UPC_CFI_327/2024
ACT_36388/2024
ORDER
of the Court of First Instance of the Unified Patent Court
Local Division The Hague
issued on 14/10/2024
concerning: R. 190 order to produce evidence

HEADNOTE:
Request to produce evidence on the basis of R. 190 RoP partially awarded. Prima facie case of
infringement. Proper evaluation of non-infringement and invalidity-arguments should be done
by the panel. Request too broad and therefore limited.

KEYWORDS:
Evidence, duty to produce.
Date of receipt of Statement of claim : 18.6.2024

APPLICANT/S
1) Winnow Solutions Limited
(Applicant) - 100 Avebury Boulevard - MK9 1FH
- Milton Keynes - GB
Represented by Gregory
Bacon

RESPONDENT/S
1) Orbisk B.V.
(Respondent) - Kanaalweg 29 A - 3526 KM -
Utrecht - NL
Represented by Roeland Grijpink

PATENT AT ISSUE
Patent no. Proprietor/s
EP3198245 Winnow Solutions Limited
No SPC details provided

DECIDING JUDGE
Presiding judge Edger Brinkman
Judge-rapporteur Edger Brinkman

LANGUAGE OF PROCEEDINGS: English

SUBJECT-MATTER OF THE PROCEEDINGS
Request to produce evidence as part of infringement proceedings (R. 190 RoP)

FACTS
The parties
1. Winnow Solutions Limited (“Winnow”) was established on 31 May 2013. Winnow develops
and markets commercial food waste management solutions to help customers run more
sustainable and profitable kitchens by reducing food waste. Winnow markets these
products in UPC member states, including, inter alia, France, Germany, the Netherlands
and Italy.
2. Orbisk B.V. (“Orbisk”) was established in 2019 and also markets waste management
solutions for reducing food waste, in particular its food waste monitoring product under
the brand “Orbi”.
The patent
3. Winnow is the sole registered proprietor of EP 3 198 245 B1, “A system and Method for
Monitoring Food Waste” (“EP 245”). The application for EP 245 was filed on 21 April 2015
and was published on 29 October 2015. EP 245 claims priority from US application
61/982,012, filed on 21 April 2014. Publication of the grant of EP 245 took place on 9 De-
cember 2020.
4. EP 245 includes two independent claims 1 and 15. The first (claim 1), claims a system for
monitoring food waste and the second (claim 15) claims a method for monitoring food
waste. Claims 1 and 15 of EP 245 can be broken down into integers as follows:

Claim / Integer
Claim language
1 (1) A system for monitoring food waste, including:
(2) a floor-based weight mechanism configured for weighing a waste recepta-
cle, wherein the waste receptacle is configured for receiving food waste
from a plurality of consecuAve disposal events before emptying the waste
receptacle;
(3) a processor configured for measuring the difference in weight of the waste
receptacle between consecuAve disposal events of the plurality of consecu-
Ave disposal events, calculaAng the weight for each of the disposal events
of the plurality of disposal events based upon the measured differences,
and capturing the calculated weight for each disposal event;
(4) a user interface configured to receive, for each of the calculated weights,
at least one indicaAon categorising the food waste in a disposal event by a
user; and
(5) a processor configured for cleaning the captured calculated weights to de-
tect and correct erroneous weights.
15 (1) A method for monitoring food waste, including:
(2) a. A processor receiving a first weight from a floor-based weight mecha-
nism of a waste receptacle aDer a first disposal event;
(3) b. The processor receiving a second weight from the floor-based weight
mechanism of the waste receptacle aDer a second consecuAve disposal
event disposed before emptying of the waste receptacle;
(4) c. The processor determining the weight for the second disposal event
based on the difference between the first and second weights;
(5) d. The processor capturing the weight for the second disposal event;
(6) e. A processor cleaning the captured weight to detect and correct errone-
ous weights; and
(7) f. A user interface receiving an input from a user to categorise the food
waste for the second disposal event
ORDER SOUGHT
5. Winnow contends that Orbisk infringes EP 245. For this it instituted infringement
proceedings at this same local division of the UPC. However, in order to obtain more
evidence regarding the alleged infringement Winnow requests the court that:
a) In accordance with Article 59 UPCA and Rule 190 RoP, in association with Article 53,
and/or Rule 172 RoP, Orbisk be ordered to provide to Winnow the documents
outlined at paragraphs 19-21 and 26-27 of this Application which are within Orbisk’s
control.
b) The documents to be provided in electronic format within 2 weeks of service of the
Order.
c) The written procedure in the Action not to be unduly delayed as a result of the
granting and exercise of the Order.
d) Appropriate sanctions if the evidence outlined at (a) is not produced according to the
Order.
Paragraphs 19-21 of the request are as follows:
19. In order to further support its claim for infringement, Winnow requests any detailed manuals, technical
specification documents and/or training materials for the Orbi System or its constituent parts that specify
the information referenced in paragraph 18 above. Should there be various versions of these documents
provided to, for example, users and installers, Winnow requests access to all versions.
20. Winnow also requests a copy of the service level agreement, and any operational guidance or training
material for annotators, between Orbisk and Sama (or between Orbisk and relevant third parties) which
might assist in confirming the level and types of annotation that occur following a disposal event. Relatedly,
Winnow seeks billing information in the control of Orbisk between Orbisk and Sama which might evidence
the number of hours for which Orbisk may be paying Sama to classify food waste data.
21. In addition, Winnow requests access to any documents in the control of Orbisk relating to the review and
classification of images by internal teams or third parties. Such documents may include a description of an
interface acting to classify food images, including screenshots of how such interface functions and how data
quality from annotators is monitored. Furthermore, Winnow seeks access to any internal Orbisk reporting
which might contain information regarding measurement of annotator productivity and accuracy, and any
other documentation of such a workflow.
Paragraphs 26-27 of the request are as follows:
26. However, given that there is limited information available which sets out how the Orbi System acts to
detect and correct erroneous weights, further documentation would be beneficial. Therefore, Winnow re-
quests documentation which confirms how this process is carried out.
27. Specifically, as above, Winnow requests any detailed manuals, technical specification documents and/or
training materials for the Orbi System or its constituent parts that specify the information referenced in para-
graph 25 above. Furthermore, Winnow requests any Orbisk internal documentation which sets out how the
Orbi System recognises and prevents an erroneous weight, such as a bin change, being recorded as a dis-
posal event, or processes weights to remove user error (including via deviation or pattern recognition tech-
niques), and to the extent that it is necessary to understand the functionality of this aspect of the Orbi System,
any algorithms and/or source code pertaining to the same. Winnow also requests any Orbisk internal documentation which sets out how erroneous data is cleaned by the Orbi System when weights which are not dis-
posal events occur, such as when users kick or move the scale or user error more generally takes place, and
to the extent that it is necessary to understand the functionality of this aspect of the Orbi System, any algorithms and/or source code pertaining to the same. In addition, Winnow requests documentation which relates
to how the data is interpreted and processed from the scale in order to create a waste event on the Orbi System, including via use of a stability controller, and to the extent that it is necessary to understand the func-
tionality of this aspect of the Orbi System, any algorithms and/or source code pertaining to the same.

DEFENCE
6. Orbisk argues that the request should be denied for the following reasons:
a) Winnow failed to present evidence reasonably available to it; and there is no - let
alone sufficient likelihood that the Patent is valid and infringed);
b) the evidence Winnow requests access to is insufficiently specified and clearly
amounts to a fishing expedition;
c) an order to disclose broad documentation as requested by Winnow will inevitably
compromise its confidential information; and
d) considering the circumstances above, any order to produce evidence would be disproportionate.

For these reasons, Orbisk requests the Court to order as follows on Winnow’s R. 190 Re-
quest:
I. To reject the R190 Request in its entirety;
II. In the alternative, to stay its decision on the R190 Request until the interim confer-
ence;
III. In the further alternative, to stay its decision on the R190 Request until Orbisk has
submitted its Statement of defence;
and, in the event that the R190 Request is granted at least in part,
IV. To grant Orbisk a two-week period to file a motion under Rule 262A RoP;
V. In the alternative, to order Orbisk to submit its application pursuant to Rule 262A at
a time to be determined by the Court.
VI. In the further alternative, to the extent that the R190 Request is granted without
Orbisk being granted a possibility to file a motion under Rule 262A RoP, to limit access
to the documents in question to the lawyers assisting Winnow;
or alternatively, to limit access to the documents in question to the lawyers assisting
Winnow as well as a maximum of one natural person employed by Winnow who is
established in Europe, is bound by rules of conduct applicable in Europe and has no
commercial or technical position within Winnow.

GROUNDS FOR THE ORDER
7. The secfons of Arfcle 59 UPCA and Rule 190 RoP relevant to the request read as follows:
Ar$cle 59(1) UPCA
At the request of a party which has presented reasonably available evidence sufficient to
support its claims and has, in substanAaAng those claims, specified evidence which lies
in the control of the opposing party or a third party, the Court may order the opposing
party or a third party to present such evidence, subject to the protecAon of confidenAal
informaAon. Such order shall not result in an obligaAon of self-incriminaAon.
Rule 190(1) RoP
Where a party has presented reasonably available and plausible evidence in support of
its claims and has, in substanAaAng those claims, specified evidence which lies in the
control of the other party or a third party, the Court may on a reasoned request by the
party specifying such evidence, order that other party or third party to produce such
evidence. For the protecAon of confidenAal informaAon the Court may order that the
evidence be disclosed to certain named persons only and be subject to appropriate terms
of non-disclosure.
8. It follows from these provisions that the following requirements must be safsfied before the
court can order any party to submit into the proceedings any evidence:
(i) The requesfng party must have presented evidence “reasonably available” to
it in support of its claims;
(ii) the evidence to which access is requested must be “specified” and lie in control of
the other party;
(iii) the other party’s confidenfal informafon must be protected;
(iv) based on the general rules of Arfcles 41(3) and 42 UPCA, as well as Arfcle 3 of the
Enforcement Direcfve, any order to produce evidence must safsfy the
requirements of proporfonality, equity, and fairness.
(i) reasonable evidence regarding the entitlement to the patent, the infringement and validity
9. Orbisk has not disputed Winnow’s entitlement to the patent. Further, the JR is sufficiently
convinced a prima facie case of infringement exists, as explained in the application and the
SoC to which is referred. While Orbisk contests that features 1.4 and 1.5 are fulfilled, the
proper evaluation of this as a principle is for the panel in the proceedings on the merits as
initiated by Winnow. The JR also takes into consideration that it is for precisely those
features that the evidence is requested, which implies – for the purpose of application of
R. 190 RoP – that it cannot be expected from Winnow to already be conclusive in its
argumentation (and evidence) on these features.
10. As to validity, it should be noted that it is up to the alleged infringer to bring forward
arguments, substantiated by facts, that the patent is invalid (UPC CoA 335/2023, 11 March
2024, NanoString v/ 10x Genomics). In this respect, it is of importance that the patent was
examined during prosecution by the EPO and granted. This entails a presumption of validity
for the purposes of this request. Orbisk has submitted in its reply to this request, and in its
SoD, various grounds for invalidity. As with infringement however, the evaluation of these
arguments as a principle is for the panel in the proceedings on the merits as initiated by
Winnow. It is therefore not for the JR to prelude in depth on these issues, unless there
would be a clear-cut case of invalidity. Orbisk has not alleged nor has the JR identified such
a case, as it currently stands.
(ii) sufficient specification of the evidence
11. The JR finds that Winnow’s request is in certain respects too broad, and/or it was
insufficiently made clear why it is necessary and/or whether such evidence actually exists.
The JR will therefore limit the order as follows:
- technical specification documents for the Orbi System that specify how some form of information is
received regarding the disposal event that allows categorisation to be performed
- technical specification documents which set out how the Orbi System acts to detect and correct errone-
ous weights
12. The JR understands why this evidence is necessary as it is pertinent to the fulfilment of
features 1.4 and 1.5 which has been disputed and thus far only has been supported by
publicly available evidence. It is credible, and at any rate not really put into question, that
such evidence exists and lies in control of Orbisk. So formulated, it is also sufficiently
specific. Should Winnow, having reviewed this evidence, still reasonably need more
evidence for its infringement claim, it can submit a reasoned request at the interim
conference (i.e. at least two weeks before).
(iii) protection of confidential information
13. Ordered as indicated above, the JR does not follow Orbisk’s argument that the request is so
broad that already for that reason it would unjustifiably jeopardize the confidentiality of
such information. Since Orbisk indicated it intends to file a R. 262A RoP request, those
persons that have access to it will be determined later. Incidentally, Winnow has indicated
in its reply to Orbisk’s objections that, as an alternative, only the external lawyers and
experts will have access to the evidence of a confidential nature submitted by Orbisk.
Orbisk has indicated the same, also alternatively. As the parties may be aware, the UPC has
granted such a confidentiality club, excluding natural persons from the parties, if the
parties agree on it. At any rate, parties are invited to agree on a proper confidentiality club.
(iv) proportionality, equity and fairness
14. The JR deems the production of evidence ordered as indicated above proportional and
reasonably necessary to further the infringement case, while the interests of Orbisk to
maintain confidential certain information can be properly protected. The JR incidentally
remarks that there is a margin of discretion (UPC CoA 298-300/2024. 24 September 2024,
Oppo v. Panasonic).
Sanctions and delay
15. Winnow has asked the JR to impose sanctions on non-compliance of the order. The JR
refers to R. 190.7 RoP. It has not been made clear by Winnows why nor what more
sanctioning may be necessary. In as far as Winnow requests the infringement proceedings
not to be unduly delayed, this will be judged at the time any request for extension were to
be filed.

ORDER
The court
a) In accordance with Article 59 UPCA and Rule 190 RoP, in association with Article 53
UPCA orders Orbisk to provide to Winnow:
o technical specification documents for the Orbi System that specify how some
form of information is received regarding the disposal event that allows categorisation to be performed
o technical specification documents which set out how the Orbi System acts to detect and correct erroneous weights
in as far as this is within Orbisk’s control.
b) Orders these documents to be provided in electronic format within 2 weeks of service
of the order (together with – if need be – a R. 262A and/or R. 262.2 RoP request).
c) Stipulates that if Orbisk fails to comply with this order, the court shall take such failure
into account when deciding on the issue in question. (R. 190.7 RoP)

ORDER DETAILS
Order no. ORD_44108/2024 in ACTION NUMBER: ACT_36388/2024
UPC number: UPC_CFI_327/2024
Action type: Infringement Action
Related proceeding no. Application No.: 38567/2024
Application Type: Application for an Order to produce evidence (RoP190)