Hewlett-Packard v Zhuhai ouguan Electronic Technology & Anor (UPC_CFI_449/2025)
Decision date:
03 September 2025
Osborne Clarke summary
- The Düsseldorf LD granted a preliminary injunction and an order for disclosure of information against the second defendant.
- This was an application for provisional measures brought by HP concerning two patents relating to printer cartridges. Service had not yet been effected against the first defendant, which is based in China, but had been effected on the second defendant, a German company that sells printer cartridges in a number of UPC member states. The decision therefore related only to the second defendant.
- After being served with the application, the second defendant informed the court of a settlement between the parties. Under this, the second defendant would not defend most of HP's requests, in respect of which "the court may issue a judgement by default against Defendant 2", and HP would withdraw its request for costs. HP duly did so and also requested a decision by default.
- Despite the parties' requests, the court proceeded by way of a regular order, rather than by default. A decision by default was not something to be considered for several reasons. Firstly, Rules 205 et seq RoP relating to provisional measures do not provide for a decision by default in this scenario.
- Secondly, only a "regular PI order" was consistent with the underlying issues. The defendant had been given the opportunity to file an objection to the application under Rule 209.1(a) RoP, and had decided not to. The court could therefore proceed by way of regular order as it was irrelevant that it had decided not to file an objection "for reasons outside of the court proceedings". When a defendant declines the invitation to file an objection, there is no reason to grant it the advantages of a decision by default. The court noted that the "associated possibility of setting aside the decision (see [Rule] 356 RoP) would conflict with the Applicant’s interest in effectively enforcing its patent in the PI proceedings".
- The court held that the fact that the applicant had also requested a decision by default did not prevent a regular order. Article 76(1) UPCA requires that the court "shall not award more than is requested". The court considered that its order fell within this framework, as HP had applied for the provisional measures and the request for a decision by default "merely supplement[ed]" but did not replace this application.
- The Düsseldorf LD proceeded to consider infringement and validity of the patents, noting that as the second defendant had not argued against validity there was no reason to doubt it. It considered that the balance of interests was in favour of granting the provisional measures, and that the applicant had acted with sufficient urgency. Accordingly, it granted the requested preliminary injunction and an order for disclosure of information against the second defendant.
- The court also considered whether to order HP to provide security under Rule 211.5 RoP to protect the defendant in case the court subsequently lifted the measures. This had not been requested by the parties, but was considered of the court's own motion. It noted that the second defendant had stated it would not challenge the measures, so there was "no reason to impose this burden on the Applicant."
Issue
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