Valeo Electrification v Magna PT (CFI, ORD_56545/2024, 31 October 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 31 October 2024 (UPC_CFI_347/2024), the Düsseldorf Local Division (R. Thomas, presiding and rapporteur, B. Thom and M. Bessaud, and A. Sanchini, technically qualified judge), on Valeo Electrification’s application, prohibited Magna PT B.V. & Co. KG, Magna PT s.r.o. and Magna International France from offering, placing on the market, using, importing or storing in Germany and France the rotary electric machines and assemblies covered by EP 3 320 602. It nonetheless allowed existing delivery obligations to BMW for five models to be fulfilled, subject to EUR 500,000 security, and made the order conditional on EUR 2,500,000 security from the applicant. The application was dismissed for Slovakia and for the remainder.

The order is of practical interest for its treatment of a late entitlement claim against the registered proprietor and for tailoring the injunction to protect a third-party customer.

Facts and procedure

EP 3 320 602, for a rotary electric machine with a lubricant reservoir for lubricating a rolling bearing and cooling the machine, is in force in Germany, France and Slovakia and was not opposed. Valeo complains of the offer and distribution of a gearbox motor generator (embodiment I) and a gearbox incorporating it (embodiment II), intended in particular for BMW. Valeo says it learned of the infringement on 4 June 2024 and filed its application on 1 July 2024, the hearing took place on 8 October 2024. An infringement action was filed on 2 August 2024 (ACT_44727/2024). Magna PT B.V. & Co. KG brought an entitlement action over the French part of the patent in Paris on 22 August 2024, and a revocation action was filed on 4 October 2024 before the Paris Central Division (UPC_CFI_580/2024).

The applicable law

Art. 62 UPCA and Rules 206 to 211 allow provisional measures where the Court is satisfied with a sufficient degree of certainty that the patent is valid and infringed, having regard to urgency and the balance of interests (Rule 211.3). Art. 47 UPCA creates a presumption in favour of the registered proprietor. Revocation for lack of entitlement under Art. 138(1)(e) EPC refers to Art. 60(1) EPC, the extent of protection is governed by Art. 69 EPC.

Question

Are the conditions for provisional measures met where the defendants rely on an entitlement claim and on invalidity, and how can an injunction be reconciled with supply commitments to a third-party car manufacturer?

Decision

The registered proprietor enjoys a strong presumption, rebuttable only where the registration is manifestly wrong. Late entitlement claims, one not brought in Germany within the two-year period and the other filed in France more than six years after publication, do not displace it (section I). The claim does not require a dedicated supply line (section III.2.c). General revocation statistics are irrelevant. Claim 6 is more likely valid than not over D1 to D3, and invalidity under Art. 138(1)(e) is not more likely than not (section IV.2). Infringement is found, Magna International France being liable for its sales support (section V). Urgency is established, the applicant having acted promptly after dismantling the vehicle (section VI.1).

For Slovakia, only manufacture is at issue and an extended order is not justified (section II). The balance of interests supports an injunction, but the harm shown for supplies to BMW leads to a narrow carve-out, kept to the minimum necessary. The allegation of bad faith against the applicant is rejected (section VI.2). The order provides for penalty payments of up to EUR 250,000 per breach and an interim costs payment of EUR 14,700, borne jointly and severally by the defendants, instead of the EUR 21,000 sought. Security of EUR 2,500,000 is set by reference to the defendants’ detailed harm figures (section VII). Delivery up to a bailiff is excluded because of the BMW carve-out, and the Court makes no costs decision in provisional measures proceedings.

Key points for practice

• A late entitlement claim does not displace the presumption in favour of the registered proprietor at the provisional measures stage.
• An injunction can be tailored to preserve ongoing supplies to a third-party customer, provided the defendant itself provides security.
• Where defendants quantify their potential harm in detail, the applicant’s security is set on that basis rather than on the value in dispute.
• Practical point: a defendant seeking a carve-out must document its contractual commitments precisely, as the Court confines itself to what was pleaded and proven.

Provisions applied

Agreement on a Unified Patent Court

Arts 25(a), 47(1), 62(1) to (5), 63(2), 65(2), 69 and 73(2)(a)

Rules of Procedure

Rules 8.5, 206.2, 209.1, 211, 213.2, 220.1(c), 224.2(b) and 354.3

European Patent Convention

Arts 54(1), 60(1), 69 and 138(1)(e)

Directive 2004/48/EC

Art. 9(3)

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, Mammut Sports Group v Ortovox, Court of Appeal, 25 September 2024, Ortovox v Mammut, Düsseldorf Local Division, 9 April 2024, Novartis v Celltrion, Düsseldorf Local Division, 6 September 2024, 10x Genomics v Curio Bioscience, Düsseldorf Local Division, 30 April 2024, Ballinno v UEFA, Hamburg Local Division, 3 June 2024, Munich Local Division, September 2023, UPC_CFI_2/2023. The order also cites the CJEU judgment in Phoenix Contact (C-44/21, 28 April 2022).

Related decisions

• Valeo Electrification v Magna PT, 20 November 2024, order dismissing the application to rectify this order.

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.