2025 Week 16
After an initial flurry and then a plateau, the cumulative number of applications for “provisional measures” at the UPC is now increasing at a steady clip. The vast majority of these (60, as of end March 2025) are applications for preliminary injunctions. Only 16 are for applications for preserving evidence – better known as “saisie” orders.
This week we first look at a textbook example of a UPC saisie order issued in interesting circumstances and then we review a majority of the previous saisie decisions to understand what the applicant needs to show the UPC to trigger this powerful measure.
Saisie granted ex parte and then reviewed
Bekaert v. Siltronic and Hinterberger (April 2025) is the outcome of a review of an ex parte saisie order by the UPC Local Division Düsseldorf. The patent is EP 3212356 B1, claiming a saw wire for cutting semiconductor materials. Something worth bearing in mind is that these wires are thin – typically less than 0.2mm in diameter. The invention is the shape applied to the wire in the form of a series of bends to make it better at carrying abrasive slurry to the cutting sites in the semiconductor wafer.
The Local Division had set out the terms of the inspection and evidence preservation order in a now-familiar way, including where the inspections were to be carried out, what (specifically) they were looking for and authorising seizure of relevant samples and documents. The order appointed an independent expert (a patent attorney) to execute the order and to prepare a report for the court within 3 months.
The orders were carried out in November 2024 and one of the defendants (Siltronic) filed an application for review of the saisie order in December 2024. Siltronic argued that the saisie order should be revoked because the patentee should have sought the evidence through more conventional approaches, such as trying a test purchase, or simple investigation of importation.
The court decided that the saisie order should stand. In their view, the patentee had done enough to try to obtain evidence from the defendants (by asking in pre-action correspondence) and had a legitimate interest in checking that the wires were in fact being used by the defendant for the purpose proposed in the patent claims. Also, the patentee had an interest in investigating the supply chain via the saisie order.
Art. 60 UPCA requires that the applicant for a saisie order must present reasonably available evidence to support the claim that the patent has been infringed or is about to be infringed. This establishes a threshold – the applicant needs to show at least some facts that support an allegation of infringement. This is somewhat chicken-and-egg, in that the purpose of a saisie is to provide concrete evidence of infringement but a saisie application has be based on some evidence of infringement. In the review of other saisie orders, below, we will look at where the threshold lies.
The really interesting thing about the facts of this case is that the required threshold evidence was discovered by accident. The remnants of a 0.175 mm sawing wire had been found by chance at a recycling company. Based on the location of the recycling company, the patentee deduced that the sawing wire had probably come from a local production site of the first defendant. They also considered it likely that the first defendant was also using 0.125 mm and 0.15 mm wires, manufactured by the same company in China, which would also be relevant for possible infringement of the patent. The patentee sought further information on the matter from the first defendant, but did not receive an adequate reply. This set of facts was enough for the court to order the ex parte saisie.
What have other saisie decisions said?
The UPC Court of Appeal has weighed in on one saisie case, in Progress Maschinen v. AWM and Schnell (July 2024). They explained the mechanics of a saisie application and the subsequent process of the release and use of the information obtained. We explained that in UPCW 2024 Week 32.
In Oerlikon v. Bhagat (June 2023), the UPC Local Division Milan decided on the first UPC saisie order. This was based on the exhibition of a machine at a trade fair. The saisie order was made ex parte in view of the urgency. The evidence presented was simply photos of the machine at the trade fair stand and this was enough for the court.
The Local Division Brussels issued an ex parte saisie order in Nelissen v OrthoApnea (September 2023) in view of an upcoming conference where the alleged infringing product was to be exhibited. The evidence provided was simply based on publicly available images of the alleged infringement.
In the first instance decision in Progress Maschinen v. AWM and Schnell (September 2023), the Local Division Milan ordered the ex parte saisie based a clear identification of products offered by the defendants, but where the available evidence (from a website and a YouTube video of the products) was incomplete so that infringement could not be completely proven.
The Local Division Paris ordered an ex parte saisie that was then reviewed in Novawell v C-Kore (March 2024). The initial saisie was ordered based on alleged similarities between the commercial product of the patentee (that product said to be covered by the patent) and the commercial product of the defendant. The evidence presented by the patentee was a brochure. In the review, the defendant argued that there was in fact no infringement of the claims, but the court considered that the similarity of the commercial products was enough to maintain the saisie.
In DDT v. Doyec (September 2024), the patentee came to The Hague Local Division to request an ex parte saisie on the basis of a machine seen at an exhibition. The evidence presented was witness statements from their own employees about the similarity of the alleged infringing machine compared with the patented device. Again, this was enough for the court.
The Nordic-Baltic Regional Division was asked to issue an ex parte saisie order in Imbox Protection v. Footbridge Group (February 2025). However, the court said that they wanted to hear what the defendants had to say about this. The defendants replied with a detailed expiation of the functionality of their product and on the basis of this information, clearly Imbox decided that there was no infringement, and so withdrew their application.
In Swarco v. Yunex (February 2025), the Local Division Munich adjudicated over an inter partes hearing for a saisie, in this case requesting inspection of traffic signals installed on a street in Germany. However, a test purchase had already been made by the patentee and so the technical issues of infringement did not need further evidence. What the patentee wanted was a clearer idea of whether the installed signals were the same as the test purchase device. The court avoided ordering a saisie – the defendant Yunex had not denied that the installed lights were the same as the test purchase, and so the court could assume that this was an undisputed fact between the parties.
In December 2024, the Local Division Paris ordered two related ex parte saisies which then came up for review in Tiru v. Valinea and Tiru v. Maguin (March 2025). The patentee had provided YouTube evidence and comments on what could be seen in the videos. But this evidence could not show that certain features of the claims were satisfied by the alleged infringing furnaces. The court decided that this was good enough and granted the ex parte order. In the review proceedings, the discussions turned on whether the patent was valid and whether the order should have been granted ex parte. The court was clearly satisfied that the initial evidence met the threshold for granting the saisie.
The mysteriously-named order Applicant v. Defendant (March 2025) from the Local Division Mannheim is a rare example of a case where a saisie order was refused and an order issued. The patentee had asserted that infringement was highly probable, using an expert report. The saisie requested was for an independent expert to go into the defendant premises to see the real-time operation of the apparatus/process. The saisie was refused by the court on the grounds that there was insufficient evidence of probable infringement. The court considered that it was possible that the defendant could be getting to their particular result without infringing the patent.
In Otec v. Steros (March 2025), the Local Division Düsseldorf ordered an ex parte saisie to be carried out at an exhibition stand. Although in principle the patentee could have made a test purchase of the apparatus, these were individually very expensive, and it was not clear that a purchase would be possible. The saisie required the defendant to allow the apparatus to be put into operation and measured, to provide evidence of whether the feature of the claims were met.
Overall, the UPC saisie cases on which there are published orders make it clear that there is a threshold for the reasonably available evidence to support the allegation of infringement. But this is fairly low. Clear evidence of an actual product/apparatus may be enough, even if important features of the patent claim are not apparent from that evidence.
Where are the other negative decisions on saisie applications?
The vast majority of the decisions reviewed above resulted in an ex parte saisie being ordered. But this may be deceptive. At least some of the 16 saisie applications identified in the UPC statistics have disappeared without trace. What’s going on? Well, the patentee can seek an ex parte order, but then the court has discretion to decide that they want to hear what the defendant has to say (under r194 RoP). In these circumstances, the court first gives the applicant the opportunity to withdraw the saisie application, so that the defendant is never told about it. It seems likely that this has been the fate of some of the saisie applications captured in the UPC statistics.
