Two down, two to go

The Paris Tribunal de grande instance (TGI) has recently handed down an unusually long judgment. But I will refrain from commenting on all 64 pages that the decision comprises. Instead, I will focus on the initial portion.

No, not so much out of laziness – who said that?

But mainly because this initial portion addresses the very important issue of standing in a patent nullity suit, which was already discussed here not long ago.

As usual, a word of context first – which, as usual again, is not so straightforward.

Pellenc is a French agricultural company, which has been marketing an electrical pruner since 1988. From 1989 to 2014, they were involved in commercial and cooperation agreements with Switzerland-based group Felco, which is active in the same field. In particular, Pellenc supplied Felco with batteries for some of their electrical pruners. At some point, Felco drastically reduced the volume of its orders to Pellenc and then introduced a new tool that they had developed.

However, Pellenc had six patents in store: two French patents and four European ones.

Felco, in a bold preemptive strike, filed a nullity suit in France in July 2012 against all six patents.

One of the European patent was revoked in opposition proceedings at the EPO, and the revocation was confirmed by the Board of appeal.

The French part of another European patent was definitively forsaken at the French patent office (presumably to avoid substitution of the original French patent).

All of that left the court with two French patents and two European patents to deal with.

But, in order not to make things easier, Pellenc filed requests for limitation of these four patents. The requests for limitation of the two French patents were accepted by the Institut National de la Propriété Industrielle (INPI) in May 2015. The EPO, on the other hand, initially rejected the central requests for limitation of the two European patents, in June and November 2015.

In view of these lingering limitation proceedings, the case management judge separated the case into two: a first sub-case concerned with the nullity claim regarding the two limited French patents; and a second sub-case concerned with the nullity claim regarding the two European patents still in limbo. Obviously, the first sub-case progressed quicker than the second one, which leads us to the decision at stake.

Let’s not maintain the suspense for too long: the two French patents were revoked in full.

The court made a very thorough job of deciding on the interpretation of a number of contested claim terms, and then reviewed each claim (yes, including all dependent ones) in great detail, finding them all deprived of novelty or inventive step. Hence the lengthy judgment.

Sometimes, patents are like dominos: when you start toppling one…

But most interesting is how the court handled the defense that the nullity complaint was inadmissible due to lack of standing.

In the decision, the court recalled the principles to be applied for assessing whether a nullity claimant has standing to sue:

Therefore, a competitor can file an action for nullity of a patent if they can demonstrate the existence of sufficient interest to free an upcoming exploitation of the patented technology or a similar one: nullity actions are open to an industrialist willing to free a market. 

More specifically, it must be established that the claims which are sought to be nullified “are or may be an impediment to their economic activity, because they have or plan to have an activity in the field of the patented invention“.

The court also made it clear that the claimant does not need to establish the existence or imminence of an infringement of any particular claims of the patents at stake. But it should be explained “how the patent may get in the way of their activity“.

In my previous post on the topic, which was in the pharma field, we could see that the court examined the evidence as to whether the patent stood in the claimant’s way in a very thorough and severe manner. In fact, standing was acknowledged for some of the patent claims but not others.

Now, in the present case, it seems that the analysis was overall easier and more straightforward. 

The court first noted that there it was undisputed that Felco and Pellenc were competitors in France, since both make and market electrical pruners. In fact, it was mentioned in Pellenc’s submissions themselves that the recent tool developed by Felco was in competition with their tools.

The interesting point is that the competing tool was put on the market in France in May 2013, i.e. ten months after the nullity complaint was filed. The court concluded that, even if there was no competition on the day the complaint was filed, there was competition at least thereafter, so that the inadmissibility defense could no longer be relied upon.

In other terms, the relevant date for the assessment of standing in a patent nullity suit is the day on which the court decides on the inadmissibility defense, and not the day on which the complaint is filed – in keeping with the general rules of civil procedure in this country.

The court further remarked that Pellenc sued the Felco companies in Switzerland for unfair competition. It seems that Pellenc claimed in the Swiss lawsuit that Felco had taken unfair advantage of Pellenc’s patented and non-patented know-how which was transmitted to them over the course of their longstanding relationship. This was seen as further confirmation of Felco’s proper standing.

Yet another factor taken into account by the court was that Pellenc opposed two European patents owned by Felco. Frankly, I think this is a very indirect factor. It is more a possible indication of Pellenc’s activity being impeded by Felco’s IP than the other way around.

Apparently, there was also a dispute as to the legal consequences of the agreement between Felco and Pellenc on Felco’s standing. It was probably an exciting one, at that, as both parties filed consultations by renowned legal experts, respectively Prof. Reboul and Prof. Galloux. But the decision does not say much as to which arguments were made. It is simply stated that:

Regarding the contractual relationships which existed between the parties, it should be noted that they have ceased; besides, the existence of contractual relationships does not deprive the contracting party of their right to seek the invalidation of the patents, and does not render standing illegitimate per se. 

Indeed, if the patents were to be held invalid, the standing of [Felco] would be legitimized and Pellenc would have illegitimately asserted worthless patents against their co-contracting party. 

Therefore, the existence of contractual relationships cannot make a contracting party’s standing to seek nullity of patents belonging to the other contracting party illegitimate. 

It is unclear whether the agreement explicitly contained a provision prohibiting Felco from seeking revocation of the patents, or whether the argument was that the agreement indirectly or implicitly prevented Felco from pursuing this course of action. Probably the latter.

But at any rate, the principle seems to be clearly established in this judgment that an agreement cannot restrict a party’s right to seek invalidation of a patent, and in particular cannot annihilate said party’s standing to sue. This is in addition to the serious concerns that non-challenge clauses may raise under competition law.

Good to know!

At that point, the court rejected Pellenc’s defense and, as mentioned above, held all claims of both French patents invalid, after carefully reviewing them one by one.

With two of Pellenc’s patents down, there are two more to go – namely the two European ones, which were also sought to be limited.

I checked on the European patent register, and it turns out that both patents were finally limited at the EPO, in June 2016. So, unless the parties settle, these patents should soon also be subjected to the firing squad of the TGI’s third chamber. Stay tuned.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 1ère section, March 2, 2017, Felco SA et al. v. SA Pellenc, RG No. 12/15393.

French courts get IT

Some patent attorneys are more passionate about IT than others. See, when I read this acronym, the first thing that comes to my mind tends to be Stephen King’s classic goosebumps-giving novel. My partner Aujain Eghbali, on the other hand, immediately thinks of databases, networks and the like.

This is why I am particularly delighted that he has taken it upon himself to update us on the increasing alignment of French courts on EPO case law regarding computer-implemented inventions.

Here is to him.

Although the provisions of article 52 EPC regarding the ineligibility to patent protection of computer programs as such are repeated word-for-word in article L.611-10 of the Code de la propriété intellectuelle, French practitioners like to remind applicants that French courts are not bound by EPO case law.

Such precaution used to be particularly appropriate in the field of computer-implemented inventions, as only very little national case law was available until recently.

The situation has however started to become clearer since a few decisions commented on this blog were issued (see here, here and there). I have notably written on this blog based on my understanding of the Sesame decision that, when the EPO does not grant patents for software for implementing business or administrative methods, applicants probably do not have much more to expect from French courts.

A recent decision Xaga Network v. Ewalia of November 18, 2016, by the Paris Tribunal de grande instance seems to extend this principle to other types of computer-implemented methods.

In this decision, French patent No. FR 2948788 (corresponding to EP App. No. EP 2460112 and to US App. No. US 2012/311525) owned by Xaga Network was revoked. The patent was directed to a system allowing users to easily customize generic applications without any coding, such that the users need not be skilled programmers.

Claim 1 of the patent read:

An application management system, characterized in that it comprises at least one dataspace adapted to be associated to an application, said dataspace comprising:

– at least one organizational entity able to be linked in at least one other dataspace and comprising a plurality of first components;

– at least one operational entity comprising a plurality of second components;

the first and second components being able to be activated/deactivated by parameterization within said dataspace according to the managed application.

The owner stated that the claimed system enabled the development of preconfigured applications adaptable and customizable by a simple activation-deactivation of the modules, without any new coding. The patent addressed a technical problem, namely, how to select the components that will be used in an entity for an application. The patent further solved this problem by a component activation/deactivation system within a dataspace. The proposed technical solution thereby made it possible for the user not to necessarily have technical knowledge to implement the invention.

Obviously, the nullity claimant did their homework and duly noted that the EPO had refused the corresponding application, although claim 1 was very extensively amended during examination at the EPO to eventually recite:

A system for managing applications (APP), characterized in that it comprises:

– a web server (SRVW) including: 

– objects comprising one or more predefined and pre-assembled components (Cp), said objects forming:

– a generic model of Organization (MGO) composed of logical organizational entities (ST) forming sets of identified physical persons, said logical organizational entities (ST) being possibly configured to be linked together;

– a generic management model (MGG) composed of logical operational entities (EO), an operational entity comprising at least one task which can be implemented by at least one person, said logical operational entities being possibly configured to be linked together;

– a generic pilot model (MGP) consisting of data analysis tools (OA) so as to monitor, owing to a set of indicators, actions performed on at least one operational entity (EO);

– a generic model (MGS) of screens and kinematics (SCR) for a user interface (Ul), said kinematics corresponding to a sequence of screens;

– a set of tables and files (G_TAB) characterizing the possibilities of activation and personalization of the objects and characterizing the processes, flows and rules associated with the objects;

– identification tools (ID_T) of the possible activations of objects linked to an initial activation of an object;

– management tools (MG_T) allowing the construction of logical networks comprising data spaces, and preassembled links that can be activated and customized, each data space being composed of all the objects,

– a connector object (ML) searching for tables and files corresponding to the activation and personalization of components of the object and object data to be displayed in the areas of the corresponding screen;

a data server (SRVD) including a predefined single physical database (DB1) comprising the data corresponding to said objects.

A figure as scary as a lengthy claim to an application management system.

The EPO examining division construed the application as relating to an abstract model comprised in a Web server, consisting in a collection of generic objects and data, and meant to facilitate the programming of applications by unskilled users.

The EPO considered that such a purpose was not of a technical nature and referred to the old decision T 0204/93 which had previously held that “generating concrete software programs from supplied generic specifications, i.e, reusable software modules, involving computer programs as such, and a computer implementation of mental acts, does not make a contribution in a field outside the range of excluded matters”. This decision has been constantly followed by the EPO boards of appeal.

Examiners are used to overkilling applications when they refuse them.

Accordingly, the examining division further added that claim 1 in any case did not clearly provide a solution to the problem of facilitating the management of applications, the claimed model being too vague for that. The division probably wanted to remind the applicant, before they considered filing an appeal (which they did not), of the particularly high bar regarding clarity when it comes to computer-implemented inventions.

The question of whether both the problem and its solution are technical is critical here. Thus, the EPO is particularly strict on the requirement that all “ingredients” for solving the alleged problem should be present in the claim, so that the problem is effectively solved on the whole claimed range. While practitioners used to chemistry or biotechnology inventions are familiar with this approach, European patent attorneys know that the EPO is sometimes more lenient in other technological fields, such as mechanical engineering.

Interestingly, the French court followed both lines of reasoning, holding first that the claim related to software as such and that the programming activity field did not constitute a patentable technical activity, and second that claim 1 described “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”.

Like in the Sesame decision, I must say that I am quite impressed by the capacity of French legal judges to level up to EPO case law’s subtleties in the area of software patentability, which is not known as the most limpid literature even to technical practitioners such as European patent attorneys.

These recent developments teach us that French courts are probably taking the path of European legal harmonization in the field of software patentability by integrating principles well-established at the EPO in that area. This increase in legal certainty will surely be appreciated by most applicants, especially by those who understood early on that a patent granted by the INPI (French patent office) for a computer-implemented invention meant so little that they played the game of filing directly at the EPO.

But this leaves open the question already asked at the end of the Sesame post: how will the INPI deal with an application blatantly not providing any technical solution to a technical problem, from now on?

As a final word, Aujain also wanted to draw our readers’ attention to the U.S. counterpart of the patent at stake. He says the applicant also had a very hard time at the USPTO, as the claims were deemed not to relate to statutory subject-matter, but were also held to lack the equivalent of clarity in Europe. And yet, this happened pre-Alice.

So, this may be a sign of a growing harmonization also across the Atlantic.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 2ème section, November 18, 2016, Xaga Network SAS et al. v. Ewalia et al., RG No.2013/11351.

Smart invalidation

Today’s post will be relatively short, I think, as it will merely confirm a trend already noted in earlier posts for instance here, here and there.

The trend is that, yes, it is incredibly difficult to win a patent nullity case based on public prior use.

On April 4, 2011, Grenoble-based company Smart & Green (formerly IPW Europe) filed a nullity suit against Mr. Christophe Frilley, owner of French patent No FR 2944858. It took 6 years for the Paris Tribunal de grande instance (TGI) to issue a decision. But before a rumble of discontent starts spreading in the readership, I should add that the TGI judges cannot be blamed for this long period of time, based on what I could gather from the public inspection of the patent file.

In fact, at the time the nullity suit was filed, the patent had not been granted yet. The judgment does not specify whether a formal stay was pronounced, but at any rate the case could certainly not progress until the grant of the patent.

In addition, the plaintiff apparently also filed a claim for ownership of the patent application. This led the French patent office to stay the grant proceedings, from May 2011 to September 2014, at which point the ownership claim was withdrawn, which led the French patent office to resume the grant proceedings.

The patent finally issued in August 2015. A few days later, the patent proprietor filed a request for limitation of the patent, which was granted a few months afterwards. 

Foreign readers may wonder why the applicant did not simply amend the claims before issuance of the patent, as opposed to afterwards. The explanation is simple: there are only limited time frames within which an applicant can amend claims, in French grant proceedings. In this case, the relevant time frame had closed after the applicant responded to the preliminary search report back in 2010. Therefore, the applicant was unable to react to the plaintiff’s nullity arguments by way of a claim amendment in the grant proceedings. He had to take advantage of limitation proceedings after grant.

Let’s now move on to the nullity arguments presented by Smart & Green.

Looking for something smart and green? How about this 1895 “mechanical flower for advertising purposes“?

The patent at stake relates to a lighting assembly. Smart & Green argued that the claimed invention had been disclosed in its so-called Rock lamp (for swimming pools) which was allegedly put on the market in 2008. 

The court was convinced that the Rock lamp was indeed made available to the public before the filing date of the patent, since at least samples of the lamp were sent to third parties for future marketing.

However, there was not enough evidence that these lamp samples were according to the claims of the patent. In particular, claim 1 of the patent as limited mentions a plurality of diffusers which can interchangeably accommodate a lighting module, in a waterproof manner.

But the documentation from 2008-2009 provided by the claimant did not clearly show whether this feature was present. 

By way of example, one email mentioned that any diffuser could be adapted on the lamp, but the court noted that it was unclear whether this meant that the Rock lamp was modular, as required by claim 1; or whether it simply meant that manufacturing could be adapted to include any diffuser.

Smart & Green had also filed two Soleau envelopes in 2008 on a so-called Little Rock lamp (for a presentation of what is a Soleau envelope, see this previous post). But again, the product described in these documents did not clearly comprise interchangeable diffusers.

The court was apparently more convinced that the feature at stake was indeed shown in internal development documents dating back to the summer of 2008. But these documents were not public and related to a so-called “IPW Lamp Project“. It seems that there was no evidence that the IPW Lamp Project was implemented in the Rock lamp which was made available to the public – or that it was publicly disclosed in any other way.

This led the court to reject the public prior use challenge.

Fortunately for the plaintiff, they also had good old traditional prior art in store as well, in the form of a Japanese patent application and a European patent application. 

The court held that each of these documents disclosed most of the features of claim 1, except the two which were added in the limitation proceedings, per which the diffuser can interchangeably be fixed to the lighting module owing to clicking or screwing, and a sealing ring is provided between the lighting module and the diffuser.

But these features were found to be obvious for the skilled person, even without referring to any specific secondary reference: the clicking or screwing fixation would be achieved simply based on common general knowledge, whereas the sealing ring was obvious to provide in view of the objective of supplying a waterproof lighting assembly.

Claim 1 was thus canceled for lack of inventive step. The dependent claims were quickly reviewed one by one, and as we like to say in French, the baby was thrown out with the bathwater.

I promised a short post, so now seems like a good time to stop.

But the bottom line is that I am still looking forward to reading a successful public prior use argument these days.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 2ème section, March 24, 2017, Smart & Green v. Christophe Frilley, RG No. 11/06949.

No claim is etched in stone

The appeal ruling reported on today kept people waiting for a very long time, but the wait was worthwhile for case law observers, as it contains a number of interesting aspects.

The patent at stake is EP 0570484. It was filed on February 4, 1992 and claimed a priority back to February 4, 1991. The patent proprietor, Trikon Technologies Inc., had an infringement seizure conducted in September 2006 and then sued Alcatel Vacuum Technology France (AVTF) for infringement of the patent.

In case you are wondering what the usual pun in the title of this post is about, the patent relates to high density plasma machines for depositing or etching a substrate.

Over the course of the litigation, the original companies disappeared, the patent was sold, so, in order not to get lost, I will simply refer to the parties as the plaintiff and defendant, or similar designations.

In the first instance judgment dated March 3, 2009, the patent claims asserted by the proprietor were revoked by the Tribunal de grande instance for lack of novelty.

The plaintiff appealed, and this is when the case got dormant for a very long time. Presumably both sides dragged their feet. Well, when I say the case got dormant, this is not entirely accurate, as a lot actually happened.

First, the proprietor initiated central limitation proceedings at the EPO – and later abandoned it.

Then, a national request for limitation was filed at the French patent office (INPI), and was finally granted in September 2012, after a number of objections by the patent office and the defendant acting as a third party.

In May 2014, the defendant filed a motion for canceling the order for infringement seizure. Never too late! The appeal judgment does not mention what the objection was, but it was certainly a serious one, as the plaintiff gave up and withdrew its seizure exhibits from the record. Finally, the appeal went to trial in December 2016.

As I said, there are several interesting aspects in the ruling, but I will focus on the appraisal of the limited claims by the appeal judges.

First, an unconventional objection was raised by the defendant. According to article 564 of the Code de procédure civile, “new claims” may not be filed on appeal. By “new claims” is meant legal claims, not patent claims of course. The question is which claims filed on appeal are really new and which ones are not so new. In particular, according to article 566:

Parties may also make requests explicit if they were virtually comprised in the claims and defenses submitted to the first judge, and add thereto any claims which are an accessory thereto, a consequence thereof, or a complement thereto.  

In this case, claim 1 of the patent as limited comprised new features which had thus not been debated in first instance. The defendant then argued that the infringement case based on claim 1 as limited was a “new claim” according to article 564 and thus inadmissible. A very interesting argument indeed, but a long shot, as the court noted that the patent proprietor was entitled to limit its claims “at any time“, and that the limitation was retroactive, pursuant to article L. 613-24 of the Code de la propriété intellectuelle.

Therefore, this inadmissibility defense was rejected. It is true that if it had been successful, the benefits of limitation during litigation would have been considerably affected.

The second way the defendant challenged the limitation was by asserting that the subject-matter of the limited claims extended beyond the contents of the application as filed.

Here is claim 1 as limited, wherein the highlighted portion represents the main changes relative to claim 1 in the application as filed:

A system for generating a high density plasma comprising:

a plasma confinement chamber of cylindrical form;

means for injecting a gas to be ionized into the chamber;

means disposed adjacent the chamber for generating a longitudinal magnetic field in the chamber; and

means for generating high frequency energy at a frequency of 13.56 MHz and at power in the range of 100 W to 5 kW, comprising an impedance adaptation circuit;

the system being characterized in that an antenna forming means comprises:

a single loop element encompassing the cylindrical chamber, the loop element being disposed in a plane at an angle of in excess of 45° to the central axis of the chamber, and positioned in an intermediate region along the length of the chamber, said single loop element being coupled to the means for generating high frequency energy. 

State of the art etching… in 1899. For a bit of nostalgia: the patent was granted 4 months after filing.

The court started by restating the standard to be applied, which was accurately imported from the EPO doctrine:

The content of the application as filed must be interpreted as encompassing the description, the claims and drawings, as well as any teaching, even implicit, directly and unambiguously deriving therefrom, as understood by the skilled person.

This was followed by a long and complex discussion of the teaching of the application, which I will not attempt to fully reproduce here.

In a nutshell, the value of a frequency of 13.56 MHz was mentioned in claim 4 of the application, but (1) this value was not disclosed in association with a power range of 100 W to 5 kW, and (2) claim 4 depended on claims 2 and 3 which recited further features not included in claim 1 as limited.

So one issue was whether the value of 13.56 MHz was generally applicable to the power range of 100 W to 5 kW. And another issue was whether this value could be isolated from the other features disclosed in original claims 2 and 3.

Regarding the first issue, the court considered that the application generally taught a power range of 100 W to 5 kW and a frequency range of 2 to 50 MHz. One sentence in the description read: “to effect wave coupling and establish a high plasma current density, measured in mA/cm2, the antenna loop 12 is driven at 13.56 MHz and with RF energy of the order of 2.0 kW (in the range of 100 W to 5 KW) by the RF energy source 19“. This was interpreted as meaning that the whole power range could be achieved with the preferred frequency of 13.56 MHz, and that the value of 2.0 kW was only an example. The interpretation was confirmed by looking at the examples and figures.

The defendant argued that generating helicon waves required matching a certain frequency with a certain power, but the court did not agree that the invention was only about generating such helicon waves.

Regarding the second issue, original claim 2 mentioned a magnetic field of les than 1000 gauss, a plasma density of more than 1013/cm3 and a loop element at an angle of about 90° relative to the magnetic field; and original claim 3 mentioned a first plasma current and density peak in the grange of about 50 gauss and a second plasma and density peak in the range of about 400 gauss.

The court analyzed the application in detail again and came to the conclusion that these various features were not mandatory or essential, and not inextricably linked with the frequency value of 13.56 MHz.

Thus, there was no extension of subject-matter beyond the content of the application as filed. 

Why on earth original claim 4 was then exclusively dependent on claim 3, which itself depended on claim 2, and why this claim did not directly depend on the broadest claim 1, is unclear to me. Generally, this is a hint that the various technical features at stake are probably interconnected. Not in this case, apparently – but as I said, the technical discussion was quite complex.

Anyway, the patent as limited survived the added matter challenge. It also successfully passed novelty and inventive step challenges.

On the other hand, the court found that there was no evidence of infringement, and this is another interesting aspect of this case. As explained above, the evidence seized in 2006 was no longer part of the record, further to the late challenge brought by the defendant against the seizure order.

The plaintiff relied on technical manuals and technical specifications of the defendant’s various machines. The court did not even examine whether the technical information contained in these documents reproduced the subject-matter of the patent claims.

In fact, it was sufficient for the court to note that there was no clear evidence of any potentially infringing act (such as manufacturing, marketing or the like). The new assignee of the patent filed an affidavit by its vice president and CFO, but this affidavit did not convince the court:

The affidavit […] contains tables originating from Alcatel’s documentation and states that “Alcatel made and sold 129 litigious machines during the litigious time period”. This does not make it possible to identify the machines at stake. And, due to the quality of its author, it cannot represent objective evidence of the manufacturing or marketing of machines reproducing the features of the EP’484 patent. The court notes that, in view of the documents relied on by SPTS as to the number of machines allegedly manufactured and marketed, they did not undertake any effort making it possible to physically identify any one of the allegedly infringing machines. 

Technical documents do not demonstrate the actual manufacturing of the machines that they describe. And even if they were indeed manufactured, it is no possible to determine the date of manufacturing nor the manufacturer. 

Remarkably, the court also rejected a request for the appointment of an expert to assess the extent of infringement and the corresponding damages. 

The take-away message here is that infringement seizures are a powerful tool for IP right holders in this country. But if for some reason the infringement seizure falls apart, it becomes much more difficult for them to prove their case, and courts are generally unwilling to help them complete it.


CASE REFERENCE: Cour d’appel de Paris, Pôle 5 – chambre 2, March 10, 2017, TTI Liquidating Inc. et al. v. Pfeiffer Vacuum et al., RG No. 15/01226.

Time’s up

Previously, in Actelion v. Icos Corporation (as they say in TV shows): Actelion filed a nullity suit against the French part of European patent EP’092 owned by Icos Corporation (belonging to the Eli Lilly group) and relating to a particular formulation of the blockbuster drug tadalafil. Icos disputed Actelion’s standing. Actelion prevailed, except regarding some dependent claims relating to therapeutic uses of the formulation unrelated to Actelion’s business.

Today’s episode is dedicated to the second legal defense brought by Icos, based on the French statute of limitations. Icos argued that Actelion’s action was time-barred – successfully so.

A few years ago, the statute of limitations was never brought up as a legal defense in nullity suits in France. In fact, the Code de la propriété intellectuelle does not contain any specific limitation provision regarding nullity claims – contrary to, e.g., infringement claims.

Everything changed further to the reform of the Code civil enacted in 2008. Amended article 2264 now provides that “personal or real actions are time-barred five years from the day when the owner of a right knew or should have known the facts making the action possible“.

In other terms, the general limitation period in ordinary civil law is five years. Numerous exceptions are provided in specific areas of the law, but as mentioned above, no exception is provided for nullity patent suits. On the other hand, before the 2008 reform, the general limitation period was 30 years. Therefore, whether or not the general limitation period applied to patent nullity claims was irrelevant since it exceeded whatever time was needed by nullity plaintiffs anyway.

But a few years after the reform, litigants started to realize that the new statute of limitations had become a thorny issue in patent invalidity lawsuits. If I recall correctly, I was skeptical the first time I heard about it, because it intuitively seemed wrong that a patent nullity claim could possibly be time-barred. But soon enough, everyone had to acknowledge that the 2008 reform had had unintended but far-reaching consequences in patent law, and that nullity claims could now be time-barred.

As an important side note, this does not mean that defendants in infringement suits are now unable to fend off a claim based on an invalid patent. It is always possible to raise invalidity as a defense (or exception) to an infringement claim. But a revocation counterclaim may be time-barred. In such a case, the invalidity of the patent may be acknowledged by the court without any erga omnes revocation.

As far as direct nullity actions are concerned, they are of course fully impacted, as they may be held entirely inadmissible if time-barred.

Not only is this situation unsatisfactory, but a major problem is then the determination of the starting point of the limitation period. In this respect, court decisions over the past few years have been all over the place.

We do not know for sure whether the Actelion ruling will be held in the future as representative of “established case law” or whether it will be reversed or ignored. But since it is probably the most recent judgment on this sensitive question, I view it as of today as a reasonable reference for predicting future cases.

It is now time to go back to the particulars of the case.

Freakier than the Donnie Darko rabbit: the time-bar moose.

A first argument raised by Actelion was that the abovementioned article 2264 of the Code civil is not applicable to patent nullity claims. This argument failed, in keeping with previous rulings. The court held that the nullity action was a “personal” action under article 2264 and thus subject to the limitation period:

Like a tort action (which it is admittedly not), a [patent nullity action] has a function of cessation of the unlawful, in the competition relationship between the parties (said unlawful being here made up of a legal act the validity conditions of which are not fulfilled), and it is thus appended to a relationship of quasi-tort obligation. In this sole respect it pertains to the category of personal actions. This category is in fact broad as it is the category of ordinary law, whereas real actions are in a determined number. 

The court rejected further arguments that the action serves a general interest and should therefore not be subject to the limitation period:

The fact that nullity, with its erga omnes effect, incidentally serves a general interest does not legally imply that the action should not be subjected to a limitation period. Neither does the fact that it is open to all, as it is not limited to a certain person, contradict its personal character, as the plaintiff must justify its personal standing and only pursues a personal interest with its action. 

Then comes the central issue of the starting point of the limitation period. Many propositions have been made in this respect: publication date of the application, grant of the patent, actual knowledge of the patent, etc.

Here is how this panel of the Paris Tribunal de grande instance saw it:

The starting point of the limitation period must thus be set to the day, which is determined in concreto, when [Actelion] knew or should have known, in view of the progress of their research and of the seriousness of their project […], that the EP’092 patent could possibly thwart said project. Therefore, neither the publication of the grant of the patent (which would in fact require an unrealistic watch for market players and is unrelated to the development of the project conferring standing), nor the knowledge of the grounds of nullity of the title (which may be significantly before the knowledge of the facts and economic considerations giving rise to standing and in practice goes back to the publication of grant) are appropriate starting points. 

In other terms, the court rejected any automatic starting point such as the patent grant, as was argued by the patentee as a first line of defense (or worse, the publication of the application, as was suggested in earlier decisions). This would of course make the determination much easier but would be illogical as you could then be time-barred before even acquiring standing to sue…

Instead, a full appraisal of the facts and circumstances of each case is necessary. In this respect, a strong parallel was made between the appraisal of standing and the starting point of the limitation period.

The way I understand the judgment, the limitation period starts running when the party acquires standing to sue.

This has the advantage of ensuring overall consistency in the assessment of the admissibility of a nullity action.

On the other hand, on a practical standpoint, I think this approach makes it extremely difficult for a party to determine whether they are time-barred from starting a contemplated nullity suit. Indeed, as explained in the previous post, the appraisal of standing is complex and seems to rely on converging lines of evidence depending on the plaintiff’s research and commercial projects. It is already hard to guess in advance whether the court will be satisfied that the projects are sufficiently precise and advanced for standing to be acknowledged. But determining when exactly the party’s projects became sufficiently precise and advanced looks like a game of roulette to me.

Another drawback of the court’s approach in Actelion is that the knowledge of the grounds of nullity was explicitly not taken into account. But in order to decide whether to claim the revocation of a patent, you not only must have an interest in putting this claim forward, but you also need to find actual reasons why the patent should be revoked. Most of the time, a careful review of the patent and a full prior art search should make it possible for a diligent party to determine such reasons. But there are certainly more complex situations, where the existence of a ground of nullity may be incidentally revealed, e.g. by way of a testimony, experimental tests or the like, at a certain time which may be too late for launching a nullity suit.

Let’s now examine how the court applied the general principles set forth above to the present case.

Icos relied on four facts which they claimed demonstrated that the action was time-barred (bearing in mind that the complaint was filed in June 2015):

  • an article submitted by Actelion’s researchers in 2005 to a scientific journal on the combination of the drugs bosentan and sildenafil (a drug having the same function as tadalafil, the one claimed in the patent at stake) for the treatment of pulmonary hypertension (PHTN);
  • an annual report dated 2010 mentioning a phase IV clinical trial on the above drug combination for the treatment of PHTN;
  • a patent application filed in 2007 by Actelion on drug combinations for the treatment of PHTN, which in particular mentioned tadalafil in claim 3;
  • a marketing authorization (MA) for Adcirca granted to the Eli Lilly group on October 1, 2008 (Adcirca apparently corresponding to the formulation of tadalafil protected in EP’092, for the treatment of PHTN).

The court considered the 2005 article as “too early to characterize a real business interest of the plaintiffs“, but on the other hand as indicative of a “real scientific interest for this type of combination therapy“. The court further noted that the 2010 annual report confirmed that there was continuing research in this field.

The patent application of 2007 was seen as evidence that tadalafil had been identified as an interesting compound for combination PHTN therapy and had been the subject-matter of serious research.

But the fact held to be the most determining one was the marketing of Adcirca by the Eli Lilly group. Said the court:

[…] Actelion, as a leader in the treatment of PHTN, and using tadalafil in the combination therapy which had been under development for more than 3 years, could not possibly ignore the marketing of a directly competing drug, and see in it, and therefore in the patent that the drug implemented, a serious threat for its economic activity. 

In their submissions, Actelion argued that the limitation period could not start running until their development projects became sufficiently specific in order for the EP’092 to be identified as an obstacle. But the court rejected this argument, noting that this requirement was not taken into account for the appraisal of standing and thus could not be taken into account either for the appraisal of the limitation period. The limitation period could thus start running even before potential R&D on the formulation claimed in EP’092 – and in addition there was no evidence that such specific R&D was indeed conducted at a later stage, according to the court.

Again, consistency between the two admissibility requirements was given a paramount importance in the court’s reasoning. In particular, the court found that there was a contradiction in the claimants’ position since, on the one hand, they presented their combination therapy trials as relevant to characterize their standing, and on the other hand they deemed that their 2007 patent application claiming tadalafil in a combination therapy was not representative of a serious business interest.

Consequently, the court held that on October 1, 2008 at the latest (i.e. on the day Eli Lilly was granted the Adcirca MA):

the plaintiffs knew or should have known that the EP’092 patent could represent an impediment to their business and could be asserted against them by the patentee. 

The action was thus deemed inadmissible.

Again, on a practical standpoint, this outcome is very unfortunate, as nullity actions are a useful tool of economic regulation, skimming legally unfounded monopolies. And on a theoretical standpoint, several points in the judgment are surely open to criticism.

But the worst part of it all is probably the legal uncertainty entailed by such a complex and fuzzy appraisal of both standing and the starting point of the limitation period. This is not good news for decision makers.

So, we will have to watch out for further decisions on this topic. An amendment of the statute opening the door more broadly again to nullity claims might in fact be the best way forward, but I do not think that this is in store.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 1ère section, March 16, 2017, Actelion Pharmaceuticals Ltd. & Actelion Pharmaceuticals France v. Icos Corporation, RG No. 15/07920.