UPC_CoA_581/2025_July10_NoSuspension – OTEC v Steros
- Court
- Court of Appeal
- Date
- Outcome
- Denied
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
No suspensive effect Facts The Division in Hamburg issued an injunction against OTEC. OTEC requested suspensive effect due to exceptional circumstances and the fact that the decision was manifestly erroneous, because of: • ignoring statements made by the representative of OTEC during the oral hearing (without giving any reason); • considering a product to infringe which, in all relevant aspects, was similar to a product sold in the prior art; • that in PI proceedings with respect to a prior use defense, the Court used the same very strict burden of proof as in main proceedings and not the “more likely than not” standard of PI proceedings. Decision of the JR The JR refused suspensive effect as OTEC failed to establish manifest errors, and whether or not there are errors is for the Court of Appeal to decide. Comment 1. The decision shows that it is virtually impossible to obtain suspensive effect. The JR is not willing to look even summarily into the case itself. "Manifest" means that without any further examination of the case, it is immediately clear that the decision is wrong. 2. Although it is understandable that one cannot expect the JR to study the entire file, the question is how strictly “manifest” should be applied. 3. In this case, the JR answers the complaint that the Court had not taken into consideration the remarks of OTEC's representative during oral argument with the obvious remark that they may have done so implicitly. That sounds convincing. However, if that remark of the representative takes away the whole basis for the decision, then, of course, that is different. 4. If the Court allows a patentee to injunct prior art, that of course is a manifest error. 5. However, it is clear that this requires at least a superficial study of certain parts of the file, and the question is whether the Court of Appeal should do that. 6. I think that if a party signals clearly manifest errors in a request for suspensive effect and motivates this in a few lines, then perhaps the Court should take a (superficial) look. 7. We should realize that injunctions in the first instance that should not have been granted are very often used to coerce a settlement out of the defendant who cannot afford to leave the market. On the other hand, it is important that a justified injunction cannot be postponed by an appeal without merit. 8. The difficulty is to find a good balance where clearly unjustified injunctions cannot be misused.
Full Decision Text
1 Reference no.: UPC_CoA_581/2025 App_30685/2025 PROCEDURAL ORDER of the Court of Appeal of the Unified Patent Court issued on 10 July 2025 concerning an application for suspensive effect 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 (RESPONDENT AND 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 OF THE PARTIES Procedural background 1. Steros has filed on 25 March 2025 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). Appeal and application for suspensive effect 3. On 27 June 2025, OTEC filed an appeal against the impugned order (APL_30654/2025 UPC_CoA_579/2025). 4. On the same day, 27 June 2025, OTEC filed an application for suspensive effect of the appeal against the impugned order under R. 223 RoP (App_30685/2025 UPC_CoA_581/2025). 5. OTEC requests that the effect of the impugned order is suspended until the Court of Appeal has decided on OTEC’s appeal against the impugned order. 6. According to OTEC, the exceptional circumstances justifying the request for suspensive effect are that the impugned order is manifestly erroneous and is based on severe violations of the right to be heard. OTEC thus claims that the impugned order is erroneously based on facts that were clearly disputed but in the impugned order are incorrectly described as undisputed. Furthermore, OTEC also claims that the Hamburg LD simply ignored statements made by OTEC’s counsel in the oral hearing (without giving any reason). GROUNDS FOR THE ORDER 7. The requests shall be dismissed for the following reasons. 8. An appeal shall not have suspensive effect unless the Court of Appeal decides otherwise at the motivated request of one of the parties (Art.74.1 UPCA). According to R. 223.2 RoP, the application for suspensive effect shall set out (a) the reasons why the lodging of the appeal shall have suspensive effect and (b) the facts, evidence and arguments relied on. 9. The Court of Appeal can grant the application only if the circumstances of the case justify an exception to the principle that the appeal has no suspensive effect (UPC_CoA_388/2024, APL_39884/2024, 19 August 2024, Sibio v Abbott; UPC_CoA_12/2025 APL_366/2025 App_1182/2025, 16 January 2025, Bhagat v Oerlikon). 3 10. Exceptional circumstances shall be assessed having regard to the relevant circumstances of the case. It must be examined whether, on the basis of these circumstances, the appellant's interest in maintaining the status quo until the decision on its appeal exceptionally outweighs the respondent's interest. An exception to the principle that an appeal has no suspensive effect may apply, for instance, if the appealed order or decision is manifestly erroneous, or if the appeal becomes devoid of purpose in the absence of suspensive effect (Court of Appeal 19 June 2024, UPC_CoA_301/2024 APL_33746/2024 App_35055/2024 - ICPillar vs. ARM). 11. The required exceptional circumstances have to be submitted by the applicant. In its application, OTEC has not provided evidence of exceptional circumstances which would justify why the lodging of the appeal shall have suspensive effect. 12. OTEC claims that the Hamburg LD came to an erroneous finding of infringement and validity, a wrong assumption of objective necessity, an incorrect balance of interests and an incorrect decision on security. OTEC submits, inter alia, that the Hamburg LD ignored statements made by OTEC’s counsel in the oral hearing (without giving any reason), which is a violation of the right to be heard, and that it is a manifest error to decide that a product is infringing while a product similar in all relevant aspects was publicly used before the priority date. A further manifest error is, according to OTEC, the fact that with respect to the defence of public prior use, the Hamburg LD applied the same (extremely strict) burden of proof in provisional measures proceedings as in proceedings on the merit, while in provisional measures proceedings a provisional measure should not be granted if the defendant establishes that it is more likely than not that the patent is invalid (or at least partly invalid as far as it covers the alleged product). 13. Whether the impugned order is based on errors is a matter for the Court of Appeal to decide in its order in the main appeal proceedings. In any event, OTEC has failed to demonstrate that the Court of First Instance’s findings and considerations constitute manifest errors, i.e. factual findings or legal considerations that are clearly untenable even on the basis of a summary assessment (Court of Appeal 29 October 2024, UPC_CoA_549/2024 APL_51838/2024 App_53031/2024 - Belkin vs. Philips). 14. Moreover, OTEC's submission does not indicate an infringement of fundamental procedural rights (in particular the right to be heard and the right to a fair trial). It is not apparent from OTEC’s submissions that OTEC was prevented at the oral hearing from also making statements on infringement and validity and within the time frame granted (see R.113.1 RoP). Although OTEC asserts that certain of OTEC’s statements at the oral hearing have not been taken into account in the impugned order, these may have been implicitly considered and found to be inadequate for challenging Steros' submissions. Nor does the impugned order manifestly lack reasoning which would justify the granting of suspensive effect. 15. The Court does thus not consider the circumstances of the present case to be of such a nature that the interests of OTEC outweigh the interest of Steros and the principles of due process. 16. By reference to the provisions of R. 223.3 RoP, according to which the Court shall decide the Application without delay, and considering that the circumstances raised by OTEC are such that they are not sufficient reasons why the lodging of the appeal shall have suspensive effect, this order is issued without the respondent having been heard. 4 ORDER The application for suspensive effect is rejected. This order was issued on 10 July 2025. Emmanuel Gougé, Legally qualified judge and judge-rapporteur
Key Holdings
- Suspensive effect denied.
- Manifest error standard strictly applied.
Tags
- Appeal
- Preliminary Injunction
- Suspensive Effect