UPC CFI 539/2024 – Bekaert Binjiang Steel Cord Co. & Ltd v Siltronic AG

Court: Local Division Düsseldorf
Date: 2025-04-16
Outcome: Application for review of an inspection and evidence preservation order rejected
Sector: Electronics/SEP
Decision Type: Order

Expert Commentary

Full Decision Text

1 Düsseldorf local division UPC CFI 539/2024 Order of the Court of First Instance of the Unified Patent Court issued on 16 April 2025 concerning EP 3 212 356 B1 LEADERSHIPS: 1. An Order for the preservation of evidence and inspection can serve to secure evidence for the existence of individual acts of use. 2. Even though R. 196.1 RoP lists a large number of measures to preserve evidence, it is not an exhaustive catalogue of measures. The specific measures required must always be decided against the background of the applicant's interest in preserving evidence, taking into account the circumstances of the individual case. 3. If there is a corresponding interest in preserving evidence, such an order may also include the seizure of delivery notes and invoices. KEYWORDS: Inspection; preservation of evidence; interest in preserving evidence; scope of the Order; complaint; invoices and delivery notes2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 2 APPLICANT Bekaert Binjiang Steel Cord Co. & Ltd, legally represented by the authorised representative CEP Yu Zhiao, No. 358, East Binjiang Road, Jiangyin City, People's Republic of China represented by: Attorney Dr Matthias Hülsewig, Preu Bohlig & Partner Rechtsanwälte mbB, Couvenstraße 4, 40211 Düsseldorf, Germany Electronic delivery address: mhu@preubohlig.de contributor: Patent Attorney Wasilis Koukounis, Michalski Hüttermann & Partner Patentanwälte mbB, Kaistraße 16A, 40221 Düssel- dorf, Germany RESPONDENTS: 1. Siltronic AG, legally represented by the Executive Board Klaus Buchwald, Dr Michael Heck- meier and Claudia Schmitt, Einsteinstraße 172, 81677 Munich, Germany represented by: Attorney Stratmann, Patent Attorney Dr Vocke, Hoffmann Eitle Patent- und Rechtsanwälte, Arabellastraße 30, 81925 Munich, Germany electronic delivery address: hstratmann@hoffmanneitle.com 2. Hinterberger GmbH & Co. KG, represented Hinterberger Verwaltungs-GmbH, which in turn is represented by its managing directors Bernhard Hinterberger and Herbert Hinterberger, Daimlerstr. 2, 84503 Altötting, Germany STREITPATENT: EUROPEAN PATENT NO. 3 212 356 B1 PANEL/Chamber: PANEL JUDGES of the Düsseldorf local division: This order was issued by presiding judge Thomas, the legally qualified judge of the court. Dr Schumacher, deputising for the rapporteur Dr Thom, and the legally qualified judge Ms Zhilova. LANGUAGE OF THE PROCEEDINGS: German SUBJECT: R. 197.3 and .4 RoP - Application by the defendant re 1. for examination of an order for inspection and preservation of evidence ORAL HEARING: 20 March 20252025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 3 BRIEF DESCRIPTION OF THE FACTS: 1. The applicant is the sole proprietor of European patent 3 212 356 B1 (Annex PBP 4; hereinafter referred to as the patent in suit), which was filed on 23 September 2015, claiming the priority of PCT document CN2014/089963 dated 31 October 2014. The grant of the patent was published on 30 January 2019. The opt-out initially declared was revoked and the revocation was entered in the CMS of the Unified Patent Court on 5 September 2024. The application patent is in in Germany, Austria and Italy. It has not yet undergone any validity proceedings, and no such proceedings are currently pending. 2. The patent application relates to a "Moulded saw wire with controlled curvature at bends". 3. Claim 1 of the patent in suit reads as follows in its original English version: "A saw wire for cutting hard and brittle materials comprising a steel wire with a diam- eter 'd` and a centreline, said saw wire having bends with segments in between, said centreline having a top curvature `kj´ at each of said bends when measured with a load of about one newton on said wire, characterised in that the average of the products of said top curvatures with half said diameter, over a length of saw wire comprising at least 'N` bends, with 'N` being no less than 50, is between 0.5 and 5 per cent or in formula: ". 4. In the registered German translation, claim 1 is worded as follows: „Sägedraht zum Trennen harter und spröder Werkstoffe, umfassend einen Stahldraht mit einem Durchmesser "d" und einer Mittellinie, wobei der Sägedraht Biegungen mit Segmenten dazwischen aufweist, wobei die Mittellinie eine obere Krümmung "k i" an jeder der Biegungen aufweist, wenn mit einer Kraft von etwa einem Newton an dem Sägedraht gemessen dadurch gekennzeichnet, dass der Durchschnitt der Produkte der oberen Krümmungen mit der Hälfte des Durchmessers, über eine Länge von Sägedraht mit mindestens "N" Biegungen, wobei "N" nicht kleiner als 50 ist, zwischen 0,5 und 5 Prozent liegt oder als Formel ausgedrückt: ".2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 4 5. The protected saw wire can typically be used for cutting wafers in semiconductor production. 6. Respondent 1. produces and sells silicon wafers for the semiconductor industry. It purchases the saw wires required for the production from the applicant and from the S. group of companies based in China (hereinafter: S.). 7. Defendant no. 2 is a logistics company that also maintains storage facilities. The premises used by defendant no. 2 include an external warehouse in Altötting. Defendant 1. uses the storage services of defendant 2. for stockpiling the sawing wires it uses. 8. On 19 September 2024, the applicant filed an application for an order to inspect the defendants' premises and for an order to preserve evidence in advance of a main action. 9. In support of this application, it stated that it had found remnants of a 175 μm sawing wire from the manufacturer S. by chance at the recycling company R. in Freiberg, Saxony. In addition to Bavaria, this is the most important production site of defendant no. 1, so that the applicant suspected that the disposed wire came from defendant no. 1. In addition to the 175 μm saw wires, the S. group of companies also produces wires in the thicknesses 100 μm and 150 μm (Annex PPB 7). The applicant had examined the 175 μm wire. In her opinion, this wire makes use of the technical teaching protected by patent claim 1. It considers it probable that the defendant re 1. will use all three thicknesses of the sawing wire of S. is used. In the pre-trial correspondence the first respondent refused to provide information on the extent of the use of sawing wire from the company S.. Defendant 1. informed the applicant that it would no longer use any structured sawing wire offered by S. in the production processes at its German sites until further notice. Licence negotiations in July and August 2024 were unsuccessful. Stopping the use of pre-ordered saw wires is not possible without further ado. There is also a fear that surplus wire will be used at other locations. The applicant is still unclear about the identity of the company or companies responsible for the delivery to Germany. The petitioner is of the opinion that, in view of the respondent 1.'s need for sawing wire for its production, sawing wire from S. will continue to be used by the respondent 1. until October 2024. In this respect, it seeks an order for an inspection and for measures of evidence to be taken against the first and second defendants with regard to saw wires with a diameter of 175μm, 150μm and/or 100μm from the manufacturer S. 10. The Düsseldorf local division then issued the following procedural order on 18 October 2024: The following inspection and evidence preservation order is issued without prior hearing of the defendants: I. In relation to an infringement of claim 1 of EP 3 212 356 B1, which reads2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 5 "A saw wire for cutting hard and brittle materials comprising a steel wire having a diameter "d" and a centreline, the saw wire bends with segments therebetween, the centreline having an upper curvature "ki" at each of the bends when measured with a force of about one Newton on the saw wire, characterised in that the average of the products of the upper bends with half the diameter, over a length of sawing wire with at least "N" bends, where "N" is not less than 50, is between 0.5 and 5 per cent or expressed as a formula: " Ordered, 1. the inspection of the premises of respondent 1, SILTRONIC AG, Einsteinstraße 172, 81677 Munich, as well as the premises of respondent 2, in particular the warehouse, in particular the "Siltronic external warehouse" of Hinterberger GmbH & Co. KG, Daimlerstrasse 2, 84503 Altötting, with the purpose of establishing whether the defendants there have saw wires with a diameter of 175 μm, 150 μm and/or 100 μm of the manufacturer S. at their disposal which are capable of infringing claim 1 of EP 3 212 356 B1, whereby the spools on which the saw wires of this manufacturer are wound essentially bear the following labelling: [...] and/or [...] 2. to secure evidence in the premises mentioned under I.1. by a) a detailed description of the saw wires specified in Section I.1 and the retention of samples and/or specimens of these saw wires; b) in the event that the defendants refuse to hand over the samples and/or specimens: by an in rem seizure of the samples and/or specimens of the saw wires described in more detail in Section I.1,2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 6 c) by disclosing documents, records and/or media, including digital media and data, relating to the origin and/or supply of the sawing wires specified in Section I.1. the defendants, such as delivery notes or invoices, and the disclosure of passwords required for access to these documents, records, media or data, as well as the making of copies and/or printouts of the said documents, records, media or data at the expense of the applicant and the handing over of the same; 3. submit to the court within a period of 3 months a written report (hereinafter: expert report) on the results of the inspection and evidence-gathering measures, containing an opinion on whether the saw wires infringe claim 1 of EP 3 212 356 B1 because they make use of the technical teaching of EP 3 212 356 B1. II. The expert report and all other results of the inspection and the measures to secure evidence may only be used in proceedings on the merits against the defendants and in proceedings on the merits against the following companies • [...] can be used. III. The person executing this Order is the expert Patent attorney Dr Johannes Zeiner, Heinrich-Barth-Str. 60, 66115 Saarbrücken, appointed and - in order to enable the inspection of the premises (Section I.1.) and the preservation of evidence (Section I.2.) to be carried out at different locations at the same time - the expert's appointed assistant Ms Anne-Kathrin Renz, lawyer, Altenkessler Straße 17, Innovation Campus // Building C1, 66115 Saarbrücken. Mrs Renz will carry out the corresponding measures in place of the expert and on his behalf at one of the locations specified in Section I.1. To support the expert Dr Zeiner and his assistant Ms Renz, the locally competent bailiffs at the respective locations of the defendants are appointed as assistants. The expert and his assistant are instructed to confidentiality towards third parties in the interest of protecting the defendant's business secrets that may come to light during the inspection and/or appraisal. If the expert uses an external testing laboratory for the survey as part of the preparation of his expert opinion, he must take appropriate measures to fulfil his duty of confidentiality.2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 7 IV. During the execution of this Order, with regard to the inspection of the premises (Section I.1.) and the measures to secure evidence (Section I.2.), the presence of only 2 representatives of the Applicant, who belong to the following group of persons, is permitted at the respective locations in addition to the expert or his assistant and the bailiff: • Lawyer Dr Matthias Hülsewig, Preu Bohlig & Partner Rechtsanwälte mbB, Couvenstraße 4, 40211 Düsseldorf, • Lawyer Dr Christian Kau, Preu Bohlig & Partner Rechtsanwälte mbB, Cou- venstraße 4, 40211 Düsseldorf, • Lawyer Dr Axel Oldekop, Preu Bohlig & Partner Rechtsanwälte mbB, Leopoldstraße 11a, 80802 Munich, • Lawyer Milena Schwerdtferger, Preu Bohlig & Partner Rechtsanwälte mbB, Leopoldstraße 11a, 80802 Munich, • Patent attorney Wasilis Koukounis, Kaistraße 16A, 40221 Düsseldorf. Attorney Dr Matthias Hülsewig, attorney Dr Christian Kau, attorney Dr Axel Oldekop, attorney Milena Schwerdtfeger and patent attorney Wasilis Koukounis are obliged to keep confidential from the applicant and its employees any facts that come to their knowledge during the execution of the entire Order and that relate to the business operations of the respondents. Representative bodies, employees or other staff of the applicant may not be present during the execution of this Order with regard to the inspection and the preservation of evidence. V. The defendants are ordered to comply, 1. the expert, his assistant and the bailiff (only for point a), a) to enter the above-mentioned premises of the Respondents in order to inspect the premises and preserve the evidence in order to establish a violation of EP 3 212 356, as set out in points I.1 and I.2 of the Order; b) to photograph or film for documentation purposes, to make written notes and/or to use a dictation machine for his/her notes, insofar as this should be of importance for the arranged inspection and preservation of evidence, 2. to hand over to the expert or his assistant the printouts and/or copies of documents, records and/or media, including digital media and data, referred to in Section I.3, which relate to the origin and/or supply of the saw wires to the defendants specified in Section I.1. or to tolerate the making of printouts and/or copies by the expert or his assistant;2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 8 3. to provide the expert or his assistant with samples and/or specimens of the saw wires specified in Section I.1. In the event of a necessary seizure, the bailiff shall hand over the seized samples and/or specimens to the expert or his assistant for the preparation of the expert report. VI. If an action on the merits is brought, the expert, Dr Zeiner, will be instructed to take the samples and/or specimens to court once the expert report has been completed. Once the expert report has been completed, the expert is authorised to hand over the copies and/or printouts of the documents, records, media or data within the meaning of Section I. 2.c) to the above-mentioned representatives of the applicant. VII. The defendants are to invited to comment on any confidentiality interests they may have after the expert report has been submitted by the experts appointed to implement this Order. The above-mentioned representatives of the applicant, who were allowed to be present during the preservation of evidence and during the inspection of the defendants' premises, are to be heard. Only then will the court decide whether and to what extent the expert opinion and the copies and/or printouts of the documents, records, media and data referred to in section I 2.c) will be brought to the applicant's personal attention and whether the duty of confidentiality will be lifted for the applicant's representatives. VIII. The claimant is obliged to bear the costs of preparing the expert report in the amount of EUR 19,400.00. The claimant is ordered to pay the expert an appropriate advance on costs the amount of EUR 15,000.00 before the inspection begins and to submit the corresponding proof of payment to the court. IX. In the event of culpable violation of this Order, the court may impose a penalty payment for each violation by each party, the amount of which the court may determine taking into account the circumstances of the individual case. X. The measures for the preservation of evidence and inspection shall be cancelled or otherwise cease to have effect at the of the defendants if the applicant does not, within a period not exceeding 31 calendar days or 20 working days, is the longer, after the written expert report has been disclosed to the applicant or the court has decided by a final decision not to grant access to the report, bring an action against the defendants and/ or the court has decided not to grant access to the report. • [...] which leads to a decision on the merits of the case.2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 9 XI. This Order shall be served in person in Munich or Altötting by one of the above-mentioned representatives of the Applicant, together with a copy of the application for this Order, including the exhibits and other documents on which the application is based before or during the execution of this Order, as well as the Order of the Düsseldorf local division dated 26 September 2024 and the document dated 14 October 2024 of the Applicant and the Notice of provisional measures and instructions for access to the proceedings (to be provided by CMS) without undue delay at the time of execution of the measures. XII. The Order will not take effect until the applicant has provided security in favour of the defendant in the form of a deposit in the amount of EUR 30,000.00. 11. The inspection and preservation of evidence place on 11 November 2024. By document dated 10 December 2024, the defendant to 1. submitted an application for a review of this arrangement. Applications by the parties: 12. The respondent to 1, 1. the Order of the local division Düsseldorf of 18. October 2024,Ref.: UPC CFI 539/2024, to be reviewed at the hearing; 2. the Order of the local division Düsseldorf of 18. October 2024,Ref.: UPC CFI 539/2024 to be revoked; in the alternative: 3. the Order of the local division Düsseldorf of 18. October 2024,Ref.: UPC CFI 539/2024, as follows: a) Item I.2.c) by disclosing documents, records and/or media, including digital media and data, to the origin and/or supply of the saw wires specified in section I.1. to the defendants, such as delivery notes or invoices, and disclosure of passwords required for access to such documents, records, media or data, as well as the making of copies and/or printouts of said documents, records, media or data at the expense of the applicant and the handing over of the same and b) Item V.2 to hand over to the Expert or his assistant the extracts and/or copies of documents, records and/or media, including digital media and data, referred to in Section I.3. which relate to the origin and/or supply of the saw wires referred to in Section I.1. to the Defendants or2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 10 to tolerate the making of printouts and/or copies by the expert or his assistant; and c) Section VI (2nd paragraph) Once the expert report has been completed, the expert is authorised to hand over the copies and/or printouts of the documents, records, media or data within the meaning of Section I.2.c) to the above-mentioned representatives of the applicant. and d) in point VIII. the passage and the copies and/or printouts of the documents referred to in Section I.2.c), Documents, media and data to revoke; 4. Order that a) the expert, patent attorney Dr Johannes Zeiner, his assistant, attorney Anne- Kathrin RenzJohannes Zeiner, his assistant, Anne-Kathrin Renz, attorney-at-law, as well as the representatives of the applicant, Dr Matthias Hülsewig, attorney- at-law, Dr Christian Kau, attorney-at-law, Dr Axel Oldekop, attorney-at-law, Milena Schwerdtferger and patent attorney Wasilis Koukounis, are obliged to fulfil the obligations incumbent on them in the course of the inspection. Axel Oldekop, attorney-at-law Milena Schwerdtferger and patent attorney Wasilis Koukounis are obliged to treat as confidential the information that comes to their knowledge during the inspection and preservation of evidence, in particular printouts and/or copies of documents, records and/or media, including digital media and data, which relate to the origin and/or delivery of the goods specified in section I.1. of the order.. of the Order, such as delivery notes or invoices; b) to return the confiscated products, documents, records and/or media to defendant 1. 13. The applicant requests, to uphold the Rules of Procedure of the Düsseldorf local division dated 18 October 2024, as amended on 22 October 2024, in full. Factual and legal issues: 14. The respondent re 1. essentially argues that according to the wording of Art. 60 UPCA and R. 192 et seq. RoP, the proceedings serve to secure evidence, but not to obtain information or certainties. 15. The applicant's enquiry to the first defendant not a serious attempt to obtain possession of the sawing wires in dispute. The first respondent was a commercial user and not an intermediary. Furthermore, the applicant had - indisputably - not attempted a test purchase from S. herself. The applicant had therefore not exhausted all the possibilities available to it to obtain the saw wire on the open market. In addition, the applicant had not made use of the2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 11 recycling company already had the attacked saw wire (175 μm) from the defendant 1. at its disposal, which it could have used in an infringement suit. 16. With regard to the requested preservation of evidence of the delivery notes, invoices or customs documents, the applicant has neither presented facts that speak in favour of a possible loss of evidence, nor are such circumstances discernible. As a listed, globally active German company, respondent 1. is subject to a ten-year tax retention obligation for the documents. There was therefore no risk of the documents being destroyed. The applicant would only receive more detailed about the origin of the saw wires after the infringement had been established by the court in the context of the claims for information. 17. The preservation of evidence procedure was not intended to preserve evidence of individual acts of use. The applicant already had knowledge of the act of use. With regard to importation, it was a matter of simple investigation. The Agreement on a Unified Patent Court (UPCA) and the Rules of Procedure (RoP) are only concerned with securing evidence which can be used to prove, directly or indirectly, that the challenged subject-matter makes use of the technical teaching of the IP right. 18. The applicant that it still has no reliable knowledge regarding the actual use or the extent of use of certain saw wires by respondent 1. The efforts to make a test purchase via a customer were not successful. Since the applicant's supply chain was not known, the submission of documents relating to the origin of the delivery was necessary. A reference to the main proceedings was not admissible. The applicant must be enabled to obtain reliable information about all acts of use. Incidentally, retention obligations under tax law only exist for invoices, not for delivery notes. Apart from this, there would still be a risk of loss of evidence if the documents were in the possession of the party liable for the inspection during the main proceedings. Moreover, the existence of R. 196.2 RoP also speaks against this understanding. LEGAL ASSESSMENT 19. The petition for review is admissible, but is not successful on the merits. A. Admissibility of the request for examination 20. There are no objections to the admissibility of the request for examination. 21. Pursuant to R. 197.3 RoP, the application for review of the Order to preserve evidence must be filed 30 days after enforcement of the measure. The preservation of evidence and inspection took place on 11 November 2024. Respondent no. 1 submitted the application for review to the court on 10 December 2024 and thus within the deadline. B. Unfoundedness of the request for examination 22. The application for review is unsuccessful on the merits. Taking into account the submissions of respondent no. 1, there are no grounds for revocation, amendment or modification.2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 12 Supplement to the Order of the Düsseldorf local division dated 18 October 2024 Reason. I. No revocation and no amendment of the Order 23. The sole purpose of the review procedure is to examine the Order for any (obvious) errors made by the court when issuing the Order. The defendant re 1. has not been able to demonstrate such errors, which is why the Order can stand. 1. The applicant's interest in preserving evidence 24. If the respondent re 1. is of the opinion that there was no interest in preserving evidence at the time the order to preserve evidence was issued because the applicant had not seriously sought clarification elsewhere or already had enough evidence for an infringement, the Chamber is unable to accept this objection. 25. The applicant has asked the respondent 1. to hand over the sawing wire. This is the most obvious measure to further the facts of the case. However, this measure was unsuccessful. The Chamber is unable to recognise the lack of seriousness of this attempt or its unsuitability. 26. The applicant's interest in preserving evidence is not cancelled by the fact that the applicant did not attempt a test purchase from S. herself. In view the manageability of the market and the previous legal dispute between the applicant and S. in China, such a test purchase would probably not have been promising. It seems doubtful that an enquiry in the context of a test purchase against the background of a previously concluded agreement would have led to an amicable, quick and cost-effective solution, if only because such a solution would probably first of all presuppose that the sawing wire in dispute would be made available to the applicant by S. The fact that and why S. was willing to do so is questionable. That and why S. should agree to do so seems at least questionable. Apart from this, the applicant has comprehensibly explained that she attempted to initiate a test purchase via one of her customers, but that the customer ultimately did not carry out the purchase. The fact that customers want to maintain a selection of favourable sources of supply and do not necessarily become active as detectives, especially since the narrowness of the market makes it easier to trace back to the customer, is also true to life. 27. The further submission of the respondent re 1. that the applicant could have filed a complaint with the recycling company after the wire found had been examined also does not lead to the Order being erroneous. In the view of the Chamber, at the time of the Order there was a lack of certain knowledge about the origin of the wire found at a recycling company and thus a third party. There was a mere suspicion, which in the opinion of the Chamber justified a further interest in clarification and preservation of evidence. 2. Preservation of evidence to prove certain acts of use 28. The Order submitted for review rightly also includes the securing of evidence relating to the proof of individual acts of use. 29. Pursuant to Art. 60(1) UPCA, prompt and effective provisional measures may also be ordered prior to the institution of proceedings on the merits in order to secure the legally relevant evidence relating to the alleged infringement. This must be taken into account,2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 13 that in patent infringement proceedings it is not only necessary to establish the realisation of all features of the patent claim. Rather, if the patent proprietor wishes to successfully enforce the prohibition rights arising from Art. 25 UPCA, it is also necessary to prove acts of use within the scope of the patent in question. To this end, the patent proprietor also has the option of initiating proceedings for the preservation of evidence and inspection prior to infringement proceedings. 30. In the present case, the applicant had no certain knowledge that the first defendant was using a sawing wire that infringed the patent in dispute. It only knew the source of supply and had found a sawing wire which could not be clearly attributed to the first defendant and which had the characteristics of the patent in suit at a recycling company and thus at a third party. If the respondent 1. ordered sawing wires abroad and them in Germany, the alternative action of importation is likely to have been realised. The necessary tracing of the supply chain and the collection of corresponding evidence served to preserve evidence. The Chamber is not able to recognise any (inadmissible) investigation. 3. Handover of documents, media, data and records etc. 31. Even taking into account the submissions of the respondent re 1., the Chamber sees no reason to refuse the Order under review with regard to the disclosure of documents, records and/or media, including digital media and data (cfI. 2. c), V.2, VI. (2nd para.) and VII. of the under review) to be revoked or amended. 32. According to Art. 60(2) UPCA, measures to preserve evidence may , inter alia, the seizure in rem of the infringing products and, where appropriate, the materials and equipment used for the manufacture and distribution of these products and the associated documents. Even though R. 196.1 RoP a large number of measures to preserve evidence, this is not an exhaustive catalogue of measures ("in particular"). The specific measures required must always be decided against the background of the applicant's interest in preserving evidence, taking into account the circumstances of the individual case. Apart from this, the associated documents expressly mentioned in R. 196.1 (c) RoP can be read without any constraints on distribution. That this is the case is confirmed by R. 196.2 RoP. According to this, the result of the preservation of evidence can be used in the main proceedings. Evidence for proving the use of the distribution are typically delivery notes, invoices, etc. To the extent that the respondent to claim 1. refers to the fact that this information should only be provided on the basis of an Order for information in the main proceedings, this is a circular argument. In order for the applicant to be able to successfully initiate proceedings on the merits and, if necessary, provide evidence of infringement as the basis for such an Order to provide information, she must secure appropriate evidence in advance. 33. Finally, to the extent that the respondent re 1. objects that there is no risk of evidence being thwarted with regard to the documents and records due to retention periods under tax law, there are two reasons against this: Firstly, the applicant has stated that this obligation only applies to invoices. Secondly, it is quite conceivable that the documents could be physically stored at a location other than the defendant's registered office. 1. or that a third party is or will be entrusted with the safekeeping. Even if this does not constitute culpable obstruction of evidence, such circumstances are likely to make access more difficult for the applicant.2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 14 II. No supplementary orders 34. There is no need for the supplementary orders requested by the respondent 1. 35. The confidentiality order sought by respondent 1. is not necessary the original Order already contains a comprehensive regime for safeguarding any confidentiality interests of the respondent. The attorneys and patent attorneys authorised to participate in the inspection are obliged to secret from the applicant and its employees any facts that come their knowledge during the execution of the entire Order and that relate to the business operations of the respondents. In addition, the respondents are to requested to comment on any confidentiality interests they may have after the expert report has been submitted by the experts commissioned to implement this Order. Only then will the Chamber decide, after hearing those authorised to participate in the inspection, whether and to what extent the expert report and the copies and/or printouts of the documents, records, media and data referred to in Section I. 2. c) of the Order under review will be brought to the applicant's personal attention and whether the duty of confidentiality will be lifted for the applicant's representatives. The court expert is not authorised by law to disclose the content of his expert opinion to third parties (R. 186.5 RoP). This also applies if, as in the present case, he uses the services of an assistant prior to the preparation of the expert opinion with the consent of the court. Such an assistant merely acts as an assistant to the expert and is therefore subject to the same duties of confidentiality as the expert himself. 36. In order to do justice to the applicant's interest in preserving evidence as well as the confidentiality interests of the respondents, the order to be reviewed instructs the expert to take the samples and/or specimens to the court after the expert report has been completed in the event of an action on the merits being brought. The handover to the respondent 1. requested by respondent would be contrary to the applicant's interest in preserving evidence and is therefore out of the question. ORDER: The application of the defendant under 1. for examination of an Order for an inspection and preservation of evidence is rejected, including all auxiliary applications.2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com 15 DETAILS: App 65278/2024 for main file reference ACT 52616/2024 UPC number: UPC CFI 539/2024 Type of procedure: Application for preservation of evidence and inspection Düsseldorf, 16 April 2025 NAMES AND SIGNATURES Presiding judge Thomas Ronny Digital signed by Ronny Thomas Thomas Date: 2025.04.16 07:46:54 +02'00' Legally qualified judge Dr Schumacher Digitally signed Jule Kathrin by Jule Kathrin Schumacher Schumacher Date: 2025.04.11 11:40:18 +02'00' Legally qualified judge Zhilova Tatyana Signature numérique de Tatyana Zhilova Zhilova Date : 2025.04.11 11:48:07 +02'00' for the Deputy Chancellor Strysio HEIKE. Digitally signed by HEIKE BETTINA BETTINA ELVIRA Strysio ELVIRA Strysio Date: 2025.04.14 06:20:44 +02'00' INFORMATION ABOUT THE APPOINTMENT Respondent 1. may appeal against this Order within 15 days of its notification (Art. 73(2)(a), 62 UPCA, R. 220.1(c), 224.2(b) RoP).2025-04-16 LD Dusseldorf UPC CFI 539-2024 App 65278-2024 ORD 69127-2024 en-GB.pdfDeepL machine translation provided by www.veron.com

Key Holdings

An Order for the preservation of evidence and inspection can serve to secure evidence for the existence of individual acts of use.
R. 196.1 RoP's list of measures to preserve evidence is not exhaustive; specific measures depend on the applicant's interest and case circumstances.
An order for preservation of evidence may include the seizure of delivery notes and invoices if there is a corresponding interest.
An applicant's interest in preserving evidence is not negated by not attempting a test purchase or having some initial evidence, especially when the origin of the alleged infringing product is unclear.
Confidentiality interests of respondents are adequately protected by existing orders for participating legal representatives and experts, and the court will decide on further disclosure after the expert report.

UPC CFI 539/2024 – Bekaert Binjiang Steel Cord Co. & Ltd v Siltronic AG

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