Milan Local Division

UPC CFI no. 178/2024, no. 432/2024 Act. no. 20004/2024 - CC no. 42962/2024 order no. 69341/2024 issued on 17.6.2025

CLAIMANT

Progress Maschinen & Automation AG

EFENDANTS

AWM s.r.l. Schnell s.p.a.

DECIDING JUDGE

presiding judge and judge-rapporteur Pierluigi Perrotti

LANGUAGE OF PROCEEDINGS

English

ORDER

Pursuant to rule 105.5 RoP, following the interim conference, the judge-rapporteur shall issue an order setting out the decisions taken.

In the present case, an online interim conference was held via Webex on 5.6.2025 at 11 a.m. and was audio-recorded, according to rule 106 RoP. The parties agreed on the main topics to be discussed at the interim conference as previously identified by the judge-rapporteur in order no. 69278/2024 dated 13.5.2025.

These are the decisions of the judge-rapporteur on the issues discussed at the interim conference.

1. Possibility for the Parties to reach a settlement

The possibility of a settlement has been explored with the parties, without success to date. Should a concrete prospect for a settlement emerge in the future, the judge-rapporteur requested the parties to inform the Court in a timely manner.

Admissibility of the application for a new amendement of the patent (new version of AR4) pursuant to rule 30.2 RoP, as submitted by Progress in its rejoinder to the reply and reply to defence to the application to amend the patent dated 20.3.2025

The Claimant reiterated that the new version of the auxiliary request AR4 was justified by the defenses raised by the Counterparties and was filed in the first available written defense.

The Defendants maintained their objection to the admissibility of the new version of AR4 as belatedly submitted by Progress. As a less favored alternative, they requested that the Court grant them a period of time to file an additional brief on this specific issue.

Claimant did not object to the alternative request of the Defendants.

Pursuant to rule 102 RoP, the judge-rapporteur refers to the Panel any possible assessment - at the outcome of the oral hearing - as to the admissibility and, if so, the relevance on the merits of the new version of the AR4. There is no need to authorize the exchange of further written submissions on this particular point, as it has already been adequately addressed by the Parties in their respective defenses.

The Parties will fully explain their respective positions on this issue during the oral hearing.

Progress' request for an order to produce evidence (technical documents such as CAD, PDF and video files) regarding the presence of specific features in the Girderflex - Girderflex vsx apparatus, pursuant to Art. 67 UPCA and rule 190 RoP

The Claimant has withdrawn the request.

4. Need for translation of Enclosure W (filed by Progress) in its entirety

The Defendants have withdrawn the request.

5. Value of the actions

6. Legal costs

The parties have extensively discussed the possibility of an agreement on this issue.

Taking into account the mutual willingness expressed by the parties for this purpose, with their consent, the judge-rapporteur grants a fifteen-day period, starting from the filing of this order, to explore the possibility for the parties to reach an agreement (i) on the value of the

infringement action, (ii) on the value of the counterclaim for revocation and (iii) on the amount of costs to be paid by the unsuccessful party.

The parties are invited to notify the Court of the outcome of such negotiations by 2.7.2025.

In the absence of an agreement, pursuant to rule 104(k) RoP, the judge rapporteur will decide the value of the proceedings for the purpose of applying the scale of ceilings for recoverable costs.

7. Preparation of the oral hearing.

It is confirmed that the oral hearing will be held at the premises of the Milan Local Division in presence on 16.9.2025 at 10 a.m.. As previously clarified, at the oral hearing there will be a joint discussion of validity and infringement.

With a view to the oral hearing, the parties may prepare slides in order to best illustrate the case, using only arguments already developed and contained in their written submissions, with the prohibition to introduce new elements. The slides shall be sent and exchanged by e-mail, including the Milan Local Division e-mail address contact_milan.loc@unifiedpatentcourt.org, no later than 9.9.2025, so that all parties can see them in advance.

The parties are also authorized to file a final brief (not to exceed 20 pages) summarizing their positions by 23.7.2025. A complete list of all documents filed by each party shall be attached.

Again, no new arguments are permitted. The parties may only refer to arguments already contained in their previous written pleadings.

The approximate duration of the oral hearing will be 6 hours. More details on time slots for discussion of the various topics will be provided at a later date.

For any practical needs related to the conduct of the oral hearing, the parties are invited to contact the local clerks in a timely manner.

Milan, 17 June 2025.

Pierluigi Perrotti presiding judge and judge rapporteur