Key takeaways
Scope of protection for features defined by physical properties (Art. 69 EPC, Art. 1 Interpretation Protocol)
A claim feature described solely by physical properties covers only embodiments capable of performing the function the patent attributes to it.
Claim 1 of the patent-in-suit defines the “non-conductive fluid” only by its immiscibility and its absence of significant conductivity at rest. Because such a definition does not specify a substance class, the Court used the description to determine the function of this feature, which the patent calls the “defining element of the invention”: covering the valleys of the metal surface and increasing interparticle connectivity. Claim 1 does not mention emulsions. However, among emulsions, the patent discloses only water-in-oil emulsions. The accused oil-in-water emulsion has a conductive continuous aqueous phase and therefore could not perform that defining function. The Court accordingly dismissed the infringement action.
Costs of an undecided conditional counterclaim for revocation (Art. 69(1) UPCA)
A counterclaim for revocation conditional on a finding of infringement is admissible. If the condition is not met, it remains undecided and each party bears its own costs, at least where the condition was attached from the outset. The division thereby departs from LD Munich, LD Mannheim and LD Paris.
Division
Local Division Hamburg
UPC number
UPC_CFI_660/2025,
UPC_CFI_1326/2025
Type of proceedings
Infringement action and counterclaim for revocation
Parties
Claimant: Steros GPA Innovative S.L.
Defendant: OTEC Präzisionsfinish GmbH
Patent
EP 4 249 647 B1
Jurisdictions
UPC
Body of legislation / Rules
Art. 69(1) UPCA; Art. 69 EPC and Art. 1 of the Protocol on its Interpretation
