Short Summary
MAGUIN SAS sought review (retraction) of an ex parte order granting TIRU's application for evidence preservation measures (seizure and site visit) based on TIRU's European patent EP 3 178 578 concerning waste incineration installations. MAGUIN argued lack of urgency, absence of risk of evidence destruction, and breach of TIRU's duty of loyalty by allegedly concealing prior art. The Local Division Paris rejected all three grounds and dismissed MAGUIN's request for retraction.
Detailed Summary
This case concerns a request for review (retractation) under Rule 197.4 of the Rules of Procedure of an ex parte order for evidence preservation and site visit.
TIRU, a French company specializing in energy recovery from waste and a subsidiary of the PAPREC Group since 2021, is the holder of European patent EP 3 178 578 B1, granted on 1 August 2018, titled 'Installation d'incinération de déchets et procédé associé' (Waste incineration installation and associated process). The patent was in force covering France, the United Kingdom, and Poland.
On 17 December 2024, TIRU filed two parallel applications before the Local Division Paris for evidence preservation and site visits based on EP'578, one against VALINEA ENERGIE and one against MAGUIN SAS, before any main proceedings. TIRU had learned through a YouTube video from the Agglomération du Pays de Montbéliard in October 2024 about the installation of an incineration kiln manufactured by MAGUIN and operated at VALINEA ENERGIE's site, which appeared to infringe EP'578. On 23 December 2024, two ex parte orders were issued authorizing the evidence preservation measures, limiting the scope to characterizing infringement. The seizure measures were executed on 14 January 2025 simultaneously at MAGUIN's manufacturing site in Charmes and at VALINEA ENERGIE's operating site in Montbéliard. Expert reports were filed on 20 and 21 January 2025, and confidentiality was protected through a restricted confidentiality circle.
On 12 February 2025, MAGUIN requested retraction of the seizure and site visit orders on three grounds: (1) lack of urgency, (2) absence of risk of destruction of evidence, and (3) TIRU's alleged voluntary concealment of information that could have influenced the ex parte decision, amounting to a breach of the duty of loyalty. MAGUIN argued that TIRU was aware that the original kiln at the Montbéliard site, known as 'Four Laurent Bouillet' designed in 1987, disclosed all the features of EP'578, and that TIRU had succeeded to LAURENT BOUILLET INGENIERIE after its liquidation and had participated in exchanges with VALEST (later replaced by VALINEA) regarding the renovation of the old kiln in 2019.
A hearing was held in person on 10 March 2025 before a panel of three judges.
On the breach of duty of loyalty under Rule 192.3 RoP, the Court held that the seizure judge is not the validity judge, and the patent holder cannot be required to anticipate potential validity attacks at the evidence preservation stage. The Court noted that TIRU had disclosed that it was the proprietor of EP'578, that no opposition proceedings were pending before the EPO, and that no court was seized with a validity challenge at the time of the application. MAGUIN therefore failed to demonstrate a breach of the duty of loyalty.
On the absence of risk of evidence destruction under Article 60.5 AJUB and Rule 197.1 RoP, the Court rejected MAGUIN's argument that the manufacturer's obligation to retain technical documentation for regulatory compliance made the ex parte measures unnecessary. The Court found that such an obligation does not guarantee actual compliance, and that the digital format of the data sought, combined with the highly competitive market context, justified the non-contentious measures. The Court also found the measures proportionate, as the scope was strictly limited to characterizing infringement and a restricted confidentiality circle was established.
On the lack of urgency, the Court found that the YouTube video had only 77 views, making it unlikely that TIRU had knowledge of it before October 2024. The two-month period between TIRU's awareness and the filing of the application on 17 December 2024 was deemed reasonable given TIRU's obligation under Article 60.1 AJUB to present reasonably accessible evidence to support its allegations. The standard urgency requirement was sufficiently characterized.
The Court rejected all of MAGUIN's arguments and dismissed its request for retraction of the evidence preservation and site visit order of 23 December 2024. The order was declared subject to appeal under Article 73.2(a) AJUB and Rules 220.1(c) and 224.2(b) RoP.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Paris (FR) Local Division. Understanding the court's reasoning in MAGUIN SAS vs TIRU is valuable context for structuring arguments or assessing risk in similar proceedings.
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