Milan (IT) Local Division
61 cases · page 1 of 3
Showing 1–29KeyMed (Medical & Industrial Equipment) Limited v.PR Medical s.r.l.
This Milan Local Division decision addressed a preliminary objection concerning the language of proceedings in an infringement case. The defendant argued that since they were based in Italy, the trial must proceed in Italian under Rule 14.2(b) RoP. However, the Court rejected this argument, finding that because the claimant alleged infringing activities across various contracting states (including Germany and via global website presence), the exception to the language rule did not apply. The decision affirms the principle that jurisdiction can be established where infringement occurs or may occur, allowing for flexibility in procedural choices.
Pirelli Tyre s.p.a. v.Sichuan Yuanxing Rubber Co., ltd.
This interim conference decision in the Pirelli v. Sichuan Yuanxing case sets the stage for a complex patent dispute involving tire technology. The court addressed procedural issues, including the admissibility of evidence and preliminary objections from the defendant. Crucially, the parties agreed to conduct an on-site technical examination of seized product samples during the upcoming oral hearing. This decision highlights the UPC's practical approach to evidence gathering in infringement cases.
AWM s.r.l. v.Progress Maschinen & Automation AG
This UPC CFI decision addresses a request for cost determination, which was complicated by the automatic suspensive effect of an appeal lodged against the underlying revocation counterclaim. The court clarified that Article 74(2) UPCA's mandatory suspensive effect extends to all parts of the decision, including those concerning legal costs. Consequently, rather than dismissing the application as untimely, the Court opted to stay the cost proceedings until the UPC Court of Appeal resolves the main dispute.
Agathon AG v.Intercom s.r.l., KNARR Vertriebs GmbH
This interim order in the UPC case between Agathon AG and Intercom s.r.l./KNARR Vertriebs GmbH focused heavily on procedural matters ahead of the oral hearing. The Court authorized the admission of technical drawings and samples of both infringing and prior art products, streamlining evidence presentation. Crucially, the parties agreed to allow KNARR to address validity issues during the hearing even without a formal counterclaim for revocation. This order sets clear deadlines for final briefs and prepares the case for joint discussion on infringement and validity.
Primetals Technologies Austria GmbH v.Danieli & C. S.p.A.
In this procedural case, Primetals Technologies sought an order compelling Danieli & C. S.p.A. to produce extensive technical and commercial documentation related to a plant in Vietnam that Primetals alleged infringed EP 2 624 977. The court ultimately rejected the request, finding that Primetals had not provided sufficient or plausible evidence to substantiate its claims of infringement. This decision underscores the high evidentiary threshold required when seeking discovery orders under UPC rules.
Cardo Systems, Ltd. v.Shenzhen Asmax Infinite Technology Co., Ltd. and Hong Kong Yiheng International Technology Co., Limited
This UPC CFI decision addresses a procedural hurdle in an infringement case, specifically the successful completion of service against a defendant domiciled in China. The court found that despite multiple rejections by Chinese authorities due to minor formal issues, the claimant's attempts complied with The Hague Service Convention and UPC Rules of Procedure. Consequently, the court declared the service valid, allowing the substantive infringement proceedings to move forward without further delays.
3V Sigma S.p.A v.A.G.A. S.r.l.
This UPC decision concerns a request for provisional measures aimed at protecting evidence related to alleged patent infringement in the cosmetic industry. 3V Sigma sought an order to secure technical and commercial documentation regarding a competing UV filter, MFSorb 513. Although the initial protective measure was granted against ACEF Srl, the subsequent appeal/request for review by AGA and ACEF was fully dismissed by the Milan Local Division. The ruling reinforces strict procedural requirements for applicants seeking ex parte evidence protection.
Morello Forni Italia S.r.l. v.Gastroteam Abbe AB
In a significant default judgment, the UPC Local Division of Milan found both Gastroteam Abbe AB and Salvatore Marciuliano liable for infringing EP 3691454 B1, which covers pizza dough shaping methods and apparatus. The court granted an injunction and awarded provisional damages totaling €56,000, alongside a penalty per infringing product. This case highlights the procedural rigor of UPC default judgments, emphasizing that even when a defendant is absent, the claimant must meet the full burden of proof.
Prinoth S.p.A. v.Xelom s.r.l.
This UPC decision concerns a motion to review an urgent order for evidence preservation, inspection, and seizure granted by Prinoth S.p.A. against Xelom s.r.l. The dispute centers on alleged infringement of patents related to snow groomers (battipista). The Tribunal upheld the original protective measure, emphasizing that preliminary injunctions based on urgency require only a statistical likelihood of evidence destruction, not concrete proof. This ruling provides important guidance on the scope and quantification of damages in urgent IP proceedings.
PROGRESS MASCHINEN & AUTOMATION AG v.AWM s.r.l.
In a significant decision, the UPC Court of First Instance revoked patent EP 2726230 B1 after finding that prior art disclosures by AWM s.r.l., through the marketing of older JIT machines, invalidated the claims. The infringement action brought by Progress Maschinen & Automation AG was subsequently dismissed. This case underscores the critical importance of thorough prior art searches and the impact of pre-filing commercial activity on patent validity in UPC proceedings.
Hypertherm Inc. v.Tec.Mo. s.r.l.
In a procedural decision, the UPC Local Division of Milan dismissed an infringement action brought by Hypertherm Inc. against Tec.Mo. s.r.l. The case was terminated because both parties had reached a comprehensive out-of-court settlement covering all disputes and litigation costs. Crucially, the court confirmed the refund of 60% of the initial court fees to the claimant under Rule 370.9(c)(i) RoP, demonstrating how procedural rules facilitate efficient case closure upon amicable resolution.
3V Sigma s.p.a. v.ACEF s.r.l.; AGA s.r.l.
This UPC decision addresses a dispute over the confidentiality of documents gathered during evidence protection proceedings (discovery). The Tribunal ruled that while certain commercial and non-relevant technical documents must remain confidential, a structured 'confidentiality club' was established. This ruling provides clear guidance on how to balance trade secret protection with the procedural rights of parties in UPC litigation.
Oerlikon Textile GmbH & CO KG v.Himson Engineering Private Limited
This UPC case involved Oerlikon Textile asserting infringement of EP2145848 against Himson Engineering, while Himson counter-sued for revocation. After extensive proceedings, including an Oral Hearing, both parties reached a transactional agreement to terminate the dispute. The Court formally accepted the withdrawal applications under Rule 265 ROP, declaring the case closed and confirming that legal costs would be mutually compensated.
Edwards Lifesciences Corporation v.Sintec S.R.L.
This UPC decision confirms a settlement reached between Edwards Lifesciences Corporation and Sintec S.R.L./Value Med S.R.L., concluding an earlier application for provisional measures concerning EP 3 646 825 B1. While the settlement itself was confirmed, the Court rejected Edwards' request to reimburse court fees based on a misapplication of procedural rules. This case highlights the finality and binding nature of settlements within the UPC framework.
Dainese S.p.A. v.Alpinestars S.p.A., Alpinestars Research S.p.A, Motocard Bike, S.L., Omnia Retail S.R.L.
This UPC decision addressed a confidential information dispute within a larger security for costs proceeding, rather than an infringement claim. Dainese sought to restrict access to its financial data, citing trade secret protection under Article 58 UPCA. The Court ultimately found a balance between protecting the claimant's sensitive information and ensuring the defendants could adequately exercise their right of defense. Access was granted to specific individuals, including Ms. Caterina Buccimazza, subject to strict confidentiality obligations.
Oerlikon Textile GmbH & CO KG v.Bhagat Textile Engineers
This UPC Local Division case concerned a procedural application by Oerlikon Textile GmbH & CO KG seeking to correct an alleged material error in a prior cost award decision. Oerlikon argued that the initial ruling undervalued their recoverable costs, specifically citing a phrase suggesting an additional €20,000 for the main action. The Court ultimately rejected this request, finding that the entire motivational reasoning of the original judgment consistently supported the final awarded sum of €80,000. This decision reinforces the principle that the full context and motivation of a court order must be considered when assessing clerical errors under ROP 353.
Pirelli Tyre s.p.a. v.Kingtyre Deutschland GmbH, Tianjin Kingtyre Group Co., Ltd.
This UPC decision addressed a complex infringement case involving Pirelli Tyre s.p.a. and two Kingtyre entities regarding patent EP2519412. A settlement was reached between Pirelli and one defendant, Kingtyre Deutschland GmbH, leading the Court to confirm this agreement under Rule 365 RoP. Crucially, the Court allowed the litigation to continue against the second defendant, Tianjin Kingtyre Group Co., Ltd., while also granting a partial reimbursement of court fees for the claimant.
Pirelli Tyre s.p.a. v.Sichuan Yuanxing Rubber co. Ltd.
This UPC decision addressed a request for re-establishment of rights filed by Sichuan Yuanxing Rubber co. Ltd., following an initial seizure order issued by Pirelli Tyre s.p.a. The core dispute centered on whether procedural notification failures constituted a cause outside the respondent's control, thereby allowing them to reset missed deadlines. The Court ultimately rejected the application, holding that the refusal of the recipient to accept the documents fulfilled the legal requirements for service under Italian law. This ruling reinforces the strict adherence required to UPC procedural timelines.
Progress Maschinen & Automation AG v.AWM s.r.l.
This interim decision in the Milan Local Division addresses the valuation of a complex patent dispute involving Progress Maschinen & Automation AG against AWM s.r.l. The court was tasked with setting the value for cost assessment purposes, considering both infringement and revocation claims related to high-value mechanical machines. Despite disputes over sales volume and royalty rates, the judge-rapporteur set the value at EUR 2 million for each action, relying on proportionality principles due to a lack of supporting economic data.
Telefonaktiebolaget LM Ericsson v.Asustek Computer Inc.
This decision addresses a critical procedural dispute regarding the protection of confidential information in UPC proceedings involving potential antitrust conflicts. Ericsson sought an 'external eyes only' confidentiality regime to protect sensitive licensing data from disclosure to defendants. The Panel ruled that while such regimes are theoretically possible under EU law principles, the Claimant failed to meet the strict burden of proof required by the UPC for demonstrating a concrete risk of anticompetitive harm. Consequently, the application was dismissed, but leave to appeal was granted, setting up an important precedent for future cases balancing IP protection and competition concerns.
Telefonaktiebolaget LM Ericsson v.Asustek Computer Inc.
This UPC decision addresses a procedural dispute regarding the scope of confidentiality protection in patent litigation. Ericsson sought an 'external eyes only' regime for sensitive licensing data, arguing it was necessary to prevent antitrust conflicts. The Panel rejected this request, emphasizing that such exceptional restrictions require a high burden of proof showing concrete risks of anticompetitive harm. Although the application for review was dismissed, leave to appeal was granted, setting up a potential precedent on balancing confidentiality and competition law within the UPC.
Progress Maschinen & Automation AG v.AWM s.r.l.
This interim order in the Progress Maschinen v. Schnell case addressed several key procedural issues ahead of the main oral hearing. The court deferred a decision on the admissibility of a new patent amendment (AR4) to the Panel's assessment during the upcoming hearing. Crucially, the parties were given time to negotiate an agreement on damages and costs before proceeding with the full merits discussion. This order highlights the UPC's focus on procedural efficiency while maintaining flexibility for settlement.
Progress Maschinen & Automation AG v.AWM s.r.l.
This interim order in the Progress Maschinen & Automation AG v. Schnell s.p.a. case outlines the procedural path forward before the UPC Panel. The court addressed key issues, including the admissibility of a new patent amendment (AR4) and the production of technical evidence. Crucially, the parties were given time to negotiate settlement on infringement value and costs ahead of the scheduled oral hearing.
Dainese S.p.A. v.Alpinestars S.p.A.
In this case management order, the UPC Milan Local Division addressed a joint request for a stay of proceedings involving two patents. The Court ruled that when all parties agree to a stay under Rule 295(d), the court is obligated to grant it, emphasizing party autonomy (Art 43 UPCA). Crucially, the decision allowed for a partial stay, halting proceedings related to EP '117 while permitting the infringement and revocation actions concerning EP '364 to proceed normally. This highlights the UPC's flexibility in managing complex litigation involving multiple patents.
3V SIGMA S.P.A. v.AZIENDA CHIMICA E FARMACEUTICA S.P.A. - A.C.E.F. S.P.A. and AZIENDA CHIMICA E FARMACEUTICA S.R.L. - A.C.E.F. S.R.L.
In a significant procedural ruling, 3V Sigma successfully obtained an ex parte preservation of evidence order against ACEF. The case centers on two patents covering triazine compounds and cosmetic compositions used as UV filters. By securing access to samples and technical documentation related to the competitor's product MFSorb 513, 3V Sigma can build a strong evidentiary foundation for future infringement claims. This decision highlights the UPC's robust mechanisms for pre-trial evidence gathering.
Oerlikon Textile GmbH & CO KG v.Bhagat Textile Engineers
This UPC costs decision addressed the reimbursement of litigation expenses following a successful infringement action. The Tribunal upheld the cost-sharing ratio established in the merits judgment (80% borne by the defendant). However, applying proportionality principles, the court significantly reduced the recoverable legal fees requested by Oerlikon Textile GmbH & CO KG, ultimately awarding a total of €77,064.65 to the claimant.
Telefonaktiebolaget LM Ericsson v.Asustek Computer Inc.
This Milan Local Division case involved a complex situation where an infringement action and associated revocation counterclaims were partially withdrawn due to one defendant's insolvency. The Court allowed the withdrawal against the insolvent party (Digital River) but maintained the proceedings against the remaining defendants (Asustek and Arvato). Crucially, the court applied principles of fairness and equity, ruling that both Ericsson and Digital River should bear their own costs related to these withdrawals, despite conflicting claims.
Telefonaktiebolaget LM Ericsson v.Asustek Computer Inc.
This Milan Local Division decision addressed procedural matters concerning an ongoing infringement and revocation action involving Ericsson. Due to Digital River's insolvency, Ericsson sought to withdraw its claim against that defendant, which was subsequently allowed. The Court ruled on the allocation of costs for these withdrawal proceedings, finding that equity dictated both parties bear their own expenses, despite initial disagreement.
Telefonaktiebolaget LM Ericsson v.ASUSTek Computer Inc.
In a complex infringement and revocation action, the UPC Milan Local Division issued a crucial procedural order regarding confidentiality. The court adopted an 'external eyes only' regime for highly sensitive documents, allowing access to unredacted information only by designated external counsel, experts, and specific individuals from each party. This decision provides a clear framework for managing trade secrets while ensuring fair trial rights in high-stakes patent litigation.
Telefonaktiebolaget LM Ericsson v.ASUSTek Computer Inc.
This Milan Local Division order addresses a critical procedural dispute regarding the handling of highly confidential information in an infringement and revocation action. The Court established a comprehensive 'external eyes only' confidentiality regime, balancing the parties' rights to fair trial and full disclosure. This ruling is significant for practitioners as it provides clear guidance on how courts manage sensitive trade secrets within complex UPC litigation.
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