Key takeaways
No stay of proceedings due to parallel counterclaim for revocation
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.
Promotional activities at a trade fair can constitute patent infringement
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.
Permanent injunction granted despite implementer's promise to cease
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.
Proportionality guides remedy decisions
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.
Division
Local Division Milan
UPC number
UPC_CFI_241/2023
Type of proceedings
Infringement Action
Parties
Claimant: Oerlikon Textile GmbH & CO KG
Defendant: Bhagat Textile Engineers
Patent(s)
EP2145848
Body of legislation / Rules
Rules 119, 295(m) RoP, Art. 64(2a), 63(1), 63(2), 80 UPCA
LD Milan_UPC CFI 241 2023_2024-11-04 Download
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
