UPC_CFI_178/2024_July08_Value – Progress v AWM

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

Expert Commentary

Value of the case Background Parties had been asked by the JR to agree on the value of the case but informed the JR that they could not come to an agreement. The JR The JR decided to accept the value (€2 million) stated by the plaintiff in the Statement of Claim for both the infringement and the revocation case, citing (amongst others), the complexity of the case concerning complicated machines of high commercial value. However, the JR stated that the panel may change this after the oral hearing. Comment None of the parties had provided any evidence about their proposed value. In general, the claimant has a certain interest in putting a high value in the Statement of Claim in order to later justify a substantial damage claim. A higher value also means a higher ceiling with respect to recoverable costs. On the other hand, a higher value means higher court costs. A defendant (and one sees this in this case) tends to downplay the importance (and thus the value) of the case. It is not easy for a JR to decide if there are no objective data put forward by the parties. So, in this case, the JR first tried to get the parties to agree and then made the best of it!

Full Decision Text

1 of 2 Milan Local Division UPC CFI no. 178/2024, no. 432/2024 Act. no. 20004/2024 - CC no. 42962/2024 App no. 31860/2025, no. 32117/2025, no. 32133/2025 order no. 32533/2025 issued on 8.7.2025 CLAIMANT Progress Maschinen & Automation AG DEFENDANTS 1) AWM s.r.l. 2) Schnell s.p.a. DECIDING JUDGE presiding judge and judge-rapporteur Pierluigi Perrotti LANGUAGE OF PROCEEDINGS English ORDER In their submissions dated 2.7.2025, the Parties informed the Court that they had not reached an agreement on the value of the case for the purpose of applying the scale of ceilings for recoverable costs. The determination of the value of the action is under the responsibility of the judge-rapporteur during the interim procedure, pursuant to rules 22, 104 and 370.6 RoP, taking into account the value as assessed by the parties. This assessment of the value shall also reflect “the objective interest pursued by the filing party at the time of filing the action” (see rule 370.6 RoP). The Claimant put the value of the infringement case at EUR 2,000,000 (page 13 of the statement of claim), taking into account (i) the estimated sales value of the allegedly infringing machines (1.3 million EUR each), (ii) the most likely sales volume of the Defendants on an annual basis 2 of 2 (6 machines per year), (iii) the remaining life of the patent (8 years), and (iv) the average value of a royalty (about 3%). On the other hand, the Defendants disputed (i) the sales volume, claiming that they sell far fewer than six Girderflex machines per year, (ii) the sales price of the machines quoted by the other party, and (iii) the value of the 3% license fee (page 8 et seq. statement of defence). In order to determine the value of the case, it is both necessary and appropriate to consider the complexity of the case as a whole, taking into account the main claim for a declaration of infringement with all the ancillary requests, the counterclaim for revocation and the subsequent application for the amendment of the patent. None of the parties has provided any documentation to support their assertions regarding the value of the case. From a factual standpoint, however, it is clear that the teachings of the patent are applied to complex machines of undoubtedly high commercial value. Taking into account the current unavailability of precise economic data, in application of the general principles of proportionality, flexibility, fairness and equity, the judge-rapporteur considers it appropriate not to depart from the value indication expressed by the Claimant. Therefore, the value of the dispute is set at EUR 2,000,000 for the infringement action and EUR 2,000,000 for the revocation action. This determination may be reconsidered by the Panel at the conclusion of the oral hearing when deciding the merits of the case. In light of the foregoing, the value of the infringement action and of the counterclaim for revocation is set at 2.000.000 EUR each. Milan, 8 July 2025. Pierluigi Perrotti presiding judge and judge rapporteur

Key Holdings

  • Litigation value set at €2 million (as per Statement of Claim).
  • Parties failed to agree on value.
  • Panel may revise value after oral hearing.

Tags

  • Case Management
  • Litigation Value
  • Security for Costs

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