In its decision dated November 14, 2023, the Paris Local Division issued an ex parte evidence preservation order, which is similar to the ex parte « saisie-contrefaçon » procedure recognised in France.
Factual Background
The British company C-KORE holds European Patent EP 2 265 793 issued on August 1, 2012, relating to underwater devices and tests for such devices. C-KORE exploits the patent through the use and commercialization of the "CABLE MONITOR" product, an automated compact tool for testing underwater electrical assets, leased to contractors and companies worldwide.
In February 2023, C-KORE discovered that the company NOVAWELL, one of its former clients, had developed a competing product that, according to C-KORE, reproduces at least all the features of independent claims 1 and 15, and dependent claims 4, 5, 6, and 14 of EP 793 patent.
Therefore, on November 2, 2023, C-KORE filed an application for the preservation of evidence and sought an ex parte order granting measures to obtain evidence of infringement.
Order issued by the Paris Local Division
(i) Firstly, the judges, in a conventional manner, verified various procedural aspects, namely:
- the jurisdiction and the competence of the Unified Patent Court (JUB) and the Local Division of Paris,
- the regularity of the content of the application in accordance with Rules 13.1 and 192.2 of the Rules of Procedure,
- the validity of the patent at issue,
- the evidence provided by the applicant (in this case, pictures of the opposing product extracted from NOVAWELL’s website and NOVAWELL’s brochure), which were deemed sufficient to demonstrate that Claim 1 of the relevant patent had been infringed.
(ii) The requested preservation of evidence measures by the applicant mainly aim to secure evidence of the infringement regarding the other claims of his patent.
(iii) The judges considered that the circumstances justified rendering the order without hearing the defendant, given the risk of evidence destruction:
- the alleged infringing product being easily transportable,
- and the digital data requested to be seized by the applicant could be easily hidden or erased.
(iv) Applying the principle of proportionality, the judges took into account the position of the applicant—a small company—and the fact that the defendant is a former client of the applicant, in deciding to order ex parte order for preserving evidence in accordance with Article 60.5 of the UPC Agreement.
Decision Reference: Local Division of Paris, Unified Patent Court, C-KORE SYSTEMS V. NOVAWELL, November 14, 2023, UPC_CFI_397/2023/ORD_587064/2023.
