UPC_CFI_500663/2023 – Oerlikon Textile G.M.B.H. & Co. K.G. v Himson Engineering Private Limited

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

Expert Commentary

Oerlikon Textile G.M.B.H. & Co. K.G. sought an ex-parte order for the preservation of evidence against Himson Engineering Private Limited, alleging patent infringement at an international textile fair in Milan. The Milan Local Division granted the request, authorizing the acquisition of technical and commercial documentation from Himson's exhibition booth. The decision emphasized the extreme urgency due to the fair's imminent closure and the risk of evidence concealment.

Full Decision Text

Proceedings No. 500663/2023 - IFC No. 127 MILAN LOCAL DIVISION DECISION EX ART. ART. 192 ET SEQ. ROP adopted by Judge Dr. Alima Zana on June 13, 2023 and concerning the European patent EP2145848B1 in Proceedings No. 500663/2023 - IFC No. 127/2023 introduced by OERLIKON TEXTILE G.M.B.H. & CO. K.G., headquartered at Leverkuser Strasse No. 65, Remscheid, Germany, with registered office in X, Germany, represented and defended by attorneys Z. W . - DEFENDANT - AGAINST - HIMSON ENGINEERING PRIVATE LIMITED, headquartered at Survey No. 352 Hiratal Colony Ashwan- ikumar road, Surat, Gujarat - 395008 – India - APPLICANT - A. Indication of the plaintiff's request. By a deed filed on 12.6.2023 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 "John" having the subject matter of a textile machine, issued on 23.9.2011, following an application dated 23.1.2009, claiming German national priority of 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 Fair being held in Rho (MI) from 8.6 to 14.6.2023, he had discovered that competitor HIMSON ENGINEERING PRIVATE LIMITED (hereinafter "HIMSON") was presenting at the exhibition booth assigned to him two machines 1 Proceedings No. 500663/2023 - IFC No. 127 bearing the trade names MACCHINARIO 2 and MACCHINARIO 2- TS, apparently interfering with the patent he owned, also 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 evidence protection order under Articles 192 and ss. RoP, with the acquisition of copies of all technical and commercial documentation, in any format, available 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 dated 6/13/2023 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 Proceedings No. 500663/2023 - IFC No. 127 2. periculum in mora 2.1. The extreme urgency according to Article 194, paragraph 4, RoP 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, pursuant to Article 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 apportionnement 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 or the place where the patent infringement is being carried out or otherwise threatened is identified. 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 conformity with the provisions of Article 192(1) RoP. 3 Proceedings No. 500663/2023 - IFC No. 127 1 .3Identification 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 the adoption of the consequent measures of injunction, fixing of penalty, seizure, damages, and publication of the decision. 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. 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 two brochures prepared by the respondent for the technical and commercial presentation of the allegedly infringing machines MACCHINARIO 2 and MACCHINARIO 2-TS as well as a technical opinion prepared by a party's technical consultant (see doc. 5.1, 5.2, 6.1 and 6.2). These documents, at present, appear to offer positive evidence, at least circumstantially, of the respondent's undue reproduction of the features claimed in the EP 848 patent, justifying the request for the measure invoked here. 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); 4 Proceedings No. 500663/2023 - IFC No. 127 -- 2. 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. periculum in mora 2.1. extreme urgency The requirement of extreme urgency is met, given that the international trade fair exhibition where the infringing conduct is taking place began on 8.6.2023 and ends, tomorrow, 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: 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 Tribunal notes that pursuant 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 Tribunal: in light of this statute of limitations, the plaintiff should be ordered to pay this contribution by June 15, 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 borne by each party in the case of granting -for the respondent- or denial of the measure- borne by the plaintiff. 5 Proceedings No. 500663/2023 - IFC No. 127 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 risk of the respondent's suffering from 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 Article 196, paragraph 4, RoP, the authorized measure will be carried out - in accordance with 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 ensures the recurrence of the requirements of independence, autonomy and professionalism, required by Article 196, paragraph 5, RoP. The appointed professional will proceed with support from the appropriate judicial officer. The appellant may attend the description operations through his or her trusted attorneys and his or her trusted technical adviser, with other representatives, employees or servants of the appellant 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 under Article .196, paragraph 2, of the RoP. 4.5. The Court orders that the execution of the notice of appeal together with this measure be implemented by an alternative method, based on the combined provisions of Articles 275(1) and 276(1) RoP. Indeed, there are good reasons to deviate from the ordinary way of service of orders in the manner set forth in the operative provisions taking into account (i) extreme urgency, 6 Proceedings No. 500663/2023 - IFC No. 127 (ii) of the need not to frustrate the surprise effect, and (iii) to comply with the rule determined in Article 197(2) RoP, which requires that the measure be served 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 subordinated to the payment of a security or the issuance of other equivalent guarantee. Finally, the plaintiff presents itself 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, to execution at times other than those intended for opening to the public or otherwise of lesser flow at the respondent's booth. For all the above reasons THE UNIFIED TRIBUNAL OF PATENTS - LOCAL DIVISION OF MILAN in. acceptance of the application 1. Orders the preservation of the evidence as requested by the plaintiff and, accordingly, authorizes OERLIKON 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 machines identified by the designations MACHINERY 2 and MACHINERY 2-TS, produced and/or 7 Proceedings No. 500663/2023 - IFC No. 127 127 marketed and advertised by HIMSON, which can be found in the Respondent's booth at the ITMA 2023 - Rho Fiera exhibition center; 2. Appoints as an expert for the purpose of execution Engineer Z with an office in Milan - street ....................................................................................................................................... , tel. ...............cell....................which will coordinate with the plaintiff will use the territorially competent bailiff; 3. 4. 5. 6. 7. 8. 9. 10. 11. 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; stipulates that the expert shall file a written report of the operations performed, together with the documentation collected, immediately after the completion of the operations and, no later than June 15, 2023 at the Registry of the Milan Local Division of the Unified Patent Court; 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; 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; Declares this order immediately enforceable, without further conditions; 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; orders the plaintiff to serve the request for the granting of the measure, together with a copy of this order, immediately at the time of execution of the measure with observance of the rules in force in Italy on the service of judicial documents; Orders the appellant to file the fixed contribution by June 15, 2023, pursuant to Article 371(3) of the Rop; Orders the Chancellery to notify the appointed expert Ing. Z. by telephone ; 8 12. Proceedings No. 500663/2023 - IFC No. 127 expressly advises the Respondent that it may file a request for a review of this evidence preservation order within the period of thirty days from the execution of the measure, pursuant to Article 197, Paragraph 3, RoP. So decided in Milan on June 13, 2023. The single judge appointed by the presiding judge Dr. Alima Zana Alima Signeddigitally byAlima ZANA ZANA Date:2023.06.1316:18:19 +02'00 ' 9

Key Holdings

  • The UPC Milan Local Division has jurisdiction and territorial competence for the evidence preservation request under Articles 32(1)(c) and 33(1)(a) UPCA.
  • The conditions for granting an ex-parte evidence preservation order (fumus boni iuris and periculum in mora) were met, citing extreme urgency due to the ongoing trade fair and the risk of evidence loss.
  • The order authorizes the appointment of an expert and a bailiff to acquire technical and commercial documentation related to the alleged infringing machines from the respondent's exhibition booth.
  • The acquired evidence is to be kept confidential, accessible only to the claimant's attorneys and technical expert, and may only be used in the future merits proceedings.
  • The order is immediately enforceable without requiring a prior security deposit from the applicant, given the nature of the measure and the applicant's financial standing.

Tags

  • Competence
  • Evidence
  • Ex Parte Order
  • Infringement
  • Interim Measures
  • Jurisdiction
  • Urgency

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