fiskaly GmbH v. SwissBit AG & Swissbit Germany AG, UPC Court of First Instance, Düsseldorf Local Division, 7 September 2026, Case No. UPC_CFI_1332/2026
The Düsseldorf Local Division (“LD”) of the UPC has largely upheld, following a discretionary review under R. 197.3 RoP, an ex parte order for inspection and preservation of evidence, setting out three important guiding principles that:
1. to prevent a mere “fishing expedition”, evidence preservation measures must be based on plausible infringement grounds;
2. the existence of possible patent-free alternative solutions does not defeat an application for inspection – investigating which technical solution has in fact been implemented is precisely one, if not the primary, purpose of such proceedings; and
3. a protective letter filed by the respondent that contains no non-infringement arguments may itself reinforce the suspicion of infringement.
Background
The applicant, fiskaly GmbH, is a company based in Vienna. It is the proprietor of European Patent No. EP 4 285 308 B8, filed on 28 January 2022 and claiming priority from EP application 21154250 of 29 January 2021. The grant was published on 26 June 2024 and the corrected B8 specification on 17 July 2024. The patent has unitary effect. No opposition was filed against its grant.
The patent is entitled “Securely Registering a Sequence of Transactions” and the claims in issue are primarily claim 6, together with sub-claims 7 to 9 and independent claims 1, 10 and 12. In broad terms, it concerns a distributed system comprising a registration device and a signature device designed to ensure that a complete, tamper-evident sequence of signed transaction records is maintained between the two.
The respondents are SwissBit AG, incorporated in Switzerland, and Swissbit Germany AG, its German operating entity. The dispute concerns the respondents’ product, the Swissbit Cloud-TSE 2, a cloud-based technical security device used in German fiscal cash register systems.
On 20 April 2026, the applicant filed an application for an order for inspection and preservation of evidence at the respondents’ German sites. The Düsseldorf LD granted the order on 27 April 2026, without hearing the respondents. The inspection and preservation of evidence took place on 19 May 2026, and the court-appointed expert prepared his detailed description on 15 June 2026.
By letter of 18 June 2026, the respondents filed an application for review of the order pursuant to R. 197.3 of the Rules of Procedure (“RoP”), on which the Düsseldorf LD held an oral hearing online on 25 August 2026.
The Key Issues
The review raised four principal questions:
1. whether the applicant had demonstrated a sufficient probability of infringement with respect to the gap-filling features of claim 6;
2. whether all other reasonably available and less intrusive evidentiary means had been exhausted before seeking the inspection order;
3. whether the ex parte grant of the order was justified; and
4. whether the order was proportionate.
Decision and Reasoning
The Düsseldorf LD largely upheld its earlier decision.
Sufficient probability of infringement
The LD held that fiskaly had demonstrated a sufficient probability of infringement.
The court confirmed, following Centripetal v Palo Alto (UPC_CoA_239/2025), that the evidential threshold in preservation of evidence proceedings should not be set too high. The requirement under Art. 60(1) UPCA to present “reasonably available evidence” is less demanding than the burden of proof in infringement proceedings, particularly in relation to features for which the relevant evidence is inaccessible to the applicant. However, to exclude a mere “fishing expedition”, the applicant must still show that infringement is plausible. That requirement applies with particular force where, as here, the order was made ex parte.
That threshold was met. fiskaly had submitted a private expert opinion which, together with the regulatory framework, provided a plausible basis for alleging infringement of the relevant features. The LD also placed weight on the respondents’ conduct, noting that, during licensing negotiations, they had rejected a proposal for the embodiment to be examined by a neutral body. In addition, the respondents’ protective letter did not contain any no non-infringement arguments, which the court considered further supported a likelihood of infringement.
The court stated that where possible alternative solutions exist, it is precisely one – if not the primary – purpose of evidence preservation proceedings to investigate which solution has actually been implemented. Non-infringing alternatives therefore only preclude an order if they render the infringement case implausible, which was not the case here.
Exhaustion of other evidentiary means
The LD was unable to find that fiskaly had failed to exhaust all other reasonably available sources of information before filing its application. Even if a test purchase had been possible, the respondents had not explained how a test purchase alone would have enabled the applicant to sufficiently analyse the embodiment in issue. The applicant had also plausibly demonstrated that extensive research in publicly accessible sources was not sufficient to dispel residual doubts regarding the possible realisation of the relevant features.
Ex parte order
The LD held that the ex parte order was justified because there was a demonstrable risk that evidence will be destroyed or may no longer be available (Rule 197.1 RoP).
The LD held that, even assuming that subsequent manipulation of the certified source code was not possible and that any software change could in principle be ascertained from hash values, this would not have prevented the respondents from making access to documents, log files and source code more difficult, or from refusing access altogether, had they been given advance warning.
Further, the respondents’ trans-national corporate structure – with SwissBit AG incorporated in Switzerland – further increased the risk, that certain evidence would be withdrawn from access or made more difficult to obtain. The respondents’ interest in secrecy was in any event protected by the extensive protective measures contained in the original order, including the expert’s duty of confidentiality, the personal exclusion of the applicant from the inspection, and the court’s reserved decision on disclosure of the expert’s report.
The court confirmed, following Valinea v. Tiru (UPC_CoA_2/2025), that temporal urgency is not a separate prerequisite for an order for inspection or preservation of evidence under the UPCA, unlike the position for provisional measures, but it nevertheless remains relevant to the court’s exercise of discretion under R. 194.2(a) RoP. Here, the LD established that urgency was relevant, particularly since the respondents had refused to disclose relevant information in the licensing negotiations.
Proportionality
The LD held that the inspection and preservation order was proportionate.
The court considered that there was a risk that the respondents could rely on the protection against criminal self-incrimination (Article 59(1)(2) UPCA) and select the evidence to be produced, potentially withholding information material to the infringement issue. Further, the mere submission of documents would not have enabled the expert to examine the operating environment and system architecture of the embodiment during operation, which the court regarded as necessary to assess whether the respondents were using the patented mechanism.
The LD also said that the fact that the application for the preservation of evidence and inspection was made despite the existence of ongoing licensing negotiations was irrelevant, as the parties had not entered into any agreement precluding legal action during those negotiations.
Outcome
The respondents’ challenge to the inspection order was admissible but largely unsuccessful. The court did however grant one element of the respondents’ alternative request: the expert is now also required to bring the materials gathered during the inspection if main infringement proceedings are commenced. The question of how much of the expert’s detailed description may be disclosed to the applicant, and on what terms, remains to be decided separately, with the respondents’ confidentiality interests to be taken into account.
Implications
This decision confirms a lower standard of proof for infringement in evidence preservation proceedings than that required for infringement proceedings.
It also highlights the role that a party’s conduct, as well as poorly substantiated protective letters, may play in reinforcing a suspicion of infringement, and therefore likelihood of grant of such measures. From a practical perspective, parties should be aware that they can be subject to evidence preservation measures during licence negotiations, where, again, conduct can be relevant to an order being granted against them.
While properly substantiated protective letters offer considerable value, inadequate reasoning of non-infringement arguments may inadvertently place a party in a worse position. Parties filing protective letters should therefore ensure they provide properly substantiated and relevant non-infringement arguments in a protective letter to help protect their position and avoid inadvertently supporting the patentee’s position.
The decision can be read here.
