UPC CFI 281/2025 – Steros GPA Innovative S.L. v OTEC Präzisionsfinish GmbH

Expert Commentary

Full Decision Text

1 Hamburg - Local Division UPC CFI 281/2025 Final Order of the Court of First Instance of the Unified Patent Court delivered on 16/06/2025 HEADNOTES: 1. The validity of a patent-in-suit in an application for provisional measures is secured if the court considers it on the balance of probabilities to be more likely than not that the patent is valid. The burden of presentation and proof for facts concerning the lack of validity of the patent in suit lies with the defendant. Public prior use must prove that all features of the claim have been used previously. 2. The necessary weighing of interests can be in favour of the applicant if the contested embodiment, in combination with the sale of a new machine, opens up a new market. The patent infringement can lead then to subsequent business transactions for the Defendant, which are at the same time missed opportunities for the Applicant. 3. The provision of security for enforcement requires a reasoned application. Facts must be presented by the defendant, such as the financial situation of the applicant or difficulties in enforcement. KEYWORDS: Preliminary injunction; Art. 62(2) UPCA; Rule 209(2) RoP Infringement of the patent in suit Validity of the patent-in-suit and Burden of proof Weighing of interest Security of enforcement PARTIES OF THE PROCEEDINGS: Steros GPA Innovative S.L., represented by the CEO, Pau Sarsanedas Millet, Calle Salvador Alarma, 16, 08035 Barcelona, Spain, Applicant, 2 Representatives: all attorneys-at-law of Grünecker PartG mbB admitted in the Federal Republic of Germany and to the UPC, especially Mr. Sebastian Ochs and Mr. Björn-Alexander Bockelmann, Leopoldstrasse 4, 80802 Munich, European patent attorneys of Grünecker PartG mbB who have the necessary qualifications pursuant to Article 48 (2) of the Agreement on a Unified Patent Court (UPCA), especially Dr. Peter Milteny, Leopoldstrasse 4, 80802 Munich Electronic address: Rechtsanwaltspostfach@grunecker.de versus OTEC Präzisionsfinish GmbH, represented by the CEOs Helmut Gegenheimer, Soran Jota und Nico Gegenheimer, Heinrich-Hertz-Straße 24, 75334 Straubenhardt-Conweiler, Germany, Defendant, Representatives: Attorney-at-law Klaus Haft, Hoyng Rokh Monegier, Steinstraße 20, 40212 Düsseldorf, European patent attorney and representative of the UPC, Stefan Lenz, Lichti Patentanwälte Partnerschaft mbB, Bergwaldstraße 1, 76227 Karlsruhe, Deutschland Electronic address: Klaus.Haft@hoyngrokh.com PATENT AT ISSUE: EP 4 249 647 LANGUAGE OF THE PROCEEDINGS: English SUBJECT-MATTER OF THE PROCEEDINGS: Application for provisional measures PANEL: Panel of the Local Division in Hamburg DECIDING JUDGE: 3 Full Panel Presiding Judge and JR Sabine Klepsch Legally qualified Judge Dr. Stefan Schilling Legally qualified Judge Petri Rinkinen Technically qualified Judge Rudi Goedeweeck SHORT SUMMARY OF FACTS: The Applicant asserts claims against the Defendant for infringement of its European Patent EP 4 249 647 B1 with unitary effect (hereinafter: patent-in-suit or patent, Exhibit GRU 2), entitled “Electrolytic Medium and Electropolishing Process using such electrolytic Medium”. The application of the patent-in-suit was filed on 30 November 2021. On 26 February 2025, the European Patent Office (EPO) granted the European Patent. The request for unitary effect has been filed on 21 March 2025. On the same day the decision on the request for unitary effect has been made. The application for provisional measures has been filed on 25 March 2025. The Applicant is part of the DryLyte-group and alleges to be the exclusive licensee to the patent-in-suit. The patent proprietor Drylyte, S.L., belongs to the same group of company as the Applicant and is informed about this case. The patent in suit protects electric medium and electropolishing process using such electrolytic medium. The Patent consists of 15 claims. The Applicant has based its present application for provisional measures on claim 1. Claim 1 reads as follows: Electrolytic medium comprising: - a set of solid electrolyte particles, comprising solid particles that retain a conductive solution, the set presenting an electrical conductivity greater than 10 micronS/cm, and - a non-conductive fluid immiscible in the conductive solution, immiscible being understood as not forming a single phase in any proportion from 0 to 100°C, the non- conductive fluid when being at rest at room temperature not significantly conducting electrical current. the electrolytic medium being suitable for an electropolishing process comprising the steps of: a) connecting at least one piece to be polished to a power supply; b) connecting at least one electrode to the opposite pole of the power supply; c) contacting the at least one piece to be polished and the solid electrolyte particles of the electrolytic medium with a relative movement between the piece and the particles; d) applying a potential difference between the piece to be polished and the electrode, which produces a current flow between them through the electrolytic medium. 4 The Defendant, a German company, is, as the Applicant, also active in the electro- polishing/electro-finishing market. It sells both, the necessary machines, such as, e.g. the EF- Smart or EF-One and the respective media used for the electro-polishing/electro-finishing as attacked herewith. The Defendant sells an electrolyte media EF 16-11 (following: attacked embodiment) and a refill RF 16-0. EF 16-11 is an electrolyte medium comprising free electrically conductive solid bodies and a surrounding liquid, the latter being functionally equivalent to the refill liquid RF 16-0. EF 16-11 consists of a first less dense liquid phase and a second denser liquid phase. The Applicant analysed the attacked embodiment and submitted the analysis in Exhibit GRU 5 and GRU 6. The following figures of the attacked embodiments are taken from Exhibit GRU 5: 5 In addition, and to avoid repetition, reference is made to the parties’ submissions and the entire contents of the file. STATEMENT OF THE FORMS OF ORDER SOUGHT BY THE PARTIES: The Applicant requests: I. The Defendant is ordered to cease and desist from manufacturing and/or offering, placing on the market or using or exporting or possessing for the purposes referred to in Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, and Sweden, 6 an electrolytic medium, comprising: - a set of solid electrolyte particles, comprising solid particles that retain a conductive solution, the set presenting an electrical conductivity greater than 10 micronS/cm, and - a non-conductive fluid immiscible in the conductive solution, immiscible being understood as not forming a single phase in any proportion from 0 to 100°C, the non- conductive fluid when being at rest at room temperature not significantly conducting electrical current; the electrolytic medium being suitable for an electropolishing process comprising the steps of: a) connecting at least one piece to be polished to a power supply; b) connecting at least one electrode to the opposite pole of the power supply; c) contacting the at least one piece to be polished and the solid electrolyte particles of the electrolytic medium with a relative movement between the piece and the particles; d) applying a potential difference between the piece to be polished and the electrode, which produces a current flow between them through the electrolytic medium. II. For each individual case of non-compliance with the order under I. the Defendant must pay a recurring penalty payment of up to EUR 250,000 to the Court (repeatedly if necessary). The Local Division Hamburg upon request by the Applicant will determine the penalty. III. The Defendant shall bear the costs of the proceedings. IV. The above orders are directly enforceable. The Defendant requests: A. 1. Applicant’s application for provisional measure is rejected; 2. Applicant shall bear the costs of the proceedings. B. In the alternative to A., allow Defendant to continue the alleged infringing activities subject to provision of security by Defendant, the amount of which to be determined by the Court. C. In the alternative, in any event where the Court orders a preliminary injunction, order Applicant to provide a security for the enforcement of a preliminary injunction 7 and/or other provisional measure, the amount to be determined by the Court, whereas the security should not fall below EUR 500,000. POINTS AT ISSUE: The Applicant’s assertions The Applicant asserts that it is entitled to enforce the claims at issue. It is the exclusive licensee of the patent in suit. The license agreement dated 10 January 2017, is translated in the language of the proceedings (Exhibit GRU 1 and GRU1 EN) and has been entered into under Spanish Law. Even though the license agreement may have been signed by the same person on both sides and before the patent-in-suit was granted, this does not prevent the contract from being valid. The license agreement covers the patent-in-suit. The agreement includes any future patents in the field of electropolishing of metals. It is the opinion of the Applicant that the Defendant’s attacked embodiment infringes the patent in suit. The patent-in-suit, especially claim 1, does not exclude ”single oil-in-water- type conductive emulsion which is partially absorbed by the particles and also surrounding them“ from the scope of protection. The person skilled in the art will understand, however, that even such embodiments of an electrolytic medium are covered by the claim that are prepared by using an emulsion together with particles, for as long as the (final) electrolytic medium comprises a set of solid electrolyte particles retaining a conductive solution and a non-conductive solution immiscible with the conductive solution retained by the particles. A liquid conductive solution shall remain retained by the particles and a “non-conductive“ fluid to significantly remain “outside”, so that it is the set of particles that preserves its conductivity and polishing function, while the external surrounding liquid focuses its action in other relevant yet complementary effects: preventing unwanted acid attacks, atmospheric oxidation, reducing evaporation of the conductive solution. The term “non-conductive fluid” means that it can itself be conductive but shall not have a conductivity equal or higher than the conductivity of the “set of solid electrolyte particles, comprising solid particles that retain a conductive solution“, since those are the ones to actually perform the electropolishing by coming into contact with the object to be treated. The patent-in-suit does not consider 10 micronS/cm as an absolute value of what is conductive and what is not. “Non-conductive“ does not mean that the “non-conductive“ fluid shall not have no conductivity at all, since otherwise the requirement of “not significantly conducting electrical current“ would not make any sense, but rather allows for the “non-conductive“ fluid to actually be conductive. Consequently the patent appreciates that the requirement of feature 1.1, according to which the set solid electrolyte particles shall present an electrical conductivity greater than 10 micronS/cm, does not automatically pose a threshold for the conductivity of the “non-conductive“ fluid. For the functioning of the electropolishing the relative relation of conductivities is relevant, which is expressed by the current wording of feature 1.2, but no absolute value has been used for the conductivity of the non-conductive fluid as this would not properly reflect the invention. The patent-in- suit clearly shows that it is about the relative values of conductivity between the set of solid particles and the non-conductive fluid. 8 According to the Applicant, the analysis of the attacked embodiment shows that features 1.1 and 1.2 are fulfilled by the attacked embodiment. The fact that the fluid surrounding the electrolyte particles of the EF 16-11 is (1) non-conductive and (2) immiscible with the conductive solution in the electrolyte particles has been demonstrated in Exhibit GRU 5. The Defendant’s argument that the attacked embodiment contains only one fluid, a water-in-oil- emulsion, does not prevent an infringement. The Applicant claims that an order for provisional measures is necessary. The further re- quirements have been met. In the present case, the Applicant filed the application without hesitation within one month of the publication of the grant of the patent-in-suit. The Appli- cant acted swiftly and effectively to enforce its rights. The circumstances of the case support the Applicant’s request for provisional measures. The Applicant’s market opportunities would be significantly impaired if the Court was to decide that Applicant can await the out- come of proceedings on the merits. The fact that the IDS tradeshow has ended does not change the necessity for the Applicant to swiftly enforce its rights and does not alter the reasons for why the application for provisional measures was filed in the first place. Without the issuance of provisional measures, the advertisement and distribution of the attacked embodiment cannot be prevented for a considerable period of time. The Defendant uses and sells the attacked embodiment while knowing that it is exploiting the innovative tech- nology of the Applicant using an electrolytic medium in which the solid electrolyte particles perform the electropolishing. The Defendant therefore takes advantage of Applicant’s sub- stantial investment into developing innovative products that offer benefits for its customers. By selling the attacked embodiment (regularly in connection with its machines) to existing and new customers, potential customers are lost for the Applicant. This holds true even more since Defendant – as a direct competitor of Applicant – tries to enter and secure new market segments with its “EF-One” machine that is to be used with the attacked embodi- ment. While Defendant tried to hide its use of the attacked embodiment at the recent IDS tradeshow, a video recorded by the “Dental Journal”, proves that the machine “EF-One” is used with the attacked embodiment EF 16-11. The aim of the Defendant with its new ma- chine “EF-One” is therefore in connection with the use of the attacked embodiment to open up new market segments (e.g. smaller dental laboratories) in direct competition with the Applicant. If the Defendant is allowed to keep using the attacked embodiment and the tech- nological advancements of the Applicant, there is a risk that customers will turn to the De- fendant’s machines and the attacked embodiment. The “EF-One” entered the market in combination with the attacked embodiment that uses the benefits of the technical teaching of the patent-in-suit. It can be assumed that the Defendant would not achieve the same po- sition on the market with the “EF-One”, if it was sold without the benefits of the attacked embodiment. However, for the Applicant the sale of an “EF-One” machine due to the at- tacked embodiment causes severe harm. Firstly, the Defendant’s machine is sold instead of potentially the Applicant’s machine (for which sales the Applicant would also not receive any damages based on the patent infringement) and secondly, the sale of a machine automati- cally brings with it further recurring sales of electrolyte media which are typically obtained from the same manufacturer. The patent infringement, therefore, leads to subsequent busi- ness transactions for the Defendant, which are at the same time missed opportunities for the Applicant. Additionally, since the Defendant’s products are offered at lower prices in comparison to the products of the Applicant, the special circumstance of price erosion also applies. Therefore, the balancing of interests clearly weighs in favour of the Applicant. 9 The Defendant’s arguments The Defendant argues that the Applicant’s requests must be rejected because no provisional measures are necessary in the present case. The Applicant is not entitled to sue. It did not prove that the license agreement is valid. The license agreement is signed on behalf of both parties by Mr. Pau Sarsanedas Millet and the agreement was signed on 10 January 2017 and thus predates the priority date of the patent in suit, without any explanation why and on what basis such advance disposal should be possible. The expert opinions provided by the Applicant as Exhibit GRU 9 and GRU 10 refer to national proceedings in parallel litigations. They are of no relevance to the parties or the proceedings at hand as they already concern a different – i.e. at the time of licensing already existent – patent, different parties and different subject matter. Exhibit GRU 9 does not confirm that the exclusive license contained in the agreement also applies for future, yet undefined patents. There was also no need to analyse the agreement in the national proceedings with regard of future patents, as the patent relevant for the national proceedings was already applied and granted at the time of signature on the license agreement. Neither the expert opinions, nor the parallel court decision analysed all aspects of the agreement. The same reasoning applies for exhibit GRU 10, which only relates to the license agreements conformity with Spanish law. The license agreement provided by Applicant does not cover future IP rights. The wording of the license is evidently ambiguous, which hinders the effectiveness of the in rem exclusive license. The license agreement is not distinct regarding any alleged future patented inventions especially since they were only applied for far after conducting the license agreement. The Defendant disagrees with the Applicant on the construction of the claim. It is of the opinion that the patent-in-suit is not infringed, as the attacked embodiment does not contain a conductive solution and a non-conductive fluid in the meaning of the patent. The attacked embodiment contains only a water-in-oil-emulsion with a higher conductivity. Further, the validity of the patent is in question. Prior use by the Defendant, as shown in Exhibit D1 and D2, destroys the novelty of the patent in suit. In addition, the invention of claim 1 is not novel based on exhibits D3 and D4. The case lacks any necessity for an order of provisional measures. The Applicant did not present any reasoning for an objective urgency. It has not demonstrated that the Defendant deprives it of market opportunities by use of the accused embodiments. The allegations regarding market deprivation and price erosion, misleading and damaging signalling effects on the market and continuous infringement of the Applicant’s IP rights, do not relate to the patent-in-suit and the accused embodiments. The asserted claim 1 is not capable of preventing the use of the new machine EF-One, as it only relates to an electrolytic medium. The Applicant does not present a causal link of the alleged market deprivation or price erosion and the use of Defendant’s new machine EF-One or the accused embodiments. Moreover, it remains unclear why the distribution of the new machine EF-One is supposed to open a new market segment for the Defendant, as the Defendant has been active on the market of electropolishing since 2010 for the jewellery market and since 2021 for the dental market. The argued addressed market segment — smaller laboratories — is reached through 10 the design and performance of the machine and indirectly also through the pricing mechanism of this machine, irrespective of the polishing medium used. The alleged price erosion is not supported by proof of competitive pricing in relation to the accused embodiments or that this is causally linked to the use of the accused medium, either. The Applicant rather indicates that only the general market offering or the machine’s pricing strategy itself could reason such alleged price erosion. Reference is also made to the submissions of the parties and to the audio recording of the oral hearing. GROUNDS FOR THE ORDER: The Application for provisional measures is admissible and founded. I. Applicant’s entitlement to bring actions The Applicant is entitled to bring actions to the court, Art. 47 (2) Agreement on the Unified Patent Court (hereinafter UPCA). I.1. Guiding principles in the assessment of the applicant’s entitlement R. 211.2 Rules of Procedure (hereinafter RoP), in conjunction with Art. 62(4) UPCA (see also Art. 9(3) Directive 2004/48/EC), provides that the Court may invite the applicant for provisional measures to provide reasonable evidence to satisfy the Court to a sufficient degree of certainty that the applicant is entitled to institute proceedings under Art. 47 UPCA, that the patent in suit is valid and that it is infringed, or that such an infringement is imminent. Such a degree of certainty requires that the Court considers it at least more likely than not that the applicant is entitled to initiate the proceedings and that the patent is infringed. The burden of presentation and proof with respect to the facts allegedly establishing the right to institute proceedings and the infringement or imminent infringement of the patent, as well as other circumstances allegedly supporting the applicant’s request, lies with the applicant (UPC CoA 335/2023, Order of 26 February 2024 – NanoString Technologies v. 10x Genomics; UPC CoA 182/2004, Order of 25. September 2024 – Mammut Sports v. Ortovox Sportartikel). I.2. Assessment of the Applicant’s entitlement Based on these principles, the burden of presentation and proof is on the Applicant to show that its entitlement is more likely than not. With regard to those elements, the Defendant does not seriously dispute the strong presumption of the Applicant’s entitlement to apply for a preliminary injunction and further provisional measures pursuant to Art. 47 UPCA and R. 8.5 and 211.2 RoP. The Applicant has demonstrated that it is the exclusive licensee of the patent in suit. It sub- mitted the license agreement dated 10 January 2017 translated in the language of the pro- 11 ceedings (Exhibit GRU 1 and GRU1 EN). The license agreement has been entered into under Spanish Law. Although the license agreement has been signed by the same person on both sides, this does not prevent this agreement from being a valid contract. Based on the expert opinion provid- ed by the Applicant, multiple representation generally is admissible under Spanish law un- less there is a clear conflict of interest between the contracting parties. In the case at hand, licensor (patent holder) and licensee (Applicant) belong to the same group of companies. Whereas licensor’s main business field is Research and Development, licensee’s (i.e. Appli- cant’s) main business field is manufacture and sales. The license granted results from the corporate structure and ensures comprehensive exploitation of licensor’s patents, including the patent-in-suit. Therefore, Mr. Sarsanedas effectively concluded the license agreement on behalf of both contracting parties. A clear conflict of interest cannot be found. The license agreement covers the patent-in-suit. The agreement includes any future patents in the field of electropolishing of metals (Exhibit GRU-1en): “Both parties have agreed that the use of the patents of DRYLYTE, S.L. in the field of elec- tropolishing, both those already existing and those that may be added in the future, shall be transferred to STEROS GPA INNOVATIVE, S.L. as an exclusive right. […] By virtue of this agreement, DRYLYTE, S.L. assigns the use of its patents in the field of elec- tropolishing of metals exclusively to STEROS GPA INNOVATIVE, S.L. The transfer includes both the currently registered patents and all other patents that should be registered during the term of the agreement and its possible extensions.” The fact that the priority date of the patent-in-suit is after the Effective Date of the agree- ment is, therefore, irrelevant. The Defendant itself presented in national proceedings at the Regional Court in Düsseldorf a private expert opinion (Exhibit GRU 9, p. 3), which came to the conclusion that the subject matter of the licence agreement is therefore not limited to any specific registered patent but defined broadly by reference to any and all current and future patents anywhere in the world that Drylyte S.L. may own in that field during the term of the agreement. Even though this is an expert opinion in national proceedings, there is no reason why this should not be used also before the UPC. The patent-in-suit in the national proceedings had, unlike in the present proceedings, a priority date from before the licence agreement was concluded. However, given the Applicant's aim of obtaining unrestricted freedom to oper- ate, there can be no reasonable doubt that patents registered after the agreement was con- cluded are also to be licensed. Insofar as the Defendant raises doubts about the incorpora- tion of future property rights, these appear to be unfounded. The patent proprietor, which belongs to the same group of companies as the Applicant, is aware of the present proceed- ings. It can be assumed that the patent proprietor would have raised objections to the Appli- cant's present application if the Applicant had not been entitled to assert it before this Court. This should make it clear that the Applicant is also licensed to use the patent in suit. Therefore, the objections by the Defendant, that the licence agreement and the reference to the future right is phrased vaguely and the field of invention of the referenced IP right is not 12 clearly referenced and the time frame of the allegedly relevant patented inventions is not sufficiently determined, remain unsuccessful in this context. II. The patent-in-suit The following applies with respect to the scope of the patent in suit: II.1. The invention of claim 1 The patent-in-suit generally relates to electropolishing, in particular an electrolytic medium and an electropolishing process using such electrolytic medium. The patent-in-suit provides the technical background to a new technology for polishing metal surfaces based on an electrochemical process using a solid electrolyte described in the patent document under publication number ES 2 604 830 was released (see para.[0002]). By using a novel solid electrolyte, this process substantially improved the conventional liquid electropolishing process. From a practical point of view, the use of corrosive concentrated acid solutions is avoided and no liquid waste is generated. On the other hand, the results obtained surpass those expected from a conventional electropolishing process, since solid bodies free of solid electrolyte increase selectivity by concentrating the electrochemical effect on the roughness peaks (see para. [0002]). Several documents, mentioned in the patent in suit (see para. [0003] to [0008]), describe different compositions of the solid electrolyte to carry out the process. The patent-in-suit mentions a number of limitations of the compositions. When the lowest levels of roughness that the system reaches are reached, a characteristic ripple is generated, commonly called "orange peel". The particles generate acid exudates on the metal surface that often cause pitting. The acid exudates, together with atmospheric oxygen, oxidize the surface in an uncontrolled way. The final roughness cannot be reduced beyond a limit, which depends on the piece (initial roughness, metal, shape, etc.) and the solid electrolyte (size, composition, concentration, etc.) The evaporation of the contained electrolyte liquid generates a drift of results in the process. The high mechanical resistance of the medium prevents delicate pieces from being polished. The patent-in-suit further refers to patent ES 2 756 948A1, that discloses a solid electrolyte for dry electropolishing of metals comprising: at least one type of active ion exchange resin particles charged with an acidic solution that generate chemical activity and electrical activity, at least one type of particles that moderate the chemical action and/or particles that moderate the electrical conductivity of the particles active, in such a way that the moderating particles reduce the localized attacks to the surface of the polished piece caused by the exudates of the active particles by means of electrically active solid particles (9), comprising an electrical source (2) with an electrode (3) that transmits electric charge to the electrically active solid particles (9) and means for projecting electrically active solid particles onto the surface to be treated (1). Based on the foregoing, the patent in suit defines its object to provide a new electrolytic medium and an electropolishing process that uses it. Claim 1 having the following features: 13 [1] Electrolytic medium comprising: [1.1] a set of electrolyte particles, comprising [1.1.1] solid particles that retain a conductive solution, [1.1.2] the set presenting an electrical conductivity greater than 10 micronS/cm, and [1.2] a non-conductive fluid immiscible in the conductive solution, [1.2.1] immiscible being understood as not forming a single phase in any proportion from 0 to 100°C, [1.2.2] the non-conductive fluid when being at rest at room temperature not significantly conducting electric current. [2] The electrolytic medium being suitable for an electropolishing process comprising the steps of: [2.1] a) connecting at least one piece to be polished to a power supply; [2.2] b) connecting at least one electrode to the opposite pole of the power supply; [2.3] c) contacting the at least one piece to be polished and the solid electrolyte particles of the electrolytic medium with a relative movement between the piece and the particles; [2.4] d) applying a potential difference between the piece to be polished and the electrode, which produces a current flow between them through the electrolytic medium. II.2. Claim construction of claim 1 Some of these features need clarification, especially the disputed feature 1.1.2 and feature group 1.2. II.2.a) Principles of claim construction According to Art. 69 EPC in conjunction with Art. 1 of the Protocol on its interpretation, the patent claim is not only the starting point, but the definitive basis for determining the protective scope of a European patent. The interpretation of a patent claim does not depend solely on its exact wording in the linguistic sense. Rather, the description and the drawings must always be taken into account as explanatory aids for the interpretation of the patent claim and not only be used to clarify any ambiguities in the patent claim. However, this does not mean that the patent claim serves only as a guideline and that its scope may extend to what, from a consideration of the description and drawings, the patent proprietor has contemplated. The patent claim is always to be interpreted from the point of view of a person skilled in the art (Court of Appeal, UPC CoA 1/2024, Order of 13 May 2024, App 8/2024 – VusionGroup SA v Hanshow Technology Co. Ltd et al.; UPC CoA 335/2023, Order of 26 February 2024, App 576355/2023 - 10X Genomics and Harvard/Nanostring case; Order of 11 March 2024, GRUR-RS 2024, 2829, headnote 2. and para. 73 - 77 - Nachweisverfahren; LD Düsseldorf, UPC CFI 452/2023, Order of 9 April 2024, p. 13, GRUR- RS 2024, 7207, para. 49). Additionally, the skilled person is taking the purpose of every patent claim into account, to provide the average person skilled in the art with a technical teaching which, when reworked, leads to the intended success of the invention. 14 II.2.b) Person skilled in the art As the Defendant correctly points out, the technical field in question is the field of surface treatment processes that can be differentiated – among others – by mechanical, chemical and electrochemical processes. The patent in suit focuses on certain technical aspects of surface treatment by electropolishing. Thus, the skilled person of the technical field in question would be a mechanical engineer, who is experienced in the field of surface treatment, especially in the field of electropolishing. II.2.c) Claim construction of the claims the parties disagree Having said that, the following applies in the case at hand: II.2.c)aa) Claim construction of feature group 1.1 Feature group 1.1 relates to an electrolytic medium that comprises two components: feature 1.1.1 – a set of solid electrolyte particles that retain a conductive solution. Feature 1.1.2 specifies that the electrical conductivity of the set of particles retaining a conductive solution greater than 10 micronS/cm. The conductive solution and the function of it is explained in the patent in suit in para. [0049] et seq.. It is described: “The conductive liquid solution that is retained in the particles is a conductive liquid. The func- tion of the conductive liquid solution in an electropolishing process is twofold: on the one hand, it conducts electricity, and on the other, it must be able to dissolve the oxides that are formed on the surface to be treated. For this reason, the composition of this liquid is key and depends on the process to which it is to be applied, on the type of surface to be treated. For electropolishing processes the conductive liquid solution can be an ionic liquid, a liquid acid, a conductive solution, a conductive liquid polymer.” In para. [0050] et seq. further preferred embodiments are described. The specification does not provide restrictions with regard to the conductive solution. The only requirements are that the solution is conductive and that it provides a conductivity of at least 10 micronS/cm to the set of particles retaining said solution. II.2.c)bb) Claim construction of feature group 1.2 The non-conductive fluid on the other hand, which is part of the feature group 1.2, is de- scribed as non-conductive and immiscible in the conductive solution. Both, the conductivity and the immiscibility, are further defined in the sub-features 1.2.1 and 1.2.2. Immiscible be- ing understood as not forming a single phase in any proportion from 0 to 100°C and the non- conductive fluid when being at rest at room temperature not significantly conducting elec- tric current. Para. [0067] et seq. explains the term “non-conductive fluid” further as the “defining ele- ment of this invention”. Para. [0067] describes: “(…) It is a fluid that when being at rest at room temperature does not significantly conduct electrical current. To fulfil its function it must be immiscible in the liquid electrolyte contained 15 in the solid electrolyte articles. In this way, by affinity the liquid electrolyte is kept inside the particles and the non-conductive fluid outside. As it must withstand the presence of an elec- trolyte liquid that can be an acid solution, in addition to considerable voltages, the non- conductive fluid must be a compound being stable or kinetically stable under working condi- tions.” The function of the non-conductive fluid immiscible in the electrolyte liquid is explained with its effects on the connectivity between the particles, as well as on the particle-metal surface interaction, para. [0024]. This is further described in para. [0025] et seq.: “[0025] Without the non-conductive liquid, each particle has a part of its surface that contacts other particles and another part that contacts the gaseous medium (usually air). In contrast, in this invention, the non-conductive fluid contacts the surface of the spherical particles, without significantly penetrating the interior, avoiding the areas where the particle contacts another particle. [0026] In the particle-particle contact areas, the liquid electrolyte in the particles is concen- trated. The immiscibility between the two fluids (conductive and non-conductive) makes the particle-particle conductive liquid menisci more concentrated in space, and therefore stronger. All of this translates into greater particle connectivity.” The non-conductive fluid therefore provides higher connectivity between the particles, i.e. higher conductivity of the medium and has further positive effects in the final polish, that is described in para. [0027): “[0027] During an electropolishing process with this invention, the metal surface is covered with non-conductive fluid, except at the particle-metal contact points. This has several positive effects on the final finishes:  Protects from localized acid attacks. As the surface is covered with immiscible liquid, the aqueous acidic exudates of the particles do not accumulate on the metal surface, which prevents pitting.  Prevents atmospheric oxidation, by preventing the contact of ambient oxygen with the metal.  As the oxidation of the metal is due exclusively to the contact of the particles and the passage of electric current, the control over the electrochemical process is increased.  It concentrates the electrochemical action where it is most effective, in the roughness peaks. If we visualize the surface roughness as a succession of peaks and valleys, the non-conductive fluid leaves the valleys inactive against the electrochemical process.  Lower final roughness and ripple. As the fluid is preferentially distributed in the val- leys, the process is able to better discern roughness and achieve smoother finishes.  Reduction of the final "orange peel".  More selective process: less metal removed to achieve the same roughness reduction. In para [0068] et seq. the non-conductive fluid is explained in more detail in preferred em- bodiments. Para. [0072] explains the technical functioning of the non-conductive fluid: “A main effect of the non-conductive liquid on the solid electrolyte particles is to cover the metal surface of the piece to be polished with non-conductive liquid. This has several technical effects that result in a better finish of the solid electrolyte electropolishing process: 16 - Metal protection against localized acid attacks - Reduction of atmospheric oxidation - Greater control over the electrochemical process - Higher selectivity in the peaks - Final finish with lower roughness” Neither the claim nor the description provide any specific details on the configuration of the non-conductive fluid. (1) Para. [0088] et seq. describes a special configuration of non-conductive fluids that are based on emulsified systems. These systems are described as having a high erosion speed, high fluidity that facilitates pumping, and also provide high quality finishes. An additional ad- vantage is the possibility to more easily adapt the formula to different needs. Para. [0089] describes a water-in-oil emulsion as a particular embodiment: “These emulsions are expressly a non-conductive non-polar continuous phase containing con- ductive polar solution micelles. According to the terminology commonly used in emulsions, we are talking about water-in-oil type emulsions (w/o). The conductive polar solution of micelles has the same composition as the conductive solution that is retained by the solid electrolyte particles. As the non-polar continuous phase is non-conductive, the emulsion at rest without solid electrolyte particles is non-conductive.” The mentioning of an emulsion in connection with the non-conductive fluid does not mean for a skilled person that the emulsion is only relevant for the composition of the non- conductive fluid. The wording ‘based on’ clarifies that the fluid is only one part of the emul- sion. This is illustrated even more clearly in para. [0090], where an emulsion-based non- conductive fluid is described in more detail (underling added): “Although the emulsion is not conductive, the conductivity of the total mixture of the electro- lytic medium, emulsion plus solid electrolyte particles, is clearly superior to formulations with non-emulsified fluids. This is due to the fact that the micelles of the emulsion are structured around the particles, which retain polar conductive solution, locally destabilizing the micelles, thus increasing the hydrophilic bridges between particles.” This means that the electrolytic medium as a whole can also be formed by an emulsion in combination with the solid particles. The water micelles are located within the oily phase. It is described as advantageous if the conductive solution forming the micelles is the same so- lution as that of the conductive solution (para [0089). This leads the skilled person to the conclusion that the non-conductive fluid is the “oily-part” of the emulsion and the “aqueous- part” is advantageously identical to the conductive liquid. Para [0092] describes the compo- sition of an emulsion-based non-conductive fluid more generally: “• A non-conductive fluid as an non-polar continuous phase based on any of the non- conductive fluids mentioned in this text. • A conductive solution as a dispersed polar phase • Surfactants to stabilize the emulsion” 17 Thereafter, the emulsion-based non-conductive fluid comprises a non-polar fluid, a conduc- tive solution and a surfactant to stabilize the emulsion, which makes it clear that at least two different liquids should be present in the emulsion. The mandatory presence of a water-in-oil type emulsion is not required, only the general concept of an emulsion stabilised by a surfactant is disclosed. The wording of the claim and also the description in the patent leave the specific configuration of the conductive solution and the non-conductive fluid based on emulsified systems open to the skilled person. Under the heading ‘emulsion’, a concept of how the non-conductive fluid can be formed, is merely described. In conclusion, it can be stated that the claim leaves open the specific composition of the fluid and solution, provided that they are conductive or non-conductive and the non-conductive fluid is not miscible in the conductive solution. (2) With regard to the question disputed between the parties as to when a fluid is non- conductive, the measure of conductivity specified in feature 1.1.2 – 10 micronS/cm – is also decisive for non-conductive fluid in the absence of other information in the patent. Since the patent-in-suit, apart from feature 1.1.2 relating to the conductivity of the set of electrolyte particles and the description in para. [0032], that does not provide any further indication as to how to determine when a fluid is non-conductive, the skilled person assumes that a fluid is not non-conductive if it has an electric conductivity of more than 10 micronS/cm. This al- ready follows from the systematics of the claim: The conductive solution is in feature group 1.1 described as having a conductivity of more than 10 micronS/cm. At the same time, fea- ture group 1.2 describes non-conductive liquid and the physical characteristics of this. In this respect, a varying conductivity is described and the lower limit of electrical conductivity is specified as 10 micronS/cm. This already makes it clear that the non-conductive fluid must have an electrical conductivity of not more than 10 micronS/cm in any case. This confirmed by the fact that examples of preferred embodiments of the non-conductive fluid, which are given in para [0077], can essentially be classified as non-conductive. Overall, therefore, the patent in suit does not provide any indication that the non- conductive solution may have electrical conductivity above 10 micronS/cm. After all the conductivity of the non-conductive liquid is measured when being at rest. This is already clear from the wording of claim 1.2.2, and is also described in paras. [0067] and [0089] regarding the emulsion. If the emulsion at rest separates in two phases, i.e. a less dense (oily) phase on top of a denser (aqueous) phase, then the conductivity of each phase has to be measured separately in order to establish whether it is conductive or not. Even though the Defendant has suggested such, the term fluid in the patent in suit does not embrace gases. A fluid is described in the patent in suit in para. [0016]: “In this text fluid is understood in a broad sense, materials with very high viscosities are con- sidered fluids, such as petroleum jelly, with a viscosity at room temperature close to 0.05 m2/s [sic]. Both Newtonian and non-Newtonian fluids are considered within the scope of this inven- tion.” 18 This could lead the person skilled in the art to an understanding that gases are embraced by the term fluid as well. This argument could be based on the Newtonian and non-Newtonian fluids mentioned in para. [0016]. But the mentioning of Newtonian fluids in para [0016] does not support the conclusion that this means that the fluid would be gaseous as Newtonian fluids also encompasses liquids. The above cited statement that “fluid” should be under- stood in a broad sense, actually points away from gases, because it refers specifically to high- ly viscous fluids such as petroleum jelly while gases have a very low viscosity. Based on the wording of the claim, the miscibility of the non-conductive fluid and the con- ductive fluid makes only sense for fluids in the same phase, liquids in the present case. Fea- ture 1.2.1 mentions explicitly “a single phase”. That the immiscible fluid is a liquid is also corroborated by the explanations in para. [0072] of the patent-in-suit which deals with the non-conductive fluid and explains that the effect of the non-conductive fluid is to cover the metal surface of the piece with non-conductive liquid. Further, the invention embraces liquid and granular electrolytic media; the latter are com- positions with a low amount of the non-conductive fluid ([0122]) of which the “mobility can be promoted and controlled by vibrating systems or fluidization by injection of a gas, such as air” ([0123]; see also [0159]). For such embodiments, sufficient non-conductive fluid should still be present to shield the solid particles from the gaseous environment ([0025] and [0124]). The latter statements would make no sense if the fluid would be a gas. In addition, the embodiments with a higher amount of non-conductive fluid benefit from injection of a gas ([0155], [0205]) because it keeps the solid particles in “suspension”. So also for a liquid electrolytic media, the patent distinguishes between the “non-conductive fluid” and a gas. Finally, preferred embodiments of the invention contain “emulsions” of the conductive solu- tion and the non-conductive fluid: the term “emulsion” is generally defined as a mixture of liquids and would make no sense if the fluid would be a gas. III. Assessment of infringement Based on this understanding of the features, the attacked embodiment makes literal use of the technical teaching of claim 1 of the patent in suit. The Panel also finds that it is more likely than not that that the patent in suit is infringed by the Defendant’s offer and distribu- tion of the attacked embodiment in and from Germany. III.1. Likelihood of infringement The Defendant rightly did not dispute that the feature group 2 is implemented, so that no further explanation in necessary in this respect. In addition, the Defendant did not dispute that the attacked embodiment also has a set of electrolyte particles (feature group 1.1), comprising solid particles that retain a conductive solution with the electrical conductivity specified in feature 1.1.2. 19 It is undisputed that the attacked embodiment, the electrolyte media EF 16-11, contains solid particles. Stereographic images obtained by the Applicant (Exhibit GRU 5) show parti- cles having a diameter ranging from 0.5 to 1 mm. FT-IR spectra of the solids obtained after filtration point to an ion-exchange resin (sulfonic styrene-divinyl-benzene) that is also found in the label of the attacked embodiment (Exhibit 5 p. 5 Fig. 2.a). The surrounding liquid is an emulsion; the refill RF 16-0 contains two liquid phases (Exhibit GRU 5, p. 4) and is undisputed between the parties that it is the same liquid as in the at- tacked embodiment (Exhibit HRM 06, par. 10). The conductivity measurements of EF 16-11 and RF 16-0 brought the following results: With respect to EF 16-11, various tests were conducted to measure the conductivity, also with the solid particles after filtering those. The followings results were achieved (Exhibit 5, p. 15): The measurements make clear that the filtered solid particles (set of particles retaining a conductive solution) have a conductivity (3785 micronS/cm) which is significantly higher than 10 micronS/cm, so that feature group 1.1 is realized. The Defendant’s objections to this are not convincing. As far as the Defendant argues that the attacked embodiment only features a conductive emulsion inside and outside the parti- cles, hence not a solution, this argument is not supported by analytic evidence. It only de- rives from the preparation method, wherein a conductive oil-in-water emulsion is added to particles. This does not exclude that the water phase of the oil-in-water emulsion penetrates inside the particles, resulting in the claimed feature. In addition, the attacked embodiment also has a non-conductive fluid immiscible in the con- ductive solution (feature group 1.2). The patent in suit itself points out that the fluid has to be “not significantly conducting electric current when at rest”. Accordingly, the Applicant examined the two phases of the refill solution RF 16-0 at rest and investigated their conduc- tivity. As already stated, it is undisputed between the parties that the refill solution RF 16-0 has the same composition as the liquid of the attacked embodiment. 20 The conductivity of RF 16-0 was measured under room temperature for the two different phases and for the stirred condition, showing the following results (Exhibit GRU 5, p. 14): The less dense liquid of the RF 16-0 showed the lowest conductivity – 0.291 micronS/cm. The highest conductivity was measured for the denser liquid – 240 micronS/cm. In stirred condition, which is not relevant for the measurement of the conductivity of the non- conductive fluid, the conductivity is significantly higher than the conductivity of the less dense liquid – 187.8 micronS/cm, but lower than the dense liquid. Phase 1 of the refill therefore has no conductivity (0.291 micronS/cm). The label (Exhibit GRU 5, p. 5) shows that the medium contains long-chain hydrocarbons (“Kohlenwasserstof- fe, C12-C15” and “Kohlenwasserstoffe C13-C16”) and surfactant, as described in the patent- in-suit for an “emulsion-based” non-conductive fluid (paras. [0092], [0094] and [0096]). In addition, the non-conductive fluid of the attacked embodiment does not form a single phase in any proportion from 0° to 100°C. The same applies when looking at the refill solu- tion bottle (Exhibit GRU 5 p. 4, Fig. 1 (b)), which clearly shows two phases. This can also be seen from the list of ingredients, which includes long-chain hydrocarbons and a polar solu- tion. The mere fact that the emulsion added by Defendant in the preparation of the accused product contains an oil phase (the non-conductive fluid) and a water phase (the conductive solution) which separate if not stirred, implies that these phases are immiscible. The measurements make clear that the attacked embodiment comprises a non-conductive fluid with a conductivity lower than 10 micronS/cm when being at rest und being immiscible in the conductive solution so that feature group 1.2 is realized. The Defendant’s objections to this are also not convincing. The argument of the Defendant, that a non-conductive fluid according to feature group [1.2] does not exist, and that the only fluid used is a conductive oil-in-water emulsion that is partially absorbed by and surrounds the particles is based on the interpretation of the term “fluid”, which the Defendant believes to be synonymous with ‘emulsion”. As described above, the description makes it clear that the non-conductive fluid is merely an ingredient of the emulsion and not the emulsion itself. 21 As far as the Defendant further argues that “the liquid surrounding the solid particles in the accused embodiment is highly conductive”, which is correct and confirmed by the measure- ments of the Applicant (value reported: 408.3 micronS/cm), the Defendant fails to recognize that this argument requires a claim construction wherein the surrounding liquid (the emul- sion) is to be considered equal to the “non-conductive fluid”, despite the latter being de- scribed in the patent as an ingredient of the emulsion. In line with the Defendant’s claim construction, it has further tried to demonstrate in the test report Exhibit HRM 06 that the “one fluid” in the accused product is conductive (by measuring the conductivity of the sur- rounding liquid; see par. 6 of the report), implying that no “non-conductive fluid” is present. However, the measured sample is an emulsion, so the correct test requires to measure the conductivity of the oil component of the emulsion only, which is “the non-conductive fluid when being at rest”. The Applicant on the other hand has confirmed that the oily phase in the attacked embodi- ment is non-conductive and that the solution inside the particles is conductive. None of these measurements have been countered by the Defendant. The Defendant has neither disputed the Applicant’s conductivity measurement of the “set” of particles nor of the con- ductive solution retained therein (feature 1.1.2 of the claim). Based on the above the Court finds that it is more likely than not that the attacked embodi- ment includes all the features of claim 1 and hence it is more likely than not that the De- fendant infringes the patent-in-suit. IV. Validity In the opinion of the Court the validity of the patent in suit is reasonably certain. IV.1. Principles of evaluating the validity of a patent As confirmed by the Court of Appeal a sufficient degree of certainty regarding the validity of the patent in suit lacks if the Court considers it on the balance of probabilities to be more likely than not that the patent is invalid. The burden of presentation and proof for facts con- cerning the lack of validity of the patent in suit lies with the defendant (CoA, UPC CoA 335/2023, Order of 26 February 2024 - NanoString/10x Genomics, see p. 26-27; UPC CoA 182/2024, Order of 25 September 2024 – Mammut Sports v. Ortovox Sportartikel). It should be noted that the assessment of these probabilities is based on an examination of how the Court – consisting of a panel including a technical qualified judge – would probably decide about the revocation of the patent in the event of a counterclaim on the merits. Decisions of other European Courts or decisions of the EPO concerning the same patent do not bind the Court but may provide helpful indications that the Court may take into account. IV.2. Validity of the patent-in-suit Based on these principles, the validity of claim 1 of the patent in suit is more likely than its invalidity. 22 IV.2.a) Novelty – public prior use D1 Claim 1 is more likely novel with respect of public prior use as indicated by the exhibit D1 by the Defendant. The Defendant asserts a public prior use by the Defendant due to the sale of its elec- tropolishing machine of the type "EPAG" (model 2016) comprising the machine number "EPAGB/160021" together with an electrolytic medium comprising a set of solid electrolyte particles ("MFB 0.5 Micro Finishing Balls" orange für Silber) retaining a conductive solution and further comprising a non-conductive fluid immiscible in the conductive solution ("PL1" Poliercompound for Silver) to a German company Heimerle + Meule GmbH, Pforzheim. The electrolytic medium for use in the EPAG electropolishing machine comprises an emul- sion of the type "PL 1" (position 6 of the offer of (D1.1) "PL 1 Poliercompound für Silber", Article No. V6399) on the one hand, and a set of solid particles (position 8 of the offer of (D1.1) "MFB 0.5 Micro Finishing Balls orange für Silber und Gold", Article No. V6410) on the other hand. In addition, a limited amount of plastic polishing granules had been offered (po- sition 7 of D1.1). As can be taken from the safety data sheet according to Exhibit D1.7, the "PL1 Poliercom- pound" – which is an emulsion (see affidavit and written witness statement of XXX, Exhibit HRM 10a, p. 3, mn. 2) – comprises, on the one hand, (e.g., under No. 2.2 of (D1.7)) a conduc- tive solution as a continuous phase of the emulsion, namely, benzenesulfonic acid with tri- ethanolamine, ethoxylated iso-tridecanol and water. On the other hand, according to the safety data sheet (D1.7), the "PL 1 Poliercompound" emulsion comprises micelles from a non-conductive fluid immiscible in the conductive solution, namely, hydrocarbons with 11 to 14 carbon atoms (n-alkanes, iso-alkanes, cyclic and aromatic) as well as kerosene. Having regard to the miscibility of kerosene, of the hydrocarbons with 10 to 13 carbon atoms ("n- alkanes, iso-alkanes, cyclic, aromatic (2-25%)"), and of the hydrocarbons with 11 to 14 car- bon atoms (n-/iso-alkanes, cyclic, >2%) with water, under No. 12.4 of (D1.7) it is stated that "the product floats on water and does not dissolve". The electrical conductivity of "PL1 Po- liercompound" emulsion has been determined by the Defendant to at least 4500-6000 mi- cronS/cm. The electrical conductivity of the emulsion after combination with the MFB, ion exchange and separation ranges from 1751 to 9020 micronS/cm (see affidavit and written statement of XXX, Exhibit HRM 06, p. 5, mn. 13 et seq.). The Defendant was unable to demonstrate that feature group 1.1 was directly and unam- biguously disclosed by the public prior use. It can be noted that the attacked embodiment and the alleged prior use differ in their composition, so that no conclusion can be drawn regarding the measurements of the attacked embodiment with regard to the public prior use. The Defendant did not provide any measurement of the conductivity of the set of elec- trolyte particles (feature 1.1.). The only data that were presented concerned the emulsion (4500-6000 micronS/cm) and emulsion plus MFB balls (1751 – 9020 micronS/cm). The De- fendant did not analyze the solution retained by the particles (attacked embodiment 278 micronS/cm). 23 According to the affidavit and written statement of XXX(Exhibit HRM 06, para. 13) the De- fendant has filtered the electrolytic medium of the prior use in order to measure the con- ductivity of the surrounding liquid; although the solids (= the set of solid particles + conduc- tive solution) that remain on the filter could be measured, no conductivity value is reported by the Defendant. This was pointed out by the Applicant (see e.g. par. 97 and 104 of the Re- ply to the Objection). In reply thereto, the Defendant presented further tests (see additional affidavit and written statement of XXX, Exhibit HRM 12), but it cannot be concluded from these tests without doubt whether the conductivity of the balls and the retained liquid was measured. It was solely stated (Exhibit HRM 12 mn. 12): “I confirm that the emulsion retained in the MFB 0.5 orange (Amberlite IRC 120 H) is conduc- tive. Based on tests that I have conducted, PL I mixed with MFB and as retained in the MFB 0.5 orange present a conductivity of 4,100 to 16,000 microS/cm.” The first sentence clearly relates to “the emulsion retained in the MFB”, i.e. only to the con- tent of the particles and not to the claimed “set”. The wording of the next sentence “PL1 mixed with MFB and as retained in the MFB” is unclear but the wording “as retained” indi- cates that it relates to the content of the particles rather than the set of particles and its content. Furthermore, no specific information about the layout of the conducted tests is given, especially not about the preparation of the measured sample, which would have shed more light on what exactly had been measured. The subsequent paragraphs 13–14 of Exhibit HRM 12 relate to the wide range of the reported result but do not resolve the ambiguity. This was addressed to the Defendant during the oral hearing. It pointed out that the state- ment in Exhibit HRM 12 para 13 referred to para. 97 of the objection, which explained how the attacked embodiment is produced. However, this reference does not explain why the set of electrolyte particles was not measured. Insofar as the Defendant explained that the tech- nical implementation of corresponding measurements is difficult, the test setup used by the Applicant could have been used instead, as the Defendant did not raise any questions re- garding the measurements of the attacked embodiment. Therefore, a direct and unambiguous disclosure of feature group 1.1 through public prior use by the Applicant cannot be established. Hence the patent-in-suit is more likely than not novel over D1. IV.2.b) Novelty – other public prior use D2 The same applies regarding the asserted public prior use (D2) by exemplary further alike sales of an electropolishing machine of the type "EPAG" (model 2016) together with an elec- trolytic medium comprising a set of solid electrolyte particles ("MFB 0.5 Micro Finishing Balls" orange for Silver) retaining a conductive solution and further comprising a non- conductive fluid immiscible in the conductive solution ("PL1" Poliercompound for Silver) to various clients. Since the same products are to have been used, the conductivity of the set is not clearly disclosed here either. IV.2.c) Novelty – Exhibit D3 24 Claim 1 is more likely novel with respect to the EP 3 640 373 A1 (Exhibit HRM 08; in the fol- lowing: D3). D3 relates to the use of sulfuric acid (H₂SO₄) as an electrolyte in an electrochemical process for smoothing and polishing metal surfaces using ion transport via free solids (D3, para. [0001]). D3 discloses an electrolytic media comprising particles which retain a conductive solution of sulfuric acid for use in smoothing and polishing processes which are preferably carried out in “an anhydrous gas atmosphere free of O2 (for example: N2, CO2, Ar, etc.)” (pa- ra. [0034]). D3 does not disclose a specific value for the conductivity of the “set” (particles + sulfuric acid solution therein), but clearly states (para. [0021]) that the particles have “suffi- cient porosity and affinity for retaining a specific amount of said electrolyte liquid so that they have appreciable electrical conductivity.” Therefore, the feature group 1.1 is directly and unambiguously disclosed as the conductivity of the “set” of D3 is with a high probability much higher than the lower threshold of the patent claim. However, the Feature group 1.2 is not disclosed. D3 does not disclose a non-conductive flu- id. As explained above, the patent-in-suit does not embrace gases under the term fluid. Hence the patent-in-suit is more likely than not novel over D3. IV.2.d) Novelty – exhibit D4 The invention is also novel compared to D4 (EP 2 646 603; Exhibit HRM 09). D4 discloses an electrolytic medium (see, e.g., claims 1 et seq. of D4), comprising an electro- lyte solution according to claims 1–14 on the one hand, and solid bodies in the form of gran- ule particles being polymer particles according to claim 15 on the other hand. D4 further discloses a non-conductive fluid immiscible in the conductive solution, immiscible being understood as not forming a single phase in any proportion from 0 to 100°C, the non- conductive fluid when being at rest at room temperature not significantly conducting elec- trical current, D4 suggests non-conductive nonpolar components of the electrolyte, namely, between 6 and 50% by weight of liquid hydrocarbons according to claim 1, in particular liq- uid hydrocarbons comprising between 5 and 20 carbon atoms such as petroleum, kerosene or benzine (claims 10 and 11 of D4), which are identical with the hydrocarbons of the non- conductive fluid of the electrolytic medium according to claim 6 of the patent-in-suit. D4 does not disclose solid particles that retain a conductive solution. Claim 15, to which the Defendant refers, describes particles, especially in the form of granule particles. This does not disclose electrolyte particles that retain a conductive solution. Particles are mentioned in para. [0025] and [0026]. But the ability to retain a conductive solution is not described. Hence the patent-in-suit is more likely than not novel over D4. V. Other requirements According to Art. 62(2) UPCA in conjunction with R. 211.3 RoP, the Court has discretion to weigh the interests of the parties against each other, taking into account in particular any harm that might be caused to one of the parties by the granting of provisional measures or 25 the dismissal of the application (UPC CoA 182/2024, Order of 25 September 2024, para. 225 – Ortovox Sportartikel v. Mammut Sports). In the present case, this weighing up of in- terests is in favour of the Applicant. V.1. Urgency In weighing the interests, the Court will take into account any unreasonable delay in apply- ing for provisional measures under R. 211.4 RoP in conjunction with R. 209.2 (b) RoP . This is based on the fact that the patentee, by acting in such a way, shows that the enforcement of its rights is no longer urgent for him. In such a situation, there is no need to order provisional measures. In the case at hand, however, there is no indication of such unreasonable delay on the part of the Applicant. The temporal urgency required for the order of provisional measures is lacking only if the infringed party has been so negligent and hesitant in pursuing its claims that, from an objec- tive point of view, it must be concluded that the infringed party has no interest in the prompt enforcement of its rights and that it is therefore not appropriate to order provisional measures (cf. also LD Munich, Order of 19 September 2023, UPC CFI 2/2023, – Nachweis- verfahren; LD Düsseldorf, Order of 9 April 2024 – Mammut Sports v. Ortovox, UPC CFI 452/2024; LD Hamburg, Order of June 2024, UPC CFI 151/2024 – Ballinno v. UEFA). Having said that, in the case at hand the Applicant did not wait for an unreasonably long time. The Applicant filed the application within one month upon the publication of grant of the patent in suit and had the attacked embodiment examined by the end of 2024. The Ap- plicant was not in the position to file the application for provisional measures before the grant. Therefore, the Applicant was neither negligent nor hesitant in pursuing its rights. V.2. Weighing of interest The interests of the Applicant outweigh those of the Defendant. It is therefore justified to grant a preliminary injunction in the case at hand. V.2.a) Principles of weighing of interest Pursuant to Art. 62(2) UPCA and Rule 211.3 RoP, the Court weighs the interests of the par- ties against each other at its discretion, taking into account in particular the possible damage that could arise for one of the parties from the issuance of the Provisional measures or the dismissal of the request (see also UPC Appeal Court, Order of 25 September 2024, UPC CFI 182/2024 – Ortovox Sportartikel v Mammut Sports Group; LD Munich, Order of 27 August 2024, UPC CFI 74/2024 = ACT 9216/2024 – Hand Held Products v. Scandit; LD Düs- seldorf, Order of 31 October 2024, UPC CFI 347/2024 = ACT 37931/2024 – Valeo Electrifi- cation v. Magna PT). However, the aspects mentioned are not an exclusive list of the circum- stances to be taken into account when weighing up interests (see ‘in particular’ in Art. 62(2) UPCA and Rule 211.3 RoP). Rather, all relevant circumstances must be taken into account in the balancing of interests (LD Munich, Order of 27 August 2024, UPC CFI 74/2024 = ACT 9216/2024 – Hand Held Products v. Scandit). Above all, the balance of interests must 26 take into account the probability of an erroneous decision and also the objective urgency in terms of the necessity of provisional measures with regard to equally possible proceedings on the merits. All aspects are to be weighed against each other in relation to each other. The necessity of also taking these aspects into account in the context of the weighing of in- terests arises from the relationship between the provisional measures procedure under Rule 206 et seq. RoP and possible proceedings on the merits. In procedural terms, the proceed- ings on the merits are the rule, while the preliminary proceedings, with their summary ex- amination and the possibility of a subsequent legal defence, are the exception (LD Düssel- dorf, Order of 31 October 2024, UPC CFI 347/2024 = ACT 37931/2024 – Valeo Electrifica- tion/Magna P). This relationship follows directly from the provisional nature of the order of provisional measures. The aim is to provisionally secure the patent proprietor's rights until the conclusion of proceedings on the merits. However, there is a fundamental risk that the order of provisional measures may subsequently prove to be incorrect and that the defend- ant has been wrongly prohibited from carrying out his business activities because only a summary examination is carried out and the defendant's possibilities for legal protection are limited due to the urgent nature of the proceedings. If, on the other hand, the order of inter- im measures is refused, the applicant is not without rights but can enforce his claims in the main proceedings (LD Munich, Order of 25 November 2024, UPC CFI 443/2024 = ACT 43563/2024 – Häfele v Kunststoff KG Nehl). Based on these assessments, the interests of the parties must be weighed up to determine whether the ordering of provisional measures is necessary and appropriate in view of the subsequent decision in the main proceedings. That means, whether it is reasonable for the applicant, in view of the risk of an erroneous order of provisional measures and the effects for the defendant on the one hand, and the negative effects associated with the continua- tion of the patent infringement until a decision in the proceedings on the merits is issued, on the other hand, to wait to enforce its claims until the main proceedings have been conclud- ed (LD Düsseldorf, Order of 31 October 2024, UPC CFI 347/2024 = ACT 37931/2024 – Valeo Electrification v. Magna PT and others). As can be indirectly seen from Rule 206.2 (c) and (d) of the Rules of Procedure, a reason must be provided to show that an interim order is neces- sary that orders conduct before the final decision is handed down, which can only be defini- tively ordered with the decision on the main action. V.2.b) Assessment in this case Based on these assessments, there are special circumstances on the part of the Applicant. The Applicant is being deprived of market shares through the distribution of the attacked embodiment, and this situation is being perpetuated. The Defendant – as a direct competi- tor of Applicant – tries to enter and secure new market segments with its “EF-One” machine that can be used with the attacked embodiment. The EF-One is described in a video pro- duced at the IDS 2025 tradeshow in Cologne (Exhibit GRU 11) as the latest, most compact electrofinishing system on the market, that can process a model cast at the same time and simply smaller items and is particularly suitable for smaller dental laboratories, thereby opening up a new market. The fact that the EF-One can also be operated with the attacked embodiment is made clear by the employee's statement that the same polishing granules can be used as in the previous machines. This fact is not contested by the Defendant. The 27 sale of a machine automatically brings with it further recurring sales of electrolyte media which are typically obtained from the same manufacturer. Hence if the Defendant sells a new machine, which can be used in a new environment and therefore in a new market and that can be operated with the attacked embodiment, the Applicant will suffer a lasting loss of market share of its electrolyte media, resulting in lower sales. The patent infringement, therefore, leads to subsequent business transactions for the Defendant, which are at the same time missed opportunities for the Applicant. The parties compete in this new market, with the Defendant using the invention covered by the patent in suit. In this respect, the attacked embodiment deprives the Applicant of market shares despite its monopoly position under the patent in suit. The corresponding damages cannot simply be remedied, because when the Defendant launched the EF-One, which can be operated with the attacked embod- iment, the damages will be further exacerbated, as the purchasers of the machines can/will also purchase the attacked embodiment from the Defendant. Additionally, since the Defendant’s products are offered at lower prices in comparison to the products of the Applicant, an argument that the Applicant had already submitted in its sub- mission dated 22 April 2025, price erosion to the disadvantage of the Applicant occurs. On the other hand, the Defendant is not completely restricted in its business activities, as it has other products in the field of electropolishing, which it can offer and sell. In addition, it must be noted that this preliminary injunction case does not affect as such the Defendant’s ability to sell its EF-One machine, only the electrolyte media protected by the patent-in-suit. Hence, its sales are only affected if the sale of the EF-One machine is based on the use of its attacked embodiment product. After all, special circumstances on the part of the Applicant can be established, that balance the weighing of interest in favour of the Applicant and waiting for a decision in the main ac- tion unreasonable. V.3. Additional arguments by the Defendant Insofar as the Defendant asserted that the Applicant has put forward additional grounds for urgency – price erosion, damaging signal effect – in its reply to the objection dated 22 April 2025 and that these should be rejected, the Court sees no reason to do so. The Defendant is correct in stating that the Rules of Procedure generally provide for a front-loaded system in all proceedings. However, this does not preclude responding to arguments put forward by the opposing party. This applies in any case if the opposing party is able to respond without significant difficulty in a written statement granted to it, as in the present case. The Appli- cant has not presented any extensive and/or difficult-to-verify facts, but rather circumstanc- es that are readily known to the Defendant and that it was able to address without difficulty in its written statement. As stated above, that Applicant had already submitted in its submis- sion dated 22 April 2025 that the Defendant’s products are offered at lower prices in com- parison to the products of the Applicant leading to price erosion. VI. Conclusions 28 As a result, the Court finds that it is more likely than not that the patent-in-suit is infringed by the Defendant by its offer and distribution of the attacked embodiment. Furthermore, it is more likely than not that the patent-in-suit is valid. Since the granting of provisional measures is also necessary in terms of time and substance, and since the weighing of inter- ests is also in favour of the Applicant, the legal consequences are as follows: VI.1. Preliminary injunction granted The Court, in the exercise of its discretion (R. 209.2 RoP), considers the grant of a preliminary injunction to be appropriate and justified (Art. 62(1), 25(a) UPCA). Only a preliminary injunc- tion takes into account the Applicant’s interest in the effective enforcement of the patent-in- suit. VI.2. Penalty payments The threat of penalty payments in the event of non-compliance is based on R. 354.3 RoP. The setting of an overall limit gives the Panel the necessary flexibility to also take into ac- count the Defendant’s behaviour in the event of an infringement and, on that basis, to de- termine an appropriate penalty payment in accordance with R. 354.4 RoP. VI.3. Provision of security for enforcement Where appropriate, the enforcement of a decision may, pursuant to Art. 82(2) UPCA, be sub- ject to the provision of security or an equivalent assurance to ensure compensation for any damage suffered, in particular in the case of injunctions. For provisional measures, this is reflected in R. 211.5 RoP, first sentence, which states that the Court may order the applicant to provide adequate security for appropriate compensation for any injury likely to be caused to the defendant, which the applicant may be liable to bear in the event that the Court re- vokes the order for provisional measures. Furthermore, according to R. 352.1 RoP, decisions and orders may be subject to the rendering of a security (whether by deposit or bank guar- antee or otherwise) by a party to the other party for legal costs and other expenses and compensation for any damage incurred or likely to be incurred if the decisions and orders are enforced and subsequently revoked. Where provisional measures are revoked, or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of the patent, the Court may order the applicant, upon request of the defendant, to provide the defendant with appropriate compensation for any injury caused by those measures (R. 213.2 RoP). Pursuant to R. 354.2 RoP, where during an action an en- forceable decision or order of the Court is subsequently varied or revoked, the Court may order the party which has enforced such decision or order, upon the request of the party against whom the decision or order has been enforced, to provide appropriate compensa- tion for any injury caused by the enforcement. The rendering of security is not conditioned on an application by a party. Where interim measures are ordered without the defendant having been heard, the Court shall order the applicant to provide adequate security, unless there are special circumstances not to do so 29 (R.213.2 RoP, second sentence). While security shall thus normally be ordered for ex parte measures, the Court has discretion (“may” in R. 211.5 RoP, first sentence, referred to above) for provisional measures when the defendant is heard (inter partes) (CoA, Order of 3 March 2025, UPC-CoA 523/2024, para 110 – Sumi Agro v Syngenta). Under the circumstances of the case, the Court does not see reason to order security. If the Court does not see reasons to order, of its own motion, the rendering of security for en- forcement of provisional measures, a defendant can still bring forward arguments and facts to support that the outcome may be different once the action on the merits is tried, and/or that there will be an undue burden in enforcing an order for compensation of injuries caused by the provisional measures if those measures are revoked. The burden of proof is then gen- erally on the defendant. The undue burden can for example be related to the financial posi- tion of the applicant, or to the foreign law applicable in the territory where the order for compensation shall be enforced, including the application of that foreign law. The Defendant applied in the objection for a security of enforcement. Apart from reproduc- ing the wording of R. 211.5 RoP, no grounds were given for such an order. The Defendant does not give reasons for the necessity to order a security of enforcement nor does it pro- vide how potential damages would be calculated in this case. After the Applicant pointed this out, no further comments were made by the Defendant. Hence the Court does not see a reason to order security for enforcement based on the request of the Defendant. VI.4. Costs According to the case law of the Local Division Hamburg, a decision on the obligation to bear legal costs is justified (Order of 21 February 2025, ORD 68880/2024, UPC CFI 701/2024; Order of 26 June 2024, ORD 38032/2024, UPC CFI 124/2024). The Court is of the opinion, like the Court of Appeal (Order of 3 March 2025, UPC CoA 523/2024 – Sumi Agro v. Syngen- ta; Order of 6 August 2024, UPC CoA 335/2024, 10x Genomics et al v. NanoString), that a cost decision should be issued in inter partes proceedings for provisional measures, since it concludes the action. ORDER: I. The Defendant is ordered to cease and desist from manufacturing and/or offering, placing on the market or using or exporting or possessing for the purposes referred to in Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia, and Sweden, an electrolytic medium, comprising: - a set of solid electrolyte particles, comprising solid particles that retain a conductive solution, the set presenting an electrical conductivity greater than 10 micronS/cm, and - a non-conductive fluid immiscible in the conductive solution, immiscible being understood as not forming a single phase in any proportion from 0 to 100°C, the 30 non-conductive fluid when being at rest at room temperature not significantly conducting electrical current; the electrolytic medium being suitable for an electropolishing process comprising the steps of: a) connecting at least one piece to be polished to a power supply; b) connecting at least one electrode to the opposite pole of the power supply; c) contacting the at least one piece to be polished and the solid electrolyte particles of the electrolytic medium with a relative movement between the piece and the particles; d) applying a potential difference between the piece to be polished and the electrode, which produces a current flow between them through the electrolytic medium. II. For each individual case of non-compliance with the order under I. the Defendant must pay a recurring penalty payment of up to EUR 250,000 to the Court (repeatedly if necessary). The Local Division Hamburg upon request by the Applicant will determine the penalty. III. The Defendant is ordered to pay the costs of the proceedings. IV. The above orders are directly enforceable. ORDER DETAILS: ORDER No. ORD 28305/2025 ACTION NUMBER: ACT 14764/2024 UPC Number: UPC CFI 281/2025 Action type: Application for Provisional Measures (R. 206 RoP) Sabine Klepsch Presiding Judge und Judge-rapporteur Dr. Stefan Schilling Legally qualified Judge Petri Rinkinen Legally qualified Judge 31 Rudi Goedeweeck Technically qualified Judge For the sub-registry NOTICE ON THE RIGHT ON APPEAL: The Defendant may bring an appeal against the present order within 15 days of service of this order (Art. 73(2)(a), 62 UPCA, R. 211.6, R. 220.1(c), 224.1(b) and 224.2(b) RoP). INFORMATION ABOUT ENFORCEMENt (Art. 82 UPCA, Art. Art. 37(2) UPCS, R. 118.8, 158.2, 354, 355.4 RoP): An authentic copy of the enforceable order will be issued by the Deputy-Registrar upon re- quest of the enforcing party, R. 69 RegR.

Key Holdings

• The validity of a patent-in-suit in an application for provisional measures is secured if the court considers it on the balance of probabilities to be more likely than not that the patent is valid. The burden of presentation and proof for facts concerning the lack of validity of the patent in suit lies with the defendant.
• The necessary weighing of interests can be in favour of the applicant if the contested embodiment, in combination with the sale of a new machine, opens up a new market, leading to subsequent business transactions for the Defendant which are missed opportunities for the Applicant.
• The provision of security for enforcement requires a reasoned application. Facts must be presented by the defendant, such as the financial situation of the applicant or difficulties in enforcement, as it is not automatically ordered for inter partes provisional measures.
• An exclusive licensee belonging to the same group of companies as the patent holder is entitled to bring actions, even if the license agreement predates the patent's priority date and covers future patents, provided no clear conflict of interest exists.
• For claim 1, a 'non-conductive fluid' must have an electrical conductivity of not more than 10 micronS/cm when at rest, and the term 'fluid' in this context refers to liquids, not gases, based on claim wording and description.

Tags

• Balance of Interests
• Burden of Proof
• Chemicals
• Claim Construction
• Infringement
• Patent Validity
• Preliminary Injunction
• Prior Use
• Security for Costs
• Urgency

Related Rules

• Article 6 – Defendants Domiciled Outside Member States

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