Steros GPA Innovative v OTEC Präzisionsfinish (CFI, 16 June 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By an order of 16 June 2025 (UPC_CFI_281/2025, ACT_14764/2024), the Hamburg Local Division (Judges Klepsch, presiding and judge-rapporteur, Schilling, Rinkinen and Goedeweeck, technically qualified judge), after inter partes proceedings, granted the application for provisional measures brought by Steros GPA Innovative, exclusive licensee of the European patent with unitary effect EP 4 249 647 (electrolytic medium for electropolishing), against OTEC Präzisionsfinish. It prohibited the marketing of the EF 16-11 medium and its RF 16-0 refill in eighteen States, under penalty payments, without requiring security. The order is useful on three points: the burden of proving invalidity lies with the defendant, the balance of interests may favour the applicant where the accused product opens a new market, and security for enforcement requires a reasoned request.

Facts and procedure

The patent, applied for on 30 November 2021, was granted on 26 February 2025, unitary effect was registered on 21 March 2025 and the application for provisional measures filed on 25 March 2025. Steros relies on an exclusive licence of 10 January 2017, governed by Spanish law, granted by Drylyte, the proprietor within the same group, which was informed of the proceedings. OTEC, a direct competitor, sells the accused medium with its EFSmart and EF-One machines. It disputed entitlement, infringement, validity (prior uses D1 and D2, documents D3 and D4), urgency and the balance of interests, and sought security of at least EUR 500,000 in the alternative.

The applicable law

Article 62 UPCA and Rules 206 to 211 allow provisional measures where the Court is reasonably satisfied that the applicant is entitled to sue, that the patent is valid and that it is infringed, after weighing the interests (Rule 211.3) and absent unreasonable delay (Rule 211.4). An exclusive licensee may sue on the terms of Article 47(2). Article 82(2) and Rule 211.5 govern security. Claims are construed under Article 69 EPC and its Protocol.

Question

Can the exclusive licensee of a patent granted one month earlier obtain a provisional injunction against a competitor that challenges validity on the basis of prior uses and requests security without giving reasons?

Decision

The Division found Steros’s entitlement more likely than not: the licence covers future patents in the field of electropolishing, multiple representation at its conclusion is permitted under Spanish law absent a conflict of interest, and the proprietor, being informed, would probably have objected had the applicant lacked entitlement. The « non-conductive fluid » of feature 1.2 is the oily phase of the emulsion, measured at rest, not the emulsion itself. OTEC’s measurements wrongly concerned the emulsion. Literal infringement was found (3785 µS/cm for the filtered particles, 0.291 µS/cm for the oily phase).

On validity, relief is refused only if invalidity is more likely than not, and the burden of presentation and proof lies with the defendant. Public prior use must show use of all claim features: the measurements on the machine relied on (D1, D2) were ambiguous, and D3 and D4 do not disclose features 1.2 and 1.1 respectively. Urgency was established, the application being filed less than a month after grant, with testing completed by the end of 2024. The balance of interests favoured Steros: loss of market share to a direct competitor, recurring sales of the medium and a new market opened by the EF-One machine, while OTEC keeps its other products. As the security request gave no reasons, none was ordered. The injunction covers eighteen States, with penalty payments of up to EUR 250,000 per breach, and OTEC bears the costs.

Key points for practice

• In provisional measures proceedings, the defendant must plead and prove invalidity. A public prior use must cover every feature of the claim.
• The balance of interests takes account of a new market being opened and of recurring sales of consumables, the defendant remaining free to exploit its other products.
• An exclusive licensee establishes standing through the licence and may rely on the absence of objection from a proprietor informed of the proceedings.
• Practical point: a defendant seeking security must give reasons and quantify its potential loss, failing which the request will be refused.

Provisions applied

Agreement on a Unified Patent Court

Arts 47(2), 62 and 82(2)

Rules of Procedure

Rules 206, 209.2, 211, 213.2, 352.1 and 354

European Patent Convention

Art. 69 and Protocol on its interpretation

Directive 2004/48/EC

Art. 9(3)

Case law cited

Court of Appeal, 26 February 2024, NanoString v 10x Genomics, Court of Appeal, 13 May 2024, VusionGroup v Hanshow, Court of Appeal, 25 September 2024, Mammut v Ortovox, Court of Appeal, 3 March 2025, Sumi Agro v Syngenta, Munich Local Division, 27 August 2024, Hand Held Products v Scandit, Düsseldorf Local Division, 31 October 2024, Valeo Electrification v Magna PT, Munich Local Division, 25 November 2024, Häfele v Kunststoff KG Nehl

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.