UPC_CFI_1752/2026 – Reinhausen v Huaming Power Equipment

Expert Commentary

Evidentiary seizure and inspection Facts 1. Reinhausen is the owner of EP 3 427 284 for an ‘on-load-tap-changer’. 2. From 19 to 21 May 2026 an exhibition took place in Berlin. 3. On 20 May 2026 the Local Division Munich granted an evidentiary seizure and inspection order. The order, among other things, allowed for the dismantling of the allegedly infringing product on display and the seizure of components. If this was not possible, the complete product could be seized. 4. On 19 June 2026, the defendant filed a request for (partial) revocation. The Court The Court acknowledges that the original order did not sufficiently guarantee that those involved in the seizure would keep the information they obtained secret, and corrected the order. Comment In this case, the seizure related to a technical product displayed behind plexiglass, which made it impossible for the public to see the product’s internal components. Of course, it is generally wise to ensure that the results of a seizure are kept secret until the expert’s report is released by the Court and tailor-made confidentiality orders have been issued. However, if one knows the procedure for an evidentiary seizure and inspection, it seems quite clear that the professionals involved in the seizure are bound by an implied duty of confidence. Nevertheless, it is indeed better to be safe than sorry, as there may be a patent attorney who wishes to disclose information to their client! I would have also liked the Court to refer to such an implied duty of confidentiality, as I have difficulty with a duty of confidentiality that works retroactively, as appears to be the case here. How can information which was not confidential become confidential certainly in a situation in which it has been disclosed in the meantime.

Full Decision Text

Munich Local Division Order 27 July 2026 Patent: EP 3 427 284 B1 **CLAIMANT** Reinhausen GmbH, represented by the managing directors Dr. Nicolas Maier-Scheubeck, Wilfried Breuer and Holger Michalka, Falkensteinstr. 8, 93059 Regensburg, Deutschland, represented by: Tobias Schneider (SVZ536), Dr. Detlef Mäder (SSN474), Luther Rechtsanwaltsgesellschaft mbH, Anna-Schneider-Steig 22, 50678 Köln, Deutschland, Dr. Marius Fischer, BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte, Prinzregentenplatz 7, 81675 München. **DEFENDANTS** Shanghai Huaming Power Equipment Co., Ltd., No. 977 Tongpu Road, Putuo District, Shanghai, 200333, Volksrepublik China, represented by: Dr. Michael Rüberg, Dr. Adrian Steffens, Boehmert & Boehmert Anwaltsgesellschaft mbB, Pettenkoferstraße 22, 80336 München. **PATENT IN SUIT** Europäisches Patent Nr. EP 3 427 284 B1 **PANEL/CHAMBER** Panel 2 of the Munich Local Division **JUDGES PARTICIPATING** This Order was issued by the Presiding Judge Dr. Daniel Voß (Rapporteur), the legally qualified Judge Dr. Georg Werner and the legally qualified Judge Thomas Adocker. **ORAL HEARING** 20 July 2026 **LANGUAGE OF PROCEEDINGS** Deutsch **SUBJECT MATTER** Antrag auf Inspektion und Beweissicherung, Art. 60 EPGÜ, Regel 192, 199 VerfO **FACTS** 1. The Antragstellerin (Claimant) is the sole proprietor of European Patent 3 427 284 B1 with unitary effect (Annex ASt 5a; hereinafter referred to as the application patent), which was filed on 8 March 2017, claiming the priority of a German patent application (DE 102016104500) of 11 March 2016, in German as the language of proceedings. The publication of the grant of the application patent took place on 2 August 2023. On 16 August 2023, the unitary effect for the application patent was entered in the register. No opposition was filed against the application patent. It is currently in force. 2. The application patent relates to a tap changer. Claim 1, on which the Antragstellerin (Claimant) bases its request, reads as follows: „Laststufenschalter (1) nach dem Widerstandsprinzip, umfassend - einen Wähler (20), - eine Lastumschaltergrundplatte (41); - einen Lastumschalter (40), der an der Lastumschaltergrundplatte (41) montiert ist und einen Überschaltwiderstand (53) umfasst, gekennzeichnet durch: - eine Wählergrundplatte (21), wobei der Wähler (20) an der Wählergrundplatte (21) montiert ist; und - eine gemeinsame Antriebswelle (10), die den Wähler (20) und den Lastumschalter (40) betätigt.“ 3. The parties are active in the field of electronic and electrotechnical devices. The Antragsgegnerin (Defendant), based in the People's Republic of China, had an exhibition stand at the "CWIEME" (Coil Winding, Insulation and Electrical Manufacturing Exhibition) trade fair, a specialist fair for coil winding, insulation and electrical manufacturing, which took place in Berlin from 19 to 21 May 2026. Among other things, it exhibited a tap changer there, which the Antragsgegnerin (Defendant) refers to as "DET-24kV". 4. On 19 May 2026, the Antragstellerin (Claimant) applied for an inspection and preservation of evidence at the Antragsgegnerin's (Defendant's) exhibition stand in preparation for a potential main action. 5. On 20 May 2026, the Panel issued the following order (hereinafter: "the Order"): The following inspection and preservation of evidence order is issued without prior hearing of the Antragsgegnerin (Defendant): 1. The Antragstellerin (Claimant) is permitted to have a tap changer, which is located on site at the "CWIEME" trade fair, taking place from 19 May 2026 to 21 May in Berlin (Messe Berlin, Südeingang, Messedamm 22, 14055 Berlin, Germany), at the Antragsgegnerin's (Defendant's) exhibition stand (presumably stand 27E40) and presents itself as follows: through an expert, an assistant and a bailiff to inspect and in particular a) to dismantle the tap changer into its functional individual parts, b) without prejudice to point 1. a) to remove the load changer base plate and to identify the components mounted thereon and their interaction, for example by means of electrical measurements, c) to examine the load changer base plate for electrical resistors mounted thereon, in particular diverter resistors, and to measure them electrically, d) to photograph and/or film the tap changer and, if applicable, the parts dismantled and/or measured according to point 1. a), b) and/or c), including the associated process of dismantling and/or measurement, e) to take photographs of all technical, advertising and commercial equipment, documents and materials relating to the tap changer and located at the Antragsgegnerin's (Defendant's) exhibition stand (e.g. brochures, catalogues, advertising boards, displays, screens, partition walls) including photographs of the Antragsgegnerin's (Defendant's) stand as a whole. 2. The bailiff shall confiscate one copy each of the movable technical, advertising and commercial documents and materials (e.g. brochures or catalogues) relating to a tap changer as depicted in point 1 of this operative part and which are located at the "CWIEME" trade fair, taking place from 19 May 2026 to 21 May in Berlin (Messe Berlin, Südeingang, Messedamm 22, 14055 Berlin, Germany), at the Antragsgegnerin's (Defendant's) exhibition stand (presumably stand 27E40), whereby these shall be stored by the expert named under point 5. Advertising boards, displays and other components of the exhibition stand are excluded from confiscation. 3. If an on-site inspection according to point 1 should not be possible, the bailiff shall physically confiscate a tap changer as depicted in point 1 of this operative part during the "CWIEME" trade fair, taking place from 19 May 2026 to 21 May in Berlin (Messe Berlin, Südeingang, Messedamm 22, 14055 Berlin, Germany), at the Antragsgegnerin's (Defendant's) exhibition stand (presumably stand 27E40) and then have it inspected at another location by an expert and an assistant as provided for in point 1. 4. The expert according to point 5 is instructed to prepare a detailed description of the aforementioned tap changer within six weeks after the completion of the measures mentioned under points 1, 2 and, if applicable, point 3, and to submit it to the Local Division, whereby it shall contain a detailed description of the features that allow an assessment of whether the tap changer infringes the application patent. 5. As the person carrying out the aforementioned measures, the following expert is appointed: Dr. Gunnar Baumgärtel Patentanwalt, European Patent and Trademark Attorney Kanzlei Maikowski & Ninnemann Patentanwälte Partnerschaft mbB Kurfürstendamm 54-55 10707 Berlin Should he not be available, he can be replaced by a European Patent Attorney working in the same firm. 6. As an assistant to support the expert according to point 5, the following is appointed: Dr. Piet Schönherr Patentanwalt, European Patent and Trademark Attorney Kanzlei Maikowski & Ninnemann Patentanwälte Partnerschaft mbB Kurfürstendamm 54-55 10707 Berlin Should he not be available, he can be replaced by a European Patent Attorney working in the same firm. The assistant according to this point shall carry out the measures under the guidance of the expert, who is named and responsible for the execution of this Order according to point 5, in the sense of assistance on his behalf. 7. Furthermore, the locally competent bailiff is appointed as an additional assistant, in the event of enforcement on 20 May 2026, Mr. OGV Austen, in the event of enforcement on 21 May 2026, Mr. OGV Schnitzer. In the event that he is prevented from carrying out the inspection and/or the preservation of evidence, he can be replaced by a locally competent bailiff to be commissioned by the Antragstellerin (Claimant). 8. The following representatives of the Antragstellerin (Claimant) are permitted to be present during the execution of the measures, in addition to the expert, the assistant and the bailiff: a) Lawyer Dr. Detlef Mäder, Luther Rechtsanwaltsgesellschaft mbH, Anna-Schneider-Steig 22, 50678 Köln, as legal representative and authorized representative of the Antragstellerin (Claimant) b) Lawyer Tobias Schneider, Luther Rechtsanwaltsgesellschaft mbH, Anna-Schneider-Steig 22, 50678 Köln, as legal representative, authorized representative and recipient for service of the Antragstellerin (Claimant) c) Patent attorney Dr. Marius Fischer, BARDEHLE PAGENBERG Partnerschaft mbB Patentanwälte Rechtsanwälte, Prinzregentenplatz 7, 81675 München, as patent attorney participating in this matter. 9. During the execution of the inspection and preservation of evidence measures against the Antragsgegnerin (Defendant), no organs, employees or other staff of the Antragstellerin (Claimant), with the exception of the legal representatives mentioned under 8., may be present and/or participate. 10. The expert, the assistants and the bailiff are instructed to maintain secrecy towards both the Antragstellerin (Claimant) and third parties – subject to the release of the report according to point 4 by the court and subject to the release by the Antragsgegnerin (Defendant) itself – about any trade secrets of the Antragsgegnerin (Defendant) that might become apparent during the inspection and/or preservation of evidence. 11. The Antragsgegnerin (Defendant) is instructed to cooperate in the execution of the inspection and preservation of evidence measures according to this Order and, at the request of the expert, the assistant and the bailiff, a) to allow them as well as the persons authorized to be present according to the Order, to enter all exhibition stands of the Antragsgegnerin (Defendant) at the "CWIEME" trade fair, taking place from 19 May 2026 to 21 May 2026 in Berlin (Messe Berlin, Südeingang, Messedamm 22, 14055 Berlin, Germany), in particular exhibition stand 27E40, in order to carry out the inspection and the preservation of evidence, b) to grant unrestricted and unhindered access at the aforementioned trade fair to the tap changer depicted in Annex ASt 0, at the Antragsgegnerin's (Defendant's) stands (in particular stand 27E40), c) to grant access at the aforementioned trade fair to all technical, advertising and commercial documents and materials relating to the tap changer depicted in Annex ASt 0 and located at the Antragsgegnerin's (Defendant's) exhibition stands (in particular stand 27E40) (e.g. brochures, catalogues, advertising boards, displays, screens). 12. The representatives of the Antragstellerin (Claimant) named under point 8. shall receive access to the description immediately after its completion and submission to the court according to point 4, i.e. before the court's decision on the release of the description, whereby the information contained therein may not be disclosed to the Antragstellerin (Claimant) subject to the release by the court and/or by the Antragsgegnerin (Defendant) and/or further decisions of the court. 13. It is determined that the description according to point 4 will be fully disclosed to the Antragstellerin (Claimant) if the Antragsgegnerin (Defendant) does not comment on its possible secrecy interests within four weeks or within another period to be determined by the court at its reasonable discretion from the day on which the description according to point 4 was submitted to the registry at the Local Division, and does not file an application for secrecy within this period. The Antragsgegnerin (Defendant) remains free to instruct a representative admitted to the Unified Patent Court to represent its interests. 14. In any case, the use of the description (point 4) is restricted to a main action of the Antragstellerin (Claimant) against the Antragsgegnerin (Defendant). 15. The Antragstellerin (Claimant) bears the costs of the order for inspection and preservation of evidence and the preparation of the description, including the costs of the expert, the assistants and the bailiff, whereby the reimbursement by the Antragsgegnerin (Defendant) remains reserved for a possible cost assessment procedure in the main action. The Antragstellerin (Claimant) is instructed to pay an advance on costs totalling EUR 25,000.00 to the expert and, if applicable, the assistants, unless they waive the advance before the inspection and preservation of evidence. 16. The order for inspection and preservation of evidence is immediately enforceable without security. 17. In the event of culpable contravention of this Order, the court may impose a penalty payment on each party for each infringement, the amount of which the court may determine taking into account the circumstances of the individual case. 18. The inspection and preservation of evidence measures shall be revoked at the request of the Antragsgegnerin (Defendant) if the Antragstellerin (Claimant) has not brought a main action against the Antragsgegnerin (Defendant) within a period of 31 calendar days or 20 working days, whichever period is longer, after the description according to point 4 of the Antragstellerin's (Claimant's) application has been disclosed or the court has finally decided not to grant the Antragstellerin (Claimant) access to the description. 19. This Order shall be served by the bailiff in cooperation with one of the representatives of the Antragstellerin (Claimant) named under point 8. a) or b) immediately at the time of enforcement, together with a copy of the application for this Order, including annexes, and the notice on provisional measures and instructions for access to the proceedings (generated via the court's CMS). 20. In all other respects, the Antragstellerin's (Claimant's) application is rejected. 6. The preservation of evidence and inspection order was served on the Antragsgegnerin (Defendant) on 20 May 2026 at the trade fair. In addition, the tap changer, which was subject to the preservation of evidence and inspection and was exhibited at the trade fair, was confiscated. 7. By letter received on 19 June 2026, the Antragstellerin (Claimant) sought to amend the Order of 20 May 2026. **REQUESTS OF THE PARTIES** 8. The Antragsgegnerin (Defendant) originally applied for: I. Point 10. of the Order is amended as marked in red below: The expert, the assistants, the representatives of the Antragstellerin (Claimant) named under point 8. and the bailiff are instructed to maintain secrecy towards both the Antragstellerin (Claimant) and its employees as well as towards third parties – subject to the release of the report according to point 4 by the court and subject to the release by the Antragsgegnerin (Defendant) itself – about any trade secrets of the Antragsgegnerin (Defendant) that might become apparent during the inspection and/or preservation of evidence. II. Point 12. of the Order is amended as marked in red below: The representatives of the Antragstellerin (Claimant) named under point 8. shall receive access to the description immediately after its completion and submission to the court according to point 4, i.e. before the court's decision on the release of the description, whereby the information contained therein may not be disclosed to the Antragstellerin (Claimant), its employees and third parties subject to the release by the court and/or by the Antragsgegnerin (Defendant) and/or further decisions of the court. III. The Order is supplemented as follows: The expert is instructed to transport the item referred to in point 1 to the court of the main action at the expense of the Antragstellerin (Claimant) after completion of the expert opinion and in the event that a main action is brought. The expert is instructed to send the item referred to in point 1 to the Antragsgegnerin (Defendant) at the expense of the Antragstellerin (Claimant) after completion of the expert opinion and in the event that no main action is brought. The expert is instructed to send the documents referred to in point 2 to the Antragsgegnerin (Defendant) at the expense of the Antragstellerin (Claimant) after completion of the expert opinion, provided that he has made copies thereof. IV. The oral hearing shall be conducted by video conference. V. In the event that no main action is brought, the Antragstellerin (Claimant) shall bear the costs of the proceedings. In the event that a main action is brought, the cost decision for the main action remains reserved. 9. In the oral hearing, the Antragsgegnerin (Defendant) declared that application III. would be withdrawn if the Antragstellerin (Claimant) bindingly declared that no communication had taken place between the Antragstellerin (Claimant) and its representatives on the one hand and the expert on the other hand since the inspection date, and if the Order of 20 May 2026 were supplemented to the effect that the Antragstellerin (Claimant), its representatives and all other persons acting on the side of the Antragstellerin (Claimant) are obliged not to communicate with the expert about the item to be examined or the expert opinion to be prepared, and that the expert may not carry out any subsequent examinations of the product, but that the product remains in its current condition, unless the court appoints the expert as an expert in a possible main action and orders specific subsequent examinations. 10. The Antragstellerin (Claimant) agreed to this in the oral hearing and had previously declared that it had not spoken to the expert or made any enquiries until the oral hearing; it was not in contact with the expert. 11. The Antragsgegnerin (Defendant) therefore maintains applications I., II. and V. 12. Consequently, the Antragstellerin (Claimant) requests: to reject applications I. and II. of the Antragsgegnerin (Defendant) of 19 June 2026 and to confirm the order for inspection and preservation of evidence of 20 May 2026 in full. **ISSUES BETWEEN THE PARTIES** 13. The Antragsgegnerin (Defendant) considers the execution of the preservation of evidence and inspection to be unjustified in principle, as in its view there is no infringement, but does not challenge the court order as such, but only with regard to some aspects of the execution of the preservation of evidence and inspection. 14. The Antragsgegnerin (Defendant) is of the opinion that the Antragstellerin's (Claimant's) representatives and their employees are currently not subject to a court-ordered duty of confidentiality regarding information that came to their knowledge in the course of the inspection and preservation of evidence. There is an acute protection gap. It corresponds to the practice of the first instance of the Unified Patent Court that the applicant is subject to confidentiality obligations, which are an integral part of the confidentiality regime. A special explanation of secrecy interests is not required because the Order of 20 May 2026 should already have been issued with corresponding confidentiality measures, regardless of whether secrecy interests actually exist. The Order must be amended solely for legal reasons. If the Antragsgegnerin (Defendant) were obliged, in the case of a failed confidentiality order, to explain its secrecy interests ex parte, this would reduce the protection of the defendant. Irrespective of this, secrecy interests exist because the tap changer was partially dismantled at the trade fair and the internal workings, which are otherwise not publicly viewable, became visible. 15. The Antragstellerin (Claimant) is of the opinion that the Antragsgegnerin's (Defendant's) submissions regarding confidentiality orders towards the Antragstellerin's (Claimant's) representatives are unsubstantiated, as they merely refer to other proceedings without addressing the Antragsgegnerin's (Defendant's) secrecy interests. Furthermore, the requested confidentiality measures of the Antragsgegnerin (Defendant) are not necessary, as they already result from general procedural principles and the Order of 20 May 2026. There is already a lack of legal interest. In any case, the applications are unfounded. **GROUNDS FOR THE ORDER** 16. The application for review of the Order of 20 May 2026 according to Rule 197.3 RoP is, insofar as it is still pending, admissible, but is only partially successful on the merits. A 17. The application for review of the Order is admissible. 18. According to Rule 197.3 RoP, the application for review of the order for preservation of evidence must be filed within 30 days after the execution of the measure. The service of the Order and the inspection took place on 20 May 2026. The Antragsgegnerin (Defendant) filed the review application with the court on 19 June 2026 and thus within the deadline. 19. The Antragsgegnerin (Defendant) does not lack the necessary legal interest regarding its applications for the supplementation of confidentiality measures (applications I. and II.). It cannot be inferred from the Order without further interpretation and examination of the Order that it already guarantees the confidentiality protection sought by the Antragsgegnerin (Defendant). In this respect, a legal interest of the Antragsgegnerin (Defendant) cannot be denied. Whether it actually has a right to the requested supplementation is a question of the merits. 20. The admissibility of the review application also does not fail because it relates to the supplementation of the Order with regard to individual confidentiality measures and not to the prerequisites for a preservation of evidence and inspection order as such. This is because the confidentiality measures are regulated in points 10, 12 to 14 of the Order and generally belong to the subject matter of a preservation of evidence and inspection order. Accordingly, the Rules of Procedure also generally deal with these subjects, cf. Rule 196.1 S. 2 RoP as well as Rule 197.3 S. 3 RoP. This justifies making them the subject of a review application, or at least discussing the applications within the framework of a review procedure according to Rule 197.3 RoP. B 21. The Antragsgegnerin's (Defendant's) review application is, insofar as it is still pending, successful on the merits. I. 22. Applications I. and II. concerning confidentiality measures are well-founded. 23. Applications I. and II. are not unsuccessful simply because the Order already contains confidentiality measures corresponding to the applications. This is in fact not the case. 24. Point 10 of the Order stipulates for the persons named therein the obligation to maintain any trade secrets that might become apparent during the inspection and/or preservation of evidence. The persons named in point 10 of the Order do not include the Antragstellerin's (Claimant's) representatives. The regulation cannot be interpreted in this direction either. 25. Contrary to the Antragstellerin's (Claimant's) view, the requested confidentiality obligation of its representatives also does not result from the obligation to keep the content of the description of the attacked embodiment secret and to use it only in main proceedings (points 4, 12 and 14 of the Order). The information that may emerge during the preservation of evidence and inspection is not necessarily identical to the information contained in the description according to point 4 of the Order. In particular, the examination of the attacked embodiment may reveal technical details that are not relevant to the question of patent infringement, but nevertheless come to the knowledge of the Antragstellerin's (Claimant's) representatives. This information is not protected by points 4, 12 and 14 of the Order. 26. For the foregoing reasons, it is also not sufficient if merely reference is made to the secrecy interests that the Antragsgegnerin (Defendant) can put forward in the course of the disclosure of the report according to Rule 13. 27. As far as the mention of the Antragstellerin's (Claimant's) employees in addition to the Antragstellerin (Claimant) itself is concerned, this is indeed only declaratory in nature. However, the confidentiality obligation according to point 13 of the Order does not yet cover statements made to third parties. These are also not covered by the fact that the report according to point 14 of the Order may only be used in a main action. The inclusion of third parties is a personal restriction on the use of information, whereas point 14 of the Order refers to a factual restriction. It does not seem entirely impossible that the restriction of the use of the report to a main action does not exclude disclosure to third parties. 28. The confidentiality measures requested with applications I. and II. then result from the protection of confidential information to be ensured by the court. a) 29. The Agreement on a Unified Patent Court, according to Art. 58 UPCA together with Rules 262, 262A RoP, offers the court the possibility (discretion) to order confidentiality measures to protect confidential information of a party or a third party or to prevent misuse of evidence, if there is a reason to do so. Accordingly, the court may, to protect trade secrets, personal data or other confidential information of a party or a third party or to prevent misuse of evidence, order that the collection and use of evidence in the proceedings before it be restricted or declared inadmissible or that access to such evidence be restricted to certain persons. 30. However, for preservation of evidence and inspection proceedings, the Agreement contains a special regulation. Accordingly, the court may, according to Art. 60(1) UPCA, at the request of the applicant who has presented all reasonably available evidence to substantiate the assertion that the patent has been infringed or is threatened with infringement, even before the initiation of proceedings on the merits, order quick and effective provisional measures to preserve evidence relevant to the alleged infringement, provided that the protection of confidential information is ensured. 31. According to these principles, it is the court's responsibility to ensure the protection of confidential information. In particular, if preservation of evidence and inspection measures are ordered without hearing the defendant according to Art. 60(5) UPCA and Rule 197.1 RoP, confidentiality measures must be ordered without specific confidentiality interests being put forward, unless, exceptionally, confidentiality interests of the defendant obviously cannot exist. This is because the latter is not possible due to the ex-parte nature of the order. b) 32. In the present case, confidentiality interests of the Antragsgegnerin (Defendant) were not excluded from the outset at the time of the Order. The preservation of evidence and inspection concerned a technical device (a tap changer) for which it could not be ruled out in principle that it possessed technical properties or features that are not generally known and that the Antragsgegnerin (Defendant) treats as confidential information. This could in particular concern properties and features that are not relevant to the question of patent use material in the present proceedings and in whose ascertainment the Antragstellerin (Claimant) can in principle have no interest. 33. Any confidentiality of information concerning technical properties and features of the tap changer to be examined had not already been lost by the exhibition of the product at the trade fair stand. It can already be seen from the pictures of the trade fair stand that the item to be inspected was behind plexiglass and also had a type of housing that did not allow an unobstructed view into all details of the tap changer's internal workings. 34. Accordingly, the Panel also ordered confidentiality measures. However, it inadvertently failed to oblige the Antragstellerin's (Claimant's) representatives to maintain confidentiality regarding the information that became apparent during the inspection and/or preservation of evidence. This is the only explanation for why the other participants in the preservation of evidence and inspection are obliged to maintain confidentiality, as is the Antragstellerin (Claimant) with regard to the report to be prepared by the expert. As a result, the Order should have been issued with the confidentiality measures now requested by the Antragstellerin (Claimant). c) 35. The fact that the preservation of evidence and inspection procedure is now in the review stage does not change the previously established requirement for the ordering of confidentiality measures. aa) 36. The requested confidentiality measures cannot be omitted on the grounds that they would be ineffective and any confidential information is no longer secret. Even the Antragstellerin (Claimant) does not claim that its representatives have disclosed any information from the inspection or preservation of evidence that could be confidential to it. Therefore, the fact that the Antragsgegnerin (Defendant) waited until the expiry of the 30-day period for filing the review application does not conflict with any confidentiality interests. 37. Insofar as the Antragstellerin (Claimant) submits that the inspected item was publicly exhibited, it has already been stated that the exhibited tap changer was not unrestrictedly accessible to the public. bb) 38. However, the Antragsgegnerin (Defendant) was also not obliged to concretely name confidential information and to put forward corresponding confidentiality interests. 39. This already follows from the fact that in the event of an amendment or revocation of an ex-parte order according to Rule 197.6 S. 3 RoP, the court obliges the persons to whom confidential information has been made accessible to continue to treat the information confidentially. The review procedure does not provide for a mechanism according to which the defendant would now have to specifically assert the confidentiality of information and corresponding confidentiality interests, and the court would have to examine these. Rather, the confidentiality measures ordered with the reviewed order remain in place without a separate examination. 40. This is also consistent with the purpose of the regulations. Precisely because information can emerge during the preservation of evidence and inspection that is not relevant for the proof of patent use and in which the applicant therefore has no interest in disclosure, this information should not be disclosed. It would not be in the interests of justice and, moreover, not procedurally economical if the defendant, who is not aware of what information the applicant has already perceived, were now obliged to disclose all conceivable confidential information and specific confidentiality interests in this regard. 41. The Antragstellerin (Claimant) is not prejudiced in its legal position or otherwise harmed in any interests by such a procedure. Insofar as information relating to patent use is concerned, this will be reflected in the report to be prepared by the expert. For the disclosure of this report, the Order provides a separate mechanism in points 12 and 13, in the course of which the Antragsgegnerin (Defendant) can also assert confidentiality interests. There is no danger that the Antragstellerin (Claimant) will be withheld information that it needs to prove patent infringement. d) 42. The scope of the requested confidentiality measures raises no concerns. It is suitable, but also necessary, to ensure the confidentiality of the information emerging during the preservation of evidence and inspection. Even if the mention of the Antragstellerin's (Claimant's) employees is only declaratory in nature, their inclusion in the Order is harmless. II. 43. After the original application III. was withdrawn, the Order of 20 May 2026 had to be supplemented only to the extent set out in the operative part, based on the parties' congruent declarations. 44. However, the Chamber refrained from including in the Order the declaration by the Antragstellerin's (Claimant's) representative that no communication had taken place with the expert about the subject of the examination to date, because this is a assurance relating to the past, which is not amenable to an order. 45. Furthermore, the court refrained from including in the operative part the possibility of a subsequent examination, also mentioned by the Antragstellerin's (Claimant's) representative in the oral hearing, in the present inspection and preservation of evidence proceedings. On the one hand, the Antragsgegnerin (Defendant) did not grant this in return for the withdrawal of application III. On the other hand, a subsequent examination in the present proceedings is already factually excluded, because the main proceedings must in any case be initiated within a non-extendable (cf. Rule 9.4 RoP) period of 31 calendar days or 20 working days – whichever period is longer – from the disclosure of the report, otherwise the preservation of evidence and inspection measures will be revoked. Accordingly, a subsequent examination will always constitute an examination within the framework of main proceedings. III. 46. Application V. is not amenable to regulation within the framework of a preservation of evidence and inspection order. With the exception of the cost regulation in point 15 of the Order, according to which the Antragstellerin (Claimant) bears the costs of the preservation of evidence and inspection, no cost decision is required. Rule 189.2 RoP applies, or the cost decision is reserved for the main proceedings. **ORDER** I. Point 10. of the Order of 20 May 2026 is amended as follows: Dem Sachverständigen, den Hilfspersonen, den unter Ziffer 8. genannten Vertretern der Antragstellerin und dem Gerichtsvollzieher wird zur Wahrung etwaiger Geschäftsgeheimnisse der Antragsgegnerin, die bei der Inspektion und/oder Beweissicherung erkennbar werden könnten, aufgegeben, sowohl gegenüber der Antragstellerin und ihren Mitarbeitern als auch gegenüber Dritten – vorbehaltlich der Freigabe des Berichts nach Ziffer 4 durch das Gericht und vorbehaltlich der Freigabe durch die Antragsgegnerin selbst – Verschwiegenheit über die Erkenntnisse aus der Inspektion und der Beweissicherung zu wahren. II. Point 12. of the Order of 20 May 2026 is amended as follows: Die unter Ziffer 8. genannten Vertreter der Antragstellerin erhalten unmittelbar nach Fertigstellung und Überlassung der Beschreibung nach Ziffer 4 an das Gericht Zugriff auf die Beschreibung, das heißt vor der Entscheidung des Gerichts über die Freigabe der Beschreibung, wobei die darin enthaltenen Informationen vorbehaltlich der Freigabe durch das Gericht und/oder durch die Antragsgegnerin und/oder weiterer Entscheidungen des Gerichts gegenüber der Antragstellerin, ihren Mitarbeitern und Dritten nicht offengelegt werden dürfen. III. Point 10. of the Order of 20 May 2026 is supplemented by the following paragraph due to the congruent declaration of the parties: Die Antragstellerin, ihre Vertreter und alle weiteren auf Seiten der Antragstellerin tätigen Personen werden verpflichtet, mit dem Sachverständigen nicht über den gemäß Ziffer 1. dieser Anordnung zu begutachtenden Gegenstand oder den gemäß Ziffer 4. dieser Anordnung zu erstellenden Bericht zu kommunizieren. Der Sachverständige darf keine Folgeuntersuchungen an dem gemäß Ziffer 1. dieser Anordnung zu begutachtenden Gegenstand vornehmen. Der Gegenstand verbleibt in dem Zustand, in dem er sich nach Abschluss des in Ziffer 4. dieser Anordnung genannten Berichts befindet, sofern nicht das Gericht den Sachverständigen in einem etwaigen Hauptsacheverfahren zum Sachverständigen ernennt und konkrete Folgeuntersuchungen anordnet. IV. In all other respects, the further applications are rejected and the Order of 20 May 2026 is upheld. Dr. Daniel Voß (Presiding Judge) Dr. Georg Werner (Legally qualified Judge) Thomas Adocker (Legally qualified Judge) For the Deputy Registrar

Key Holdings

• The UPC can grant evidentiary seizure and inspection orders for alleged patent infringement.
• Evidentiary seizure orders must include sufficient guarantees for the confidentiality of information obtained during the seizure.
• While an implied duty of confidence may exist for professionals involved in seizures, explicit confidentiality orders are advisable.
• Retroactive application of confidentiality duties can pose legal challenges.

Tags

• Evidentiary Seizure
• Inspection
• Confidentiality
• Procedural Law

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