SWARCO FUTURIT Verkehrssignalsysteme v Yunex (CFI, 19 February 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By order of 19 February 2025 (UPC_CFI_156/2024, ORD_24915/2024), the Munich Local Division (Judges Zigann, presiding and rapporteur, Mlakar and Pichlmaier) dismissed as moot the application for preservation of evidence brought by SWARCO FUTURIT Verkehrssignalsysteme against Yunex under EP 2 643 717. It reserved costs to the main proceedings and required SWARCO to bring them within the time limit of Rule 198.1, applied by analogy.

The order shows that a defendant who fails to dispute a fact specifically may make an inspection unnecessary, and then be barred from disputing that fact on the merits. It also fills two gaps in the Rules of Procedure, on mootness and on the duty to bring proceedings on the merits.

Facts and procedure

On 28 March 2024 SWARCO applied for an expert inspection of LED display optics installed at four locations in the city of Mönchengladbach, with permission to dismantle and destroy components. Yunex objected on 3 May 2024 and filed alternative requests. At the hearing on 2 August 2024, SWARCO accepted that the inspection would become unnecessary if Yunex expressly and bindingly admitted that the optics were structurally identical to those supplied to the city. Meanwhile, in parallel proceedings concerning a different product series, SWARCO v STRABAG, Vienna Local Division, 15 January 2025 found several claims infringed. On 27 January 2025 the judge-rapporteur indicated an intention to dismiss the application as moot. Yunex replied that it had no duty to investigate and that its position was not an admission.

The applicable law

The division read Art. 60(1) UPCA (urgent measures before the merits) together with Art. 59(1) (production of evidence in the main action): preservation of evidence is a dependent part of the main proceedings, as Rules 196.2 and 198 show (paragraph III). Proportionality (Art. 20 and 42 UPCA) requires the measure to be necessary (paragraphs IV.1 and IV.2). Rule 171.2 deems a fact not specifically contested to be undisputed.

Question

Does an application for inspection become moot where the defendant does not dispute in substance that the products are identical, and what follows for costs and the main action?

Decision

Yes. Yunex had not expressly admitted identity, but nor had it disputed it in substance, although it could reasonably have asked its supplier. The fact was therefore deemed undisputed (Rule 171.2) and the inspection was no longer necessary (paragraph IV.3). Yunex will not be able, in the main action, to backtrack belatedly by disputing the point or offering counter-evidence (Rule 194.1(a)(ii) and the prohibition of abuse of rights, paragraph IV.4). Rule 360 applies by analogy to applications to preserve evidence (paragraph IV.5).

Costs were reserved to the main proceedings, Rule 118.5 being a possible basis should no action follow (paragraph V). Rule 198.1 was applied by analogy to the dismissal for mootness, to avoid inconsistent decisions: the order will be set aside on Yunex’s application if SWARCO does not start the main action within 31 calendar days or 20 working days, whichever is longer, from 20 February 2025 (paragraph VI).

Key points for practice

• A defendant’s failure to dispute a fact specifically can operate as an admission, making inspection unnecessary and precluding a later challenge on the merits.
• Dismissal of an evidence preservation application as moot (Rule 360 by analogy) does not remove the duty to bring the main action (Rule 198.1 by analogy).
• Costs of evidence preservation proceedings are, in principle, decided with the merits.
• Practical point: a defendant who does not wish to be bound must dispute the alleged facts specifically, and make enquiries of its suppliers before replying.

Provisions applied

Agreement on a Unified Patent Court

Art. 20, 42, 59(1) and 60(1)

Rules of Procedure

Rules 118.5, 171.2, 192, 194.1(a)(ii), 196.2, 198.1 and 360

Case law cited

Munich Local Division (UPC_CFI_249/2023, ORD_577734/2023), SWARCO v STRABAG, Vienna Local Division, 15 January 2025 (UPC_CFI_33/2024).

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.