C-KORE v Novawell Follow-up to the evidence preservation order: Paris Local Division explains the rules for reviewing such an order

Procedural order of 1 March 2024 (UPC_CFI_397/2023)

As previously mentioned, C-KORE Systems Limited (“C-KORE”) is the proprietor of the patent EP 2265793 relating to the testing of subsea apparatus and as such has obtained, on 14 November 2023, an ex parte order to preserve evidence against Novawell, one of C-KORE’s former customer, who is allegedly infringing the patent.

The measures of saisie were carried out at Novawell’s premises in Montpellier, France, on 5 December 2023. The expert, appointed to carry out the saisie, drew up a report to the Court on 14 December 2023. On 5 January 2024, Novawell filed a request to review the saisie order according to Rule 197.3 RoP.

Firstly, C-KORE challenged the admissibility of the review.

Secondly, Novawell raised several objections to the decision, which were not successful.

• Admissibility: How to calculate the time limit for applying for a review of an evidence preservation order

The request of a review of the order to preserve evidence must be filed within 30 days after the execution of the measures (R.197.3 RoP).

C-KORE argued that the period started on the date of the execution of the measures on 5 December 2023 and thus ended on 4 January 2024 while Novawell contented that the period started either on the date of the service of the bailiff’s report (6 December 2023) or on the date of submission of the expert's report to the Court (14 December 2023).

The Court followed Novawell's first line of argument, according to which the period began to run on 6 December 2023, the date on which the bailiff served the saisie report which, under French law, closes the seizure proceedings. The term "execution of measures" in R.197.3 of the Code of Civil Procedure does not include the expert's report to the court.

The 30-day period therefore runs from 6 December 2023 to 5 January 2024. Novawell submitted the application in time, on the last day.

• Grounds for a review of the order by the defendant
  • Burden of proof for the applicant to obtain an order under article 60 UPCA

The applicant for an order to preserve evidence must provide reasonable evidence to prove that the patent has been infringed or is about to be infringed. Allegations or suppositions are not sufficient. In ex parte proceedings, the applicant has a duty to present the facts fairly.

As regards the burden of proof, the Court considers that a commercial brochure displayed at an international exhibition and an extract from Novawell’s website describing the allegedly infringing products are sufficient at this stage, since Novawell does not dispute its origin.

With regard to the applicant's fairness, C-KORE did not disclose that it was aware that Novawell had been operating as a direct competitor since 2017 but the Court found that there was no lack of fairness.

• “Conditions” for obtaining an ex parte order

Novawell raised several objections, all of which were rejected. This gives us a very precise idea of the conditions for an ex parte order and how it is reviewed. There are four conditions:

• Urgency

Novawell's argued that there was no urgency, as C-KORE had been aware of its competitive activities since 2017. This argument was considered irrelevant.

• Risk of destruction of evidence

Article 60.5 UPCA states that “Measures shall be ordered, if necessary without the other party having been heard, 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.”

Whereas R.197 Rop states that “The Court may order measures to preserve evidence [Rule 196.1] without the defendant having been heard, in particular where any delay is likely to cause irreparable harm to the applicant or where there is a demonstrable risk of evidence being destroyed or otherwise ceasing to be available”.

Novawell argues that there is a conflict between the provisions of the Agreement and the Rules of Procedure. It claims that the only criterion taken into account in granting the order is the “demonstrable risk that the evidence being destroyed” of article 60.5 UPCA, whereas R. 197 RoP adds the notion of the risk that the evidence may no longer be available.

The Court finds that there is no conflict and moreover the text states “in particular” as the list is not exhaustive. Therefore, an ex parte order can be based on any of the criteria mentioned in R. 197 RoP and Novawell's argument is irrelevant.

• Challenge to the validity of the contested patent

The Court judges that there is no reason for it to examine the validity of the patent even if the defendant argues of its novelty and inventiveness, since the patent is considered valid and no proceedings challenging its validity are pending.

• Contestation of the existence of the infringement

It is not necessary to prove that the allegedly infringing product reproduces all the features of the claims of the patent, as the order is only for the preservation of evidence. It is sufficient to have available reasonable evidence of the alleged infringement.

• Necessity of an application under R.199 RoP “order for inspection”

According to Novawell, an application under R. 199 RoP “order for inspection” was necessary in addition to the order for preservation of evidence while the measures were being carried out at Novawell's premises.

The Court explains that the request for preservation of evidence and the request for inspection are two distinct procedures with different purposes, one is used in order to collect and seize evidence by detailed description or physically, and the other is used to inspect products, devices, methods, premises.

• Compliance with national law

The defendant argues that the saisie order and the UPC rules in general are not in conformity with French law, the national law to be applied pursuant to R. 196.4 RoP. Novawell argued about the fact that the measures were carried out by the court-appointed expert with the assistance of a bailiff, in accordance with the court order, whereas under French law the measure should be carried out by a bailiff, possibly assisted by an expert.

The Court points out that, under the French Constitution, the Convention takes precedence over French national law.

The presence of a bailiff, which is a guarantee under French law, assisted by an impartial and neutral expert appointed by the court, in order to carry out the measures provided for in the UPC rules, is consistent with French law, since the rights of the defendant are guaranteed.