One shot one opportunity

The song goes like: “If you had one shot or one opportunity to seize everything you ever wanted in one moment, would you capture it or just let it slip?

I know, a quote from a rap song is not what you would expect in an IP blog post discussing infringement seizures. But bear with me and you will see that it is indeed quite fitting.

The case pitches France Routage Participations against Maury Imprimeur. The patent at stake is EP 1620211, granted in 2007 to France Routage and unopposed.

Maury Imprimeur, as its name indicates, is active in printing, but also in sorting and mailing. France Routage’s patent covers an installation and a method “for processing printed papers in order to dispatch the printed papers to addressees“.

In 2014, Maury Imprimeur received a cease and desist letter from France Routage and replied that it did not infringe the EP’211 patent. Two years went by, and in May 2016 France Routage had an infringement seizure carried out in the premises of Maury Imprimeur, in the fine town of Manchecourt. One month later, France Routage file a complaint with the Paris TGI, alleging infringement of the French part of their European patent.

During the proceedings, France Routage filed a motion to request a technical expertise.

This motion was rejected by the case management judge on April 5, 2018. The case proceeded to trial, and the judgment was issued by the TGI on November 8, 2018. According to this judgment, the patent was valid but the infringement claim was rejected.

France Routage appealed both the order of the case management judge of April 2018 and the judgment on the merits. The Paris Cour d’appel handled both aspects in its decision dated May 15, 2020.

The court started with dealing with the validity of the patent – which of course was challenged by the defendant. Insufficiency of disclosure, lack of novelty and lack of inventive step were the three grounds relied upon by Maury. All three were rejected by the court.

Then comes what I think is the most interesting part of the judgment, namely the plaintiff’s motion for expertise.

As a reminder, an infringement seizure had taken place in 2016. In June 2017, the defendant had called upon a bailiff on its own, to establish an exonerating report. It is as a reaction to this report filed by the defendant that the claimant had filed its motion for technical expertise.

France Routage explained that the infringement seizure had not enabled it to determine all components of Maury’s sorting installation. Therefore, it was not possible to fully appreciate the contents of Maury’s bailiff report.

However, the court was not sympathetic to France Routage’s argumentation:

The case management judge […] rightly recalled that France Routage, as the infringement claimant, has the burden of proof and was authorized to carry out an infringement seizure to this end on the sorting lines at stake. [The judge] rightly added that the acting bailiff was accompanied by two patent attorneys and an IT expert and […] described only the sorting line in operation (line No.3) and that the other sorting lines were not hidden. 

As rightly mentioned by the first instance judge, it is only after Maury filed the bailiff report of June 22, 2017 that France Routage, more than one year after the infringement seizure of May 9, 2016, requested an expertise after having deemed having sufficient evidence. 

It has not been demonstrated that the infringement seizure, which authorized […] “describing in a detailed manner the allegedly infringing processes and installations” as well as accessing the installations dedicated to “operations of sorting printouts and all related IT systems” and requesting that the operation mode of the installations should be explained, did not make it possible to more completely or precisely describe sorting line No.3 which was in operation as well as all associated computers and robots which were present, nor to describe and get explanations on the operation of the other visible sorting lines. 

Infringement seizure is a powerful weapon in the hands of IP right owners in France, in order to establish the existence of infringement. On the other hand, when an infringement seizure does not live up to its expectations of providing evidence of the infringement, then IP right owners are in serious trouble. Actually, in view of this judgment, they may not get a second chance.

In Eminem’s words, as the patentee, “you only get one shot, […] this opportunity comes once in a lifetime“.

What if there was only one shot in each game?

With the caveat that I am of course not aware of all the facts (they are never exhaustively reflected in the written decisions, perhaps the absence of infringement was already very clear based on the record), this position seems rather harsh.

An infringement seizure is no walk in the park. In (normally) just one day, the seizing team has to figure out which information to get and how to get it, in enemy territory, while complying with onerous formalism. Sometimes it works well, sometimes it doesn’t, depending on the circumstances. In a worst case scenario, the seizing team may come home completely empty-handed. And it is certainly possible for them to forget about asking some relevant questions, acting under pressure and severe time constraints, and not knowing how the defense will develop in the next couple of years.

But the court further held:

The parties do not agree (and did not agree before the infringement seizure) on whether the characterizing part of the main claims of EP’211 is reproduced. This circumstance does not justify a taking of evidence having the same purpose as the infringement seizure, namely describing the operation of the sorting installations of Maury, in particular its IT means.  

Same purpose or not, an expertise is very different from an infringement seizure: it is an inter partes procedure, with much more time available, and wherein each party spontaneously and forcibly presents evidence to an impartial expert.

These two procedures can be thought of as complementary, and not mutually exclusive.

Wouldn’t it perhaps have been fairer to grant the motion for expertise on the condition that the plaintiff should provisionally bear all related costs (including reasonable fees of the defendants’ attorneys)?

Anyway, having denied the plaintiff’s motion, the court then also found against them regarding the infringement claim. Not very surprising: after explaining that an expertise was required to prove its case, the patentee probably had a hard time convincing the court that there was sufficient evidence of an infringement.

The only consolation for France Routage was that their infringement claim had been found abusive by the TGI. The Cour d’appel set aside that part of the judgment, applying a higher abuse of procedure threshold.

In particular, France Routage had the right to request an expertise and still claim that there was infringement, said the court.

The end – at least for now: “Snap back to reality, oh there goes gravity“.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, May 15, 2020, SARL France Routage Participations v. SAS Maury Imprimeur, RG No. 19/00916.