Valinea Energie v Tiru & Maguin SAS v Tiru (CoA_002/2025 & UPC_CoA_327/2025)
Decision date:
16 July 2025
Osborne Clarke summary
- The Paris LD previously granted Tiru's ex parte evidence preservation and inspection request against Valinea and Maguin. Valinea and Maguin requested a review of the order, but this was rejected. After the measures were carried out, Tiru brought two infringement actions before the Paris LD against Valinea and Maguin.
- Maguin and Valinea lodged appeals against the evidence preservation and inspection order. They requested that the Court of Appeal revoke the order in its entirety, order restitution to them of all seized items, and order Tiru to pay the full amount deposited as security to reimburse them for their costs relating to the measures.
- Maguin and Valinea objected to the proceedings being ex parte, particularly arguing that there was a lack of urgency, an absence of risk of destruction of evidence, and a lack of candour from Tiru as it failed to disclose material facts that might have influenced the court when deciding to make an order without hearing the defendants.
- The Court of Appeal rejected the appeals. According to the UPCA, the RoP, and the Enforcement Directive, the Court of First Instance may exercise discretion when examining an application for preserving evidence (Rule 194 RoP). On appeal, it was the Court of Appeal's job to determine whether the limits of this discretionary power have been exceeded or whether the Court of First Instance had made an error of law.
- The Court of Appeal explained that when the Court of First Instance examines an application for preserving evidence, it exercises its discretion by taking into account the urgency of the action and whether, and to what extent, it wishes to hear the defendant (Rules 194.1(a) and 194.2(a) RoP). Based on the evidence presented by Tiru, the urgency of the requested measures without hearing the defendant had been made out as there was a need to carry out an inspection of the inside of the furnace before it was brought into operation.
- In considering the urgency requirement, the Court of Appeal found it necessary to distinguish between the urgency required in the context of preserving evidence (Rule 194.2(a) RoP) and in the assessment of provisional measures (Rule 209.2(b) RoP). When considering an application for provisional measures, the court has to have regard to any unreasonable delay in bringing the application. The Court of Appeal confirmed that there is no such requirement imposed by either the UPCA or RoP when assessing whether an application for preserving evidence should be granted.
- The court must also assess the risk of the destruction or unavailability of evidence when making a decision on an evidence preservation application. This must be done on the balance of probabilities (Rule 194.2(c) RoP) or on the demonstrable risk of the evidence being destoryed or otherwise being unavailable (Rule 197.1 RoP). The court's assessment must not be based on the certainty of the evidence's disappearance or its unavailability.
- Unlike provisional measures where the court must be satisfied with a sufficient degree of certainty that the patent is valid (Rule 211.2 RoP), there is no such requirement to assess validity when determining whether to grant an application for preserving evidence. The validity assessment is solely in the competence of the judge hearing the case on the merits or on provisional measures, except where the presumption of validity can be clearly called into question – for example, following a decision by the Opposition Division or Board of Appeal in parallel EPO proceedings, or in revocation proceedings before another court.
- As such, the Court of Appeal held that Tiru could not be faulted for not addressing the validity of its patent in anticipation of a hypothetical attack on the merits when submitting the request. Maguin and Valinea had not demonstrated that the patent had been challenged elsewhere, and nor did they provide any evidence of correspondence between the parties relating to the alleged invalidity of the patent. Accordingly, they did not establish that any risk relating to the validity of the patent could constitute a "material fact" that might have influenced the Paris LD's decision to make the order ex parte (Rule 192.3 RoP).
- Prior facts that Maguin and Valinea argued should have been brought to the court's attention by Tiru were not required. There was no requirement for the applicant to identify and disclose prior art, unless the prior art was likely to influence the ex parte decision. The judge was also not required to examine any prior art that may be submitted, unless it was likely to influence their decision.
Issue
Curious about how UPC decisions might impact your business? Have questions about the UPC?
Reach out to our patents team for expert guidance and support.