Pirelli Tyre S.P.A. v Sichuan Yuanxing Rubber Co., Ltd. (UPC_CFI_770-2024 [1] and UPC_CFI_556/2025 [2] relating to EP3519207)
Pirelli Tyre S.P.A. v Tianjin Kingtyre Group Co., Ltd. (UPC_CFI_771-2024 [3] relating to EP2519412)
This article covers the developments of the main proceedings relating to two seizure orders issued around the same time (reported here [4] and here [5]) to alleged infringers of Pirelli’s EP2519412 and EP3519207 unitary patents. The cases took a markedly different course, since one defendant filed a statement of defence and counterclaim for revocation, while the other did not file any defence, leading to a judgment by default.
These Decisions from the Local Division of the Unified Patent Court in Milan relate to EP2519412 and EP3519207. The Applicant, Pirelli Tyre S.P.A. ("Pirelli") brought two separate infringement actions following respective seizure orders against Tianjin Kingtyre Group Co., Ltd ("Kingtyre") and Sichuan Yuanxing Rubber Co., Ltd. ("SYR"), in view of the exhibition of allegedly infringing products by the defendants at the "International Motorcycle Exhibition" ("EICMA") between 5 and 10 November 2024.
The Court rejected a counterclaim for invalidity of EP’207 brought by SYR, and found that SYR had infringed the patent in suit. Kingtyre on the other hand, did not file a statement of defence, and the Court issued a default judgment, asserting that Kingtyre infringed EP’412.
Following the initial seizure orders reported here [4], Pirelli entered into settlement agreements with Kingtyre DE and the China Council for the Promotion of International Trade, Automotive Sub-Council (CCPIT), each previously indicated as co-defendants in the respective requests for provisional injunctions filed against Kingtyre and SYR.
Kingtyre failed to file a statement of defence pursuant to Rule 23 RoP, so Pirelli requested the Court to issue a default judgment pursuant to Rules 355.1(a) and 355.3 RoP. As per Rule 355 RoP, a default judgment if the defendant fails to file a defence is only possible if the facts alleged by the claimant justify the measures sought and the defendant’s conduct in the proceedings does not preclude it.
On 30 July 2025, the registry certified that the statement of claim had been served on Tianjin Kingtyre on 2 July 2025. Kingtyre did not file a statement of defence within the three-month period specified in Rule 23 RoP.
The Court did not perform a substantial assessment of the validity of EP’412, explaining that in the case of a default judgment the Court does not have the procedural power to raise the issue of invalidity ex officio. The Court was satisfied based on Pirelli’s argument that Kingtyre’s K902 and GRADE W tyres fell under the scope of claims 1 and 3 of EP ’412.
The Court decided that given the particularly intrusive nature of defendant’s conduct, carried out via the internet and through physical display at EICMA, the issuance of a decision by default for an injunction pursuant to Art. 25 and Art. 63 UPCA was justified. The Court highlighted that the entry of the infringing products into the market was sufficient to expose Pirelli to the objective risk of erosion of its market share.
The Court found that the Kingtyre products infringed EP’412 and ordered the defendant to:
The Court also ordered the registrars at the Sub-Registry to hand over the products that were seized on 5 November 2024 to Pirelli’s representatives.
Because no concrete evidence was presented as to the actual sale of the tyres, the Court decided not to grant Pirelli’s requests of:
Counterclaim for revocation of EP3519207
On 17 June 2025, SYR filed its statement of defence, contesting the allegations that the HA-51R and HA-51F infringed EP’207, and filed a counterclaim for revocation, arguing that EP’207 was invalid. SYR’s counterclaim was based on alleged lack of sufficiency and alleged lack of inventive step of EP’207.
SYR argued that that the skilled person would have not been able to work the patent due to the vagueness of the definition of the terms “tread pattern” and “a specific portion”. The Court rejected these arguments, explaining that at best they may relate to lack of clarity, and in any case, they do not prevent the skilled person from understanding and implementing the features above.
SYR also argued lack of inventive step based on seven patent documents. Both Pirelli and SYR filed their respective arguments based on the problem-solution approach. It should be noted that the deadline for the written submissions was 7 November 2025, prior to the publication of UPC CoA No. 457/2024 and UPC CoA No. 528/2024, which clarified the UPC’s holistic approach for the assessment of inventive step. Accordingly, the parties were given a chance to comment in view of the new approach, but concluded that the problem-solution approach and the holistic approach would have not produced different results in this case.
The Court found in favour of Pirelli, and EP’207 was maintained unamended.
Infringement of EP3519207
The Court accepted Pirelli’s arguments relating to the infringement of EP’207 by the HA-51R and HA-51F tyres sold by SYR. The Court asserted that SYR’s acts of infringement amounted to:
SYR disputed that such conduct could be classified as an offer or placing on the market on the grounds that: the content of the web pages is not intended for consumers, the websites in question are not e-commerce sites, as evidenced by the fact that it is not possible to complete any online purchase, and the websites are not capable of reaching the territories of the UPC Member States in which EP’207 is in force, given that all content is published in English, Chinese and Spanish.
The Court rejected these arguments, explaining that: the presentation of the products for commercial purposes was evident, English is understood by a sufficiently large part of the UPC member states, and the EICMA trade fair is an ideal venue for commercial promotion.
The Court therefore decided that the acts of SYR amounted to infringement pursuant to Art. 25(1)(a) UPCA, through the offering, placing on the market and use of tyres bearing all the features of claim 1 of EP’207. The Court decided that the seriousness of the infringement justified the issuance of an injunction against the SYR, pursuant to the combined provisions of Art. 25 and Art. 63 UPCA.
The Court ordered SYR to:
The Court also ordered the registrars at the Sub-Registry to hand over the products that were seized on 5 November 2024 to Pirelli’s representatives.
[1] https://www.unifiedpatentcourt.org/en/node/183352
[2] https://www.unifiedpatentcourt.org/en/node/183353