Primetals Technologies Austria v Danieli & C. (CFI, 11 September 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 11 September 2024 (UPC_CFI_337/2024, ACT_36483/2024, ORD_51269/2024), the Milan Local Division (P. Perrotti, presiding and judge-rapporteur, A. Kupecz, A. Zana) granted, without hearing the defendants, Primetals Technologies Austria GmbH’s application to preserve evidence and inspect the premises of Danieli & C. S.p.A. and Danieli Automation S.p.A. in Buttrio, on the basis of EP 2 624 977, which concerns a driver for a steel strip coiling installation.

The main interest of the order lies in the applicant’s access to the expert’s report: drawing on the Court of Appeal’s decision of 23 July 2024, the division accepts that disclosure of the results to the applicant is part of the purpose of the measure, while deferring it so that the defendants can raise confidentiality, thereby departing from its earlier practice.

Facts and procedure

The application was filed on 5 July 2024 and supplemented on 18 July 2024. Primetals states that in September 2023, at the Nucor Steel Gallatin plant (Kentucky, United States), it found a Danieli coiler driver which in its view reproduces claims 1, 2, 5, 7 and 10 of the patent. It relies on a photograph of a control cabinet labelled « Danieli Automation », a statement by an employee who visited the site on 6 September 2023, an expert report and a Danieli presentation at the AISTech conference in May 2024. The supporting roller is not visible in the photographs and the respective roles of the two defendants remain unclear.

The applicable law

Jurisdiction rests on Arts. 32(1)(c) and 33(1)(b) UPCA, both defendants being based in Buttrio, and on Art. 60(1) UPCA. Rules 192 et seq. RoP govern the content of the application and the execution of the measures, Rule 197 RoP allowing an order without hearing the defendant where there is a demonstrable risk of evidence being destroyed (Art. 60(5) UPCA). Art. 7 of Directive 2004/48 is also referred to.

Question

Are the conditions met for an ex parte order to preserve evidence and inspect premises, and on what terms may the applicant access the results?

Decision

The division holds that the validity of the patent is not in doubt at this stage, no opposition or revocation action being known (section 3.1), and that infringement is reasonably plausible in light of the photographs, the witness statement, the expert report and the AISTech material, although further evidence is needed (section 3.2). A test purchase is impractical, the shared customer makes enquiries difficult and digital data can easily be hidden or erased, which justifies proceeding ex parte (sections 4.1 and 4.2). The balance of interests favours the applicant (section 6.1).

The order authorises simultaneous inspection of both sites by an expert from the court’s list, assisted by a bailiff and two computer forensics experts, with keyword searches of digital data, descriptions, photographs and videos of the machines, and recourse to the police under Italian law. The applicant’s representatives attending are bound to secrecy, including towards their own client. The report is to be filed within two days of the operations. The applicant may access it only from 30 October 2024, unless the defendants request confidentiality, on which the division will rule (section 6.3). The period for bringing the action on the merits, 31 calendar days or 20 working days, runs from disclosure of the evidence. Enforcement is conditional on security of EUR 25,000 (section 6.6) and costs are reserved.

Key points for practice

• Disclosure of the report to the applicant is part of the purpose of the measure, but only follows once the defendant has been able to raise confidentiality.
• The period for starting proceedings on the merits runs from disclosure of the evidence to the applicant, not from execution of the measure.
• Searches of digital data are confined by a list of keywords supplied by the applicant.
• Practical point: the Milan Local Division grants an ex parte saisie on the basis of observations made outside the European Union, provided the link with the defendants and the risk of data disappearing are shown.

Provisions applied

Agreement on a Unified Patent Court

Arts. 32(1)(c), 33(1)(b), 60 and 73(2)(a)

Rules of Procedure

Rules 192, 194, 196, 197, 198, 199, 220.1 and 224.2

Directive 2004/48/EC

Art. 7(1) and (3)

TRIPS Agreement

Art. 50(6)

Case law cited

Progress Maschinen & Automation v AWM, Court of Appeal, 23 July 2024 (UPC_CoA_177/2024), Milan Local Division, UPC_CFI_286/2023 and UPC_CFI_287/2023

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.