UPC Milan Local Division Acts Fast to Address Alleged Infringement at Trade Fair

UPC Milan (IT) Local Division Source: https://www.unified-patent-court.org/en

On June 12 and 13, 2023, the German giant textile company, Oerlikon Textile G.M.B.H. & CO. K.G. (Oerlikon), filed two applications with the Unified Patent Court’s (UPC’s) Milan Local Division to preserve evidence against two Indian companies accused of infringing the (Italian portion) of the European patent EP214848B1, which covers a “False twist texturing machine”.

The defendants, Himson Engineering Private Limited (“Himson”), and Bhagat Group, were exhibiting two machines at a trade fair, bearing the trade names Machine 2 and Machine 2-TS, along with a machine bearing the trade name, Bhagat Textile Engineers.

The plaintiff aimed to obtain copies of all technical and commercial documentation, in any available format, from the defendant’s trade fair booth to acquire and preserve evidence of the infringing activity. Oerlikon declared in its urgent requests the intention to initiate proceedings on the merits to obtain an injunction, seize the infringing goods, seek damages compensation, impose penalties and request the publication of the decision.

Key Points

Due to the “extreme urgency” of the request, the case was assigned to a standing judge, who then reassigned it to the Milan Local Division Presiding Judge, Mr. Pierluigi Perrotti. He, in turn, assigned the case to Ms. Alima Zana. It is important to note that the “extremely urgent” box should only be checked when necessary, as doing so may risk prolonging the proceedings. Ms. Zana was appointed as the “single judge” to decide the case, considering the urgency and the inability to establish a panel of judges.

Jurisdiction

The first issue addressed by the Milan Local Division (and by the appointed judge, Ms. Zana) was the jurisdiction of the Milan Division. The request fell under the matters listed in the UPC Agreement, and the European Patent was not opted-out. Thus, the jurisdiction issue was quickly resolved.

Competence

Regarding competence, the Milan Local Division concluded that Local Divisions are competent for urgent proceedings (subject matter competence). Geographically, the Milan Local Division had competence, as the infringing activity took place at the International Textile Machinery Association (ITMA) trade fair in Milan. Therefore, the Milan Local Division was the appropriate division based on the “forum commissi delicti” criteria (assigning competence to the court where the infringement occurred).

Proving the Requests are Grounded

Oerlikon was proven to be the sole owner of the patent, with a presumption of validity, and there had been no oppositions filed before the European Patent Office. Furthermore, Oerlikon demonstrated that the defendants had not filed any protective letters.

Regarding the evidence of infringement, Oerlikon provided copies of two brochures prepared by the respondents, Himson Engineering Private Limited, for the technical and commercial presentation of the allegedly infringing machines MACCHINARIO 2 and MACCHINARIO 2-TS, along with a technical opinion from a party-appointed expert. These documents were deemed sufficient to grant the preservation measure.

As for Bhagat Group, Oerlikon submitted four photographic reproductions of the allegedly infringing machine taken at Bhagat Group’s booth, a copy of a billboard at the same booth, a technical opinion from a party-appointed expert, and a video of the Bhagat machine referenced by the QR code printed on the business card found at Bhagat Group’s booth. These documents were also deemed sufficient to grant the preservation measure.

Urgency Requirement

The requirement of urgency (“periculum in mora”) was considered to be present due to the imminent conclusion of the trade fair.

Reasons for Issuing Ex-Parte Orders

The Milan Local Division issued the orders ex-parte because it was not possible to summon the defendants to appear before the court before the conclusion of the trade fair. Additionally, Ms. Zana assessed that there was a risk that the infringing evidence would not be accessible to the plaintiff after the conclusion of the trade fair, as the defendants are foreign companies, and the evidence could be easily hidden or destroyed.

Enforcement of the Measures

The court argued that the criterion of proportionality between the opposing needs had been respected, as the prevailing factor was the risk of the plaintiff irreparably losing the right to evidence, as opposed to the defendant’s risk of suffering an invasive measure.

The Milan Local Division concluded that the enforcement should be carried out according to national law (as provided for by the UPC Rules of Procedure) by an expert appointed by the court, together with the Bailiff of the court. The aim was to draft a written report of the activity performed, along with the documents acquired during the enforcement of the order. The Division explicitly stated that such evidence shall only be used in future proceedings on the merits. The Division also allowed the plaintiff to be present during the “description operations” only through its trusted attorneys at law and trusted technical expert (no other plaintiff’s employees should attend the description).

Bond

No security was requested from the plaintiff due to the type of measure requested (descrizione), which has been considered non-afflictive or restrictive for the defendant, given the time constraints, and lastly, the fact that the plaintiff is a large industrial group capable of compensating for any damage caused to the defendants during the execution of the “descrizione” measure.

Review

In her Orders, Ms. Zana concluded by advising the defendants about the possibility to ask the Division for a review of the order to preserve evidence within 30 days from the enforcement date of the order.

Final Remarks

 The Milan Local Division is proving to be efficient, despite initial skepticism about Italian UPC court time decisions. Not only did they resolve the case in one day, but they also successfully enforced the orders at the ITMA trade fair. The plaintiff now has solid evidence of the (alleged) infringements. Determining the extent of the infringement (and the validity of the patent) is now a task to be addressed by the same Milan Local Division, which has been called to decide the above issues within one year. While it is too early to declare the UPC a complete success, we can confidently say that, at least in Milan, the UPC’s initial operational days seem promising!