In a recent ex parte order (UPC_CFI_1325/2025) on inspection and preserving evidence for an intended infringement action, the protective effect of letters filed by the defendant, Inverquark, were analysed.
Before the request for inspection was made, the claimant, EVA Optic, sent a warning letter to the defendant InverJet. This letter was answered with an assertion of non-infringement and questioning the validity of the patent relied upon. In addition to this answer the defendant also filed a protective letter with the UPC to guard against applications for provisional measures.
The claimant requested inspection of, and preservation of evidence in relation to, the InverJet counter-current swimming device being exhibited at an Aquanale trade fair in Cologne, with regards to possible infringement of at least independent claim 1 of their patent. The technical nature of the product was such that the structure of claimed components couldn’t be readily established from viewing the exterior of the product, so that taking of photos alone is insufficient for determining infringement.
Despite the existence of the protective letter, the Düsseldorf Local Division permitted the inspection of the device at the trade fair, which was scheduled to last for just one more day after the issue of the order.
The court commented that the protective letter was primarily directed against an order for provisional measures, but that this didn’t preclude the issuance of the requested inspection order. Furthermore, the letter didn’t contain any specific reasons not to issue an ex parte order. It was particularly still thought likely that the product could be removed from the exhibition at short notice.
Moreover, although infringement was disputed in the protective letter, this defence was deemed inconclusive exactly because of the unresolved uncertainty around the actual structure of concealed elements of the device.
The defendant’s assertion of lack of validity in the protective letter was not considered to be sufficiently strong.
The court refrained from ordering the defendant to pay security as requested in the protective letter, given that, unlike an injunction, the inspection order bears the risk of only minor harm, with the defendant still being entitled to offer and distribute the products under investigation (UPC_CFI_260/2025; OTEC Präzisionsfinish GmbH; 26 March 2025 order cited). Another factor was the short duration of the trade fair – the panel thought ordering the provision of security would unreasonably delay the order in these urgent circumstances.
The court did however stipulate that the detailed description of the inspected device may not necessarily be released at all, or in full, to the claimant, and that first the defendant would in any event have an opportunity to comment on their interests in maintaining confidentiality of their business operations and secrets.
/Passle/6130aaa9400fb30e400b709a/MediaLibrary/Images/2024-05-16-11-37-11-800-6645efe75f1e870076120de2.png)
/Passle/6130aaa9400fb30e400b709a/MediaLibrary/Images/2024-05-14-12-57-49-590-66435fcdd0157bd4400b5187.png)
/Passle/6130aaa9400fb30e400b709a/MediaLibrary/Images/2024-05-07-13-30-52-906-663a2d0cf34996348f915649.png)