Progress Maschinen & Automation v AWM (CFI, 25 September 2023)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 25 September 2023, made on two identical joined applications (UPC_CFI_286/2023 and UPC_CFI_287/2023), the Milan Local Division allowed Progress Maschinen & Automation (PMA), without hearing the defendants, to carry out a simultaneous inspection and preservation of evidence at the premises of AWM and Schnell in Italy, before any action on the merits based on EP 2 726 230. The order sets out the conditions of an ex parte measure: a demonstrable risk of evidence being lost, proportionality, supervision by experts, confidentiality and security of EUR 50,000.

Facts and procedure

PMA, proprietor of a patent for a method (claim 1) and an apparatus (claim 8) for the continuous production of lattice girders, alleged that AWM marketed the Girderflex and Girderflex VSX machines, priced at around EUR 2,000,000. Two machines had reportedly been sold in the Netherlands and Belgium, another offered to an Italian customer in July 2023, and AWM was due to exhibit at the BIBM congress in Amsterdam at the end of September 2023. The available material (a website picture, a screenshot of an online video) showed height adjustment of the upper chord, but not the cutting and adjustment operations during production. The applications were filed on 23 August 2023.

The applicable law

The Division based its jurisdiction on Arts. 32(1)(c) and 33(1)(b) UPCA. It applied Art. 60 UPCA (paragraphs 1, 5, 6 and 8) and Rules 192 to 199 RoP, in particular Rule 192.2 on the content of the application, Rule 197 on measures ordered without hearing the defendant and Rule 196 on the conduct of preservation and inspection.

Question

Were the conditions met for preservation of evidence and inspection without hearing the defendants, and could both the operating company and its group company be targeted?

Decision

The application met the requirements of Rule 192.2 RoP and PMA intended to bring an action on the merits. Validity was taken as established at this stage, the patent having been maintained as granted by an EPO Board of Appeal. There was reasonable evidence of possible infringement, but the cutting and height adjustment features were not visible, so further evidence was needed. The risk of destruction was demonstrated, since digital data can easily be hidden or erased if the defendants are given notice (Art. 60(5) UPCA). The balance of interests favoured PMA. As AWM had joined the Schnell group in 2022, a centralised archive was considered highly probable, which justified inspecting both sites. Two experts, assisted by a bailiff and if need be a computer forensics expert, were to collect technical, promotional and commercial documents, including data on any device or cloud storage, and describe the machines with photographs and video. Only four named persons could attend on PMA’s behalf, bound by confidentiality. The report, filed with the Registry the day after the operations, could be used only in the merits proceedings and was not accessible without a decision of the Court. The measures lapse if no action on the merits is brought within the longer of 31 calendar days or 20 working days. Enforcement was conditional on security of EUR 50,000, or 2.5% of the estimated value. The defendants may request a review within 30 days of execution. An appeal lies within 15 days of notification.

Key points for practice

• The lack of public information on the steps of the patented method in itself justifies recourse to preservation of evidence.
• Group membership may support an inspection at a group company’s premises, given the likelihood of centralised records.
• The Division set security by reference to the value of the case (2.5%) and protected commercial information through a closed list of attendees and a confidential report.
• Practical point: an imminent trade fair and the digital nature of the evidence are useful factors in justifying a measure without hearing the opponent.

Provisions applied

Agreement on a Unified Patent Court

Arts. 25, 32(1)(c), 33(1)(b), 58, 60(1), (5), (6) and (8), 73(2)(a) and 83(4)

Rules of Procedure

Rules 5.7, 13.1, 192.1, 192.2, 192.5, 194.2, 196, 197.2, 197.3, 198, 199, 220.1 and 224.2(b)

Other provisions

Directive (EU) 2016/943 on trade secrets (cited in the order).

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.