Key takeaways
Physical inspections and judicial weighing experiments may be ordered under Rules 170.2(f), 170.2(g), and 201 RoP if necessary and proportionate to establish infringement
The claimant’s request to weigh the seized vehicle was justified to prove infringement. The court noted that practical difficulties and costs do not negate the necessity of the experiment. (Sec. 10 et seq.).
The court clarified that a prior refusal of this invasive measure during ante causam proceedings does not prevent its authorization during proceedings on the merits when immediately relevant to the dispute (Sec. 12).
Software source code production may be ordered under Rules 170.2(c) and 190 RoP, subject to a phased disclosure mechanism under Rule 262A RoP to protect confidential information
The court ordered the defendant to produce software documentation and source code because the software contains the operational logic of the hydraulic control system necessary to verify the claimant’s infringement allegations (Sec. 19).
To protect the defendant’s confidential information, the court established the following three-phase disclosure process: a) restricting access solely to documents provided by the defendant; b) in case the documentation is insufficient, the source code will first be made available to the court expert and the parties’ technical experts, and c) only thereafter will the sections of the source code deemed relevant by the experts be made available to a wider group (No. 2.6 of the order and Sec. 23, point (vi)).
The court requested that the plaintiff limits the auxiliary requests to 3 or 4, and that the defendant limits the objections to 3 or 4 novelty attacks and 3 or 4 inventive step attacks
The claimant filed 5 auxiliary claims with respect to the first patent asserted, and the court requested to limit them to 3 of these (Sec. 33 and 37). With respect to the second patent asserted, the claimant filed 6 auxiliary claims, and the court requested to limit them to 4 of these (Sec. 37).
The defendant has, inter alia, raised 4 lack of novelty attacks and 15 lack of inventive step attacks against the main request (claims as granted) regarding the first patent asserted. The court requested to limit the attacks to 3 novelty attacks and 3 lack of inventive step attacks against the main request and each of the auxiliary requests. With respect to the second patent asserted, the defendant has, inter alia, raised 9 lack of novelty attacks and 30 lack of inventive step attacks against the main request (claims as granted). The court requested to limit the attacks to 4 novelty attacks and 4 lack of inventive step attacks against the main request and each of the auxiliary requests (Sec. 37).
Division
LD Milan
UPC number
UPC_CFI_703/2025
UPC_CFI_1757/2025
Type of proceedings
Infringement proceedings (with counterclaim for revocation)
Parties
Claimant: Prinoth S.p.A.
Defendant: Xelom s.r.l.
Patent(s)
EP 2 507 436
EP 1 995 159
Body of legislation / Rules
R. 170.2(f), 170.2(c), 170.2(g), 185, 186, 190 and 201 RoP
