The latest developments and hearings at the UPC: C-Kore v Novawell

February has seen a step up in the hearings listed in the UPC Hearings Calendar with three listed for the Court of Appeal:

• 14 February: Juul Labs International Inc. vs NJOY Netherlands BV – RoP 220.2
• 15 February: Guangdong OPPO Mobile Telecommunications Corp. Ltd. and OROPE Germany GmbH vs. Panasonic Holdings Corporation – RoP 220.1 c)
• 20 February: Netgear Inc et al. v Huawei Technologies Co. Ltd – appeal from JR decision to refuse a 333.1 RoP request (allowed following discretionary review 202.3 RoP)

And two for Paris:

• 6 February/Central Division - Neo Wireless GmbH & Co. KG vs Toyota Motor Europe NV/SA – preliminary objection in the revocation action
• 15 February/Local Division – Novawell v C-Kore Systems Limited – review of an order to preserve evidence - 197.3 RoP

We attended the C-Kore/Novawell hearing last week which was the review of the first preservation of evidence order of the Paris Local Division made in November by the same panel of judges (Ms. Camille Lignières (judge-rapporteur), Ms. Carine Gillet and Ms. Alima Zana of the Milan Local Division).

The UK company C-Kore had applied for an order for preserving evidence against competitor and former client Novawell, a French company based in Montpellier, based on EP 2 265 793 entitled “Subsea Test Apparatus, Assembly and Method”. C-Kore suspected that Novawell’s soon-to-be-launched SICOM product would infringe claims 1 to 18 of its patent.

The Court had granted C-Kore’s application on 14 November 2023, which reported by us here, ordering several measures which were conducted early December 2023. Novawell filed a request for review on 5 January 2024 leading to the 2-hour hearing last week which was conducted in English.

The parties first argued on the admissibility of the request for review under Rule 197.3 RoP, which provides that such request shall be filed by the defendant “within 30 days after the execution of the measures”. While C-Kore contended that the time limit started the day after the measures were conducted, Novawell argued that the date of the filing of the appointed expert’s written report with the Court was the trigger for the time limit to start running.

On the merits, the parties first addressed Article 60 UPCA and whether the applicant had made a fair presentation of reasonably available evidence to support its claim. In that regard, Novawell argued that the patent was clearly invalid over a prior art document and that, in any event, the evidence on file could not support any claim for infringement. C-Kore argued that the validity of the patent over the prior art was not a relevant question for the review of an order for preserving evidence.

The parties then addressed whether the conditions for obtaining an ex parte order were met pursuant to R194.2 RoP. Of particular debate was the urgency of the matter in light of the alleged longstanding knowledge by C-Kore of Novawell’s activities and there was disagreement as to whether evidence of infringement could have been destroyed or easily transported to countries where the company operates outside of the jurisdiction of the UPC.

The last issue to be addressed was compliance with R196.4 RoP, which provides that the measures shall be carried out in accordance with the national law of the place where they are carried out, i.e. French law in this case. The parties argued about the fact that the measures were carried out by the Court-appointed expert with the assistance of a bailiff (and the applicant’s patent attorney), in accordance with the Court order, while the provisions of the French IP Code would request the measure to be carried out by the bailiff her/himself, possibly assisted by a private expert.

We await the decision with interest, expected on 1st March 2024.