LD Milan, November 4, 2024, decision, UPC_CFI_241/2023

There is no basis for a stay (R. 295(m) RoP) of an infringement action, where the defendant has acknowledged the validity of the patent and infringement without exception, for the purpose of awaiting the Court’s decision on the counterclaim for revocation introduced in a parallel suit involving the same patent brought against a different defendant.

The Court held that the Defendant’s promotion of the allegedly infringing machine at a trade fair, even without actual sales, constituted infringement under Article 64(2a) UPCA.

The Court granted the Claimant’s request for a permanent injunction, emphasizing that a mere promise from the Defendant to stop infringing is insufficient to preclude an injunction under Article 63(1) UPCA. With respect to patent infringement that has already been established, it is up to the Defendant in infringement to prove that there is no risk of recurrence; with respect to future conduct, the burden of proof is on the Claimant.

The Court’s decisions on the penalty amount and the rejection of the publication order demonstrate a clear commitment to the principle of proportionality. The penalty under Article 63(2) UPCA was tailored to the specific circumstances of the case, considering the value of the infringing product and industry norms. Similarly, the Court declined to order publication under Article 80 UPCA, finding it disproportionate given the limited scope of the infringement.