UPC CFI 63/2025 – Nanoval GmbH & Co. KG v ALD Vacuum Technologies GmbH

Court
Local Division Munich
Date
Outcome
Application for preservation of evidence and inspection granted
Sector
Mechanics
Decision Type
Order for Preservation of Evidence and Inspection

Expert Commentary

Full Decision Text

Local Division Munich UPC CFI 63/2025 Order of the Court of First Instance of the Unified Patent Court issued on 3 February 2025 APPLICANT Nanoval GmbH & Co. KG, Kienhorststraße 61-65, 13403 Berlin, Germany represented by: Phillip Rektorschek DEFENDANT ALD Vacuum Technologies GmbH, Otto-von-Guericke-Platz 1, 63457 Hanau, Germany PATENT IN DISPUTE EP 3 083 107 DECIDING JUDGE This order was issued by the presiding judge Dr Matthias Zigann and the legally qualified judges Tobias Pichlmaier (rapporteur) and Walter Schober. LANGUAGE OF THE PROCEEDINGS German SUBJECT OF THE PROCEEDINGS Preservation of evidence and inspection (Art. 60 UPCA, Rules 192 et seq. UPC Rules of Procedure).2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/20252 FACTS OF THE CASE The applicant requests measures to preserve evidence and an inspection pursuant to Rules 192 et seq. EPGVerfO. The applicant submits that it is highly probable that the facts described below indicate an act of infringement by the defendant and that corresponding evidence must therefore be secured. The applicant points out that, in her view, there is a risk that evidence could no longer be found if the defendant aware of the measures beforehand; she therefore requests that the defendant not be informed of the application in advance. The applicant has submitted the following: The parties are competitors in the market for systems for metal atomisation and the corresponding powders produced. The applicant manufactures systems for metal atomisation and offers fine, spherical powders with reproducible properties produced on its own systems on behalf of customers. The applicant is the proprietor of the patent in suit filed on 19 December 2014, the grant of which announced on 4 December 2019. The patent relates to a device and a method for crucible-free melting of a material and for atomising the molten material for the production of powder, in particular for the production of metal or ceramic powder. Before the priority date of the patent in suit, the NANOVAL process and the EIGA process for atomising metals into metal powder were known. EIGA" stands for "Electrode Induction Melting Inert Gas Atomisation". EIGA systems have been manufactured, offered and delivered by the defendant for a long time. Based on the prior art known before the priority date of the patent, the invention proposed in the patent is based on the task of creating a device and a process with which the largest possible variety of materials can be pulverised. The particle size and the particle size distribution width of the powder produced should as adjustable as possible. The patented solution combines the advantages of inductive and thus crucible-free melting of the material to be atomised2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/20253 with atomisation of the melt by means of a Laval nozzle. Compared to the prior art, the patented innovation consists of arranging the induction coil used for melting the material relative to the atomising nozzle in such a way that it not only melts the material, but can also maintain the temperature of the melt at a minimum temperature required for the atomisation process before the melt enters the nozzle. The applicant and two group companies of the defendant, GfK Fremat GmbH and GFE Metalle und Materialien GmbH (hereinafter jointly referred to as "GfE"), used to work together. In 2014, GfE had commissioned the applicant to plan and later implement a metal atomisation plant with specific properties. However, the contract was not in this respect, i.e. GfE did not ultimately acquire a plant from the applicant. In September 2020, the defendant filed an opposition against the patent in suit with the EPO. By decision of 12 September 2024, served with reasons on 9 October 2024, the Board of Appeal of the EPO maintained the patent in the version of claim 1 set out below. Apparatus for crucible-free melting of a material and atomising the molten material to produce powder, comprising: an atomising nozzle, which is designed as a Laval nozzle and defines a nozzle axis; an induction coil with windings that become narrower at least in sections in the direction of the atomising nozzle; and a material rod inserted at least partially into the induction coil; whereby the induction coil set up to melt the material of the material rod to generate a melting current; and wherein the induction coil and the atomising nozzle are arranged such that the melt stream for atomising the melt stream by means of an atomising gas, which can introduced into the atomising nozzle, can be introduced or is introduced into the atomising nozzle through a first opening of the atomising nozzle; characterised in that that the atomising nozzle is designed in such a way that the atomising gas can only introduced or is introduced into the atomising nozzle through said first opening of the atomising nozzle;2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/20254 wherein the atomising nozzle is set up to accelerate the atomising gas laminarly in a direction parallel to the melt flow at least up to the speed of sound of the atomising gas; whereby the induction coil and the atomising nozzle are designed as separate components and the induction coil is spaced apart from the atomising nozzle along the nozzle axis; wherein the induction coil and the atomising nozzle are arranged in such a way that amine < 4-dmin, where amin is the smallest distance between the induction coil and a plane given by the minimum cross-sectional area of the atomising nozzle determined perpendicular to the nozzle axis of the atomising nozzle, and dmin is a smallest inner diameter of the atomising nozzle in said plane; and wherein the material rod, the induction coil and the atomising nozzle are arranged in such a way that at least one turn of the induction coil is arranged along the nozzle axis between the atomising nozzle and an end of the material rod facing the atomising nozzle, so that the melt stream can be inductively heated or is heated by the induction coil before the melt stream enters the atomising nozzle. The applicant is the sole owner of the patent. The opt-out declared for the patent on 10 September 2024 (App 51260/2024) was withdrawn on 23 January 2025 (App 3868/2025). The patent has not yet been the subject of national proceedings. At a trade fair in November 2024, at which the management of both parties were present, a representative of the defendant approached the applicant and requested a cross- licence in order to, among other things, licence and use the patent. The managing director of the applicant rejected this offer because he was unable to categorise the specific reason for the respondent's offer at the time (email communication submitted as Annex TW 6). The applicant had previously established that the respondent had begun to advertise a new version of its previous EIGA system ("EIGA Standard"), namely the so-called "EIGA Premium". The prospectus for this (Annex TW 4) contains information about a system and its features, but does not show any details.2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/20255 The systems at issue here are relatively large and are generally only manufactured to customer order, i.e. they are not kept in stock. They are also not available for purchase and/or inspection by everyone. The applicant, in the person of its managing director, first became aware on 7 January 2025 that these systems were actually being manufactured and sold. The applicant's managing director was made aware of a press release (Annex TW 7) from Amaero International Ltd ("Amaero"), which stated that a US company had ordered a total of three systems, the first of which was to be delivered in June 2024, a second in June 2025 and a third in June 2026. According to the applicant's understanding, the parameters of the metal powder described in the product brochure according to Annex TW 4 can only be achieved if the defendant has designed the "EIGA Premium" system in such a way that it implements the features of claim 1 of the patent in suit. The "EIGA Premium" product brochure refers to an "Entirely upgraded EIGA system with new nozzle". In the applicant's view, a "new nozzle" is evidently in the infringing mould, which has a decisive influence on the particle size and parameters. The applicant has submitted the following motions: I. It is ordered that operating instructions and system documentation for the product "EIGA Premium", in particular technical documents, operating manuals, design drawings as well as advertising and commercial documents, irrespective of their format and irrespective of whether the corresponding "EIGA Premium" products have already been manufactured and/or are still planned and/or have already been delivered, at the premises and locations of the defendant, Otto-von- Guericke Platz 1, 63457 Hanau, Germany, to be secured by 1.) the seizure or production of photocopies and/or electronic copies of the aforementioned documents relating to the aforementioned product "EIGA Premium", 2.) storage in the form of printouts, copies or photocopies and/or electronic copies,2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/20256 3.) the transfer of digital media and data relating to the aforementioned product, 4.) and the provision of passwords and other means of access required to access these documents and files, 5.) as well as the inspection of the above-mentioned premises and local conditions and any equipment of the defendant (Otto-von- Guericke Platz 1, 63457 Hanau, Germany) relating to the above-mentioned product, including any pilot or exhibition facilities and/or parts thereof, and the taking of photographs thereof, to determine whether the products of the "EIGA Premium" type are adapted and/or suitable for implementing claim 1 of European patent EP 3 083 107, and to prepare a written report to the court on the measures taken to secure evidence and the results of the inspection/inspection with regard to the alleged infringement of claim 1 of European patent EP 3 083 107. II. The written report and all other results of the measures to preserve evidence or the inspection of premises and local conditions in accordance with Section I may only be used in the main proceedings. III. The execution of this order shall be carried out by an expert person whose selection is left to the discretion of the court, whereby in addition to this person with the necessary expertise to identify and assess the facts, a locally competent bailiff shall also be involved, in particular to carry out and ensure the requirements of the applicable law and the proper implementation of the corresponding measures. IV. During the execution of this order, the presence of the following persons as representatives of the applicant, in addition to the persons named above in accordance with Section III, is permitted with regard to the preservation of evidence and the inspection of the premises and local conditions of the defendant:2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/20257 • Mr Attorney at Law Dr. Jan Phillip Rektorschek, Taylor Wessing Partnerschaftsgesellschaft mbB, Isartorplatz 8, 80331 Munich, Germany, • Patent attorney Dr Hannes Bock, Pfenning Meinig & Partner mbB, Joachimsthaler Straße 10 - 12, 10719, Berlin Germany, who be obliged to keep secret from the applicant and its employees any facts which become known to them in the course of the execution of this order and which relate to the business operations of the defendant beyond the specific patent infringement in dispute. V. The defendant is ordered to allow the persons authorised to execute this order to do so, 1.) to enter the Respondent's premises and premises referred to in Clause I above in order to preserve evidence and inspect the premises and premises as set out in the order described above, 2.) to photograph or film for documentation purposes, insofar as this is important for the ordered preservation of evidence or the ordered inspection, and to use a dictation machine to make recordings, 3.) to hand over copies of the documents relating to the ordered preservation of evidence or the ordered inspection to the persons authorised to carry out this order, in particular • Operating instructions for the "EIGA Premium" product; • System documentation for the "EIGA Premium" systems already manufactured, planned and/or delivered; • technical documents, operating manuals, design drawings as well as advertising and commercial documents, regardless of their format and irrespective thereof, whether the corresponding "EIGA Premium" products have already been manufactured and/or are still planned and/or have already been delivered.2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/20258 VI. In the event of non-compliance or failure to comply with this order, the defendant is obliged to pay the court a penalty payment of EUR 2,500 per day for each day on which the defendant fails to comply with this order. VII. This order is enforceable immediately and without further conditions. VIII. The measures described above are to be taken without prior consultation with the defendant, alternatively with a prior written hearing, setting a reasonably short deadline. IX. The defendant is ordered to pay the costs of the proceedings.2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/20259 REASONS At the request of the applicant, the requested preservation of evidence and inspection is to be ordered. I. Substantiated allegation of patent infringement According to the petitioner's request for the preservation of evidence and inspection, it must be assumed that the patent in dispute is infringed or at least threatened to be infringed by the respondent. 1. Subject matter of the patent in suit The patent relates to a device and a method for crucible-free melting of a material and for atomising the molten material to produce powder, in particular for producing metal or ceramic powder. Based on the prior art known before the priority date of the patent, the invention proposed in the patent is based on the task of creating a device and a process with which the largest possible variety of materials can be pulverised. The particle size and the particle size distribution width of the powder produced should be as adjustable as possible. Compared to the prior art, the patented innovation consists in arranging the induction coil used for melting the material relative to the atomisation nozzle in such a way that it not only melts the material, but can also maintain the temperature of the melt at a minimum temperature required for the atomisation process before the melt enters the nozzle. Claim 1 of the patent in suit can be structured as follows: 1.1 Apparatus for crucible-free melting of a material and atomising the molten material to produce powder, comprising: 1.2 an atomising nozzle, which is designed as a Laval nozzle and defines a nozzle axis; 1.3 an induction coil with windings that become narrower at least in sections in the direction of the atomising nozzle;2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202510 1.4 and a material rod inserted at least partially into the induction coil; 1.5 whereby the induction coil is set up to melt the material of the material rod to generate a melting current; 1.6 and wherein the induction coil and the atomising nozzle are arranged such that the melt stream for atomising the melt stream by means of an atomising gas, which can be introduced into the atomising nozzle, can be introduced or is introduced into the atomising nozzle through a first opening of the atomising nozzle; 1.7 characterised in that the atomising nozzle is designed in such a way that the atomising gas can only be introduced or is introduced into the atomising nozzle through the said first opening of the atomising nozzle; 1.8 wherein the atomising nozzle is set up to accelerate the atomising gas laminarly in a direction parallel to the melt stream at least up to the speed of sound of the atomising gas; 1.9 whereby the induction coil and the atomising nozzle are designed as separate components and the induction coil is spaced apart from the atomising nozzle along the nozzle axis; 1.10 wherein the induction coil and the atomising nozzle are arranged such that amin < 4-dmin, wherein amin is the smallest distance between the induction coil and a plane given by the minimum cross-sectional area of the atomising nozzle determined perpendicular to the nozzle axis of the atomising nozzle, and wherein dmin is a smallest inner diameter of the atomising nozzle in said plane; 1.11 and wherein the material rod, the induction coil and the atomising nozzle are arranged in such a way that at least one turn of the induction coil is arranged along the nozzle axis between the atomising nozzle and an end of the material rod facing the atomising nozzle, so that the melt stream can be inductively heated or is heated by the induction coil before the melt stream enters the atomising nozzle. 2. Possible infringement of the patent in suit The applicant's request concerns the system advertised by the defendant "EIGA Premium". Based on the defendant's product brochure, this is supposed to be a revised version of the already known "EIGA2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202511 Standard", which has been equipped with a new nozzle compared to the standard version ("entirely upgraded EIGA system with new nozzle"). The "EIGA Standard" plant is used to atomise metals into metal powder. In the opposition proceedings before the European Patent Office, the defendant submitted the following excerpted technical drawing of the system it sells: In its protective documents of 18 October 2023 and 17 October 2024, the defendant merely argued that the attacked embodiment does not have a patent-compliant Laval nozzle (feature 1.2) and therefore does not realise the independent claims of the patent in suit. The defendant has left open whether the system designated by it as the "attacked embodiment" in the protective documents of 18 October 2023 and 17 October 2024 is the "EIGA Standard" or the "EIGA Premium". The defendant justified the lack of legal validity of the patent in dispute in its view by arguing, among other things, that a combination of the "EIGA" technology with a Laval nozzle was suggested by the prior art. The applicant, on the other hand, is of the opinion that the EIGA standard systems of the defendant already have a Laval nozzle. Only feature 1.7 of the patent in suit is not realised with the EIGA standard. It has submitted the following drawing, which it has labelled:2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202512 In the protective documents submitted by the defendant (p. 7 et seq. in each case), the defendant argued that the cross-section of a Laval nozzle initially narrows in the direction of flow (convergent section) and then widens (divergent section). According to this submission and the defendant's technical drawing of the "EIGA Standard" system, the Munich Local Division (Division 1) assumes that the "EIGA Standard" system already has a Laval nozzle. The question of whether there are sufficient indications that a Laval nozzle is also contained in the contested embodiment "EIGA Premium" and that it is designed there in accordance with feature 1.7 of the patent in suit in such a way that the atomising gas can only be introduced or is introduced into the atomising nozzle through the said first opening of the atomising nozzle is answered in the affirmative by the local division. The technical drawing submitted by the respondent in the opposition proceedings shows an EIGA standard system in which, contrary to feature 1.7, gas is introduced through several laterally arranged nozzles (see also the principle sketch on p. 18 of the respondent's written submission in the opposition proceedings of 2 December 2021). In the opposition proceedings, the respondent also submitted that, based on the citation referred to there as D5 (EIGA), the implementation of a Laval nozzle arrangement with feature 1.7, among others, leads to the production of finer-grained powder. It is precisely this, the possibility of producing finer-grained powder compared to a standard EIGA system, that is shown by the defendant's advertising of the "EIGA Premium" systems:2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202513 All this, combined with the fact that the respondent initially challenged the patent in suit with an opposition and - after the Board of Appeal did not revoke the patent in suit in its decision of 12 September 2024 - requested a cross-licence from the applicant.2024 - requested cross-licensing the applicant, gives rise to the considerable suspicion that the atomisation system "EIGA Premium" presented by the respondent according to Annex TW 4 has a patent-compliant Laval nozzle in which the atomisation gas can only be introduced into the atomisation nozzle through the first opening of the atomisation nozzle in order to be able to produce finer-grained powder. II. Legal status of the patent in suit The Opposition Division of the European Patent Office rejected the respondent's opposition to the patent in suit. The competent Board of Appeal of the European Patent Office dismissed the appeal against this decision on 12 September 2024. As a result, the patent in suit is to be regarded as legally valid for the purposes of the preservation of evidence and inspection, without the need for further examination of the legal status within the scope of the request for preservation of evidence and inspection. III. Securing legally relevant evidence The applicant has applied for the securing (seizure, storage and handover) of evidence. In this case, pursuant to Art. 60 para. 2 UPCA operating instructions and system documentation relating to the product "EIGA Premium" (in particular technical documents, operating manuals, design drawings and advertising and commercial documents, regardless of format). As a milder means in relation to the confiscation of2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202514 The requested production of copies of the documents in question was also to be authorised. The object of the preservation of evidence is also the affected installations ("EIGA Premium") themselves (Item I. 5.) of the application). However, these are not to be confiscated, but merely documented photographically. It is irrelevant whether the aforementioned evidence relates only to the planning stage of the product or to systems or parts of systems that have already been manufactured or are intended for delivery. According to the request, the preservation of evidence should enable the applicant to determine whether the products of the type "EIGA Premium" are arranged and/or suitable for realising claim 1 of the European patent EP 3 083 107. Consequently, these findings do not have to be made by the person skilled in the art appointed to implement the order. The skilled person must provide the court with a written report on the measures taken to secure evidence and the results of the inspection/visit carried out with regard to the alleged infringement of claim 1 of European patent EP 3 083 107; an expert opinion on the question of patent infringement is not required. IV. Inspection of premises Insofar as the applicant has requested the inspection of the defendant's premises in addition to the preservation of evidence, she has specifically designated these premises (Otto-von-Guericke Platz 1, 63457 Hanau, Germany). The inspection is necessary in addition to the measures to preserve evidence, as the documents mentioned and the corresponding devices are likely to be located on the defendant's premises. V. Person appointed by the court The local division appoints the patent attorney Nils T.F. Schmid to carry out the measures specified in the following order. As a patent attorney, Mr Nils T.F. Schmid guarantees the expertise and professional competence to carry out the aforementioned measures. Mr Nils T.F. Schmid studied mechanical engineering at the Technical University of Karlsruhe and at the California University of Technology.2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202515 Institute of Technology (Caltech), specialising in materials science and technical mechanics. In addition, he completed a Master's degree (DEA) at the École Nationale Supérieure d'Arts et Metiers (ENSAM) in Paris in the field of development and conceptualisation of new types of products. Mr Nils T.F Schmid has been a patent attorney for over 20 years; he has already acted as a patent law expert in patent infringement proceedings. As a patent attorney and thus as an organ of the administration of justice, Nils T.F. Schmid guarantees independence and impartiality. In the view of the Local Chamber, it is appropriate and also permissible under applicable German law for Mr Nils T.F. Schmid to be assisted by a bailiff in accordance with the application. VI. Decision without hearing the defendant According to Art. 60 para. 5 UPCA, the measures for the preservation of evidence and inspection can be ordered without hearing the other party if necessary. A prior hearing is particularly necessary if the applicant demonstrates that there is a risk that evidence will be destroyed in the event of a prior hearing. However, this does not require evidence to be provided; it is sufficient to demonstrate circumstances that justify the court's belief that evidence could be destroyed. An order without hearing the opposing party is appropriate in the present case from the perspective of the local division. The applicant has stated that there is a risk that the evidence to be secured would no longer be fully available in the event of a prior hearing. The product in question and the corresponding documents cannot be obtained by the applicant; a test purchase is not possible given the nature and dimensions of the product. The applicant is therefore particularly dependent on the cooperation of the defendant in order to establish the facts of the case. However, the defendant did not co-operate before the application was filed. The defendant has already filed two protective letters and thus used the opportunity to present the facts of the case; sufficiently concrete information on the design of the product has not been provided.2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202516 of the product designated by the defendant as the attacked embodiment cannot be found therein, however, especially since the product concerned not even specified in more detail ("EIGA Standard" or "EIGA Premium"). The defendant also did not provide any information on its "EIGA Premium" product in response to the applicant's request for authorisation dated 23 January 2025, although applicant specifically asked about the "new nozzle" of the "EIGA Premium" and addressed the parameters listed in the "EIGA Premium" brochure. The defendant has thus shown that it does not wish to cooperate voluntarily in clarifying the facts of the case. Based on this, it is not far-fetched to assume that once the defendant had prior knowledge of the planned implementation of measures to secure evidence, it would no longer possible to fully secure evidence. The applicant would suffer irreparable damage as a result. VII. Necessity and proportionality of the order The requested protective measures are necessary in order to clarify a possible claim of the applicant for patent infringement and to secure corresponding evidence. The applicant has no equally suitable means of securing evidence; in particular, a test purchase is not possible due to the nature of the product in question. The order is also proportionate. The legal validity of the patent in dispute is to be regarded as secured. Without this order, the applicant has no possibility of being able to demonstrate any infringing acts of the defendant in a court of law in main proceedings. The inspection and preservation of evidence can also be carried out without major interventions in ongoing operations; significant disruptions to the defendant's operations are not to be expected. The seizure of products is not the subject of the order. IIX. Protection of confidential information In order to protect confidential information, the applicant's representatives and the specialist were obliged to refrain from disclosing any facts that became known to them during the execution of this order and the the business operations of the2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202517 The court also ordered the defendant to keep the information concerning the defendant secret from the applicant and its employees until the court orders otherwise. In preparation for the release of the expert's written report to the applicant, the written report will initially only be made available to the applicant's legal representatives and the defendant. The defendant may request redactions within 7 working days of receipt of the written report. The expert is instructed to ensure that confidential information of the defendant that does not contribute to the question of patent infringement is not mentioned in the written report. IX. Security deposit Pursuant to Rules 196.3 and 196.6 EPG-VerfO, the Local Division orders the applicant to provide security in the amount of € 30,000.00. A security was to be ordered in particular because special circumstances within the meaning of Rule 196.6 sentence 2 EPG-VerfO have neither been presented nor are otherwise apparent. The security may be provided in the form of a deposit or an irrevocable, unconditional, unlimited and directly enforceable guarantee on first demand by a credit institution domiciled in the territory of the UPC contracting member states and authorised to do business. The applicant must provide the guarantee by 28 February 2025. If it fails to meet this deadline, the court may order coercive measures (Rule 196.3 UPC Rules of Procedure). The order of immediate enforceability results from Rule 196.3 EPGVerfO. X. Costs A decision on the bearing of costs will be made at a later date. However, the direct compensation of the expert commissioned to carry out the safety measures by the applicant should already be ordered now. The amount to be invoiced by the authorised specialist in this respect cannot be estimated with sufficient certainty at present.2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202518 ORDER I. It is ordered that operating instructions and system documentation for the product "EIGA Premium", in particular technical documents, operating manuals, design drawings as well as advertising and commercial documents, irrespective of their format and irrespective of whether the corresponding "EIGA Premium" products have already been manufactured and/or are still planned and/or have already been delivered, at the premises and locations of the defendant, Otto-von- Guericke Platz 1, 63457 Hanau, Germany, to be secured by 1. the seizure or production of photocopies and/or electronic copies of the aforementioned documents relating to the aforementioned product "EIGA Premium", 2. storage in the form of printouts, copies or photocopies and/or electronic copies, 3. the transfer of copies of digital media and copies of data relating to the aforementioned product, 4. and the provision of passwords and other means of access required to access these documents and files and to make copies, 5. as well as the inspection of the above-mentioned premises and local conditions and any equipment of the defendant (Otto-von- Guericke Platz 1, 63457 Hanau, Germany) relating to the above-mentioned product, including any pilot or exhibition facilities and/or parts thereof, and the taking of photographs thereof, to determine whether the products of the "EIGA Premium" type are adapted and/or suitable for implementing claim 1 of European patent 3 083 107, and to prepare a written report to the court on the measures taken to secure evidence and the results of the inspection/inspection with regard to the alleged infringement of claim 1 of European patent EP 3 083 107.2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202519 The written report on the evidence-gathering measures must be submitted to the court within one week of the inspection; an expert opinion on the question of patent infringement is not required. As soon as the written report is available to the court and after hearing the defendant, the court will decide whether to make the report available to the claimant. The written report and all other results of the measures to preserve evidence and the inspection of premises and local conditions in accordance with Section I may only be used in the main proceedings. II. This arrangement is implemented by Mr Nils T.F. Schmid, Patent Attorney, Oberanger 45, 80331 Munich whereby, in addition to the latter, a locally competent bailiff should also be called in, in particular to carry out and ensure the requirements of the applicable law and the proper implementation of the corresponding measures. Patent attorney Nils T.F. Schmid is obliged to maintain secrecy with regard to facts that become known to him in the course of the notification and execution of this order and that concern the business operations of the defendant, also vis-à-vis the applicant and its employees, until the court issues a different order. Patent attorney Nils T.F. Schmid is also obliged to inform the court promptly after notification of this order whether he is prevented from carrying out the order due to a conflict of interest. In the event of a culpable breach of one of the aforementioned obligations, the court may order a penalty payment up to EUR 200,000 per breach against patent attorney Nils T.F. Schmid. III. During the execution of this order, the presence of the following persons as representatives of the applicant, in addition to the persons named above in accordance with Section II, is permitted with regard to the preservation of evidence and the inspection of the premises and local conditions of the respondent:2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202520 • Dr Jan Phillip Rektorschek, lawyer, Taylor Wessing Partnerschaftsgesellschaft mbB, Isartorplatz 8, 80331 Munich, Germany, • Patent attorney Dr Hannes Bock, Pfenning Meinig & Partner mbB, Joachimsthaler Straße 10 - 12, 10719, Berlin Germany, They are obliged to keep secret any facts that become known to them in the course of the execution of this order and that relate to the business operations of the defendant, including from the applicant and its employees, until the court issues a different order. In the event of a culpable offence, the court can order a penalty payment of up to EUR 200,000 per offence against these persons. IV. The defendant is ordered to permit the persons present during the execution of this order (Patent Attorney Nils T.F. Schmid, bailiff, Attorney Dr Jan Phillip Rektorschek, Patent Attorney Dr Hannes Bock) to enter the premises and locations of the defendant named in I. above. The defendant is further ordered to allow the persons authorised to execute this order (Mr Patent Attorney Nils T.F. Schmid, bailiff) to 1. to secure evidence and inspect the premises and locations in accordance with Section I. of this order, 2. to photograph or film for documentation purposes, insofar as this is important for the ordered preservation of evidence or the ordered inspection, and to use a dictation machine to make recordings, 3. to hand over copies of the files and documents relating to the ordered preservation of evidence or the ordered inspection to the persons authorised to carry out this order, in particular • Operating instructions for the "EIGA Premium" product; • System documentation for the "EIGA Premium" systems already manufactured, planned and/or delivered;2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202521 • technical documents, operating manuals, design drawings as well as advertising and commercial documents, regardless of their format and regardless of whether the corresponding "EIGA Premium" products have already been manufactured and/or are still planned and/or have already been delivered. V. In the event of non-compliance or failure to comply with this order, the defendant is obliged to pay the court a penalty payment of up to EUR 200,000 per day for each day on which the defendant culpably fails to comply with this order. VI. This order is enforceable immediately and without further conditions. The applicant is ordered to serve a copy of this order and of the application, together with the annexes, on the applicant on the day on which these measures are implemented. VII. It is ordered that the applicant shall provide security in the amount of € 30,000.00 by 28 February 2025. The security can either be - by an irrevocable, unconditional, unlimited and directly enforceable guarantee at the first request of a credit institution established in the territory of the EPC contracting member states and authorised to do business or - by depositing the security amount in the account of the Unified Patent Court set up for this purpose (indicated under item 3 on the website www.unified- patent-court.org/de/court/payments) be provided. Should the applicant fail to provide the security in due time, the order to preserve evidence will be cancelled. Furthermore, the defendant is obliged to pay a penalty payment of € 30,000 to the court if the security is not provided. X. The applicant shall compensate Mr Nils T.F. Schmid, patent attorney, for the implementation of this order. The amount of the remuneration for the implementation of this order shall be specified in the written report to be submitted in a2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com UPC CFI 63/202522 a separate section. The applicant must inform the court of the date and amount of the reimbursement of costs to patent attorney Nils T.F. Schmid. IX. An appeal may be lodged against the order to preserve evidence in accordance with Article 73 UPCA and Rule 220.1 UPC Rules of Procedure. X. Within 30 calendar days of the enforcement of the measure, the defendant may request a review of the order to preserve evidence (Rule 197.3 EPGVerfO). XI. The order to preserve evidence will be revoked or otherwise set aside at the request of the Respondent, without prejudice to any claims for damages, if the Applicant does not initiate the main proceedings in the case within a period of 31 calendar days or 20 working days - whichever is longer - from 28 February 2025 (Rule 198.1 EPGVerfO). Vienna and Munich3 February 2025 Dr Zigann Presiding Judge Matthias Digitally signed by Matthias ZIGANN ZIGANN Date: 2025.02.03 18:18:58 +01'00' Dr Schober Legally qualified judge Walter Digitally signed by Walter Schober Schober Date: 2025.02.03 18:14:11 +01'00' Pichlmaier Legally qualified judge Rapporteur Tobias Günther Digitally signed by Tobias Günther Pichlmaier Pichlmaier Date: 2025.02.03 17:41:09 +01'00'2025-02-03 LD Munich UPC CFI 63-2025 ACT 3930-2025 ORD 4338-2025 en-GBDeepL machine translation provided by www.veron.com

Key Holdings

  • The court ordered the preservation of evidence and inspection of operating instructions, system documentation, and premises related to the 'EIGA Premium' product to determine potential infringement of European patent EP 3 083 107.
  • Patent Attorney Nils T.F. Schmid was appointed as the expert to carry out the ordered measures, assisted by a locally competent bailiff.
  • The order was issued immediately and without prior hearing of the defendant (ex parte) due to the demonstrated risk that evidence could be destroyed or no longer fully available.
  • Strict confidentiality obligations were imposed on the expert and the applicant's legal representatives regarding any business operations of the defendant beyond the specific patent infringement in dispute.
  • The applicant was ordered to provide a security deposit of €30,000 by 28 February 2025, with failure to comply leading to the cancellation of the order to preserve evidence.

Tags

  • Ex Parte Order
  • Infringement
  • Inspection
  • Preservation of Evidence
  • Unified Patent Court

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