UPC CFI 814/2024 – TIRU v VALINEA ENERGIE

Court
Local Division Paris
Date
Outcome
Order for preservation of evidence (seizure) and raid on premises granted in part.
Sector
Chemicals
Decision Type
Order for preservation of evidence (seizure) and raid on premises (ex parte)

Expert Commentary

Full Decision Text

1 Paris local division UPC CFI 814/2024 Order for preservation of evidence (seizure) and raid on premises of the Court of First Instance of the Unified Patent Jurisdiction, handed down on 23/12/2024 Concerning R.192 to 199 RdP APPLICANT TIRU 7, rue du Dr Lancereaux 75008 Paris Represented by Cyrille AMAR, law firm Amar Goussu Staub DEFENDER VALINEA ENERGIE rue du Champ du Cerf 25200 Montbeliard PATENT IN SUIT Patent number Owner(s) EP3178578 TIRU JUDGE WHO RULES COMPOSITION OF THE CHAMBER - SINGLE JUDGE Single judge, presiding judge Camille Lignières LANGUAGE OF PROCEDURE: French 2 ORDER Summary of facts and proceedings On December 17, 2024, before the start of the proceedings on the merits, TIRU filed a request for the preservation of evidence and a raid on the premises against VALINEA ENERGIE (hereinafter "VALI- NEA"). TIRU explains that it is the owner of patent EP 3 178 578 B1 issued on 1/08/2018 (hereinafter "EP'578"), entitled "Waste incineration plant and partner process". The applicant states that this patent is in force and covers France, the UK and Poland. It protects a technology used in a waste incineration furnace. According to TIRU, it learned in October 2024 that MAGUIN had supplied VALINEA, a subsidiary of VEOLIA, with a furnace that appears to reproduce the features of independent claims 1 and 15 and dependent claims 4, 5, 6 and 14. TIRU maintains that this waste incineration furnace supplied by MAGUIN will come into operation in the 1st quarter of 2025. TIRU explains that, on October 11, 2024, it had an online report drawn up by a court commissioner to establish the facts revealed by the YouTube2 video on behalf of the Agglomération du Pays de Montbéliard, illustrating the renovation of this public authority's waste-to-energy plant and unveiling a new waste treatment furnace, equipped with air injection devices, suggesting that it was using the patented technology. TIRU adds that this video was accompanied by posts on the LinkedIn network by VEOLIA employees revealing that its subsidiary VALINEA ENERGIE had used MAGUIN to supply and install a new furnace at the Montbéliard plant. The applicant seeks an ex parte order granting measures to obtain evidence of infringement. Order requested by the applicant In summary, TIRU requests: a detailed description, in particular by means written documents, plans, drawings, diagrams, photographs and/or films, of the allegedly infringing furnace at the Waste-to-Energy Unit managed by VALINEA ENERGIE, with the possibility opening the access hatches to furnace casing and its inlet face; -a physical seizure of documents relating to technical and promotional documentation and any accounting exhibits enabling the extent of the damage caused by counterfeiting to be calculated; -the preservation of digital media related to the oven in question by printing or copying; -that the expert be authorized to carry out any and all questioning and research necessary to establish the origin, consistency and extent of the alleged infringement; -that the seizure expert be assisted, if necessary, a court commissioner, a locksmith and the forces of law and order (police or gendarmerie); -a written report by the expert appointed by the court, together with the minutes drawn up by the judicial commissioner. 3 -the protection of the confidentiality of the information gathered, which is covered by business secrecy, in particular by the fact that the documents seized are only communicated to TIRU representatives; -the deposit by the claimant of a guarantee of 10,000 euros for legal costs and compensation for any loss suffered or likely to be suffered by the defendant. POINTS IN DISPUTE 1-Jurisdiction and competence The Unified Patent Jurisdiction (JUB) is competent to hear the present request pursuant to Articles 32.1 (c) and 60.1 of the Agreement on a Unified Patent Jurisdiction (AJUB) for the following reasons: - the patent in question is a European patent, which has not been excluded from the exclusive jurisdiction of the JUB (exhibit 18); - the patent is in force, inter alia, in France, as attested by the EPO register (exhibit 14). The Paris Local Division is competent under articles 32.1 (c) and 33.1 (b) of the AJUB, for the following reasons: - VALINEA Energie is headquartered in Montbéliard (25), France; - the plaintiff argues that the alleged infringement occurred in France; - TIRU intends to file proceedings on the merits based on article 33.1 (b) of the AJUB, in accordance with rule 192.1 of the JUB Rules of Procedure (RoP). 2. Compliance with rule 192.2 of the RoP 2.1. Application contents "The request for preservation evidence shall contain: (a) the information required by rule 13, §1, points (a) to (i) ; (b) a precise indication of the measures requested [rule 196, § 1], including the exact location of the evidence to be preserved if known or reasonably suspected ; (c) the reasons why the proposed measures are necessary to preserve the relevant evidence; and (d) the facts and evidence adduced in support of the request. 2.2. Concise description of future substantive proceedings TIRU explains that it intends initiate proceedings on the merits regarding the continued direct use of its patented invention allegedly committed by VALINEA on the basis of the evidence obtained in the present proceedings, in order to assert its rights in accordance with Art. 25 AJUB and to prove that VALINEA owns and exploits a product implementing the patent at issue in its capacity as delegatee of the Pays de Montbéliard Agglomération, of a waste exploitation mission ( exhibit 10.1). 4 Consequently, the requirements of rule 192.2 RoP are met. 3. Applicant's burden of proof under art. 60 AJUB - available evidence provided by the applicant 3.1. Owner's rights to a valid patent The applicant justifies that he is the current owner of patent EP'578 since 1/08/2018 (exhibit 1). With regard to the validity of the patent in question, Exhibit 15 shows that the patent will be in force in France in 2024. According to the information provided to the Court, no opposition is pending before the EPO. Consequently, the validity of the patent in question is sufficiently proven - at this early stage of the procedure. 3.2. Alleged infringement Patent EP' 578 protects both a waste incineration plant and a partner process. Claim 1 of the patent in question, as issued, teaches the following product: Waste incineration plant (1), comprising : - a combustion cell (10) extending along a longitudinal axis between an inlet face (2a) and an outlet face (2b) and having a side wall (11), said longitudinal axis being inclined so that the inlet face (2a) has a higher altitude than the outlet face (2b), the cell (10) being adapted to oscillate about said longitudinal axis; - means (4, 5) for introducing waste into the cell (10) via the inlet face (2a); - means (3a, 3b) for supplying combustion and/or cooling air the cell (10); - fume exhaust duct (6) through an opening in the side wall (11) of the cell (10); -characterized in that it further comprises a hollow envelope (12a, 12b) arranged around the side wall (11) so as to cover at least 50% of its surface, the combustion and/or cooling air circulating in said hollow envelope (12a, 12b) before being introduced into the cell (10), the hollow envelope (12a, 12b) having forward channels (120a, 120b) and return channels (121a, 121b), arranged so that the air circulating in said hollow envelope (12a, 12b) passes through the forward channels (120a, 120b) and then the return channels (121a, 121b) before being introduced into the cell (10), each return channel (121a, 121b) being arranged between two forward channels (120a, 120b). According to claim 15 of the EP 578 patent, the following process is taught: Waste incineration , characterized in it comprises the steps of : 5 - introduction of waste into a combustion cell (10) via an inlet face (2a), the cell (10) extending along a longitudinal axis between the inlet face (2a) and an outlet face (2b) and having a side wall (11), said longitudinal axis being inclined so that the inlet face (2a) has an elevation. TIRU explains that it already has sufficient evidence to demonstrate that it is true that patent EP'578 is implemented by the furnace installed in Montbéliard and exploited by VALINEA. It has also been sufficiently demonstrated that this furnace was supplied by MAGUIN, a competitor of TIRU in the non-hazardous waste treatment market (exhibit 8). The applicant states that this oven has similar characteristics to the product protected by the patent in question in claim 1 in particular. In support of his allegations, the plaintiff has produced a video and detailed, commented images taken from this video, which the subject of an report (online report dated 11/10 /2024 in exhibit 2). the light of these elements, in his application the applicant has carried out a detailed and circumscribed analysis of the images of the allegedly infringing oven, in the light of each of the characteristics of the two main claims of his patent (pages 12 to 23 of the application). This analysis reveals the existence of elements likely to demonstrate probable re-production, in particular for the following features of main claim 1: - 1.1 for a waste incineration plant, -1.2 relating to a combustion cell extending along a longitudinal axis between an inlet face and an outlet face and having a side wall, -1.4 relative to the cell being adapted to oscillate about said longitudinal axis, -1.6 on the means of supplying the cell with combustion and/or cooling air. As a result, the applicant has provided sufficient evidence at this stage to argue that claim 1 of his patent is likely to have been infringed, as well as for process claim 15 (mirror of claim 1). Nevertheless, the applicant indicates that he is seeking evidence of infringement for certain features of claim 1 that are not visible on the evidence already submitted, as well as for the other claims of his patent. In particular, a visit to the premises by a forensic expert seems necessary to confirm the reproduction of the following features of claim 1: -1.3 (said longitudinal axis] being inclined so that the input face has a higher altitude than the output face, the cell being adapted to oscillate about said longitudinal axis), -1.5 (Means introducing waste into the cell via the infeed face), -1.7 (a hollow envelope arranged around the side wall so as to cover at least 50% of its surface, combustion and/or cooling air circulating in said hollow envelope before being introduced into the cell), 6 -1.8 (the hollow envelope having forward and return channels arranged so that the air circulating in said hollow envelope passes through the forward channels and then the return channels before being introduced into the cell, each return channel being arranged between two forward channels). This is why the applicant needs an order to compile more evidence to prove the alleged infringement. 4. Requirements under rule 194.2 of the RoP In accordance with rule 194.2 of the RoP, the Court must take account urgency and grounds for granting an ex-parte order. 4.1. The emergency The applicant explains that MAGUIN is a direct competitorthat VEOLIA had approached it during the public procurement procedure and that MAGUIN won the concession (exhibit 6 on the concession notice). In October 2024, the applicant learned of the existence of the allegedly infringing furnace from a video posted on VALINEA's Montbéliard site, and also learned from this video that the furnace would be put into operation in the 2025 quarter. The applicant took two months to file the request for preservation of evidence with the JUB, which is a reasonable period of time in this case to compile the file. On the other hand, the Court does not agree with the applicant on the degree of urgency of his request, which filed on the CMS with the wording "extremely urgent". In fact, the Court considers that this is not a case of extreme urgency that would need to be dealt with immediately by the duty judge on the day of referral, but only of urgency in accordance with the provisions of R. 194.4 Rdp, criterion of urgency in this case being the risk of the furnace in question coming into operation in the 1st quarter of 2025, i.e. at the beginning of January 2025 at the earliest. This is why the present case is not being handled by the duty judge, but by the President of the Paris Local Division acting as a single judge in accordance with R. 194.3 RdP. 4.2. Grounds for granting an ex parte order - risk of destruction of evidence The allegedly counterfeit furnace cannot easily be destroyed or transported, as it is a very heavy ins- tallation. On the other hand, putting it into operation in the next few days (1st quarter 2025) would make the descriptive seizure as requested extremely difficult, if not impossible. In addition, data capture is one of the applicant's objectives, and it is generally accepted that digital data can be easily hidden or deleted if the applicant is warned in advance of such a request. It is therefore justified that the evidence could be easily deleted if the defendant is informed or heard before the measure is taken. Consequently, this order must be made without the defendant having been heard, as there is a clear risk that evidence will be destroyed or cease to be available (article 60, paragraph 5, of the AJUB). 7 5. Payment of legal fees The payment of legal costs due to urgency will only have to be justified before December 31, 2024, so the conditions set out in rule 192.5 of the RoP have been met. 6. Balancing interests and terms execution 6.1. Taking the interests of all parties into account means granting the measure, taking into account the potential risk of prejudice for each of the parties, in the event granting - for the defendant - or refusal of the measure - borne by the applicant. According to the information provided at this stage of the proceedings, the Court notes that the case involves competing companies operating on the French waste treatment market, and concerns a very costly facility operation has a strong economic impact. What's more, this measure involves no disruption to the waste incineration activity of the furnace in question, since it has not yet been put into operation. In view of the principle of proportionality, the threat of definitive destruction of evidence hanging over the plaintiff outweighs the defendant's exposure to the execution of the required measures. In this case, the request for an ex-parte order to preserve evidence is granted in part, and will in fact be limited to the preservation of evidence of the very existence of the alleged infringement. The applicant's request to determine the origin of the infringement, its extent and the amount of damage caused by the alleged infringement will not be granted. Such evidence will, if necessary, be adduced at a later stage in the proceedings on the merits, in particular in the context a measure of communication of in- formation and/or a separate procedure to determine the damage suffered by the applicant if it is shown that the alleged infringement is characterized. 6.2. In accordance with rule 196.4 of the RoP, the authorized measures will be carried out in accordance with the national law of the place where the measures are carried out - i.e. French law - by an expert, appointed by the Court and mentioned in the operative part, to proceed on the defendant's premises. This expert is on the list of patent experts who are accustomed to cooperating with national courts, so that choice guarantees expertise, independence and impartiality, as required by rule 196.5 of the RoP. The appointed expert will be assisted by a competent huissier de justice, insofar as this is appropriate and permitted under national law. Only a representative of the applicant, namely Mr Nicolas CORNET, industrial property attorney and European patent attorney, may be present during the execution of these measures. other representative or employee of the applicant is therefore authorized to attend execution of these measures. The appointed expert will submit a written report, together with a complete copy of all documents and data acquired during the execution of the measures, seven days after the execution of the measures, together with the attached bailiff's report of the operations carried out. 6.3. Privacy 8 In accordance with Art. 58 AJUB and rule 196.1 (d) RdP, the Jurisdiction orders that access to any information and documents gathered by the expert charge of carrying out the measurement be limited to the parties' representatives. A confidentiality circle will then be set up, in order identify information relevant to the case as well as information considered a "business secret" (within the meaning of EU Directive n. 943/2016 on the protection of business ) to be kept confidential so that access is limited to specific persons. In accordance with art. 60.8 AJUB and rule 198 RdP, evidence preservation measures will be revoked or cease to have effect, at the defendant's request, if the deman- deur does not bring an action leading to a decision on the merits of the case before the Jurisdiction within a period not exceeding 31 calendar days or 20 working days, is longer, from the date of submission of the expert's written report to the Jurisdiction. 6.4. The written report and any other results of the evidence preservation measures may only be used in the proceedings on the merits, in accordance with rule 196.2 of the RoP. 6.5. Meaning In view of the need to guarantee the effect of surprise, service of the petition, together with this order, will be effected by the petitioner at the defendant's premises, immediately at the time of execution of this order, in accordance with rule 197.2 of the RoP. 6.6. Warranty In accordance with rules 196.3 and 196.6 of the RoP, the Court orders TIRU to provide appropriate security - also as a condition of enforcement of this order - for the legal costs and other expenses incurred or likely to be incurred by the defendant, by depositing the sum of 20,000 euros. This order only takes effect when the applicant has provided a guarantee in the form of a deposit of funds. 6.7. Review The defendant may request a review of this order in accordance with art. 60.6 AJUB and rule 197.3 RoP. 6.8. Call The parties may appeal within fifteen days of notification this order, in accordance with article 73.2 (a) of the AJUB and rule 220.1 of the RoP. FOR ALL THESE REASONS COURT FIRST INSTANCE - PARIS LOCAL DIVISION orders that the applicant be authorized to : - preserve evidence and carry out an on-site inspection at the premises of VALINEA ENERGIE, where the furnace is located, rue du Champ du Cerf - 25200 Montbéliard, France by obtaining : 9 (a) a detailed description of the waste incineration furnace in question or of any device infringing patent EP 3 178 578 ; (b) the physical seizure or photocopying of related documents, including any technical and promotional documentation, in any format whatsoever, relating to the inci- neration oven in question or to any device infringing EP'578 or to the use of this device; (c) a written record of any notice given by a person present during the operations and (d) the storage by printing, copying or photocopying and the disclosure of digital media and data relating to the oven in question or to any device infringing EP 578 or to the use of said device, as well as the disclosure of any password required for access; and to submit to the Court a written report on the measures taken to preserve evidence con- cerning the infringement of claims 1 to 15 of European Patent EP'578 within 7 days of the execution of the measures. -The written report and any other results of evidence preservation measures : (a) can only be used in proceedings on the merits of the case; (b) will be accessible and discussed only by the representatives of the plaintiff and the representatives of the defendant, according to procedures to be defined by the court; - Mr Jérôme SARTORIUS, Cabinet NONY, 3 rue de Penthievre,75008 Paris, France, Telephone : +33 1.43.12.84.60, Mobile : +33 6.24.58.25.69, Email :jsartorius@nony.fr is appointed as expert for the enforcement of this order, with the assistance of a territorially competent commissaire de jus- tice, - As representative of the applicant, Mr. Nicolas CORNET, Industrial Property Attorney and European Patent Attorney, Cabinet LAVOIX, 2 Place d'Estienne d'Orves, 75441 Paris cedex 09, France, Email: ncornet@lavoix.eu, Telephone: +33 (0) 1 53 20 14 20, is authorized to be present during the execution of the present order with regard to the preservation of evidence. - Mr Nicolas CORNET is required to keep secret all facts of which he has knowledge in the context of execution of the present order, including with regard to the applicant and his employees. - The employee or officer of the applicant is not authorized to be present during the execution of this order with respect to the preservation of evidence. - The defendant is ordered to allow designated person to execute this order: (a) to enter the aforementioned premises or the defendant's local premises, in order to preserve the evidence specified in the aforementioned order and, in particular, to give him the opportunity to open the access hatches to the furnace casing and its entrance face; (b) to take photographs or films for documentary purposes as part of the orderly con- servation of evidence, and to use a dictation device to take notes; 10 (c) to hand over to the person appointed to enforce this order documents relating to the oven in question or to any device infringing EP'578 or to the use of said device, and in particular all technical and promotional documentation, in form, relating to the "oven" or to any device infringing EP'578 or to the use of said device. - If the defendant does not allow the designated person enforce this order, the designated person is authorized to call in a locksmith or computer specialist to enforce the provisions of this order. - Law enforcement officers may be present during the execution of this order to ensure the safety of the persons designated in the order. - The designated expert is ordered to submit to the Registry of the Paris Local Division of the Unified Patent Jurisdiction a written report on the measures taken to preserve evidence concerning the alleged infringement of patent EP'578, attaching all the documents collected, once the required activities have been completed and, in any event, no later than seven days from the date of execution of this order; and also simultaneously to communicate this written report to the representatives of the parties under the terms of the "confidentiality circle"; - Access to the expert's written report and its appendices is restricted to representatives of the parties; - The written report and any other results of the measures to preserve evidence may only be used in the proceedings on the merits; - Evidence preservation measures shall be revoked or cease to have effect, at the request of the defendant, if the claimant does not bring an action leading to a decision on the merits of the case before the Tribunal within a period not exceeding 31 calendar days or 20 ou- vrables days, is longer, from the date of submission of the expert's written report to the Tribunal; - The present order, together with a copy of the petition and its exhibits and instructions on how to access the proceedings via the CMS, shall be served by the petitioner at the defendant's premises immediately upon execution of the present order, in accordance with French law on the service of judicial documents; - This decision is enforceable subject to payment by the applicant of costs and a deposit guarantee of 10,000 euros to be justified before December 31, 2024 ; - The measures to preserve evidence and raid the site must be completed by January 17, 2025 ; - The decision on costs is suspended until the main proceedings; - The defendant may request a review of this order within thirty days of the execution of the measures, in accordance with rule 197.3 of the RoP ; - The parties may appeal within fifteen days of notification of this order, in accordance with art. 73.2 (a) AJUB and R. 220.1 (c), 224.2 (b) RdP. Rendered in Paris on December 23, 2024. 11 Signed by The Presiding Judge, C.LIGNIERES Date: 2024.12.23 10:55:52 +01'00' The clerk, M. BRASSEUR Date: 2024.12.23 11:24:35 +01'00' ORDER DETAILS Order no. ORD 67654/2024 UPC no.: UPC CFI 814/2024 Application number: 66573/2024 Type of request: Request for a descent order under rules 192 to 199 of the rules of procedure

Key Holdings

  • The UPC Paris Local Division has jurisdiction over the case concerning a European patent in force in France, and the alleged infringement occurred in France.
  • The applicant provided sufficient evidence of patent ownership and probable infringement of claims 1 and 15 of EP3178578, justifying the need for further evidence.
  • An ex parte order for evidence preservation is granted due to the urgency (furnace operation in Q1 2025) and the risk of digital evidence being hidden or deleted if the defendant were forewarned.
  • The scope of the measures is limited to preserving evidence of the *existence* of the alleged infringement, excluding inquiries into its origin, extent, or damage calculation at this stage.
  • The applicant must provide a security deposit of 20,000 euros, and strict confidentiality measures, including a confidentiality circle, will be applied to all gathered information.

Tags

  • Confidentiality
  • Evidence
  • Ex Parte Order
  • Infringement
  • Proportionality
  • Seizure
  • Trade Secrets
  • UPC
  • Unified Patent Court

Related Rules

Related Cases