The art of the seal

The new set of rules recently adopted in France on the protection of trade secrets can potentially affect many aspects of IP litigation, including in particular the handling of evidence that may contain confidential information.

New judgments are therefore bound to come under scrutiny in order to determine whether there is a change in practice or not: in particular is there any heightened effort by the courts to preserve the parties’ confidential information? In Conversant v. LG, it seemed that maybe there was.

But as far as today’s ruling is concerned, I am not so sure the recent law had any impact on the judge’s assessment of seized evidence.

Here is the context.

Bayer Intellectual Property GmbH owns European patent No. EP 2164496, on a formulation for treating coccidiose and iron deficiency in farm animals, such as piglets.

In November 2017, the French company Ceva Santé Animale let Bayer know that they intended to launch a veterinary product in several European countries, and Bayer replied that the product would infringe their patent. Ceva nevertheless continued to prepare for the launch of the product.

The dispute suddenly crystallized a few months ago. First, Ceva obtained a marketing authorization for their product, Forceris, in April 2019. Then, on May 16, oral proceedings took place in connection with Ceva’s opposition against EP’496 at the EPO, and the opposition division rejected the opposition. On the same day, Bayer sent a cease-and-desist letter to Ceva. Ceva postponed the launch in the Netherlands and agreed to give Bayer a 2-month advance notice prior to such launch. But no similar undertaking was made with respect to France.

Still on May 16 (definitely a busy day for Bayer’s legal team), an ex parte order for infringement seizure was issued. The seizure was carried out 4 days later at Ceva’s headquarters.

Ceva immediately filed a motion in court to request the placement of the seized documents and information under seal.

In fact, the bailiff who performed the seizure had spontaneously placed some of the seized evidence under seal and had redacted some of the seized information – but Ceva deemed that this was not enough.

The interim order further to Ceva’s motion was issued on June 7.

With piglets, there is always money at stake.

In summary, Ceva argued that Bayer did not need the seizure, as they already had information on the composition of the Forceris product; and that the seized information was highly confidential and could unfairly distort competition if revealed to Bayer.

Unsurprisingly, Bayer disagreed and requested on the contrary that the evidence placed under seal by the bailiff should be released to them.

In her order, the judge first noted that Bayer’s knowledge of technical information on the allegedly infringing product (due to prior exchanges between the parties) was irrelevant.

Indeed, the infringement seizure procedure aims at collecting evidence relating not only to the existence of an infringement, but also to the extent of the infringement.

Second, she noted that the provisions on the protection of trade secrets not only apply to seized exhibits, but also to mentions contained in the bailiff’s report:

[…] The abovementioned provision (article R. 615-2 par. 5) only cites “seized exhibits” but  it must also apply to mentions in the infringement seizure report which derive from these exhibits. Otherwise, as stated by Ceva, the protection of trade secrets would be circumvented simply by mentioning the contents of the seized documents in the report. 

Pragmatic and fair.

Then, the judge deemed that a redaction of the bailiff’s report was not required in this case; nor was the placement under seal of most of the seized exhibits.

Here is the standard to be applied, as reminded in the order:

The judge of the infringement seizure should only order justified and proportionate measures, taking into account the opposite interests and rights at stake: on the one hand, [the interests and rights] of the seized party to enjoy the protection of its trade secrets and confidential information, if it can prove this qualification; and on the other hand, [the interests and rights] of the proprietor to gain access to any relevant documents which may enable to characterize the infringement, even before any finding by the court as to the existence of the infringement, including confidential information, provided that it appears to be necessary for demonstrating infringement, in order not to deprive the infringement seizure of any efficacy. 

I don’t think this standard is substantially different from the one that was traditionally applied before the 2018 trade secret law.

In this case, the judge refused to seal information appearing on one page of the bailiff’s report and in two seized exhibits, relating to commercial plans regarding Forceris.

Ceva stated that Bayer could use the information to adjust the launch of its own competing product, Boycox Iron. But the judge noted that “the countries [where Forceris is to be marketed] are more or less those countries where pigs are raised“. In other terms, the information was obvious and not protected.

I am not sure this reasoning is completely convincing, especially in view of the “more or less” language (“peu ou prou” in the original version).

The judge further noted that the business plan had already been disclosed in the Dutch proceedings, so that the information was not confidential. This, to me, is a much stronger point.

One of the exhibits contained the price of the Forceris product. But the judge also refused to seal it.

The first reason was that Bayer needed the information for the assessment of damages. The second reason was that Ceva has disclosed its recommended price in Italy, so that the judge could not see why the information would be confidential in France (even if the French price was different from the Italian price).

Again, I tend to find this latter reason not fully satisfactory. The fact that a company has decided not to keep some information confidential does not mean that they have given up on confidentiality of all information.

As for the usefulness of the price for the computation of damages, this is of course a central point. In some cases, courts have decided that there should be a ruling on infringement first, before the patentee can access any price-related information. But in other cases, such as this one, they have decided otherwise. This is a delicate case-by-case balance, which, again, has apparently not really been altered by the new trade secrets provisions.

Other exhibits were OKed by the judge as well, as they related to invoices, orders and the like and were therefore relevant for the patentee as they contained information on the distribution network.

Only one exhibit was withheld by the judge, namely some commercial documentation which “it does not appear justified and proportionate to disclose to Bayer in view of the information already collected“.

On the other hand, the judge granted Bayer’s counterclaim for disclosure of the evidence spontaneously placed under seal by the bailiff during the seizure.

The last nail in the coffin was the following sentence:

There is no legitimate reason to prohibit Bayer from using the elements [thus] lawfully obtained in other proceedings in France or abroad. 

This is an important reminder of how useful the French infringement seizure can be in a situation of global litigation.

All in all, the judge’s ruling seems to favor efficiency of the proceedings: lengthy expertise proceedings on the exhibits are avoided, and the patentee has now all the necessary information to sue other parties if needed, and file submissions on all aspects of the case including damages. But whether the defendant’s trade secrets were sufficiently preserved in the process may be open for discussion – with the caveat that, as is often the case, the order is relatively brief and does not make it possible to fully appraise the entire context.


CASE REFERENCE: Tribunal de grande instance de Paris, ordonnance de référé, June 7, 2019, Ceva Santé Animale SA v. Bayer Intellectual Property GmbH, RG No. 19/54542.

Outdated soon

Glad to be back on the blog, with a report on a decision which already has the flavor of a thing from the past. I am very grateful to Philippe Schmitt for providing this judgment, after commenting it on his blog.

Thales, the famous electronics company, filed a French patent application at the INPI (Institut National de la Propriété Industrielle) on December 17, 2010. It was published under No. FR 2969124. A decision of refusal of the application was issued on July 17, 2018. Thales appealed, which leads us to the judgment at stake.

Here is claim 1 of the application, as modified during examination proceedings:

A method for displaying the steps of a mission of an aircraft on a screen of a display device, the mission being a flight plan, wherein each step corresponds to a waypoint of the flight plan, characterized in that the different steps are displayed in a first graphical window comprising a time scale, or “timeline” (TL), the different steps being displayed opposite the schedule corresponding to their accomplishment, and the length of the “timeline” is longer than the length of the first graphical window, and the graphical window therefore displays only a part of the “timeline”, this part being imposed by the user of the display device.

The application was refused by the INPI as they deemed that:

  • The application merely relates to a presentation of information associated to a mathematical method, without any technical features.
  • The claimed subject-matter cannot be searched and thus compared with the state of the art.

More precisely, the INPI considered that the problem at stake in the application was to facilitate the reading and correlation of data relating to the steps of an aircraft mission, provided by different display windows. In the absence of any such facilitation, operators have to check themselves the consistency of the information provided by various windows. Thus, the INPI held, the problem at stake relates to the interpretation of the data by the operators, and not to a technology of data representation. In other terms, the problem at stake is intellectual and not technical.

Regarding the last feature of claim 1, per which “the length of the “timeline” is longer than the length of the first graphical window, and the graphical window therefore displays only a part of the “timeline”, this part being imposed by the user of the display device”, the INPI remarked that the description of the application does not specify by which technical means the user displays “a part of the timeline“. Therefore, this feature is not characterized on the technical standpoint and no technical effect deriving from human-machine interactions is disclosed in the application.

The Paris court of appeal set aside the refusal, on the following grounds.

First, the court referred to the INPI guidelines and also to the EPO guidelines, regarding the definition of a “presentation of information“. The court thus held that information that is presented is not patentable, but that the way information is presented may comprise patentable technical features if it is distinct from the information itself. In particular, a feature which credibly helps the user perform a technical task owing to a continuous or guided human-machine interaction process provides a technical effect.

Next, the court analyzed that the objective of the patent is to transmit information to a user, more specifically the pilot or copilot of an aircraft, so that he/she has a consistent and integrated representation of the mission, in order to make decisions based on a complete knowledge of the state of the aircraft and of its environment.

The court then turned to the first characterizing feature of the claim, and concluded that it is not a technical feature. Namely:

The first feature relates to a window comprising the “timeline”, which displays the different steps opposite the schedule corresponding to their accomplishment. […] Such a window, oriented with past at the bottom and future on top, vertically divided in its center by a timeline, comprises way times on its left and remarkable way points on its right, including mentions such as speed, altitude, beside the current position of the aircraft represented by a symbol “A”. It thus appears that this feature, although it is key to the patent applied for, only relates to the transmission of information to the pilot of the aircraft, both concerning the cognitive information content (way times and way points) and the manner it is presented (as a function of a timeline). There is no distinct technical feature and it is thus not patentable per se. 

However, the court’s take on the very last claimed feature was quite different:

On the other hand, the second feature recites that when the length of the timeline is longer than the length of the first graphical window, the user (pilot) may display only part of the timeline (imposed by him/her). This is a technical means distinct from the content of the information itself. It should be added that this means helps the pilot select the most relevant of said information and thus produces a technical effect […].

In order to conclude that this feature is nevertheless not patentable, the [INPI] asserts that it only mentions a result to be achieved, namely imposing the display of part of the timeline, without clearly setting out the technical means allowing such result to be achieved. However, during examination proceedings, the [INPI] does not have the power to rule on the insufficiency of disclosure of the patent, so that this reasoning is moot. [The INPI] also asserts that this insufficiency of disclosure does not allow a comparison with the state of the art and the preparation of a search report. However, nothing prevents a prior art search, for instance in the “WL” window displaying the list of way points as a table, [to check] if the user can, when the length of this list is greater than the length of the window, display only part of this list. 

Presentation of information can be technical after all.

In summary, the court held that the last feature of the claim is a technical feature, so that the claimed subject-matter is an invention (or rather, is not a non-invention, as patent law is somewhat Carrollian).

The absence of disclosure of precise technical means in the description of the application should not be taken into account, the court added, since insufficiency of disclosure is not a ground for refusal of a French patent application.

In fact, the current list of grounds of refusal of a French patent application is quite limited. For example, lack of inventive step is not one of these grounds, and this is why there is no discussion of inventive step whatsoever in the judgment. This is also why the decision will be outdated soon, as additional grounds of refusal (including lack of inventive step) will be taken into consideration in the near future – see my previous report here on the Pacte bill.

A case like this one is actually probably a good argument in favor of this bill. Indeed, it makes little sense for the court of appeal to set aside a refusal without having to discuss or consider inventive step at all – which of course should be an important point to look at, since lack of inventive step is a ground for nullity of a granted patent.

This case has also made me realize that insufficiency of disclosure has not been introduced as a new ground for refusal in the Pacte bill. Why that is is a conundrum. If the aim is to strengthen French national patents and beef up examination proceedings, why leave a ground for nullity out of the INPI’s purview?

As a final remark, I am, like the court of appeal, unconvinced by the alleged impossibility to perform a prior art search. This is a current and actual ground for refusal, but in my view it should be limited to extreme cases in which the claims are for instance so poorly drafted that they are not understandable. On the other hand, as a matter of policy I do not believe that this provision should apply to features which are alleged to be non-technical – which is always a debatable notion, as shown above.

Now, here is another interesting thing. There is no European patent application equivalent to the French application at stake. But the French application was sent out to the EPO for a prior art search, as is the case for all French applications which do not claim a foreign priority.

And the file wrapper shows that the EPO examiner refused to perform the search, and noted that the claims “relate to a an abstract and generic process of displaying data, independently from any technology. This subject-matter is excluded from patentability, like any abstract method of graphical representation as such, as it is equivalent to a mathematical method“.

Therefore, to some extent, the INPI’s refusal was really based on an EPO examiner’s position.

The feature found to be technical by the court was present in claim 2 of the original claim set. So perhaps the EPO examiner did not pay as much attention to it as he should have. Or perhaps the Paris court of appeal has a more generous view of technical features than the EPO, when it comes to graphical user interfaces. Or perhaps the court would have found the claims invalid based on another ground if all grounds were within its purview.

When the new examination proceedings come into force, it can be expected that the number of refusals will markedly increase, especially in the particular field of technology of graphical user interfaces. This could give the court of appeal the opportunity to further elaborate on its views on this topic.

And if it turns out in the end that its stance is less strict than the EPO’s, this could entail a dramatic shift in filing strategies.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, May 21, 2019, Thales v. Directeur Général de l’INPI, RG No. 18/19669.