UPC CFI LD Paris, 1 March 2024: blueprint of requirements for an ex parte order to preserve evidence ("saisie')
11-03-2024 Print this page
Ex parte order to perserve evidence (Article 60(5) UPCA, Rule 196 RoP, Rule 197 RoP).
Timing: the execution of the measure to preserve evidence (saisie) in accordance with French law includes the service by the bailiff of the "procès-verbal de saisie" at the end of the operations, which is the procedural act that closes the seizure operations and informs the defendant of the content of the notice so it can request a review (Rule 197(3) RoP, Rule 300 RoP). According to Rule 300 RoP for the calculation of UPC periods, the relevant event for the calculation of the 30 days is the date of service of the bailiff's minute. In the present case, the 30-day period runs from 6 December 2023 and expires on 5 January 2024.
Reasonable available evidence of infringement to support order to preserve evidence (article 60(1) UPCA) based on (i) a Novawell commercial brochure displayed at an international exhibition held in Scotland on 23 February 2023; (ii) an extract from Novawell's public website describing its product called "SICOM"; (iii) a warning letter sent by C-Kore to Novawell with said brochure attached as Annex 2, and (iv) Novawell did not contest the content of the document or its origin. The fact that the commercial brochure was collected in an area outside the UPC's jurisdiction is irrelevant; does not affect the evidential value of that brochure, and it is not disputed that Novawell offers the SICOM product from its premises located in France.
No reason for the Court to examine the validity of the patent in question at this stage. As C-Kore's patent is in force and there are no pending proceedings challenging its validity, the title is considered valid.
Suificient evidence of infringement. For a matter of preserving evidence at an early stage of the proceedings, the Court rightly considered that the applicant had provided sufficient available reasonable evidence of the alleged infringement against Novawell by marketing the SICOM product, a very similar product to the “Cable Monitor”, C-Kore’s product which embodies the patent at issue. Novawell denies the existence of any infringement, arguing that its product "SICOM" does not reproduce all the features of claim 1 of EP 793.
Ex parte measures can be based on any of the criteria mentioned in Rule 197 RoP; no conflict with non-exhaustive list of article 60(5) UPCA.
Demonstrable risk of evidence otherwise ceasing to be available (Rule 197(1) RoP). In the case at hand, the defendant, having been informed of an imminent seizure, could have made certain computer data unavailable or moved its product to a location other than its premises in Montpellier.
Request for preservation of evidence (“saisie”) (Rule 192 RoP) and request for inspection ("descente sur les lieux") (Rule 199 RoP) are two different and distinct procedures, each with a different purpose, the first being governed by Rules R. 192 to R. 198 RoP, in order to collect and seize evidence by detailed description or physically, and the second by Rule R. 199, in order to inspect products, devices, methods, premises or local situations in situ ("descente sur les lieux").
This means that there is no need to combine the two measures, even though the first obviously requires the right to enter a private place. In the present case, the Applicant clearly states that it is requesting a seizure to be carried out at Novawell's premises, and the order expressly instructs the expert to enter the defendant's premises at the appropriate address.
Preservation of evidence by an expert appointed by the Court and assisted by a bailiff is not in conflict with French national law and in conformity with Rule 196(5) RoP.
