Heraeus Electronics v Vibrantz (CFI, UPC_CFI_114/2024, 10 October 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 10 October 2025, given in joined proceedings UPC_CFI_114/2024 (infringement action) and UPC_CFI_448/2024 (counterclaim for revocation, application to amend and application under Rule 362), the Munich Local Division considered Heraeus Electronics’ patent EP 3 215 288 on a metal sintering preparation. It held that the final judgment of the Federal Patent Court of 7 November 2023, which had maintained the German part in limited form, bars a fresh review of novelty and inventive step for Germany, res judicata being a matter of national law. The patent, defended as auxiliary request 3, withstood the attacks for insufficiency, lack of novelty and lack of inventive step: it was revoked for France, Italy and Romania to the extent that it goes beyond that version and maintained for the rest. The infringement action was nonetheless dismissed, as Vibrantz has a right of prior use in Germany and no acts were established in France, Italy or Romania. Costs were split 60% to the proprietor and 40% to the defendant.

Facts and procedure

The patent, filed on 8 May 2015 claiming priority of 3 November 2014, is in force in Germany, France, Italy and Romania, the action having been extended to Romania by order of 2 December 2024. Vibrantz, which succeeded the claimant in the German nullity action, challenged validity for all four states and relied on a right of prior use. Heraeus Electronics sought among other things an injunction, information, recall, an interim award of EUR 250,000 and a declaration of liability for damages. It defended the patent as auxiliary request 3, identical to the version upheld by the Federal Patent Court. The hearing took place on 1 July 2025.

The applicable law

According to the headnote, in the absence of specific rules in the Agreement, the effect of a final national judgment dismissing a nullity action is determined, in the light of Article 24(1)(e) UPCA, by national law. Validity falls under Article 65 UPCA and Article 138 EPC, the right of prior use under Article 28 UPCA, which refers to national law.

Question

Does a final German judgment on validity bind the UPC hearing a counterclaim for revocation, is the limited patent valid, and can infringement be found despite a right of prior use?

Decision

For the German part, the UPC acts as a German court. Under German law, res judicata covers only the grounds actually raised, so only novelty and inventive step are shielded from fresh review, the defendant being bound as successor (B.I.2 to B.I.6). Lack of clarity is not a ground for revocation (B.II.1). Insufficiency was rejected, as the description gives a complete formulation and a reproducible shear test, and the defendant did not prove that the claimed range could not be worked across its breadth (B.II.2). Auxiliary request 3 is novel, no single document disclosing all the features, and inventive over JD24, the objective problem being an improved bond and JD17 teaching away (B.II.3). The accused products literally reproduce the claim (C.I). The action nonetheless failed. The defendant’s decision, taken before the priority date, to make sintering pastes with SF65, SF70A and SF30 silver flakes, which necessarily show the claimed mathematical product, is enough to found a right of prior use in Germany covering at least the attacked formulations. Its employees did not need to identify that product or the shear strength described (C.V). Since those acts were lawful, they create no risk of infringement in France, Italy or Romania. Article 34 UPCA presupposes infringing acts in at least one state, and the uncontested but unsubstantiated allegation that the group has sites in France and Italy does not allow any concrete act to be attributed to the defendant (C.VI). The defences of bad faith and unlawful derivation did not need to be decided (C.VII). The operative part records an absolute bar to continuing the counterclaim for the German part as regards the patentability decided by the Federal Patent Court, revokes the patent for France, Italy and Romania to the extent that it goes beyond claims 1 to 8 as limited, otherwise dismisses the counterclaim, dismisses the infringement action, orders the claimant to bear 60% and the defendant 40% of the costs, and sets the value of each claim at EUR 1 million, EUR 2 million in total. The panel was presided over by Judge Zigann.

Key points for practice

• Before the UPC, the authority of a national nullity judgment is governed by national law: under German law, only the grounds actually raised are covered.
• A defendant may still raise before the UPC a ground of revocation not put to the national court, here insufficiency.
• A right of prior use, governed by national law through Article 28 UPCA, can defeat the action even where literal infringement is established.
• Practical point: the proprietor must establish concrete infringing acts attributable to the defendant in each state concerned, lawful acts in Germany covered by prior use do not found a risk of infringement elsewhere.

Provisions applied

Agreement on a Unified Patent Court

Arts 24(1), 28, 34 and 65(2)

Rules of Procedure

Rules 105.5, 118.8, 171.1, 171.2, 181.2, 334, 362 and 363

European Patent Convention

Art. 54, Art. 56, Art. 83, Art. 84 and Art. 138

Regulation (EU) No 1215/2012

Arts 36(1), 71a and 71d

Case law cited

Fives ECL v REEL, Court of Appeal, 16 January 2025, 10x Genomics v NanoString, Court of Appeal, 26 February 2024, Belkin v Koninklijke Philips, Court of Appeal, 3 October 2025, Sanofi-Aventis Deutschland v Amgen, Munich Central Division, 16 July 2024, NanoString v 10x Genomics, 19 September 2023, UPC_CFI_501/2023, 4 April 2025, Edwards Lifesciences v Meril, Munich Local Division, 15 November 2024 (UPC_CFI_15/2023), Düsseldorf Local Division, 13 May 2025 (UPC_CFI_505/2024)

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.