, Doytec was not given prior notice of the measures. This is intended to (as the court put it in this case) ‘ensure the surprise effect’ and prevent destruction of the evidence by the defendant before it can be seized.

When an order to preserve evidence is made without the defendant being heard, the applicant is required to provide security (to cover the defendant’s legal costs, expenses or injury as a result of the order), ‘unless there are special circumstances not to do so’ (r.196.6). In this case, the court considered the extreme urgency to amount to special circumstances, as the time taken for DDT to provide security might lead to the evidence becoming unavailable. As DDT was a large company that would presumably have the means to bear the defendant’s costs, provision of security by DDT was not required.

Confidentiality

An order to preserve evidence under Art. 60 is ‘subject to the protection of confidential information’. Whilst the order can be made without the defendant being heard or given prior notice, the evidence is seized by an independent expert and is not immediately made available to the applicant. In this case, the measures were to be carried out by a Dutch patent attorney, assisted by a bailiff, and the evidence and report delivered to the Hague LD (where the application was filed).

The CoA has previously clarified that an application to preserve evidence ‘implies a request to disclose to the applicant the outcome of the measures’, but in order to protect confidential information, the defendant should be given an opportunity to comment on the extent of the disclosure to the applicant.[10] In this case, Doytec was given until 30 October 2024 (around one month after delivery of the report to the LD) to file a request for confidentiality. If no such request was filed, the report would then become fully available to the applicant. This is different from the deadline for requesting a review of the order, which is 30 days from execution of the measures (r.197.3).

Summary

Observations made by DDT employees at the trade fair suggested infringement was at least plausible, and no further evidence was required. The short duration of the trade fair and the fact that Doytec is an overseas company meant that there was extreme urgency and a risk that evidence could be destroyed or cease to be available. As a result, the measures were ordered immediately, without Doytec being heard and without the DDT providing security. This decision highlights the speed at which an evidence preservation order can be granted under extremely urgent circumstances, with the application filed and the measures ordered on the same day.

PROVISIONAL MEASURES

Provisional injunction refused

Teleflex Life Sciences II LLC v Speed Care Mineral GmbH

UPC_CFI_701/2024 relating to EP2007811

Order of 21 February 2025 (ORD_ 68880/2024)[11]

The applicant, Teleflex Life Sciences (‘Teleflex’), provides an array of medical technologies and solutions across a broad range of medical specialities. One such range of products relates to emergency medical products, including haemostatic products to stimulate blood clotting and stem heavy bleeding. The Teleflex patent which was the subject of the application, EP 2 007 811 (the ‘Patent’), related to a clay-based haemostatic agent.

The defendant, Speed Care Mineral (‘Speed Care’), primarily provides expertise in the field of mineral processing and refinement for use in haemostatic medical products but also works on mineral based technologies in other industries.

The application for the PI included a considerable body of expert and experimental evidence in relation to infringement, hitherto unusual in applications for provisional relief at the UPC.

The decision of the Court discusses the burden of proof that applicants seeking provisional measures are required to meet and focusses in large part on whether the evidence relied on by Teleflex, and Speed Care’s response, allowed Teleflex to satisfy their burden to demonstrate infringement of the Patent.

Burden of proof

The bulk of the decision deals with the Teleflex’s (failed) attempts to satisfy the Court as to the likelihood that their patent is infringed and Speed Care’s evidence in response.

To obtain provisional relief at the UPC, an applicant must assure the Court to ‘a sufficient degree of certainty’[12] that their patent is infringed. This burden is only reversed once the applicant has provided reasonable indications that an infringement has occurred. The Court in this case commented that the burden of proof for summary proceedings must not be set too high, with regard to the necessarily limited nature of the evidence in these proceedings, nor too low such that defendants are harmed by provisional measures that are later revoked. The court goes on to state that the burden is ‘to prove more likely than not’ that there is infringement of the patent. A large portion of Teleflex’s arguments, and Speed Care’s response, focused on one issue of infringement of the Patent related to the presence of a binder.

Proving infringement: experimental evidence

In support of its application for a PI, Teleflex submitted an expert report, including several experiments, to attempt to demonstrate the presence of a binder in the allegedly infringing product, as required by a feature of the Patent claim. Teleflex’s evidence included the results of an infrared spectroscopy technique which, when interpreted by their expert, was alleged to demonstrate the presence of a particular binder (chitosan).

This evidence was met with several criticisms from the defendant, who instructed their own experts to rebut Teleflex’s expert evidence. Speed Care’s criticisms of Teleflex’s evidence were made on a number of bases, including that the IR spectrum comparison relied on by Teleflex was ‘not completely overlapping’ with the textbook spectrum for the binder (and in fact, by Teleflex’s expert’s own calculations there was only a 73.8% match). Another detailed line of criticism sought to undermine a ‘central thesis’ of Teleflex’s argument based on academic literature, relied on by their experts, which claimed that a particular peak on the IR spectrum was associated with a type of cross-linking indicative of the presence of the binder. The opinion of the Court was that Speed Care ‘convincingly’ explained that Teleflex’s thesis was wrong. Speed Care contended that the academic research relied on by Teleflex was a secondary source and that when one looked to the primary research it could be seen that i) the peak which formed part of Teleflex’s central thesis was not supported in the primary academic literature, and ii) the primary research suggested there was in fact another peak indicative of the type of cross-linking which Teleflex sought to prove, but this peak was not present in Teleflex’s expert’s analysis of Speed Care’s product (i.e. on Speed Care’s case, Teleflex’s own analysis indicated the binder was not present).

Further infringement arguments

The Court’s decision looked at a number of other lines of argument on infringement, none of which the court found to be convincing. These included an argument by Speed Care that the claims in the Patent should be limited to hydrated forms of clay, a limitation which the Court decided was not merited, particularly given the mention of a dehydrated clay in a preferred embodiment in the Patent.

Teleflex also attempted to infer details of the allegedly infringing product from some aspects of Speed Care’s own patents, particularly the ‘binder to adhere the clay to the gauze substrate’ integer which was also the subject of the expert evidence discussed above. Again, these arguments were rejected as ‘unconvincing’ by the Court as not all the claims of the Speed Care patent required a binder, and in fact there were references in the Speed Care patent to embodiments which ‘advantageously’ did not require a binder in the sense claimed in the Patent.

In one final attempt to demonstrate infringement at the oral hearing, the applicant presented photographs (taken with a microscope) which they claimed to show certain particles sticking together in the allegedly infringing product, as evidence of the presence of a binder. If a binder was not present, Teleflex alleged, then the particles would fall apart. The Court cast doubt on this evidence, not least as the particles which Teleflex claimed could be seen in their images were said by the Court to be some 4-5 orders of magnitudes smaller than the magnification of the presented images, and hence ‘they could not be made visible using the selected magnification’.

Conclusions

The Court ruled that Teleflex had failed to establish infringement of its patent to the standard required to award a PI. The Court therefore saw no need to consider the validity of the patent or any other requirements for awarding preliminary relief. Teleflex was also ordered to pay the costs of the proceedings.

Teleflex, and Speed Care in its response, presented unusually large volumes of technical evidence in their attempts to argue for or against infringement in this application for provisional measures. There was no criticism in the decision of the type or volume of the evidence submitted for the application but the result of this, not inconsiderable amount of work, was that the Court did not accept any of the main infringement points argued by either party based on the expert evidence in the case.

Perhaps one point to reflect on is the opening comments in the decision stating the burden of proof in summary proceedings should reflect circumstances ‘in which the opportunities for the parties to present facts and evidence are limited’. This case appears to be one in which parties were able to produce ample quantities of evidence and one might ask if lowering the burden of proof remains appropriate in circumstances such as these. It is likely too early to say whether technical evidence of the kind in this application will become more commonplace in applications for preliminary measures, but applicants should take note that more detailed evidence may in turn draw more detailed scrutiny of their case, something which Teleflex fell foul of in this instance.

PROCEDURAL ISSUES

Security for costs

Maxeon Solar Pte. Ltd v Aiko Energy Germany GmbH and others

UPC_CFI_336/2024 and UPC_CFI_607/2024

Order of 14 April 2025 ORD_48299/2024[13]

The claimant brought proceedings on 23 December 2024 against Aiko Energy Germany and seven other solar panel manufacturers alleging infringement of its European patent EP2297788B1 concerning solar cell fabrication. Three of the defendants, Aiko Energy Germany, Solarlab Aiko Europe and Aiko Energy Netherlands (collectively, the ‘Aiko defendants’) lodged a request for security for legal costs. The panel of the Düsseldorf LD summarised that to exercise its discretion under Art. 69(4) and r.158 to grant an order for costs, the financial position of the claimants must give rise to:

a legitimate and real concern that a possible order for costs may not be recoverable, [or;]
the likelihood that a possible order for costs by the UPC may not, or in an unduly burdensome way, be enforceable.

The responsibility to substantiate and prove the necessity of an order for security for costs lies with the party making the request – the Aiko defendants in this case. However, once the requesting party has presented credible reasons and facts, it becomes the opposing party’s duty

‘to challenge these reasons and facts in a substantiated manner, especially since that party will normally have knowledge and evidence of its financial situation. It is for the claimant to argue that and why a security order would unduly interfere with their right to an effective remedy’.

The Aiko defendants argued that the claimant is not in a financial position to bear its legal costs due to incurring losses in 2023 and 2024, the need for debt and equity investment to support their liquidity needs, and an ongoing class action. The claimant argued that the Aiko defendant’s position was unfounded, as they made ‘substantial progress in its capital raising and debt restructuring initiative’, emphasising that the debt does not mature until 2028.

Decision

The defendant had argued in a substantial manner that the claimant’s group was in a very difficult financial situation. The claimant was found not to have provided any convincing evidence to substantiate its financial situation, indeed, it confirmed that the solar market is currently difficult for everyone in the market. The Court found this, the timeframe of the proceedings, the maturity of the debt in 2028 and ‘the unpredictability of the already difficult solar energy market’ to justify the risk that the claimant will not have the financial resources to pay the Aiko defendant’s costs.

Amount of security

The Aiko defendants base the security sought on the €112,000 ceiling for representation cost set by the UPC Administrative Committee, based on the claimant’s €1,000,000 valuation of the claim, with a 10% premium ‘in view of the costs associated with the realisation of the security’, giving a total requested security of €123,200. The claimants considered the requested amount of security to be too high, arguing that the €100,000 ceiling addresses the action against all eight defendants; the Aiko defendants constitute only three out of the eight defendants and therefore the security amount should be scaled accordingly between €56,000 and 60,000.

The Court found, with reference to the Guidelines for the Determination of Court Fees and the Ceiling for Recoverable Costs adopted by the Administrative Committee of the UPC on 24 April 2023,[14] that the infringement action and counterclaim action each held a value of €1,000,000 and therefore €2,000,000 in total, with a ceiling for representation cost of €200,000 in total, irrespective of the number of parties. Addressing the claimant’s 3/8ths point, the Court found that the ceiling is not automatically divided by the number of parties liable to pay costs, instead

‘the purpose of the ceiling on recoverable representation costs is to prevent unjustified recovery of costs both in cases where one party has several representatives and in cases where one representative represents several parties’.

As the Aiko defendants share a representative, the Court assumed that they are ‘economically close’ and/or ‘do not have a conflict of interests’. The remaining defendants (the other 5/8ths) are grouped together separately because they have a different representative and disputed relationships with each other and the Aiko defendants. Therefore, each group, the Aiko defendants and the remaining 5/8ths are found to be entitled to one half of the €200,000 ceiling; €100,000 each, with no ‘premium’ added.

[1] Agreement on a Unified Patent Court (2013/C 175/01)

[2] Rules of Procedure of the Unified Patent Court as adopted by decision of the Administrative Committee on 8 July 2022

[3] www.unified-patent-court.org/en/node/68256

[4] www.unified-patent-court.org/en/node/116262

[5] eip.com/uk/latest/article/agfa_v_gucci_at_the_upc/

[6] www.unified-patent-court.org/en/node/81265

[7] www.unified-patent-court.org/en/node/97008

[8] Maguin SAS v Tiru, UPC_CFI_813/2024 www.unified-patent-court.org/en/node/69098

[9] Novawell v C-Kore System Ltd, UPC_CFI_397/2023 www.unified-patent-court.org/en/node/523

[10] Progress Maschinen & Automation AG v AWM Srl & Schnell SpA, UPC_CoA_177/2024 www.unified-patent-court.org/en/node/936

[11] www.unified-patent-court.org/en/node/75684

[12] Art. 62 (4) UPCA in conjunction with r.211.2 RoP

[13] www.unified-patent-court.org/en/node/96548

[14] www.unified-patent-court.org/sites/default/files/upc_documents/d-ac_09_24042023_guidelines_e_for-publication.pdf

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