Order

of the Court of First Instance of the Unified Patent Court delivered on 20/02/2025

ORDER NO. ORD_4166/2025 in ACTION NUMBER: ACT_549550/2023

HEADNOTES

• 1.Public access under Rule 262.1(b) RoP is not permitted with respect to information that the applicant may obtain from other sources, for example, by consulting the publications on the CMS of the Court's decisions and orders, or that will be available with the final decision closing the proceedings, which is expected soon and, in any case, in time to satisfy the interest underlying the request for access.
• 2. The integrity of the proceedings, as an expression of the general interest of justice, which may justify limiting the right of access under Rule 262.1(b) RoP, can also be linked to the need to safeguard the parties' freedom in making procedural choices. This includes situations where they have initiated negotiations for an amicable settlement of the dispute and particularly when the applicant has not demonstrated a general interest in overseeing and studying the Court's judicial activity and decision-making process - the primary purpose protected by Rule 262.1 RoP - but instead seeks to exercise its right of defense in another forum, a matter on which the appellate judge has already ruled negatively, also for other reasons.

KEYWORDS Rule 262.1.(b) RoP, Article 45 UPCA

Applicant

Bhagat Textile Engineers, represented by the attorney-at-law Peter Fitzpatrick

Respondents (Parties to the main proceedings)

Oerlikon Textile GmbH & CO KG, represented by attorneys-at-law Stefania Bergia e

Giulio E. Sironi

Himson Engineering Private Limited, represented by the attorney-at-law Fabrizio

Jacobacci

PATENT AT ISSUE

Deciding Judge

Judge-rapporteur

Composition Of Panel - Full Panel

Presiding judge Pierluigi Perrotti Judge-rapporteur Alima Zana Legally qualified judge Carine Gillet Technically qualified Judge Michel Abello

Language Of Proceedings:

Italian

ORDER

Procedural history

• 1. On 21 January 2025, Bhagat, acting as a member of the public, filed an application under Rule No. 262.1(b) RoP for access to the case file of the counterclaim for revocation (No. 596263/2023) brought by Himson in the context of the infringement action initiated by Oerlikon for the protection of patent EP '848 (Case No. 54550/2023, CFI 240/2023). documents and written submissions, citing a legitimate interest in accessing the documents for the following
• In particular, the applicant requested access to certain reasons:
• -the applicant was unsuccessful in a parallel first-instance proceedings (No. 549485/2023, CFI 241/2023) brought against it by Oerlikon for the infringement of the same patent, EP '848, and was ordered, in particular, to pay a provisional amount as compensation for damages, as well as to cover 80% of the legal costs (Order No. 598484/2023);
• -the applicant appealed the first-instance judgment on 6 January 2025 (Case No. APL-366/2025);
• -the applicant lodged an application for suspensive effect on 8 January 2025 to the Court of Appeal pursuant to Rule 223 ROP, pending the decision on the application for revocation of the patent filed in this proceeding by Himson

(APP. 1182/2025);

• -the suspensive effect was rejected by the Court of Appeal on 16 January 2025, as Bhagat had raised generic doubts about the validity of the patent due to the counterclaim for revocation introduced in these proceedings, without providing specific reasons for such uncertainty (ORD_2674/2025);

• -the applicant therefore has an interest - in light of the specific reasoning expressed by the appellate judge - in accessing the records and evidence of the present proceedings to substantiate its application for the suspension of proceedings by 4 March 2025.

• -regarding the balancing of conflicting interests, the applicant recalled that UPC precedents recognise that a member of the public may have a legitimate and specific interest in the validity of a patent.

• 2. The judge-rapporteur initiated the adversarial process and granted Oerlikon and Himson a deadline to submit their comments.
• 3. In a submission filed on 10 February 2025, Himson requested the following:
• • As its principal request, to reject Bhagat's application for access to the records and documents submitted by Himson for all the reasons stated above.

• -in the alternative :

• • to limit access exclusively to the portions of the records and documents strictly related to the validity of EP '848;
• • to grant Himson a deadline to file a version of the records and documents requested by Bhagat, with redacted portions that are not strictly related to the validity of EP '848;
• • to authorize Bhagat to use the documentation to which it may gain access and the information contained therein exclusively within the framework of the Oerlikon/Bhagat appeal proceedings (UPC_CoA_12/2025);
• • to impose a penalty in the event of a violation.
• 4. Oerlikon requested that Bhagat's application be rejected.
• 5. In particular, Himson and Oerlikon emphasized the following:

• -the applicant in the parallel proceedings has neither challenged the validity of patent EP '848, nor contested infringement, nor intervened in this case to support Himson's arguments for revocation, as emphasized by both this Court and the Court of Appeal in denying the suspensive effect requested by Bhagat. Therefore, any potential access to the documents in this case would not serve these purposes, as they have already been rejected at two different levels. Moreover, it would be inadmissible to introduce objections and grievances regarding validity at the appellate level if they were not raised at first instance;

• -the invalidity challenge brought by Himson in this case concerns only claim no. 1. Even if this objection were upheld the patent would remain valid for its remaining parts. Therefore, the final decision on the counterclaim for revocation, even if favorable, could not benefit Bhagat for the purpose of suspending decision no. 598484/2023, since, moreover, it has not clarified under which claims its products are alleged to be invalid;

• -the integrity of the proceedings, as a principle established in UPC case law, does not allow the application to be granted, especially since in the present case, Bhagat could take advantage of Himson's choices both from a technical and legal standpoint to initiate an independent revocation action before the UPC without bearing the associated costs.

• 6. The order is issued in accordance with:

• ✓ Rule 262.1 RoP and Article 45 UPCA;

• ✓ the case law established in the course of its application before the Courts of first instance and the Court of Appeal, with particular consideration given to the following rulings:

• • Rule 262a RoP is part of the broader regulatory framework governing access to the records of European institutions, designed to implement the principle of transparency (Article 1 TEU), which is ultimately intended to ensure oversight of the actions of public authorities. Such public oversight power takes on a distinct form

• -given the particular function and the interests involved - with respect to judicial bodies as opposed to legislative and administrative bodies ( Milan Local Division, 27.9.2023, order No. 569313 ACT-549550/2023 );

• In particular, public access requests are limited to written submissions and evidence filed in the case record (Rule 262.1 RoP), as decisions and orders are automatically made public under Rule 262.1(a) RoP (see Munich Central Division, 20.09.2023, Order No. 550152, ACT_459505/2023, UPC number: UPC_CFI_1/2023 ).

• -To gain access to written submissions and evidence filed in the register, an interested party must submit a reasoned request demonstrating a concrete, current, and verifiable interest, along with legally relevant grounds ( Munich Central Division, 20.09.2023, Order No. 550152, ACT_459505/2023, UPC number: UPC_CFI_1/2023; Milan Local Division, 27.9.2023, UPC_CFI_240/2023; Nordic-Baltic Regional Division, UPC_CFI_11/2023 ).

• • The Court, in its position of impartiality and neutrality, must also assess other potentially conflicting interests that could result in denial of access. Such interests include: a. the protection of confidential information and personal data; b. the general interest of justice; c. public order ( Court of Appeal, UPC_CoA_404/2023, APL_584498/2023, 10 April 2024 );
• • The general interest of justice encompasses the protection of the integrity of the proceedings ( Court of Appeal, Order No. 19369/2024, 10 April 2024, UPC_CoA_404/2023, APL_584498/2023; Paris Central Division, ORD_36092/2024 in ACT_22275/2024, UPC number: UPC_CFI_189/2024 ). And in particular:

• -the protection of the integrity of the proceedings generally applies only until the conclusion of the proceedings, whether through a decision by the UPC or another outcome, such as the withdrawal of the action ( Munich Central Division, ORD_591107/2023, ACT_464985/2023, UPC_CFI_75/2023, 22 August 2024 ).

• • if the protection of the integrity of the proceedings is no longer relevant, access to procedural documents - subject to any redactions - must generally be granted ( Court of Appeal UPC_CoA_404/2023 APL_584498/2023, 10 April

2024 ).

• -regardless of the outcome of the proceedings, an applicant may also have a specific interest in access, particularly if they have a direct interest in the subject matter of the dispute, such as the legal status of a patent that concerns it as a competitor or licensee, or if the applicant uses or intends to use a similar or identical product that (presumably) infringes patent rights ( Court of Appeal, UPC_CoA_404/2023, APL_584498/2023, April 10, 2024 ). In such a case, the applicant must demonstrate their status as a competitor or licensee; otherwise, access will be denied (See Paris Central Division, ORD_36092/2024, ACT_22275/2024, CFI_189/2024);
• • A party opposing parallel appeal proceedings before the EPO but not a party to the case before the UPC has a specific interest that prevails over the interest in maintaining the integrity of the proceedings ( Paris Central Division, ORD_587436/2023, CFI_316/2023, April 24, 2024 ).

The present case

• 7. While the application for access prima facie satisfies the criteria of a concrete, current and verifiable interest, a closer examination reveals that it cannot be granted for the reasons outlined below, considering the overall framework of the aforementioned rulings and their underlying rationale.
• 8. The Court observes in limine that the application must be assessed solely in light of the specific interest asserted by Bhagat. In this case, the applicant has cited only the procedural need to support its application for suspensive effect before the Court of Appeal in the proceedings challenging the ruling issued against it for the alleged infringement of patent EP '848. This is on the grounds that the Court of Appeal has already denied the suspensive effect of the economic provisions in the absence of specific arguments regarding the timeframe for resolving these proceedings and the absence of concrete reasoning supporting doubts about the validity of the patent raised in this case.
• 9. That being said, and considering the specific interest asserted, the assessment regarding access to the written submissions and evidence in these ongoing proceedings is negative for the following reasons:
• (I) Some of the information the applicant claims to have an interest in obtaining is, in fact, already available to it without accessing the written submissions and evidence of the present proceedings. Bhagat could have, and can still, obtain significant elements of the present proceedings - which the Court of Appeal noted were not submitted - from this Court's orders published on the CMS website. And in particular:

The status of the proceedings (and in particular the date of the Oral Hearing scheduled for 11 June 2025) (see ORD_598537/2023 adopted on 17 December 2024);

Certain relevant procedural circumstances, such as:

• ✓ The filing of seven auxiliary requests by Oerlikon ( Milan Local Division, 17.9.2024, Order No. ORD_40903/2024, ACT_549550/2023 UPC, UPC_CFI_240/2023 );
• ✓ The rejection by this Court, in a panel composition, of Oerlikon's request to introduce auxiliary request No. 8, submitted pursuant to Rule 30.2 RoP (Milan Local Division, 17.9.2024, Order No. ORD_40903/2024, ACT_549550/2023 UPC, UPC_CFI_240/2023 );
• ✓ Oerlikon's withdrawal, at the Court's request, of auxiliary requests nos. 1-3, while confirming the others (see ORD_598537/2023 adopted on 17 December 2024);
• ✓ two prior art references cited by Himson for invalidity purposes: U.S. patent US '795 and German patent DE '042 (see ORD_40903/2024, cited above).

However, these relevant pieces of information do not appear to have been submitted for review by the Court of Appeal in the proceedings concerning the application for suspensive effect. The Court justified its decision to reject the suspension, citing, among other reasons, Bhagat's failure to provide information on the status of the proceedings;

• (II) The need to safeguard the integrity of these proceedings until their conclusion, as a specific expression of the overriding interest of justice, is also reflected here in the parties' freedom to devise their respective litigation strategies, including cooperating, for instance, to reach settlement agreements (as encouraged by the judge-rapporteur during the interim conference, to which the parties expressed their willingness, see Order ORD_598537/2023). And this without prior knowledge, even indirectly, of the specific assessments - underlying the application - made by the appellate judge regarding the validity of the patent (and, before that, those of the firstinstance judge), assessments that could influence and steer the parties' procedural choices.

If instead - as seems more likely - the review by the appellate judge, requested by Bhagat for suspensive purposes, pertains to extrinsic and formal aspects of the technical adversarial process conducted in this instance, the relevant information, as already indicated in point (I), is already available to Bhagat;

• (III) The foreseeable conclusion of the present proceedings with the final decision - the Oral Hearing, as mentioned, is scheduled for 11 June 2025 before the Court of Appeal concludes the appeal proceedings. The potential granting of the application for revocation of EP '848 - limited to claim No. 1 - may be duly submitted by Bhagat in the appeal proceedings in which it is a party. This, on the one hand, prevents the risk of conflicts between different decisions concerning the same patent EP '848, and on the other hand, eliminates the need to access the records and evidence of the present proceedings, thereby safeguarding the opposing interests of Himson and Oerlikon;

• (IV) The Court of Appeal has already rejected Bhagat's request for the suspension of the final decision Order No. 598484/2023 under Rule 223 RoP, citing multiple reasons. In doing so, it confirmed the assessments of this Court which had previously dismissed Bhagat's suspension request under Rule 295(m) RoP during the Oral Hearing. The appellate judges emphasized not only the absence of a specific submission regarding the status of these proceedings - on which Bhagat is now basing its application for access - but also Bhagat's prior procedural choices, as outlined below.

Access to the case record would therefore not be beneficial to it.

• (V) Bhagat, defendant in case no. 549485/2023 brought by Oerlikon, did not challenge the patent but instead acknowledged its validity and did not contest the infringement. Moreover, it did not intervene in the present proceedings to support the revocation request filed by Himson - procedural choices that now prevent it from challenging the patent on appeal. Therefore, Baghat:
• a. is not a competitor challenging the patent in a parallel proceeding before a national court, the UPC, or the EPO;
• b. is not an economic operator requiring information on EP '848 to guide its market decisions, such as manufacturing or marketing products that may potentially conflict with the patented teachings; the situations described in points a) and b) are considered worthy of protection.
• 10. In conclusion, the interest in accessing the case record of an ongoing proceedings is not supported by a general public interest in overseeing and studying the judicial activity and decision-making process of the Court, which is the primary objective protected under Rule 262.1(b) RoP. Instead, it is driven by the need to exercise its right of defense in another forum, a matter on which the appellate judge has already issued a negative assessment for additional reasons (the Court of Appeal, which has already rejected the application for suspensive effect under Rule 223 RoP for other reasons as well). Consequently, the interests asserted by both parties in the present proceedings regarding the integrity of the process prevail, ensuring the confidentiality of their respective litigation strategies.

Moreover, access under Rule 262.1(b) RoP is not permitted with respect to information that the applicant may obtain from other sources, for example, by consulting the publications on the CMS of the Court's decisions and orders, or that will be made available with the final decision closing the proceedings, which is expected soon and, in any case, in time to satisfy the interest underlying the request for access. In the balancing of interests, the interest asserted by Oerlikon and Himson therefore prevails over the interest put forward by Bhagat.

Regarding Costs

• 11. Oerlikon has requested that Bhagat be ordered to bear the costs of the present proceedings.
• 12. The request must be rejected, as the reasoning expressed in a recent ruling of the Paris Central Division is entirely applicable, for the reasons briefly outlined below. This is not, in fact, a contentious proceeding on the merits in the technical sense nor is it a damages proceeding, as it is aimed at protecting a general interest rather than directly resolving a conflict between the parties regarding a subjective right with res judicata effects (Paris

Central Division, Order No. ORD_59519/2024, ACT_22275/2024,

UPC_CFI_189/2024): 'it can be inferred that, as a general rule, a decision on costs presupposes that there has been a decision on the merits of the dispute or for the determination of damages. For these purposes, a 'decision on the merits' must be understood as a decision that concludes litigation proceedings, that is proceedings where the ascertainment of a right is sought by one party against another and is capable of producing the effects of res judicata on conflicting subjective positions and from which a situation of the defeat of one party with respect to another may arise, justifying the award of costs. 15. The proceedings initiated by the request by a member of the public to have access to the register cannot be considered as litigation in a technical sense even if the application introduces an adversarial phase in which a real conflict between the applicant and one or more parties may arise. Indeed, the measure sought in these proceedings is merely instrumental to the purpose of enhancing transparency in the judicial activity and, consequently, its legitimacy and accountability to the public (see CD Vienna, order issued on 12 August 2024, UPC_CFI_33/2024). Hence, the proceeding in debate aims to the protection of the general and collective interest of the public and not to the protection of the particular interests of the applicant or of the parties in the main dispute. Even in case of conflict between them, the Court's intervention is primarily administrative in nature, lacking the characteristics of a judgment with res judicata effects on conflicting subjective positions. (see, in general CoA, order issued on 10 April 2024, UPC_CoA_404/2023)'.

Leave to appeal

• 13. The importance of a correct interpretation of Rule 262(b) RoP, in light of the underlying rationale of the provision, as outlined above, suggests that the appeal should be admitted. This is further supported by the need for a coherent interpretation within the system, as expressly stated in Preamble no. 8 of the RoP.

Therefore, an appeal against this decision is admitted.

ORDER

For these reasons, having consulted the constituted parties, the judge-rapporteur

• 1. rejects Bhagat Textile Engineers' application for access pursuant to Rule 262.1(b) RoP;
• 2. rejects Oerlikon Textile GmbH & CO KG's application to order Bhagat Textile Engineers to pay the costs of the proceedings;

The appeal against this decision is admitted.

Milan, 20 July 2025, Judge-rapporteur

Alima Zana

ORDER DETAILS

Alim

a

ZANA

Digitally signed by Alima ZANA Date: 2025.02.20 16:01:10 +01'00'

Order no. ORD_4166/2025 in ACTION NUMBER: ACT_549550/

Action type:

Infringement Action

Related proceeding no. Application No.:

3348/2025

Application Type:

APPLICATION_ROP262_1_b