Couleur locale at the Unified Patent Court: Paris Local Division rejects challenge of a UPC saisie.

It was expected that traditions and tendencies from national patent litigation would find their way to the Unified Patent Court. A recent order by the Paris Local Division (LD) of the Court of First Instance is a good example. In Novawell v C-Kore (UPC_CFI_397/2023), the Paris LD rejected a challenge to an ex parte order for preserving evidence (saisie).

The contested order was issued on 14 November 2023. C-Kore alleged that Novawell, a former customer, infringes European patent N° EP 2265793 for a subsea test apparatus by the production and sales of a competing remotely operated vehicle to measure sub-sea line insulation and continuity. C-Kore had indications that Novawell intends to target the global market from its facilities in Montpellier. The Paris LD granted C-Kore’s request to appoint a court expert to gather evidence at those facilities.

Novawell challenged the ex parte order with a request for review under Rule 197.3 of the UPC Rules of Procedure (RoP). It argued inter alia that (1) the patent lacked novelty and inventive step, that (2) its device does not reproduce all relevant claim features of the patent and (3) there was no risk of destruction of evidence justifying an ex parte order. The Paris LD dismisses the challenge.

On validity, the Court says that there is no reason to examine validity at this stage of the proceedings because the patent “is in force and there are no pending proceedings challenging its validity”. That patentee-friendly stance is reminiscent of French and Belgian case law on the saisie-contrefa?on, where a very strong presumption of validity traditionally applies. But the standard seems to contrast with the one set by the Court of Appeal in Nanostring v 10x Genomics (UPC_CoA_335/2023). There, the Court of Appeal required a sufficient degree of certainty that the patent is valid and infringed for a preliminary injunction. To deny provisional measures, the Court of Appeal said that it must be satisfied on the balance of probabilities that it is more likely than not that the patent is invalid. While arguably, the degree of certainty of a patent’s validity must be higher for a preliminary injunction than for measures relating to evidence, the formalistic criterion in the Paris LD’s order seems to leave the target of a UPC saisie with hardly any option to challenge the presumption of validity.

On infringement, the Paris LD was similarly generous to the patentee, finding that C-Kore had provided sufficiently available reasonable evidence that the Novawell product was “very similar” to the C-Kore product, which was alleged to be an embodiment of the 793 patent. Again, this seems to reflect French (and Belgian) case law on the saisie-contrefa?on indicating that, because collecting evidence of infringement is the purpose of a saisie, the rightsholder cannot be required to conclusively establish infringement.

Novawell also argued that C-Kore had not established that there was a risk that evidence would have been destroyed or made unavailable if the order had not been issued on an ex parte basis. In that regard, Article 60.5 of the UPC Agreement requires, for measures to preserve evidence to be ordered without the other party having been heard, that this is necessary “in particular where any delay is likely to cause irreparable harm to the proprietor of the patent, or where there is a demonstrable risk of evidence being destroyed.” That language in the UPC Agreement (and Rule 197.1 RoP) marks a notable difference with the French and Belgian saisie-contrefa?on, where no requirement of necessity applies. In practice, however, the Paris LD does not seem to consider this a high threshold. In the ex parte order, the Court held that “it is generally accepted that digital data can easily be hidden or erased” when prior notice is given. On review, the Paris LD held that Novawell’s argument about the need to prove the risk of destruction was irrelevant, because Novawell could have made data unavailable or moved its product to another location if it had been informed of the saisie.

France and Belgium have always been attractive jurisdictions to gather evidence. The saisie-contrefa?on is a low-threshold and effective instrument to obtain access to evidence held by an alleged infringer on an ex parte basis. In Novawell v C-Kore, the Paris LD indicates that it is open for business to take on a similar role in the UPC system.