Smells like revocation

Believe it or not, it is somewhat difficult for this blogger to know what his readers are most interested in. Do they yearn for complex legal discussions? Are they rather keen on getting their hands dirty with an insight into actual patents and prior art documents?

The good thing is that today’s post will contain a little bit of both – hoping that the answer to my question is not “none of the above“.

Reckitt-Benckiser owns European patent No. EP 1891197 which is entitled “Process for manufacturing improved dispensing devices“. This patent owner is no small fish, but rather a giant in the hygiene industry. Think of the brands Air Wick, Calgon, Clearasil, Cillit Bang, Durex. But today, Harpic is the type of products we are talking about.

In June 2013, two companies of the Bolton group, namely the Italian Bolton Manitoba and the French Bolton Solitaire, filed a nullity suit against the French part of the European patent.

On March 13, 2015, the Paris Tribunal de grande instance (TGI) dismissed the nullity claim. Bolton appealed, and the Paris Cour d’appel issued its judgment a couple of weeks ago.

The first interesting aspect in the appeal judgment is… the application of the statute of limitations to the nullity claim.

One would think that we have heard enough about this topic on this blog lately, and one would be wrong.

As is usual now in a patent nullity lawsuit, the admissibility of the request for revocation was challenged by the patent proprietor. The proprietor deemed that the limitation period for the nullity claim started running from the publication date of the application.

In the present case, the application had been published before the amended statute of limitations entered into force on June 19, 2008 (as discussed here, this amended statute brought the default limitation period from 30 years down to 5 years, which initially created the legal mess that we are now in). Therefore, the patentee said, the starting point was postponed to June 19, 2008, when the amended statute entered into force; and the limitation period expired on June 19, 2013, i.e. five days before the nullity complaint was served.

On the other hand, the nullity plaintiff argued that the five-year limitation period only started from the publication of the grant of the patent, namely August 27, 2008, so that the nullity action was timely filed and admissible.

The court ruled that

[…] the limitation period can only start running from the date on which the person against whom [the patent] is asserted can validly act; pursuant to article 64 EPC, a European patent confers rights as from the publication of the mention of grant, so that a nullity action against a European patent application does not exist. The limitation period for the action can thus only start running, in the present case, from the publication of the patent grant at the earliest

There is a lot to digest in this single sentence:

  • It is a good thing that the publication of the application was not upheld as a valid starting point – this is the last thing we need right now.
  • The choice of the patent grant as the starting point is consistent with the recent ruling by the same panel of the Cour d’appel in Halgand v. RP Nicoll, discussed here.
  • The court did not perform an in concreto assessment, which currently continues to be applied by the judges in the TGI (see the discussion here).
  • However, the wording used by the court, i.e. can thus only start running in the present case, from the publication of the patent grant at the earliest“, does not fully contradict the in concreto approach. Here, the nullity plaintiff seems to have taken the position that the starting point did not need to be accurately determined, as it could anyway not be before the publication of the patent grant, which thus ensured the admissibility of the action in any case. And the appeal judges fully followed this approach.

Therefore, all in all, this new ruling does not change much relative to the previous situation. Or, as they say in every good mystery novel, the plot thickens.

Having found the nullity action admissible, the court turned to the merits of the case, and more particularly to the contention that claim 1 of the patent did not involve an inventive step.

This is the second interesting aspect in the judgment, since the Cour d’appel reversed the decision under appeal in this respect, and declared claim 1 invalid although it had survived the first instance proceedings.

The patent in suit is directed to a manufacturing process for a sanitizing toilet block. Claim 1 reads as follows:

A process for the manufacture of a lavatory dispensing device useful for the delivery of at least one treatment composition, preferably a cleaning composition and/or a sanitizing composition to a sanitary appliance, preferably a toilet bowl which method comprises the steps of: 

– providing a composition to an extruder,
– forming an extrudate from said composition;
– inserting part of a hanger into said extrudate;
– compressing the extrudate to encase or enrobe said part of a hanger thereby forming said lavatory dispensing device.

The next generation sanitary appliance for your toilets.

I understand that the relevant prior art was the following:

  • Some prior art references taught the manufacturing of toilet blocks by placing a hanger in a composition comprising paradichlorobenzene, and compressing the composition onto the lower end of the hanger. These blocks are “cageless”, that is they are provided on their own and not in a plastic cage.
  • Other prior art references disclosed the manufacturing of toilet blocks by an extrusion process, and their inclusion into cages.

In the first instance judgment, claim 1 was found to be inventive. The TGI commented on the teaching of the prior art as follows:

– the process of fixing a hanger to a cageless device only concerns compositions containing paradichlorobenzene, known for its low solubility, which has now been prohibited since it is considered as a dangerous material; 

– the insertion of the hanger occurs when the block is molded; 

– none of the […] patents suggests a compression after an extrusion, to attach the hanger; 

– compositions containing at least one surfactant (which leads to the block breaking off) are in the prior art always placed in a support. 

Therefore, the skilled person was not naturally prompted by this prior art to contemplate a toilet block containing surfactants, to be used without a cage, by inserting a hanger into a block obtained by extrusion, and then compressing the extrudate to encase the hanger. 

The existing prejudice that cages were required to support and contain sanitary treatment blocks was overcome, since it is now possible to make cageless devices which comprise a suspending hanger and a composition as a compressed full block tied to the suspending hanger, said solid block compositions comprising one or more chemical compounds, preferably at least one surfactant composition. 

It is remarkable that the first instance court did not apply the problem and solution approach. Though this reasoning “made in EPO” is more and more often relied upon by litigants and judges in France, it is by no means mandatory.

It is also noteworthy that the TGI, when discussing why the skilled person would not have achieved the invention in an obvious manner, made reference to a number of features which are actually not present in claim 1.

For example, the court seemed to consider that the composition of the block comprises surfactants and does not comprise paradichlorobenzene. According to the court, this is very important, as only paradichlorobenzene-based blocks were disclosed as being compressively tied to a hanger – in view of the particularly low solubility of this chemical. But claim 1 does not explicitly exclude the presence of paradichlorobenzene, and does not specifically call for the presence of surfactants (which are recited in dependent claim 10). Claim 1 merely mentions a “treatment composition, preferably a cleaning and/or a sanitizing composition“.

Furthermore, the court considered that there was a prejudice against cageless devices comprising a sanitary composition (as opposed to a merely deodorizing, paradichlorobenzene-based composition). But claim 1 does not explicitly exclude the presence of a cage in addition to the hanger. This is in fact the subject-matter of dependent claim 8.

As for the appeal judges, they did not follow the problem and solution approach either. But they did reach a different conclusion: 

In the end, at the priority date of European patent No. 1891197, in view of the teaching of the above documents, the skilled person […] knew processes for making blocks for toilet bowls suspended by hangers; desirous of making a cageless suspended lavatory block, not based on molded paradichlorobenzene (deemed toxic) but on treatment compositions comprising surfactants, obtained by extrusion, he could use the same process starting from an extruded composition as taught in [a couple of patents]; he also knew from the teaching of [another patent] that it was possible to compress an extrudated block to give it a shape or to close the opening resulting from the insertion of the hanger.   

It is striking that the Cour d’appel shared the TGI’s appraisal of the crux of the invention, namely providing a cageless device for a block comprising surfactants.

The TGI was thus not blamed for its extremely extensive interpretation of claim 1 in view of the description of the patent. 

As far as I can tell, the different conclusion was in fact reached due to a new prior art citation, namely a reference disclosing the compression “of an extrudated block to give it a shape or to close the opening resulting from the insertion of the hanger” – whereas the first instance judges had noted that “none of the […] patents suggests a compression after an extrusion, to attach the hanger”. 

First instance judgments are very often confirmed on appeal in France. One exception to this general trend is when new facts arise, such as a new prior art document like in the present case.


CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 2, October 20, 2017, Bolton Manitoba & SASU Bolton Solitaire v. Reckitt Benckiser LLC, RG No. 15/09777.

One step forward, two steps back

The French statute of limitations for patent nullity actions. Yes: again. Seems like we can never get enough of this topic, can we?

Courtesy of Matthieu Dhenne (who, as regular readers of this blog may have noticed, is no fan of the time-bar on patent revocations), here is the latest installment of the saga.

In the previous episodes:

  • A trend slowly emerged at the Paris Tribunal de grande instance (TGI), per which actions for revocation are time-barred five years from the date at which the claimant became aware or should have become aware of the patent right at stake, as a potential impediment – said date being determined in concreto based on the specifics of the case.
  • Then, a ruling from the Paris Cour d’appel (Halgand v. RP Nicoll) issued on September 22, 2017 seemed to imply that the starting point is or should generally be the grant of the patent.

When I reported on this latest case, I wondered whether the TGI would apply the criterion set by the appeal judges. Well, we may have a beginning of an answer now – and it is a negative one.

Today’s decision was issued on October 5, 2017. The pleadings hearing took place on September 12, i.e. before Halgand v. RP Nicoll was issued. However, it is very likely that the court was aware of this appeal decision before drafting and issuing the judgment of October 5.

As this is not a common law country, there is no obligation for the TGI to defer to the legal analysis put forward by the Cour d’appel in another, unrelated case.

In summary: it seems that the TGI is sticking to its previous doctrine.

Going in circles around a tricky legal issue.

The case concerns French patent No. FR 2804186 (FR’186) owned by Valeo Embrayages (Valeo). The patent was filed on January 25, 2000 and granted on April 26, 2002.

On July 17, 2015, Valeo sent a warning letter to German company LuK GmbH & Co. Kg (LuK). Valeo claimed that several of its patents, including FR’186, were infringed by LuK, and requested that LuK should take a license.

On January 23, 2017, LuK filed an action for nullity of the FR’186 patent in front of the Paris TGI. Valeo raised the defense that the action was time-barred. The judge in charge of case management decided to hold a hearing in front of the whole court on this issue, in parallel to the exchange of submissions of the parties on the merits. Today’s decision thus solely relates to this legal issue.

First, LuK made the point that the defense based on the statute of limitations should not be examined separately from the merits of the case. Indeed, the determination of the starting point for the limitation period is related to the existence of an impediment to their business due to the patent, and therefore to the merits of the case.

The court rejected the argument as follows:

The fact that it is necessary to examine the scope of the patent and its potential points of contact with the technology of the nullity claimant to determine the starting point of the limitation period does not imply any analysis of the validity of the right subjected to the court. Even without the separation ordered by the judge in charge of case management to streamline the proceedings and reduce their cost in case of a success and otherwise remove a complex question, the court would anyway have decided on the issue of the statute of limitations first, and without considering the issue of validity of the patent or its infringement (if it were raised).

It is quite clear that the court has a discretionary power to deal with some issues first, especially a legal defense such as this one.

But LuK’s arguments do reveal one the drawbacks of the statute of limitations being applied to patent nullity suits, and of the in concreto appraisal of the starting point for the limitation period.

Even if determining when a party felt (or should have felt) impeded in its business by a patent is not synonymous with deciding whether there is or has been any patent infringement, it is still dangerously close. 

The court uses the enjoyable expression of “potential points of contact with the technology of the nullity claimant“. However, if would-be nullity claimants feel cornered into admitting or half-admitting infringement in order to be able to sue (and this is even more true if you take into account the issue of standing, which was not at stake here), this will act as a powerful deterrent.

The next point addressed by the judgment is the impact of a cross-license / settlement agreement dated 2014 between the parties.

LuK argued that Valeo was barred from invoking the statute of limitations due to the 2014 agreement. Indeed, one provision of the agreement recited that each party could challenge the validity of licensed patents within 12 months from a license request.

The court determined that the FR’186 patent did not belong to the technical field concerned by the 2014 agreement. Therefore, the agreement had no impact whatsoever on the present case. At any rate the above provision did not prevent the regular application of the statute of limitations as there was no clear intent to discard said statute; and as no license had been granted on this patent anyway.

And finally, the real meat of the judgment, that is the computation of the limitation period. As mentioned above, the TGI maintained its traditional approach: 

The starting point for the limitation period must be set to the date, determined in concreto, on which [LuK] knew or should have known, due to the progress in the development and industrial implementation of its TAC technology (which is the only one targeted by [Valeo]) that the FR’186 patent could impede it.  

Thus, the publication of grant of the patent is not a suitable starting point, as it would in fact demand an unrealistic watch from stakeholders and is unrelated to the performance of the project which gives standing to sue. Neither is the knowledge of the grounds of nullity of the patent, which may arise well before the knowledge of facts and economic considerations giving rise to standing to sue and actually is equivalent to the publication of grant. 

I discussed this point with Matthieu Dhenne, who agrees that this is an instance of what we call in this country “resistance of the lower courts“. Or rather, “coming to one’s senses” is I think the expression he used.

After this important point, the court reviewed the scope of the patent as well as LuK’s “TAC” technology in great detail. Valeo argued that the technology was developed from October 2007 at the latest and was disclosed in April 2010. As a result, the nullity action became time-barred in June 2013, they stated.

The judges disagreed and held that the technical features disclosed in the various LuK patents and publications relied on by Valeo were not sufficiently close to the subject-matter of the FR’186 patent to constitute the starting point for the limitation period:

Moreover, the article of April 14, 2010 and the patent applications filed do not reveal any relevant points of contact between the TAC technology and the FR’186 patent which could prompt [LuK] to worry about the patents of its competitor. 

Hum, those points of contact again!

[The fact that the FR’186 patent] was cited as prior art under category “A” in the search report of an international application of July 4, 2011 […] [is] irrelevant. Therefore, nothing shows that LuK intended, in the course of the development of its TAC technology, to define the nominal position of the gearing means owing to dedicated setting means as an element of its wear correction device. Consequently, the FR’186 patent represented a potential impediment only on the day it was expressly cited against them, i.e. on July 17, 2015. 

As a result, the case will now proceed to the discussion on the merits.

Readers will surely have noted that, since FR’186 was granted in 2002, LuK’s action would be time-barred if the Cour d’appel’s approach were applied instead of the TGI’s. 

This leads Matthieu to make the following remark:

The plaintiff did not submit that the statute of limitations is inapplicable. If there is an appeal, they should. This will provide them with an additional ground of cassation if the Cour d’appel confirms its case law of September 22, 2017 (as the action would be time-barred if the standard set in this case law stands). 

Well, I am sure it is only a matter of time before our supreme court gets to decide on this legal point. Whether people will like what they say is another kettle of fish.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, October 5, 2017, LuK GmbH & Co KG v. SAS Valeo Embrayages, RG No. 17/01156.

Will time tell?

Hot from the press comes a brand new decision of the Paris Cour d’appel which may leave many practitioners skeptical – if not utterly unhappy.

Many thanks to Grégoire Desrousseaux for forwarding this important judgment!

The statute of limitations in connection with patent nullity actions is a recurring topic.

A few weeks ago on this blog, Matthieu Dhenne criticized the very notion of a limitation period for nullity claims.

Am I just in time for a nullity suit?

Not only does today’s ruling confirm once again that the general statute of limitations, as amended in 2008, does indeed apply to patent nullity claims. But it also contains a surprising finding concerning the starting point of the limitation period.

The context is the following.

Two individuals, Mr. and Mrs. Halgand, filed a French patent No. FR 2840634 in April 2003. The patent was granted in February 2005 and then assigned to a company called Matériaux Equipements Plastiques (MEP) in 2006. The technical field is the protection of purlins or rafters.

Starting from February 2013, there were a number of exchanges between MEP and another company, Raccords et Plastiques Nicoll (Nicoll). According to MEP, Nicoll was exploiting a purlin protection system falling within the scope of their patent, without any authorization. Nicoll did not agree with these allegations.

This finally led Nicoll to launch the first strike and file an action for declaratory judgment of non-infringement in front of the Paris Tribunal de grande instance (TGI). At the same time, Nicoll also claimed that the patent was invalid and requested its revocation. The original applicants of the patent were forced to intervene in the lawsuit as a result of the assignment’s guarantee. MEP counterclaimed for (inter alia) patent, copyright and trademark infringement.

In November 2014, the TGI revoked claims 1 to 10 of the French patent and rejected MEP’s counterclaims. MEP and Mr. and Mrs. Halgand appealed, which leads us to the ruling issued by the Cour d’appel last Friday.

Unlike the TGI, the Cour d’appel held that Nicoll’s nullity claim was time-barred and thus inadmissible.

The argument had already been discussed in first instance, but the TGI had rejected it, holding that:

[…] Only an in concreto appraisal of the point in time at which the nullity claimant effectively became aware of the right which is asserted against them can be made in order to determine the starting point of the limitation period. 

In this case, the starting point of the limitation period is the formal notice sent by [MEP]’s patent attorney […] on February 25, 2013. Therefore, the nullity action against the FR’634 patent contained in the complaint filed on October 4, 2013 is not time-barred. 

This first instance ruling was in keeping with a number of other recent decisions by the TGI, which all emphasized the necessity to assess the starting point of the limitation period on a case by case basis. The relevant date was consistently said to be that on which the claimant knew or should have known of the patent, in view of the specific facts of the case. See for instance B/E Aerospace Inc. & B/E Aerospace Systems GmbH v. Zodiac Aerotechnics, reported here as well as Actelion v. Icos Corporation, reported there.

The appeal judges seem to have gone in a different direction. Here is a translation of the relevant passage in the judgment:

Article 2224 of the Code civil provides for an in concreto appraisal for the limitation period, by setting the starting point of the limitation period to the day on which the owner of a right knew or should have known the facts making it possible for them to assert this right.

Even though the publication of a patent application does not create rights for the proprietor, the publication of the patent is an acknowledgment of its rights. 

It cannot be denied that the publication of a patent is a way for third parties to know their rights, and that a professional who works in the same area as the patent proprietor and who puts on the market a new product must comply with rights which have been made public, without possibly relying on unawareness. 

Moreover, Nicoll, like MEP, works in a very specialized area and has business relationships with Mr. Halgand, who presented a PVC dressing product for purlins and rafters. On that date, the patent application […] had not yet been filed and Nicoll refused to cooperate on the development of a common project in October 2002, letting Mr. Halgand know that they would get in touch with him if they changed their minds. But [Nicoll] does not deny that [Mr. Halgand] then provided prototypes, so that [Nicoll] was perfectly aware of Mr. Halgand’s work and of his plan to file a patent, although Mr. and Mrs. Halgand only filed the patent in suit in 2003, which was granted in 2005. 

Even if MEP sent a formal notice of cease and desist, they did not start infringement proceedings. It is Nicoll which, denying any act of infringement, initiated proceedings for a declaratory judgment of non-infringement and for nullity of the Halgand patent.

Since [Nicoll] was disturbed in the manufacture and marketing of its products due to this formal notice which they believed was ill-founded, it was their right to make the disturbance stop and they had standing to request a declaratory judgment. On the other hand, they could not extend this right by starting a nullity action in relation with a patent which was duly published, past the limitation deadline which must be computed from the publication. But they may rely on this ground as an exception defense within the infringement action against them. 

Now, MEP filed a claim for damages in court due to infringement and requested that the court should state that its patent FR 2840634 is valid, and that there are [acts of] copyright infringement, trademark infringement and disparagement, free-riding and misleading advertising. 

As a consequence, the rights of MEP should be examined first, and Nicoll is admissible to rely on a nullity exception. 

In summary, according to the court, the starting point for the limitation period is the patent grant in 2005, and not the cease and desist letter of 2013.

Let’s look at the silver lining first: if it is indeed a general rule that all nullity suits have to be filed within 5 years from the date of grant, then at least this rule is easier to apply than the one created by the TGI.

This is because the latter requires to have a detailed look at all relevant facts. In Actelion for instance, the court conducted a very complex assessment of scientific articles, annual reports of the company, patent applications and marketing authorizations.

In this respect, the approach adopted in today’s ruling increases legal certainty and predictability.

Now, the big grey cloud: it just does not make sense that a party should automatically be time-barred from filing a nullity suit possibly months or years before actually contemplating a commercial exploitation to which the patent at stake could be a possible obstacle.

The consequences could be potentially disastrous for generic drug companies willing to clear the way prior to launching a new product.

The Cour d’appel clearly stated that patent nullity can always be argued as a defense to an infringement claim, without any time-bar (except that the court in such a case will not officially revoke the patent). By the way, in the rest of today’s judgment, the court did examine the validity of the patent and actually came to a different conclusion from the TGI, holding that the claims are valid.

But the availability of a nullity defense is not going to help generic companies (and others) willing to preemptively knock down a patent before launching a product, precisely in order to avoid launching at risk. Indeed, in such a scenario, it is my understanding that the action would be fully inadmissible if time-barred.

There is still room for some doubt as to whether the Cour d’appel has just set a general rule here, the starting point always being the date of the patent grant, at least for professionals working in a specialized area; or whether the court’s finding should be viewed as limited to the specific facts of the case.

We should bear in mind in this connection that the nullity plaintiff had already been in contact with the patent applicants even before the grant of the patent – and this may have been a critical point for the court.

If the latter view were correct, then this decision would certainly be less at odds with the TGI’s usual approach. It would simply mean that the Cour d’appel had a different appraisal of the facts from the TGI but not that the very principles applied by the first instance judges are wrong.

What else? Well, Nicoll was held not to have infringed the patent, nor to have committed acts of copyright infringement, trademark infringement, free-riding, and the like, and MEP was found liable for disparagement, like in first instance.

What next? Well, time will tell – or not.

Will the TGI now implement this ruling and adopt a new approach for computing the limitation period or keep the current one? Will some desperately needed clarification come from the Cour de cassation? Will the lawmaker correct the unfortunate consequences of the 2008 amendment of the general statute of limitations in patent law?

I would at least not bet on the latter option anytime soon.


CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, September 22, 2017, Mr. and Mrs. Halgand & SAS Matériaux Equipements Plastiques v. SAS Raccords et Plastiques Nicoll, RG No. 14/25130.

Summertime

It is this time of year when some readers of this blog may still be enjoying what is left of the summer, albeit the back-to-work frenzy is looming – and is in fact already upon a number of us.

What we need in such a moment of transition is probably a gentle reintroduction to the delights and torment of patent law.

Matthieu Dhenne, attorney at law at Cabinet Schertenleib offers us just that, as he kindly accepted to share some comments with us regarding two decisions recently discussed on the blog.

The typical year of a patent attorney.

The first decision is B/E Aerospace Inc. & B/E Aerospace Systems GmbH v. Zodiac Aerotechnics, reported here. At stake is the hotly debated question of the limitation period for patent nullity actions in France. I may have already mentioned that the recent case law on this issue has drawn a lot of criticisms. It turns out that Matthieu is one of the vocal critics of the new trend.

Having looked in detail at what the essence of a limitation period is, Matthieu writes:

The Paris Tribunal de grande instance states (once again) that the limitation period under ordinary law (i.e. 5 years) applies to an action for patent revocation.

It is an error of law. Two brief explanations hereafter.

First, it does not comply with article 2224 of the Code civil. Article 2224 provides a limitation period for both actions in personam and actions in rem. Yet the action for patent revocation is neither one nor the other. It is not based on a debt obligation (action in personam), nor on a thing (action in rem). It is based on the defense of free competition. In this regard, we should remind that a patent right, as an exclusivity to operate an invention during a certain period of time, constitutes an exception to free competition. Therefore, as an exception, this right is only justified for patentable inventions. Rather, it is not justified for non-patentable inventions. In other words: the purpose of an action for revocation is mainly to avoid unjustified patents that will negatively affect competition.

Then, the purpose of a limitation period does not apply to it. Such a deadline aims at strengthening legal certainty. Thus, a right holder must act within a strict deadline when his right is infringed. Similarly, a right may be created over time, when a defect originally affecting it disappears. For instance, a trademark can acquire distinctiveness through use. However, on the contrary, in patent law, time may only be harmful. An invention which is not novel or inventive at the date of filing will not become novel or inventive afterwards. Rather, one could discover prior art that was not discussed during the examination phase.

Eventually, a limitation period in patent nullity suits will only introduce uncertainty. On the one hand, there are still doubts concerning the starting point of the deadline. According to the case law: date of filing, date of grant or date of formal notice. There is no strict trend concerning this question. Besides, in any event, the plaintiff must prove he was unaware of the existence of the patent: the burden of proof is upon the plaintiff. On the other hand, the defect that originally affects the patent right will not disappear over time. To the contrary, one could discover after grant that a patent is void due to prior art which was not discussed during the examination phase. Therefore, legal protection is not needed and thus not justified because it strengthens situations of facts that will never comply with the legal system. Worse: potentially, a patentee will still be able to use a patent against someone else even after it is found to be invalid.

The above case law obviously deserves much more comments. But, for now, I think there is an urgent need to stress out the fundamental legal issues at stake, hoping that the Courts will quickly remedy them.

Another important decision previously discussed by my partner Aujain Eghbali on this blog is Xaga Network v. Ewalia, in which a patent was revoked because the main claim at stake was held to relate to software as such (the programming activity field not constituting a patentable technical activity), and to actually describe “an abstract scheme which does not offer any technical solution to the application management facilitation problem it pretends to solve since it is not made explicit how the proposed management system effectively helps the user”.

Aujain said he was rather impressed by how French judges seem to have taken over the typical EPO reasoning in connection with computer-implemented inventions – even if the legal basis is not the same – as he explained in his post.

Matthieu, as far as he is concerned, has three remarks:

The Court refers to the “activity of programming” to assess technicity under article 52 EPC. However, only the invention should be technical. The question whether an activity is able (or not) to give birth to an invention exclusively falls under the inventive step assessment under article 56 EPC.

The Court states that claim 1 aims at an abstract scheme which is not explained. I think it is interesting to point out that abstraction is opposed to explanation. Two lessons. On the one hand, technicity does not require a transformation of nature (i.e. material production). On the other hand, further explanations in the description could, in fine, justify technicity. In other words: French judges are bringing the requirements of technicity and sufficiency closer together.

Eventually, the Court evokes the technical effect requirement. Nonetheless, in doing so, the Court unavoidably evokes a further technical effect, to the extent that any software already produces a first technical effect in the machine (i.e. electric current).

Speaking of computer-implemented inventions, those interested in this topic may want to mark their calendars. Indeed, Matthieu is happy to announce that an exciting full-day seminar dedicated to this very topic and put together by the AACEIPI (Association des Anciens du Centre d’Etudes Internationales de la Propriété Intellectuelle) will take place on November 24, 2017, in the prestigious premises of the Cour de cassation.

You can inquire about the seminar and register (by November 10) with Aristide Tenan, at at@schertenleib-avocats.com. Several top speakers are announced, including professors, IP judges and last but not least my partner Patrick Trabé.

Summertime, and the livin’ is easy” – this will just be a memory by the time the seminar kicks off. A belated happy August to all readers!

Patent on respiratory support

Many patents discussed on this blog die one way or another. Who by fire, who by water, who in the sunshine, who in the nighttime…

One reason for this is that revocation verdicts often tend to be quite interesting to comment upon. For a change, the patent at stake today did not fully die. But you could say that it is on respiratory support. And how appropriate, given that the title of the patent is “a respiratory gas supply circuit for an aircraft carrying passengers“.

This patent (EP 2004294) was filed by Intertechnique in 2006 and granted in 2010. This French company has been part of the Zodiac group since 1999.

In 2011, Intertechnique sent a warning letter to B/E Aerospace Systems GmbH in which they enquired about the possible development of products by the B/E Aerospace group similar to those claimed in the patent. The official answer was that no current product infringed the patent, and that all rights were reserved regarding the development of new products as well as a possible challenge of the validity of the patent.

In October 2012, B/E Aerospace Systems GmbH filed a nullity suit against the German part of the EP’294 patent in front of the Bundespatentgericht. The German court held that the patent as granted was invalid, but that it could be maintained in amended form according to an auxiliary request. This ruling became final in March 2015.

Immediately thereafter, B/E Aerospace threatened Zodiac Aerotechnics (the new name of the patent proprietor Intertechnique) with a similar nullity suit in France, and asked them to either withdraw the French part of the European patent or to grant them a free license. Zodiac Aerotechnics refused, so that B/E Aerospace filed the French nullity suit in June 2015.

Two classical legal defenses were raised by the patent proprietor, both recently addressed on this blog: first, the nullity claim was inadmissible as the claimant did not have standing to sue, and second the nullity claim was time-barred.

Both defenses failed.

Regarding standing, the current state French case law was already summarized a few weeks ago and then again just last week. Today’s ruling is on the same page:

[…] The nullity claimant must justify that, at the time the complaint is filed, there is a sufficient interest to free an upcoming exploitation of the patented technology or a similar one, and establish that the patent at stake seriously threatens to impediment its economic activity. 

The court noted that the respective parties were competitors as they were both active in the field of in-flight oxygen supply. Most importantly, B/E Aerospace received a warning letter in connection with the EP’294 patent and did not exclude in its response that products under development may ultimately fall within the scope of the patent. B/E Aerospace also asked Zodiac Aerotechnics to forsake the French part of the patent or to grant a royalty-free license.

The court further noted that B/E Aerospace filed two French patent applications claiming a Germany priority of 2014, relating to a similar subject-matter, and in which the EP’294 was mentioned in the background section.

Said the court:

Under these circumstances, […] B/E Aerospace Inc. as well as its subsidiary B/E Aerospace GmbH not only demonstrate the existence of a competition context, but also of an objective link between the products that they develop and the EP’294 patent. 

Finally, they demonstrate that they have exploitation plans regarding devices which, although they are not necessarily already on the market nor analyzed as being within the scope of the patent, may possibly be threatened by the rights that it confers. 

Therefore, standing was acknowledged.

This makes sense, and it would actually be quite surprising if the recipient of a warning letter mentioning a certain patent, even in a different European country, had no standing to request the cancellation of that very patent.

In the unlikely event of a loss of cabin pressure, oxygen masks will automatically drop in front of you, and the front part of the aircraft will be shot forward like a bullet.Second legal defense raised by Zodiac Aerotechnics: that the action was time-barred. 

Here, again, the court’s position seems consistent with what was reported in other recent decisions, such as the Actelion case, although the outcome was different this time:

The starting point of the limitation period is appraised in concreto. Therefore, beyond any reference to publication dates which would require constant monitoring by stakeholders and which, even in a small market, seems to be hardly feasible, it should be determined at which date B/E Aerospace knew or should have known that the EP’294 patent was a threat for their economic activity, in view of their development plans and in view of their products under development. 

As a reminder, the limitation period is 5 years. Zodiac Aerotechnics argued that the starting point for this limitation period was either the publication of the PCT application on which the patent was based (namely October 25, 2007) or the formal publication date of the application at the EPO (namely December 24, 2008). In both cases of course, the action filed in June 2015 would be time-barred.

However, in accordance with the principles recalled above, the court refused to take either of these publication dates as an automatic starting point for the limitation period. The court noted that B/E Aerospace may have been unaware of the application at these publication dates. Also, there was no evidence that there was any product related to this patent under development at that time.

The court rather decided that the starting point was September 2, 2011, i.e. the day on which B/E Aerospace received the warning letter: 

This letter must be analyzed as the cause for B/E Aerospace’s standing to file an action for nullity of the patent at stake, since it is at this stage that they became aware on the one hand of the existence of the patent and on the other hand of the fact that it could lead Zodiac Aerotechnics to possibly assert the EP’294 patent against them, based on the information that they had. 

In summary, the court thus considered both issues of standing and limitation period in combination.

The day on which a party acquires standing is also the starting point for the limitation period. 

Another possible take-away message is that the sending of a warning letter is likely to grant standing to sue to the recipient and to start the time-bar clock.

Of course, the circumstances of each case are unique, and this may not always be true, but at least this can be a reasonable prima facie assumption.

As a result of both legal defenses being discarded, the court reviewed all claims and came to the conclusion that claims 1 to 6 lacked inventive step. However, dependent claims 7 to 9 were found to be valid. It is not apparent from the decision whether the auxiliary request based on which the patent was maintained in amended form in Germany corresponds to the subject-matter of one of these claims 7 to 9 or not.

Anyway, a few years ago, it was commonly thought that only the main claim mattered in nullity proceedings, and that if this main claim fell, then all dependent claims would be only superficially examined and would be very likely to get stroke out as well.

I don’t know if this thought used to be correct, but at least it is probably not correct anymore, as today’s ruling, just like the decision discussed last week, illustrate that French courts now provide detailed reasons as to why each and every claim is or is not valid.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, April 28, 2017, B/E Aerospace Inc. & B/E Aerospace Systems GmbH v. Zodiac Aerotechnics, RG No. 15/09770.