Short Summary
VALINEA ENERGIE sought retraction and, subsidiarily, revision of an ex parte order dated 23 December 2024 that authorized evidence preservation measures (seizure and site visit) in favor of TIRU, the holder of European patent EP 3 178 578 B1 concerning a waste incineration installation. The court rejected all of VALINEA's arguments, finding no breach of the duty of loyalty by TIRU, that the ex parte procedure was justified, that the request was not untimely, and that the security deposit of 10,000 euros was appropriate.
Detailed Summary
TIRU, a French company specializing in waste recovery and a subsidiary of the PAPREC Group since 2021, is the holder of European patent EP 3 178 578 B1 (EP'578), granted on 1 August 2018 and titled 'Installation d'incinération de déchets et procédé associé' (Waste incineration installation and associated process). The patent was in force and covered France, the United Kingdom, and Poland. On 17 December 2024, TIRU filed two parallel applications for evidence preservation measures and site visits before the Local Division of Paris, one against VALINEA ENERGIE (a subsidiary of the VEOLIA Group, a competitor of PAPREC) and one against MAGUIN, based on its EP'578 patent. TIRU claimed that, through a YouTube video from the Pays de Montbéliard Agglomeration, it learned in October 2024 of the installation of an incineration furnace manufactured by MAGUIN and operated on VALINEA ENERGIE's site that appeared to infringe its patent.
On 23 December 2024, two ex parte orders were issued authorizing the requested evidence preservation measures, but limiting their scope to the search for evidence of infringement. The seizure measures were executed on 14 January 2025 simultaneously at MAGUIN's site (Charmes, France) and at VALINEA ENERGIE's site (Montbéliard, France). Expert reports were filed on 20 and 21 January 2025, and confidentiality was protected through a restricted confidentiality circle.
On 12 February 2025, VALINEA ENERGIE filed a request seeking primarily retraction and subsidiarily revision (with a higher security deposit than 10,000 euros) of the 23 December 2024 order, raising three main arguments: (1) the unjustified nature of TIRU's ex parte request, (2) TIRU's breach of its duty of loyalty, and (3) the belated nature of the request.
Regarding the alleged breach of the duty of loyalty under Rule 192.3 RoP, VALINEA argued that TIRU had failed to disclose to the court that it had knowledge of prior art (the 1987 'Laurent Bouillet' furnace) that destroyed all independent claims (Nos. 1 to 5) and most dependent claims of the patent. VALINEA contended that TIRU had access to technical information about the original furnace through exchanges regarding a concession contract as early as 2019. The court rejected this argument, noting that the judge of the seizure is not the judge of validity, and it cannot be required of the patent holder, at the evidence preservation stage, to anticipate possible validity attacks. The court found that TIRU had disclosed sufficient information, including its relationship with VALINEA in 2021 and its acquisition by the PAPREC Group.
Regarding the unjustified nature of the ex parte procedure under Article 60.5 AJUB, the court found that there was a reasonable risk that prior notice would prejudice the purpose of the measures, particularly given the imminent commissioning of the furnace.
Regarding the alleged belated nature of the request, VALINEA argued that TIRU had been informed of the situation before October 2024 through social media publications and a YouTube video posted on 19 August 2024. The court found that the earlier social media publications did not provide precise information about the furnace, and the YouTube video had only 77 views, making it unlikely that TIRU had knowledge of it before October 2024. The two-month period to prepare the application was deemed reasonable.
Regarding the subsidiary request for revision of the security deposit, VALINEA argued that 50,000 euros would be more appropriate than the 10,000 euros ordered. The court rejected this, finding that VALINEA had not demonstrated any financial fragility of TIRU, and that confidentiality had been ensured from the execution of the measures. The court noted that VALINEA could request a more appropriate security in the main proceedings.
The court ordered that VALINEA ENERGIE's requests for retraction and revision of the 23 December 2024 order be rejected, and stated that the order was 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 VALINEA ENERGIE vs TIRU is valuable context for structuring arguments or assessing risk in similar proceedings.
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