Bekaert Binjiang Steel Cord Co. & Ltd. v. Siltronic AG and Hinterberger GmbH & Co.KG

This case concerns European Patent No. 3 212 356 B1, owned by the applicant Bekaert Binjiang Steel Cord Co. & Ltd., which relates to a 'Shaped saw wire with controlled curvature at bends' used for cutting hard and brittle materials such as silicon wafers in semiconductor manufacturing. The patent was granted on January 30, 2019, and is in force in Germany, Austria, and Italy.

The first respondent, Siltronic AG, produces and sells silicon wafers for the semiconductor industry and obtains saw wires from the applicant and from the S. group of companies based in China. The second respondent, Hinterberger GmbH & Co.KG, is a logistics company that provides warehousing services to Siltronic, including an external warehouse in Altötting.

On September 19, 2024, the applicant filed a request for an inspection order and evidence preservation measures in preparation for a main infringement action. The applicant had found remnants of a 175 µm saw wire from manufacturer S. at a recycling company in Freiberg, Saxony, near Siltronic's main production site. The applicant suspected that the disposed wire originated from Siltronic and that Siltronic was using saw wires from S. in all three available thicknesses (175 µm, 150 µm, and 100 µm). Pre-litigation correspondence and license negotiations in July and August 2024 had been unsuccessful, and Siltronic had refused to provide information about its use of S.'s saw wires.

On October 18, 2024, the Local Chamber Düsseldorf issued an ex parte inspection and evidence preservation order, permitting inspection of Siltronic's premises in Munich and Hinterberger's external warehouse in Altötting, with the purpose of determining whether the respondents had saw wires from S. in thicknesses of 175 µm, 150 µm, and/or 100 µm that could infringe claim 1 of the patent. The order also authorized detailed descriptions, retention of samples, and—in case of refusal—seizure of delivery notes and invoices.

Siltronic AG filed a request under Rules 197.3 and 197.4 of the Rules of Procedure to review this order. An oral hearing was held on March 20, 2025. The court rejected Siltronic's review request, including all auxiliary requests.

Key legal findings of the court:

1. An order for evidence preservation and inspection can serve to secure evidence of individual infringing acts.

2. Although Rule 196.1 RoP lists numerous evidence preservation measures, this is not an exhaustive catalog. The specific measures required must be determined based on the applicant's evidence preservation interest and the circumstances of the individual case.

3. Where a corresponding evidence preservation interest exists, such an order may also include the seizure of delivery notes and invoices.

The court found that the applicant had demonstrated a sufficient interest in evidence preservation, given the circumstantial evidence (wire remnants found near Siltronic's production site), Siltronic's refusal to provide information, and the ongoing use of pre-ordered saw wires. The court rejected Siltronic's argument that the order should be limited to the 175 µm wire actually found, holding that the broader scope covering all three thicknesses was justified.

Regarding confidentiality, the court found that no additional protective measures were necessary because the original order already contained a comprehensive regime for protecting the respondents' potential confidentiality interests. The participating lawyers were already obligated to maintain secrecy, and the court-appointed expert was bound by statutory confidentiality obligations under Rule 186.5 RoP. The court directed that, in the event of a main action, the samples should be brought to the court after completion of the expert report, rather than being handed over to Siltronic as it had requested.

The final order, dated April 16, 2025, rejected Siltronic AG's request for review of the inspection and evidence preservation order in its entirety, including all auxiliary requests. Siltronic was informed of its right to appeal within 15 days of service.