Context: The Unified Patent Court (UPC) routinely orders evidence preservation measures, which can also involve on-site experiments (see item 3 of our May 17, 2025 UPC Roundup). Regarding our coverage of UPC case law development please note that this week we have upgraded our UPC Roundups: you can already see it in the making during the week, just that all items are sorted in a most-recent-first order during the week and rearranged by substantive criteria at the end of the week (July 14, 2025 ip fray article).
What’s new: The Court of Appeal (CoA) has now made a fundamental decision addressing multiple aspects of the legal standard for the availability of evidence preservation measures (PDF (in French)). In a case between two French companies over a waste incinerator, the CoA wholly affirmed the Paris Local Division’s (LD) order granting evidence preservation on-site. It clarified that there is no general entitlement to a hearing but it is up to the court; the infringement case need not already be pending; the urgency requirement is less strict than for provisional measures, in this case considering a two-month delay perfectly acceptable; and the validity of the patent-in-suit is not to be assessed in this context, though negative rulings such as by the European Patent Office (EPO) or in a revocation proceeding would matter.
Direct impact: This decision by the new appellate panel 1b (presumably its first ever) puts the related part of the dispute to rest. There is no rational basis to assume that the standard for a rehearing could be met.
Wider ramifications: This is good news for patentees pursuing evidence preservation. Certain arguments that defendants might have wanted to raise are now off the table.
All three parties are based in France. Maguin is one defendant-appellant, Valinea another, and Tiru the plaintiff-appellee. The dispute started late last year. Maguin makes the incinerator and Valinea is the company operating it. Tiru is suing both, and the CoA issued materially consistent decisions with respect to either appeal.
Burning waste is an old and slow-moving business. That is why the prior art cited can be decades old, such as another incinerator from 1987.
In mid-October 2024, a YouTube video showed an incinerator that was slated to go into operation in the first quarter of 2025. About two months after the YouTube video was published, Tiru started to litigate, initially in the form of evidence preservation. The Paris LD did not consider it untimely, nor does the CoA. One of the various headnotes explains that the “urgency” requirement is less strict for evidence preservation than for provisional measures.
The other key distinction between the standards for evidence preservation on the one hand and provisional measures on the other relates to validity. Maguin criticized that Tiru didn’t point to certain prior art such as the above-mentioned incinerator from 1987. But what made that argument by Maguin fail is the combination of the following circumstances:
- It would have been a fundamentally different situation if there had been a negative decision from an EPO or revocation proceeding. That would have had to be taken into account. But there was no obligation on the patentee’s part to inform the court of prior art. It is not stated explicitly whether a non-binding preliminary opinion by a validity forum would also matter, but arguably it would, given that the decision refers to situations in which the patent’s validity is seriously called into question, and it refers to EPO or revocation decisions only as examples. So, to be on the safe side, patentees might have to bring it to the UPC’s attention that there is a negative opinion.
- Here, no opposition or revocation proceeding was ongoing.
- The defendants didn’t even communicate their invalidity contentions to the patentee in writing.
- In any event, the whole invalidity argument was misplaced because the presumption of validity applies except in the circumstances outlined further above.
Similarly, the urgency standard is also more lenient and, in fact, distinct from the one applying to provisional measures. The emphasis is on whether the evidence in question is at risk of becoming unavailable or being spoliated.
The UPC divisions deciding on motions for evidence preservation enjoy wide latitude in how to manage those proceedings. It’s discretionary whether a hearing is held or not, or whether non-moving parties get to respond to the motion. It all depends on whether there’s objective urgency and a risk of evidence being spoliated.
In the evidence preservation context, no (in)validity assessment shall be conducted. But decisions by competent fora can be relevant.
Court and counsel
Panel 1a: President Dr. Klaus Grabinski, Judge-rapporteur Emmanuel Gougé, Judge Emanuela Germano, Technically Qualified Judge Koen Callewaert and Technically Qualified Judge Frédéric Gaillarde.
Counsel for defendant-appellant Maguin: Casalonga’s Olivier Delprat.
Counsel for defendant-appellant Valinea: Beau de LomĂ©nie’s Gaston Vedel.
Counsel for plaintiff-appellee Tiru: Amar Goussu Staub’s Cyrille Amar.