On 4 November, the Milan Local Division of the UPC handed down their final decision in the Oerlikon v Bhagat infringement action. This action commenced not long after the UPC opened its doors, with Oerlikon filing a request for the collection of evidence in June 2023, after Bhagat exhibited a texturing machine at the ITMA exhibition that Oerlikon alleged was an infringement of their patent.
Bhagat did not dispute either the validity of the patent, nor that the machine they displayed infringed it, and in light of this the Panel found them to have infringed Oerlikon's patent. Bhagat argued, however, that they had no knowledge of the patent and had not marketed any copies of the machine in UPC countries in which the patent was in force.
On the topic of permanent injunctions, the Panel noted that they were aimed at prohibiting continuation of infringement, and hence did not follow automatically from a finding of infringement, instead requiring that there be a risk that the infringing conduct be committed or repeated in future.
The Panel noted that there were two matters to consider when determining the scope of any permanent injunction: first, preventing the infringing act already established (promotion and exhibition of an infringing product), and second, preventing infringing acts not established, but which could still occur (distribution and sale of an infringing product).
In considering these matters, the Panel judged that the burden of proof fell differently for each matter. For acts already established, the Panel judged that it fell to the defendant to eliminate any presumption of risk of the repetition of the acts. However, for acts not yet established, the Panel judged that it instead fell to the plaintiff to prove that there existed a risk that the acts could yet occur.
Using these criteria, permanent injunctions were granted against Bhagat for both acts already established and acts not yet established. Bhagat were found to have insufficiently eliminated the presumption of risk in the first case, and a statement made by a managing partner declaring an intent to penetrate the market was found to establish enough of a presumption of risk in the second case.
We would suggest that this is an entirely appropriate outcome for the successful patentee. It cannot be right that an infringer can escape sanction by way of injunctions without fully satisfying the Court that there will be no further infringing activities. Indeed, the likelihood of an infringer ever being able to satisfy the Court would appear to be reasonably remote.
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