Pay for delay

Happy new year to all readers! May you stay safe and healthy and as free as possible (yes, this is a new 2021 addition relative to previous wishes).

This year starts off on this blog with a somewhat misleading post title. Nope, this post will not be about competition law and pharma patents. Actually it will be about having to pay when you delay court proceedings. Advisory note: there is a risk that only true procedural law afficionados may enjoy today’s decision.

Waff is a French company founded in 2001 and specialized in inflatable pillows for physiotherapy and fitness.

Waff owns a European patent No. EP 1262125 on such a pillow. Waff considers that gym pillows marketed by the well-known Decathlon retail stores infringe its patent. After the customary infringement seizure and other pre-litigation skirmishes, Waff filed an infringement action in August 2019 with what was still the Paris Tribunal de grande instance and is now the Tribunal judiciaire.

On January 16, 2020, Decathlon filed submissions on the merits, claiming first (in limine litis) that the complaint was invalid.

At this point of the narrative, the aforementioned procedural law afficionados have probably started twitching, and we will understand why in a minute. On September 10, 2020, Decathlon repeated that the complaint was invalid, but this time in a motion in front of the judge in charge of case management. Waff replied, and one week later, Decathlon changed its mind and withdrew its motion.

In her order dated November 20, 2020, the case management judge acknowledged that the procedural motion was withdrawn. However, a ruling still had to be issued as the infringement plaintiff had filed a cost counterclaim.

What happened, and why did Decathlon withdraw its motion? To answer this question we need to look at the Code de procédure civile.

According to article 74, procedural exceptions must be raised before any defense on the merits; if not they are held inadmissible. According to article 73, a procedural exception is a defense aiming at holding proceedings irregular or extinct, or at staying proceedings. The argument that the infringement complaint is invalid is therefore such a procedural exception.

In this case, Decathlon raised the exception together with its first submissions on the merits – presumably before the actual discussion on the merits, and thus in limine litis. So far so good. However, article 789 also specifies that the judge in charge of case management, once he/she has been designated, has exclusive jurisdiction to rule on a number of motions, including procedural exceptions.

Therefore, the complaint invalidity defense should have been filed in front of the case management judge, and not together with the submissions on the merits, which are filed in front of the court, not the judge in charge of case management. This defense was thus inadmissible. A few months later, it was filed again in front of the right judge, but too late, as the submissions on the merits had already been filed, so that this second submission was thus no longer in limine litis.

This is an illustration that French procedural law is full of traps and is extremely (probably excessively) formalistic. But that’s what it is.

As a side note, the law changed in January 2020. The judge in charge of case management now has broader jurisdiction, in particular over other procedural motions known as “fins de non-recevoir” (in connection with e.g. the statute of limitations or standing to sue).

Going back to our pillow case, so to speak, the complaint invalidity defense was inadmissible, and the judge made sure to note it in her ruling, even though the motion had been withdrawn. And she did not stop there. She also held that this defense was clearly without merit anyway:

[…] Decathlon cannot state that it was impossible for them to determine the object of the complaint and thus defend themselves, while filing submissions on the merits at the same time. Besides, the complaint was clearly directed to patent infringement by reproduction of all of the claims (a main independent claim and five dependent ones) of the EP’125 patent, which was unambiguously identified, as was the […] allegedly infringing pillow, both by its reference and by the bailiff’s reports and infringement seizure reports in annex. 

The court then deduced that Decathlon had “voluntarily delayed the proceedings“, and sentenced them to pay a civil fine of EUR. 3,000, in accordance with article 32-1 of the Code de procédure civile.

This provision is seldom used at least in patent litigation. It makes it possible for a judge or court to punish any party filing a claim in a dilatory or abusive manner by a civil fine of up to EUR. 10,000. The fine should be paid to the state, not the other party.

This is quite harsh as a matter of principle, even if the amount itself is not very significant in view of the usual cost of patent infringement proceedings.

I rest my case.

I suspect that it is the conjunction of the motion being held inadmissible, ill-founded, and ultimately withdrawn which led to this unusual order. If it had been admissible but ill-founded, I assume that it would have been rejected without any civil fine. Unless this is a deterrent that the current IP judges of the Paris Tribunal judiciaire intend to showcase in 2021?

By the way, many thanks to the reader who sent me this decision. I am looking forward to receiving more! As has been repeatedly pointed out and complained about, rulings from the Tribunal judiciaire have stopped being published for a very long time, so word of mouth is all we’ve got.

So here is (finally) a non-Covid-related wish for 2021: may all court rulings which are supposed to be public be actually made public again.


CASE REFERENCE: Tribunal judiciaire de Paris, 3ème chambre 3ème section, ordonnance du juge de la mise en état, November 20, 2020, SAS Waff v. Decathlon SE & Decathlon France SAS, RG No.19/10207.