Summary: The Local Division weighs up the interests of both sides and orders inspection after handover of the attacked embodiment outside the trade fair stand in order to protect the opponent’s business activities. (UPC_CFI_834/2025)
In principle, the burden of proof lies with the party invoking the facts. In many cases, it is impossible for the patent infringer to provide the necessary evidence for the infringement of the patent claims, as the necessary documents and information can only be found in the sphere of the potential patent infringer. The UPC regime therefore provides for an order of inspection and preservation of evidence, which makes it possible to search for evidence at the premises – in the sphere – of the potential patent infringer.
Such order is at the sole discretion of the court, which also applies to the question of ex parte. In several decisions, the Divisions of the UPC have considered the interests of the parties in a balanced manner, most recently the Local Division of Düsseldorf in the ex parte order of 4. September 2025.
The decision related to a patent concerning a robot localisation method and a robot to be localised accordingly. The opponent was a Hong Kong company whose German subsidiary was already offering the attacked embodiments as a novelty in Europe. In this case, the aim was to prove that the opponent was the manufacturer of the attacked embodiments and was offering them itself at the “Internationale Funkausstellung” in Berlin (5 to 9 September 2025). The trade fair was the only opportunity to collect evidence.
The Local Division followed the application at least in part and ordered – ex parte – that the robots in dispute be handed over to an expert who was to carry out the inspection and preserve evidence at a location other than the trade fair stand. The Division only ordered the inspection directly at the trade fair stand in the event of a refusal of the opponent to hand over the robots. The expert was to prepare a description of the inspected robots and submit it to the Local Division. The persons involved in carrying out the inspection and the preservation of evidence were obliged to keep the knowledge gained in the course of the inspection secret from any third party and also from the applicant.
The Local Division justified the ex parte order for inspection and preservation of evidence in detail, stating that there was a risk that the robots in dispute, as relatively small objects, could be easily moved to another location, and that they could also be modified by means of a short-term software update or by formatting the memory, leading to the risk of evidence being thwarted.
Furthermore, the Division allowed the opponent to prevent the measure of inspection and preservation of evidence at the trade fair by making a binding declaration that it was the manufacturer of the robots in dispute. With a corresponding binding declaration, the applicant would have achieved the above-mentioned aim of its request.
The Division also took into account the interests of the opponent in the case of the preservation of evidence by the fact that this should not take place – under the attentive gaze of the public – at the trade fair stand itself, as described above. Furthermore, documents were only allowed to be copied to the extent that, in the opinion of the expert, this was necessary for the preparation of his detailed description.
Overall, this decision of the Düsseldorf Local Court should be seen as a further example of the UPC’s willingness to enable the patent proprietor to prove patent infringement by ordering inspection and the preservation of evidence in cases in which it is unable to provide the corresponding evidence in full without information, lying in the patent infringer’s sphere of influence. At the same time, however, the Düsseldorf Local Divison also took the interests of the alleged patent infringer into consideration and endeavoured to ensure that the preservation of evidence was as “least damaging to business” as possible. This may be disappointing for the patent proprietor in cases, where he would have preferred the publicity of an inspection at the trade fair.