Short Summary
Pirelli Tyre S.p.a. sued Sichuan Yuanxing Rubber Co., Ltd. (SYR) before the Unified Patent Court (Milan Local Division) for infringement of European Patent EP 3 519 207 B1 concerning a motorcycle tyre with both on-road and off-road performance. SYR counterclaimed for revocation of the patent. The Court dismissed the counterclaim for revocation, finding the patent valid, and held that SYR had infringed the patent by offering and marketing its Helios HA-51R and HA-51F tyres at the EICMA 2024 trade fair and through its website.
Detailed Summary
Pirelli Tyre S.p.a., the proprietor of European Patent EP 3 519 207 B1 (entitled "motorcycles tyre"), granted on 4 November 2020 from an application dated 11 September 2017 claiming Italian priority from 28 September 2016, brought an infringement action against Sichuan Yuanxing Rubber Co., Ltd. (SYR) and the China Council for the Promotion of International Trade, Automotive sub-council (CCPIT) before the Unified Patent Court, Court of First Instance, Milan Local Division. The patent concerned a tyre capable of high on-road and high off-road performance, marketed by Pirelli under the trade name Scorpion Rally STR. Pirelli learned that SYR would be present at the EICMA 2024 trade fair in Milan (5–10 November 2024) and had advertised tyre models HA-51R and HA-51F on its website en.heliostire.com, which Pirelli alleged embodied all features of claim 1 of EP'207. Following an initial application for injunctive relief inaudita altera parte, the Court authorized seizure of infringing specimens and promotional material, which was executed on 6 November 2024 at SYR's trade fair booth. SYR subsequently filed a counterclaim for revocation of EP'207, arguing lack of novelty and inventive step.
On the revocation counterclaim, SYR argued that the claimed subject-matter lacked novelty and inventive step over prior art including patent literature and other documents. Pirelli countered that the prior art did not disclose the specific combination of features claimed, particularly the planar representation of the tread pattern. The Court agreed with the EPO Board of Appeals' interpretation (referencing decisions T1000/12 and T 412/09) that patent literature can only exceptionally be regarded as common general knowledge of the skilled person, and found that in this case a series of patent documents in the tyre field consistently disclosed the same technique of planar representation of tread patterns, justifying treatment as common general knowledge. Applying the principles of proximity of evidence (referencing the CJEU's Kelly judgment, C-104/10), the Court also addressed the burden of proof regarding the allegedly infringing products. Ultimately, the Court concluded that the claimed subject-matter was novel and involved an inventive step, dismissing SYR's counterclaim for revocation in its entirety.
On infringement, the Court found that SYR's Helios HA-51R and HA-51F tyres contained all the features of claim 1 of EP'207, as demonstrated through photographic evidence seized at the trade fair and from SYR's website. The Court declared that SYR had infringed the patent by offering, placing on the market, and using these tyres at EICMA 2024 and through its website. The Court ordered SYR to cease such infringing activities in all Contracting Member States where EP'207 is in force, to publish a specific corrective notice on its website for two months, and imposed penalty payments of EUR 400 per infringing tyre and EUR 5,000 per day of delay in complying with the publication obligation. The Court declined Pirelli's request for an interim award of damages under R. 119 RoP, deferring the precise quantification of damages to subsequent proceedings under R. 125 et seq. RoP. The Court also ordered the seized tyres and brochures to be delivered to Pirelli once the judgment became final, given their evidential function and lack of real economic value. The total value of the case was set at EUR 1,000,000 (EUR 500,000 for the infringement action and EUR 500,000 for the revocation counterclaim), with SYR ordered to pay Pirelli's legal costs up to a maximum ceiling of EUR 112,000, to be determined in separate proceedings under R. 150 et seq. RoP.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before MILAN LOCAL DIVISION. Understanding the court's reasoning in Pirelli Tyre S.p.a. vs Sichuan Yuanxing Rubber Co., Ltd. is valuable context for structuring arguments or assessing risk in similar proceedings.
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