UPC CFI 813/2024 – TIRU v MAGUIN SAS

Expert Commentary

Full Decision Text

1 Paris Local Division UPC CFI 813/2024 Order of the Court of First Instance of the Unified Patent Court issued on 24/03/2025 on the application for review an ex parte order (R. 197.4 RoP) APPLICANT (Defendant in the main proceedings) MAGUIN SAS 2, rue Pierre Semard 02800 - Charmes - FR Represented by Olivier DELPRAT, Casalonga law firm RESPONDENT (Claimant in the main proceedings) TIRU 7, rue du Dr Lancereaux 75008 Paris Represented by Cyrille AMAR, law firm Amar Goussu Staub PATENT IN SUIT Patent number Owner(s) EP3178578 TIRU JUDGE WHO RULES COMPOSITION OF THE CHAMBER - CHAMBER MEETING IN PLENARY Chairman and Judge- Rapporteur Legally qualified judge Legally qualified judge Camille Lignieres Carine Gillet Rute Lopes LANGUAGE OF PROCEDURE: French2025-03-24 LD Paris UPC CFI 813-2024 66560-2024 and 7220-2025 ORD 9276-2025 en-GBpdfDeepL machine translation provided by www.veron.com 2 ORDER PARTIES INVOLVED 1. TIRU is the applicant for evidence preservation measures (seizure and raid on the premises). TIRU is a French company specialising in waste-to-energy plants, founded in 1922 on the initiative of the City of Paris. The company designs, builds and operates waste treatment and recovery units. Since 2021, TIRU has been a subsidiary of the PAPREC Group, a French group specialising in waste management and recovery. 2. In the present proceedings, MAGUIN is the applicant for a review of the evidence preservation measures that have been ordered. MAGUIN a French company that develops and produces rotary kilns for various applications, including the incineration of industrial waste. FACTS AND PROCEDURE 3. TIRU is the holder of European patent EP 3 178 578 B1 granted on 1/08/2018 (hereinafter "EP'578), entitled "Waste incineration plant and associated process". 4. It has been justified that this patent is in force and covers France, the United Kingdom and Poland. 5. Patent EP'578 relates to a technology in a waste incineration furnace. It protects both a waste incineration plant and an associated process. 6. On 17 December 2024, TIRU filed two parallel requests before the Paris Local Division of the UPC for preservation of evidence and inspection of premises based on its patent EP'578, one against VALINEA ENERGIE and the other against MAGUIN, prior to any proceedings on the merits. 7. In support of its claims, TIRU stated that, via a YOUTUBE video from Pays de Montbéliard conurbation, it had been informed in October 2024 of the installation an incineration furnace, manufactured by MAGUIN and operated on the VALINEA ENERGIE site, which it believed infringed the characteristics of its EP'578 patent, that a seizure and a visit to the premises by a legal expert were necessary to enable it to confirm the reproduction of the characteristics and that it was justified for these measures to be ordered ex-parte. On 23 December 2024, two ex-parte orders were issued authorising the measures to preserve the evidence requested, limiting the scope of the measures requested to the search for of infringement (Orders No. ORD 67654/2024 UPC No.: UPC CFI 814/2024 and No. ORD 67655/2024 UPC No.: UPC CFI 813/2024). 8. The seizure measures were carried out on 14 January 2025 simultaneously at the site of MAGUIN, the manufacturer of the allegedly infringing oven (2 rue Pierre Sémard - 02800, Charmes, France), and at the site of VALINEA ENERGIE, the operator of the said oven (rue du Champ du Cerf - 25200 Montbéliard, France). 9. The written reports of the experts appointed for seizure were submitted on 20 and 21 January 2025. The confidentiality of the documents and information seized was protected by the establishment of a confidentiality circle restricted to the representatives of each of the parties.2025-03-24 LD Paris UPC CFI 813-2024 66560-2024 and 7220-2025 ORD 9276-2025 en-GBpdfDeepL machine translation provided by www.veron.com 3 10. These seized documents were then sorted under aegis of an expert appointed by the Court. The so-called confidential documents and information within the meaning of Article 58 UPCA and Rule 262A of the UPC Rules of Procedure (RoP) are currently accessible only to the members a confidentiality circle extended to the legal team and two natural persons for each of the companies designated by order of 6 March. 11. By application dated 12 February 2025, MAGUIN sought the withdrawal of the measures of seizure and search of the premises, on the following grounds: - the absence of an emergency, - there is no risk of evidence being destroyed, - the fact that TIRU deliberately withheld information likely to influence the decision to impose ex-parte measures (which amounts to the lack of loyalty alleged by VALINEA). 12. In accordance Rule 197.4 RoP, a hearing to consider the application for review was held in person at the premises of the Paris Local Division on 10 March 2025, with representatives of each of the parties making oral submissions to the panel of judges. REASONS Breach of the duty of loyalty : 13. Rule 192.3 RoP on the application for preservation of evidence requires that: "3. Where the applicant requests that preservation measures be ordered without hearing the other party (hereinafter referred to as "the respondent"), the application for preservation of evidence shall also set out the reasons for not hearing the respondent having regard in particular to Rule 197. The Applicant shall disclose any material facts known to it which may influence the Court in deciding whether to make an order without hearing the Respondent. 14. TIRU, which sought ex-parte relief against MAGUIN, is accused of not disclosing to the seizing judge the information that MAGUIN was aware of prior art that would destroy all the claims of its EP'578 patent, and thus of having breached its duty of loyalty. 15. MAGUIN maintains that TIRU was perfectly aware that the original furnace on the Montbéliard household waste incineration , known as the "Four Laurent Bouillet", designed in 1987, disclosed the characteristics of its patent EP'578. 16. MAGUIN adds that TIRU was aware of the technical documents for the old furnace, which designed by LAURENT BOUILLET INGENIERIE, since TIRU took over from this company after it was wound up. MAGUIN added that TIRU had taken part in numerous discussions with VALEST (later replaced by VALINEA) concerning the renovation of the old furnace in 2019. 17. In its reply, TIRU contests, on the one hand, having had access to all the technical documentation, in particular that which has remained confidential relating to the old oven, and the other hand, the fact that the old oven predates its patent EP'578.2025-03-24 LD Paris UPC CFI 813-2024 66560-2024 and 7220-2025 ORD 9276-2025 en-GBpdfDeepL machine translation provided by www.veron.com 4 18. Without it being necessary to rule on the issue of the seizing party's actual knowledge of all the technical documents relating to the old oven, the Court notes that, as the representative of TIRU rightly pointed out at the oral hearing, the seizing judge is not the judge of validity. Thus, the proprietor cannot be required, at the stage of the application to preserve evidence, to respond in advance to possible attacks on the validity of the patent, without prejudice, at the stage of the hearing on the merits, to discuss and determine a possible application for revocation of the patent. 19. In the present case, none of the information and particulars communicated by TIRU in its request are contested, justifying that it is the owner of patent EP'578, that no opposition proceedings before the EPO were in progress or that no court was seised of a challenge to the validity of the said patent, in particular for lack of novelty, on the date of the request for preservation of evidence. 20. As a result, MAGUIN has failed to demonstrate that TIRU breached its duty of loyalty under Rule 192.3 RoP when submitting its request. On the absence of a risk of destruction of evidence justifying an ex parte measure : 21. Article 60.5 UPCA on the order to preserve evidence and enter premises provides: "5. Measures shall be ordered, where appropriate, without the other party being heard, in particular where any delay is likely to cause irreparable prejudice to the patent proprietor or where there is a demonstrable risk of evidence being destroyed". 22. Rule 197 RoP on orders for the preservation of evidence without hearing the defendant states: "1. The court may order measures for the preservation of evidence [rule 196, § 1] without the defendant, in particular where any delay is likely to cause irreparable prejudice to the applicant or where there is a demonstrable risk that the evidence may be destroyed or may no longer be available". 23. MAGUIN maintains that TIRU's only argument for requesting an ex parte procedure is based on the risk of evidence disappearing and that the mere digital format of the data sought is not sufficient to justify a non-adversarial procedure. 24. MAGUIN adds that it is a well-established company and that the allegedly infringing oven is the subject of a manufacturer's file, which obliges the manufacturer to keep the technical documents to certify that the product complies with the regulations in force. 25. In the light of these arguments, the Court noted first of all that although the manufacturer's file makes it mandatory for the manufacturer to retain the technical documentation of a product in order to verify compliance with the regulations in force, this does not make it certain that this obligation to retain is necessarily applied, nor does it prevent the technical documents from being even partially modified or the search for those documents from being made impossible on the day of the seizure. However, the legal texts on the ex parte seizure procedure within the UPC do not require proof of certainty of loss or destruction of evidence in the case of adversarial proceedings, but only of the existence of a risk of loss of even partial evidence. 26. The Court followed MAGUIN's reasoning that the mere digital format of the data sought was not sufficient to demonstrate the existence of a risk of destruction or loss, as had already been held in C-KORE v NOVAWELL (UPC CFI 397/2023, LD Paris, 1st March 2024, page 7: in that case, the risk of displacement had been identified.2025-03-24 LD Paris UPC CFI 813-2024 66560-2024 and 7220-2025 ORD 9276-2025 en-GBpdfDeepL machine translation provided by www.veron.com 5 of the allegedly infringing product, but also the risk of loss or modification of digital data). 27. In this case, the application for seizure on the site of the manufacturer MAGUIN could not be dissociated from the application made at the same time before the same judge for seizure on the site of the ex- ploitant VALINEA. It was necessary for the operations to take place simultaneously on both the manufacturer's and the operator's sites, given the obvious links between the persons seized and their converging interests. The link between these two requests and their concomitant nature was moreover expressly mentioned in the contested order (cf. UPC CFI 813/2024, LD Paris, 23 December 2024, page 7 of the said order). 28. The seizure judge therefore assessed the overall effectiveness of the measures requested in support of a future infringement action. The search for technical documentation at the manufacturer's premises (actual seizure) was linked to that of the descriptive seizure of the oven manufactured by MAGUIN and installed on the VALINEA site. However, TIRU provided evidence that the furnace was about to be put into operation, and it was obvious that putting an incineration furnace into operation would have prevented or made extremely difficult the descriptive seizure requested, which essentially concerned the interior of the furnace, to which the most important features of TIRU's patent refer (see grounds for rejecting the application retraction of the VALINEA seizure, order no. ORD 13139/2025). 29. In the case in question, ensuring effectiveness of the measures for preserving evidence (in accordance with the principle of effectiveness, point 4 of the preamble to the RoP) justified carrying out these measures simultaneously at the manufacturer's site and at that of the operator of the oven accused of counterfeiting. 30. The principle of effectiveness, which justified an ex parte measure, was applied while also respecting the principles of justice, fairness and proportionality (points 3 and 5 of the preamble to the RoP) by strictly limiting the scope of the search for evidence to the sole characterisation of the infringement and by rejecting all requests relating to the re- search for extent of the infringement, as well as by establishing upstream a circle of confidentiality as restricted as possible. 31. As a result, the seizing party has sufficiently demonstrated the existence of a risk that the evidence will no longer be available or will be impossible to obtain, as provided for by Ar- ticle 60.5 UPCA and Rule 197.1 RoP, thus justifying that non-adversarial measures be ordered. Lack of urgency : 32. MAGUIN asserted that there was no urgency on its part to order the measuresarguing that the allegedly infringing oven was not on its premises, and the recording operations could have been carried out on its premises at any time, whether or not the oven was switched on. 33. MAGUIN added that TIRU, as a professional in a highly competitive market, had necessarily been aware of the video on Youtube, which was the subject of the official report of October 2024, as soon as it was first broadcast in August 2024. 34. As stated above, it was precisely in the context an extremely competitive market that the effectiveness of the measures requested justified carrying out the simultaneously at both sites (see UPC CFI 813/2024, LD Paris, 23 December 2024, page 7).2025-03-24 LD Paris UPC CFI 813-2024 66560-2024 and 7220-2025 ORD 9276-2025 en-GBpdfDeepL machine translation provided by www.veron.com 6 35. As regards TIRU's alleged knowledge of the Youtube video prior to October 2024, the Court notes that even if it is established that the video was first published on social networks in August 2024, it was not consulted very many times ("77 views", see exhibit 2: TIRU's statement of facts), which means that it was not very widely distributed. In this context, it has not been shown that TIRU was aware of it before October 2024. 36. The TIRU application was filed two months later, on 17 December 2024. A period of two months to compile the application for preservation of evidence appears reasonable, as the applicant seizure has an obligation Article 60.1 of the UPCA to present reasonably accessible evidence to support its allegations that its patent has been infringed or that an infringement is imminent. 37. In the light of these factors and in the context of the two concomitant applications for seizure, the standard urgency as analysed by the seizing judge, who moreover rejected the situation of 'extreme urgency' alleged by the applicant, was sufficiently characterised in the contested order. 38. As a result, none of the arguments raised by MAGUIN can be accepted and its application to set aside the contested measure must be rejected. FOR THESE REASONS 39. The Court orders that MAGUIN's application for retraction of the order to preserve evidence and raid the premises made on 23 December 2024 be dismissed, 40. Declares that this order may be appealed in accordance with Article 73.2 (a) UPCA and Rules 220.1 (c) and 224.2 (b) RoP. Issued in Paris on 24 March 2025. C. Lignières, Presiding Judge Date : 2025.03.24 15:04:45 +01'00' C. Gillet, legally qualified judge R. Lopes, legally qualified judge2025-03-24 LD Paris UPC CFI 813-2024 66560-2024 and 7220-2025 ORD 9276-2025 en-GBpdfDeepL machine translation provided by www.veron.com 7 DETAILS OF ORDER Order nº ORD 9276/2025 in ACTION Nº: 66560/2024 UPC nº: UPC CFI 813/2024 Type action: Application for an order for seizure and entry Rules 192 et seq. and 199 of the Rules of Procedure Related proceedings no. 7220/2025 Type of request: Request for review an ex parte order (R. 197.4 RoP)2025-03-24 LD Paris UPC CFI 813-2024 66560-2024 and 7220-2025 ORD 9276-2025 en-GBpdfDeepL machine translation provided by www.veron.com

Key Holdings

• The Court dismissed the argument that the applicant for evidence preservation (TIRU) breached its duty of loyalty (Rule 192.3 RoP) by not disclosing prior art, clarifying that the seizing judge is not the judge of validity and the patent proprietor is not required to pre-emptively address validity challenges at the evidence preservation stage.
• The Court found that the applicant for evidence preservation sufficiently demonstrated a risk of evidence being unavailable or impossible to obtain (Article 60.5 UPCA, Rule 197.1 RoP), thereby justifying the ex parte measures, particularly given the necessity for simultaneous seizures at both the manufacturer's and operator's sites and the impending operation of the furnace.
• The Court upheld the urgency of the ex parte measures, considering a two-month period to compile the application after discovering the alleged infringement to be reasonable, especially in a competitive market where simultaneous seizures were crucial for effectiveness.
• The Court affirmed that the principle of effectiveness justified the ex parte measure, while also ensuring proportionality by strictly limiting the scope of the search to the characterization of infringement and by establishing a confidentiality circle.

Tags

• Duty of Disclosure
• Ex Parte Order
• Infringement
• Preservation of Evidence
• Seizure
• Urgency

Related Rules

• Preamble – Preamble to the Agreement on a Unified Patent Court

Related Cases

• UPC_CFI_583/2025 – Bostik v Henkel
• UPC_CFI_808/2025 – Guardant Health v Sophia Genetics
• UPC_CFI_813/2024_Mar24_Saisie – Tiru v Maquin
• UPC_CFI_163/2024_May23_Infringement – Hurom v NUC
• UPC_CFI_813/2024 – Tiru v Maquin