Defense ripped to shreds

Today’s case relates to a shredder for plant materials. And while I was browsing online desperately looking for some kind of introductory witticism for this post, I came across a fiction character called the Shredder, to whom a very detailed Wikipedia page is dedicated. It turns out the Shredder is a villain in the Teenage Mutant Ninja Turtles comics – which I must confess I really do not know anything about.

It is actually fascinating to find out that the Shredder’s webpage is significantly longer than the Wikipedia page on, say, the European Patent Convention. Just to put things into perspective.

So back to what I might indeed attempt to comment on, i.e. a dispute between Société d’Equipements pour l’Environnement (or SEE), owner of a French patent No. FR 2795661 and a European patent No. EP 1066883 (EP’883 claiming the priority of FR’661), and Rabaud, against which the two patents were asserted.

There are at least four different points which are of interest in the judgment handed down by the Cour d’appel de Paris on this case:

  • The invalidation of several claims of FR’661 for insufficiency of disclosure.
  • The finding that Rabaud’s shredder called Xylomix infringes the French part of claim 1 of EP’883 by equivalence.
  • An additional finding of contributory infringement.
  • The rejection of a false marking claim.

Let’s have a look at the invalidity issue first. Claim 1 of the priority patent FR’661 is quite different from claim 1 of the subsequent patent EP’883, which is why this invalidity issue only applies to the former.

Claim 1 of FR’661 concerns a shredder having a shredding rotor, wherein, in particular, “the rotor is suitable for creating an air flow for ejecting matter towards the ejection zone“.

The court noted that the claim does not define how the air flow is created, and that the description of the patent is also silent on this. Specific features seem to be present in the drawings, but without any explanation:

[….] The drawings do not make it possible for the skilled person to understand what the means for creating the air flow in claim 1 is, since the inverted S-shaped line which can be seen on Figures 2 to 4 and the inverted S-shaped double line which can be seen on Figure 6 are not captioned, unlike the other elements making up the rotor, and do not make it possible to interpret claim 1 in such a way that the means is made of ventilation blades. 

[…] In fact, on the other hand, this ventilation means is precisely described in claim 1 of [EP’883], at [paragraphs] [0033] to [0035] of the description, and is captioned in Figures 2 to 4 and 6 (with reference 16) and reproduced in three-dimensional view on Figure 7, which implies that without this description of the means for creating the air flow, the skilled person was not able to implement the invention simply based on common general knowledge. 

A finding of insufficiency of disclosure is not a common thing. And when this finding is in the mechanical field, it is all the more uncommon. Even if the ventilation blades were not mentioned in FR’661, it may not be too difficult for the skilled person to think of such blades as a possible means for generating an air flow. So, was there something specific about the shape or positioning of the ventilation blades which was not obvious to achieve for the skilled person?

The judgment does not tell. But clearly the more detailed explanations in the European patent were held against the French patent. So, drafters had better be careful about leaving claimed functional features unexplained in the description.

See how easy it is to create an air flow?
See how easy it is to create an air flow?

After invalidating claim 1 of the French patent (as well as all other dependent claims asserted by SEE, for the same reason), the court turned to the European patent. Apparently no invalidity defense was raised by Rabaud, which was of course of a great help to the patent proprietor.

Rabaud focused on a non-infringement defense. 

Claim 1 of EP’883 reads as follows (adding the same feature analysis taken up by the court):

a. A shredder, more particularly intended for reducing plants or other materials,

b. comprising a feeding section

c. and an ejection section,

d. between which is arranged a chamber provided with shredding means

e. which consist of a rotor including specific tools depending on the type of plants or materials to be shredded, in alternating positions,

f. i.e.: cutting tools intended for shredding a type of plants,

g. and defibring and bursting tools intended for shredding other types of hard plants or materials,

characterized in that,

h. on the same rotor are also positioned ventilation means, positioned with respect to said cutting tools, so as to define the gauge of the chunks of plants or other materials cut by said cutting tools, allowing the discharge of the shredded plants and other materials out of said chamber,

and in that,

i. in said shredder, said cutting tools, said defibring and bursting tools and said ventilation means are positioned with respect to each other, depending on the direction of the rotor rotation, so as to successively allow the defibring or the bursting operation, the definition of the gauge of the chunks to be cut, the cutting and the discharge of the shredded plants or other materials, 

j. so as to serve as a multipurpose active drum. 

The defendant argued that features h. and i. were not reproduced by the Xylomix apparatus.

Regarding feature i., Rabaud argued that Xylomix’ flails (defibring and bursting tools) do not act on the plant materials before its knives (cutting tools), whereas such a particular order of operation is required by claim 1. But the court was not convinced, especially because they said the order of operation is defined more particularly in a dependent claim 6, so that claim 1 is broader.

The judgment does not specifically address the word “successively” in feature i., which may support Rabaud’s defense. My understanding is that the court interpreted this adverb as simply introducing the various operations, as opposed to requiring a certain order between them. Such interpretation may be debatable. Also, depending claim 6 further specifies driving sections for the flails and knives and does not just add an order of operation to what is recited in claim 1.

As for feature h., the infringement theory was based on equivalence. As a reminder, under French practice and as recalled in the judgment itself:

Two means are held equivalent when, although they are of a different structure, they have the same function for achieving a result of a similar nature or degree. 

In the Xylomix apparatus, the gauge is obtained by way of dedicated metal sheets and not by the ventilation means as required by feature h. Nevertheless, the court acknowledged that the gauge function is achieved in the Xylomix apparatus like in the patent and that the result is of a similar nature. Therefore, there was infringement by equivalence.

One effective defense against the doctrine of equivalence generally consists in arguing that the doctrine does not apply because the claimed function is known from the prior art. But in this case it seems that the defendant did not rely on any prior art at all, which is why the court did not have to examine this particular aspect.

The third interesting point in the judgment relates to contributory infringement. In addition to Xylomix devices having both flails and knives, which were found to be a direct infringement of the patent, Rabaud also marketed “simple” Xylomix devices, with only knives or only flails. Also these simple devices were held to infringe under article L. 613-4 Code de la propriété intellectuelle. Said the court:

[…] The Xylomix shredder brochure intended for Rabaud’s customers, which was seized during the infringement seizure, highlights that it is possible with one rotor to rapidly transition between knives, flails or dual mode, and that the rotor, pictured as “3 in 1” is the only one “capable of addressing all market needs”. 

As rightly noted by the first instance judges, the user who bought a shredder having a “simple” rotor can then buy knives or flails, which are sold separately from the shredder, so as to make it work in a dual mode and thus implement the patented invention without having a right to do so. 

What I think is the most interesting question though is whether all simple rotor sales will be taken into account in the assessment of damages, or only a fraction of those. But this question has been left unanswered so far as the court did not rule on damages, an expertise being ongoing in parallel.

Fourth, and last, false marking. SEE claimed that, in addition to patent infringement, Rabaud was also guilty of unfair competition, due to various mentions in their commercial brochures dating back to 2011. One mention in particular was that Xylomix was “patented“, which was in fact not the case. The first instance judgment sided with SEE on this question, but the Cour d’appel reversed this part of the judgment. The reversal was based on the fact that Rabaud had filed a French patent application in 2009 and then a European patent application in 2010. The French patent was granted in 2014.

The bottom line seems to be that it is OK to put the cart before the horse and refer to a “patented” device when in fact the patent is still pending. Not that I would recommend doing so, though.


CASE REFERENCE: Cour d’appel de Paris, Pôle 5, chambre 1, May 17, 2016, Rabaud v. Société d’Equipements pour l’Environnement, RG No.14/10335.

An uplifting patent

It seems that we will not be getting any UPC case law to comment on any time soon after all… In fact, some in the European IP profession have expressed quite a bit of distress at last week’s political upheaval. So I thought that today’s post had better be uplifting in order to curb current gloominess.

Unfortunately all that I have been able to find in terms of uplifting is… a patent case related to a lifting platform. Well, at least that’s something, isn’t it?

So, cheer up and back to good old national case law!

There are two different aspects which may be of some interest in today’s decision. One relates to patent substitution, and the other one relates to public prior use.

But first things first with the basic facts of the case.

FOG Automotive Distribution is the owner of a French patent No. FR 2896785 and of a corresponding European patent No. EP 1813568, claiming the priority of the French one. Or rather, was, as the company was liquidated during the litigation, its interests being then represented by the liquidator.

FOG sued three interrelated companies Launch France, Launch
Europe GMBH and Launch Tech, for, ahem, “launching” lifting platforms infringing the patent.

At first instance, the Paris Tribunal de grande instance (TGI) held that the French patent had ceased to be in force but that the French part of the European patent was indeed valid and infringed.

On May 27, 2016, the Cour d’appel confirmed most of this ruling and put an end to the case by directly awarding the liquidator a (relatively modest) amount of damages.

As I explained in a previous post, a European patent is said to substitute for a French patent, when both patents have three elements in common:

  • Same inventor(s).
  • Same filing or priority date.
  • Same invention.

By way of analogy with the assessment of a priority claim, the most frequent issue is whether both patents actually relate to “the same invention“. In order to properly answer the question, you need to look at the claims and more particularly the main claims of both patents.

In this case, claim 1 of the French patent reads as follows:

Lifting platform, in particular for a motor vehicle, comprising at least one column (1), at least one carriage (2) which is movable along the at least one column (1), and designed to support the motor vehicle or part of the latter directly or by means of a support element, and means forming a locking/unlocking lock designed to lock in a given position the said at least one carriage or allow it to be movable along the column, the locking/unlocking means consisting of a rail comprising a plurality of slots (6) and means forming a locking/unlocking (20) catch, characterised in that along the at least one column there are at least two catches (20, 40) spaced apart from one another in respect of their height, the height dimension of the rail being approximately equal to the distance between the at least two catches (20, 40).

Claim 1 of the European patent is identical but for the last underlined part, which reads as follows: “the height dimension of the rail being lower than the height of the catch (40) furthest from the base of the at least two catches“. 

The court held:

[…] The European patent was more specific than the French patent claim. The latter only specified approximately equal heights, while the European patent was more specific by indicating a height dimension for the rail which is lower than the height of the catch. […] Therefore, the first instance judges rightly held that FOG’s claims relating to the French patent are inadmissible due to the grant of the European patent on the same invention which results in the French patent no longer being in force. 

I think the conclusion is correct but the reasoning is not very accurate. Indeed, unless I missed something, I think it is the European claim which is broader than the French claim and not the other way around.

The European claim merely recites a maximum value for the height dimension of the rail, whereas the French claim demands that the height dimension be approximately equal to a certain value. Therefore, it certainly makes sense for the European patent to fully substitute for the French patent. The most usual situation is for a European patent to be more restricted than the French priority patent. In this case, part of the broader French patent survives the substitution. But the present situation is different.

Another form of platform: a platform shoe with a storage compartment. The application suggests to use this compartment for "keys, driver’s license, money, and other small but necessary articles".
Another form of platform: a platform shoe with a storage compartment. The application conveniently suggests to use this compartment for “keys, driver’s license, money, and other small but necessary articles”.

The second point of interest in the decision is the novelty challenge raised by the appellant, which was based on an alleged public prior use. Launch Tech first argued that they had publicly presented several lifting platforms to the public before the priority date of January 27, 2006: some at a fair in Frankfurt in September 2004 and others at the Equip’auto fair of October 2005.

As evidence, Launch offered photographs of the equipment presented at the fairs. Those were however quickly dismissed by the court, since their date was not proven.

Then Launch made reference to a lifting platform referenced as TLTE 240SBA and delivered to a workshop in Dillenburg, Germany.

Launch filed a report written by a patent attorney. The patent attorney stated that he went to the workshop and took pictures of the platform. He noted the presence of a metal plate under the platform bearing the reference number TLTE 240SBA, the manufacturing date “2005/08” and the name and address of Launch Tech.

The court noted:

[…] He indicates that the information was engraved on the plate which was connected to the column and adds: “at first sight this is the original plate i.e. I do not think that it was replaced by another plate”. This indication is obviously an impression reported by Mr. T. which cannot prove the date of the lifting platform at stake and does not make it possible to retain it as prior art. 

Still concerning this lifting platform in the Dillenburg workshop, the alleged infringer also filed an affidavit by one of its technicians. The technician stated that he remembered delivering and putting the machine into service in December 2005. A copy of the corresponding intervention request was annexed to the affidavit.

Again, the court rejected the evidence.

First, the court noted a discrepancy between the platform reference number in the document in annex (TLTE 40SBA) and the actual platform reference number (TLTE 240SBA). An explanation for the discrepancy, though: the first number was an abbreviation for the second number, the missing figure 2 simply meaning a platform with two columns.

Second, the court more generally put the credibility of the witness into question:

[…] Nevertheless this affidavit was drafted by an employee of Launch Tech; and it is also questionable because, although Launch Tech markets different types of materials and lifting platforms, he stated that he remembered the serial number of a platform sold in 2005 when he wrote the affidavit on May 2, 2014. 

As a final remark on this issue, the court blamed the appellant with simply stating that the claims of the European patent were anticipated by its platforms TLTE 232SBA, TLTE 240SBA, TLT 235SBA and TLT 235SCA, without explaining the differences between the models and without describing their specific features (including the catches).

Consequently, the novelty challenge failed. So did the inventive step challenge. And the appeal judges also confirmed the first instance finding of literal infringement based on a bailiff’s saisie report of October 2011.

Interestingly, the infringing platforms bore the reference numbers TLTE 32SBA and TLTE 40SBA, i.e. similar references to those used in the unsuccessful public prior use defense. So at least the fact that the alleged prior use apparatuses had all claimed features appears relatively credible – although it can always be theoretically contemplated that the design of a device with a certain reference number can change over time.

In summary, the demonstration of public prior use in this country requires a high burden of proof – as in “Everest high” – just like at the EPO, although we do not use the warlike expression “up to the hilt”. 

On the one hand it is certainly very reasonable to demand absolute certainty when the patent proprietor has no personal knowledge of the alleged prior use and no access to the relevant evidence.

But on the other hand, this situation can also be quite frustrating for a nullity plaintiff (or similarly for an opponent at the EPO). You sometimes get the feeling that actual public prior uses are impossible to rely on in practice because there will never be enough records from that time and because every document or affidavit can be criticized one way or another as being incomplete or doubtful.

How a more fair balance could be reached is a tricky question. Maybe through greater resort to depositions of witnesses under oath?


CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 2, May 27, 2016, Launch Tech Company Ltd. v. FOG Automotive Distribution, RG No. 14/02829.

Invalidity swept under the rug

Self-represented applicants, who draft and prosecute their patent applications on their own without an extensive knowledge of patent law have a good chance of getting a French national patent granted – this is in fact not an extremely difficult task. But they also run a very high risk of getting an invalid patent granted.

One of my previous posts was dedicated to the revocation of what looked like one such patent, and today’s post is dedicated to the revocation of another one of those.

French patent No. FR 2933591 contains four claims, the first one of which reads as follows:

1. A set for praying comprising a rug, characterized in that it comprises weights at its four ends. They are made of metal or lead and are in the form of beads, or round or angular parts. The set is folded and put in a pouch. 

The three dependent claims are drafted in a similarly non-conventional manner:

2. A rug according to claim 1 characterized in that it is made of a waterproof material covered on the lower side with a silver or gold coating [I am not sure about the meaning of the French term used here] on its back. 

3. A rug according to claim 1 characterized in that it is made [sic] of a drawing indicating the direction of the prayer. 

4. A pouch according to claim 1 characterized in that it comprises adjusting seams in order to keep the rug folded. 

Globacom SARL is a company which markets Islamic products online, including prayer rugs. Globacom was sued for infringement of the above patent by the patent owner, Salmane SAS, as well as the inventor – who was the original applicant.

Globacom counterclaimed for revocation of the patent.

Their first argument was lack of novelty over an alleged public prior use of the invention. The court dismissed this argument which was insufficiently substantiated. Reference was made to a number of websites, but the contents of these websites were not submitted to the court, and the only examples actually filed did not clearly predate the filing date. Globacom also relied on prayer rugs advertised in catalogues, but these catalogues did not contain any precise description of the rugs. Lastly, Globacom mentioned the inventor’s own press releases. But the court could not identify any evidence of a disclosure before the filing date. There was a relevant publication in the issue of September 2008 of a magazine, but this was precisely the month in which the patent was filed, and the exact day on which the magazine was published was not known.

Then the defendant raised an argument of lack of inventive step, which was successful.

Unfortunately, the court did not cite in its decision specific prior art for all the claimed features. I can only assume that such specific prior art was indeed identified in the defendant’s submissions – to which the court referred to in the judgment.

The court held that

The folding, the waterproof material, the silver or gold coating and the presence of weights in order to keep the rug on the floor are indeed known functional parts. 

Besides, the folding and the drawing indicating the direction of Mecca are features introduced before the patent, as evidenced by catalogues of the Chinese company Huitai Carpet showing that as from 2005 a foldable prayer rug kept in a pouch was marketed notably under reference BT317 or BT301. 

Finally, when reading the patent it does not appear that the inventor brought any solution to a technical problem, except for transporting the rug so as to use it in any circumstance or place, which was already solved in the prior art by folding the rug and keeping it in a sleeve. 

Therefore the patent is a mere addition of juxtaposed functional means without any distinct result, so that the patent must be revoked for lack of inventive step. 

This is quite a change from the usual hyper-technical pharma or telecom cases.

The reference by the court to “juxtaposed functional means” is reminiscent of old, traditional French case law, which made a distinction between mere juxtapositions of features and combinations of features bringing a new technical effect (synergistic features if you will).

A more modern approach rather uses a reasoning akin to the EPO problem and solution approach. But this case was probably so simple that a problem and solution approach was not really necessary.

Besides, the patent itself does not contain any indication of a problem to be solved. The description is less than one page long and basically contains a copy-and-paste of the claims plus a couple of additional sentences.

So, what would have happened if the applicant had hired a professional to draft the patent application? Was there no possible patentable invention at all in this product? Could a better drafting have changed the situation? Difficult to say. Expert patent drafting is a necessary and insufficient condition for a valid patent.

As a last word on the case, Salmane SAS further argued infringement of a community design, which was also revoked by the court for lack of novelty. A copyright claim also failed as the originality of the work was not clearly defined by the plaintiff. And so did a passing-off claim.

This praying robot may be more of an invention than the foldable rug in suit.
This demo praying robot may a more sophisticated invention than the foldable rug in suit.

Some readers may wonder how on earth the foldable rug patent got to be granted by the French patent office in the first place. The answer is that the patent office is not supposed to perform an extensive screening process. It issues a search report and a written opinion, and then it is up to the applicant to decide what to do.

This does not necessarily do self-represented applicants a favor.

But for those who are fully aware of the specificity of French patent prosecution, going the national route can be really advantageous.

In fact, while everyone’s attention right now is focused on European patents with or without unitary effect, it should not be forgotten that national patents remain a valuable option.

Here is why, in my view:

  1. French patents are much easier to obtain than European patents. Applicants often have to deal with minor objections of e.g. lack of clarity. But as far as prior art objections are concerned, an application cannot be refused for lack of inventive step. It can only be refused in case there is lack of novelty, and actually only if the lack of novelty is “blatant” (i.e. there is no room for discussion).
  2. Accordingly, prosecution is much cheaper than for a European patent (even when taking into account the need for foreign applicants to provide a French translation).
  3. The lighter examination process also makes it possible for applicants to avoid making statements which could possibly constitute a form of estoppel.
  4. A search report and a written opinion (for information purposes only) either similar or exactly identical to those issued by the EPO are provided at a much lower cost.
  5. There is no pre-grant or post-grant opposition.
  6. After grant, the patent proprietor can file a limitation of the patent at any time. It is thus a possible strategy for a proprietor to get a patent granted in a form which they know is probably too broad, and then limit the patent at a later stage if and when enforcement of the patent is contemplated (or even after the patent has been asserted and subjected to an invalidity challenge).

For the sake of completeness, after this subjective list of pros, here is an equally subjective list of cons (leaving aside the scope of geographical coverage, which is an obvious point):

  1. Applicants have to take their full responsibilities when drafting and prosecuting a French patent application. They should not count on the patent office to make them amend the claims and they should not consider a patent grant as an indication that they have obtained the right scope of protection – as the case discussed above clearly shows.
  2. In terms of valuation, French patents may be perceived as weaker and thus less valuable than European patents. However, this approach is debatable; as explained above, to some extent French patents are stronger because they cannot be opposed, and they can be limited at any time if their initial scope of protection is too broad.
  3. It is not possible to enter French national phase via a PCT. Therefore, a French patent application needs to be filed either as a first filing or as a direct filing within one year from another, original filing. This is a huge handicap which puts our national patent market at a disadvantage with respect to other European countries such as Germany, where national phase entries are allowed. But that is the way it is.

In summary, I do not believe that French national patents should be considered as useless remains of the pre-EPC, pre-UPC world. Together with Unitary patents, opted-out European patents and non opted-out European patents, national patents are yet another valuable option in an ever more complex IP landscape, which requires flexible strategies… Provided that great care is brought to the drafting.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, March 25, 2016, Salmane SA v. Globacom SARL, RG No. 13/06836.

Wizard’s chess

Sometimes litigation can get as complex as a game of chess. Each move by one party triggers a responsive move by the other party. France offers a large number of pieces to chess players, with different possible judges and various procedural rules depending on the nature of the claim filed at each move. And since legal actions sometimes seem to get a life of their own independently of the parties who start them, wizard’s chess would in fact be a more accurate depiction: this is the Harry Potter version of the game where animated pieces fight for real on the chessboard.

Today’s decision is but one move in a wizard’s chess game. The ruling itself is relatively short although it tackles a couple of interesting points on the saisie-contrefaçon procedure. However, the overall context is quite complicated and by itself deserves a post to describe it.

In this game, the white team is SPX Flow Technology SAS (SPX) and the black one is Pierre Fabre Dermo Cosmétique (Pierre Fabre) – that’s because the whites are those which move first.

In 2009, Pierre Fabre hired SPX for developing a sterilization process for cosmetic products. This led to the sale of two sterilization installations by SPX to Pierre Fabre in 2011. The same year, Pierre Fabre filed a French patent application related to this sterilization technology. The patent was granted in 2013.

SPX was not too happy-happy about the patent and therefore filed a declaratory action for non-infringement on October 27, 2014 in front of the Paris Tribunal de grande instance (TGI), in order to be able to continue exploiting the sterilization technology and to sell sterilization equipment to other clients. Two months later, on December 23, 2014, they celebrated Christmas by filing an additional claim against Pierre Fabre for ownership of the patent.

The case management judge decided that the ownership claim should be decided on first, since depending on the outcome it might be useless to look at the non-infringement claim. After an oral hearing which took place on September 22, 2015, a first judgment was handed down on November 5, 2015, in which SPX’ claim for ownership was rejected. An appeal is apparently pending.

Meanwhile, on July 17, 2015, Pierre Fabre sent a cease and desist letter to Cosmetolab, one of SPX’s clients, which had bought a sterilization installation from them. It seems that Pierre Fabre had learned about SPX’ dealings with Cosmetolab in the course of the TGI lawsuit.

SPX immediately reacted to this letter by filing a disparagement claim in front of the Tribunal de commerce in Evreux (hometown to both SPX and Cosmetolab) on August 6, 2015, in urgency proceedings. Readers may want to refer to an earlier post in which I have presented some of the specifics of the French Tribunal de commerce and of its urgency proceedings – as opposed to the TGI to which we are more accustomed in patent matters. The judge in charge of urgency proceedings rejected SPX’ complaint. No appeal was filed.

The cease and desist letter was obviously only an initial skirmish in the next battle, since Pierre Fabre then filed a petition for three seizure (saisie-contrefaçon) orders on September 1, 2015. This is an ex parte motion filed in front of one of the judges on duty in the Paris TGI. The orders were granted – as is normally the case, and Pierre Fabre accordingly proceeded with seizures on September 9 and 10, 2015, not only at SPX’ but also at Cosmetolab’s as well as Agro Hall’s, the research center hosting Cosmetolab on a campus in Evreux.

In French patent law, a saisie-contrefaçon is a very usual mise en bouche – an appetizer before the meal consisting of the infringement lawsuit. In this case, since a declaratory action was already pending before the Paris TGI, the meal took the form of a counterclaim for infringement on October 7, 2015.

In the meantime, further urgency proceedings were started by SPX against Pierre Fabre so as to protect some confidential documents seized at Agro Hall’s. However, the parties found a procedural agreement to move this part of the dispute to the main non-infringement case.

Finally (for now!), SPX filed a motion for cancellation of the three seizure orders on October 22, 2015. Cosmetolab and Agro Hall intervened. And this gave rise to the decision that I wanted to talk about today – which obviously plays a relatively minor part in the overall game: namely the order by a (single) judge from the Paris TGI ruling on the motion for cancellation.

Don't be mistaken, wizard's chess is in fact no child's play.
Don’t be mistaken, wizard’s chess is in fact no child’s play.

The argumentation by SPX et al. for canceling the orders was twofold: Pierre Fabre was not entitled to file a petition for these orders, and they had acted in bad faith.

The judge nicely summarized the legal criteria to be applied:

The purpose of the motion for cancellation is to reintroduce the adversarial principle into ex parte proceedings […]; if the petition [for seizure] was granted, those concerned may refer to the judge who issued the order. 

On this occasion, the judge who authorized the seizure hears observations from the seized party or other concerned third party if the seizure did not take place in the premises of the alleged infringers, and he/she examines whether, on the day the seizure was authorized and in view of the explanations and evidence provided by those who request the cancellation, he/she would have issued the same decision, would have limited it or would not have issued it at all. 

The first argument in support of the cancellation claim is probably the most interesting one. Any patent proprietor is entitled to file a petition for a seizure based on its patent. But in this case, a claim for ownership of the patent was pending on the day the petition for seizure was filed. Did this make Pierre Fabre’s petition illegal, as there was a doubt or at least a challenge as to whether Pierre Fabre was the rightful patent proprietor? No said the judge, because Pierre Fabre was the actual owner of the IP at the time the petition was filed, and this is all that matters:

They who petition for a saisie-contrefaçon, in order to demonstrate that their petition is admissible, must file: 

– a copy of the patent at stake,

– a copy of the status of the renewal fees, 

– an extract from the national patent register showing that the petitioner is the patent proprietor as registered. 

In the present case, it is not challenged that [Pierre Fabre] filed such evidence with the judge who authorized the three seizures. 

Although the ownership of the rights was challenged in front of the court in the context of the ownership claim filed by [SPX], on the day the petition was filed [Pierre Fabre] was the owner of the [patent] and was entitled to file such a petition. 

The above quote confirms that it is pretty easy indeed to get a saisie-contrefaçon in France -this is clearly one of the strongest advantages of local practice for patentees.

The second point in SPX and its partners’ argumentation focused on Pierre Fabre’s alleged bad faith. The point was developed in two parts: Pierre Fabre was disloyal because they hid information from the judge in charge of granting the seizure orders; and they distorted the seizure procedure as they were actually looking for other evidence than that needed to prove their infringement case.

There has been a trend in recent case law to cancel orders for seizures when judges felt they had been fooled by bad faith litigants. SPX et al. attempted to follow the trend – but this time to no avail.

The timing of the petition filed by Pierre Fabre was admittedly rather remarkable: the eve of the pleadings of the ownership part of the case. SPX said the petition did not mention that this oral hearing was about to take place. The judge replied that this was not an issue, as the various pending legal proceedings were mentioned in the petition, and practically speaking the judge who issued the orders for seizure was also the chair of the court dealing with the ownership and infringement case, so that she was well aware of the timing.

Regarding the alleged distortion of the seizure procedure, SPX et al. argued that Pierre Fabre’s true agenda was not to find evidence of patent infringement but rather to intimidate Agro Hall so as to stop the business deal with SPX, and also to interfere with the then pending disparagement lawsuit in Evreux.

Well, let’s face it, although the official purpose of a saisie-contrefaçon is to find and preserve evidence of infringement of an IP right, intimidation is often part of the reasons why a saisie is performed. But this is also true of legal actions in general. In this case, the judge was not convinced that intimidation or interference with other legal proceedings were Pierre Fabre’s actual motives:

[…] [Pierre Fabre] filed […] an infringement counterclaim within the statutory time limit against [SPX], Cosmetolab and Agro Hall, which shows that their intention was really to sue the plaintiffs of the declaratory action. 

No disloyalty has been demonstrated, for the letter of July 17, 2015 is mentioned in the petition as a cease and desist letter to Cosmetolab, and a seizure was subsequently requested against this company. 

Finally and above all, the president of the Evreux Tribunal de Commerce has [already] issued the judgment against which no appeal was filed, so that the evidence collected during the seizures was not used in those proceedings. 

The orders for seizures were therefore not cancelled, and we can thus wait for the next move from one side or the other.

My guess is that the rest of the case will drag on for a very long time. The situation is quite interesting because:

  • On the one hand, the French patent has an equivalent pending at the EPO (with two divisional applications already filed). Now, in such a case, the court must stay the infringement proceedings (article L. 614-15 Code de la propriété intellectuelle) until the European patent is granted and substitutes for the French patent, or until the European application is refused, withdrawn or deemed withdrawn, or until the European patent is revoked. So this can take forever (especially if the divisional applications also need to be taken into account, which is an interesting legal question).
  • But on the other hand, examination proceedings at the EPO were suspended as from January 29, 2015 due to the pending ownership lawsuit.

At the present time, and pending resumption of the examination proceedings at the EPO, this looks like stalemate!


CASE REFERENCE: Tribunal de grande instance de Paris, ordonnance de référé-rétractation, 3ème chambre 1ère section, February 11, 2016, SPX Flow Technology et al. v. Pierre Fabre Dermo Cosmétique, RG No. 15/15073.

In the patentee’s shoes

It is not always easy to be in the patentee’s shoes – as today’s decision will confirm again. In fact, patent proprietors and alleged infringers are not on a equal footing, since the latter need only prevail on one defense, while the former must thwart all possible challenges in order to win the case. And this is all the more difficult when the patent gets off on the wrong foot at the examination stage.

As readers may have guessed based on the lexical field of the first paragraph of this post, today’s decision is concerned with the footwear industry.

French company Exten.S owns European patent No. EP 1383402 directed to a sole for a shoe. Together with its exclusive licensee Eram (a well-known shoe distributor), Exten.S sued a Spanish company called Calzados Hergar for infringement of the patent in France.

On November 25, 2008, the Paris Tribunal de grande instance (TGI) revoked claims 1 to 4 of the French part of the European patent – as requested in the defendant’s counterclaim. The judgment was confirmed by the Cour d’appel on October 27, 2010. An appeal on a point a law was submitted to the Cour de cassation, and on January 31, 2012 the court set aside the appeal judgment. The patentee waited almost two years before reinstating the case in front of the Cour d’appel, which finally leads us to the judgment discussed today, which is dated April 8, 2016.

So this is a long story which could probably have been much shorter. Indeed:

  • The TGI originally revoked claims 1 to 4 due to extension of subject-matter.
  • The Cour d’appel fully agreed in 2010.
  • The Cour d’appel still fully agreed in 2016.

In the meantime, Exten.S and Eram regained hope with the 2012 ruling of the Cour de cassation. However, the first appeal judgment was set aside on purely procedural grounds. It turns out that some exhibits filed by the claimants had been discarded by the court (because they were in a foreign language), although they should not have, said the supreme court, because partial translations were in fact provided. So, the supreme court did not look at the merits of the case, which is why it was relatively straightforward for the Cour d’appel to copy and paste its first judgment upon remittal…

Let’s now examine why the subject-matter of the patent was found to have been extended in an unallowable manner relative to the contents of the application as filed.

According to the introduction of the patent, the invention relates to a sole of a shoe making it possible for different foot widths to be fitted easily. Usually shoes are manufactured with a width chosen by the manufacturer, which does not vary as a function of the width of the wearer’s foot. It is also known how to adapt to several foot widths by manufacturing an upper part in elastic material, but without being able to enlarge the lower part in contact with the sole. The purpose of the invention was to remedy these disadvantages.

Claims 1 and 2 of the (PCT) application as filed accordingly read as follows:

1. Extensible sole for shoes of the type where the rigid sole base is glued onto the edges of the upper, characterized in that said base is glued or molded on an insert, which is transversally mounted in an extensible manner, between the gluing zones of said base and said upper.

2. Extensible shoe according to claim 1, characterized in that it comprises at least one insert provided with protrusions in its lower surface, produced by molding a shape memory extensible material glued or injection welded on a rigid sole base, the forepart of which is provided with openings wherein protrusions are embedded, in a sealed way.

One half shoe, one quarter fur coat and one quarter Peruvian hat make a great invention.

One half shoe, one quarter fur coat and one quarter Peruvian hat make a great invention.

Claim 1 as granted was more or less obtained by combining original claims 1 and 2 – the important part of the sentence being of course “more or less“:

1. Extensible sole for shoes of the type where the rigid sole base is glued onto the edges of the upper, characterized in that said base comprises an insert, transversally extensible and provided with one or several protrusions in its lower surface, said insert being produced by molding a shape memory material and being glued or injection welded on said base, the forepart of said base being provided with one or several openings, wherein the protrusion or protrusions are embedded, in a sealed way.

The original wording of openings (plural) and protrusions (plural) was replaced by a broader language encompassing also a single opening and a single protrusion. Sadly for Exten.S, the court deemed that there was no support in the application as filed for such a broadening:

In the description of the PCT application […] it is recited, in relation with the base of the sole, “openings” (p.1 l.25), “the openings” (p.2 l.29 and 36 and p.3 l.1) and “openings” in claim 2. […] Claim 2 […] teaches the presence of openings in which the protrusions are embedded in a sealed way. Figures 1, 3 and 4 of this PCT application show several openings (reference 4), actually five, on the base of the sole, which match the number of protrusions. 

There was only one hint at a single opening in the text but it was considered to relate to a different embodiment:

[…] Although according to p.1 l.24 to p.2 l.1, “the deformable part of the forepart can be obtained by producing one or several longitudinal openings”, this passage relates to “other embodiments”, which is not challenged. Therefore, neither the description nor the claims or drawings of the PCT application mention the presence of a single opening in the base of the sole. 

It would probably have been useful to explain in the reasons for the decision why the context of this sentence was different from the context of granted claim 1, so that no generalization to one or several openings could be allowed – beyond the note on the wording “other embodiments” which can mean several things.

When briefly reviewing the PCT application, it did not immediately strike me why there should be an incompatibility between the option of the single opening and the other features of claim 1 as granted. But a more thorough review could lead to a different conclusion.

Another interesting line of defense based on implicit disclosure was brought up by the patentee and the licensee, also to no avail:

The appellants cannot claim that, since the protrusions cooperate with the openings, a single opening in the forepart of the base of the sole is implicitly disclosed, in view of a single passage of the description of the PCT application (p.1 l.19) per which “this extensible insert is flat on the upper face and provided with one or several protrusions on the lower face. These protrusions are intended to be set countersunk in the base of the sole”. Indeed, as already stated, the PCT application only discloses the presence of several openings and anyway the respondent rightly notes that the presence of a single protrusion in the insert does not necessarily imply the presence of a single opening in the base of the sole. 

This is tough, but very much in line with the criterion of direct and unambiguous disclosure applied at the EPO. If one protrusion does not necessarily equate with one opening, then there is insufficient support in the original PCT application for claim 1 as granted. Even though it might be obvious for the skilled person to come up with the idea of “one opening“, obviousness or equivalents should not come into play in this analysis.

Finally, another ground of extension of subject-matter was entertained by the court, which I have to say is more difficult to understand:

It should additionally be noted that, according to claim 1 of the PCT application, the base of the sole is glued or molded on an insert, but this feature cannot be found in claim 1 of the patent in suit as granted […] according to which, to the contrary, “said insert […] is glued or injection welded on said base” and the insert “is […] mounted between the gluing zones of said base and said upper”.

Basically this is a case of impermissible deletion of an essential feature. But it is stated in a confusing way in the ruling. My two cents is that the deletion of the term “glued or molded” is not really objectionable as claim 1 still requires that the insert be glued or injection welded on the base. And in fact this wording is from original claim 2 and thus seems to correspond to a particular embodiment of the “glued or molded” general statement in original claim 1.

On the other hand, there may indeed be an issue because the feature “mounted between the gluing zones of said base and said upper” no longer appears in claim 1 as granted – although, again, the ruling is not crystal clear in this respect.

All in all, the present decision, which fully confirms two previous similar decisions on the same patent, comes as a further reminder (if needed) that French courts tend to be very strict nowadays in their appraisal of extension of subject-matter: see other examples here, here and there.

The EPO has had the reputation of being the toughest forum for the appraisal of added matter, but there now seems to be some competition in France.


CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 2, April 8, 2016, Exten.S & Eram v. Calzados Hergar, RG. No. 14/00580.