The duty to remain silent

Design rights. A mysterious territory for patent folks like me.

There is this irrational fear that I would completely lose my bearings without any technical feature and interminable claim verbiage to hang on to.

So coming across a design right judgment is always intimidating. And actually contemplating commenting on it on this blog even more so. But today’s ruling is a special case. Indeed, the focus is not on design rights per se but rather on a transversal aspect of IP law which is equally of interest to patent practitioners.

Here is the context.

Israeli company Keter Plastic was the owner of community designs. In August 2012, it filed a complaint for infringement of these designs in front of the Paris tribunal de grande instance (TGI) against Italian company Shaf, specialized in garden furniture.

In June 2013, the Paris TGI dismissed the infringement complaint. This was confirmed on appeal in January 2015.

In parallel, another litigation started in February 2013, this time initiated by the initial defendant Shaf. Shaf sued Plicosa France, which is Keter Plastic’s distributor in France, for disparagement. The complaint was initially filed in front of the Bobigny Tribunal de commerce, but the case was later transferred to the Paris TGI as it was related to the initial infringement case.

In October 2014, the Paris TGI ruled in favor of Shaf and issued a severe damages award of 950,000 euros. The Paris Cour d’appel overturned this verdict in January 2017 and canceled the damages award.

Shaf filed an appeal on points of law in front of the Cour de cassation, which leads us to the present ruling of January 9, 2019.

Interestingly, the Cour de cassation vacated the appeal 2017 judgment and remitted the case back to the Paris Cour d’appel.

That was for the history of the case. Let’s now move on to the facts underlying the disparagement case.

The issue at stake is that, in August 2012, just after the infringement proceedings against Shaf were initiated by Keter Plastic, its French distributor Plicosa France communicated with a number of Shaf’s distributors (such as Leroy Merlin) to let them know about the infringement proceedings. Some of them stopped working with Shaf.

In the 2017 appeal judgment, the court analyzed in detail the evidence at hand, namely a number of messages received by Shaf from its distributors, in which they expressed concerns regarding infringement exposure. The court held that some of the messages were not specific enough to conclude that they had learned about the alleged infringement from Plicosa itself.

Other messages were definitely more specific and proved the existence of some actual communication from Plicosa. See for instance the following excerpt of email from Leroy Merlin:

We were informed on August 29 by Plicosa that Keter initiated legal proceedings against your company due to “copying their design and patent rights”. […] Since the action is still pending and since we received information on a risk of infringement, we are sorry that we will now not be in a position to list the Diva product […] in 2013. Our forecasts of orders to be validated concerning 15,000 sets are thus void. Our decision is solely motivated by Keter’s action. 

However, the court decided that there was no demonstration that Plicosa’s communication lacked objectivity, was excessive or disparaging.

Therefore, the existence of acts of unfair competition was not demonstrated.

But the appeal judges erred in reaching this conclusion, according to the Cour de cassation.

The reason for this fits in a single paragraph (the cassation judges not being a loquacious crowd by any standard):

[…] Since Plicosa disclosed an infringement action which had not led to any judgment to customers, without any sufficient factual basis because they only relied on the sole complaint filed by the rights holder, this disclosure represented blameworthy disparagement […]. 

As a result, Plicosa France is liable. The Cour d’appel will now have to determine whether Shaf suffered from any harm as a result of Plicosa’s acts. I think the answer is very likely to be positive, in view for instance of Leroy Merlin’s message quoted above. Then the main issue will be the assessment of damages. It remains to be seen whether the amount awarded in first instance (950,000 euros) will be equaled – or even exceeded.

Always tempting to speak up your mind, but sometimes you really shouldn’t.

This Shaf v. Plicosa France ruling is probably applicable by analogy to patent cases. In other terms, disclosing the existence of an infringement action to customers (or potential customers) of the alleged infringer before any court decision is issued is probably an act of unfair competition regardless of the possible objectivity and neutrality of said disclosure.

This is significant in the context of patent law because infringers that are not manufacturers or importers of the infringing goods are generally not liable for infringement until they are made aware of the infringement, usually by way of a warning letter.

Much caution should be exercised when drafting a warning letter and when deciding to whom it should be sent, as this prerogative can sometimes turn into an act of unfair competition. See this previous post by way of example.

Among the precautions to be taken, it is certainly wise not to refer to a pending lawsuit before a (final?) decision is issued. So, you may draw the attention of the third party to a certain patent right, but you may not state that this patent right was asserted against someone.

Now let me share a personal impression. In the case at hand, the main reason why Plicosa’s communication was indeed wrongful is that the infringement case was finally dismissed by the court. Retrospectively, it would probably look much less wrongful if Keter Plastic’s action had been successful.

So, on a purely practical standpoint, I wonder if it would be possible to consider that a party is liable for mentioning a pending lawsuit only if said lawsuit does not ultimately result in a finding of infringement. In other terms, parties would be free to take their responsibilities but would have to live with the consequences if they are too optimistic. Could a parallel be made with a right holder who may enforce a preliminary ruling at its own risks?

CASE REFERENCE: Cour de cassation, ch. com., January 9, 2019, Shaf v. Plicosa France, appeal No. 17-18350.

Extension of subject-matter and/or of scope

Every profession has its own telltale expressions.

Let’s say you meet someone at an event who tells you that they will have some cheese “and/or” a glass of red wine; I would bet that you are talking to a patent attorney. Well, especially so if the event is hosted by the CNCPI.

But, as fond as we may be of the “and/or” language, in some occasions it can come back to haunt us. Just ask Nice. Not the city, but an Italian company specialized in automatic doors or gates.

Nice owns European patent No. EP 1509823 directed to an electrical system for controlling a gate or door.

In 2010, Nice filed a complaint for infringement of this patent against FAAC France and FAAC Nord in front of the Paris Tribunal de grande instance (TGI). There are three independent claims 1 to 3 in the patent, the others being dependent claims. Nice initially asserted claims 3 to 23. The two other independent claims 1 and 2 were not at stake. The defendants counterclaimed for nullity.

The following year, as the first instance lawsuit was ongoing, a request for central limitation was filed at the EPO. As a result, a limited version of the patent (B3-1) was published in 2012.

Nevertheless, all asserted claims were held invalid by the Paris TGI in its 2014 judgment. Sadly, the decision does not seem to be readily available online, so I am not sure what ground for nullity was entertained by the first instance court.

Nice appealed and filed a second request for central limitation at the EPO in 2015.

As a result, a second limited version of the patent (B3-2) was published in 2016. This leads us to the recent judgment of the Paris Cour d’appel, which confirmed the invalidity of all asserted claims and in particular independent claim 3. The court held that the subject-matter of the claim extended beyond the contents of the application as filed and that the scope of protection had been extended after grant.

Who needs an automatic door control system when you can have a frog do the job.

Here is claim 3 of the patent as initially granted (B1 version of the patent):

Electrical system for controlling at least one gate or door or similar element of the type moved by means of at least one corresponding electric motor, comprising:
a) an electric network consisting of two electric wires adapted to allow distribution of power supply and digital information;
b) a central control unit having two terminals adapted to be connected respectively but indifferently to the two wires of the network in order to transmit direct-current power supply and to transmit and receive digital information;
c) one or more peripheral units, each having two terminals adapted to be connected respectively but indifferently to the two wires of the network in order to receive direct-current power supply and to receive and/or transmit digital information;
wherein the central unit is adapted to be electrically connected to an electric motor for controlling operation thereof and/or to a device for entering requests of movement of the gate or door or similar element and/or to a safety device for gates or doors or similar elements;
wherein a peripheral unit is adapted to be electrically connected to an electric motor for controlling operation thereof and/or to a device for entering requests of movement of the gate or door or similar element and/or to a safety device for gates or doors or similar elements.

The two last paragraphs of the claim are the important ones for the rest of the discussion. Note the four occurrences of “and/or“.

In the first limited version of the patent (B3-1), a number of features were added; and the two relevant paragraphs of claim 3 were modified as follows:

[…] wherein the central unit is adapted to be electrically connected to an electric motor for controlling operation thereof and to a device for entering requests of movement of the gate or door or to a safety device for gates or doors;
wherein a peripheral unit is adapted to be electrically connected to a safety device for gates or doors or to a device for entering requests of movement of the gate or door; […]

In the second limited version of the patent (B3-2), yet further features were added; and the two relevant paragraphs of claim 3 were modified as follows

[…] wherein the central unit is adapted to be electrically connected to the electric motor for controlling operation thereof and to a safety device for the gate or door;
wherein a peripheral unit is adapted to be electrically connected to a safety device for gates or doors or to a device for entering requests of movement of the gate or door; […]

Let’s turn to the appraisal of extension of subject-matter of the final version of the patent, namely B3-2.

In original claim 3 in the patent application as filed, the two relevant paragraphs were the same as in the B1 patent, namely:

[…] wherein the central unit is adapted to be electrically connected to an electric motor for controlling operation thereof and/or to a device for entering requests of movement of the gate or door or similar element and/or to a safety device for gates or doors or similar elements;
wherein a peripheral unit is adapted to be electrically connected to an electric motor for controlling operation thereof and/or to a device for entering requests of movement of the gate or door or similar element and/or to a safety device for gates or doors or similar elements.

“And/or” is usually taken to mean either “and”, or an exclusive “or”.  So, at first sight, one could think that claim 3 in B3-2 was obtained by simply deleting some options from original claim 3, without giving rise to any added matter concern. And one would be wrong, at least according to the Cour d’appel.

Indeed, the court did not simply rely on original claim 3 but turned to the description of the application in order to understand what the subject-matter of the invention, or more specifically of the “third embodiment” of the invention (corresponding to claim 3), actually is about.

The court held the following:

The invention relates to the use of an electric network made of only two electric wires for the entire system, which are designed so as to deliver DC current and numerical information, and so as not to impose constraints on the connection between system equipment and the network. 

This electrical system, intended to control at least a gate or door, must be connected to at least three main devices: 

– an electric motor which sets the gate in motion, 

– a device for entering requests of movement of the gate, 

– a safety device (for example based on a photoelectric cell).

According to the court, claim 3 as filed (or as granted) thus required the presence of all three devices – although they could be connected either to the central unit or a peripheral unit. This was not explicitly stated in claim 3, but the court held that this could be inferred from the description.

The court quoted in particular the following sentence, which is just before the presentation of the various embodiments in the application:

Such an electrical control system must be connected to at least three essential devices: an electric motor for moving the gate, a device for entering requests of movement of the gate (for example a key-operated selector, a command keypad, a remote control receiver, etc.), a safety device (for example a photocell system, a sensitive edges system, a mat presence detector, a radar presence detector, etc.).

The court also quoted the following characterization of the third embodiment:

In other words, according to this third embodiment, two of the essential devices are connected electrically directly to the central unit, while the third essential device is connected electrically to a peripheral unit.

In contrast, according to claim 3 of the B3-2 patent, the second device was mentioned only in connection with the peripheral unit, and not in connection with the central unit, and the mention in question was the following:

[…] wherein a peripheral unit is adapted to be electrically connected to a safety device for gates or doors or to a device for entering requests of movement of the gate or door; […]

Therefore, according to the amended claim, the device for entering requests of movement can be omitted altogether. This, the court said, is not supported by the application as filed.

Nice argued that, if the claimed peripheral unit is connected to a safety device, then the device for entering requests will be connected to yet another peripheral unit so that the system can work. But the court discarded the argument and said it was an inventive step-type of argument.

Thus, the court declared that the subject-matter of claim 3 extended beyond the content of the application as filed.

Furthermore, since the granted patent was similar to the application as filed and was thus interpreted by the court as not covering the option wherein the device for entering requests is absent from the system, the B3-2 limited patent was also found to suffer from extension of the scope of protection, since this limited patent no longer required the presence of the device for entering requests.

Once again, we are reminded that French courts have a tendency to extensively interpret claims (not just granted claims, but also original claims) in the light of the description.

How would the extension attack have flown with an opposition division at the EPO? I am quite sure that they would have focused more on the exact language used in original claim 3. That said, they could theoretically have reached the same conclusion as the French judges, for instance by noting that going from original claim 3 to amended claim 3 required multiple selections in the “and/or” options, and that there was no pointer to such a multiple selection (or combination of features).

In summary, “and/or” is nice and broad, but beware of what the teaching of the invention actually is.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, November 9, 2018, Nice v. FAAC France, RG No. 16/11888.

An exclusive interview – part 2

This is the second part of my interview of Ms. Marie-Christine Courboulay, former judge at the Paris Tribunal de grande instance (TGI), in charge of IP matters and especially patent litigation.

The first part of the interview can be found here.

In today’s part, Ms. Courboulay reflects on the strengths and weaknesses of the French judicial system. She explains how French judges interact with their foreign counterparts, and tells us about the role of case law – French case law, foreign case law, and most interestingly EPO case law, as the rift between the approach of the Boards of appeal and the approach of French courts has not really been reduced over the past few years. The interview would not be complete without some words on the UPC, and you will see that Ms. Courboulay is very optimistic regarding the attractiveness of the Paris local division of the court.

Again, a big thank-you to Ms. Courboulay for sharing her views on this blog.

Justice explained to all.

What do you see as the main strengths and weaknesses of the French judicial system, particularly regarding patents, compared to our European neighbors?

The French judicial system has several advantages, in the field of patents:

  • In the case of provisional measures, an adversarial decision can be issued in an extremely short amount of time, namely within a few days: for example summons may be authorized by a judge on Monday, the oral argument may be heard on Wednesday, and the decision issued on Friday. This is perfectly compliant with the standard set by the CJEU, which intends to favor the adversarial principle even at this stage.
  • Infringement seizure, which provides evidence of alleged infringement through an ex parte request. It should be mentioned that this is the only ex parte order for which the judge does not have to justify the reasons why the adversarial principle does not apply.
  • Judgments on the merits that are now issued within a timeframe which is comparable to those of other European courts which base their decisions on continental law and not on common law, and which rule both on the validity of the patent and on infringement, since there is no bifurcation in French law.
  • A single court (the Paris TGI and the Paris Cour d’appel) which therefore concentrates the entire litigation, so that the judges handle many patents and develop their expertise.

As for the weaknesses: the main one is the judges’ turnover, and sometimes their level of English proficiency.

Do French IP judges have regular exchanges with their counterparts in other European countries? What do they get out of these exchanges? Do they strive for harmonization with the practice of neighboring countries? If so, what are the limits of this desire for harmonization?

French judges have regular exchanges with their European and even American colleagues at European or international conferences, but also at workshops organized by the EPO or by the EUIPO on trademarks and designs.

These exchanges are important because they make it possible to understand how the same text (when it is a regulation) can be interpreted differently from one country to the next, to understand nuances or consequences evaluated one way or another, and why certain specificities are preserved, when a directive is transposed.

These exchanges make it possible to learn about solutions found by other judges based on a same text and / or a same case, and to discuss future developments or modifications to be considered in the different areas of IP.

There is indeed a desire to harmonize IP case law; it is mandatory in the trademark and design area, and by extension, it is sought in the patent area as well, even if this not legally required. This is less true of copyright, except in the case of private copying, which has been the subject of numerous decisions by the CJEU.

However, the decisions of the CJEU which are meant to ensure harmonization are read by all European judges and should also lead to harmonization, including for example concerning SPCs or FRAND licensing.

There is one limit which is the applicable national law, when there is a difference between a directive and its transposition law.

For instance, regarding infringement, the notion of good or bad faith was not incorporated into the French statute, whereas it exists in other European countries, where a bona fide infringer and a pirate are not handled in the same manner. The French judge cannot make any prima facie difference based on the notion of good faith, which should not be taken into account when it comes to infringement.

On the other hand, French judges, due to the harmonization desire, and after discussing with other European judges who regretted an excessive difference relative to other national rights, introduced the requirement for the person who requests an infringement seizure to provide a reasonably accessible beginning of proof. This is taken from the non-transposed part of the directive, but the judge may add a criterion for assessing the grant of the order, i.e. a condition which preserves equal rights before the court dealing with the merits, and which especially preserves the rights of the alleged infringer.

If the Code de la propriété intellectuelle provides that the infringement seizure is a right, it should be borne in mind that there is no absolute right, that this right is subject to the appreciation of a judge who must in his/her decision weigh the grounds on which the request is based, and those which could lead him/her to refuse the infringement seizure or to limit it in its scope. This is in view of a concern, acknowledged by the CJEU, of proportionality of the rights of litigants, which must more particularly be taken into account in ex parte proceedings that lead to a particularly intrusive measure before any judgment.

In the context of multinational patent litigation, how important are foreign decisions in the eyes of French judges?

I know that there was a time when French magistrates said that they were not bound by foreign decisions, and that they did not even read them.

But that time is over.

If it is true that we are not bound by the decision of a court of another member state in the procedural sense of the term. But, when a decision is issued in the same litigation by a foreign court and it is submitted to the court, it is part of the file wrapper. Decisions are read and analyzed, first to ensure that they indeed relate to the same dispute, and especially that the arguments under discussion are the same, which is not always the case. Second, if the grounds relied on are the same in the dispute between the same parties, the decision will be very carefully read to understand and analyze the reasoning followed by the foreign court, because in general the same causes lead to the same legal grounds, which lead to the same consequences.

I would say that the judge will determine whether he/she is convinced by the reasoning of his/her colleague. At any rate, as far as I am concerned, these decisions are of a special importance, which is greater than that of a legal opinion for example, even if I also pay close attention to such opinions.

Or we can find food for thought in other decisions, and we can take a hold of criteria developed by another court or another office to assess the validity of an SPC for example, if these criteria appear to be relevant.

I would add that in case of a disagreement with the foreign court, it will be necessary to try to provide an even clearer and more precise reasoning, so that the parties can understand and follow the reasoning proposed by the French judges.

In fact, there may be disagreements of analysis and interpretation with foreign colleagues which are similar to those which may exist with French colleagues.

How is the case law developed by the EPO boards of appeal on the validity of patents considered by French judges? In particular, French courts have sometimes explicitly discarded some decisions of the EPO’s Enlarged board of appeal (for example on computer programs, or on claims to dosage regimens). Some observers were surprised at such differences in practice between Munich and Paris, which do not seem to be found to the same extent in other European countries. Is there a French distinctive identity in this respect?

The case law of the boards of appeal and of the Enlarged board of appeal are known to the 3rd chamber and to the Cour de Cassation, that expressly referred to it in its judgment of December 6, 2017. But they come from an office and not from a court; they do not have the same value for French judges as judgments from another court.

The other point is that the boards of appeal of the EPO have a tendency to interpret the texts on which they base their decisions in an extremely extensive manner. They try to grant patents (which is their primary objective and the source of their financing) even when the conditions are not met.

This is the reason why the European Commission has taken up the subject in the broccoli cases, or why the Paris Cour d’appel has referred a preliminary question to the CJEU as to whether a new molecule already known for an already known treatment could be considered as a second therapeutic application.

Lastly, German judges who are presented with an action for nullity of a patent must stay the proceedings as long as the decision by the EPO on the patent is final, which is not our case. This difference necessarily affects the influence of EPO decisions on French courts, as they will validate or revoke a patent without waiting for the EPO decision, when the patent is still under opposition.

So, I do not know if French judges are more reluctant than others to follow the decisions of the EPO boards of appeal, but they are in any case cautious about how they should be analyzed.

The French legal tradition differs from common law, which is centered on precedent. Apart from the main judgments of the Cour de cassation, do you think that there is a French patent case law which courts strive to follow? Or do the judgments of the TGI and of the Cour d’appel only represent specific decisions without any general influence on judges in other cases? Mention can be made for example of the different approaches which have recently been noted between the Paris TGI and Cour d’appel concerning the application of the statute of limitations to patent nullity suits.

There is no need for a tradition of precedent to create a consistent case law that attempts to develop a set of universally understandable enforcement rules. In France, the Cour de cassation carries out the necessary harmonization between the different courts and thus indicates the direction that future decisions will have to follow.

While of course each judgment is a case in point, it is clear that case law reveals major trends and defines interpretations of the legal bases proposed by the parties in their submissions.

Concerning the statute of limitations, the first instance court has proposed an interpretation of the rule which has not been followed by the Cour d’appel and it will be up to the Cour de cassation to provide the interpretative framework that the courts will have to follow.

So, as always, the rule and its interpretation will be general and elaborated by the Cour de cassation or the CJEU, which also provides an interpretative framework or “instructions for use” of a law, and which leaves it to national courts to apply the rule thus interpreted to the case at hand.

In your opinion, does patent law in its current state offer a satisfactory balance between the interests of right holders and third parties? Do you wish for some legislative changes, either in terms of substantive or procedural law?

I would say that there is a certain balance between right holders and third-party competitors as long as patents are not granted too loosely, and as long as they reward investments actually made for research and innovation by a 20-year monopoly, as the CJEU always reminds us. That’s why I’m not at all in favor of theories per which patents may have other purposes than the reward of an invention, notably a communication to the public when a particular product is advertised as being patented. To me, this benefit is a form of lie, when it is not based on a real invention (so-called blocking patents that distort competition) and that is why I am in favor of a real examination of French patents by the INPI (with the human and financial resources that should go with it as I said above).

Turning to consumers who are also third parties, I would like the concept of public interest, particularly in the area of ​​medicines, to be more fully taken into account and even integrated into the statute.

This public interest concern is in line with the senators’ concern, as they have debated the notion of “essential drugs”, and have taken interest in drug shortages, or in new therapies that are burdened by an exceedingly high price.

The same considerations apply to standard essential patents and the resulting consequences on the market, the price of IT products, the monopolies thus created and the extra cost to the consumer. This is the field of so-called FRAND licenses and the necessary balance that must be achieved between licensees, competitors, start-ups and consumers.

You have been involved in extensive preparatory work regarding the unified patent court. If this court does come into force soon, which position do you think French courts will have in the future?

I still am involved. I think that if the UPC fulfils the objective assigned to it, which is to issue decisions on infringement and validity of unified and European patents throughout the members states of the European Union that have ratified the Agreement, within an extremely short timeframe (one year), then, after the 7-year transition period during which there will be shared jurisdiction over European patents between the UPC and national courts, national courts will then only have to deal with national patents.

On the other hand, the Paris local division should be able to attract a larger share of the European patent litigation than the one currently handled by the 3rd chamber because it will be possible to plead in the three languages ​​of the European patent. Two French judges will be part of the three-judge panel, and the proximity of the central division will have a great attractive force in favor of the local division.

An exclusive interview – part 1

Today, Patent my French! features a special post. Indeed, I had the honor and privilege to interview Marie-Christine Courboulay.

Ms. Courboulay recently retired after serving for almost 13 years as a judge in the 3rd chamber of the Paris Tribunal de grande instance (TGI), namely the chamber in charge of IP litigation. You can see her name on the front page of a number of prominent patent judgments issued over the years.

Ms. Courboulay was probably the single most senior and experienced patent judge in France in the recent past – given that, and this was one of the subjects we discussed, the turnover of IP judges in this country is usually very high.

Thus, my understanding is that she took a major part in framing recent case law on some of our favorite hot topics here on the blog, such as exclusion from patentability, or the application of the statute of limitations to patent nullity suits.

Therefore, I am sure that her views on the French legal system and on the current state of patent law will be of interest to all readers.

So I am very grateful that Ms. Courboulay accepted to (electronically) sit and have this chat.

In the first part of the interview, Ms. Courboulay tells us a little bit about her career; then she provides some insider’s perspective on how the 3rd chamber of the TGI operates; she also offers some advice to litigants and their attorneys, gives her opinion on the quality of patents. The last bit of today’s installment focuses on the more specific issue of prosecution file history – is there or isn’t there a notion of estoppel in this respect?

One final note: I translated the questions and answers into English, therefore any residual error despite the usual extensive proofreading would be entirely on me.

Some of the cutting-edge interview tools that we use here at Patent my French!

Can you briefly recount your career? What positions did you hold as a magistrate? How long were you in charge of IP cases at the 3rd chamber of the Paris Tribunal de grande instance (TGI)?

I joined the magistracy in January 1982, after a master’s degree in business law at the University of Paris I. I was a trainee judge for two years, and I did my internship in a court in Bobigny.

Then, I was appointed judge (juge d’instance) from March 1985 to September 1996, first in a small court in Coulommiers, then in the Tribunal d’instance (TI) of the 19th arrondissement in Paris, and finally in the TI of the 13th arrondissement.

During this period of time, I worked a lot on the then new laws relating to over-indebtedness and I got to train the members of the over-indebtedness commissions in a program set up by the Banque de France.

I joined the Paris TGI in September 1996 and I worked for three years in the 18th chamber (specialized in commercial leases) and another three years from September 1999 to September 2002 in the 9th chamber (specialized in banking law). At that time, I worked on the start of electronic contracting and on the proof of consent, when the first agreements were executed online.

I was also in charge, like all judges of the 9th chamber, of the execution of international letters rogatory assigned to the Paris TGI, and I took a lot of interest in this work, which required a knowledge of the law applicable in the countries making the requests.

In September 2002, I joined the 1st chamber of the Nanterre TGI as a vice-president, and I discovered literary and artistic property on this occasion.

I came back to the Paris TGI in September 2005, in the 3rd chamber, and I did not leave it for the rest of my career, as I did not want to be deprived of such beautiful litigation, open to the world.

How many different cases does a judge of the 3rd chamber of the Paris TGI handle per year, on average?

At least two judgments on the merits per week, or eighty per year.

Approximately twenty-five case management orders per year.

Approximately thirty urgency judgments (“référés”) each year, plus extreme urgency judgments (“référés d’heure à heure”).

Among these cases, what is the approximate distribution between copyright, trademark, design and patent cases?

I cannot precisely answer this question because I do not have the statistics.

I would say that half of the cases are trademark cases, 10% are design cases, 25% to 30% are copyright cases (including copyright on clothing) and 10 to 15% are patent cases.

How much time does a judge have to devote to a patent case, on average?

It depends on the complexity of the patent and the level of expertise of the judge. Between three and ten full days.

Do you think that the training of judges is sufficient for handling patent cases, or that it should be improved?

The training of judges to deal with patents, but also IP as a whole (because an artistic copyright case is at least as complicated as a patent case), should be improved in the sense that this function should be considered as a full-fledged specialty. Each new judge should be offered a compulsory theoretical training from one week to fifteen days before taking office.

For how long are judges appointed to the 3rd chamber of the Paris TGI, on average, and do you consider that this is sufficient, or too short?

Judges are appointed to the 3rd chamber for an average of three years, and this duration tends to increase.

This is much too short because judges leave when they begin to be really well trained, which creates a huge loss of value for the court. Furthermore, it requires a constant (and exhausting) effort for training newcomers, despite their generally high merits and hunger for knowledge.

At last, it seems that there may be a possibility for judges to be able to get promoted without leaving, thanks to the creation of the Economic Pole by President Hayat. This could make it possible to keep judges interested in this subject for a longer period of time, as they would be able to make part of their career there.

Is it an asset for a judge of the 3rd chamber to have held a previous magistrate position in a field other than IP, and if so why?

Of course, to understand IP law, you need to have an overview of society as a whole: its evolution, its major trends, and especially its innovations. I would say that one must take an interest in all economic sectors of society, but also have a pronounced taste for culture.

For example, if you have worked on the renewal of commercial leases, you know that the establishment of competing brands in a same sector is a factor of increase in commerciality, which in turn makes an increase in rent possible. This is a factor which can be used to reason, when it is claimed that competitors’ ads on a result page of a Google search creates a prejudice. What is true in “real” life is also valid in the so-called virtual economy (which it obviously is not).

So, yes, previous experiences of judges are useful and rewarding, as well as their personal history.

Similarly, I am very much in favor of the integration of judges who had a career in the private sector, or as independent professionals. It is again a great opportunity to have a colleague in the court who worked in another context and who can shed light on what litigants expect in this area, or on the difficulties they may have. And when this previous career was in the field of IP as was the case several times (I had colleagues who had been IP lawyers or had worked at the INPI), the benefit to be gained from their experience is even greater.

How do the different judges of the 3rd chamber work together? In particular, is there an effort of harmonization among judges to avoid discrepancies between judgments?

First, the judges of the 3rd chamber work in three-judge panels and deliberate on the cases assigned to their panel. But of course, they also discuss the various cases between them, and they try to find harmonized solutions to avoid any disorder with litigants.

All magistrates are very much aware of the fact that their decisions must comply as much as possible with the requirement of predictability. For example, they circulate the decisions that they issue when a new point is raised and a solution is provided by one of the panels (for example regarding the application of the statute of limitations to patent nullity suits, or regarding the nullity of infringement seizures).

Also, there are so-called chamber meetings with an agenda on points of law where there seem to be differences of interpretation or appreciation. There are also information meetings organized by the Cour de cassation on specific topics (trademarks, patents, etc.) to raise the awareness of judges on solutions to various current legal issues.

Patent cases are sometimes highly technically complex (e.g. in the biotech or telecom field). How do judges deal with this technical complexity? Are the explanations of the parties’ counsels in their submissions and during the hearing generally sufficient to fully understand the underlying technical issues, or would an additional effort of popularization be useful?

The hearing time, if it is well calibrated (I would say at least half a day per patent), is enough to explain the issues, and it is obviously more than necessary for the court.

However, in the case of a particularly complex lawsuit, it is possible to appoint a consultant whose main task will be to objectively explain the patent, the technology, but also the prior art.

The statute thus gives the court the necessary tools to understand the technology involved in e.g.  telecom patents – which to me are the most complex ones.

In patent cases, it is not uncommon for parties’ submissions to reach several hundred pages. Is this too much? Do judges have the time needed to read and digest such large file wrappers, given their heavy workload?

Yes, this is too much, and I must unfortunately say that, often, many pages are irrelevant, since they contain repetitions in various forms.

We must remember this sentence: “sorry, I did not have time to keep it short”.

Judges from other European countries also complain about the same phenomenon and also conclude that the strength of the case does not depend on the weight of the written submissions; and I know that in the United Kingdom, on appeal, submissions are limited to 25 pages, because the court already has the first instance judgment.

Judges do not forget that this can be, in some cases, a tactic to drown them, so that they are not able to properly handle the litigation anymore, if each case reaches 200 pages without any reason.

I believe that, one day, it will be up to the case management judge to limit the number of pages allowed per case, in view of the first exchanges (complaint and defense).

What do you think is the role and use of the attorneys’ pleadings in the trial?

As far as patents are concerned, oral argument is essential to clearly explain the invention and to allow the judge rapporteur who has read the submissions and the patent to verify that he/she has properly understood what the case is about.

It is also essential for the presentation of the prior art, and the voice of each party sheds a different light on the topic.

Finally, it is essential for presenting the comparison between the invention and the alleged infringement by the patent proprietor and by the defendant.

On the other hand, for the determination of damages, clear written submissions with convincing supporting documents are more than enough.

Is there any advice you could give to parties and their counsels to improve their chances of convincing the court in patent litigation?

A clear presentation of the invention, optionally with the help of diagrams or slides.

A debate limited to the real issues at stake.

Avoid raising quibbles instead of arguments and avoid raising inadmissibility pleas and other motions on the communication of exhibits that pollute the real debate and sometimes weaken the position of those who raise such objections without any serious reason.

Do you consider that patents granted by the INPI or the EPO are generally of a good quality? Or is this quality insufficient in your opinion?

In the midst of a debate on the granting procedure of French patents, I can only say that the French patents that were submitted to me often suffered from a lack of quality, and I have some oddities in mind which were worthy of a cabinet of wonders.

I am in favor of a better control of French patents by the INPI, in particular by not focusing on the sole criterion of novelty, which is totally insufficient and puts us in a miserable position compared to other European offices. However, it seems to me that, in order for this reform to make sense and not give rise to other criticisms on the process of granting French patents, it will be necessary to hire many examiners trained in the analysis of inventive step, sufficiency of disclosure and extension of subject-matter beyond the application as filed, and also trained in discussing with the applicant and then with possible opponents, in full compliance with the adversarial principle.

With regard to European patents, their quality often depends on the technical field. Despite a more in-depth analysis of the various criteria mentioned above, there is a significant invalidity rate in French courts, but also in German, Dutch or English courts, of the order of 60 to 70%, which is still a lot.

I would say that the other criticism that can be made against European patents is the extreme length of the proceedings before the examining division and then the opposition division.

What is the role of the modifications made by the patent proprietor during examination proceedings, as well as of their statements in front of the patent office concerned, at the litigation stage? In your opinion, should the proprietor be bound by the strategy and the procedural choices adopted during examination?

Both French case law and Dutch case law take into account the amendments made during examination proceedings and the statements made to the patent office, when they are submitted to the court, because they are then elements of the dispute.

And the patent proprietor is bound by the modifications, which are in any case enshrined in the patent as granted, which is the very basis of the case, but also by its statements, insofar as they make it possible to understand what the proprietor itself considers as the perimeter of its invention, as the proprietor specifies the limits thereof (what is part of it and what is not part of it).

That said, the proprietor may take another position, but the new interpretation will be read in the light of the modifications made and ratified by the patent office in the granted patent, and of the reasons for which the modifications were agreed to be made.

It seems that the German Supreme Court in Düsseldorf has now slightly opened the door to this possibility, which it had long refused, even though some regional courts, including the one in Munich, already took statements before the patent office into account.

To be continued.

Patentee schussing down

Are you getting tired of automotive equipment technology and anti-hypercholesterolemic drugs?

This would be understandable. Cheer up, as today I give you a seasonal alternative, with this ruling which involves a patent directed to a “method of securing, monitoring and management of the ski area of wintersportplaces“.

As if this technical field weren’t unconventional enough, the ruling is also unusual in that it was issued by the Lyon Cour d’appel.

The Paris courts have had exclusive jurisdiction over patent matters for a number of years now, so it is increasingly infrequent to come across a judgment issued in another forum. Who knows, this could actually be the very last one.

Mr. Costa, who lives in the Rhône département, owns European patent No. EP 1048789, filed in 2000 and which claims a French priority. The patent was licensed to a local company, Construction Moulage Fabrication Polyester (CMFP).

The patent was granted in 2003. Shortly thereafter, the patentee and the licensee initiated infringement proceedings against Perception and Guidance Embedded Systems (now Perguisys), Kässbohrer Engins au Service de l’Environnement as well as SA Aménagement Touristique de l’Alpe d’Huez et des Grandes Rousses. Already from the name of the third defendant, it can be inferred that the alleged infringement takes place in the Alps area.

As this was 15 years ago, the complaint was filed with the Lyon Tribunal de grande instance (TGI), which had jurisdiction at that time.

Two oppositions were filed at the EPO, one by Sabatier SA and a joint one by the defendants Perguisys and Kässbohrer. This led the Lyon TGI to stay proceedings pending the outcome of the opposition. Hence the extraordinary length of the proceedings.

The oppositions were rejected by the opposition division in 2006 and the rejection of the oppositions was confirmed by the Board of appeal in 2009. Only then were the infringement proceedings resumed. But it took 6 more years for the Lyon TGI to issue its judgment, in 2015. This is amazingly long but (1) we don’t know all the details, and it is possible that all parties did their best to delay the proceedings; and (2) now that patent litigation is centralized in Paris, my understanding is that there are no longer cases that drag on forever to this extent – except when the Cour de cassation successively sets aside appeal judgments four times, like in the Nergeco case discussed last week.

In the first instance judgment, the infringement claim was dismissed, and so was the defendants’ nullity counterclaim. The plaintiffs appealed, which now brings us to the appeal judgment.

Here is claim 1 of the patent at stake, again, not a conventional one, as you will see:

Method for protecting, following up maintenance and managing the field intended for skiing in a winter sports resort using mobile protection, control and maintenance means equipped with means for marking the position and guiding vehicles from a satellite network or from fixed markers, using fixed devices which need to be controlled and maintained, using a digitized cartography, as well as radio or remote transmission cables for transmitting digital data between at least one computer situated in a central station and computer terminals situated in intervention services or on mobile means fully or partially associated with automatic or manual coding means, characterized in that the computer system situated in the central station is able to divide the site of the winter sports resort into homogeneous zones with respect to at least one criterion from a series of coherent criteria zones stored in said computer system connected by remote transmission means to the mobile means and the intervention services so that when a mobile element is positioned in an homogeneous zone of the skiing field, the computer system of the central station is able to immediately be aware of the criteria applied to this homogeneous zone so as to deduce from this task orders, observations or action to be taken by the central unit and/or by the mobile element and/or by the intervention or maintenance services.

Peter Rabbit managing the ski area.

The validity discussion is extremely short in the decision.

Apparently, the defendants raised the same arguments of lack of novelty and lack of inventive step that they had already raised in first instance. The appeal judges thus simply stated that they agreed with the first instance judges and had nothing to add.

The infringement discussion is more interesting. The plaintiffs alleged that there was infringement by equivalence.

According to the court, the patented method comprises numerically mapping a ski resort site in the form of points according to coordinates, and then storing the information in a computer of a central station so as to provide a virtual grid in the form of planar polygones (cf. the claimed “digitized cartography“).

Fixed and mobile devices are deployed in the ski area and supply positional information to the central station using transmission means.

Still according to the court, the alleged infringement does not make use of virtual mapping and of a central station. Thus, the court held:

[…] Even though the [allegedly infringing] system uses GPS technical means, it does not achieve the sophistication of the patented system, in that it does not make it possible to provide a division of the area into homogeneous zones in real time on the screen, based on predefined and modifiable criteria.  Contrary to what the appelants state, this sophistication […] prevents infringement by equivalence from being acknowledged, as the Snow Sat system is of a lesser quality and lesser efficiency. 

Okay. This is kind of frustrating as it is very far from being a clear and complete infringement reasoning. But again, you probably cannot expect too much from a court that may not have seen any other patent case in a number of years.

But there is possibly one interesting take-away message though.

The established standard for assessing infringement by equivalence under French law is the following: two means are equivalent when, although they are of a different form, they perform a same function for a result of a same nature, if not of the same degree.

Lyon’s position is that, since the defendants’ method is not as efficient as the patented one, it does not infringe.

This is clearly confirmed by the court’s following statement:

[…] A means is not equivalent when its different implementation leads to a result of a same nature but of a different quality or efficiency. 

This is not a common aspect of equivalence discussions. But it is not unheard of. In fact, in a previous post, I reported on a similar analysis by the Paris Cour d’appel.

Thus, if anything, today’s judgment confirms that assessing infringement by equivalence is tricky. You cannot just look at the function of the means at stake – and at whether the function was known from the prior art. You also have to look at how effective the means is and what the quality of the end result is.

CASE REFERENCE: Cour d’appel de Lyon, 1ère chambre civile A, September 20, 2018, Antoine Costa et al. v. Perguisys et al. (RG No. 2015/06635).