In a biodegradable packaging case, a French court has decided against 'sequencing' - separate hearings on validity and infringement. For some French litigators, the splitting of proceedings is reminiscent of German bifurcation. However, the debate between Cellulopack and Packbenefit at the Judicial Court of Paris shows that hearing separate proceedings in patent cases is not yet the norm in France.
15 March 2021 by Konstanze Richter
If patent courts should hear issues of infringement and validity separately is creating debate among French litigators. It is custom in France for the patents courts to rule on findings of invalidity and infringement together. This is similar to the UK and Dutch court systems, which also hear both issues in one patent hearing. However, in Germany, courts rule on patent validity and infringement separately – the so-called bifurcation system.
Some recent cases have heightened worries among French patent litigators that the courts may dilute the practice of hearing infringement and validity together. However, a recent ruling between Cellulopack and Packbenefit shows the opposite.
French packaging company Cellulopack is battling with Spanish competitor Packbenefit over biodegradable packaging. Cellulopack accuses its Spanish competitor of infringing French patent FR 3 024 844, which protects a procedure for producing compostable food packaging consisting of a tray and a protective film.
Nutripack, a subsidiary of Proplast, sells this biodegradable packaging in France under the brand name Restokompost.
Spanish company Packbenefit manufactures similar packaging, which its distribution partner Rescaset sells on the French market. According to Cellulopack, this packaging infringes the features of its patent FR 844. Following a seizure Cellulopack, together with its distribution partners Nutripack and Proplast, filed infringement proceedings against Packbenefit and Rescaset in August 2019 (case ID: 19/14044).
Packbenefit requested that the assessment of patent validity be separated from the matter of infringement. It also requested that the information obtained in several seizures be treated as a trade secret. The defendant reasoned that the proceedings were not yet advanced enough to rule on the issue of infringement. On the other hand, argued Packbenefit, the court could already decide patent validity.
To determine whether an infringement had occurred, Packbenefit would also have to disclose its production process, thereby revealing trade secrets. Thus, the defendant requested that the judges first clarify validity.
Although, in France, the court traditionally hears infringement and validity in a single trial, judges are free to divide the treatment of issues in individual cases.
However, in the case on biodegradable packaging the Judicial Court dismissed Packbenefit’s motion as the judges found that separate assessment of infringement and validity was not “in the interests of the proper administration of justice”.
The court has scheduled the next hearing in the main proceedings for early May.
So far, the Judicial Court of Paris has only deviated from its usual approach of ruling on patent infringement and validity in three cases.
Firstly, in the 2016 dispute Quadlogic vs. Enedis, the first-instance judges decided to hear the issue of infringement separately from validity. The US company had requested that French energy corporation Enedis disclose information that it considered trade secrets. In response, Enedis requested that the judges first decide on nullity, before the company disclosed its trade secrets for infringement proceedings. The court permitted this order of proceedings.
In two 2020 cases – Lufthansa vs. Thales, and Intellectual Ventures vs. Huawei, ZTE and other co-defendants – similar decisions followed. In Lufthansa vs. Thales, the judges separated the matter of infringement from validity. Furthermore, in Intellectual Ventures vs. Huawei, ZTE et al., the court divided proceedings into patent infringement and validity on the one hand, and FRAND licence issues on the other.
Since then, motions for so-called sequençage (sequencing) are stacking up in French patent cases. Protection of trade secrets is the most frequent argument put forward by claimants.
Reed Smith partner Thierry Lautier has advised Cellulopack since the dispute on biodegradable packaging began in 2019. He already played the lead role during his time with August Debouzy. The client followed Lautier when he moved to Reed Smith in summer 2020.
Michel Abello, name partner at Loyer & Abello, represented defendant Packbenefit. Abello is often active in proceedings concerning mechanical patents, for example for Manitou in the dispute against J.C. Bamford over technologies used to control industrial machinery.
For Cellulopack, Proplast and Nutriplast
Reed Smith (Paris): Thierry Lautier (lead); associate: Christophe Arfan
Loyer & Abello (Paris): Michel Abello (public knowledge)
Bird & Bird (Paris): Anne-Charlotte Le Bihan (public knowledge)
Judicial Court of Paris, 3rd chamber, 1st section, Paris
Nathalie Sabotier (presiding judge)