Hewlett-Packard v Andreas Rentmeister & Anor (UPC_CFI_515/2025)
Decision date:
17 October 2025
Osborne Clarke summary
- HP sought a preliminary injunction and further provisional measures against two defendants, for alleged patent infringement, concerning its patent for electronic circuitry used in printer ink cartridges. HP claimed that the two defendant were dealing in "rebuilt" HP ink cartridges. The first defendant is based in Germany and sells rebuilt cartridges online via its own website to customers in several UPC countries. The second defendant is based in China and also sells rebuilt cartridges online, but via the Amazon platform targeted at consumers in various UPC countries.
- Within one month of service of HP's application, the first defendant notified the court that a settlement had been reached between the two parties. The first defendant stated that it would not defend itself against four of five of HP's requests, and that HP had agreed to drop its final request (relating to costs of the proceedings). HP invited the court to issue a judgment by default against the first defendant in relation to the four claims it was not defending itself against.
- Service out of the jurisdiction in China on the second defendant had not been completed by the date of the Düsseldorf LD's decision. However, HP still requested a decision by default against the second defendant.
- This decision only concerned HP's application for provisional measures and default judgment against first defendant.
- The Düsseldorf LD first considered what type of order it should produce. Pursuant to Rule 209.1(a), the UPC has the discretion to inform a defendant about an application for provisional measures and invite them to lodge an objection to the application within a specified time period. If a defendant does not lodge an objection within that time period or does not substantiate its objection (as was the case here), the application for provisional measures can be decided based on the applicant's submissions by means of a regular order in the preliminary injunction proceedings.
- A decision by default (Rule 355.1(a) RoP) is not something that the court would consider in these circumstances. Firstly, this is because a decision by default is not provided for in Rules 205 RoP et seq for this scenario. Secondly, only a regular preliminary injunction order would be consistent with the underlying interests involved. If a defendant declines the court's invitation to lodge an objection against the provisional measures application then there is no reason to grant them the "advantages of a decision by default". The possibility of setting aside the decision by default would conflict with the applicant's interest in effectively enforcing their patent in preliminary injunction proceedings.
- The fact that HP had requested a decision by default, in addition to its provisional measures application, did not prevent a regular preliminary injunction order being granted. The court held that HP's default judgment request merely supplemented its provisional measures application and therefore the court was able to grant a preliminary injunction or other provisional measures through a regular order and still comply with Article 76(1) UPCA (that is, deciding in accordance with the requests of the parties and not awarding more than is requested).
- Proceeding on the basis, the court considered the application for provisional measures as directed against the first defendant in the usual way. It found that the application both admissible and successful on the merits.
- The first defendant did not challenge the validity of the patent, therefore the Düsseldorf LD did not consider validity in detail. It stated that since the defendant had not put forward any arguments against validity and nor had there been any nullity or revocation proceedings (national or UPC), there was no reason for it to doubt the validity of the patent.
- On infringement, the court found that the products sold by the first defendant made direct and literal use of the technical teaching of claim 13 of the patent because they had the same logic circuitry on the cartridge which functioned as a controller. HP supplied numerous images to demonstrate the similarities.
- The court also found that the balance of interests favoured the grant of the preliminary injunction, in part because the parties were direct competitors and there was a potential for price erosion.
- The court also found that HP had not hesitated in applying for provisional measures. HP had lodged its application approximately two weeks after becoming aware of the infringement.
- Lastly, the court found that the measures were objectively necessary because of the potential loss of revenue, the risk of permanent loss of market share, and the potential harm to HP's reputation by association with the lower-quality infringing products.
- The court granted the preliminary injunction against the first defendant and ordered it to provide information relating to the infringement. The court set a penalty payment of up to €1000 per infringing device made, offered, placed on the market etc or up to €250,000 per day for non-compliance with the preliminary injunction and up to €100,000 per day for failing to provide the requested information. HP has 31 calendar days or 20 working days (which is longer) from service of the order on the first defendant to commence proceedings on the merits, otherwise the provisional measures order will be revoked or otherwise cease to have effect.
- No security for costs were ordered to be paid by HP because the first defendant stated that it did not intend to challenge the application and it did not present arguments against the provisional measures to the court.
Issue
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