A technical silver lining

They say that every cloud has a silver lining.

Thinking about a recent Philips case in which not one, not two, but three patents were revoked by the Paris Tribunal de grande instance (TGI), this saying seems quite fitting.

From the perspective of IP right holders, the dark cloud is of course that we have just been presented with yet another confirmation that patent validity is severely appraised in France. But the silver lining is that, although software patents were at stake, the court did not strike them down for just being that, but on the contrary fully acknowledged the technical nature of the inventions.

The case at hand was certainly a big one for Philips.

Not only were three patents involved, but there were also parallel proceedings against several unrelated defendants.

So much so that there were in fact four judgments issued on the same day: one pitching Philips against HTC, another against Asus, another against Archos and the last one against Wiko.

Philips reproached all defendants for not joining their “Touch enabled device” license program, and retaliated by filing an infringement action based on European patents No. EP 1384134, EP 0888687 and EP 1571988.

The four judgments look substantially identical, so it should be sufficient to look at only one of them.

Claim 1 of EP’134 reads as follows:

A data processing apparatus having a user interface assisting in searching for information from an ordered list a data array, the apparatus comprising:
an array scroller responsive to user actuation; and
a helper character-generator, actuated by continued user actuation of the array, the helper character generator being operative to display a helper character representative of a portion in the list being scrolled.

In brief, this is a user interface invention. The context is that of a long list of elements. In order to facilitate the retrieval of one element in the list by the user, a so-called “helper character” appears. This helper character may represent e.g. a first letter of a name or a first digit of a telephone number. It is thus representative of a cluster of entries in the list. By scrolling from helper character to helper character, the user may select a desired cluster, and then browse within this cluster instead of browsing through the entire list.

Choosing the right song in a menu, a critical decision to make.

The defendants argued that this was a mere presentation of information, and thus not an invention under art. 52 EPC.

Here is the court’s position on this objection:

Displaying the helper character involves continuous actuation by the user in a scrolling array. 

The patent thus relies on the user taking an active part, via an improved interface interacting with him, thus creating a particular technical effect due to the actuation by the user, allowing a faster choice in an array of elements. 

By combining several modes of scrolling down a list of elements, the patent teaches an adaptive user interface for searching and displaying, and thus does not just present information “as such”. It should also be emphasized that the purpose of the invention is to facilitate the selection of an element in a large set of data, on small size devices, taking into account their specific ergonomic design. 

Therefore, the EP’134 patent undeniably implements technical means to obtain a technical solution to a technical problem. Its subject-matter is thus patentable. 

I asked my partner Aujain Eghbali, who is an ace at computer-implemented inventions, what we can make of this.

His main comment was that this is the same type of reasoning that the EPO could have made. He added that the court’s reasoning is in fact quite patent-friendly even by EPO standards.

In particular, the court relied on the ergonomic character of the human/machine interface when assessing the technical nature of the invention. The Boards of appeal of the EPO have sometimes adopted a similar approach (see T 1779/14) but the Guidelines for examination do not take any clear position on the technical nature of such innovations. Section G-II, 3.7.1 suggests that a “physical ergonomic advantage” could be considered as a technical contribution, but specifically in relation with user input.

The court also took note of a statement in the description of the patent, per which human-machine interaction is particularly challenging when the device is small, due to the physiology of the user. Although effects relying on human physiology are acknowledged in the EPO Guidelines (section G-II, 3.7), they are not commonly accepted by examiners as having a technical character, Aujain said.

Going back to the judgment, the EP’134 patent was thus found to meet the requirements of article 52 EPC.

Further objections of insufficiency of disclosure and lack of novelty were also rejected. But the patent finally died of lack of inventive step.

However, it is important to note that all features of claim 1 were fully taken into account in the inventive step reasoning, in keeping with the court’s finding that the claim related to a technical solution to a technical problem.

The court’s negative opinion on the patent was thus fully based on relevant disclosures identified in the prior art. So, this is your good old, traditional, prior art-based lack of inventive step, if you will; not a this-is-not-technical-enough lack of inventive step.

In more detail:

The EP’036 document teaches that, upon continuous actuation of the scrolling key, the first names are sequentially displayed, in the alphabetic order, for each letter, thus providing a search tool. 

Starting from this search tool disclosed in EP’036, the skilled person, namely an electrical engineer experienced in designing user interfaces for portable electronic devices, confronted with the problem of selecting an element in a scrolling list on a small size screen, would achieve claim 1 of the EP’134 patent, since the search tool of the EP’036 prior art (underlining the first letter of a name) is only a visual alternative to the generation of a help character, which is anyway taught by the US’949 document. 

The EP’036 document also taught scrolling cluster by cluster, allowing the user, by maintaining the scrolling key pressed, to go from letter to letter in the directory, without having to go through all names starting with the same letter. 

Therefore, the features of claim 1 of the EP’134 patent derive from the state of the art. 

Next up was EP’687, another user-interface patent.

See in particular claim 1:

An electronic device comprising:
– at least one display;
– a controller arranged to cause the display to show a rotating menu comprising a plurality of menu options,
which menu is disposed off centre in the display so that at least one option is rotatable off the display at any one time, whereby an arbitrary number of options may be added to the menu without changing its format.

Again, the court fully acknowledged the technical character of the invention:

[…] The EP’687 patent aims at improving a user interface for a screen. To this end, it allows displaying a menu comprising a plurality of options as well as adding an arbitrary number of options to the menu without changing its format. It thus provides a better identification of options. 

The objective of the EP’687 patent is to facilitate adding more articles to the menu without making the display more complex, as long as at least one option in the menu is out of the screen due to the rotating menu being off-centered. 

Therefore, the patent makes it possible for the user to interact with the device, while adding any number of options to the menu, without modifying the format and while keeping their own character making their identification easier.

Consequently, the EP’687 patent, which ensures a better identification of menu options for the user, by means of a controller which combines a particular option display format and a double function of rotation and addition of options, obviously implements technical means to provide a technical solution to a technical problem. Its subject-matter is thus patentable. 

Like for the previous patent, Philips was also able to fend off insufficiency and lack of novelty challenges, but then stumbled on inventive step, as the prior art was deemed to be very similar to the invention.

The third patent was directed to an activity monitor. Its technical character was not challenged. It was revoked for lack of inventive step all the same.

In summary, the present case seems to confirm a trend recently seen in a Thales decision and on the contrary to drift further away from past case law in which the stance on patent eligibility was considerably stricter.

How apropos then that the INPI (French patent office) has just published an updated version of its examination guidelines containing two new sections C.VII.1.3.1 and C.VII.1.3.2 on computer-implemented inventions.

One section is dedicated to CAD and computer simulations. The other one relates to AI. Both provide additional guidance as to what should be considered technical or non-technical, again quite in line with the EPO approach. Maybe the next revision will contain some additional thoughts on graphical user interfaces?


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, July 11, 2019, Koninklijke Philips NV v. SAS HTC France Corporation & HTC Corporation, RG No. 16/02073.

Would a “could” suffice?

Comparing EPO and French case law on validity is one of this blog’s favorite topics.

Today’s post will be dedicated to a cornerstone of the EPO doctrine: the could/would approach in the inventive step reasoning.

The could/would approach was actually nicely summarized by the Paris Cour d’appel in a Sandoz v. Eli Lilly decision (January 13, 2012), making explicit reference to the European case law book that all European patent attorneys have on one of their shelves:

As can be derived from established case law of the Boards of appeal of the EPO, the question is not whether the skilled person could have made the invention by modifying the state of the art, but whether he would have done so in the hope of achieving the advantages that were really obtained in the light of the technical problem at stake, because the state of the art contained suggestions in this respect. 

So far so good, and all supporters of pan-European harmonization must be satisfied.

Not so fast, though, as some recent decisions seem to show that the could/would approach is not as inscribed in the DNA of French IP courts as it is in the EPO’s DNA. Here is an example. 

Modelabs Mobiles is a French company which distributes mobile phones and other IT devices. Modelabs Mobiles filed a French patent application No. FR 3063299 on February 24, 2017, directed to a casing for locking and immobilizing a phone.

Just after the publication of the application, Modelabs Mobiles proceeded with an infringement seizure against its competitor Wiko, on October 23, 2018, and soon thereafter filed an infringement suit, based on the FR’299 application (yes, this is possible before the grant of the patent under French law).

The patent was granted on April 12, 2019. On June 7, 2019, Modelabs filed a claim for preliminary injunction with the judge in charge of case management, and further requested a provisional damages award of more than 2 million euros. Modelabs argued that the existence of infringement acts was likely, and that since the defendant was in a restructuring process, there was a risk that damages could not be recovered.

The judge in charge of case management ruled on September 13, looking first at whether the patent was apparently valid.

Here is claim 1 of the patent:

Casing, in particular intended to contain a telephone, comprising:

– a first shell and a second shell that close onto one another so as to close the casing by rendering its contents inaccessible,

– a slide that is movable in translation on the first shell, comprising at least one coupling member, and which can be actuated from outside the closed casing so as to be positioned by translation in a first, a second or a third positions, wherein the first shell, the second shell and the coupling member(s) are arranged so that, when the casing is closed:

– at least one coupling member is coupled to the second shell when the slide is in the first position, thus opposing the opening of the casing,

– at least one coupling member is coupled to the second shell when the slide is in the second position, thus opposing the opening of the casing,

– the coupling member(s) is/are free when the slide is in the third position, thus allowing the opening of the casing, the casing further comprising:

– a device for locking the slide on one of the shells in the first position, actuable only by means of a dedicated tool from the outside of the casing when this casing is closed,

– first means for reversible immobilization of the slider in the second position,

– second means for reversible immobilization of the slider in the third position.

In summary, this casing can be used for protecting a phone in a store. The casing has three configurations: one which is fully locked, and which requires a tool (e.g. a magnetic one) to be unlocked; one which is unlocked and closed; and one which is unlocked and open. The transitioning between the unlocked / closed and unlocked / open positions can be performed without using an external tool.

Locked – unlocked

Wiko relied on three prior art documents against the novelty and inventive step of the main claim. The judge found that the claim was novel.

Regarding in particular the so-called EP’090 prior art reference, the judge held:

[…] The “movable member” which can correspond to the “slide” of the invention of the patent can be positioned in two different positions, and not three. In order to ensure an anti-theft function, a safety device must be added, comprising an “inserted” external element whereas, in the casing claimed by Modelabs, the safety device is fully part of said casing even if it requires the use of an external tool to be deactivated. 

A similar conclusion was reached regarding the two other prior art references.

However, regarding inventive step, the judge made the following comments:

In view of the state of the art […], the skilled person already knew casings for products on sale, having an integrated locking system, which can be actuated by a dedicated external tool such as a magnetic tool, preventing access to the content of the casing in the absence of said tool without breaking the packaging itself. 

Admittedly, the casing at stake, relative to [this prior art], provides an intermediate position in addition to the mere locked/unlocked alternative. but this mode of using the casing (simply closed in a reversible manner) does not address the technical problem that the invention purported to solve, which was to make the content of the casing safer. 

Besides, it can be legitimately questioned whether the skilled person requires a particular inventive step in adding an intermediate position between the locked/unlocked positions for the coupling member supported by the slide […], in order to keep the casing closed in a reversible manner (thus that can be manually actuated, without a dedicated tool), in view of the state of the art. Indeed, the addition of such an intermediate position prima facie seems to rather logically derive from [the prior art]. 

Therefore, the prior art submitted as a defense provides a serious possible ground for nullity [of the patent]. 

As you can see, the judge does not seem to reason in terms of what the skilled person would have done, but rather in terms of what he or she could have done.

Indeed, although there does not seem to be any suggestion or motivation in the prior art to have this intermediate closed/unlocked position for the slide, as far as I can tell from the judgment, the judge nevertheless concluded that it would have been “logical” for the skilled person to include such an additional position.

By way of comparison, here is the position taken by the EPO examiner in charge of the search report for the French application (based on different, but presumably similar prior art):

Such a casing with three positions for the slide and “reversible immobilization means” […] is completely unknown in the state of the art. Hints pointing to this direction are also absent. 

So, what can we make of this? One interpretation of course is that the inventive step threshold is higher in France than at the EPO. This is of course very possible. Another interpretation is that the judge had questions or doubts and simply did not want to grant a preliminary injunction and preferred to let the case continue on the merits.

That said, my attention was also drawn by the following statement:

Modelabs did not provide any argumentation regarding the inventive step of its patent which differs from the novelty argumentation. 

As always, we should keep in mind that, in view of our rules of civil procedure, and based on a longstanding tradition, French judges limit the scope of their decisions to the arguments put forward by the parties. Therefore, in the absence of any reference in the patentee’s submissions to the could/would approach, it is unsurprising that the judge did not use this reasoning.

Thus, I could say (or make that rather: I would say), that argumentation in French patent litigation has to be complete, including explanations on the legal standards to be applied – or else… 

As a next step, if the case continues on the merits, we will see whether the three-judge panel of the court uses the same or a different approach.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, ordonnance du juge de la mise en état, September 13, 2019, SAS Modelabs Mobiles v. SAS Wiko, RG No. 18/13517.

No way back

There once were submarine patents, living a quiet and inconspicuous life underwater, only to surface one day with a resounding splash.

Turns out what we do sometimes have in France is submarine patent cases. A recent ruling by the Lyon Cour d’appel could be considered as one of those.

In fact, Paris has exclusive jurisdiction over patent matters since November 1, 2009. Thus, I was more or less convinced I would never see again a patent revoked in a provincial court – but I was wrong.

Chavanoz Industrie, proprietor of European patent No. EP 0900294, filed an infringement suit against Mermet SAS in 2009, a couple of months before the November 1 date, and thus in Lyon. The first instance judgment was issued in September 2016.

I assume that the main reason why this lingered for such a long time is that the defendant merged in 2011, and then underwent insolvency proceedings in 2012. In 2013, a so-called continuation plan was ordered.

At any rate, the Lyon TGI hit late, but it hit hard, as the patent was held valid and infringed, and a damages award amounting to a total of more than 25 million euros was issued.

However, the ruling was fully overturned on appeal, a few weeks ago, as the Cour d’appel had a different appreciation of a key aspect of the case from the TGI.

The patent at stake was filed on April 16, 1997, claiming a French priority of May 7, 1996. It was granted in 1999 and limited by the French patent office (INPI)… in 2017, just a few days before it expired. Unusual enough, but wait until you read about the rest of the case.

Claim 1 of the patent as limited reads as follows:

Composite yarn for making a technical fabric for an awning, said yarn comprising a core composed of a continuous yarn made of glass, and a coated sheath composed of a matrix consisting of at least one chlorinated polymer material, for example a polyvinyl chloride or PVC, and a fire-retarding filler incorporated into and distributed within the said matrix, characterized in that, in combination, on the one hand the fire-retarding filler comprises a ternary composition which combines an oxygenated antimony compound, for example antimony trioxide, a hydrated metal oxide, the metal of which is chosen from the group consisting of aluminium, magnesium, tin, zinc and lead, for example an alumina hydrate, and a zinc borate and, on the other hand, together with the said ternary composition, the total weight content of inorganic matter in the yarn is between 4% and 65%.

The alleged infringer asserted that the invention had been made available to the public before the priority date of May 7, 1996, because the patent proprietor Chavanoz had supplied the patented yarn to (among others) a third party, Helioscreen.

Chavanoz responded by relying on a confidentiality agreement signed with Helioscreen on April 9, 1996.

The court had to deal with three thorny issues:

  • Chavanoz stated that most of Mermet’s exhibits relating to the alleged public prior use were illegally obtained, in view of the confidentiality agreement, and that they should thus be disregarded by the court.
  • Then there was the question of whether the supply of the yarn in question was indeed a public disclosure or whether it was confidential.
  • Then there was the question of whether the skilled person would have been able to arrive at the claimed invention by analyzing the supplied yarn, at the priority date.

First things first, the fate of the exhibits.

In support of the public prior use allegation, the infringement defendant filed a number of documents, such as invoices, orders, letters, between the patent proprietor and the third party Helioscreen. These documents were, as far as I understand, willingly provided by Helioscreen. Chavanoz protested that this was in breach of the Chavanoz-Helioscreen confidentiality agreement of April 9, 1996.

The first instance judges agreed and thus discarded the evidence. But the appeal judges came to a different conclusion.

The 1996 confidentiality agreement recites that the parties have been cooperating since May 9, 1994 in the business of technical fabric. Helioscreen provided specifications, Chavanoz made yarn and supplied it to Helioscreen, together with some technical information, Helioscreen made fabric with this yarn and supplied samples of said fabric to Chavanoz for testing. The agreement then basically states that all information, documentation, products exchanged between the parties is confidential, and that the agreement itself is confidential. The agreement also mentions that it is retroactive back to May 9, 1994 and that it will remain in force as long as all of the confidential information has not been made available to the public.

The appeal judges held that the confidentiality agreement expired in November 1997, when the patent application was published. Therefore, Helioscreen was free to provide any documents and information to Mermet. Besides, Mermet was anyway not bound by the confidentiality agreement and was free to provide any material obtained from Helioscreen in order to build its defense. In fact, Helioscreen was not sued by Chavanoz for breach of the confidentiality agreement.

As a result, all of the exhibits filed by Mermet were deemed admissible.

I am not necessarily convinced by the argument that the confidentiality agreement expired when the patent application was published. Indeed, the information exchanged by the parties could possibly extend beyond the contents of the patent application. Notwithstanding, it seems only fair that Mermet, as a third party to the agreement, should be allowed to rely on whatever evidence is at its disposal as a defense in the infringement suit.

This brings us to the second point, namely whether the exchanges between Chavanoz and Helioscreen were confidential or not.

The court analyzed in detail the evidence at hand, and concluded that several dozens of tons of so-called M1B1 yarn were sold by Chavanoz to Helioscreen before the priority date of May 7, 1996. The yarn was first experimented in 1992, but by 1995, the production of the yarn was on an industrial scale. The court further noted that there is no evidence that the formulation of the yarn changed as from 1995-1996, or that the product was still in development – even though further yarn colors were later designed.

Besides, the M1B1 yarn was also supplied to other fabric manufacturers, including Mermet itself and another company called Brochier, in the context of the professional association ScreenGlass, in order for all manufacturers to provide feedback on the yarn.

The court also established that the fabric made by Helioscreen from the M1B1 yarn was sold to various clients before May 7, 1996.

No written confidentiality agreement was in place when all these exchanges took place; in particular, no exhibit on file bears the mention “confidential“.

The court then stated that “there is never a presumption of confidentiality in the context of a relationship with a buyer“.

Next, the appeal judges turned to the confidentiality agreement of April 9, 1996, which, as a reminder, states that all prior exchanges with Helioscreen were confidential. The court was unimpressed by this statement:

The reality of the amounts supplied to Helioscreen and the reality of the industrialization phase emphasized by Chavanoz Industrie itself in its commercial correspondence are never mentioned [in the agreement]. The content of the deliveries that are mentioned only relates to “samples”. 

[…]

It is thus important to determine if a company that has already disclosed its invention to a partner not subjected to an obligation of confidentiality at the time of the disclosure can erase the existence of this disclosure, which may be novelty-destroying, by signing a confidentiality agreement after the facts. 

The public policy provisions of patent law prevent parties to an agreement, from depriving a disclosure which has already occurred of legal effect, even with a retroactive effect.  

An invention is made available to the public when it is disclosed to a person not bound by confidentiality at the time of the disclosure, so that the retroactive provision in the above confidentiality agreement has here no effect on the appraisal of the validity of the patent. 

Is it possible to go back to the pre-disclosure situation?

Long story short, the particulars of the supply of M1B1 yarn by Chavanoz were deemed incompatible with the notion of an implicitly confidential sampling. And a public disclosure cannot be turned confidential ex post.

There was a side argument by the patentee that Helioscreen’s sale of fabric to their client Krüland was a non-prejudicial disclosure under article 55 EPC. This was considered as irrelevant by the court, since overall the public prior use took place even before 6 months prior to the priority date.

The third point at last. Chavanoz argued that the skilled person would not have been able to know the composition of the M1B1 product at the priority date without undue burden.

The defendant performed a number of experimental tests to counter this theory. First, they made the patented product according to the method taught in the patent, and then had the product analyzed. Second, they had a bailiff collect samples of the M1B1 yarn dating back to 1994 in Helioscreen’s premises, and had those analyzed as well.

The manufacturing was performed in the presence of a bailiff. All analyses were conducted in two independent labs, using analysis methods available at the priority date. Various experts’s reports were produced on both sides, either to challenge the results of the analyses, or to support them.

I will not go over the details of the discussion, which was technically quite complex, but it will suffice to say that the court was ultimately not persuaded by Chavanoz’ criticisms, and accepted Mermet’s conclusion that the M1B1 yarn could indeed be determined by the skilled person as falling within the patent claims.

As a result, claims 1, 2, 3, 5, 7 and 8 of the patent were deemed to lack novelty and were revoked, and Chavanoz’ infringement claim was dismissed.

Let me say that this decision is overall well reasoned and makes for an excellent read. I am therefore looking forward to the next submarine from Lyon – if any.

As a take home message, confidentiality agreements should really be put into place initially. There is no way back once a business relationship has started on a non-confidential basis.


CASE REFERENCE: Cour d’appel de Lyon, 1ère chambre civile A, September 12, 2019, SAS Mermet et al. v. SARL Chavanoz Industrie, RG No. 16/06896.

OK oral

As a patent professional well used to the EPO’s way of reasoning, the aspect of French patent litigation which often strikes me as the most fascinating one is claim interpretation.

This is because there is such a significant difference between the EPO and French courts when it comes to deciding what is and what is not covered by a patent.

Today’s case, Bayer v. Ceva, provides a noteworthy example.

I have actually already talked about this case in a previous post. It is indeed one of these disputes which gives rise to a large number of procedural developments.

Here is the context, in quite a few bullet points:

  • Bayer Intellectual Property GmbH owns European patent EP 2164496 (EP’496), granted in April 2017, on “Formulations containing triazinones and iron”.
  • Bayer Animal Health GmbH, a licensee, developed a veterinary product named Baycox Iron®. The product is an injectable formulation of a combination of toltrazuril and a dextran iron (III) complex. The veterinary indication is the treatment of coccidiosis in piglets.
  • In parallel, Ceva Santé Animale developed a similar veterinary product, called Forceris®.
  • Ceva contacted Bayer in November 2017 to let them know about their intention to market Forceris®. Ceva argued that their product was out of the scope of the EP’496 patent.
  • Ceva filed an opposition against the patent. The opposition was rejected by the EPO in a decision dated July 16, 2019. An appeal is pending.
  • Bayer disagreed and filed a petition for preliminary injunction against Ceva in France, in December 2017.
  • Ceva Santé Animale filed an opposition against EP’496 in January 2018.
  • In parallel, Ceva filed an action for a declaration of non-infringement in France, in January 2018. As far as I understand, this action is still pending.
  • In April 2018, the judge in charge of urgency proceedings rejected Bayer’s request for preliminary injunction, because Ceva’s letter of November 2017 was not enough to represent an imminent threat, and because there were serious doubts as to the scope of the patent.
  • In February 2019, Ceva obtained its marketing authorization for Forceris®.
  • Ceva started marketing Forceris® in France in April 2019.
  • In May 2019, Bayer obtained its marketing authorization for Baycox Iron®. The product started being marketed in France a few weeks thereafter.
  • Still in May 2019, the oral proceedings of the opposition against EP’496 took place, and the opposition was rejected (the written decision was issued on July 16, 2019; an appeal is pending).
  • On the same day, a cease and desist letter was sent by Bayer to Ceva.
  • An infringement seizure was carried out at Ceva’s French premises a few days later.
  • Ceva countered by requesting that the seized evidence be placed under seal. In a judgment dated June 7, 2019 (commented upon in my previous post), the judge rejected most of Ceva’s requests.
  • On June 20, 2019, Bayer filed a second petition for preliminary injunction against Ceva.
  • Petitions for preliminary injunctions have also been filed at least in Italy, Denmark, Spain and the Netherlands. It seems that Bayer prevailed at least in Spain, an ex parte injunction having been issued on July 17, 2019.

Not a straightforward case indeed.

A first interesting question is why Bayer filed a second petition for preliminary injunction (PI) in June 2019, after having lost its first petition for PI in April 2018.

This is probably an easy one: the main reason for the April 2018 decision was that it was not established at that time that there was an imminent infringement threat. Obviously, the situation had changed once Ceva had obtained its marketing authorization and started marketing its product.

However, there was a second reason for the April 2018 ruling, which was the existence of doubts as to the validity and scope of the patent. Bayer probably took a gamble on the fact that the rejection of the opposition which took place in May 2019 would be a game changer and would lift all doubts that French judges could have regarding the validity of the patent.

But the gamble was lost.

The court in charge of urgency proceedings (unusually a full panel, and not a single judge) quickly agreed that there was indeed an imminent threat this time.

But when they turned to the issue of the likelihood of infringement, things got trickier.

Claim 1 of EP’496 is directed to a formulation containing triazinones of formulas (I) or (II) (let me spare you the details), as well as polynuclear iron (III)-polysaccharide complexes.

Ceva’s argument was that the scope of the patent was limited to formulations for an oral administration. Remember that Forceris® (just like Bayer’s Baycox Iron®) is an injectable formulation, not an oral formulation.

Ready for oral administration?

In front of the EPO, especially when looking at novelty and inventive step, I think that there would never be the slightest doubt that claim 1 of EP’496 covers all formulations, whether oral, injectable or other.

This was actually confirmed by the opposition division in its written decision.

In fact, claim 13 is directed to the use of the formulation for making a drug. And dependent claim 15 adds that the drug is for oral administration. This can be viewed as further confirmation that claim 13 and hence claim 1 are not limited to an oral administration.

But national courts, and especially French courts, can be much more creative when it comes to claim interpretation.

Making reference to article 69 EPC and its protocol, the court performed a detailed analysis of the description of the patent. They noted that all examples relate to oral formulations, and that the general part of the description is also very much concerned with the provision of oral formulations. The technical effects of the claimed combination were also demonstrated in the context of oral formulations. The technical problem was thus formulated in relation with an oral administration, and the court was persuaded by Ceva’s argument that the same technical problem did not arise in connection with injectable formulations.

To put it otherwise, the inventive step of the claimed invention seems to be closely related to the oral mode of administration.

Here are some relevant excerpts of the decision:

The technical problem described by the patent is thus the absence of formulations available in the prior art for treating piglets simultaneously against coccidiosis and anemia, which the skilled person would be dissuaded from doing because the appropriate administration timing of each treatment to ensure efficacy is not the same. If an administration by injection is contemplated, this problem does not arise in the same terms since, as mentioned in the description, this iron compound is then efficiently absorbed and can be administered on day 3 at the same time as toltrazuril. 

[…]

Therefore, the purpose of the formulations of the patent is to efficiently treat piglets against coccidiosis and iron deficiency with a single operation and with an oral administration. It is indeed either the absence of a common treatment window, or the difference in mode of administration, which did not suggest to couple the two active substances at stake in a single formulation.

[…]

Beyond this particular context of oral administration [Bayer] does not demonstrate – and does not in fact claim – that its combination formulation would be more efficient than the separate intake of the two products.

[…]

It is only this surprising effect obtained in the context of an oral administration, and not of an injection (the alternative use of which on the third day is known and is clearly not encouraged), which is shown and that the patent intended to protect.

Most interestingly, the court also made reference to statements made by Bayer during prosecution of foreign patent applications.

This is a form of unofficial file wrapper estoppel which I would say is quite uncommon in French decisions. But I think the court only made reference to foreign prosecution in this particular case because it nicely confirmed their understanding of what the invention is about:

[…] This scope of protection was claimed by Bayer in the context of examination proceedings of the same patent in front of the Canadian patent office. On June 9, 2015, Bayer mentioned in its response to the examiner’s report that “the present formulation is related to addressing two problems simultaneously. One of which is to arrive at an orally administrable formulation, the other being that this formulation thereby allows for the treatment of anemia in animals that are affected by coccidiosis even via the oral route (being biased in the prior art per se to be the less reliable route even in otherwise healthy animals – see D5 above)”.

It is also emphasized that “the presently claimed invention does provide a non-obvious formulation over the art cited. Moreover, as it is clear from pages 10 and 11 of the application, providing an oral formulation that can be used to address both anemia and coccidiosis is clearly advantageous over problems associated with the monotherapy, such as the use of non-oral formulations and divided administration times” […]. The Canadian version of the granted patent is directed to “an oral formulation” […]. 

In front of the Indian patent office, it was also stated that the invention provided “means to simultaneously treat iron deficiency and coccidiosis by an (oral) mode of administration”.

As a result, the court rejected Bayer’s second petition for PI.

For other striking instances of narrow claim interpretations by French courts, see for instance this post, or this one, or this one.

I do find some merit in this way of looking at things. Assuming that the court was indeed right in finding that the actual contribution of the invention to the art was limited to an oral administration (which I have not formed an opinion on), it then seems only fair that the scope of protection should be limited to this contribution. One major issue is legal uncertainty, though: the more the scope of protection may differ from the literal wording of the claims, the more difficult it is for all stakeholders to know where they stand.

Another possible way to handle this situation would be to accept that claim 1 of the above patent is broad and covers all kinds of modes of administration, but that it may then lack inventive step over the entire scope of the claim, if indeed only the oral administration is truly inventive.

Yet, again, I do not believe that this would be a typical EPO-approved approach. When a combination of compounds provides a certain technical effect in a very specific context, in my experience the EPO generally allows a claim to the combination per se, without any restriction to the specific context in which the technical effect actually arises. But could this tradition in fact be too generous?

** Update (Sept. 30, 2019) **

Amandine Métier, counsel for Ceva, has kindly informed me that, in the parallel European lawsuits, a request for PI filed by Bayer in the Netherlands was also rejected on September 17, 2019, due to a serious doubt as to the existence of an inventive step. The Dutch judge analyzed the opposition division’s decision of rejection of the opposition and came to the conclusion that there is a reasonable chance that it will be overturned by the technical Board of appeal.

Amandine has also confirmed that an ex parte PI was issued in Spain. The inter partes hearing will take place next November.

Finally, an ex parte PI was also issued in Germany, which was then confirmed inter partes. The grounds for the decision are not yet known, and an appeal is pending.

Many thanks for this information! As always, pan-European litigation is a roller-coaster for litigants.


CASE REFERENCE: Tribunal de grande instance de Paris, September 11, 2019, Bayer Intellectual Property GmbH & Bayer Animal Health GmbH v. SA Ceva Santé Animale, RG No. 19/56082.

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.