OERLIKON TEXTILE G.M.B.H. & K v HIMSON ENGINEERING PRIVATE (CFI, 2023-06-13)

Holding

On Oerlikon's application to preserve evidence concerning two textile machines exhibited by Himson at the ITMA trade fair in Rho, Milan, the Milan Local Division ordered, ex parte and without security, the collection of all technical, promotional and commercial documentation relating to the machines at Himson's stand, by a court-appointed expert assisted by a judicial officer, with notice to the defendant only at the moment of execution. Access to the collected material was limited to two of the applicant's counsel and one technical expert, its use was confined to the future proceedings on the merits absent a new court order, and the defendant was given thirty days from execution to request a review. At this summary examination stage the court found, on the basis of the applicant's brochures and consultant report, circumstantial elements of reproduction of the patented features of EP 2 145 848 B1; it made no finding of infringement.

Why it matters

This order, the earliest preservation of evidence order in the corpus reviewed, dated in the first weeks of the Court's activity, set out the analytical grid the Milan division applies to trade fair seizures: territorial competence based on the place of the alleged or threatened infringement, a fumus boni iuris assessment resting on the presumption of validity of the unopposed patent, urgency derived from the imminent end of the fair, and risk of evidence loss where the respondent is based abroad and the documentation is easily concealed or destroyed. The proportionality reasoning, that the measure only acquires proof and does not restrict the respondent's activity, and the waiver of security in view of the applicant's financial standing, remain useful reference points for applicants seeking ex parte measures on short notice.

Practical point

Trade fairs create a narrow window: the application must demonstrate why the respondent cannot be heard before the fair closes, and should propose concrete safeguards (restricted access, execution outside public opening hours) to support the ex parte grant.

Official decision (PDF) · UPC registry entry

Case timeline

• 2023-06-13 : OERLIKON TEXTILE & v Himson Engineering Private (CFI, 2023-06-13)

Dhenne Avocats represents claimants and defendants in European patent disputes before the Unified Patent Court, including the Paris divisions.