Order of 25 September 2024 [1]

This Order to Preserve Evidence pursuant to Art. 60 UPCA concerns a machine manufactured by the defendant that was being displayed at a 3-day trade fair. The application was made on day 2 of the trade fair and was referred to the standing judge, as is the case for extremely urgent matters. Although the application was filed before The Hague Local Division, the standing judge in this case was from the Local Division in Milan.

Data Detection Technologies Ltd. (“DDT”, the applicant) is a manufacturer of “advanced counting and packaging solutions”. DDT is the proprietor of EP2569713 (“EP713”, the patent at issue) titled “Method and Apparatus for Dispensing Items”. EP713 includes two independent claims: claim 1 relates a method for dispensing a predetermined number of discrete items into containers and claim 8 relates to an item dispenser as such. EP713 is a European patent which is validated nationally in 9 contracting states of the EPC, including the Netherlands.

Doytec Automation Ltd (“Doytec”, the defendant) is a China-based manufacturer of equipment for automated counting, weighing and packing, in particular for seeds and beans.

Suspicion of Infringement

Both DDT and Doytec were exhibiting at the trade fair “Seeds meets Technology 2024” which took place from 24-26 September 2024 in Zwaagdijk-Oost, Netherlands. DDT’s suspicions that Doytec was infringing EP713 arose as a result of two of DDT’s employees’ interactions with Doytec on the first day of the fair. The first employee observed a seed counting machine, called “C-1012”, on display at Doytec’s stand which they considered to be similar to the patented device made and sold by DDT. The second employee had a conversation with a Doytec representative who described a counting machine sold by the company possessing certain features of the claims of EP713.

In its application, DDT requested for the C-1012 (and related technical documentation) to be physically seized as a sample, and for a detailed description to be made by an independent expert.

Reasonably Available Evidence

Under Art. 60(1) UPCA, the court may order for the preservation of evidence if the applicant presents “reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed”. Developing case law of the UPC suggests that the bar for evidence is a fairly low one. This is perhaps unsurprising given that the filing of an evidence preservation application implies that the applicant needs to obtain further evidence of infringement before starting proceedings on the merits. The presence of certain (but not all) claimed features,[2] or a similarity of the alleged infringing product with the patented product sold by the applicant,[3] have both previously been deemed sufficient to satisfy this evidence requirement.

In support of DDT’s application, the two employees provided written statements which included a summary of the features of the granted claims that they understood to be present in the C-1012, along with photos of the machine taken at the trade fair. The standing judge decided that infringement was “plausible” on the basis of this evidence. The evidence therefore supported DDT’s claim that the patent was being infringed, but the judge noted that further evidence would be needed to prove the alleged infringement more conclusively.

Urgency and Risk of Destruction of Evidence

The court may order preservation of evidence without the other party (Doytec in this case) being heard “where there is a demonstrable risk of evidence being destroyed” (R197.1 RoP). The court took the view that the matter was extremely urgent, because the trade fair ended the following day and Doytec is a Chinese manufacturer, so there was a likelihood that the evidence would at least cease to be available in Europe after the trade fair.

As a result, the measures were ordered without Doytec being heard. Additionally, in accordance with R197.2 RoP, Doytec was not given prior notice of the measures. This is intended to (as the court put it in this case) “ensure the surprise effect” and prevent destruction of the evidence by the defendant before it can be seized.

When an order to preserve evidence is made without the defendant being heard, the applicant is required to provide security (to cover the defendant’s legal costs, expenses or injury as a result of the order), “unless there are special circumstances not to do so” (R196.6 RoP). In this case, the court considered the extreme urgency to amount to special circumstances, as the time taken for DDT to provide security might lead to the evidence becoming unavailable. As DDT was a large company that would presumably have the means to bear the defendant’s costs, provision of security by DDT was not required.

Confidentiality

An order to preserve evidence under Art. 60 UPCA is “subject to the protection of confidential information”. Whilst the order can be made without the defendant being heard or given prior notice, the evidence is seized by an independent expert and is not immediately made available to the applicant. In this case, the measures were to be carried out by a Dutch patent attorney, assisted by a bailiff, and the evidence and report delivered to the Hague Local Division (where the application was filed).

The Court of Appeal has previously clarified that an application to preserve evidence “implies a request to disclose to the applicant the outcome of the measures”, but in order to protect confidential information, the defendant should be given an opportunity to comment on the extent of the disclosure to the applicant.[4] In this case, Doytec was given until 30 October 2024 (around 1 month after delivery of the report to the Local Division) to file a request for confidentiality. If no such request was filed, the report would then become fully available to the applicant. This is different from the deadline for requesting a review of the order, which is 30 days from execution of the measures (R197.3 RoP).

Summary

Observations made by DDT employees at the trade fair suggested infringement was at least plausible, and no further evidence was required. The short duration of the trade fair and the fact that Doytec is an overseas company meant that there was extreme urgency and a risk that evidence could be destroyed or cease to be available. As a result, the measures were ordered immediately, without Doytec being heard and without the DDT providing security. This decision highlights the speed at which an evidence preservation order can be granted under extremely urgent circumstances, with the application filed and the measures ordered on the same day.

[1] The Order: https://www.unified-patent-court.org/en/node/97008

[2] Maguin SAS vs. Tiru, UPC_CFI_813/2024: https://www.unified-patent-court.org/en/node/69098

[3] Novawell v C-Kore System Ltd, UPC_CFI_397/2023: https://www.unified-patent-court.org/en/node/523

[4] Progress Maschinen & Automation AG v. AWM Srl & Schnell S.p.A, UPC_CoA_177/2024: https://www.unified-patent-court.org/en/node/936