Heraeus Electronics v Vibrantz (UPC_CFI_114/2024 and UPC_CFI_448/2024)
Decision date:
10 October 2025
Osborne Clarke summary
- This decision concerned an infringement claim brought in the Munich LD by Heraeus against Vibrantz. Heraeus is a German developer and vendor of materials solutions in assembly technology. Vibrantz is a German manufacturer of coating chemicals and is in direct competition with Heraeus. Heraeus alleged infringement of its patent concerning sintered metal preparations for joining components in Germany, France, Italy and Romania. Vibrantz counterclaimed for revocation in those countries.
- Vibrantz had previously brought invalidity proceedings against the German designation of the patent in the German Federal Patent Court, which in 2023 had upheld that designation in amended form. Heraeus only defended an auxiliary request reflecting this amended form for all jurisdictions. It argued that Vibrantz's revocation counterclaim was barred under Rule 362 RoP on the basis of res judicata. As the UPC here was deciding on the German part of a patent in the context of a concurrent jurisdiction, the UPC was deemed, as regards that German part, to be a German court. It was thus bound by res judicata. It was immaterial that the UPC also had the power to decide on other national parts of the patent.
- The Munich LD noted that the CJEU had pointed out the importance of res judicata for legal certainty. In this case, both the UPC and the Federal Patent Court had jurisdiction as German national courts. As the UPCA does not have specific provisions on the binding effect of a final judgment dismissing a national revocation action, the UPC needed to apply national law to assess the effect of the Federal Patent Court's judgment. According to that standard, the judgment was binding on the parties in respect of the grounds of invalidity raised in the earlier proceedings. There was therefore an absolute bar under Rule 362 RoP to Vibrantz challenging the German designation for lack of novelty and inventive step. However, Vibrantz could challenge the other designations based on those grounds. As insufficiency had not been raised in the national proceedings, Vibrantz could challenge the German designation on that basis.
- As Heraeus only defended the non-German designations according to its auxiliary request, the court declared the claims extending beyond that invalid without substantive examination. It went on to consider the arguments relating to novelty and inventive step of the amended claims. These arguments were rejected. The court held that a number of features of the claims were not explicitly disclosed, agreeing with the patentee that "a combination of five documents with specialist knowledge does not destroy novelty." For inventive step, the Munich LD applied "the problem-solution approach developed by the Boards of Appeal of the European Patent Office" and concluded that the claims were inventive. The court considered that the approach applied by the Munich CD in Sanofi v Amgen would not have produced a different result.
- The Munich LD also rejected the insufficiency arguments. Aspects of Vibrantz's argument essentially related to lack of clarity, which is not a ground of invalidity. It had also failed to put forward any significant arguments to show that the claim was not feasible across its breadth.
- The court considered that Vibrantz's products satisfied the amended claims directly and literally. However, Vibrantz argued that it had a right under Article 28 UPCA to continue use of the invention based on private prior use of certain sinter pastes and silver flakes. The court noted that under Article 28 UPCA, a party can only invoke rights granted by national regulations and the existence of the right must be demonstrated for each UPC state. Vibrantz referred the court to the relevant provisions of German law and provided evidence that it had formulated relevant sintering pastes in Germany.
- The court considered it was sufficient under German law that Vibrantz had decided to use formulations before the priority date that would inevitably exhibit the relevant claim features, and held that it had a right of prior use that covered Germany.
- Heraeus had not provided evidence of infringing acts in France, Italy or Romania. Instead, it had argued a risk of infringement in those countries derived from infringing acts in Germany. As Vibrantz's acts in Germany were covered by its right of prior use and not infringing, the court held they did not give rise to a risk of infringement elsewhere.
Issue
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