Bekaert Binjiang Steel Cord Co. & Ltd v Siltronic AG and Hinterberger GmbH & Co KG, Order UPC Local Chamber Dusseldorf, 16 April 2025, Case no. UPC_CFI_539/2024
Panel: Presiding Judge Ronny Thomas, Judge Dr. Jule Schumacher filling in for Judge-rapporteur Dr. Bérénice Thom and Judge Tatyana Zhilova (Sofia, Bulgaria).
The Düsseldorf Local Division (LD) made an Order in the case of Bekaert v Siltronic & anr, rejecting an application by Siltronic for examination of an order previously granted in favour of Bekaert for the inspection and preservation of evidence. This order allowed Bekaert to obtain samples of saw wires that could have infringed their patent rights and which they believed could have come from Siltronic, as well as documents relating to these (including invoices and delivery notes) in order to prove the source of origin of the saw wires.
In their application Siltronic asserted that evidence preservation is only related to the technical aspects of infringement, and is not supposed to serve the purpose of finding evidence of particular infringing acts. In their decision the Düsseldorf LD disagreed with this position. In particular, the headnotes of the Order highlighted that while Rule 196.1 RoP mentions a large number of measures to preserve evidence, it is not an exhaustive list, and the measures required must always be determined against the backdrop of the applicant’s interest in preserving evidence, taking into account the particular facts of the case. The court upheld the original order, allowing the inspection and evidence preservation to proceed.
This decision sheds further light on the role of inspection and evidence preservation orders, and provides information as to how their use is viewed in the UPC and what evidence and documents parties can seek to obtain in these orders. It highlights that related documentation used for both the manufacture and distribution of materials / equipment can be sought in these orders, and given the nature of the decision will be of relevance to all sectors.
Background:
Bekaert is the sole proprietor of European patent 3 212 356 B1, to a “shaped saw wire with controlled curvature at bends”, a product which can be used in semiconductor manufacturing to cut wafers.
Siltronic produces and sells silicon wafers for the semiconductor industry. It obtains the saw wires required for its production from Bekaert, as well as from the “S” group of companies based in China. Hinterberger is a logistics company that provides storage facilities, used by Siltronic to store the saw wires it uses.
In the lead up to the main action, Bekaert filed an application for an order to inspect the respondents’ premises, and for an order to preserve evidence. It stated that it had accidentally found the remains of a saw wire from the manufacturer S at a recycling company in Freiberg, which it claimed infringed the patent in issue.
Bekaert stated that Freiberg is one of the most important production sites of Siltronic, and they therefore suspected that the disposed wire would come from Siltronic. Siltronic refused to provide information to Bekaert regarding the extent of the use of saw wires of S, but said they would no longer use the saw wire offered by S, until further notice, in the production processes at its German sites.
Bekaert argued that a stop on pre-ordered wires would not easily be possible, surplus wire would be use at other locations, and the identity of the company responsible for delivery to Germany was unclear. Therefore, they asserted that saw wires from S will continue to be used by Siltronic until trial. On this basis Bekaert applied for an order for inspection and preservation measures for evidence against the respondents with regard to saw wires from manufacturer S. This order was granted by the Düsseldorf LD on 18 October 2024, and included provisions relating to the preservation of related documentation to the distribution and origin of supply of the stored saw wires (for example invoices and delivery notes).
The inspection and preservation of evidence took place on 11 November 2024, and on 10 December 2024 Siltronic made an application for examination of the order for inspection and preservation of evidence.
Submissions
Siltronic requested that the Order of 18 October 2024 be reviewed and revoked, and in the alternative amended. They argued that the purpose of the procedure under Article 60 UPCA and Rule 192 RoP is to secure evidence, not gather information. They also claimed that Bekaert did not exhaust all available means to obtain the saw wires on the open market, and had not made a test purchase from S itself.
Siltronic also asserted that Bekaert had not submitted any facts that would indicate a possible risk of evidence destruction, and Siltronic had statutory retention obligations to keep documents for 10 years. They also noted that Bekaert also already had the saw wire obtained from the recycling facility, that they could have used in infringement proceedings.
Siltronic further submitted that proceedings for the preservation of evidence are not intended for the preservation of evidence of individual acts of use. The UPCA and Rules of Procedure are only concerned with securing evidence that can be used to prove, directly or indirectly, that the challenged subject matter makes use of the technical teaching of the patent.
Bekaert submitted that it still had no reliable knowledge of the actual use or extent of the use of the saw wire by Siltronic, and efforts to make a test purchase were not successful. As Siltronic’s supply chain is not known, it was necessary to produce the documents relating to the origin of the supply to obtain reliable information about all acts of use, including invoices and delivery notes.
Decision
The court rejected Siltronic’s requests to revoke or amend the order. They stated that the sole purpose of a review procedure is to examine the original order for any manifest errors made by the court that issued it. Siltronic had not shown any such errors existed.
The court additionally found that Bekaert had a legitimate interest in securing evidence, and that the inspection and evidence preservation measures were justified. The court found it questionable that Siltronic had not provided the saw wire to Bekaert when asked, and did not consider that a test purchase would have been promising, in particular as it would not have led to an amicable, quick and cost-effective solution.
Siltronic had made a submission that Bekaert could have brought an action against the recycling company after examining the wire found, but the court held that this fact does not lead to an error in the order granted, including for the related documentation as to the source of origin of the saw wire found. At the time of the order, there was no reliable knowledge of the origin of the wire found at a recycling company, and although it was mere suspicion, in the opinion of the court, this justified a further interest in preservation of evidence.
The court also found Bekaert were entitled to obtain preservation of evidence relating to proof of individual acts of use. They had no reliable knowledge that Siltronic used a saw wire that infringed the patent in suit; it only knew the source of supply and had found a saw wire that could not be clearly attributed to Siltronic but had the characteristics of the patent. The court held that, if Siltronic had ordered saw wire abroad and received it in Germany, the alternative course of action open to Bekaert of importing is likely to have been satisfied. Therefore, the tracking of the supply chain and the collection of corresponding evidence served the requirements for the preservation of evidence.
In respect to the disclosure of documents relating to the origin of supply of the saw wires, Article 60(2) UPCA provides that provisional measures may include the seizure of the infringing products, and, where appropriate, the materials and equipment used for the manufacture and distribution of those products and the related documents. The court noted that even though Rule 196.1 RoP allows a large number of measures in relation to preserving evidence, it is not exhaustive. The specific measures required must be decided against the background of the applicant’s interest in preserving evidence, taking into account the circumstances of the individual case. The ‘related documents’ referred to could be read to be in relation to the act of distribution of products. Evidence for proof of the distribution is typically delivery notes, invoices, etc., which can therefore be included in an evidence preservation order.
In relation to the risk of evidence being obstructed due to retention periods the court found that this obligation only applies to invoices, that the documents could be stored physically in a place other than the respondent’s registered office, or that a third party is or will be commissioned to keep them safe. These circumstances are likely to make it more difficult to access these documents.
On the basis of the submissions made by the parties, the Düsseldorf LD upheld the original order, allowing the inspection to proceed against Siltronic
The order can be found here (n.b. in German).
