Milan - Local Division
UPC_CFI_240/2023
Procedural Order
of the Court of First Instance of the Unified Patent Court
delivered on 17/12/2024
Order no. ORD_598537/2023

CLAIMANT
1) Oerlikon Textile GmbH & CO KG
represented by attorneys-at-law STEFANIA BERGIA and GIULIO SIRONI

DEFENDANT
1) Himson Engineering Private Limited
represented by attorney-at-law Fabrizio Jacobacci

PATENT AT ISSUE
Patent no. Proprietor/s
EP2145848 Oerlikon Textile GmbH & CO KG

DECIDING JUDGE
Judge-rapporteur Alima Zana

COMPOSITION OF PANEL – FULL PANEL
Presiding judge Pierluigi Perrotti
Judge-rapporteur Alima Zana
Legally qualified judge Carine Gillet
Technically qualified judge Michel Abello

LANGUAGE OF PROCEEDINGS: Italian

ORDER
1. Procedural history
The dispute commenced on 14 June 2023, with Oerlikon’s application against Himson for an order to preserve evidence under Article 60 of the Agreement and Rules 192 et seq. of the Rules of Procedure (RoP), to protect patent EP '848, following an exhibition at the ITMA trade fair, scheduled to take place from 8 June to 14 June 2024, in Rho, Milan.
The order was granted ex parte by the Court and was executed on 14 June 2023. The ruling was not subject to a request for review by Himson.
Oerlikon promptly initiated the proceedings on the merits, seeking a determination of infringement, an injunction with a penalty, the publication of the decision, and an order for withdrawal from the market.
The claimant also requested that the opposing party be ordered, pursuant to Rule 119 RoP, to pay a financial penalty of €100,000 to cover expenses for the future damages proceedings, with an award of costs.
Upon entering an appearance on 19 December 2023, the defendant:
- did not raise any preliminary objections;
- filed a counterclaim for revocation, challenging the validity of the patent on the grounds of added subject matter, lack of novelty, and lack of inventive step.
The claimant, in turn, and at the first opportunity to respond, submitted seven auxiliary requests (see “Reply to the Statement of Defence, Defence to the Counterclaim, and Application to Amend the Patent,” filed on 20 February 2024).
At Oerlikon's request, the evidence obtained through the urgent measure executed ante causam by the order of 6 May 2024, was admitted into the case file.
During the proceedings, the claimant sought authorization to introduce an additional, eighth auxiliary request under Rule 30(2) RoP; however, the Court denied the request.
At the Court’s request, Oerlikon also withdrew auxiliary requests no. 1-3, while confirming the remaining ones.
2. The interim conference
The judge-rapporteur requested clarification from the parties on the key issues, summarized below in their most relevant points.
1. Settlement proposals
The claimant acknowledged that initial settlement discussions had begun.
The judge-rapporteur encouraged the parties to consider an amicable resolution of the dispute and, if an agreement is reached, to promptly inform the Court.
2. Asserted title
The parties discussed translation errors in the Italian version of the German patent text and agreed on the correct translation of the terms “TREIBWALZE” and “BEWEGLICHEN”.
3. Counterclaim for revocation
Regarding Himson’s revocation claim, the following points were addressed:
(i) Oerlikon requested that the validity challenge be interpreted as limited to claim no. 1. Himson stated that this interpretation could be adopted by the Court only if the opposing party’s infringement claim was also confined to claim no. 1. The parties referenced recent case law of the Court, in particular the so-called “front-loaded” principle (see, in this regard, the most recent decision of the Central Division Paris, No. 571565/2023, issued on 27 November 2024).
On this point, the judge-rapporteur noted that - while acknowledging that any final assessment by the Court must be made in the context of the final decision - in fact:
- the infringement claim in the Statement of Claim appears to be limited to claim no. 1 (see, for example, para. 18, pp. 16 et seq., para. 19, pp. 27-31).
A general reference to patent infringement in the conclusions does not appear sufficient to support a different interpretation.
- the counterclaim for revocation also appears to be limited to claim no. 1 (see, in particular, page 20, conclusions section), including any possible amendments thereto.
No new circumstances have arisen that would entitle the parties to request an extension of the deadline for raising mutual objections in the initial defence submissions.
(ii) Himson, invited by the Court to reduce the inventive step objections to a reasonable number, declared its agreement with the Court’s request. Himson’s counsel must therefore be granted a deadline, as specified in the order, to proceed accordingly.
(iii) Oerlikon has requested the exclusion from the case file of documents DE 042 and US 795, submitted by Himson to challenge the validity of the patent, on the grounds that they were not filed in a timely manner (in particular, DE 042 was known to Himson during the proceedings before the Patent Office. Moreover, in accordance with the principle of "equality of arms", the Panel considered this factor in rejecting auxiliary request no. 8).
The judge-rapporteur noted that, although these documents were already known to Himson, the latter chose to submit them only in response to the opposing party’s auxiliary requests AR1-7 (see "Reply to defence to the counterclaim for revocation, rejoinder to the reply to the statement of defence, and defence to an application to amend the patent" dated 19.04.2024) and not in the counterclaim for revocation.
Therefore, in light of the front-loaded principle1 - which requires the claimant in an infringement action to concretely elaborate his arguments and evidence in its first written
18 The Unified Patent Court legal provisions introduce the so-called ‘front loaded’ procedural system whereby a claimant
is required to concretely elaborate his arguments and evidence in its first written pleading. However, these provisions
must be interpreted in the light of the principle of proportionality, which requires that the parties should not be burdened
with tasks that are unnecessary to achieve the stated objective, and in the light of the principle of procedural efficiency,
which is contrary to excessive and overly detailed allegations of facts and production of multiple documents in relation
to matters that can be presumed to be known to the opposing party and not to be disputed by them. 2. In revocation
actions, the claimant is required to specify in detail the grounds of invalidity that allegedly affect the contested patent,
pleading, while the defendant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty-destroying or convincing starting points for the assessment of lack of inventive step in subsequent written acts – documents DE 042 and US 795 appear to be admissible only in relation to the challenge against the auxiliary requests submitted by the patent proprietor.
4. Evidentiary measures
With regard to the evidentiary measures requested by Oerlikon:
(i) as regards the request for witness testimony from the individuals who retrieved the videos submitted by the claimant, the defendant’s counsel acknowledged that it does not contest the circumstances outlined in the relevant section of evidence.
Under Rule 171(2) RoP, these facts are therefore deemed admitted.
(ii) as regards the request to be allowed to provide evidence of the videos in new documents no. 16 and 19 for the purpose of proving the current nature of the infringement, Himson’s counsel did not object.
Therefore, such evidence is admitted as per the order;
(iii) as regards the appointment of a court expert under Rule 185 RoP, Oerlikon, when prompted by the Court on this matter, withdrew its request following the appointment of the technically qualified judge;
(iv) the parties have acknowledged that their respective experts are part of their respective legal counsel as representatives. In this capacity, if deemed necessary, they may intervene during the oral hearing in support of their arguments.
5. The request for information regarding origin and distribution channels
Regarding the claimant's request for information on origin and distribution channels, product quantities, received orders, etc., revenue generated by the machine, and the identity of third parties involved.
In this regard, the Court noted that such a request may be made in a future "procedure for the determination of damages and compensation," where the appropriate remedies are provided.
This is subject to verification, at that stage, of fulfilment of the evidentiary burdens that rest with the claimant in light of Article 54 and 76(6) of the Agreement, including for requests of this nature. In this case, the defendant has expressly confirmed that it has not sold or distributed the disputed machinery within the market covered by the asserted patent, and additionally, there is currently no evidence that could suggest the sale or distribution of the disputed machinery by Himson in the relevant market.
In this proceeding, considering the principle of proportionality (item no.3 of the Preamble to the Rules of Procedure), and considering the evidentiary and factual framework presented, such an order does not seem necessary.
6. Request for recall from the market
as well as the prior art documents relied upon to support any allegation of lack of novelty or inventive step. Consequently, the claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or convincing starting points for the assessment of lack of inventive step in subsequent written acts.3.
The judge-rapporteur noted that, at this stage, there does not appear to be any evidence, even circumstantial, of the commercialization of the disputed machinery within the territory covered by the patent.
Any request must therefore be assessed in the subsequent phases.
7. The amount of the penalty, set at €12,000.00.
The judge-rapporteur requested clarification regarding the amount of the penalty.
The claimant invoked the principle of equitable assessment, to which Himson’s counsel raised no objection.
8. Request for the defendant to be ordered to pay €100,000.00 pursuant to Rule 119 RoP.
The judge-rapporteur noted that no evidence or supporting documentation appears to have been provided regarding any concrete harm suffered by the claimant that would allow the Court to quantify this amount.
Any assessment is, however, reserved for the Court in its final decision.
9. The value of the case
The claimant has set the value of the dispute for the purpose of determining recoverable costs at €750,000.00.
The defendant has set the corresponding value at €2,000,000.00 (see authorized submission of 18 November 2024).
The judge asked the parties whether they agree on this amount.
Upon being prompted by the judge-rapporteur, both parties have confirmed their agreement on this value bracket. The value of the case, taking into account the parties' requests and the claims submitted – namely, infringement with accessory rulings, patent revocation, and patent amendment – is set at a value up to and including €2,000,000.00, using the "Scale of ceilings for recoverable costs" of the Administrative Committee.
10. Costs
The judge-rapporteur asked the parties to take a position on the litigation costs incurred by both the claimant and the defendant.
The parties stated that they have no objections in this regard.
3. SUBSEQUENT PROCEDURAL STEPS
The parties have agreed, following the interim conference and in light of the procedural requirements outlined above, to set a double deadline for their respective counsels.
Accordingly,

THE COURT
SETS
1 A deadline of 28 February 2024, at 3:00 PM, for the submission:
- by Oerlikon, of the new videos (16-19) allegedly showing the continued promotion of the disputed machinery within the territory covered by the patent;
- by the defendant's counsel, of a statement specifying the validity challenges to the patent that are maintained.
2. A deadline of 31 March 2025, at 3:00 PM, for both parties to submit:
- comments regarding the opposing party's submissions, with no further document submissions permitted;
- a case summary, which must not introduce new facts or evidence. The summary must not exceed 7,500 words.
Along with the summary, a complete list of all the documents submitted by each party must be presented to enable the Court to refer to them during the hearing.
SETS
The date for the oral hearing before the Court for 11 June 2025, at 10:30 AM. Acknowledging that, during the hearing:
(i) the videos submitted by Oerlikon’s counsel may be screened using equipment provided by the claimant's counsel.
(ii) materials, such as posters, may be used to better explain the parties' arguments to the Court, with necessary materials provided by the respective counsels.
Informs the parties that it is the Court's intention to conclude the oral hearing in one day.
SETS
The value of the case up to €2,000,000.00, inclusive, for the purpose of applying the scale of ceilings for recoverable costs, without prejudice to any diverging assessment by the Court, including in light of the documentation that has been authorized for submission.
INSTRUCTS
The parties to promptly notify the Office of any settlement agreements reached.
Done and delivered

In Milan,
On 17 December 2024

ORDER DETAILS
Order no. ORD_598537/2024 in ACTION NUMBER: ACT_549550/2023
7
UPC number: UPC_CFI_240/2023
Action type: Infringement Action