UPC “seizure ” Part IV: the appeal against the “seizure ” order

French practitioners are well acquainted with retraction proceedings, particularly because they have multiplied since the reform of the law on trade secrets. Indeed, since this reform, the seized party is obliged to request the maintenance of the seals (which has been affixed at his request to items seized during operations on the pretext of protecting trade secrets) within the longest period between 31 days and 20 working days (we are used to talk about “one month” to our client to simplify and to lodge some days before the deadline to avoid any potential problem with communication). However, the retraction remedy is used to include these claims for maintenance (request for retraction of the order as the main claim and request for maintenance as a subsidiary claim). In any case, the fact remains that the aim of such an appeal is, in principle, to have the judge who made the order withdraw it, because the applicant has brought to his attention facts which would have influenced his decision at the time of issuing the order (either by not issuing the order or by modifying the measures contained therein). Under French law, there are two grounds on which the person from whom the order is sought may request that the order be withdrawn: unfair presentation of the facts at the time the application is submitted (which derives from article 10 of the French Civil Code, which lays down the principle of fairness of the proceedings, and article 3 of Directive 2004/48 which requires “fair” measures) and/or disproportionality of the measures granted (a requirement which derives from both article 7 of directive 2004/48 and article 494 of the French Civil Procedure Code, which requires the application to be “reasoned“).

First of all, it should be noted that rule 197.3 RoP imposes a time limit of 30 days, after “execution of the measures“, to request a review of the order. There are slight differences with French law here: the time limit is 30 days (instead of the longer of 31 days or 20 working days), and the time limit is imposed on the appeal itself, i.e., it is not linked, as in France, to the maintenance of seals affixed to items on the pretext of protecting trade secrets. Apart from the desire to protect trade secrets, under French law, an order can be challenged at any time, even during the trial on the merits. A contrario, we can deduce that in a UPC litigation, the very execution of the order may not provide grounds for invalidating a seizure report.

The grounds that may justify a retraction will therefore be derived from the texts relating to the UPC seizure, primarily Article 60 UPCA, and potentially from national laws where applicable. This approach was confirmed by the decision issued by the Paris local division on March 1^st, 2024.

Firstly, the Court determines whether the one-month time limit has been respected. In this case, according to the defendant, the operations were carried out on December 5, and the appeal was lodged on January 5, so the 30-day time limit under article 197.3 had not been respected by the plaintiff. However, the Court points out that, in accordance with rule 300 of the ROP, the time limit begins to run the day after the relevant event. Accordingly, the time limit ended on January 5, and NOVAWELL therefore lodged its appeal within the time limit, since the 30-day time limit only end on December 6, the date on which the minutes were served.

Secondly, the Court examines the reasonable evidence. The Court examines the various items of evidence provided by the defendant, which concern, it will be recalled, the marketing of a “SICOM” machine claimed to reproduce in particular claim 1 of the patent. Under this same criterion (reasonable evidence), the Court also examined NOVAWELL’s argument of unfairness in the presentation of the request and considered that the knowledge of the seized party’s commercial activities since 2017, which had not been disclosed in the request, was not unfair, because the applicant would only have become aware of the infringement in 2023.

Thirdly, the Court examines whether the conditions for obtaining an ex parte order have been met. As far as urgency is concerned, it considers that NOVAWELL has not demonstrated the risk of irreparable damage, and that urgency must therefore be assessed based on the risk of destruction of the items. However, in the Court’s view, the mere assertion made at the time the application was submitted that the items might no longer be accessible satisfied this criterion.

Fourthly, NOVAWELL contested the validity of the patent and infringement: two arguments which, as the Court recalls, are not to be taken into consideration at the stage of the seizure order.

I must admit that this decision, while well-reasoned and interesting in certain respects, leaves me somewhat disappointed—not because of the Court’s response itself, but due to the weakness of the arguments put forward by the plaintiff. In particular, I’m thinking of the “reasonably available evidence” required under Article 60. From the seizure request, it appears that this expression has been interpreted in a narrowly literal sense, disconnected from any substantive analysis of infringement. Indeed, as we observed, the applicant—similarly to the approach taken in the OERLIKON case—merely asserted that its machine was being infringed by a competitor’s machine, claiming that this alone demonstrated, at a minimum, the plausibility of the infringement of claim 1. In this instance, NOVAWELL limited its arguments to challenging the dates of the documents provided, without addressing the more crucial issue: that C-KORE has only submitted reasonable evidence of the commercialization of a machine (“SICOM”), not reasonable evidence of patent infringement. We are all familiar with the common bias of conflating the machine produced by the seizing party (“CABLE MONITOR”), said to embody the patent, with the patent itself, and then comparing the machines directly. However, this overlooks the fundamental point: what must be reproduced is not the machine, but the patent. In other words, “reasonable evidence” should aim at reproducing the patent’s technical teachings—not merely drawing parallels between machines.

Another point already raised on this blog is that this lack of any real demonstration of plausible infringement prevents a full assessment of the proportionality of the measures granted: proportionality is not simply a question of balancing the interests of the parties, but also of the correlation between the “reasonable evidence” and the measures granted. In other words, the extent of the measures should be proportional to the evidence, which was impossible to assess in this case based on the evidence provided. Here, NOVAWELL need only have referred to Articles 3 of Directive 2004/48.

Moreover, the unfairness denounced by NOVAWELL – knowledge of marketing since 2017 that had not been disclosed – seems to have been based on article 60, since the Court refers to it under reasonable available evidence. However, de facto, reasonable available evidence and unfair presentation are two different things and have different grounds in French law. As recalled by a ruling of the Cour de cassation (French Civil Supreme Court) on December 6, 2023, it is the principle of loyalty set out in Article 10 of the French Civil Code which is the ground of such loyalty. It would therefore have been judicious to invoke the correct basis, at the risk of the claim being rejected for its mere inadequacy with the text.

Finally, the Court’s clarification regarding the time limit for lodging an appeal is worth highlighting. In this case, the Court relied on Article R. 615-2 of the French Intellectual Property Code, which provides that a copy must be left with the same holders of the seizure report. The Court concluded that this provision implies, in fine, that the service of the report copy forms part of the seizure measures and therefore marks the starting point of the appeal period. In contrast, it was clarified that the submission of the expert’s written report is a distinct act, separate from the execution of the seizure. This nuanced clarification is particularly noteworthy. Under French law, it is generally accepted that the closing of operations triggers the start of the appeal period, as the defendant argued. Orders often specify that the bailiff has three days to prepare the report after the operations are closed. However, the UPCA refers to “the measures” rather than “the operations” as the reference point for the 30-day deadline. This means that if the order provides a specific time frame for drafting the report—three days, for example—the appeal period begins the day after that deadline expires. This is a significant clarification, especially since such time frames are commonly included in seizure orders.