Short Summary
Pirelli Tyre S.p.A. brought an infringement action against Sichuan Yuanxing Rubber Co., Ltd. (SYR) before the Milan Local Division of the Unified Patent Court concerning European Patent EP 3 519 207 B1, titled 'motorcycles tyre,' which covers a tyre with both high on-road and off-road performance. SYR counterclaimed for revocation of the patent for insufficiency of disclosure and lack of inventive step. The Court found that SYR's Helios HA-51R and HA-51F tyre models infringed claim 1 of EP'207, dismissed the counterclaim for revocation, and granted injunctive relief, publication orders, and penalty payments against SYR.
Detailed Summary
Pirelli Tyre S.p.A. ('Pirelli'), the proprietor of European Patent EP 3 519 207 B1 ('EP'207') entitled 'motorcycles tyre' (granted 4 November 2020, claiming Italian priority from 28 September 2016), filed an infringement action against Sichuan Yuanxing Rubber Co., Ltd. ('SYR') and the China Council for the Promotion of International Trade, Automotive sub-council ('CCPIT'). The patent concerned a tyre capable of high on-road and off-road performance, marketed by Pirelli under the trade name Scorpion Rally STR.
Prior to the main action, on 31 October 2024, Pirelli filed an application for provisional measures, including injunctive relief and seizure, alleging that SYR's tyre models HA-51R and HA-51F (advertised on en.heliostire.com) embodied all features of claim 1 of EP'207. The Court declined to grant injunctive relief ex parte but authorized seizure on 5 November 2024. The seizure was executed on 6 November 2024 at SYR's booth at the EICMA 2024 trade fair in Milan, where SYR's staff refused to accept service of the application documents. SYR subsequently sought re-establishment of rights, arguing improper service, but the Court rejected this application, finding that under Article 138 of the Italian Code of Civil Procedure, refusal to accept service constituted valid personal service.
On 5 December 2024, Pirelli filed its Statement of Claim. SYR filed its Statement of Defence on 17 June 2025, disputing infringement and bringing a counterclaim for revocation of EP'207 for insufficiency of disclosure and lack of inventive step. The action against CCPIT was later withdrawn following settlement negotiations, and proceedings continued solely between Pirelli and SYR.
On the merits, the Court addressed two key legal issues. First, regarding common general knowledge, the Court followed the EPO Board of Appeal's approach (decisions T1000/12 and T412/09), holding that patent literature can only exceptionally represent common general knowledge. However, the Court found that a series of patent documents in the tyre field consistently showed the same technique of planar representation of tread patterns, making it part of the common general knowledge of the skilled person. Second, regarding the burden of proof, the Court applied the principle of proximity of evidence (referencing CJEU Judgment in Kelly, C-104/10), redistributing the burden of proof to SYR given Pirelli's strong photographic evidence and SYR's privileged access to relevant documents and information.
The Court concluded that SYR's HA-51R and HA-51F tyres infringed claim 1 of EP'207 and dismissed SYR's counterclaim for revocation. The Court granted injunctive relief prohibiting SYR from offering, placing on the market, or using the infringing tyres in all UPCA Contracting Member States where EP'207 is in force. SYR was ordered to publish a specific corrective notice on its website for two months, with penalty payments of EUR 400 per infringing tyre and EUR 5,000 per day of delay in complying with the publication order. Damages and legal costs were to be determined in separate proceedings. 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 counterclaim for revocation). The decision was issued on 26 May 2026, with appeal possible within two months of notification.
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., Patent Attorney Dr. Antonio Lasca, of 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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