Borderline

Cross-border litigation is a relatively uncommon but quite fascinating area of European patent law. I naively view it as a fairytale land of Italian torpedoes and Dutch spiders.

So I found it very interesting when I read a recent French decision in which the judge crossed the borderline and trod this unbeaten path.

In this case, several companies, including UK-based Furnace Solutions Ltd. and other French related companies, as well as one individual, filed a declaratory action of non-infringement in front of the Paris Tribunal de grande instance (TGI) against the French company CTP Environnement, as the owner of European patent No. EP 1528318.

Remarkably, the plaintiffs asked the French court to declare that both the French part and the British part of the patent are not infringed. The patent proprietor claimed that the TGI lacks jurisdiction. Such a procedural defense was addressed not by the full panel of the court but by the case management judge, in an order dated November 18, 2016.

The pan-European litigation game.

In brief, the judge rejected the lack of jurisdiction defense, and thus decided that the case could proceed further and that the TGI could rule on the declaratory claims with respect to both France and the UK.

In order to reach this conclusion, the judge reviewed the atlas of cross-border litigation, namely the so-called Brussels I regulation, formerly regulation (EC) No. 44/2001, still formerly known as the 1968 Brussels Convention, and nowadays known as regulation (EU) No. 1215/2012.

The central issue at stake was the articulation between articles 4(1) and 24(4) of the regulation.

According to article 4(1):

Subject to this Regulation, persons domiciled in a Member State shall, whatever their nationality, be sued in the courts of that Member State.

An action for declaration of non-infringement is a lawsuit against the patent proprietor. Therefore, this provision apparently makes it possible for a third party to file a declaratory action relating to any national part of a European patent in the courts of the country in which the patent proprietor has its seat.

In the present case, CTP Environnement is based in France, which is why the action was filed in front of the Paris TGI.

But in IP matters there is a limit to this general jurisdiction rule, which is set in article 24(4):

The following courts of a Member State shall have exclusive jurisdiction, regardless of the domicile of the parties: […]  in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, irrespective of whether the issue is raised by way of an action or as a defence, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is under the terms of an instrument of the Union or an international convention deemed to have taken place. Without prejudice to the jurisdiction of the European Patent Office under the Convention on the Grant of European Patents, signed at Munich on 5 October 1973, the courts of each Member State shall have exclusive jurisdiction in proceedings concerned with the registration or validity of any European patent granted for that Member State.

So the courts of each country have exclusive jurisdiction with respect to any issues of “registration” (whatever that means) and validity (well, we know what that means) of the respective national parts of a European patent. In other terms, nullity of the UK part of a European patent cannot be requested in France, it has to be requested in the UK.

According to the CJEU case C-4/03 (GAT v. LuK), exclusive jurisdiction as defined above applies in “all proceedings where the validity of the patent is decisive, irrespective of whether this is raised by way of an action or a plea in objection“. In other terms, not only invalidity claims or counterclaims, but also invalidity defenses are forbidden territory for cross-border litigation. This has actually been made clearer in the above version of article 24 than it was in the original 1968 Brussels Convention based on which GAT v. LuK was issued.

CTP’s defense in the present case was that a declaratory action may very well give rise to an infringement counterclaim, and then a nullity counter-counterclaim. Therefore, should the French court accept to hear the UK part of the declaratory action, it could impinge on prohibited UK-only validity issues.

In addition, the complaint made reference to a possible objection of extension of subject-matter of the patent, which meant that the validity of the patent would be challenged.

The judge rejected these arguments with the following brief reasoning:

In the present case, and at the present stage, the lawsuit concerns a claim for declaration of non-infringement without for the time being any counterclaim for infringement by CTP nor any claim for nullity of the UK part of the allegedly infringed patent, which would then be a matter for jurisdiction of British courts. 

Therefore, at the present stage of the lawsuit, article 24(4) […] is not applicable. Since the defendant has its seat in France, the present court has jurisdiction based on article 4 […] so that the defense of lack of jurisdiction must be rejected. 

It is clear from the above statements that the situation may change and that there may be a lack of jurisdiction in the future, if further claims are filed. What is less clear is whether only an invalidity claim by Furnace Solutions et al. would trigger this lack of jurisdiction, or whether also an infringement counterclaim by CTP would lead to the same result.

At any rate, the approach taken by the French judge in Furnace Solutions seems to be consistent with the outcome of the Actavis v. Eli Lilly pemetrexed case in the UK, where the British courts ruled on a declaration of non-infringement of a European patent in the UK but also France, Italy and Spain. See for instance the second pemetrexed appeal judgment dated 2015 here. In this case as well, the validity of the patent was expressly not challenged.

Together with the C-616/10 Solvay v. Honeywell CJEU ruling of 2012, which reopened the door to cross-border injunctions in the form of interim relief, these cases could pave the way for a revival of cross-border litigation – pending the UPC big bang.

As a final remark to those eager to follow in the footsteps of Furnace Solutions Ltd., the admissibility of a declaration of non-infringement in France is subject to a mandatory stage of pre-litigation negotiation.

Article L. 615-9 Code de la propriété intellectuelle provides that:

Any person who proves exploiting industrially on the territory of a Member State of the European Economic Community, or serious and effective preparations to that effect, may invite the owner of a patent to take position on the opposability of his title against such industrial exploitation, the description of which shall be communicated to him.

If said person challenges the answer made, or if the patent proprietor does not take position within a deadline of three months, they can sue to have a court rule that the patent does not impede said exploitation, without prejudice to a patent nullity action and to a later infringement action if the exploitation is not conducted in the terms specified in the description mentioned in the previous paragraph. 

In summary, prior notice to the patent proprietor is mandatory. Furthermore, in view of the three-month deadline, it seems virtually impossible to validly launch a surprise declaratory action in this country.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 2ème section, ordonnance du juge de la mise en état, November 18, 2016, Furnace Solutions Ltd. et al. v. CTP Environnement, RG No. 15/06637.

Poisonous thoughts

It has already been more than a week since the latest Enlarged Board of Appeal’s decision G 1/15 has been published. It has therefore already been reported and commented on in all good blogs, so that there is probably no need for me to repeat what other have already explained very well.

It will be sufficient to remind readers that the decision provides important guidance on the issue of partial priority (especially with respect to so-called “OR-claims“) and puts an end to the doctrine of “poisonous divisional applications“.

Basically, if a claim in an application or patent encompasses subject-matter which was disclosed in the application to which priority is claimed, but is broader than said disclosed subject-matter, the priority is not fully invalid. The part of the claim which was disclosed in the priority document benefits from the priority, and the other, new, part of the claim does not. G 1/15 makes it clear that no conditions or limitations apply in this respect.

With that in mind, I do have a couple of thoughts on this topic that I might as well share in this post. Actually, both thoughts are not so much about what the decision says as about what it does not say.

The first remark relates to the Enlarged Board’s reasoning. The theory of poisonous divisional applications was originally adopted in a number of decisions from the Boards of appeal. These decisions relied on the following sentence in the founding decision G 2/98 on the assessment of priority claims:

The use of a generic term or formula in a claim for which multiple priorities are claimed in accordance with Article 88(2) EPC, second sentence, is perfectly acceptable under Articles 87(1) and 88(3) EPC, provided that it gives rise to the claiming of a limited number of clearly defined alternative subject matters.

This sentence was interpreted by a number of boards as imposing a limitation to the possibility to divide a claimed subject-matter into different parts having different effective dates. This was also the respondent’s position in the referral. The argument was well summarized in the submission of the president of the EPO. And in item 3 of the reasons of G 1/15, it is acknowledged that “the divergence that has emerged in the case law has been caused by the proviso in point 6.7 of the Reasons of G 2/98“.

Therefore, I am somewhat disappointed that the Enlarged Board did not really address the question of what was meant by this sentence in G 2/98. In the core of G 1/15, the Enlarged Board analyzed the EPC, the Paris Convention, the Travaux préparatoires and some authors’ opinions, and came to the conclusion that there can be no condition or limitation restricting partial priority. This is all fine and well, but the sentence in G 2/98 was simply left out of the picture. So, does G 1/15 represent a change in case law relative to point 6.7 of the reasons of G 2/98? Or was the Enlarged Board unable to figure out what was originally meant in G 2/98? After all the sentence explicitly mentioned a proviso, which does strongly suggest a condition or limitation.

So, it seems to me that there is a little bit of a lack of transparency here.

The second remark is more practical than theoretical – and therefore probably more interesting than the first one.

In one of my previous posts, I reviewed decision T 1222/11 in detail. This was the first decision which extensively discussed the theory of poisonous divisional applications and came to the conclusion that the theory was incorrect. The reasoning was that partial priority can always be acknowledged if a claim is broader than the disclosure of the priority document. This is the so-called “conceptual approach” which has now been endorsed by the Enlarged Board in G 1/15.

In this previous post, I noted that the line of thought of T 1222/11 may also have side effects which go beyond the issue of partial priority. More particularly, the issue is related with the question of what is a first application, for the purpose of assessing priority. So, now seems like a good time to revisit this question again.

Quite remarkably, in T 1222/11 the refusal of the patent application at stake was confirmed due to an invalidity of the priority claim. This has always striken me as paradoxical, since this decision was widely acclaimed in the patent profession as being an antidote to the nefarious theory of poisonous divisional applications adopted in earlier decisions (as well as in several national court rulings).

G 1/15 basically states that the principles set out in T 1222/11 were the right ones. Although it does not address the particulars of this earlier case, there is every reason to assume that T 1222/11 was also correct in that it concluded that the priority claim at stake was invalid.

One last sip of poison for the road?

In T 1222/11, the claimed subject-matter was properly disclosed in the priority document. But part of it was also disclosed in an even earlier application by the same applicant, called D4b. In other terms, the teaching of the priority document (and of the claimed subject-matter) corresponded to a generalization relative to document D4b. In particular, some examples of D4b were found by the Board to fall within the claimed subject-matter. Although the claim at stake mentioned a property (namely a buffering capacity) which was not recited in D4b, the Board concluded that the same property was necessarily achieved in D4b. Also, the fact that D4b was limited to the use of a combination of two components (malic acid and lactic acid), whereas the priority document and the claimed invention were not, was found to be irrelevant.

The overall conclusion was that D4b was the actual first application for the claimed subject-matter, and not the priority document. As a result, the priority was invalid, and the claimed subject-matter lacked novelty over D4b. No disclaimer was allowable because D4b became full prior art due to the invalidity of the priority claim.

Therefore, G 1/15 has fully disarmed opponents or nullity claimants. Although poisonous divisional applications may no longer be a legal weapon, what we coud call “poisonous prior applications” (of the D4b sort in T 1222/11) have perhaps become more powerful weapons.

Let’s simplify the question one step further. Let’s assume a first application A1, a subsequent application A2 and an even later application A3 by the same applicant.

A3 claims subject-matter S, which is properly disclosed in A2. On the other hand, A1 does not disclose S but only part of S, which we can call s.

For instance, s can be a process involving a certain temperature range, and S can be a similar process involving a broader temperature range. Or s can be a composition comprising components A, B and C, while S can be a similar composition comprising components A and B.

If you had asked me the question a few years ago, I would probably have taken the view that, in such instances, the first application for subject-matter S is A2 and not A1. Just like, for consistency reasons, and under the EPO’s “gold standard“, the disclosure of s cannot be a proper support for claiming S (for the purpose of the assessment of Art. 123(2)).

This view is actually consistent with what is stated in the EPO case law bible (Case Law of the Boards of Appeal of the European Patent Office, 8th edition, II.D.4.1, 1st paragraph).

However, a side effect of the generous view of partial priority adopted in T 1222/11 and now endorsed in G 1/15, seems to be that this view is not correct, and that the first application is such a case is in fact… A1.

Applicants will therefore need to be careful about this, especially if they file successive applications containing the same examples but claiming different aspects of the same technology. Or else, some form of poisoning will come back to haunt them. 

Now, here is a challenging idea: could some form of partial priority be acknowledged in the context of a “not-the-first-application” argument? In other terms, if A1 discloses S1, A2 discloses S2, and A3 claims S1 or S2 (while claiming the priority of A2 only), is the priority claim fully invalid, because A2 is not the first application at all? Or does the priority claim remain valid as far as S2 is concerned?

Based on T 1222/11, I would tend to answer that the priority is fully invalid. Unless some supplementary condition needs to be examined, such as the fact that a limited number of clearly defined alternative subject-matters are claimed? Just kidding.


CASE REFERENCE: Enlarged Board of Appeal, November 29, 2016, G 1/15, Clariant Produkte (Deutschland) GmbH v. Infineum USA L.P.

Groundhog case

Okay, campers, rise and shine and don’t forget your booties ’cause it’s cold out there today!

I don’t know if this sentence will ring a bell to some readers, but it is my favorite quote from the classic comedy Groundhog Day, in which poor Bill Murray cannot get out of a day he keeps re-living.

The movie came to my mind when reading about the latest development in the Nergeco v. Maviflex case. I don’t know if this patent litigation has broken a record or not, but it sure looks like the judicial equivalent of a groundhog day that never ends.

Here is the extraordinary timeline of the case:

  • At the end of the nineties, Nergeco (patentee) and Nergeco France (licensee) sued two companies, Mavil (now Gewiss France) and Maviflex, for infringement of a European patent.
  • On December 21, 2000, the Lyon Tribunal de grande instance (TGI) held that the plaintiffs’ claims were admissible but ill-founded. The plaintiffs appealed.
  • On October 2, 2003, the Lyon Cour d’appel set aside the first instance judgment and concluded that the patent was infringed. The court ordered an expertise to assess damages.
  • On October 15, 2005, the Cour d’appel issued a second judgment further to the expertise. The amount of damages was set to 60,000 euros to the patentee (Nergeco) and 1,563,214 euros to the licensee (Nergeco France). The defendants then filed an appeal on points of law.
  • On July 10, 2007, the Cour de cassation partly set aside the 2005 judgment regarding the damages to be paid to the licensee. The reason for the reversal was that the Cour d’appel had not addressed the argument that the license agreement had been registered in the patent register only in 1998, so that it was not enforceable against third parties before that date. The case was thus remitted to a different Cour d’appel, in Paris this time.
  • On June 2, 2010, the Paris Cour d’appel held that all claims against Mavil (now Gewiss France) were in fact inadmissible as Mavil no longer existed when they were initially sued; and reduced the amount of damages to be paid by the second defendant Maviflex to the licensee Nergeco France by approximately half (taking into account the date at which the license agreement was registered and became enforceable against third parties). Both sides filed another appeal on points of law.
  • On September 20, 2011, the Cour de cassation set aside the 2010 judgment. First, because the Cour d’appel should have ruled on an argument of invalidity of the license agreement (there was no res judicata on this issue, as it was not addressed in the 2003 and 2005 judgments). Second, because the argument that the claims against Mavil were inadmissible should not have been given any consideration, as Mavil / Gewiss France acted in the proceedings as if their designation in the initial complaint was correct. In fact, this part of the decision became very famous since it is one of the few illustrations of an estoppel principle in this country.  The case was again remitted to the Paris Cour d’appel.
  • On June 21, 2013, in a new judgment by the Cour d’appel, the case was reexamined pursuant to the instructions of the Cour de cassation. But the actual outcome was pretty much the same as in the previous judgment. In particular, the damages award to Nergeco France was similar to the one ordered in 2010. The defendants filed a third appeal on points of law.
  • On December 16, 2014, the Cour de cassation set aside the 2013 judgment. Once again, the supreme court ruled that the appeal judges should have ruled on some arguments relating to the inadmissibility of Nergeco France’s claims.

And this finally leads us to the latest decision in the series, issued by the Paris Cour d’appel on October 28, 2016, and which addresses the inadmissibility arguments that the Cour de cassation held needed to be addressed.

What an incredible mess… This lawsuit has now been pending for almost two decades, and the Cour de cassation set aside appeal judgments three times. It may not even be over yet. For all I know, the losing parties may have referred a fourth appeal on points of law to the Cour de cassation.

Fortunately, this is a very exceptional situation due to the fact that (1) the Cour d’appel repeatedly failed to address arguments that the supreme court believes should have been addressed; and (2) the supreme court repeatedly remitted the case to the appeal stage instead of putting an end to the lawsuit.

Groundhog day and Goodbye Lenin: very different but both fun to watch.

While the context of the case is by itself fascinating, the content of the October 28, 2016 decision is also quite interesting, as it notably addresses the issue of the coexistence of French and European patents.

As a recap, the issue at stake was whether Nergeco France’s claims in the lawsuit were admissible. The court held that they were not, because the agreement containing the license provision was invalid.

Remarkably, the court found not one but two independent reasons why the agreement was invalid.

The first reason was one of contractual law. The agreement between Nergeco and Nergeco France was executed on December 6, 1990. At that time, Nergeco France was not yet registered in the commerce register. It is possible for a company to enter into an agreement before its incorporation, but special formalities need to be observed. This was not the case here. The agreement even mentioned that Nergeco France was registered in the commerce register of the good town of Le Puy, under a certain number – which was untrue, as the registration only took place on February 2, 1991.

The agreement was thus executed by a company with no legal capacity.

The second reason was more specific to patent law. Article 8 of the agreement recites that

if necessary, Nergeco will be in charge of obtaining and maintaining patents. Nergeco Fance will ipso facto be a licensee of the patents for France. 

An annex to the agreement, dated January 31, 1991, specifies that, by application of article 8, a license is granted by Nergeco to Nergeco France on a number of patents, among which the European patent in suit.

However, the agreement and its annex are silent as to the French patents to which the European patent in suit claims priority.

Because of this silence, the Nergeco companies fell into the trap of article L. 614-14 Code de la propriété intellectuelle:

A French patent application or a French patent and a European patent application or a European patent having the same filing date or the same priority date, protecting the same invention and belonging to the same inventor or successor in title cannot, for the parts in common, be independently subjected to a transfer, security, pledge or authorization of exploitation rights, subject to invalidity. 

This provision is one of the tools for preventing some forms of double patenting in this country.

In the present case, the European patent was licensed to Nergeco France, but not the French priority patents. As a result, the license was invalid.

The plaintiffs tried to escape the L. 614-14 trap by presenting several interesting arguments.

A first defense was that the general sentence “Nergeco Fance will ipso facto be a licensee of the patents for France” in article 8 of the agreement meant that the French patents were also concerned. The court replied that the licensed patents were necessarily expressly mentioned in the agreement – and the French patents were not.

A second defense was based on article L. 614-3 Code de la propriété intellectuelle, according to which a French patent covering the same invention as a European patent granted to the same inventor or successor in title ceases to be in force at the end of the European opposition period (or at the end of the opposition proceedings, if an opposition is filed).

The opposition period ended on July 13, 1994. Nergeco argued that the two French patents ceased to be in force on that date. Therefore, the ground for invalidity related to the absence of mention of the French patents in the agreement no longer existed from that date. The court rejected the argument, as this ground for invalidity must be appraised on the day the agreement was executed. It cannot be cured afterwards.

For the same reason, the court did not take into account subsequent actions (such as the renewal of the agreement, later amendments to the agreement, etc.).

And so, after all this time, the licensee was finally found not to be an actual licensee.

Nergeco France saw this coming, and therefore tried to convert its claims as a licensee into claims based on unfair competition. But these were new claims and were thus held inadmissible at this stage of the lawsuit.

As a final word (for now?) on this story, things seem to have gotten very nasty between the claimants and defendants. The judgment briefly mentions a number of parallel proceedings, including criminal ones.

It also seems that Gewiss France and Maviflex argued that the agreement between Nergeco and Nergeco France was forged. The court did not take sides on this. I wonder if the alleged forgery relates to the date of the agreement. From an outsider’s perspective, the fact that the agreement makes reference to a company having a registration number although the registration had not yet been performed at the time is indeed troubling. Could it be that the court was troubled as well, leading them to being quite strict on formal invalidity issues?

One can only speculate, not having access to the file wrapper.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, October 28, 2016, Nergeco SA & Nergeco France SAS v. Gewiss France SAS & Maviflex SAS, RG No. 2015/01298.

Fight club

The first rule of fight club is you do not talk about fight club. In legalese, I guess you could call that a confidentiality clause. Among other clubs which have been relatively confidential, there is also, well… confidentiality clubs precisely.

A confidentiality club is an agreement between litigants, per which only specified persons (such as specified outside or in-house attorneys) are granted access to some documents. This can be a useful tool for protecting confidential information from being fully released to the other party, while at the same time making sure that the relevant evidence can be debated.

Although I understand that confidentiality clubs are common at least in the UK, the same cannot be said of France.

Courtesy of Denis Monégier du Sorbier, here is an interesting decision issued almost two years ago, which opens the door to such clubs in this country.

In this case, the Dutch company DSM IP Assets BV obtained ex parte orders for carrying out infringement seizures against three defendants (Univar, Novozymes Biologicals France and Novozymes France), in order to demonstrate infringement of one of their European patents. After the seizures were performed, the seized parties filed a motion in court in which they requested that the seized documents should be placed under seal, and that the orders authorizing the infringement seizures be modified.

Such a motion is handled in urgency proceedings by a single judge from the Paris Tribunal de grande instance (TGI), and it results in an order being issued.

It is well established that seized documents which are confidential in particular as they relate to technological or business secrets, and which are not relevant for the demonstration of infringement, should not be transmitted to the claimant. On the other hand, documents which are relevant for the demonstration of infringement are usually to be released to the claimant, even if they relate to technological or business secrets.

After a seizure, it is a common reaction by defendants to request that all documents be placed under seal. It is then usual for an expert to be appointed by the court to sort out the documents and issue an official recommendation as to which ones may be given to the claimant and may thus be part of the ensuing litigation.

This can be a long and cumbersome process, especially if the amount of documents to be handled is large (which can be the case if documents were seized in a digital form); and especially if the parties fight hard on every piece of information in front of the expert, or in front of the case management judge (whenever they claim that there are issues in the way the expertise is handled).

In the DSM v. Univar case, the judge started by rejecting Univar’s and Novozymes’ request to place all seized documents under seal. He noted the following:

[…] As rightly stated by DSM, it is clear that Univar simply made a list of seized documents and stated that they are all confidential, without explaining, document by document, what the nature or the reason of such confidentiality is. 

Besides, it can be seen on the seizure report written in Fontenay Sous Bois that Ms. Theron, CEO, stepped in so as to redact mentions relating to the enzymes on the list of ingredients / food additives, to the amounts on the sales log and the purchases log, to the names of customers and to the turnover on the statement of sales per client, as well as invoices and delivery slips. 

Similarly, it can be seen on the seizure report written in the secondary office in Lieusaint that Mr. Corby, head of the warehouse, stepped in so as to redact […] the names and addresses of recipients on delivery slips, and the products other than Lactozym Pure cited on the reception orders. 

Thus, it should be emphasized that important information such as customers’ names, amounts of sales and products at stake is actually not accessible. If Univar’s representatives relied on confidentiality so as to redact some information, it can be assumed that the information that they allowed to be seized is not of a confidential nature preventing any disclosure. 

Besides, a number of seized documents are public, as either they can be found on the internet, or they are enclosed with the marketed product, and nothing suggests that they may contain any secret information. 

In summary, it is not sufficient for the defendants to simply ask for a blanket seal on everything, without specifying exactly which information is confidential and why – which makes a lot of sense.

There may be another lesson here for seized parties. Sometimes, some sorting out of confidential information and some redacting already takes place during the seizure itself. On the one hand, this may be the best way to prevent really sensitive information from leaking to the plaintiff. But on the other hand, this needs to be carefully done, as it may then be slightly more difficult to prove that non-redacted information should later be redacted as well.

Then comes the second and most interesting part of the decision, dealing with the defendants’ request for a modification of the seizure orders.

Among the various actions and measures authorized by the orders, one paragraph was about setting up a confidentiality club to handle evidence post-seizure. This is the paragraph that Univar et al. wanted to remove from the orders.

 

Two lawyers actuated by the hands of their respective clients

The judge held as follows:

[The defendants] claim that DSM, by inserting this mention “in the middle of the other requests in a unilateral and totally incongruous manner”, attempted to order a club which has no legal existence and no legal basis, and to which they firmly object. 

They add that the notion of confidentiality club is unknown in our procedure, wherein an expert is appointed to select which documents should remain secret, that the practical terms of how it operates are inconsistent, and that such a club was recently refused in another similar case. 

However, they underestimate the judge’s vigilance by thinking that an entire paragraph could elude his wisdom […]. Actually, if setting up such a club is indeed not provided in the statute, on the other hand it does not contravene the basic principles of our law, since it makes it possible for both parties, in an adversarial manner, to agree on the evidence which can be used in the litigation. 

Moreover, it is of course not mandatory. It is clear that if the parties […] do not agree on setting up such a club, to which no attorney at law or patent attorney could possibly be forced, one of them can file a motion in front of the case management judge to request that an expert be appointed to sort out the exhibits and select those which should remain secret, and this is a solution which would then put the parties back on the usual track. 

So, confidentiality clubs are possible in French patent litigation – although mention is made of another decision in which this option may have been rejected.

This is good news as it is an opportunity for parties to cooperate to a limited extent in order to streamline the proceedings and eliminate the additional cost and pains of formal discussions in front of an expert.

On the other hand, according to the order it is always possible for an uncooperative party to balk at joining the club and to have its case heard in front of an expert and/or of the judge at every step of the way.

Case management may be one of the weak points of patent litigation in France. It works well when the parties do cooperate. But it can be relatively easy for a party wanting to delay the lawsuit (often the defendant, but sometimes also the plaintiff) to disrupt the schedule by filing a number of motions, not complying with the deadlines set by the judge, etc. Such a rogue strategy may work to some extent as (i) the right to be heard is regarded by judges as a paramount principle and (ii) the court’s docket is usually more than full anyway, so that there is little incentive for them to force the parties to move on quickly.

Hopefully, confidentiality clubs may contribute to an overall increase in the efficiency of the system, by arousing a form of cooperation on side issues so as to focus on the real disagreement between the parties.

The real question though is whether they will catch on. Eric Halphen, the judge who issued the order in the case at hand, has left the IP chamber of the Paris TGI since then. We are thus looking forward to his colleagues’ position on such clubs for a streamlined fight.


CASE REFERENCE: TGI Paris, 3ème chambre 2ème section, ordonnance de référé, February 13, 2015, Univar et al. v. DSM IP Assets BV, RG No. 15/00822.

French courts getting their priorities straight

Everyone in France is familiar with the sportswear and sports equipment retail store chain Decathlon. Well it looks like Decathlon has been running a real litigation marathon for a number of years due to a patent dispute with Time Sport International.

A number of decisions in this judicial saga have been published over the years, and the latest installment was issued two months ago by none less than the supreme court for most patent matters in France, i.e. the Cour de cassation.

In terms of context, it may be sufficient to mention that Decathlon was found guilty of infringement of European patent No. EP 0682885 to Time Sport International. Decathlon’s counterclaim for invalidity of the patent failed.

The priority of the patent was an important aspect of the validity challenge. The point of law raised by Decathlon in front of the cassation judges was precisely related with this particular aspect. The judgment thus provides an opportunity to look at whether the assessment of priority is similar or not in France and at the EPO.

Here is a short answer for readers reluctant to go through the details of the case: yes, the Cour de cassation endorsed the same standard for assessing priority as the EPO.

Claim 1 of the European patent at stake was mainly based on claims 1 and 9 of the French priority document. But the defendants argued that there were still significant differences, so that the subject-matter of the European patent was not the same as that of the French priority (and that the priority was invalid).

Here is claim 1 of the European patent (as maintained in amended form after opposition):

Device for the adjustable occipital fixing of a helmet, notably a helmet for a cyclist and more particularly for a mountain bike enthusiast, comprising a shell designed to fit on the skull of the cyclist and straps fixed to the lateral walls of this shell and connected on each side at a single point equipped with a removable connecting means for rapid hooking and unhooking, comprising a platen, fixed to and articulated with respect to the rear edge of the shell of the helmet, an occipital bearing block and at least one occipital strap, fixed to this occipital bearing block and the platen, the occipital strap being connected to the lateral straps and to the removable connecting means for rapid hooking and unhooking such that, upon the hooking of removable connecting means, the occipital strap provides a traction on the occipital block which is thus pushed against the bottom occipital portion under the occiput without any removal possibility.

In claim 1 of the priority document, reference was made not just to a platen, but to a housing for accommodating the platen. It was also specified that the platen was made of two elements, one fixed to the helmet and another one articulated relative to the first one with means for connecting an occipital bearing block and at least one occipital strap fixed to the second element.

Several features were thus deleted in claim 1 of the European patent, relative to the priority document, and the debate focused on this deletion.

Here is the ideal helmet (and complete outfit) for all “mountain bike enthusiasts” as the patent puts it.

Decisions from the Cour de cassation are a notoriously difficult read. So, let’s hold our horses and digest it step by step.

There were six reasons set forth by Decathlon why the judgment by the Cour d’appel was erroneous on the priority issue.

First reason: the appeal judges distorted the content of the European patent when they noted that claim 1 of the European patent was substantially identical with claims 1 and 9 of the priority document, whereas claim 1 of the European patent does not mention the housing and the two platen elements.

This first reason was quickly dismissed because the appeal judges did not state that European claim 1 was identical with the combination of French claims 1 and 9, but rather stated that it was substantially identical.

Second reason: the appeal judges erroneously reasoned in terms of obviousness for the skilled person instead of assessing whether the claim at stake was directly and unambiguously derivable from the priority document. In particular, according to the appeal decision, the claimed device without any mention of a housing or of a two-part platen “could obviously be contemplated by the skilled person, without any technical effort” and does not presuppose any “inventive step” relative to the teaching of the priority document.

The Cour de cassation agreed that the proper test was:

whether the skilled person can, based on common general knowledge, directly and unambiguously deduce the subject-matter of the claim from the prior application considered as a whole. 

Great news, this is the same test as the one applied at the EPO! The court deemed that this test was properly stated and applied by the appeal judges. The above mentions of obviousness or of the absence of any inventive step in the appeal judgment were admittedly erroneous but they were superfluous and therefore did not justify setting aside the judgment.

Third and fourth reasons: the appeal judges did not perform the required analysis, because they noted that the invention as presented in the priority document could be found in the description and in claims 2 or 9 of the European patent. This is irrelevant, and they should have examined only the subject-matter of claim 1 of the European patent instead.

Again, the Cour de cassation focused on the correct application of the right test by the Cour d’appel and disregarded the superfluous (and, I assume, erroneous) statements challenged in the third and fourth reasons of the cassation appeal.

Fifth reason: when features are deleted in a claim relative to the priority document, it should be examined whether the deleted features were or were not presented as essential in the priority document. This analysis was not properly made by the Cour d’appel, as in particular the Cour d’appel did not address the fact that the deleted features were in the characterizing portion of claim 1 of the priority document.

The Cour de cassation agreed that the omission of essential features from a priority document results in the invalidity of the priority claim. But the court deferred to the appeal judges regarding the factual determination of whether the same essential features are protected in the priority document and in the European patent. Under French law, an appeal judgment does not necessarily have to address all details of the parties’ argumentation. In this case, it is irrelevant that the appeal judges did not comment on the presence of the features at stake in the characterizing portion of claim 1 of the priority document.

Sixth (and last) reason: no distinction should be made between features related to the function and effect of the invention and features unrelated to those, in the priority analysis. The Cour d’appel did make such a distinction as they noted that the housing feature was “devoid of technical effect” and was therefore not an essential feature.

According to the cassation ruling, the statement made by the Cour d’appel was legitimate. It simply showed that “the omission or inclusion of [the housing feature] was irrelevant for the assessment of the priority claim“.

In summary:

  • The Cour d’appel, approved by the Cour de cassation, applied the “golden standard” of the EPO (see G 2/98) for the assessment of priority, i.e. examined whether the claimed invention was directly and unambiguously derivable from the contents of the priority document as a whole, by the skilled person relying on common general knowledge.
  • In particular, when an essential feature is deleted from the main claim, relative to the priority document, the relevant question is whether the deleted feature was presented as essential in the priority document.
  • The Cour d’appel made a number of erroneous statements in the judgment, but was forgiven for doing so, because such statements were superfluous and the proper standard was nevertheless applied.

It would of course have been interesting if a Board of appeal had had the opportunity to assess the validity of the priority claim as well for this case: we would then have had a chance to check whether the standard would have been applied in the same way.

In fact the European patent was opposed, which gave rise to appeal decision T 552/02, but the priority issue was not discussed in it.

One last interesting fact though: the patent was revoked in first instance by the opposition division. Then, the proprietor missed the deadline for filing the statement of grounds of appeal. However, the Board granted the restitutio in integrum requested by the proprietor – and set aside the decision of the opposition division. So, that was a very close shave indeed. If Time Sport International had lost its patent in the opposition, the French Cour de cassation would have missed a chance to get its priorities right.


CASE REFERENCE: Cour de cassation, chambre commerciale, November 22, 2016, Décathlon France v. Time Sport International et al., Appeal No. E 15-16.647.