UPC_CFI_468/2023 – C-Kore Systems v Novawell

Expert Commentary

Order after interim conference Background In this case, a seizure to preserve evidence took place (R. 190 RoP). The Court had appointed Mr Wlodarczyk (“Mr W”) to be present as representative for the claimant (patentee). The measures were carried out by a court-appointed expert and a bailiff. Mr W had sworn an affidavit about what happened during the seizure which the patentee (C-Kore Systems) had produced in the proceedings. Novawell wanted that affidavit removed. Decision of the JR The JR refuses as the statements of Mr W are not covered by professional secrecy. They just say how the seizure was carried out. The statements are also not covered by the confidentiality order in the present case. In the decision on the merits, the probative value of this affidavit written by a representative of a party will be assessed. The Court notes that the measures were recorded in the minutes of the bailiff, who is a ministerial officer, which is a document with the highest probative value. It is not necessary to hear the court expert and the bailiff, as the report and minutes submitted are sufficient to inform the Court. The JR also refused to allow French to be used during the oral hearing. It concluded that the French company was used to work also in English and that during the interim conference the parties spoke English. Comment Sensible decisions. A court has to trust the bailiff. If parties could follow the interim proceedings in English, you may assume that this is also the case for the oral arguments. The Court is supposed to be self-financing, so no unnecessary funds should be spent on (simultaneous) translation. R. 109 RoP allows a party to request translation at its own costs.

Full Decision Text

1 Paris local division UPC_CFI_468/2023 Procedural Order of the Court of First Instance of the Unified Patent Court delivered on 26/11/2024 CLAIMANT C-KORE SYSTEMS LIMITED 3 Bramley's Barn The Menagerie, Skipwith Road - YO19 6ET - Escrick - GB Represented by Denis Schertenleib DEFENDANT NOVAWELL 22 Allée des Caravelles - 34280 - Carnon-Plage – FR Represented by Jérôme Ferrando PATENT AT ISSUE Patent no. Proprietor EP2265793 C-KORE SYSTEMS LIMITED DECIDING JUDGE Presiding judge and Judge-rapporteur Camille Lignieres LANGUAGE OF PROCEEDINGS: English ORDER Pursuant to Rule 105.5 of the Rules of Procedure (RoP), following the interim conference, the judge-rapporteur shall issue an order setting out the decisions taken. In the present case, an online interim conference was held via Webex at 10 a.m. Paris time on 22 November 2024 and was audio-recorded (Rule 106 RoP). All parties were duly represented by their representatives. 2 Pursuant to Rule 104(d) RoP, the judge-rapporteur asked the representatives whether they saw any possibility of settling the dispute at this stage of the proceedings. The representatives replied that they had received no instructions from their respective clients to settle the case. Before the Interim procedure, NOVAWELL requested the Judge-rapporteur: - to reject exhibit 57 of the unredacted version of C-KORE’s last statement (R 175 RoP) - In case the request for rejection is not allowed, request that Mr Sartorius and Me François LABADIE be heard as witnesses (R 177 RoP) - Request for simultaneous interpretaƟon and the FR. language of the pleadings at the oral hear- ing. C-KORE replied that it contested all of NOVAWELL's requests. The Court ruled, pursuant to R 196.4 RoP, in its Saisie Order that Lukasz Wlodarczyk, patent attorney and lawyer registered to the Paris Bar, was designated as the representative of the Applicant, to be present at the execution of these measures. In conformity with the enforcement national law (i.e. French law in the present case) and the UPC specific rules of procedure concerning the Saisie, the measures of the seizure were carried out by one expert, appointed by the Court -Mr Sartorius- in order to proceed at the premises of the De- fendant. This expert is registered in the list of patent experts who are used to cooperate with the national Courts, so that the choice guarantees expertise, independence and impartiality, as re- quired by R. 196.5 RoP. The appointed expert will proceed assisted by the competent bailiff (Me Labadie), as it is appropriate and allowed under national law.” The Saisie operations were carried out by the Court's expert, i.e. Mr Sartorius, and the regularity of the operations was ensured by the bailiff, Me Labadie, who mentioned in his minutes the entire course of the operations. Mr Wlodarczyk was only present during the measures to represent the Saisie Applicant in the seizure. The representative is bound by the rules of the Code of conduct for UPC representatives (published in the UPC public website), which itself expressly refers to the rules of national professional conduct if relevant, i.e. the professional conduct for French lawyers, in this case (Règlement Intérieur National de la profession d'avocat – RIN). The statements made by Mr Wlodarczyk in the affidavit in question do not fall within the scope of information that the lawyer might have had outside the operations to preserve evidence as re- ferred to in the Code of Conduct for UPC representatives; the information given by Mr Wlodarczyk are related to how the seizure measures were carried out. The content of the affidavit is therefore not covered by professional secrecy as provided for within the UPC. The same applies to the na- tional rules of professional conduct for French lawyers (RNI art.2): what is covered by professional secrecy for lawyers relates to their relationship with their client or their relationship with their contradictor’s lawyers. Finally, the information covered by the confidentiality order ruled by this Court in the present case (Order n° ORD_12088/2024-UPC number: UPC_CFI_397/2023) concern the content of some doc- uments considered to protect trade secrets, which were collected during the seizure, and not the manner in which the seizure measures were carried out. 3 The Court, in its decision on the merits, will have to assess the probative value of this affidavit written by the representative of a party, then the Court will draw the conclusions it deems appro- priate, given that the measures were recorded in the minutes of the bailiff- who is a ministerial officer- a document with the highest probative value. Against this background, the Judge-Rapporteur considers that there are no grounds for disregard- ing the affidavit and that there are no grounds for granting the request to hear Mr Sartorius, the Court's expert on the seizure, as a witness at the oral hearing (his report submitted in the file is sufficient to inform the Court) and Me Labadie, the bailiff appointed for the seizure (his minutes submitted in the file is sufficient to inform the Court). With regard to the request regarding the pleadings in French at the Oral hearing, The Court notes that the language of the proceedings is English and this question has not been contested in a preliminary objection. Moreover, the defendants' representatives pleaded in Eng- lish at the oral hearing to review the Saisie. Finally, whereas NOVAWELL is a small French enter- prise, its managers are used to work in English with international partners (see the exchange of emails between the manager of NOVAWELL and C-KORE, in particular concerning the training pro- vided by C-KORE entirely in English: Exhibits C-KORE 4, 16, 18, 20 in the Saisie Order). Therefore, the request for pleading in French in the present case is dismissed. Regarding the need for simultaneous interpretation at the oral hearing (R. 109 RoP), the parties agreed at the Interim conference held on 22 November 2024, that this was not necessary for the reasons given above. The Judge-Rapporteur noted that the parties had not made any requests for further documents, experts, inspections or witnesses, all of which are provided for in Rule 104(e). Hence, the Interim Conference focused on the preparation of the upcoming oral hearing, which was scheduled for 17 December 2024 by the Procedural Order dated of 13/05/2024 (Rule 104 (f) RoP). Pursuant to Rule 104 (a) RoP, the parties agreed on the main legal points of the case as identified by the judge-rapporteur in the brief already sent to them via an email of 20 November 2024, with slight modifications, as follows: Claim construction (EP’793) The parties are invited to focus their explanation on the following notions: - “test apparatus”, - “operable underwater” Validity of the patent at issue Concerning the admissibility of the amendment request -mention of the unconditional proposal (if the amendment request is not admissible, NOVAWELL requests the invalidity of the entire patent as granted on the grounds of novelty and lack of inventive step-admissibility of the CC (§115 C-KORE Statement 28 May 2024); -requirement of art. 84 and 123 EPC (R. 30.1 b RoP); Concerning the validity of the patent as amended (= a limitation of the claims) - the Amended Claim 1 (1 to 12 and 14 to 18) on the grounds of - clarity (art.84) 4 - novelty, (over D2) - inventive step (over D1, combined with D6 or D7- and D3 combined with D16 and D17) -Other claims Infringement (alleged infringing product “SICOM”) Direct Infringement (art.25 UPCA): “the ongoing offering and placing on the market of the patented invention as well as its importing and storing for those purposes” (§40 SoC) The existence of the alleged infringement acts is denied by the Defendant Concerning the new Claims 11 and 14 (of the patent as amended), according to the Defendant, a ruling on the infringement of these said claims must be rejected (claims being beyond the scope of the initial claim) Injunction and measures requested Value of the case / Damages The amount of 1,588,111.00 EUR is the value of the case (mentioned in the CMS) estimated by the Claimant and contested by the Defendant who asks for a reduction to 205,606 EUR. The Judge-rapporteur decides pursuant to R. 104 (i) the value of the action at this stage of the proceedings, in accordance with R 370 §6 RoP which states that” The assessment of shall reflect the objective interest pursued by the filing party at the time of filing the action.” NOVAWELL justifies its request to reduce the amount by reference to its turnover regarding the alleged infringing product (Exhibit 46 NOVAWELL). The Court notes that the calculation of the damages caused by the infringement is based not only on the infringer's unfair profits, but also on the Claimant's lost profits due to the infringement, in accordance with Art. 68.3(a) UPCA. In the present case, C-KORE provides confidential information in Exhibit 21 relating to the cost of renting its product embodying the patent at issue. Having considered the information provided by the parties, the Court sets the value of the case at EUR 1 million. According to the Claimants’ request, damages will be determined in separate proceedings pursuant to Rule 125. The timeframe for the coming Oral hearing was set as follows: Preliminary introduction by the Presiding judge (10mns) 1. Validity of the patent at issue (3h) 1. 30 min for C-Kore’s presentation and interpretation of the patent 2. 30 min for Novawell’s presentation and interpretation of the patent 3. 1h for Novawell’s argument regarding validity of the patent as amended (included the admissibility of the amendment) 5 4. 1h for C-Kore’s response on validity 2. Alleged infringement (1h) 1. 30 min for C-Kore’s argument regarding infringement, 2. 30 min for Novawell’s response on infringement. 3. Requested measures and other legal points if needed (30mns) Me Denis Schertenleib, Me Marc Lauzeral and Mr Scott Flecher will plead for C-KORE while Me Jérôme Ferrando, Mme Sophie Delaveau and Mr Sebastien Fache will plead for NOVAWELL. In this context, the judge-rapporteur orders that the interim procedure is closed and that the oral procedure will begin on the date of delivery of the present order. Delivered in Paris, on 26 November 2024. Camille Lignieres, Judge-rapporteur. ORDER DETAILS Order no. ORD_598523/2023 in ACTION NUMBER: ACT_592899/2023 UPC number: UPC_CFI_468/2023 Action type: Infringement Action

Key Holdings

• A request to remove an affidavit from a party's representative regarding a seizure to preserve evidence (R. 190 RoP) was refused.
• The Judge-Rapporteur ruled that the representative's statements were not covered by professional secrecy or confidentiality orders, and their probative value would be assessed at the merits stage.
• The Court emphasized the high probative value of the bailiff's minutes, making further testimony from the expert or bailiff unnecessary.
• A request to use French during the oral hearing was denied, as the French company was accustomed to English and parties had used English during the interim conference.

Tags

• Confidentiality
• Evidence
• Language of Proceedings
• Procedural Issues
• Seizure

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