In this decision, the Milan Local Division addressed two noteworthy issues extending beyond the specific infringement dispute between the parties.
First, the Court considered under what circumstances patent literature may form part of the common general knowledge of the skilled person. Aligning itself with established EPO Boards of Appeal case law, the Court confirmed that patent documents will only exceptionally qualify as common general knowledge, but accepted such an exception on the facts of the case.
Secondly, and perhaps of broader practical significance for UPC infringement litigation, the Court addressed evidentiary asymmetry in infringement proceedings and confirmed that evidentiary burdens may be redistributed where the claimant provides sufficiently strong indicia of infringement while the defendant has privileged access to the relevant technical information.
The Court expressly endorsed the EPO Boards of Appeal’s established approach that patent literature normally does not form part of the common general knowledge of the skilled person.
Referring to decisions T 1000/12 and T 412/09, the Milan Local Division confirmed that only exceptional circumstances justify treating patent documents as reflecting common general knowledge.
Such circumstances may exist where a consistent body of patent literature demonstrates that a particular technical approach was generally known in the relevant field.
The Court found such an exceptional situation here. The relevant technical issue concerned the planar representation of tyre tread patterns. In the Court’s view, a sufficiently coherent series of patent documents from the specific tyre sector demonstrated that this representation technique formed part of the common general knowledge of the skilled person.
Another significant aspect of the decision concerns proof of infringement.
The claimant relied, inter alia, on photographic reproductions of the defendant’s products, including materials obtained at the EICMA trade fair, to establish infringement. The defendant challenged the evidentiary value of that material. The Court rejected a purely formalistic allocation of evidentiary burdens.
Relying on the principle of proximity of evidence, the Milan Local Division held that where the party bearing the burden of proof has presented strong indicia supporting the alleged facts, and the opposing party has direct access to the relevant information and evidence, evidentiary burdens may be redistributed accordingly.
The Court expressly referred to the CJEU’s judgment in Kelly (C-104/10), noting that refusal by a defendant to provide information within its direct possession may undermine the effectiveness of evidentiary rules and requires courts to take account of informational asymmetry between the parties.
This is a potentially important statement for UPC infringement litigation. Patent proprietors will often face practical limitations in obtaining direct technical evidence regarding allegedly infringing products, particularly where relevant details lie within the defendant’s internal documentation or technical sphere.
The decision suggests that the UPC may be prepared to respond pragmatically where claimants provide persuasive circumstantial evidence rather than requiring unattainable direct proof.
At the same time, the threshold remains that you need strong indicia before any redistribution of evidentiary burdens becomes justified.
