This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.
Session 4: Evidence
Court of Appeal, Unified Patent Court [2025]: Maguin Sas v Tiru, Valinea Energie, ORD_32908/2025
Date of judgment: July 15, 2025
Issuing authority: Court of Appeal of the Unified Patent Court
Level of the issuing authority: Appellate Instance
Type of procedure: Judicial (Civil)
Subject matter: Enforcement of IP Laws
Plaintiff (Appellant – Defendant in the proceedings before the UPC Court of First Instance): MAGUIN SAS (manufacturer of the disputed product)
Defendant (Respondent – Applicant in the proceedings before the UPC Court of First Instance): TIRU SAS (Patent proprietor)
Keywords: Measures to preserve evidence and inspect premises without hearing the defendant, Ex parte order, Request for revocation of an order
Basic facts: TIRU is the proprietor of EP3178578 (EP’578), granted on August 1, 2018, and titled “waste incineration plant and process” (in force in France, Poland, and the United Kingdom) (no previous opposition proceedings, and no ongoing action for revocation). EP 578 contains two independent claims, relating to facility for incinerating waste (CL1) and method for this purpose (CL 15). MAGUIN is the manufacturer of a waste incineration furnace operated by another company (VALINEA ENERGIE).
On December 17, 2024, TIRU filed two applications before the Unified Patent Court (UPC) Paris Local Division requesting ex parte measures to preserve evidence and to inspect premises relating to the alleged infringing furnace (one application against MAGUIN and one against VALINEA, where the furnace is located). By two orders dated December 23, 2024, the UPC Court of First Instance (CFI) authorized TIRU to preserve evidence relating to the alleged infringing device (apparatus) and to conduct on-site inspections along with additional measures, including detailed description and physical and digital seizure of documents. The measures were carried out (simultaneously on both premises) on January 14, 2025, and were followed by a report from each expert appointed by the Court. A security deposit was ordered, and confidentiality measures were implemented regarding information obtained during the execution of the measures. On February 18, 2025, TIRU brought two infringement actions against MAGUIN and VALINEA.
On February 12, 2025, MAGUIN (as well as VALINEA) requested the revocation of the Order dated December 23, 2024, or alternatively a review of the measures ordered, asserting in particular: (1) a lack of urgency; (2) the absence of any risk that evidence might disappear or be destroyed; and (3) TIRU’s failure to comply with its duty of candor by withholding information likely to influence the decision to grant ex parte measures.
The CFI dismissed the request for revocation for the following main reasons:
- no lack of candor identified with regard to withholding of information likely to question the validity (novelty) of the patent.
- the risk that the evidence be destroyed is sufficient (there is no need to establish certainty of disappearance), and the need to operate simultaneously at the premises of MAGUIN and VALINEA given the links and aligned interests between the two adverse parties. The risk of loss of digital (technical) data once the device is put into operation is assessed globally.
- the absence of urgency is not demonstrated; TIRU acted in a timely manner based on all information available and the expected date when the furnace would be put into service.
The order dismissing the request for revocation or review of the measures was appealed by MAGUIN, with the following main arguments put forward to the attention of the UPC Court of Appeal (CoA):
- lack of urgency: the entry into service of the furnace (expected in the first quarter of 2025) did not prevent the establishment of the facts in question; technical documentation remains accessible in the context of a public contract.
- absence of risk of destruction of evidence: factual elements must be provided to convince the Court that digital data may be destroyed in the event of an imminent measure to preserve evidence. The apparatus entering into operation did not impede collection of evidence.
- TIRU failed to disclose relevant material facts in the context of an ex parte application.
The Statement of response filed by TIRU focused on the following arguments:
- the contested order complies with the principle of proportionality by narrowing the investigations and framing the measures with adequate security for MAGUIN.
- urgency justified the ex parte measures to allow inspection of the apparatus before its scheduled entry into service:
o documentary research was insufficient to establish the infringement;
o simultaneous execution of the measures on both locations was necessary;
o the Application was prepared as soon as TIRU became aware of technical features of the allegedly infringing furnace disclosed in a video dated October 11, 2024, and the action was filed within two months of that date.
- the risk of unavailability/disappearance of evidence justified the issuance of the measures.
- regarding the alleged lack of candor, as the judge ruling on such application for preserving evidence is not competent to assess the validity of the patent, related arguments based on prior art are not likely to influence the decision.
Held: The appeal was declared admissible but rejected.
Relevant holdings in relation to evidence: The CoA considered issues involving evidence gathering; the preservation of digital evidence (and the importance thereof); the scope of investigation in orders to preserve evidence; and the role of experts in orders to preserve evidence (especially in the context of inspection).
When examining the application to preserve evidence, the Court has the discretion to opt for an ex parte order. In exercising this discretion, the Court shall consider: a) urgency; b) whether the reasons for requiring an ex parte order are well-founded; c) the probability that evidence may cease to be available (UPC Rules of Procedure, R. 194.2). In the case of an ex parte order, the Court may order measures if any delay would cause irreparable harm, or if there is a demonstrable risk of evidence being destroyed or otherwise becoming no longer available (UPC Rules of Procedure, R. 197.1).
These provisions are to be read:
- in conjunction with those of Directive 2004/48/EC on enforcement of IP rights (art 7).
- in accordance with the UPC Agreement (UPCA) and the UPC Rules of Procedure (RoP), and principles of proportionality and efficiency.
Urgency
When assessing whether an application for preserving evidence should be granted, the Court shall not necessarily have regard to any unreasonable delay in seeking the requested measures. Urgency is assessed in view of the specific facts of the present case with regard to the Court’s discretion to depart from the principle of inter partes proceedings (duly justified by the need for inspection of/access to the furnace, simultaneous investigations).
Risk of destruction
The risk of disappearance or unavailability of evidence must be assessed with reference to the probability or demonstrable risk (not certainty) of evidence being destroyed or ceasing to be available.
Duty of candor when submitting the application
According to this principle, the Applicant shall bring to the attention of the Court the relevant facts to be considered in ruling on the Application. When deciding on preservation of evidence and inspection of premises, the Court is not required to assess the validity of the patent at issue, unless the presumption of validity can clearly be called into question (e.g., by way of a previous BOA/EPO decision or another court’s judgment).
Relevant legislation: UPC Rules of Procedure (R. 192 to 199), UPCA (Art 60)
R. 192.3 and R. 197 RoP (ex parte order)
R. 196.4 RoP (court expert appointment)
R. 197.3 and R. 197.4 RoP (request for review)
R. 197.1 RoP (risk of destruction/disappearance of evidence), Art 60, 60(5) UPCA