Applicant v Defendant (CFI, 3 March 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 3 March 2025 (UPC_CFI_142/2025), the Mannheim Local Division, through Judge Tochtermann acting as presiding judge and judge-rapporteur, rejected an application for an order to preserve evidence and inspect premises filed, before any action on the merits, by the proprietor of a European patent. The parties’ names and the patent number are redacted in the published version. The applicant bears the costs of the application.

The order sets a demanding threshold: a sufficient degree of probability of infringement, substantiated by facts, rather than an explanation of why infringement cannot be ruled out. It also casts serious doubt on a measure requiring the defendant to build a test setup itself, at its own cost.

Facts and procedure

The applicant, registered sole proprietor of the patent (in force in Germany, Italy, France and the Netherlands, opt-out withdrawn), applied on 19 February 2025 for evidence preservation measures directed at a product or system of the defendant, to be ordered without hearing the defendant or, in the alternative, after hearing it. The measures sought included inspection of a branch office, real-time monitoring of a test setup which the defendant would have had to provide within one month, preservation of digital evidence, seizure or copying of technical documents and an expert report. The applicant relied on an expert opinion (Exhibit C2). No action on the merits had yet been brought.

The applicable law

The division relied on Art. 60 UPCA and Rule 192 RoP, read with Art. 7 of Directive 2004/48/EC. It held that these provisions carry an inherent requirement of a minimum degree of plausibility of infringement or threatened infringement, since an inspection based on bare allegations would be disproportionate under Art. 42(1) UPCA and the preamble to the Rules of Procedure. Following academic commentary, it treated the omission of the word « sufficient » from Art. 7 of the Directive, as opposed to Art. 6, as an obvious drafting error. It followed the line of C-Kore Systems v Novawell, Paris Local Division, 14 November 2023 and C-Kore Systems v Novawell, Paris Local Division, 1 March 2024 (paragraph 1).

Question

Must a patent proprietor seeking a saisie before any action on the merits show a sufficient degree of probability of infringement, and can the defendant be required to build a test setup to enable the inspection?

Decision

The application was rejected. Explaining why infringement cannot be excluded is not enough: the applicant must put forward facts which, on the specific circumstances, establish a probability of infringement. Where a technical result can be achieved in several ways, it must point to facts indicating the patented solution, or explain why the alternatives are unlikely. These requirements apply with particular force where the application precedes the main action, as the division cannot draw on the briefs on the merits (Rule 192.2) (paragraph 1).

Here, some features were adequately shown, but neither the expert opinion nor the application established that the scenario relied on for two other features was more likely than not, given the other possible implementations (paragraph 3). Requiring the defendant to set up a complete test environment at its premises and at its own cost was highly questionable: Art. 60 and Rule 192 appear to require only that the defendant tolerate the inspection, Rule 196.1(d) describing the permissible assistance (access, power, consumables, entering passwords). Any active obligation would in any event call for an even higher likelihood of infringement (paragraph 4). Nor did the application explain why evidence was likely to be found at the branch office (paragraph 5), and an ex parte order made no sense, since the one-month setup requirement would alert the defendant anyway (paragraph 6). No hearing was needed, as the order did not adversely affect the defendant (paragraph 2).

Key points for practice

• The Mannheim threshold is a sufficient degree of probability of infringement, grounded in facts specific to the case. An argument that merely rules out non-infringement will not do.
• Where several technical implementations are possible, the file must explain why the patented solution is the most likely one.
• Measures requiring active participation by the defendant (building a test rig) run up against the limits of Rule 196.1(d) and call, at best, for a stronger showing.
• Practical point: a saisie sought before the main action must be especially well documented, and each site to be inspected must be supported by material suggesting that evidence will be found there.

Provisions applied

Agreement on a Unified Patent Court

Art. 42(1) and Art. 60

Rules of Procedure

Rules 192, 192.2 and 196.1(d)

Directive 2004/48/EC

Art. 6 and 7

Case law cited

C-Kore Systems v Novawell, Paris Local Division, 14 November 2023 (UPC_CFI_397/2023), C-Kore Systems v Novawell, Paris Local Division, 1 March 2024 (UPC_CFI_397/2023).

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.