UPC CFI 449/2025 – Hewlett-Packard Development Company, L.P. v Andreas Rentmeister e.K.

Expert Commentary

Full Decision Text

1 Düsseldorf Local Division UPC CFI 449/2025 Order of the Court of First Instance issued on 3 September 2025 concerning EP 2 826 630 B1 and EP 3 530 469 B1 Headnotes: If the Court has informed a defendant of an application for provisional measures and has invited this defendant to lodge an objection to the application within a specified time period, but the defendant does not lodge an objection within the time period set by the Court or decides not to substantiate its objection, the application for provisional measures can be decided based on the applicant’s submissions by means of a regular order in the PI proceed- ings (follow up to UPC CFI 213/2025 (LD Düsseldorf), Order of 10 July 2025, headnote 1 and mn. 213 - 214 – Aesculap v Shanghai International Holding). Keywords: Preliminary injunction; invitation to lodge an objection; fail to lodge an objection; decision by de- fault; regular order 2 APPLICANT: Hewlett-Packard Development Company, L.P., 10300 Energy Drive, Spring, Texas 77389, USA Represented by: Attorney-at-law Vanessa Werlin, Freshfields Part mbB, Maximilansplatz 13, 80333 Munich, Germany Electronic address for service: vanessa.werlin@freshfields.com contributing: Patent Attorney Dr Wolfgang Lippich, Patent Attorney Alex- ander von Poswik, Patent Attorney Martin Janovec, Widenmayerstraße 6, 80538 Munich, Germany DEFENDANTS: [1. Zhuhai ouguan Electronic Technology Co., Ltd, Room 712-2, Building 2, No. 2288, Mingzhu South Road Qianshan, Xiangzhou District Zhuhai City, Guangdong, 519060, China] 2. Andreas Rentmeister e.K., Rufacherstr. 7, 79910 Freiburg, Germany Defendant 2. represented by: Attorney-at-law Jochen Bühling, Krieger Mes Rechtsanwälte Partnerschaft mbB, Bennigsen-Platz 1, 40474 Düsseldorf, Germany Electronic address for service: jochen.buehling@krieger-mes.de EUROPEAN PATENTS NO. EP 2 826 630 B1 and EP 3 530 469 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by Presiding Judge Thomas acting as judge-rapporteur, the legally qualified judge Dr Schumacher and the legally qualified judge Lopes. LANGUAGE OF THE PROCEEDINGS: English SUBJECT: R. 206 RoP – Application for provisional measures SUMMARY OF THE FACTS: 1. By way of an application for provisional measures, the Applicant seeks a preliminary injunc- tion and further provisional measures against the Defendants in respect of an alleged in- fringement of EP 2 826 630 B1 (hereinafter: Patent A) and of EP 3 530 469 B1 (hereinafter: Patent B). 2. The Applicant is the registered proprietor of the asserted parts of Patent A. The application for Patent A was filed in English language on 22 October 2010, whereby the application was published on 21 January 2015. The mention of the grant of Patent A was published on 3 9 October 2019. No opposition was filed against Patent A. Currently, Patent A is in force in the UPC Member States Austria, Belgium, Denmark, Finland, France, Germany, Italy, the Netherlands, Portugal and Sweden. Patent A was originally opted-out of the UPC system. The withdrawal of the opt-out was filed on 23 October 2024. 3. Patent A is titled “Fluid cartridge”. Its claim 1 reads as follows: „Ink cartridge (3) for an inkjet printer (2), comprising a bottom face (35) and a front face (33); interfaces in the front face (33) for connection to a cartridge receiving structure (4), the inter- faces including an ink interface (14), a gas interface (15), and an electrical interface (10, 19), wherein the electrical interface (10, 19) is arranged near a top surface (53) of the cartridge, characterized in that the ink cartridge further comprises; a guide interface arranged on the bottom face (35) for guiding the cartridge (3) along a straight line (Y) for connecting the interfaces, the guide interface having a guide receiving opening (40) near the front face; a latch stop (30) and a latch track (28) arranged on the bottom face (35), to guide and retain a latch (27) of the cartridge receiving structure (4); wherein the gas interface (15) is arranged near a middle of the front surface (33), and the ink interface (14) and the guide receiving opening (40) are arranged near the bottom face (35).“ With regard to the wording of claims 2 and 4, which are only asserted by way of “in particular if” motions, reference is made to the patent specification of Patent A. 4. The following scaled-down figures, taken from Patent A, illustrate the invention. According to the description of Patent A, Figure 3 illustrates a cross sectional side view of a part of an embodiment of a fluid ejection system with a fluid cartridge in a non-connected state. 5. Furthermore, Figure 5 illustrates a perspective view of an embodiment of a fluid cartridge, whereas Figure 6 is another perspective view of this fluid cartridge. 4 6. The Applicant is also the registered proprietor of Patent B. The application for Patent B was filed in English language on 22 October 2010, whereby the application was published on 28 August 2019. The mention of the grant of Patent B was published on 13 May 2020. No opposition was filed against Patent B. Currently, Patent B is in force in the UPC Member States Germany, France, Italy and the Netherlands. Patent B was originally opted-out of the UPC system. The withdrawal of the opt-out was filed on 23 October 2024. 7. Patent B is also titled “Fluid cartridge”. Its claim 1 reads as follows: “Ink cartridge (3) for an inkjet printer (2), comprising interfaces on a front face (33) for connection to a cartridge receiving structure (4), the inter- faces including an ink interface (14) and a gas interface (15); a guide interface on a bottom face (35) for guiding the cartridge (3) along a straight line (Y) for connecting the interfaces, the guide interface including a guide receiving opening (40) near the front face; a latch track (28) and a latch stop (30) arranged on the bottom face (35), to guide and retain a latch (27) of the cartridge receiving structure (4); and an electrical circuit (10, 19), disposed near a top face (53), wherein the top face is opposite the bottom face (35), wherein the electrical circuit is sunken with respect to the front face (33), wherein the electrical circuit (10, 19) comprises electrodes that extend in a plane (Y, Z) per- pendicular to the front face (33) and arranged on a line (PP) parallel to the front face (33) and behind the front face (33); wherein the cartridge also comprises an ejector alignment interface (36) on the front face (33) and wherein the electrical circuit (10, 19) is arranged near the top of the front face (33), the gas interface (15) and the ejector alignment interface (36) are arranged near the middle of the front face (33) and the ink interface (14) and the guide receiving opening (40) are arranged near the bottom face (35).” With regard to the wording of claims 4 and 5, which are only asserted by way of “in particular if” motions, reference is made to the patent specification of Patent B. 5 8. Figures 3, 5 and 6 shown above can also be found in Patent B. In addition, Figure 4 is dis- played below. According to the patent description, this figure illustrates an embodiment of a detail of a receiving structure for a fluid cartridge in front view. 9. The Applicant is a subsidiary of HP Inc., one of the largest US PC and printer manufacturers. The products offered by HP Inc. and its affiliates include printer cartridges with integrated print heads (known as Integrated Print Head Cartridges, IPH), and such where the print head is installed in the printer and the cartridges are in the form of a separate ink supply, so-called Individual Ink Cartridges (IIC). 10. According to the Applicant, Defendant 1. is a company based in China that offers and sells printer cartridges inter alia through the online platform Amazon. The range of products of- fered and sold by Defendant 1. includes rebuilds for HP cartridges of type 937 (hereinafter: challenged embodiments I) and its offer is targeted towards customers in Austria, Belgium, Denmark, Finland, France, Germany, Italy, Netherlands, Portugal and Sweden. 11. Defendant 2. is a Germany-based company under which the registered merchant Andreas Rentmeister e.K. (eingetragener Kaufmann under German law) offers and sells printer car- tridges inter alia through its online store www.toneroffice.de. The range of products manu- factured and sold by Defendant 2. includes rebuilds for HP cartridges of type 937 (hereinaf- ter: challenged embodiments II), as shown in the screenshots below: 6 12. Defendant 2. offers and sells these cartridges not only to customers in Germany, but also (inter alia) to customers in Austria, Belgium, France and the Netherlands. 13. The current application for provisional measures is directed against printer cartridges of type 937 that are marketed and sold by the different Defendants under different brands either as single cartridges for individual colours (C, Y, M or K) or as a multipack for all four colours. This application also concerns all subcategories of the two types of cartridges (type 937) which include inter alia cartridges of the type 937e as well as 937/937XL cartridges. Together, all these printer cartridges of type 937 (including the respective subcategories) will be referred to as “the challenged embodiments“. MAIN STEPS OF THE PROCEEDINGS: 14. On 28 May 2025, the Applicant has filed an application for provisional measures. 15. Service to the Defendant 1., who is based in China, has not yet been completed. 16. In contrast, the application for provisional measures was served to Defendant 2. on 14 June 2025. By brief of 23 July 2025, Defendant 2. has notified the Court about a settlement reached between the parties. Furthermore, Defendant 2. has stated that “as agreed between the parties, the Defendant 2. will not defend himself against the motions 1, 2, 3 and 5 as put forward by the Applicant in its application of 28 May 2025 with regard to EP 2 826 630 (pages 7/8) and with regard to EP 3 530 469 (pages 51/52). In so far the court may issue a judgement by default against Defendant 2. The Applicant will withdraw motion 4. with regard to both patents (pages 8/52 of the application for provisional measures”. 17. In accordance with this, on 24 July 2025, the Applicant withdrew motion 4 for both patents 7 in question and requested a decision by default against Defendant 2. in all other aspects. INDICATION OF THE PARTIES’ REQUESTS: 18. With regard to Patent A, the Applicant requests the following: 1. Defendants are ordered to refrain from making, offering, placing on the market, using or possessing for the purposes mentioned, or importing or storing the product for those purposes in the territories of Austria, Belgium, Denmark, Finland, France, Germany, It- aly, Netherlands, Portugal and Sweden Ink cartridges for inkjet printers, comprising: a bottom face (35) and a front face (33); interfaces in the front face (33) for connection to a cartridge receiving structure (4), the interfaces including an ink interface (14), a gas interface (15), and an electrical interface (10, 19), wherein the electrical interface (10, 19) is arranged near a top surface (53) of the cartridge, characterized in that the ink cartridge further comprises; a guide interface arranged on the bottom face (35) for guiding the cartridge (3) along a straight line (Y) for connecting the interfaces, the guide interface having a guide receiving opening (40) near the front face; a latch stop (30) and a latch track (28) arranged on the bottom face (35) to guide and retain a latch (27) of the cartridge receiving structure (4); wherein the gas interface (15) is arranged near a middle of the front surface (33), and the ink interface (14) and the guide receiving opening (40) are arranged near the bottom face (35) (EP 630, claim 1) in particular if the latch track (28) of the cartridge according to claim 1 comprises a lock- ing track (28A) and an unlocking track (28B), and is arranged to move the latch (27) with respect to the latch stop (30) along a locking track (28A) into a locked engagement po- sition at insertion, and along an unlocking track (28B), different from the locking track, into an unlocked position at ejection. (EP 630, claim 2) in particular if the latch stop (30) of the cartridge according to claim 2 comprises a latch stop wall (49) and a latch abutment (50), the abutment (50) comprising a protrusion in the stop wall (49) for keeping the latch (27) from sliding off the latch stop wall (49). (EP 630, claim 4) 8 2. Defendants are ordered to provide counsel for Applicant within 4 weeks after service of the order rendered in this matter, with a written statement, substantiated with appro- priate documentation of: a. the origin and distribution channels of the infringing devices referred to under I. 1 in the (including the full names and addresses of the legal entities that are in- volved); b. the identity of any party involved in the production or distribution of the infringing devices referred to under II.1 (including the full names and addresses of the legal entities that are involved). 3. Each Defendant is ordered to pay to the Court penalty payments of up to EUR 1 000 per infringing device made, offered, placed on the market, used or possessed for the pur- poses mentioned, or imported or stored for those purposes in the territories of Austria, Belgium, Denmark, Finland, France, Germany, Italy, Netherlands, Portugal and Sweden or up to 250 000 EUR per day for each day the respective Defendant fails to comply with the order under I. above, and penalty payments up to EUR 100 000 per day for each day the respective Defendant fails to comply with the order under II. above, with a part of a day counting as an entire day. 4. Defendants are ordered to pay the interim costs of the proceedings. 5. These above orders shall be effective and enforceable immediately. 19. With regard to Patent B, the Applicant’s motions are as follows: 1. Defendants are ordered to refrain from, making, offering, placing on the market, using or possessing for the purposes mentioned, or importing or storing the product for those purposes in the territories of France, Germany, Italy and Netherlands Ink cartridges for inkjet printers, comprising: interfaces on a front face (33) for connection to a cartridge receiving structure (4), the interfaces including an ink interface (14), and a a gas interface (15), a guide interface on a bottom face (35) for guiding the cartridge (3) along a straight line (Y) for connecting the interfaces, the guide interface including a guide receiving opening (40) near the front face a latch track (28) and a latch stop (30) arranged on the bottom face (35), to guide and retain a latch (27) of the cartridge receiving structure (4); and an electrical circuit (10, 19) disposed near a top face (53), wherein the top face is opposite the bottom face (35), wherein the electrical circuit is sunken with respect to the front face (33), wherein the electrical circuit (10, 19) comprises electrodes that extend in a plane (Y, Z) perpendicular to the front face (33) and arranged on a line (PP) 9 parallel to the front face (33) and behind the front face (33), wherein the cartridge also comprises an ejector alignment interface (36) on the front face (33) and wherein the electrical circuit (10,19) is arranged near the top of the front face (33), the gas interface (15) and the ejector alignment interface (36) are arranged near the middle of the front face (33) and the ink interface (14) and the guide receiving opening (40) are arranged near the bottom face (35); (EP 469, claim 1) in particular if the ejector alignment interface (36) comprises a ring-shaped ridge or flange arranged around the gas interface (15) on the front face (35) and having the same central axis (C2) as the gas interface (15), for engaging an inner circumference of a lead- ing end of a helical spring (31). (EP 469, claim 2) in particular if the electrical circuit (10, 19) is to establish sideways (X, B) connection with a corresponding connector circuit (18) within an outer circumference of the cartridge (3). (EP 469, claim 5) 2. Defendants are ordered to provide counsel for Applicant, within 4 weeks after service of the order rendered in this matter, with a written statement, substantiated with ap- propriate documentation of: a. the origin and distribution channels of the infringing devices referred to under I. 1 in the (including the full names and addresses of the legal) entities that are in- volved); b. the identity of any party involved in the production or distribution of the infringing devices referred to under II.1, (including the full names and addresses of the legal entities that are involved). 3. Each Defendant is ordered to pay to the Court penalty payments of up to EUR 1 000 per infringing device made, offered, placed on the market, used or possessed for the purposes mentioned, or imported or stored for those purposes in the territories of the, France, Germany, Italy and Netherlands or up to 250 000 EUR per day for each day the respective Defendant fails to comply with the order under I. above, and penalty payments up to EUR 100 000 per day for each day the respective Defendant fails to comply with the order under II. above, a part of a day counting as an entire day. 4. Defendants are ordered to pay the interim costs of the proceedings. 5. These above orders shall be effective and enforceable immediately. GROUNDS FOR THE ORDER: A. Type of order 20. Pursuant to R. 209.1(a) RoP, the Court shall have discretion to inform the defendant about the application for provisional measures and to invite him to lodge, within a time period to 10 be specified, an objection to the application, which shall contain the reasons why the appli- cation shall fail and the facts and evidence relied on, in particular any challenge to the facts and evidence relied on by the applicant. 21. If the defendant does not lodge an objection within the time period set by the Court or de- cides not to substantiate its objection for reasons outside of the court proceedings, as in the present case, the application for provisional measures can be decided based on the appli- cant’s submissions by means of a regular order in the PI proceedings (follow up to UPC CFI 213/2025 (LD Düsseldorf), Order of 10 July 2025, headnote 1 and mn. 213 - 214 – Aesculap v Shanghai International Holding). In a situation like this, a decision by default (R. 355.1(a) RoP) is not something to be considered for several reasons. First, such a decision is not provided for in Rules R. 205 et seq. RoP for that scenario. Second, only a regular PI order is consistent with the underlying interests involved: It is up to the defendant to decide whether to accept the invitation and lodge an objection, which fulfils the requirements of R. 209.1(a) RoP. If the defendant declines the invitation, there is no reason to grant him the advantages of a decision by default. The associated possibility of setting aside the decision (see R. 356 RoP) would conflict with the Applicant’s interest in effectively enforcing its patent in the PI proceedings. 22. The fact that the Applicant has, in addition to its regular motions, also requested a decision by default does not prevent a regular order from being issued. Pursuant to Art. 76(1) UPCA, the Court shall decide in accordance with the requests submitted by the parties and shall not award more than is requested. The present order falls within this framework. The Applicant has applied for a preliminary injunction and further provisional measures. The subsequent application for a decision by default merely supplements this application, but does not re- place it. Provided the requirements are met, the Court may grant a preliminary injunction or further provisional measures through a regular order rather than issuing a decision by de- fault. B. Grounds for the order 23. The application for provisional measures is, at least insofar as it is directed against Defendant 2., admissible. It is also successful on the merits. I. Entitlement 24. As the Applicant is the registered proprietor of Patent A, it can be assumed for the purposes of the PI proceedings that the Applicant is entitled to bring actions and thus also applications for preliminary injunctions and other provisional measures before the Court under Art. 47(1) UPCA in conjunction with R. 8.5 (a) and (c) RoP. II. Infringement and validity 25. Based on the Applicant’s submissions, the Panel is of the opinion that it is more likely than not that Patents A and B are infringed by the offer and distribution of the challenged embodiments by Defendant 2. in the territory of the Contracting Member States where Pa- tents A and B are in force (R. 211.2 RoP). On summary examination, the challenged embod- iments II make direct and literal use of the technical teaching of the respective claim 1 of 11 Patents A and B. 1. PATENT A a. Scope of the Patent 26. Patent A refers to a fluid cartridge and an ink cartridge in particular. 27. As the patent description explains in its introduction, two types of ink cartridges can be dis- tinguished in general. A first type consists of an integrated print head cartridge, wherein the cartridge comprises a print head. A second type consists of an individual ink container. 28. An ink cartridge is connected to a receiving structure of a printer. The receiving structure and the ink cartridges are provided with proper interfaces for guiding ink from the cartridge to the print head for printing. In addition to the ink interface, an air interface, a keying interface, an electrical interface and an alignment interface can be provided in the ink cartridge and its receiving structure. The air interface transports air to and from the cartridge, mostly for pres- sure control inside the cartridge. The keying interface ensures that the respective cartridge is seated in the proper ink cartridge receiving structure. The alignment interface ensures that the interfaces are all well aligned for connection. The electrical interface sends electrical sig- nals between a printer control and the ink cartridge. The signals may relate to ink cartridges characteristics (para. [0001]). 29. An extra lock is usually provided to maintain substantially air and liquid tight connections between the cartridge and the receiving structure. The extra lock should also maintain the electrical connection. A known locking technique involves the use of a ball to keep the car- tridge sealed to the receiving bay. Another known locking technique uses the deforming snap finger that engages a notch to keep the cartridge sealed (para. [0002]). 30. However, according to the patent description, the known locking mechanisms tend to con- sume relatively large amount of space within the printer. In addition, significant force may be needed to establish the lock. In some cases, the cartridge is inserted in an inclined orien- tation, after which it is rotated back to a normal position to make the interfaces engage. This usually involves deflection of engaging elements so that improper interface connections, leakage and material wear or damage are likely to occur (para. [0003]). 31. Patent A does not explicitly define a problem and the corresponding solution. However, the Court agrees with the Applicant that, based on the overall description, the claims and the description of the prior art, Patent A aims to solve the problem of providing a simple inser- tion and ejection of the printer cartridge while avoiding deflection of the connecting ele- ments of printer cartridge and the printer’s receiving structure, and allowing a tight side to side packing of neighbouring cartridges in a printer carriage with all interfaces connecting in the front, including the electrical connector, for a cheap and compact multiple cartridge and printer arrangement. 32. As a solution, Patent A provides in claim 1 an ink cartridge characterised by the following features: 1. Ink cartridge (3) for an inkjet printer (2), comprising 1.1. a bottom face (35) and a front face (33); 12 1.2. interfaces in the front face (33) for connection to a cartridge receiving structure (4), the interfaces including 1.2.1. an ink interface (14), 1.2.2. a gas interface (15), 1.2.3. an electrical interface (10, 19), wherein the electrical interface (10, 19) is arranged near a top surface (53) of the cartridge, characterized in that the ink cartridge further comprises 1.3. a guide interface arranged on the bottom face (35) for guiding the car- tridge (3) along a straight line (Y) for connecting the interfaces, 1.3.1. the guide interface has a guide receiving opening (40) near the front face; 1.4. a latch stop (30) and a latch track (28) arranged on the bottom face (35), to guide and retain a latch (27) of the cartridge receiving structure (4), 1.5. wherein the gas interface (15) is arranged near a middle of the front sur- face (33), and the ink interface (14) and the guide receiving opening (40) are arranged near the bottom face (35). b. Infringement 33. Based on the Applicant’s submissions, the Panel finds that it is more likely than not that Pa- tent A is directly and literally infringed by the offer and distribution of the challenged em- bodiments II by Defendant 2. in the Contracting Member States Austria, Belgium, Denmark, Finland, France, Germany, Italy, the Netherlands, Portugal and Sweden, Art. 25(a) UPCA. 34. As the Applicant has demonstrated by various screenshots, the challenged embodiments II are ink cartridges for use with various OfficeJet Pro models, an HP inkjet printer module. Therefore, they are ink cartridges for an inkjet printer (feature 1.) with a bottom face (yellow circle) and a front face (red circle), as can be seen in the images below: 35. The challenged embodiments II also have an ink interface (yellow circle), a gas interface (red 13 circle) and an electrical interface (blue circle), which meet the requirements of feature group 1.2. 36. Furthermore, the challenged embodiments II have a guide interface (circled in red) on the bottom face that guides the cartridge along a straight line into the cartridge receiving struc- ture in order to connect the interfaces on the front face (feature 1.2) to the receiving struc- ture of the printer. For the coloured cartridges, the guide interface is a cutout at the side of the bottom face (35) (see pictures on the right). The guide interface for the black cartridge is provided along a ridge which extends in the middle from front to back (see the pictures on the left). The guide interfaces of both black and coloured challenged embodiments II com- prise a guide receiving opening (circled in yellow) that receives the guide (17) (circled in blue) of the printer once engaged. The guide receiving opening is placed near the front face and on the bottom (feature group 1.3.). 14 37. Since feature 1.3.1. merely requires that the guide interface has a receiving opening near the front face, the fact that the opening in the contested embodiment is not directly located on the front face does not exclude the challenged embodiments II from the scope of protection. 38. That the challenged embodiments II also have a latch stop and a latch track arranged on the bottom face to guide and retain a latch of the cartridge structure (feature 1.4.) is already illustrated by a comparison of Figure 6 of Patent A with the challenged embodiments II. The latch track is marked in red, while the latch stop is marked in yellow (left images). 39. The following images illustrate the spatial order of the interfaces: 40. The gas interface (yellow circle) is arranged near a middle of the front surface, whereas the ink interface (red circle) and the guide receiving opening (green and blue circles) are ar- ranged near the bottom face. This arrangement fulfils the requirements of feature 1.5. 15 41. Therefore, all features of claim 1 of Patent A are implemented in the challenged embodi- ments II. c. Validity 42. The validity of Patent A is reasonably certain. 43. 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 (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; UPC CFI 213/2025 (LD Düsseldorf), Order of 10 July 2025, mn. 91 – Aesculap v Shanghai International Holding). 44. Based on these principles and taking into account Applicant’s and Defendant’s 2. previous submissions, the validity of Patent A is sufficiently secured. 45. Since Defendant 2. has not put forward any arguments against the validity of Patent A, there is no reason to doubt that Patent A is valid. This is all the more true given that Patent A has so far neither been subject of any national nullity proceedings nor any revocation action be- fore the UPC. In addition, in the granting process all objections raised in third-party-obser- vations were finally rejected by the Examining Division. 2. PATENT B a. Scope of the Patent 46. Like Patent A, Patent B also refers to a fluid cartridge, specifically an ink cartridge. The description of the technical background of the invention is the same as in Patent A. There- fore, to avoid repetition, reference is made to the considerations regarding Patent A above. 47. Patent B also does not explicitly define a problem and the corresponding solution. In this regard, too, the Court agrees with the Applicant that, based on the overall description, the claims and the description of the prior art, Patent B aims to solve the problem of providing a simple insertion and ejection of the printer cartridge while avoiding deflection of the con- necting elements of printer cartridge and the printer’s receiving structure, and allowing a tight side to side packing of neighbouring cartridges in a printer carriage with all interfaces connecting in the front, including the electrical connector, for a cheap and compact multiple cartridge and printer arrangement. 48. To solve this problem, claim 1 of Patent B provides an ink cartridge characterised by the following features: 1. Ink cartridge (3) for an inkjet printer (2), comprising 1.1. interfaces on a front face (33) for connection to a cartridge receiving struc- ture (4), the interfaces including 1.1.1. an ink interface (14), and a 16 1.1.2. a gas interface (15), 1.2. a guide interface on a bottom face (35) for guiding the cartridge (3) along a straight line (Y) for connecting the interfaces, 1.2.1 the guide interface including a guide receiving opening (40) near the front face, 1.3. a latch track (28) and a latch stop (30) arranged on the bottom face (35), to guide and retain a latch (27) of the cartridge receiving structure (4); and 1.4. an electrical circuit (10, 19), disposed near a top face (53), wherein the top face is opposite the bottom face (35), 1.4.1. wherein the electrical circuit is sunken with respect to the front face (33), 1.4.2. wherein the electrical circuit (10, 19) comprises electrodes that extend in a plane (Y, Z) perpendicular to the front face (33) and arranged on a line (PP) parallel to the front face (33) and behind the front face (33), 1.5. wherein the cartridge also comprises an ejector alignment interface (36) on the front face (33) and 1.6. wherein the electrical circuit (10, 19) is arranged near the top of the front face (33), the gas interface (15) and the ejector alignment interface (36) are arranged near the middle of the front face (33) and the ink interface (14) and the guide receiving opening (40) are arranged near the bottom face (35). b. Infringement 49. Based on the Applicant’s submissions, the Panel finds that it is more likely than not that Pa- tent B is directly and literally infringed by the offer and distribution of the challenged em- bodiments II by Defendant 2. in the Contracting Member States Germany, France, Italy and the Netherlands, Art. 25(a) UPCA. 50. Features 1. to 1.3. are found in a comparable manner, albeit formulated somewhat differ- ently in some cases, in claim 1 of Patent A. On this basis, reference is made to the above statements with regard to the implementation of these features. 51. As can be seen from the images below, the challenged embodiments II also realise features 1.4. to 1.4.2. 17 The challenged embodiments II have an electrical circuit with electrodes on the chip, which is arranged near the top face being opposite to the bottom face (blue circle). The electric circuit is sunken with respect to the front face and does not protrude beyond it. The elec- trodes of the electric circuit extend in a plane perpendicular to the front face of the cartridge, and the electrodes of the electric circuit are arranged on a line parallel to and behind the front face, so that the printer-side connector can extend inside and/or between the installed cartridges. 52. Additionally, the challenged embodiments II include an ejector alignment interface on their front surface, as outlined in feature 1.5.: As can be seen from the images shown above, the ejector alignment interface (circled in red) is arranged as a ring-shaped ridge around the gas interface (15). The ejector alignment inter- face engages with an ejector (31) of the cartridge receiving structure of the printer, the ejec- tor pushing the cartridge out from the receiving structure of the printer when being unlocked 18 (said ejector not covered by the main claim 1), as shown below in the challenged embodi- ment as the spring on the right side of the pictures. 53. Furthermore, the challenged embodiments II also contains the arrangement as claimed by feature 1.6.: 54. The electrical circuit (circled in purple) is arranged near the top front face. Moreover, the ejector alignment interface is based around the gas interface (yellow circle) near the middle of the front face. Finally, the ink interface (red circle) and the guide receiving opening (green and blue circle) are arranged near the bottom face. 55. Therefore, all features of Patent B’s claim 1 are implemented in the challenged embodiments II. c. Validity 56. Based on the principles already outlined in the context of Patent A, validity of Patent B is also not an issue. 57. Regarding this patent, Defendant 2., who has the burden of presentation and proof in this respect, has not presented any arguments against the validity of Patent B. Like Patent A, Patent B has neither been the subject of any national nullity proceedings nor any revocation action before the UPC. Additionally, the European search report, issued on 22 July 2019, presented only “back prior art” of category “A”. C. BALANCE OF INTERESTS 58. Pursuant to Art. 62(2) UPCA and R. 211.3 RoP, the Court shall in the exercise of its discretion weigh up the interests of the parties and, in particular, take into account the potential harm for either of the parties resulting from the granting or refusal of the injunction. 59. The Court must also take the time factor into account. In particular, it must consider whether to await the proceedings on the merits or whether provisional measures are necessary (UPC CoA 540/2024, Order of 24 February 2025, mn. 19 – Biolight v Light Guide; Order of 30 April 2025 – Insulet Corporation v EOFLow; UPC CFI 213/2025 (LD Düsseldorf), Order of 19 10 July 2025, mn. 104 – Aesculap v. Shanghai International Holding). 60. Provisional measures are necessary, if a delay would cause irreparable damage to the patent proprietor, for example. However, such damage is not a necessary prerequisite for ordering provisional measures (UPC CFI 182/2024, Order of 25 September 2024, mn. 237 – Mammut v Ortovox; UPC CoA 540/2024, Order of 24 February 2025, mn. 21 – Bioletic v Light Guide; UPC CoA 768/2024, Order of 30 April 2025, mn. 103 – Insulet Corporation v EOFlow; UPC CFI 213/2025 (LD Düsseldorf), Order of 10 July 2025, mn. 105 – Aesculap v. Shanghai International Holding). 61. The need for provisional measures may arise from direct competition between the chal- lenged embodiment and the patent proprietor’s product (UPC CoA 540/2024, Order of 24 February 2025, mn. 26 – Biolitec v Light Guide). In such situations, provisional measures may be justified if they are necessary to maintain the status quo prior to the alleged infringement until a decision is taken on the merits (UPC CFI 182/2024, Order of 25 September 2024, mn. 238 – Mammut v Ortovox; UPC CoA 540/2024, Order of 24 February 2025, mn. 28 – Biolitec v Light Guide; UPC CFI 213/2025 (LD Düsseldorf), Order of 10 July 2025, mn. 106 – Aesculap v. Shanghai International Holding; UPC CFI 387/2025 (LD Hamburg), Order of 14 August 2025, mn. 136 – Dyson v. Dreame International). The need for the ordering of provisional measures may also arise from a change in the market situation from one in which only one product is available to one in which two competing products are on the market. Such a tran- sition may lead not only to price pressure but also to lasting price erosion (UPC CoA 523/2024, Order of 3 March 2024, mn. 93 – Sumi v Syngenta; UPC CoA 768/2024, Order of 30 April 2025, mn. 104 – Insulet v EOFlow; UPC CFI 213/2025 (LD Düsseldorf), Order of 10 July 2025, mn. 106 – Aesculap v. Shanghai International Hold- ing). 62. Based on these principles, the necessary weighing of interests in the present case is in favour of the Applicant. I. Urgency 63. When weighing up the interests, the Court takes into account any unreasonable delay in applying for provisional measures, as set out in R. 211.4 RoP in conjunction with R. 209.1(b) RoP. This is based on the fact that the patent proprietor’s conduct shows that enforcing its rights is no longer urgent. In such a situation, there is no need to order provisional measures. 64. The urgency required for the order of provisional measures is only lacking if the injured party has pursued its claims so negligently and hesitantly that it can objectively be assumed that it has no interest in the rapid enforcement of its rights and it therefore does not appear ap- propriate to order provisional measures (UPC CFI 347/2024 (LD Düsseldorf), Order of 31 October 2024, p. 42 – Valeo v Magna; UPC CFI 2/2023 (LD Munich), Order of 19 September 2923, 10x Genomics v. NanoString; UPC CFI 452/2024 (LD Düsseldorf), Order of 9 April 2024, p. 126 – Ortovox v Mammut). 65. According to R. 211.2 RoP, the Court may require the applicant to provide reasonable evi- dence to satisfy the Court with a sufficient degree of certainty that the applicant is entitled to commence the proceedings pursuant to Art. 47 UPCA, that the patent in question is valid and that the applicant’s right is being infringed, or that such an infringement is imminent. In PI proceedings, the applicant must generally respond to such an order within a short period 20 of time. Therefore, adequate preparation of the proceedings is required. Against this back- ground, the applicant should only apply for a PI if it has reliable knowledge of all the facts that make legal action in PI proceedings promising, and can substantiate these facts. The applicant should prepare for all possible procedural situations that may arise, so that it can provide the Court with the requested information and documents, and successfully refute the opposing party’s arguments. In principle, the applicant cannot be instructed to conduct the necessary investigations during ongoing proceedings or to retrospectively obtain the necessary documents. However, the applicant must not unnecessarily delay the proceed- ings. As soon as it become aware of the alleged infringement, it must investigate it and take the necessary measures for clarification. The applicant must also obtain the documents necessary to substantiate its claims. It must carefully initiate and complete the necessary steps at each stage in doing so (UPC CFI 452/2023 (LD Düsseldorf), Order of 9 September 2024, mn. 128 – Ortovox v. Mammut; UPC CFI 151/2024 (LD Hamburg), Order of 3 June 2026 – Ballinno v. Uefa; UPC CFI 213/2025 (LD Düsseldorf), Order of 10 July 2025, mn. 110 – Aesculap v. Shanghai International Holding). 66. On this basis, the time limit within the meaning of R. 211.4 RoP is to be calculated from the date on which the applicant became aware, or should have become aware of the infringe- ment that would enable him, in accordance with R. 206.2 RoP, to file an application for pro- visional measures with a reasonable prospect of success. Thus, the decisive point in time is when the applicant has, or should have had, after exercising due diligence, the necessary facts and evidence within the meaning of R. 206.2 (d) RoP (UPC CoA 182/2024, Order of 25 September 2024 – Ortovox v Mammut; UPC CoA 446/2025, Order of 13 August 2025, mn. 87 – Boeringer Ingelheim v Zentiva). 67. Based on these principles, the Applicant in the present case did not wait unreasonably long time before filing its application for the order of provisional measures. 68. According to Applicant’s submissions, which have not been contested by Defendant 2., the Applicant became aware of the fact that Defendant 2. may offer the challenged embodi- ments that might infringe Patents A and B, through a listing by Defendant 2. on its website (www.toneroffice.de) on 10 April 2025. Immediately, after having discovered these offers on the respective websites, the Applicant consulted its internal and external legal counsel, who ordered samples of the offered printer cartridges on the same day to assess whether De- fendant 2. would not only offer but sell these cartridges in the UPC territory which were received by Applicant’s representative on 15 April 2025. After unpacking, photographing and categorising the printer cartridges, Applicant’s external legal counsel sent the samples of the Applicant’s laboratory for testing. They were received by the Applicant on 5 May 2025. There, the Applicant immediately started to examine the challenged embodiments in detail for possible infringements of Applicant’s patent rights. In the laboratory in Vancouver, the printer cartridges were reviewed and analysed by the Applicant and its findings subsequently discussed by the team of internal and external counsel. With respect to Defendant 2., the Applicant concluded that the challenged embodiment offered and sold by Defendant 2. in- fringes Patents A and B. The Applicant hat compiled the corresponding analysis and evidence necessary to file an application for provisional measures against Defendant 2. as of 14 May 2025. 69. The Applicant has submitted its application for provisional measures just two weeks later, 21 on 28 May 2025. Therefore, there is no indication that the Applicant acted hesitantly. II. Necessity of provisional measures 70. Based on the Applicant's undisputed submissions, the order of provisional measures is also necessary. 71. Applicant and Defendant 2. are direct competitors on the market for printer cartridges com- patible with (certain) HP printers. Therefore, Defendant’s 2. offer and sale of the challenged embodiments II causes serious and unjustified harm to Applicant’s market position that in- tensifies each day the patent-infringing sales are allowed to continue. 72. Allowing Defendant 2. to stay on the market for the duration of the main proceedings will intensify the loss of turnover, revenue and market share that cannot be adequately compen- sated through damage claims and might even lead to permanent loss of market share for the Applicant. 73. As the Applicant has stated, Defendant 2. offers the challenged embodiments II for a signifi- cantly lower price than the Applicant’s products. This increases the likelihood that the con- tinued sales of the challenged embodiments will result in a loss of market share of the Ap- plicant. Therefore, Defendant 2. effectively undercuts Applicant’s market position and incen- tivises consumers to shift their purchasing preferences. Customers might choose the chal- lenged embodiments II over original HP cartridges or those of other competitors for HP per- manently, if the challenged embodiments II will stay on the market for a longer period of time, in particular for the entire duration of the main proceedings. Such customers might, based on the lower price of the challenged embodiments II, look for further illegal clone cartridges from other sources once the Defendant’s products become unavailable after the duration of the main proceedings as they might have become accustomed to purchasing il- legal clone cartridges over a long timeframe. If the Applicant, however, is able to exclude competitors that ignore and violate Applicant’s patent rights from the market in a shorter period of time, e.g. through these preliminary proceedings, it might be able to win these customers back that might come to realise that the clone cartridges they purchased were only marketed because they ignore intellectual property rights. 74. By submitting relevant figures and forecasts, the Applicant has explained in detail that it faces the threat of significant damage if the contested products continue to be offered and distributed. To emphasise this, the Applicant further stated that illegal resellers will virtually flood the market, if the Applicant does not defend its rights at an early stage when the first illegal rebuilds, like the challenged embodiments II, are marketed. Since the Applicant first became aware of Defendants marketing of the challenged embodiments II, Applicant noticed already a flurry of resellers trying to enter the market for 937 cartridges with (at least in parts) offerings of illegal clones. 75. Finally, the Applicant has correctly pointed out that Defendant’s 2. actions also at least threaten to cause significant reputational harm to the Applicant. Customers might conclude that the challenged embodiments, which might be of lower quality, might cause compatibil- ity problems with HP printers, might cause compatibility problems with HP printers and might overall not create the print results a customer expects from an HP printer, are associ- ated with or somehow authorised by HP. Customers might arrive at this conclusion given that the challenged embodiments are advertised with certain HP printers, even though they are sold not by HP itself but unrelated third parties. Customers that purchase the challenged 22 embodiments and are disappointed by the product they ultimately receive, might consider moving away from HP products when they purchase their next printer or might even associ- ate the bad experience with the HP-brand more generally. 76. To counteract this, provisional measures must be ordered. It would be unreasonable to ex- pect the Applicant to wait for a decision on the merits. D. LEGAL CONSEQUENCES 77. The following applies to the legal consequences for which the Applicant is applying. 1. Preliminary Injunction 78. In exercising its discretion (R. 209.2 RoP), the Panel considers the grant of a preliminary in- junction 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 Patents A and B. For the reasons stated above, Defendant’s 2. interest in continuing distribution must take a back seat. 2. Information 79. Furthermore, an obligation to provide information may also be ordered in the context of provisional measures, provided that there is an urgent interest and these measures are pro- portionate (UPC CoA 382/2024, Order of 14 February 2025, mn. 160 - 164 – Abbott v Sibio; UPC CoA 768/2024, Order of 30 April 2025, mn. 129 - 132 – Insulet v EOFlow; UPC CFI 213/2025 (LD Düsseldorf), Order of 10 July 2025, mn. 123 – Aesculap v Shanghai International Holding). This is true of the information regarding the origin and distribution channels of the challenged embodiment II. This information enables the Applicant to take the necessary steps to prevent any further infringements within the scope of the UPCA and the patents in question. 3. Penalty payments 80. The penalty payments sought by the Applicant are based on R. 354.3 RoP. 81. With the number of products or the number of days, one variable for calculating penalty payments is already determined. However, setting a maximum limit per product or per day gives the Court the necessary flexibility to consider the infringer’s behaviour in the event of an infringement and to set an appropriate penalty payment in accordance with R. 354.4 RoP. 4. No enforcement security 82. Pursuant to R. 211.5 RoP, the Court may require the provision of adequate security to ensure that the Defendant is adequately compensated for the damage which it is likely to suffer if the Court revokes the order for provisional measures. 83. A security order is not dependent on a request by one of the parties. If provisional measures are ordered without the defendant having been heard, the Court shall order the applicant to provide appropriate security, unless there are special circumstances that preclude this (R. 213.2 RoP, second sentence). While security is therefore normally ordered in ex-parte situations, the Court has discretion when the Defendant has been heard (inter partes, see R. 211.5 RoP, first sentence, „may“, UPC CoA 523/2024, Order of 3 March 2025, mn. 110 - 23 113 – Sumi Agro v Syngenta; UPC CFI 213/2024 (LD Düsseldorf), Order of 10 July 2025, mn. 131 – Aesculap v. Shanghai International Holding). 84. In the present case, Defendant 2. has stated that it does not intend to challenge the applica- tion for provisional measures. If Defendant 2. does not present arguments against the appli- cation for provisional measures to the Court, and if there are no apparent grounds for or- dering security, there is no reason to impose this burden on the Applicant. E. Partial withdrawal 85. The Applicant has applied to a partial withdrawal regarding its claims for an interim award of costs, insofar as Defendant 2. is concerned. 86. According to Defendant 2., this partial withdrawal is part of a settlement agreed by the Par- ties out of the Court. Therefore, the Court sees no reason not to allow this partial withdrawal. 24 ORDER: With respect to Defendant 2., the Court orders the following: A. [Patent A] 1. Defendant 2. is ordered to refrain from making, offering, placing on the market, using or possessing for the purposes mentioned, or importing or storing the product for those purposes in the territories of Austria, Belgium, Denmark, Finland, France, Ger- many, Italy, the Netherlands, Portugal and Sweden ink cartridges for inkjet printers, comprising: a bottom face (35) and a front face (33); interfaces in the front face (33) for connection to a cartridge receiving structure (4), the interfaces including an ink interface (14), a gas interface (15), and an electrical interface (10, 19), wherein the electrical interface (10, 19) is arranged near a top surface (53) of the cartridge, characterized in that the ink cartridge further comprises a guide interface arranged on the bottom face (35) for guiding the cartridge (3) along a straight line (Y) for connecting the interfaces, the guide interface having a guide receiving opening (40) near the front face, a latch stop (30) and a latch track (28) arranged on the bottom face (35) to guide and retain a latch (27) of the cartridge receiving structure (4), wherein the gas interface (15) is arranged near a middle of the front sur- face (33), and the ink interface (14) and the guide receiving opening (40) are arranged near the bottom face (35). 2. Defendant 2. is ordered to provide counsel for Applicant within 4 weeks after service of the order rendered in this matter, with a written statement, substantiated with ap- propriate documentation of: a. the origin and distribution channels of the infringing devices referred to under A.1. (including the full names and addresses of the legal entities that are in- volved); 25 b. the identity of any party involved in the production or distribution of the infring- ing devices referred to under A.1. (including the full names and addresses of the legal entities that are involved). 3. Defendant 2. is ordered to pay to the Court penalty payments of up to EUR 1 000 per infringing device made, offered, placed on the market, used or possessed for the pur- poses mentioned, or imported or stored for those purposes in the territories of Austria, Belgium, Denmark, Finland, France, Germany, Italy, the Netherlands, Portugal and Sweden or up to EUR 250 000 per day for each day Defendant 2. fails to comply with the order under A.1. above, and penalty payments up to EUR 100 000 per day for each day Defendant 2. fails to comply with the order under A.2. above, with a part of a day counting as an entire day. B. [Patent B] 1. Defendant 2. is ordered to refrain from making, offering, placing on the market, using or possessing for the purposes mentioned, or importing or storing the product for those purposes in the territories of France, Germany, Italy and the Netherlands ink cartridges for inkjet printers, comprising: interfaces on a front face (33) for connection to a cartridge receiving structure (4), the interfaces including an ink interface (14), and a a gas interface (15), a guide interface on a bottom face (35) for guiding the cartridge (3) along a straight line (Y) for connecting the interfaces, the guide interface including a guide receiving opening (40) near the front face, a latch track (28) and a latch stop (30) arranged on the bottom face (35), to guide and retain a latch (27) of the cartridge receiving structure (4); and an electrical circuit (10, 19) disposed near a top face (53), wherein the top face is op- posite the bottom face (35), wherein the electrical circuit is sunken with respect to the front face (33), wherein the electrical circuit (10, 19) comprises electrodes that extend in a plane (Y, Z) perpendicular to the front face (33) and arranged on a line (PP) parallel to the front face (33) and behind the front face (33), wherein the cartridge also comprises an ejector alignment interface (36) on the front face (33) and 26 wherein the electrical circuit (10,19) is arranged near the top of the front face (33), the gas interface (15) and the ejector alignment interface (36) are arranged near the mid- dle of the front face (33) and the ink interface (14) and the guide receiving opening (40) are arranged near the bottom face (35). 2. Defendant 2. is ordered to provide counsel for Applicant, within 4 weeks after service of the order rendered in this matter, with a written statement, substantiated with ap- propriate documentation of: a. the origin and distribution channels of the infringing devices referred to under B.1. in the (including the full names and addresses of the legal) entities that are involved); b. the identity of any party involved in the production or distribution of the infring- ing devices referred to under B.1. (including the full names and addresses of the legal entities that are involved). 3. Defendant 2. is ordered to pay to the Court penalty payments of up to EUR 1 000 per infringing device made, offered, placed on the market, used or possessed for the pur- poses mentioned, or imported or stored for those purposes in the territories of the, France, Germany, Italy and the Netherlands or up to EUR 250 000 per day for each day Defendant 2. fails to comply with the order under B.1. above, and penalty payments up to EUR 100 000 per day for each day the respective Defendant fails to comply with the order under B.2. above, a part of a day counting as an entire day. C. The above orders are effective and enforceable immediately. D. A uniform decision on costs will be made at a later stage, once an order has been issued on the application for provisional measures against Defendant 1. E. If proceedings on the merits are not started within a period not exceeding 31 calendar days or 20 working day whichever is longer from the time of service upon Defendant 2., the Court may order, upon request of the Defendant, that the present order be revoked or otherwise ceases to have effect (Art. 62(5), 60(8) UPCA, R. 213.1 RoP). F. The Applicant’s application to withdraw motion 4., which states that the Defendants should be ordered to pay the interim award of costs of the proceedings, for both patents in suit to the extent that Defendant 2. is concerned, is permitted. 27 DETAILS OF THE ORDER: App 33210/2025 under the main file reference ACT 24346/2025 UPC number: UPC CFI 449/2025 Type of procedure: Application for provisional measures Issued in Düsseldorf on 3 September 2025 NAMES AND SIGNATURES Presiding Judge Thomas Legally qualified judge Dr Schumacher Legally qualified judge Lopes For the sub-registrar Notice on the right on appeal: Defendant 2. may bring an appeal against the present order within 15 days of service of this order (Art. 73(2)(a), 62 UPCA, R. 220.1(c), 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 request of the enforcing party, R. 69 RegR.

Key Holdings

• If a defendant, invited to object to an application for provisional measures, fails to lodge or substantiate an objection, the application can be decided based on the applicant's submissions by means of a regular order, rather than a decision by default.
• The applicant's patents (EP 2 826 630 B1 and EP 3 530 469 B1) are, on summary examination, more likely than not infringed by the defendant's challenged products.
• The validity of both patents in suit is reasonably certain, as the defendant did not present arguments against their validity, and they have not been subject to national nullity proceedings or UPC revocation actions.
• The balance of interests favors granting provisional measures due to direct competition, the threat of significant damage including loss of turnover, market share, price erosion, and reputational harm to the applicant.
• No enforcement security is required from the applicant when the defendant has been heard and has stated no intention to challenge the application for provisional measures, and no apparent grounds for ordering security exist.

Tags

• Balance of Interests
• Infringement
• Interim Measures
• Patent Validity
• Preliminary Injunction
• Urgency

Related Cases

• UPC CFI 463/2023 – 10x Genomics, Inc. v Curio Bioscience Inc.
• UPC_CFI_1325/2025 – Van Loon v Inverquark
• UPC_CFI_115/2024; UPC_CFI_377/2024 – Hartman v Omni-Pac
• UPC_CFI_181/2025_July23 – Qiagen v bioMérieux
• UPC_CFI_315/2024 – Labrador v bioMérieux