500982/2023 – OERLIKON TEXTILE G.M.B.H. & CO. K.G. v BHAGAT GROUP

Court
Local Division Milan
Date
Outcome
Granted
Sector
Mechanics
Decision Type
PROCEDURAL

Expert Commentary

Full Decision Text

1 MILAN LOCAL DIVISION DECISION EX ART. ART. 192 ET SEQ. ROP Adopted by Judge Dr. Alima Zana on June 14, 2023 and concerning European patent EP2145848B1 in proceeding No. 500982/2023 introduced by OERLIKON TEXTILE G.M.B.H. & CO. K.G., headquartered at Leverkuser Strasse No. 65, Remscheid, Germany, represented and defended by attorneys X and Y - DEFENDANT - AGAINST BHAGAT GROUP, headquartered at NH6, Hoziwala Industrial Estate, Sachn Apparel Park SEZ, Sachin, Surat, Gujarat, 394235 - India - APPLICANT - A. Indication of the plaintiff's request. By a document filed on 13.6.2023, Oerlikon Textile G.m.b.H. & Co. K.G. (hereinafter Oerlikon) exposed that it was the owner of European Patent No. EP214848B1 (hereinafter EP848), entitled "false twist texturing machine" having the subject matter of a textile machine, issued on 2 3 . 9.2011, following an application dated 23.1.2009, claiming German national priority of the 19.7.2008, validated in Italy by filing the translation with the Uibm (see doc. 7 and 9). He pointed out that during the ITMA international textile trade fair being held in Rho (MI) from 8.6 to 14.6.2023, he had discovered that competitor BHAGAT GROUP was presenting at the exhibition booth assigned to him a machine, bearing the trade name-Bhagat Textile Engeneers apparently interfering with the patent of his 2 title, including by virtue of a technical examination carried out by a trusted patent attorney (see doc. 6.1 and 6.2). He concluded by requesting the issuance of an order for the protection of evidence pursuant to Sections 192 et seq. RoP, with the acquisition of copies of all technical and commercial documentation, in any format, found at the respondent's exhibition booth, with the appointment of a court expert to assist the bailiff in the execution of the measure. B. Main stages of the process. Given the extreme urgency of the procedure, the appeal was initially assigned to the designated standing judge on the date the appeal was filed. The standing judge by order today referred the file to this Local Division for the further course of the proceedings. The presiding judge of the Milan Local Division, having regard to Article 194(3) RoP, designated this judge for further handling and settlement of the proceedings as a single judge, taking into account the extreme urgency and the consequent impossibility of timely settlement and deliberation of the panel. C. Reasons for the decision. Having regard to the application filed by the plaintiff, the points of the decision are as follows: 1. fumus boni iuris 1.1. jurisdiction 1.2. competence 1.3. identification of future merit action under Article 192(2) RoP; 1.4. examination of the evidence provided by the appellant: a) Of the ownership of his right b) Of the violation of his right under Article 60, paragraph, UPCA 1.5. Compliance with the conditions stipulated in Article 192, paragraph 2, RoP 2. periculum in mora 2.1. The extreme urgency according to Article 194, paragraph 4, RoP 3 2.2. The reasons for not convening the respondent in advance in accordance with Article 192, Paragraph 3, RoP 3. The payment of fees according to Article 192, paragraph 5, RoP 4. Conclusion and mode of execution of the measure 1.1. Jurisdiction 1. Fumus boni iuris Jurisdiction of the UPC exists because the plaintiff has made a claim that is included among those within the jurisdiction of the UPC, according to Art. 32 (1) (c), UPCA. The patent title is a European patent and the owner has not exercised the right to opt out under Article 83, Section 3, UPCA and 5, RoP. 1.2. Competence In the internal apportionment of jurisdiction between Central Division and Local Divisions, the latter have general jurisdiction over interlocutory actions, based on the combined provisions of Articles 32 (1) (c) and 33 UPCA. This Local Division is then territorially competent under Article 33(1)(a), UPCA, since the Italian territory-specifically the municipality of Rho (MI)-is identified as the forum commissi delicti, i.e., the place where the infringement of the patent is taking place or otherwise threatened. In addition, the application for preservation of evidence appears to have been filed before the same Division where the appellant intends to file the trial on the merits, in accordance with the provisions of Article 192(1) RoP. 1.3. Identification of future substantive action under Article 192(2) RoP. Oerlikon stated that it intends to bring an action on the merits to establish the infringement committed by the respondent, with t h e adoption of the consequent measures of injunction, setting of penalty, seizure, damages, and publication of decision 4 Thus, the condition typified by Article 192(2) RoP is found to be met. 1.4. Examination of the evidence provided by the plaintiff a. the right asserted. The plaintiff has documented that he is the exclusive owner of the challenged patent (see doc.7), which is assisted by a presumption of validity. In particular, it is a machine for structuring/texturing - with false twisting - several fusion filaments, through texturing, heating, cooling and stretching operations, at the end of which the yarn is wound onto a reel. The patent title consists of an independent claim and nine dependent claims. Specifically, the independent claim asserts that "the first feeder and the second feeder are made as a winding feeder and, respectively, that the third feeder is made as a clamping feeder." This overcame some of the disadvantages of the known technique (which used either only clamping feeders or only winding feeders, guaranteeing through the invention implemented here: i. that the wires were structured and treated with high quality; II. that the treatment of the wire took place as much as possible in a "uninterrupted" The plaintiff acknowledged that no opposition has been filed before the European Patent Office at present (see p. 4 of the appeal). As a result of appropriate search of the CMS database, no letter of protection was filed by the respondent. b. the violation of his right under Article 60(1) UPCA Oerlikon attached: - copies of four photographic reproductions depicting the respondent's allegedly infringing machine made at the Bhagat Group's booth at the ongoing RHO International Trade Fair (see plaintiff's Exhibits 5.1, 5.2, 5.3, 5.4); 5 - the copy of a poster at the same booth (see Doc. 5.5. of plaintiff): - A technical opinion prepared by a party's technical adviser (see Doc. 6.1 and 6.2). - a video of the Bhagat machine referred to by the QR code imprinted on the business card found at Bhagat's booth (see plaintiff's Doc. 5.6.). These documents, at present, appear to offer positive evidence, at least circumstantially, of the respondent's improper reproduction of the features claimed in the EP '848 patent, justifying the request for the measure invoked here. In addition, it should not be forgotten that the requested measure constitutes an instrument to protect in an immediate way the -trial- right to evidence and only in a mediated way the underlying right of privity. 1.5. Compliance with the conditions prescribed in Article 192(2) of the Rules. Plaintiff has met its burden of alleging and proving: - the clear indication of the required measurements, including the exact location of the evidence to be preserved (i.e. at the booth of the ITMA trade show, currently being held in Rho); - the reasons why the indicated measures are necessary to preserve evidence deemed relevant (since these are necessary findings to conclude the counterfeiting phenomenon and its extent); - the facts and evidence placed on the basis of the claim as already examined in 1.4) above. 2.1. extreme urgency 2. periculum in mora The requirement of extreme urgency is met, given that the international trade fair exhibition where the infringing conduct is being conducted began on 8.6.2023 and ends, today, on June 14, 2023. 2.2. The reasons for not convening the respondent in advance in accordance with Article 192, Paragraph 3, RoP The prerequisites of Articles 197(1) RoP and 60(5) UPCA for granting the measure without the prior hearing of the defendant are found, since: 6 a) time constraints do not allow the parties to convene before the end, on tomorrow's date, of the exhibition event; b) there is a risk that the evidence will no longer be accessible to the plaintiff once that exhibition event is over, as the respondent is based abroad and the indicated documentation is easy to conceal and/or destroy. 3. Payment of taxes according to Article 192, Paragraph 5, Rules The Court notes that according to Article 371(3) RoP, in cases of urgency, when advance payment is not possible, the plaintiff's counsel shall pay the fixed contribution within the time limit set by the Court: in light of this statute of limitations, the plaintiff should be ordered to pay this contribution by June 16, 2023. 4. Conclusion and mode of execution of the measure 4.1. The balancing of conflicting interests suggests that the measure should be granted, taking into consideration the potential borne risk of harm to each party in the case of granting -for the respondent- or denial of the measure- borne by the plaintiff. And indeed, the criterion of proportionality between the opposing needs is met, being prevailing, between the risk of irreparable loss of the plaintiff's right to evidence and the respondent's risk of suffering the description. In light of the above considerations, the application for description should therefore be granted and awarded unheard of ex-parte, in the manner set forth below. 4. 2.Pursuant to art. 196, paragraph 4, RoP, the authorized measure will be executed - according to the domestic national discipline in whose territory the remedy is to be implemented - by an expert, appointed by this Court and indicated in the operative part, chosen from the list of technical experts in patent matters who habitually collaborate with the Court of Milan, choice guarantees the recurrence of the requirements of independence, autonomy and professionalism, required by art. 196, paragraph 5, RoP. The appointed professional will proceed with support from the appropriate judicial officer. The claimant will be able to attend the description operations through his or her trusted attorneys and a 7 his trusted technical adviser, with other representatives, employees or servants of the plaintiff expressly prohibited from being present at the execution of the measure. The designated expert shall file a written report of the activities performed, together with a copy of the documentation acquired as a result of the execution of the order, with the Registry of the Milan Local Division of the Unified Patent Court on the day following the completion of the description operations. 4.3. Pursuant to Articles 58 UPCA and 196(1) RoP, it is ordered that the documents acquired shall be accessible, until further order of the Court, only to the appellant's two attorneys and a technical expert of his choice. 4.4. The evidence acquired may be used only in the future trial on the merits as better stated in the operative part ex art .196, paragraph 2, of the RoP. 4.5. The Court orders that the execution of the service of the appeal together with this order and hard copy of the attached documents shall be implemented by an alternative method, based on the combined provisions of Articles 275(1) and 276(1) RoP. In fact, there are good reason to deviate from the ordinary way of service of orders in the manner set forth in the operative part taking into account (i) extreme urgency, (ii) the need not to frustrate the surprise effect, and (iii) to comply with the rule set forth in Article 197(2) RoP, which provides for serving the order immediately upon execution of the measure. 4.6. Pursuant to Article 196(6) RoP, the Tribunal also finds that there are special circumstances for not conditioning the immediate effectiveness of the measure on the applicant's prior deposit of a security. In fact, the measure is aimed at acquiring evidence of the alleged infringement and thus does not, in itself, have afflictive or restrictive content for the respondent's activities. In addition, the appellant has completed in a very short period of time - in only five days - all the verifications necessary for the purpose of submitting the present request, and the deadline for the fair is scheduled within a single day of the adoption of the present measure, with objective impairment of the possibility of its execution, where it is subject to the payment of a security or the issuance of other equivalent guarantee. Lastly, the applicant will 8 presents as belonging to a large industrial group, thus capable of repairing any damage caused to the respondent in the execution of this measure. The measure is therefore immediately enforceable under Article 196(3) RoP. 4.7. In application of the general principle of proportionality established by Articles 41 and 42, UPCA, and of the comparison of conflicting interests also in the choice of implementing measures, taking into account that the measure is to be executed in the context of an exhibition event open to public participation, it is specified that the bailiff and the expert should preferably proceed, where possible, with the execution at times other than those intended for public opening or otherwise of lower flow at the respondent's booth. For all the above reasons THE UNIFIED PATENT COURT - LOCAL DIVISION OF MILAN in granting the application 1. Orders the preservation of evidence as requested by the plaintiff and, accordingly, authorizes Oerlikon Textile G.m.b.H. & Co. K.G. to proceed through the territorially competent bailiff and the expert appointed below to acquire copies of all technical, promotional and/or commercial documentation, in any format, relating to the textile machine identified with the name Bhagat Textile Engineers produced and/or marketed and advertised by Bhagat Group found in the Respondent's booth at the ITMA 2023 - Rho Fiera exhibition center; 2. appoints as an expert for the purpose of execution Ing. Z , with an office intelwho -coordinating with the plaintiff- will make use of the territorially competent bailiff; 3. authorizes the appellant to be present at the description operations through his trusted attorneys and his trusted technical adviser, with other representatives, employees or servants of the appellant expressly prohibited from being present at the execution of the measure; 4. orders that the expert file a written report of the operations performed, together with the documentation collected, immediately after the completion of the operations, and 9 however, by 6/15/2023 at the Registry of the Milan Local Division of the Unified Patent Court; 5. orders that the information gathered by the expert shall be accessible, until further order of the court, only to the plaintiff's two defense counsel and one of his technical experts, named by name in the report referred to in the preceding paragraph, with a prohibition on disclosing the information gathered to third parties; 6. the order must be executed in accordance that the enforcement procedures and conditions established by the law of the Italian state, where the measure is implemented; 7. Declares this order immediately enforceable, without further conditions; 8. orders that, in accordance with Article 196, Paragraph 2, RoP, in the absence of a new order of the Court, the result of the measures to preserve evidence may be used only in the proceedings on the merits of this same case; 9. orders the plaintiff to serve the request for the granting of the measure, together with a copy of this order and a copy of the paper documents, immediately at the time of execution of the measure with observance of the rules in force in Italy on the service of judicial documents; 10. Orders the appellant to file the fixed contribution by June 15, 2023, pursuant to Article 371(3) of the Rop; 11. Orders the Chancery to notify by telephone the appointed expert Eng. Z; 12. Expressly advises the respondent that it may file a request for review of this evidence preservation order within the thirty-day period From the execution of the measure, pursuant to Article 197, Paragraph 3, RoP. Thus decided in Milan on June 14, 2023. The single judge appointed by the presiding judge Dr. Alima Zana

Key Holdings

  • Orders the preservation of evidence as requested by the plaintiff
  • Declares this order immediately enforceable, without further conditions
  • orders that the information gathered by the expert shall be accessible, until further order of the court, only to the plaintiff's two defense counsel and one of his technical experts, named by name in the report referred to in the preceding paragraph, with a prohibition on disclosing the information gathered to third parties
  • orders that, in accordance with Article 196, Paragraph 2, RoP, in the absence of a new order of the Court, the result of the measures to preserve evidence may be used only in the proceedings on the merits of this same case

Tags

  • Infringement
  • Preservation of Evidence

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