Bhagat Textile Engineers v. Oerlikon Textile GmbH & CO KG and Himson Engineering Private Limited, Order UPC Milan Local Division, 20 February 2025, Case no. UPC_CFI_4166/2025
On 20 February 2025, the Milan Local Division (LD) made an Order in the case of Bhagat Textile Engineers v Oerlikon Textile GmbH & CO KG and Himson Engineering Private Limited, rejecting an application made under rule 262 RoP seeking public access to documents. This decision highlights that access will not be granted where the requested documents can be obtained aliunde (i.e. from another source), or where the proceedings are expected to come to a conclusion in time to satisfy the interest underlying the request. The decision is the latest decision to explore the balancing of the right of the public to access documents, a right which is underpinned by the need to exercise one’s right of defence rather than a general public interest, with the need to preserve the integrity of proceedings still in being.
The decision also follows recent jurisprudence from the Central Division in Paris, finding that requests to access documents cannot be considered as litigation in a technical sense, and rather are directed to the protection of a general interest, and accordingly cannot be the subject of a decision on costs.
Background
Bhagat Textile Engineers is a company active in the development, production and marketing of textile machinery. Oerlikon, owner of the patent EP 2,145,848 B1 entitled ‘false twist texturing machine’, brought an action for infringement against Bhagat before the Milan LD and on 4 November 2024, and the Milan LD found in favour of Oerlikon.
On 6 January 2025, Bhagat filed an appeal of the Milan LD decision, and separately filed an application for suspensive effect pursuant to rule 223 RoP. Bhagat’s application for suspensive effect was rejected by the Court of Appeal on 18 January 2025, on the basis that Bhagat had not evidenced the existence of exceptional circumstances that would justify a departure from the rule that appeals do not have suspensive effect, noting that Bhagat had merely claimed that such exceptional circumstances would arise from parallel invalidity proceedings, to which it was not a party, without giving details of the status of the proceedings. The Court of Appeal also noted that Bhagat had stated that there were ‘considerable doubts’ as to the validity of the patent at issue, without giving reasons, and that Bhagat had not filed a counterclaim for revocation itself or intervened in the parallel revocation proceedings.
On 21 January 2025, Bhagat filed an application requesting access to the file of the parallel revocation proceedings, a claim for revocation brought by Himson against Oerlikon’s patent. As Bhagat is not a party to the revocation action, it filed the application for access as a member of the public. Bhagat argued that it had a legitimate interest in accessing the documents in order to be able to give reasons for its request for suspension of the infringement proceedings.
The Judge Rapporteur invited Himson and Oerlikon to comment on the application. Himson requested that the application be rejected, or in the alternative, that Bhagat’s access to the documents be limited to the portions of the documents strictly related to the validity of the patent at issue, and that the documents be redacted accordingly. Oerlikon argued that the application should be rejected.
In arguing that Bhagat’s application be rejected, Himson and Oerlikon noted that Bhagat had not contested the validity of the patent or intervened in support of the revocation action, and had not challenged the infringement proceedings. They argued that any access to the documents could not benefit Bhagat and that it would be inadmissible for Bhagat to introduce complaints on the validity of the patent, when they had not been alleged in the first instance. They also pointed out that the invalidity challenge brought by Himson only relates to one claim, and therefore even if the complaint was upheld the remaining part of the patent would maintain its validity and could not benefit Bhagat in its application for suspensive effect.
Finally, it was argued that the integrity of the procedure prohibited the application from being upheld, in circumstances where Bhagat could exploit Himson’s technical and legal choices to independently initiate a revocation action before the UPC, without incurring the costs of same.
Decision
Considering the arguments of Himson and Oerlikon, as well as the jurisprudence on rule 262 RoP and public access to documents, the Milan LD determined that the request for access could not be granted. Taking into account the specific interests claimed by Bhagat, namely to support its request for suspension, the Milan LD denied the application on the basis of the following:
• Some of the information requested by Bhagat was already available to it from the Orders of the Court and the UPC CMS website, such as the progress of the procedure and date of the hearing. Notwithstanding that this information was available to Bhagat, it did not seem to have been submitted to the Court of Appeal in support of the request for suspension.
• The need to protect the integrity of the proceedings before they are finalised, and that granting access could influence the procedural choices of the parties for example, in negotiations (which the judge rapporteur had urged during the interim conference).
• An oral hearing of the revocation proceedings is scheduled before the Court of Appeal concludes its second instance hearing in the infringement proceedings, and if the revocation action is successful, the result can be promptly attached by Bhagat in its appeal, without creating a risk of conflict between different decisions on the same patent, and without the need for access to the revocation proceedings documents before their conclusion.
• In circumstances where the Court of Appeal had already rejected Bhagat’s application for multiple reasons, underlining the lack of specific information regarding the revocation proceedings, and the procedural choice of Bhagat not to attack the patent or contest infringement, access to the documents could not help Bhagat.
• Bhagat had chosen not to attack the patent’s validity or challenge the infringement proceedings. It also did not seek to intervene in the revocation proceedings in support of Himson’s application, and therefore Bhagat is not a competitor attaching the patent in a parallel court, or an economic operator who needs the information.
The Milan LD concluded that the interests in accessing the file of proceedings that are still in progress are supported by the need to exercise one’s right of defence elsewhere, and not by a general public interest. Therefore, in circumstances where the Court of Appeal had already rejected Bhagat’s request for suspension, the requirement to maintain the integrity of the proceedings and the procedural strategies of the parties prevailed. Furthermore, the Milan LD noted that rule 262 RoP does not permit public access to documents where the information can be found elsewhere, for example on the CMS website, or where the conclusion of the proceedings is expected shortly and in time to satisfy the underlying interest of the request for access, and therefore the balancing of interests weighted in favour of Oerlikon and Himson. Accordingly, the Milan LD rejected Bhagat’s application.
On the issue of costs, citing the Paris Central Division in its decision in Meril v SWAT Medical, the Milan LD rejected Oerlikon’s application for an order for costs against Bhagat, on the basis that the Bhagat’s application could not be considered as litigation on the merits of a technical issue, and is aimed at a general interest rather than resolving a conflict. As the proceedings are not aimed at settling a conflict between parties, and the Courts role is primarily administrative in nature, a decision on costs is not appropriate.
The order is here.
