UPC CFI 127/2025 – PRINOTH S.P.A. v XELOM S.R.L.

Court
Local Division Milan
Date
Outcome
Application for preservation of evidence, inspection, and seizure granted with limitations.
Sector
Mechanics
Decision Type
Order for Preservation of Evidence, Inspection, and Seizure (Ex Parte)

Expert Commentary

Full Decision Text

1 ACT. No. 7838/2025 UPC CFI No. 127/2025 ORDER No. 11002/2025 UNIFIED PATENT COURT COURT OF FIRST INSTANCE LOCAL DIVISION OF MILAN ORDER TO PRESERVE EVIDENCE, INSPECTION AND SEIZURE OF EVIDENCE CLAIMANT PRINOTH S.P.A. via Brennero n. 34 - 39049 - Vipiteno - IT represented by Renato Bocca, Stefano Grassani and Camilla Scalvini DEFENDANT XELOM S.R.L. via Nicolò Copernico n. 6 - Bolzano - 39100 - IT issued on 18 March 20252025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 2 PATENT AT ISSUE Patent no. Owner EP1995159 Prinoth s.p.a. EP2507436 Prinoth s.p.a. DECIDING JUDGES This order is adopted by the Court sitting as a panel composed of Pierluigi PERROTTI, presiding judge Alima ZANA judge rapporteur Marije KNIJFF legally qualified judge LANGUAGE OF THE PROCEEDINGS Italian THE PROCEEDINGS Prinoth s.p.a. is an Italian company based in Vipiteno, now part of the HTI group, High Technologies Industries, a world leader in the sector since the 1970s, dedicated to the production of snow groomers (known as snowcats) and multi-purpose tracked vehicles designed to move on snow and other surfaces. In 2020, it presented the first hydrogen-powered snow groomer, the Leitwolf H2-motion, and the first electric snowcat, the Husky E-Motion, both eco-friendly, zero- emission vehicles. Prinoth is the owner of EP Patents '436 - entitled 'Snow groomer and related control method' - and EP '159 - entitled 'Snow groomer vehicle' - otherwise known as 'snowcats', hereinafter also referred to as the Patents. On 24 February 2025, Prinoth filed an application pursuant to Article 60 UPCA and Rules 192 et seq. RoP for the purposes of inspection, preservation of evidence and seizure against Xelom s.r.l. - an innovative start-up established in May 2019, part of the Technoalpin group, hereinafter referred to as Xelom - requesting an order in absentia before the start of the proceedings on the merits.2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 3 The applicant complained that, during 2024, Xelom began to disseminate, via its Instagram profile and in a number of interviews, news about the development of an electric snow groomer (known as a Snow Cat), publishing a brochure about it on its website. At the end of 2024, Xelom's Snow Cat was made available for use in several ski resorts, in Ischgl in Austria and Oberreggen in South Tyrol; in January 2025, it was used in the Lavazè ski resort in the province of Trento, and in February 2025 in the Corno del Renon ski resort, in Stockholm and in the province of Bolzano. The applicant suspects that the characteristics of this vehicle, as partially visible in the documentary evidence submitted, reproduce the teachings of its patent. Prinoth believes that proof of the alleged violation can only be obtained by means of an order for inspection of the premises, preservation of evidence and seizure of a sample granted by the Court without hearing the other party, to be carried out also at the registered office and operational headquarters of the parent company, Technoalpin s.p.a. (hereinafter Techoalpin), where tested components, design and construction documentation may be located pursuant to intercompany agreements. The Presiding Judge, considering that the conditions of extreme urgency did not exist, appointed the Judge Rapporteur and proceeded with the necessary steps for the composition of the Panel by the President of the Court of First Instance. By procedural order no. 10632/2025 of 4 March 2025, on behalf of the panel, the Judge Rapporteur, exercising the power conferred by rule 194, para. 1, letter c. RoP, summoned the appellant alone on 3 May 2025 to request, in particular: (i) the production of two documents cited but not mentioned in the appeal; (ii) the indication of specific keywords through which to search for evidence; (iii) the names of the party-appointed experts authorised to be present during the implementation of the measure; (iv) the specification, if possible, of the name of the vehicle subject to the measure, generically referred to in the appeal as Snow Cat. The appeal was therefore subsequently supplemented on 10 March 2025 by a request pursuant to Rule 9.1 RoP. ORDER REQUESTED BY PRINOTH In summary, Prinoth requests: 1. order, pursuant to Article 60 UPCA and Rule 199 RoP, that Xelom be subject to an inspection order, to be carried out both at the respondent's premises and at third parties' premises, in particular at Technoalpin: (a) of the disputed snow groomer and its components and the tools used to manufacture them;2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 4 (b) of the places where it is manufactured or assembled and where technical documents and drawings are kept, and in particular: - at the registered office and operational headquarters of Xelom in Bolzano; - at the registered office of Technoalpin in Bolzano (holding company); - at the other branch offices, appurtenances, warehouses, etc. of Xelom and Technoalpin; 2. order, pursuant to Article 60 UPCA and Rule 196 RoP, the physical seizure of at least one example of the disputed snow groomer model from Xelom, to be carried out both at the defendant's premises and at third parties' premises; 3. order, pursuant to Article 60 UPCA and Rule 196 RoP, against Xelom, to be carried out both at the defendant's premises and at third parties' premises, an order for the preservation of evidence including a detailed description: (a) all technical, commercial and accounting documentation relating to the snow groomers manufactured and/or marketed by Xelom; (b) the devices used and held by the defendant's personnel (by way of example, desktop and laptop PCs, tablets, smartphones, file storage media (such as hard drives, USB sticks, SD memory cards), as well as the storage systems (cloud) used by them; (c) the protocols and/or results of tests and trials carried out in relation to Xelom's snow groomer; 4. indicate, in accordance with Rules 196.4 and 196.5 of the Rules of Procedure, the competent bailiffs, assisted by one or more court-appointed technical consultants, if necessary, from among experts in mechanical or electromechanical engineering, assisted by forensic IT experts for the necessary forensic copies; 5. authorise the bailiffs and court-appointed technical consultants to open closed rooms, warehouses, storage areas, cabinets, etc., as well as to use video and photographic equipment, photocopiers, etc., assisted by forensic IT experts for the necessary forensic copies; 6. order Xelom and third parties to cooperate in the execution of the measure, including by making documents and machinery accessible and providing access credentials and passwords, including to any consultants; 7. authorise Prinoth to assist in the execution of the measure through its representatives and technicians; 8. authorise its technicians to calculate the weight of a single wheel of the Xelom snow groomer, using a bridge crane and a load cell; 9. set the terms for the start of the trial on the merits; 10. order Xelom to pay the costs of the proceedings.2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 5 REASONS FOR THE ORDER 1. Jurisdiction and competence The Unified Patent Court has jurisdiction over the present claim, in light of Articles 32.1(c) and 60.1 UPCA, considering that: a) the two titles at issue are European Patents for which the proprietor has withdrawn its opt- out declaration pursuant to Article 83(3) UPCA and Rule 5 RoP; b) The claim in question falls within the scope of the disputes referred to in Article 32(1)(c) of the UPCA (actions for provisional and protective measures and injunctions). The two patents are in force, inter alia, in Italy, as evidenced by the Italian patent register (see doc. 13 for EP '436 and doc. 16 for EP '159). The Milan Local Division has jurisdiction pursuant to Articles 32.1(c) and 33.1(b) UPCA, for the following reasons: a) by virtue of the general criterion of the general jurisdiction of legal persons, since Xelom is based in Italy - in Bolzano, via Nicolò Copernico n. 6 - and carries out its business activities there pursuant to Article 4 of EU Regulation No. 1215/2012 (doc. 5 of the applicant); b) by virtue of the special criterion of the so-called forum commissi delicti, referred to in Article 7(2) of the aforementioned Regulation, since part of the infringing conduct takes place in Italy. Finally, the appeal was filed before the Local Division of Milan, where Prinoth intends to commence proceedings on the merits pursuant to Article 33.1(b) UPCA, in accordance with Rule 192.1 RoP. 2. Compliance with the provisions of Rule 192.2 RoP 2.1. Content of the application The request for preservation of evidence, seizure and inspection shall contain: (a) the details referred to in Rule 13.1(a) to (i) RoP; (b) a clear indication of the measures requested, including the exact location of the evidence to be preserved, where known or reasonably suspected (registered office and place of business of the respondent); (c) the reasons why the proposed measures are necessary to preserve the relevant evidence; (d) the facts and evidence in support of the request. 2.2. Concise description of the future proceedings on the merits2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 6 The applicant intends to initiate proceedings on the merits to establish the infringement of the patents it holds against the defendant, based on the evidence obtained in these proceedings, if the suspicion of patent infringement is confirmed. The claims indicated for the future proceedings on the merits are an injunction with penalty, seizure, damages and publication. Consequently, the conditions laid down in Rule 192.2 RoP are fully satisfied. 3. Burden of proof for the applicant pursuant to Article 60 UPCA – reasonably available evidence provided by the applicant 3.1. Rights to valid patents The applicant has demonstrated that it is the current owner of patents EP '436 and EP 159 (see Annexes 13 - 16). As is well known, these patents are presumed to be valid. Furthermore, the appellant has stated that no opposition has been filed with the European Patent Office. Prinoth has not reported the existence of any revocation/invalidity proceedings before the national courts, as required by Rules 13.1(h) and 192.2(a) RoP, nor of any other relevant act known to it relating to the validity of the patent in question that could influence the Court in deciding whether or not to issue an order without hearing the defendant (see rule 192.2 RoP, second sentence). Therefore, the Court has no reason to doubt the validity of the patent in question at this early stage and that the applicant has withheld relevant information in this regard. The Registry's examination also confirmed that no protective letters had been filed by the defendant. 3.2. Alleged infringement Turning now to the patent claims, the following should be noted. EP '436 protects a snow groomer: (1) having a frame (2); (2) an accessory (8) movably connected to the frame (2); (3) a hydraulic unit (15) having an actuator (24) for positioning the accessory (8) and a valve (25) for controlling the actuator (24); (4) a variable displacement pump (14) for supplying the hydraulic unit (15);2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 7 (5) and a control system (21) for calculating the total flow rate requirement of the hydraulic unit (15) and for controlling the variable displacement pump (14) according to the total flow rate requirement, so that the delivery of the variable displacement pump (14) is equal to the total flow rate requirement. The appellant argued that EP '436 allows energy consumption to be reduced because only the desired and necessary flow rate of pressurised oil is calculated and delivered by the pump, in terms of maximum efficiency. EP '159 protects: 1. a snow groomer (1) having a frame (2) and extending along a longitudinal axis (A); 2. ten support wheels (5) connected to the frame (2) by respective axle shafts (6) to form a row of five support wheels (5) on each longitudinal side of the frame (2), each support wheel (5) on a longitudinal side of the frame (2) facing a support wheel (5) on the opposite longitudinal side of the chassis (2), so that pairs of support wheels (5) facing outwards define a first (8), a second (9), a third (10), a fourth (11) and a fifth (12) axle; 3. two tracks (15), each wrapped around the support wheels (5) aligned along a respective longitudinal side of the chassis (2); a motor unit (3) of over 430 hp; and a mass distributed as follows: 16% +/- 2% on the first axle (8); 20% +/- 2% on the second axle (9); 20 +/- 2% on the third axle (10); 22% +/- 2% on the fourth axle (11); and 22% +/- 2% on the fifth axle (12). According to the applicant, EP '159 allows vehicles to be manufactured that are both agile (and therefore capable of climbing steep slopes) and heavy, and therefore powerful: this is achieved through the optimal distribution of weight across the various axles. Prinoth has filed extensive documentation in support of its allegations of infringement, in particular: (i) the user manual for the Snow Cat Xelom (document 25 of the applicant, A1 of the opinion); (ii) page 40 of the Snow Cat Xelom user manual in German (document 26 of the appellant, A1bis of the opinion); (iii) page 40 of the Snow Cat Xelom user manual in Italian (doc. 27 of the appellant, A2ter of the opinion); (iv) the photo relating to the accessory power supply unit (doc. 28 of the applicant, A2.1 of the opinion); (v) the photo of the accessory power supply unit from a different angle (doc. 29 of the appellant, A2.2 of the opinion);2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 8 (vi) the photo of the hydraulic pump visible in figure A2.2 (doc. 30 of the appellant, A2.3 of the opinion); (vii) the valve unit for operating the blade (doc. 31 of the appellant, A2.4 of the opinion); (viii) the pump data sheet in Figure A2.3 (document 32 of the appellant, A3 of the opinion); (ix) the commercial technical data sheet for the Snow Cat Xelom (doc. 33 of the appellant, A4 of the party's opinion); (x) the reproduction of the website https://www.pistentech.com/listings/6560004-xelom- snow-cat (doc. 34 of the appellant, A5 of the opinion); (xi) the reproduction of the website https://www.machinio.it/annunci/99985742-2025-xelom- snow-cat-in-germania (doc. 35 of the applicant, A6 of the opinion); (xii) the commercial brochure for the Snow Cat Xelom (doc. 36 of the applicant, A7 of the opinion); (xiii) the video of the interview broadcast on RaiNews (Annex A8 Opinion of Studio Torta.mp4, doc. 40 of the appellant). The expert witness considered, with regard to EP patent '436 (i) that the independent claims 1 and 9 and the dependent claims 3, 4, 8, 11, 12, 16 and 17 are likely to be infringed; (ii) that there is no clear evidence of literal infringement of claims 2 and 10, but that there is a likelihood of infringement by equivalents; (iii) that with regard to claims 5 and 13, there are only well-founded suspicions of infringement; (iv) that there is no evidence with regard to the other claims 6 and 14; (v) that there is a mere suspicion of infringement for claims 7 and 15 (doc. 24 and related annexes 25-36). As regards EP '195, it concluded that there was suspicion of infringement of claim 1 (doc. 24 and related annexes 25-36, cited above). This was done by means of an analytical comparison between the patent claims and the evidence submitted in the proceedings and described above. Therefore, at this stage and unless different evidence emerges in subsequent stages, the applicant has provided reasonable evidence to support the well-founded suspicion that its patent has been infringed (see Milan Local Division, Primetals v. Danieli, 11 September 2024, order no. 51269/2024). This is taking into account: - that the standard of proof is modulated according to the claim sought, which affects a procedural right (to evidence) and not a substantive right (as in the case of an injunction and compensation for damages);2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 9 - the obligation of the applicant requesting the ex parte measure to present the facts truthfully, without distorting their integrity (Local Division of Paris, 1 March 2024 'In support of its application, particularly in the context of ex parte proceedings, the applicant has the obligation to present the facts fairly, without distorting their integrity', order no. 9825 in Act no. 601/2024 - UPC CFI no. 397/2023); - that, at present, the circumstantial evidence gathered does not appear to be mere assumptions or speculations not based on any evidence (see Local Division of Paris, cited above). Prinoth states that it needs an order to gather further evidence in support of the alleged infringement. In particular, the applicant is unable to ascertain whether: a) whether the Xelom Snow Cat is an infringement of the snow groomer vehicle covered by claim no. 1 (feature M5) of EP '436 due to the unavailability of the circuit diagram (hydraulic and/or electronic) and control of the hydraulic system of which the hydrostatic pump of the disputed vehicle is part; b) whether or not the valve assemblies of the Xelom snow groomer are capable of measuring the flow rate between the valve and the actuator, and therefore whether there is a case of counterfeiting (or only counterfeiting by equivalence) of claim no. 2 of EP '436; c) whether or not the vehicle has a selector for partialising the flow rates; d) the distribution of mass on the five axles of Xelom's Snow Cat follows the same percentages claimed in claim No. 1, feature N5, of EP patent '159. The acquisition of evidence is therefore essential for the owner of the exclusive rights in order to confirm the interference. 4. Requirements under Rules 194.2 and 197 RoP Pursuant to Rules 194.2 and 197 RoP, the Court, in exercising its discretion to decide the application without hearing the defendant (Rule 194.1(d) RoP), must take into account the urgency of the application and the reasons for granting an order without hearing the other party. In accordance with rule 197 RoP, the Court may order measures to preserve evidence without hearing the respondent, in particular where there is a demonstrable risk that the evidence will be destroyed or otherwise no longer be available. This is the case in question, as will be explained shortly. 4.1. Urgency2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 10 The disputed machine was only recently placed on the market, with the first promotions dating back to the end of 2024, first in Ischgl, Austria (doc. 15), and then in the Latemar area in Obereggen, Italy, in South Tyrol (doc. 18). At the beginning of 2025, it appeared in the Lavazè ski area in the province of Trento (docs. 19 and 20) and in the Corno del Renon ski area (doc. 21) and finally in Dobbiaco, in the province of Bolzano (doc. 23). The spread of the vehicle suspected of interference was therefore accompanied by rapid expansion. Prinoth gathered all the evidence at its disposal but was unable to independently obtain further technical documentation, in particular with regard to the hydraulic pump(s), actuators, sensors, etc., i.e. the hydraulic, electrical/electronic circuit system of the entire snow groomer. The applicant identifies the need for urgent action in the defendant's forthcoming participation in a trade fair, which will enable it to make further and very important inroads into the market. In particular, according to the applicant, Xelom intends to present the snow groomer at the Interalpin trade fair, to be held in early May 2025 in Innsbruck, which is the most important international trade fair in the alpine technology sector (Documents 37 and 38 of the applicant). In order to seek an injunction and in the future proceedings on the merits, the applicant needs to complete the evidence at its disposal with regard to the counterfeiting. Moreover, the cost of the vehicle - which Prinoth claims to be between €500,000.00 and €600,000.00 - does not allow the applicant to bear the cost of purchasing it in order to verify the infringement of the individual claims, which is not easy given that the parties to the dispute are direct competitors. 4.2. Reasons for granting an order without hearing the defendant - risk of destruction of evidence The acquisition of data is the main purpose of the applicant and it is generally known that digital data and files are volatile and can be easily hidden or deleted if the defendant is notified in advance of the measure requested. Therefore, there is a real and concrete possibility that the evidence could be easily removed if the defendant were informed or heard before the measure is taken.2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 11 Consequently, taking into account all relevant factors, this order must be granted without hearing the other party, in particular since there is a demonstrable risk that evidence will be destroyed or otherwise cease to be available (Article 60(5) UPCA). 5. Payment of court fees The court fees have been duly paid, therefore the conditions set out in rule 192.5 RoP are met. 6. Balancing of conflicting interests and manner of execution 6.1. Balancing of interests The weighing of the conflicting interests leads the Court to consider granting the measure, taking into account the potential risk of harm to each of the parties in the event of the measure being granted (to the defendant) or refused (to the applicant). Taking into account the principle of proportionality, the threat of definitive destruction of the evidence against Prinoth must be considered to outweigh Xelom's exposure to the application of the measures requested, which, it should be noted, are only procedural in nature, limited to the collection of evidence and not substantive, as they do not affect the subjective position of the defendant or its commercial activity. In this case, the requests for an ex parte order for the inspection of the premises, the preservation of evidence and seizure for evidentiary purposes are, in conclusion, considered justified and must be granted. 6.2 Objective and subjective limitation of the measure The Court considers that the measure should be granted: - limited to technical documentation, excluding accounting documentation, since the application is primarily aimed at verifying and substantiating suspicions of counterfeiting, purely as a preliminary step to a subsequent, further and possible claim for compensation and liquidation of damages, for which the request for the acquisition of accounting documentation is instrumental. Furthermore, the accounting obligations for Italian companies, together with the failure to indicate or attach the risk of destruction, suggests - in accordance with the conflicting interests - that the measure be limited to the investigation of evidence relating to counterfeiting; - with the exception of the request referred to in point 8 of the application for interim relief, which appears to require operations (the use of a bridge crane and a load cell) that are particularly2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 12 invasive and not immediately instrumental to the purpose of the measure requested without prior notice to the other party. - only against Xelom, to be enforced at its registered office or local offices and not at the premises owned or used by the third party Interalpin s.p.a., parent company and controller of Xelom, a party to whom the applicant has decided not to extend the proceedings, even though it has already been identified in the application as an operator involved at least in marketing and which, according to the applicant's submission, would suffer the effects of the measure without, however, enjoying the guarantees of the right of defence granted to the defendant; - with the exclusion of the software referred to in point (V) of point 3(a) of the applications for interim measures (pages 33), which is not immediately protected by the patents at issue; 6.3. Method of execution Pursuant to Rule 196.4 RoP, the measures authorised must be enforced in accordance with the national law of the place where the measures are enforced, i.e. Italian law, by an expert appointed by the Court and specifically mentioned in the operative part. This expert is included in the list of patent experts who regularly work with national courts, so that the choice guarantees competence, independence and impartiality, as required by rule 196.5 RoP. The expert will be supported by an assistant of his choice, in particular two experts in computer forensics, in order to proceed simultaneously at the two locations of the defendant, as already provided for by this Office in similar cases (see Milan Local Division, order no. 51269/2024 of 11 September 2024, Act. no. 36483/2024 - UPC CFI No. 337/2024). The search for and copying of documents in digital format on media, devices and storage devices used by the defendant shall be carried out on the basis of the list of keywords indicated by the claimant in the supplementary statement filed on 10 March 2025. This excludes the keywords referred to in points 9, 12, 16, 17, 18 and 19 on page 3 of the aforementioned supplementary note (namely: 'Software Use Case Definition', 'software logic', 'software interface', 'source code', 'code', 'software', 'manual', 'guide', 'control', and related terms in English and German) which are excessively generic or refer to software that is not the immediate subject of the measure. This limitation is necessary to protect the defendant's position, which must be restricted to the minimum extent possible and only to the extent necessary, avoiding exploratory investigations, in comparison with the applicant's need to obtain evidence.2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 13 This method of data selection aims to ensure the highest probability of actual relevance and correlation between the documents retrieved and the alleged infringement. The assistants will operate under the direct control and responsibility of the expert and are subject to the same professional obligations of confidentiality in relation to all information to which they have access in the performance of their duties. The appointed expert shall proceed with the assistance of the competent judicial officer or judicial officers. Only representatives of the applicant, up to a maximum of two per location to be inspected, may be present during the execution of these measures. Their names are indicated in the operative part of this order. No other representative or employee of the applicant is therefore authorised to be present during the execution of these measures. The expert appointed by the Court shall submit a written report, together with a complete copy of all documents and data obtained as a result of the execution of the measures, immediately and no later than two days after the completion of the execution of the measures. 6.4. Confidentiality As already stated by this Court (order no. 51269/2024 of 11 September 2024, Act. no. 36483/2024 - UPC CFI No. 337/2024), fully incorporating the principles established by the Court of Appeal in its decision of 23 July 2024 (Apl. No. 20002/2024 - UPC CoA No. 177/2024): “An application for the preservation of evidence or inspection of premises within the meaning of Article 60 UPCA and rules 192 et seq. RoP implies a request to disclose to the applicant the outcome of the measures, including the report written by the person who carried out the measures. This follows from the fact that the legitimate purpose of the measures is the use of the evidence in proceedings on the merits of the case (rules 196.2 and 199.2 RoP), which includes the use of the evidence to decide whether to initiate proceedings on the merits and to determine whether and to what extent the evidence will be submitted in these proceedings. Disclosure of the evidence to the applicant or to certain persons acting on behalf of the applicant is indispensable for that purpose. Moreover, rules 196.1 and 199.1 RoP provide that the Court may decide in its order that the evidence shall be disclosed to certain named persons and shall be subject to appropriate terms of non-disclosure. This confirms that the procedure initiated by an application under Article 60 UPCA aims not merely at the preservation of evidence and the inspection of premises as such, but also at the disclosure of the evidence to the applicant.2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 14 However, granting an application for preservation of evidence or inspection of premises does not imply an unconditional order to disclose the evidence to the applicant. Pursuant to Article 60(1) UPCA, the order must be subject to the protection of confidential information (see also Article 7(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights). Where the evidence may contain confidential information, this entails that the Court must hear the other party before deciding whether and to what extent to disclose the evidence to the applicant. In this context, the Court must give the other party access to the evidence and must provide that party with the opportunity to request the Court to keep certain information confidential and to provide reasons for such confidentiality. If the other party makes such a confidentiality request, the Court must provide the applicant with the opportunity to respond in a manner that respects the potential confidentiality interests of the other party. The Court may do this, for example, by granting access only to the representatives of the applicant whom the Court, pursuant to rule 196.3(a) RoP, has authorised to be present during the execution of the measures and subject to appropriate terms of non-disclosure. The opportunity for the other party to make a confidentiality request must be distinguished from the remedies available against the order for the preservation of evidence or the inspection of premises, such as the review of an order for preservation of evidence without hearing the defendant pursuant to rule 197.3 RoP. Therefore, the Court must hear the other party on the request for disclosure even if this party has decided not to file a remedy against the order to preserve evidence or inspect premises. For the same reasons, failure to apply for a review of an order for the preservation of evidence or for the inspection of premises cannot be considered as tacit approval of the disclosure of evidence. 4. Pursuant to Article 60(8) UPCA, the Court shall ensure that measures to preserve evidence or to inspect premises are revoked or otherwise cease to have effect, at the defendant's request, if the applicant does not bring, within a period not exceeding 31 calendar days or 20 working days, whichever is longer, action leading to a decision on the merits of the case before the Court (see also Article 7(3) of Directive 2004/48/EC and Article 50(6) of the Agreement on Trade-Related Aspects of Intellectual Property Rights). Rules 198.1 and 199.2 RoP specify that the time period runs from the date specified in the Court’s order, taking into account the date when the report referred to in rule 196.4 RoP is to be presented. These rules must be interpreted in the light of the purpose of the measures for the preservation of evidence or inspection of premises, which is to use the outcome of these measures in the proceedings on the merits of the case (rules 196.2 and 199.2 RoP). In view of this, the Court must, as a general principle, specify in its order a time period that starts2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 15 to run from the date of disclosure of the evidence to the applicant or from the date on which the Court has made a final decision not to grant the applicant access to the evidence” (Local Division of Milan, 11 September 2024, Act. No. 36483/2024 - UPC CFI No. 337/2024, order No. 51269/2024). Considering that the application pursuant to Article 60 UPCA and Rule 192 RoP implies a request for disclosure of the outcome of the measures to the applicant, the latter is not required to submit further requests. The report and its annexes will be filed by the expert with the Registry of the Local Division of Milan and the applicant will have full access to them from 7 May 2025, unless the respondent avails itself of the possibility of requesting confidentiality, regardless of whether other remedies, such as review or appeal, are actually sought. The applicant shall have access by collecting a copy (previously made available by the expert, as already provided for in this order) at the Registry, under the supervision of the judge rapporteur and with the assistance of a registrar. The activities shall be recorded in a specific report which shall then be uploaded to the CMS. If, by 7 May 2025, the defendant has actually submitted a request for protection of confidential information, the Court will determine, by specific order, after consulting the parties, whether, to whom and to what information access will be granted. The request for review and appeal may be submitted independently (see paragraphs 6.7 and 6.8 below) and the outcome of these remedies must be respected. Pursuant to Article 60.8 of the UPCA and Rule 198 of the RoP, measures for the preservation of evidence, inspection of premises and seizure shall be revoked or otherwise cease to have effect, upon request of the respondent, if the applicant does not bring an action on the merits before the Court within a period not exceeding 31 calendar days or 20 working days, whichever is longer, starting from the date of disclosure of the evidence to the claimant or the date on which the Court made its final decision not to grant the claimant access to the evidence. 6.5. Restrictions on the use of the written report The written report and any other results of the measures of inspection of premises, preservation of evidence and seizure may only be used in the proceedings on the merits of the case, in accordance with Rules 196.2 and 199 RoP. 6.6. Notification2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 16 Taking into account the need to ensure the surprise effect, the notice of appeal together with this order shall be served by the appellant at the respondent's place of business immediately upon the execution of this order, in accordance with Rule 197.2 RoP, in accordance with domestic law. 6.7. Security Pursuant to Rules 196.3 and 196.6 RoP, the Court orders Prinoth to provide adequate security – also as a condition for the enforceability of this order – for the legal costs and for any compensation for any damage suffered or that may be suffered by the respondent, by depositing the amount of 75,000.00 Euro. This amount is quantified taking into account: - both the previous orders of the same nature adopted by the Court with particular regard to the guarantee on costs (see Local Division of Milan, Primetals v. Danieli, 11 September 2024, No. 51269/2024); - the value of the vehicle seized, which the applicant has estimated at between €500,000 and €600,000, and the amount of the possible profits not made by the defendant due to its temporary unavailability and consequent failure to market it. This order shall only become effective after the security has been provided by the applicant. 6.8. Review The respondent may request a review of this order pursuant to Article 60.6 UPCA and Rule 197.3 RoP. 6.9. Appeal The parties may appeal within fifteen days of notification of this order pursuant to Article 73.2(a) UPCA and Rule 220.1 RoP. FOR ALL THESE REASONS THE UNIFIED PATENT COURT - COURT OF FIRST INSTANCE - LOCAL DIVISION OF MILAN 1. orders that the Applicant be allowed to:2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 17 (i) simultaneously inspect the premises of Xelom s.r.l. in Bolzano, via Nicolò Copernico no. 6 and via Piero Agostini no. 2, as well as other branch offices, warehouses and local units used by the defendant for the purpose of (ii) obtain, collect and retain all technical and promotional documentation relating to the electric snow groomer (known as Snow Cat) that is the subject of the application for interim measures, with specific regard to the documentation referred to in: - in point 3(A)(i) to (iv) and (vi) and (xii) (pages 35 and 36 of the appeal), with the exception of point (v) on page 35 of the appeal1 ; - in point 3, letter C (page 36 of the appeal) in relation to the alleged infringement of patents EP '436 and EP '159, with particular regard to the characteristics indicated in points a), b), c) and d) of section 3.2. set out in the narrative. This is subject to verification and access to all digital media and data storage devices, on any type of device, available to and in use by the defendant, including external storage units/systems and cloud storage used by anyone. In order to select and collect the documents in digital format,2 the keywords indicated by the applicant in the authorised note pursuant to Rule 9 RoP filed on 10 March 2025 by the applicant shall be used, with the exception of the keywords referred to in points 9, 12, 16, 17, 18 and 19 on page 3 of the same authorised note; In carrying out the description, photographic and video reproductions of this machine and/or its components may be made in order to establish whether the machine is implementing the teachings as stated in EP '436 and EP '159; (iii) to seize a single example of the electric snow groomer (known as a Snow Cat) as a sample, as well as a sample of its components, to be kept on site if necessary by appointing a custodian in accordance with the provisions of Italian law on the enforcement of judicial measures (and, in particular, in accordance with the rule set out in Article 521bis of the Italian Code of Civil Procedure, identifying the custodian as an employee of the defendant, the defendant's authorised representative, or the court-appointed administrator, as specified by the defendant in its response to the application for interim relief, and indicating the name of the custodian to the bailiff at the time of seizure. 1 The measure is therefore not authorised with respect to 'all software (both executable codes and source codes) installed on the snow groomer, including (but not limited to) those installed in all control units of the snow groomer (including, but not limited to, vehicle control units (VCU) and electrical system control units (ESCU)) and the related input/output list (also known as the I/O list) of all control units'. 2 The use of the following keywords is therefore not authorised: "Software Use Case Definition", "software logic", "software interface", "source code", "code", "software", "manual", "guide", "control" and their translations into German and English.2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 18 of the execution of the measure, whose name and relevant qualification shall be included in the Court Expert's report); 2. orders Xelom s.r.l. to allow the persons appointed to carry out this order (i) to access the aforementioned premises, inspect them as previously established and preserve the evidence; (ii) to take photographs or film for documentary purposes relevant to the preservation of the evidence ordered and for the inspection ordered; (iii) to have full access to all documents, in any format, relating solely and strictly to the electric snow groomer (known as 'Snow Cat') with the characteristics stated in EP '436 and EP '159, for the purposes of the inspection, preservation of evidence and seizure ordered, including access to any Snow Cat) with the characteristics declared in EP '436 and EP '159, for the purposes of inspection, preservation of evidence a n d seizure, including access to any device or storage unit/system in use; 3. orders that, in the event that the defendant does not voluntarily comply with these instructions, the persons responsible for enforcing the order are authorised, in accordance with Italian law on the enforcement of court orders, to request the assistance of a locksmith, to force access to the computer systems and, in any case, to request the assistance of the police if deemed necessary; 4. orders that this measure be enforced by the competent local bailiff (or, if necessary, by the competent local bailiffs) by engineer Antonio di Bernardo, with office at the Court of Appeal of Naples ( cell. - appointed as Court Expert - assisted by an assistant and two experts in forensic IT, so as to proceed simultaneously at the above-mentioned locations; 5. orders that, as representatives of the applicant, only lawyers Stefano Grassani and Renato Bocca and lawyer Camilla Scalvini are authorised to be present during the execution of this order, excluding any other representative or employee of the applicant; the authorised representatives shall keep confidential all information that comes to their knowledge during the execution of this order; 6. orders the Court Expert appointed to submit to the Sub-Registry of the Local Division of Milan of the Unified Patent Court a written report on the results of the inspection of the premises and on the measures taken to preserve the evidence and on the seizure relating to the alleged infringement of patents EP '436 and EP '159, attaching all the documents collected, once the requested activities have been completed and, in any case, no later than two days after the conclusion of all operations; three copies of the aforementioned report and documents shall be made available, one for the Court and one for each of the parties;2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 19 7. orders that the written report and any other results of the measures for the preservation of evidence and the inspection of the premises may only be used in the proceedings on the merits of the case; 8. acknowledges that the measures for the preservation of evidence, for the inspection of premises and for seizure shall be revoked or otherwise cease to have effect, at the request of the defendant, if the applicant does not bring the relevant proceedings before the court within a period not exceeding 31 calendar days or 20 working days, whichever is longer, starting from the date of disclosure of the evidence to the applicant or from the date on which the Court has adopted its final decision not to grant the applicant access to the evidence; 9. orders that access to the expert's written report and its annexes be granted to the applicant from 7 May 2025, at the offices of the Sub Registry of the Local Division of Milan, under the supervision of the reporting judge, with the assistance of a court clerk, unless the respondent exercises its right to file a request for protection of confidential information by 7 May 2025; in the event that such a request for confidentiality is actually submitted, the Court shall decide whether and which persons shall have access and to what information; 10. orders that this order, together with a copy of the application and related annexes, as well as the notification report and the instructions for access to the proceedings by the CMS, be served by the applicant at the defendant's registered office immediately upon execution of this order, in accordance with Italian law on the service of judicial documents; 11. orders that this order shall be enforceable upon payment by the applicant of a security deposit of €75,000.00; 12. defer the decision on costs to the subsequent proceedings on the merits; 13. acknowledges that the respondent may request a review of this order within thirty days of the execution of the measures, pursuant to Rule 197.3 RoP; 14. acknowledges that the parties may appeal within fifteen days of notification of this order pursuant to Article 73.2(a) of the UPCA and Rules 220.1(c) and 224.2(b) of the RoP. Milan, 18 March 2025. Pierluigi Perrotti Presiding Judge Digitally signed by Pierluigi Perrotti Date: 2025.03.18 09:34:48 +01'00' Alima Zana legally qualified judge and judge rapporteur Digitally signed by Alima ZANA Date: 18 March 2025 09:38:29 Pierluigi Perrotti Alima ZANA2025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com 20 Marije KNIJFF legally qualified judge For the Deputy Registrar Marije Knijff Maddalena Ferretti Digitally signed by Marije Knijff Date: 18 March 2025 08:35:01 ORDER DETAILS Order no. ORD 11002/2025 UPC number: UPC CFI 127/2025 Action type: Not provided MINISTRY OF JUSTICE 18.03.2025 08:56:52 UTC Related proceeding no. Application No.: 7838/2025 Application Type: Application for preserving evidence pursuant to RoP1922025-03-18 LD Milan UPC CFI 127-2023 ACT 7838-2025 ORD 11002-2025 en-GB.pdfDeepL machine translation provided by www.veron.com

Key Holdings

  • The Unified Patent Court, specifically the Milan Local Division, has jurisdiction over the claim under Articles 32.1(c) and 60.1 UPCA, as the patents are opted-in and the defendant is based in Italy.
  • The applicant provided reasonable evidence to support a well-founded suspicion of infringement of EP '436 and EP '159, justifying the need for further evidence collection.
  • The order is granted ex parte due to demonstrable urgency (recent market entry, upcoming trade fair) and a concrete risk of evidence destruction or removal if the defendant were notified in advance.
  • The scope of the measures is limited to technical documentation (excluding accounting), specific keywords for digital searches, and only against the defendant (Xelom), excluding highly invasive operations and general software.
  • The outcome of the measures (expert report) will be disclosed to the applicant, but the defendant retains the right to request confidentiality protection for specific information, and a security deposit of €75,000 is required from the applicant.

Tags

  • Confidentiality
  • Ex Parte Order
  • Infringement
  • Inspection
  • Interim Measures
  • Preservation of Evidence
  • Security for Costs
  • Seizure
  • UPC
  • Unified Patent Court

Related Rules

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