UPC_CoA_579/2025_July24 – Otec v Steros
- Court
- Court of Appeal
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Further written submission Facts Steros obtains a PI against Otec in first instance. Otec appealed and filed its Statement of Grounds. On 15 July 2025, Steros filed its response. On 17 July 2025, Otec applied to be allowed a further written submission because Steros introduced several new facts, including experiments, and to be granted three weeks to lodge such further written pleadings. The JR Due process requires a further statement as it is undisputed between the parties that Steros conducted a new test and produced a new witness statement. The Court grants Otec two weeks to respond. Comment 1. The JR clearly stated that the Court of Appeal may not accept the new arguments (including test and witness statement), and indeed, in principle, the appeal is based on the facts and evidence submitted in first instance (see R. 222 RoP). 2. I have not seen the response of Steros and do not know if they have justified the introduction of new test and witness declarations by arguing the reasons mentioned in R. 222 RoP. It remains to be seen what the Court of Appeal will do with respect to R. 222 RoP in PI proceedings. Can a claimant who won PI proceedings in first instance improve their position in response to an appeal with new facts (and in this case: tests and witness statements)?
Full Decision Text
1 Reference no.: UPC_CoA_579/2025 APL 30654/2025 App_33129/2025 PROCEDURAL ORDER of the Court of Appeal of the Unified Patent Court issued on 24 July 2025 concerning an application for further exchanges of written pleadings (R. 36 RoP) APPLICANT (APPELLANT AND DEFENDANT IN THE MAIN PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE) OTEC Präzisionsfinish GmbH, Heinrich-Hertz-Straße 24, 75334, Straubenhardt-Conweiler, Germany (hereinafter "OTEC") represented by Klaus Haft, attorney-at-law, HOYNG ROKH MONEGIER, Düsseldorf, Germany RESPONDENT (APPLICANT IN THE MAIN PROCEEDINGS BEFORE THE COURT OF FIRST INSTANCE) STEROS GPA Innovative S.L., Calle Salvador Alarma, 16, ES-08035 Barcelona, Spain (hereinafter “STEROS”) represented by Sebastian Ochs, Grünecker PartG mbB, Munich, Germany PATENT AT ISSUE EP 4 249 647 DECIDING JUDGE Emmanuel Gougé, Legally qualified judge and judge-rapporteur LANGUAGE OF THE PROCEEDINGS English IMPUGNED ORDER OF THE COURT OF FIRST INSTANCE □ Order of the Court of First Instance of the Unified Patent Court, Hamburg Local Division, dated 16 June 2025 □ Numbers attributed by the Court of First Instance: UPC_CFI_281/2025 ACT_14764/2025 ORD_28305/2025 2 FACTS AND REQUESTS 1. On 25 March 2025 STEROS filed an application for provisional measures asserting claims against OTEC for infringement of its patent EP 4 249 647 before the Hamburg Local Division of the Unified Patent Court (hereafter respectively the “patent at issue” and the “Hamburg LD”). 2. On 16 June 2025, the Hamburg LD held that it is more likely than not that the patent at issue has been infringed by OTEC and, while considering the grant of a preliminary injunction to be appropriate and justified (Art. 62(1), 25(a) UPCA), inter alia, ordered OTEC 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, as claimed in claim 1 of the patent at issue, and ordered OTEC to pay to the Court a recurring penalty payment of up to EUR 250,000 (repeatedly if necessary) for each case of non-compliance with the cease and desist measures (hereafter the “impugned order”, ORD_28305/2025). 3. On 27 June 2025, OTEC filed an appeal against the impugned order (APL_30654/2025 UPC_CoA_579/2025). 4. STEROS filed its Statement of Response to the appeal on 15 July 2025. 5. On 17 July 2025, OTEC filed an application to allow the exchange of a further written pleading under R. 36 RoP, arguing that STEROS introduced several new facts including, for the first time, experiments regarding an alleged embodiment of the patent at issue (para. 50 to 66 of the Statement of Response as well as two exhibits filed by the STEROS) and to be granted a time limit of at least three weeks to lodge further written pleadings. GROUNDS FOR THE ORDER 6. The request for the submission of further pleading is accepted. 7. According to the Rules of Procedure (Part 4 RoP), the written phase before the Court of Appeal is limited for the appellant to the submission of a statement of grounds of appeal and for the respondent to the submission of a statement of response and no further exchange of written pleadings is provided for in the RoP unless a cross-appeal has been lodged pursuant to R. 237 and 238 RoP (see CoA Order UPC_CoA_520/2024 App_57474/2024, 1 November 2024, Scandit v Hand Held Products). 8. Pursuant to R. 36 RoP, the Court may nevertheless allow the exchange of further written pleadings at the reasoned request of a party, in particular if this is required by the principles of due process, such as in particular the principles of fairness, equity and efficiency and the right to be heard (above cited CoA order of 1 November 2024, para. 19). 9. In the present case it is undisputed between the parties that STEROS conducted a new test which is said to reproduce one of the features claimed under claim 1 and described in the specifications of the patent at issue, namely a non-conductive fluid, which, together with a witness statement relating to the same, was filed for the first time with its Statement of Response (STEROS Exhibits GRU 15 to 17). 10. While the Court will have to decide on the admissibility of the new facts and arguments filed by STEROS, it is justified, by reference to the principles of due process, that OTEC may exceptionally be 3 allowed to file further written pleading with respect to the experiment performed by STEROS regarding the alleged embodiment of the patent in dispute and the argumentation relating to the same under para. 50 to 65 of the Statement of Response of 15 July 2025. 11. Pursuant to R.36 RoP, according to which further written pleadings may be allowed by the judge- rapporteur within a period to be specified, it is reasonable, in the context of an appeal on provisional measures, to grant OTEC a time limit of no more than two weeks to lodge the further written pleading. ORDER OTEC is granted two weeks to file further written pleading with respect to the experiment performed by STEROS regarding the alleged embodiment of the patent in dispute (STEROS Exhibits GRU 15 to 17) and the argumentation relating to the same under para. 50 to 65 of the Statement of Response of 15 July 2025. This order was issued on 24 July 2025. Emmanuel Gougé, Legally qualified judge and judge-rapporteur
Key Holdings
- Further written statement allowed on appeal to address new evidence.
- Admissibility of new evidence under R. 222 RoP reserved for panel decision.
Tags
- Appeal
- Due Process
- Further Pleadings