UPC (Paris Local Division): First Order Authorizing Ex Parte Measures to Preserve Evidence!

Facts Recap

• The UK company C-KORE is the holder of European Patent EP 2 265 793, granted on 1 August 2012, concerning underwater devices and testing of such devices. The patent is exploited by C-KORE through the use and commercialization of the product “CABLE MONITOR”, a compact automated tool for testing underwater electrical assets, rented to contractors and companies worldwide.
• In February 2023, C-KORE discovered that NOVAWELL, a former customer, 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.
• Accordingly, on 2 November 2023, C-KORE filed a request to preserve evidence and sought an ex parte order granting measures to obtain proof of infringement.

Order by the Paris Local Division

(i) First, the judges, in a conventional manner, verified several procedural points, namely:

• the competence of the UPC as well as that of the Paris Local Division,
• the compliance of the request content with Rules 13.1 and 192.2 of the Rules of Procedure,
• that the invoked patent remained in force,
• the evidence submitted by the applicant (namely screenshots and a brochure presenting the allegedly infringing product), which were deemed sufficient to demonstrate that claim 1 of the patent in question had been infringed.

(ii) The preservation measures requested by the applicant primarily aim to allow obtaining evidence of infringement of other claims of its patent.

(iii) The judges considered that the circumstances justified issuing the order without hearing the defendant, in view of the risk of destruction of evidence:

• the allegedly infringing product being easily transportable,
• and the digital data whose seizure was requested by the applicant being easily deletable.

(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, to decide to order ex parte preservation measures under Article 60.5 of the UPC Agreement.

Local Division of Paris, Unified Patent Court, C-KORE SYSTEMS v. NOVAWELL, 14 November 2023, UPC_CFI_397/2023/ORD_587064/2023