UPC Mock Trial - a Kat reports from Paris

This Kat is sitting as we speak in a conference hall in Paris, where there will be unfolding this afternoon a mock trial according to the procedures, so far as they can presently be established (the 17th draft of the Rules of Procedure was being followed for today's purposes), of the Unified Patent Court. The Court consists of Mr Paul Maier, Sir Colin Birss (Rapporteur), Mrs Sophie Canas, and Mr Kim Finnilä.  The claimant is represented by Mr Axel Casalonga, and Mr Martin Köhler, while the defendant is represented by Mr Kay Rupprecht and Mr Grégoire Desrousseaux.  The event is put on by UJUB, an organisation formed in France to promote the UPC.

Digesting trial documents ...

This moggy was a little perturbed to receive preparatory materials (pleadings from both sides, evidence, patent prior art - the complete supporting documents for a patent infringement and validity trial) running to some 200 pages, which he has endeavoured to digest on the Eurostar.  They should still be available here.  He was however relieved that they kindly chose the language of the present proceedings to be English, although ostensibly the action is proceeding in the local division in France, not the Central Division that France will also host.

The room is packed (this Kat had to strain his neck to establish this, since he was kindly placed at the front in order to allow for easier typing...).  He is given to understand that 600 people are registered to attend in person, and around a further 300 are registered to watch the proceedings online (which the IPKat heartily welcomes).

The introductory comments by  Mr Thierry Sueur, the President of UJUB, and chairman of the IP Committee of MEDEF, our hosts today, included criticisms of the recently released proposed level of renewal fees by the EPO - they were too high, and the TOP-4 and TOP-5 nomenclature was misleading because in the early years they were pegged to the EPO pre-grant fees, not the top 4 or top 5 national renewal fees at all (which are significantly lower).

Then Mr Alexander Ramsay from the French Ministry of Justice, who is Vice-chair of the Preparatory Committee of the UPC, gave an overview of the work of the Committee.  He particularly highlighted the work of the Human Resources Group, which is undertaking the selection and training of the UPC judges, upon whom the success of the project primarily rests.  He mentioned the concerns that keep him awake at night:

• How will all of the work of the Working groups be put together into an organisation that actually works, when the Treaty currently does not provide for a startup phase? He is hoping that the signatory countries will allow a variation of the Treaty to permit an introductory stage before the Treaty formally enters into effect.
• There progress of ratifications is still somewhat short of the 13 needed, so the time for entry into operation is still not known.  He urged signatory states to move forward the pace of ratification.

The our Moderator, Mr Alain Michelet, President of the the French Patent & Trademark Attorneys Institute introduced the history of the scenario that was to be considered in the Mock Trial, which would consist of:

(1) An application for the preserving of evidence (similar to the current French saisie)
then, after a break
(2) An application for preliminary measures.

The invention concerns an abrasive sheet, and the patent consists of a method claim only.  It has been opposed and upheld by the Opposition Division of the EPO, which decision is under appeal.

The patentee suspects infringement by the defendant, based on statements on their website.  The patentee therefore started the infringement action at the Paris local division, whereupon the defendant intervened in the EPO proceedings.  the defendant has also counterclaimed for invalidity in the UPC proceedings.

A technical judge has been added to the judicial panel, because of the technical complexity of the case and the fact of the claim for revocation.

An application for an order for the preserving of evidence
The claimant has asked for an order to enter the premises of the defendant to obtain evidence, and this is being heard without the defendant in an ex parte hearing.  (It was remarked that these would normally be in camera, but today exceptionally we were allowed to watch.)

Also, usually such a hearing would he heard before the Judge Rapporteur alone, but in the present case exceptionally the full panel of four judges was in attendance.

The case for the order was as follows:

According to Mr Köhler, the defendant plans to launch a product that will be distributed over all of Europe - this is announced on their website.  The website statements about the product support the idea that the patent is infringed (although the defendant in their defence denies that they are using the process as claimed in the patent, and the website does not disclose the details of the process used).

... and destroying the evidence

The infringement analysis was set out in detail by Mr Casalonga.  Importantly, this Kat notes, not all of the details of infringement could be completely demonstrated, and some aspects were surmised from the advantages claimed.  The Rapporteur and the Technical Judge were quite strict on the question of how the claim features could be discerned, surmised, or assumed, from the website information and interrogated Mr Casalonga on the matter.  The claimant position is that to confirm some of the process features, which can be assumed as likely but cannot be conclusively demonstrated, the order is needed.  The Rapporteur also questioned as to why the order (which from a UK point of view could be regarded as draconian) should be granted ex parte without hearing the defendant.  On that point, Mr Köhler suggested that there was demonstrable risk that the defendant would act to destroy evidence, by changing the factory setup (the baths used were capable of two functions, one according to the patent and one different), if the order was known in advance.  There were newspaper reports of the defendant destroying documents in other court proceedings.  This would be an irreparable harm to the claimant.  Mr Köhler pointed to measures that would be put in place to preserve confidentiality of defendant trade secrets.

When questioned about the validity of the patent, Mr Casalonga pointed to their success in the Opposition proceedings as prima facie evidence of validity.  There was an appeal pending, but the claimant was confident that the Board of Appeal would endorse the decision of the opposition division.

The measures requested were:

Photocopying of technical and commercial documents relating to the manufactured product
Seizing 3 product samples (claimant would reimburse the price)
Disclosure of computer passwords if needed.

To protect the confidential information of the defendant, the people carrying out the measures would be:

• An independent European patent attorney with expertise in the technical field (to be selected from 3 names put forward by the claimant) 
• An IT specialist
• A bailiff (as is common practice under French law).

Mr Casalonga would also attend to assist the bailiff as a party representative, and for purely technical questions.  The Rapporteur asked for justification as to why this should be allowed, and how misuse of confidential information would be prevented.  The response was that a) the rules of procedure allow for it and b) the claimant's representative knows the issues best and so is needed to help the independent EPA carry out the inspection and direct their attention to the relevant issues.  As to confidential information, Mr Casalonga accepted that all present would see confidential information, but pointed out that EPI rules prevented him from disseminating confidential information (and also the independent EPA).

To protect confidential information, it would be sealed, kept by the independent EPA, and handed directly to the Rapporteur.

A cross-undertaking in damages was offered against any harm suffered to the defendant.

The order was granted, the inspection to be carried out by the first of the possible EPAs.  The EPA is to take 3 samples (price to be paid by claimant), provide bailiff's report, carry out useful searches, is allowed access to commercial and promotional materials as well as technical materials.  Computer passwords were ordered to be disclosed, and physical documents were ordered to be taken and copied for court, claimant (unless confidential) and defendant.  Any information stated by defendant to be confidential was to be be treated as above - this could not be challenged by claimant. There was an undertaking on oath by all carrying out the order not to disseminate any confidential information.  Mr Casalonga is permitted to be present.

Whereupon the Court adjourned, as will this Kat.