UPC Blog Series: Part 6: Decisions, Decisions: UPC Milan Local Division

Background

By applications filed respectively on 12 June and 13 June 2023, Oerlikon Textile GmbH & Co. K.G. initiated two proceedings against Himson Engineering Private Limited and Bhagat Group, seeking an order to preserve evidence in compliance with RoP 192 ff on the basis of the European patent EP 2145848 titled 'false twist texturing machine'.

The action stemmed from allegations that the defendants were showcasing machines at the ITMA International Textile Trade fair in Rho (near Milan) that appeared to infringe Oerlikon's patent.

With the ITMA fair scheduled to conclude on June 14, 2023, Oerlikon emphasised the extreme urgency of the case.

The Judge’s Handling of the Cases

Initially, the cases were assigned to Standing Judge Mélanie Bessaude, who took into account the limited time remaining before the fair's conclusion and referred them to the Presiding Judge in the Milan Local Division for further review under RoP 194(3) and (4).

Due to the urgency and impracticality of convening a panel of judges, the Presiding Judge appointed Judge Alima Zana (also a Judge of the Court of Milan, and skilled in patent matters) as the single Judge to promptly decide on the applications.

The Decisions

The Judge split the decisions into four sections, in addition to the ruling.

The first two sections are entitled "Fumus boni iuris" (prima facie validity of the enforced right and infringement), and "Periculum in mora" (urgency), like the requirements for granting the Italian measure to preserve evidence, called "descrizione".The third section addresses fee payment as per RoP 192(5), while the fourth section covers the provisions for executing the measure.

Fumus boni iuris

Firstly, the Judge acknowledged the existence of:

• the jurisdiction, since the claims formulated by the applicant fell in those provided by Article 32(1)(c) UPCA, and the enforced right was a European patent not opted out;
• the competence of the Milan Local Division according to Article 33(1) (a) UPCA, since Italy is the “forum commissi delicti”, i.e. the place where the alleged infringement of the patent is taking place or is otherwise threatened. Furthermore, the applications for the preservation of evidence appeared to have been filed before the same Division where the claimant declared their intention to institute proceedings on the merits, as per RoP 192(1).

Additionally, the Judge determined that the claimant's applications met the requirements outlined in RoP 192(2), as they included:

• a clear indication of the measures requested, including the exact location of the evidence to be preserved (i.e. displayed on the stand at the ITMA trade fair);
• the reasons why the requested measures were necessary to preserve the evidence deemed relevant (i.e. that this evidence was necessary to establish the infringement and its extent); and
• the facts and evidence underlying the requests.

Specifically, the evidence submitted by the applicant in both cases to support the infringement claims, consisted of photographs of the allegedly infringing machines and posters taken at the fair's stand, and technical opinions drafted by a patent attorney appointed by the applicant were included.

The Judge observed that these pieces of evidence seemed to provide circumstantial confirmation of the contested machines reproducing the features claimed by the enforced patent, thus justifying the application to preserve evidence. The Judge emphasised that these requested measures primarily served to safeguard the right to preserve evidence, and only secondarily, to protect the enforced patent itself.

Moreover, as to the enforced patent, the Judge noted that no opposition had been filed against it at the European Patent Office (EPO), and no protective letters appeared to have been filed in the UPC Case Management System.

Periculum in mora

The Judge acknowledged the presence of an extreme urgency requirement, as the trade fair showcasing the contested machines was nearing its conclusion.

Furthermore, the Judge determined that the conditions specified in RoP 197(1) and 60(5) UPCA for granting the measure without the defendants' presence at a hearing were satisfied. The reasons for meeting these requisites included that:

• time constraints did not allow the parties to be summoned in a hearing before the end of the trade fair;
• there was a risk that the evidence would no longer have been accessible to the applicant once the trade fair ended, as the defendants were based in India and the evidence to be preserved could easily be concealed or destroyed.

Provisions related to the execution of the measures

The Judge highlighted that the balance of interests between the parties and the application of the proportionality principle, as stipulated in Article 41 and 42 UPCA, favoured the granting of the ex parte order.

As a result, the Judge granted the applicant's request for the preservation of evidence and authorised them to obtain copies of all technical, promotional, and/or commercial documentation relating to the contested machines available at the ITMA trade fair stand.

In accordance with the national Italian law as per RoP 196(4), the Judge directed that the measures should be executed, if possible, at times other than those intended for the public opening of the trade fair, or during periods of less footfall at the defendant's stand. This decision was made considering the balance of interests and the proportionality principle. The execution was to be carried out by:

• the bailiff;
• an expert chosen by the Judge from the list of the experts skilled in patent matters, generally appointed by the Court of Milan (as “Court Technical Expert” in Italian patent proceedings), who could guarantee expertise, independence and impartiality in compliance with RoP 196(5); and
• the external legal and technical counsels of the applicant (not the internal counsels).

The Judge instructed the expert to submit a report to the Court detailing the activities conducted, and to file the documents collected during the execution of the measures. Additionally, the Judge ruled that access to these documents would be restricted solely to the two external legal counsels and one technical counsel representing the applicant, in accordance with Article 58 UPCA and 196(1) RoP. Furthermore, the documents could only be used in future proceedings which related to the merits of the case.

Furthermore, the Judge declared the order to be immediately enforceable in line with RoP 196(3) and deemed it unnecessary to require a security as per RoP 196(6). This decision was based on the following considerations:

• the measure to preserve evidence does not have, per se, a repressive or restrictive content for the activities of the defendant;
• the applicant completed in a very short period of time all the assessments needed to file the application, and the end of the trade fair was imminent and consequently a security could prejudice the execution of the measures; and
• the applicant belonged to a large group, thus it was capable of compensating for the possible damages caused to the defendant during the execution of the measures.

So what does this tell us?

As expected, the UPC Milan Local Division seems inclined to grant orders to preserve evidence, likely influenced by the extensive experience of Italian Judges in dealing with a similar Italian measure called "descrizione." In Italy, descrizione is commonly ordered ex parte, enabling a bailiff (along with a Court Technical Expert and often the applicant's counsels) to access the premises of the alleged infringer and gather evidence of the suspected infringement and its extent, which is then used in subsequent proceedings on the merits.

The reasoning behind the commented orders by the UPC Milan Local Division reflects a strong influence of the Italian "colour local" associated with descrizione. This is evident in the references to "fumus boni iuris" and "periculum in mora," as well as the consideration of the balance of interests and proportionality in favour of the applicant. Additionally, the decision to grant the measure ex parte, and the dispensation of a security requirement, are commonly seen in Italian orders granting descrizione.