Unraveling contributory infringement

As a change from GMOs and mathematical methods, today’s patent is about a toilet paper dispenser. Rest assured that I heroically resisted the urge to come up with an introductory pun closely related to the invention at stake – lest this blog be rated by readers as not classy enough.

That said, a relatively simple technical field does not necessarily entail a straightforward ruling. In fact, today’s decision addresses the complex issue of contributory infringement heads on.

SCA Tissue France was originally a subsidiary of the US group Georgia Pacific, a world leader in cellulose-based products. Think Lotus toilet paper. This business has now been acquired by the Swedish group SCA. Tissue France owns European patent No. EP 1799083, on a toilet paper dispenser, and markets the so-called SmartOne dispenser, together with matching toilet paper.

In March 2011, Tissue France started infringement proceedings based on the EP’083 patent against Sipinco and Global Hygiène. An opposition was filed against the patent in parallel. The patent was upheld as granted both by the opposition division and by the board of appeal.

In parallel, the Paris Tribunal de grande instance revoked the French part of EP’083 for insufficiency of disclosure, in March 2013 and therefore rejected Tissue France’s infringement claim.

However, on appeal, the first instance judgment was set aside and the patent was acknowledged as valid.

Tissue France had raised two infringement claims:

  • The defendants had committed direct infringement by putting on the market a toilet paper dispenser as well as toilet paper within the scope of EP’083.
  • The defendants had also committed contributory infringement by marketing toilet paper intended to be used with the patented SmartOne dispensers.

The appeal judges sided with the patentee on the first count but rejected the claim based on the second count. See the ruling dated November 25, 2014.

The patent proprietor did not give up on the contributory infringement count and filed an appeal on points of law. We can imagine that whether contributory infringement is established or not may have a significant impact on the computation of damages.

They did well, as the Cour de cassation has now vacated the appeal judgment and remitted the case back to the Cour d’appel, ordering them to examine again the question of contributory infringement.

In order to understand this whole discussion, it is certainly useful to have a look at the main claim of the patent:

Paper dispenser, comprising a housing in which a roll of a paper strip is housed, which comprises precuts transverse to the strip and defining rectangular paper sheets, of which the width is transverse and the length is longitudinal, the housing comprising a dispensing orifice through which the paper strip is unwound, the width of a sheet being between 125 mm and 180 mm and the ratio of the width of a sheet to its length being between 0.45 and 1, preferably between 0.5 and 0.65, characterized in that the said paper is a toilet paper and the said dispenser comprises a nozzle with the said dispensing orifice, the said nozzle and the said roll of paper being designed so that the paper sheets are unwound one at a time and emerge with less crumpling at the outlet of the nozzle, the paper being consumed in an optimum and pleasant manner.

In other terms, the claimed subject-matter is a paper dispenser which comprises a number of features (notably a housing and a nozzle) as well as a roll of paper strip in the housing.

When in the men / women’s room, always watch out for the bear.

Now, here is the relevant legal provision which defines contributory infringement under French law, namely article L.613-4 Code de la propriété intellectuelle, first paragraph:

Unless the patent proprietor consents, the supply or offer to supply, on the French territory, to another person than those entitled to work the patented invention, of means for implementing this invention on this territory, in relation with an essential element thereof, is also prohibited, when the third party knows or circumstances make it obvious that these means are suitable and intended for this implementation. 

The supreme court judges found that the Cour d’appel erred in three different respects.

First, the original appeal judgment held the following:

[…] Regarding the existence of acts of indirect, contributory infringement […], according to Tissue France […] itself, its invention lies in a new combination between, on the one hand, a specific toilet paper, and on the other hand, the use of a nozzle for dispensing sheets associated with a specific precut paper strop, in order to achieve a dispensing of sheets one at a time, with less crumpling at the outlet of the nozzle […].

[…] Therefore this is a combination invention which lies in the association of means (toilet paper and nozzle) which cooperate, notably due to their particular arrangement as described in the patent, for a common result (dispensing of the sheets one at a time, with little crumpling). Only the arrangement of the means which cooperate together for a common result is protected by the patent. 

[…] In such a case, the means in relation with an essential element of the patented invention under article L. 613-4 cannot only consist in one of the combined means, just because this means (here, the paper roll) is part of the constitution of the invention and contributes to the result that it provides. 

The Cour de cassation disagreed and held that this was a breach of article L. 613-4, because:

[…] contributory infringement of an invention consisting in a combination of means can result from the supply of a means relating to an essential element thereof […] even if it is a constitutive element thereof. 

By the way, don’t look for more detailed explanations in the ruling. There are none. It is the unfortunate tradition of cassation judgments that they have to be drafted as concisely and cryptically as possible. Basically, the cassation judges just cite relevant parts of the appeal judgment and state: “this is wrong“. Period. Sometimes, the statement of cassation appeal which is annexed to the decision provides useful additional information. But not so much in this case.

That said, I think what can be taken from this part of the ruling is that article L. 613-4 should apply in a similar manner to combination inventions and non-combinations inventions. No distinction between these two types of inventions is made in the statute.

As far as I understand, combination inventions are those where the contribution of the invention to the art lies in special features present in two different means which cooperate together. Here, the toilet paper is specially adapted to the dispenser, and the dispenser is specially adapted to the toilet paper.

To my mind, this clarification by the Cour de cassation is rather well in line with previous case law on this matter.

For instance, in at least two distinct cases related to an invention associating a dispenser with plastic bags, it was held that the supply of plastic bags was an act of contributory infringement: see Publi Embal v. Coprima and Simahee v. MultyPack. In another case where the invention related to the association of special fixing means on a digger with a special bucket intended to be placed on the fixing means, the supply of buckets was also viewed as an act of contributory infringement: see Morin v. Magsi.

The important point for contributory infringement to be established always seems to be that the means which is supplied should play an important role in how the invention works.

In contrast, if the invention lies entirely elsewhere than in the supplied means, there should be no contributory infringement. See Calor v. Filtech for an example of a demineralizing cartridge for an iron.

The second passage of the appeal judgment that the Cour de cassation did not like was the following:

[…] Besides, there can be no contributory infringement when the means which are supplied are, as in the present case, consumables which are to be integrated to the patented device, which exists independently of the consumables.  

The Cour de cassation noted that

it does not matter whether the means may consist in consumables, if they have an essential character. 

Again, it seems that the Cour d’appel imposed another criterion which is simply not present in the statute. No distinction is made depending on the nature of the supplied means. The only important thing is whether the supplied means relate to an essential element of the invention or not.

In fact, what the appeal judges probably had in mind is the second paragraph of article L. 613-4:

The provisions of [the first paragraph] are not applicable when the means for implementing [the invention] are products which are commonly on the market, unless the third party incites the person to whom the supply is made to commit the acts prohibited by article L. 613-3 [i.e. acts of direct infringement]. 

This is a special provision for products which are “commonly on the market“. But those are not the same as “consumables“. It is easy to picture consumables which have very peculiar features and are thus not really commonly on the market. Conversely, products commonly on the market certainly encompass other products than consumables (screws and nails, for instance).

So, the test applied by the Cour d’appel as to the nature of the supplied means was not the right one.

Last, the Cour d’appel had held that:

[…] no document from Sipinco mentioned that its toilet paper rolls were compatible with the dispensers marketed by Tissue France […]. 

Here is the Cour de cassation comment on this, which is slightly more detailed this time:

[…] By making this determination, whereas Tissue France argued in its appeal submissions that, due to its specific dimensions, the paper at stake did not correspond to toilet papers commonly on the market, the Cour d’appel, that did not investigate whether this was correct, and in this case whether this should be taken into consideration to examine whether Sipinco and Global Hygiene knew, or circumstances made it obvious, that these rolls were adapted and intended for implementing the invention, the Cour d’appel did not provide a legal basis for its decision.

Now, the issue is that the Cour d’appel did not find evidence that there was any incitation to customers for them to use the toilet paper at stake with the patented dispensers, which is the test under paragraph 2 of article L. 613-4.

But, before making that determination, it should have been checked whether the toilet paper was a product commonly on the market or not.

If not, then paragraph 2 should not come into play. And in this respect, the patentee’s argument was that the dimensions of the toilet paper were so specific that it could not be considered as a product commonly on the market, so that only paragraph 1 should apply. While the Cour de cassation did not formally endorse the patentee’s argument and just requested that it should be further considered by the Cour d’appel on remand, it certainly looks like they thought that it had merit.

If this is correct, then it means that a relatively cheap and commonplace product such as toilet paper is not a product “commonly on the market” if it has some specific features which make it original relative to other, similar products. 

In summary, this Tissue France decision will probably be important for future cases involving so-called combination inventions, as well as cases where a defense related to “products commonly on the market” is raised.

And now the Cour d’appel will have to dispense another judgment in this litigation.

CASE REFERENCE: Cour de cassation, ch. com., June 8, 2017, Tissue France v. Sipinco & Global Hygiène, pourvoi No. 15-29.378.

The salt of the judgment

When you are in private practice, you sometimes get to work with clients who come up with very creative legal arguments. Or you get to work with clients whose competitors are unfortunately very creative. Rating the chances of success of such creative arguments can be difficult, especially when there is not yet any case law to refer to.

Let us take one example. A patent protects a molecule M1. A competitor markets a drug containing a molecule M2. When this drug is taken up in the body of the patient, molecule M2 is converted to M1. Is this a situation of contributory infringement?

It is not so common for thought-provoking ideas such as this one to be actually tested in court. I was thus quite happy to hear about Shionigi & AstraZeneca v. Biogaran, thanks to Lionel Vial (the decision does not appear on the INPI database). So, if you would like to know the answer to the above question, you may directly go to the end of this post to find out about the guidance offered by the presiding judge of the Paris Tribunal de grande de instance, Marie-Christine Courboulay.

But not so fast, as other aspects of the case are very worth being reviewed.

The patent at stake is EP 0521471 owned by the Japanese pharmaceutical company Shionigi, and licensed to the Swedish group AstraZeneca. The patent covers a drug for the treatment of hypercholesterolemia, called rosuvastatin.

The patent is already relatively old, as it was filed in 1992 and claims a priority of 1991. It went unopposed and expired in 2012. But a Supplementary Protection Certificate (SPC) was granted in 2005 by the French Institut national de la propriété industrielle (INPI), extending the duration of protection until June 29, 2017. And then on top of that, a pediatric extension was granted in 2015, further extending the duration of protection till December 29, 2017.

The SPC was granted for the product simply identified as “rosuvastatin”, based on a Dutch Marketing Authorization (MA) for the drug Crestor, which contains a calcium salt of rosuvastatin.

Biogaran developed a generic version of rosuvastatin. In 2014, Biogaran warned AstraZeneca and Shionigi that they had applied for an MA for the zinc salt of rosuvastatin, and stated that this product did not infringe the SPC. AstraZeneca and Shionigi did not agree with the latter statement.

Two years later, Biogaran obtained its MA and announced that it intended to launch the generic drug in July 2016 – i.e. before the term of the extended SPC.

As a result, AstraZeneca and Shionigi filed a motion for preliminary injunction (PI) in front of the judge in charge of urgency proceedings (juge des référés) on April 26, 2016. The judge issued her order on July 4, 2016.

The criteria assessed by the juge des référés for deciding on the PI are whether infringement is likely, and whether there is any serious validity challenge.

In the present case, Ms. Courboulay deemed that there is no serious validity challenge; but that, on the other hand, infringement is not likely.

As a preliminary step in the reasoning, the claims of the patent were interpreted in view of the description. It is certainly a very good thing when a patent is construed as a first step, and thus in a consistent way for both validity and infringement.

In the present case, this preliminary interpretation step led to a result which may come as a shock to a number of foreign patent attorneys but which seems to be in keeping with the tradition of French patent law.

Claim 1 of the EP’471 patent reads as follows:

The compound (+)-7-[ 4-(4-fluorophenyl)-6-isopropyl-2-(N-methyl-N-methylsulfonylamino)pyrimidin-5-yl)-(3R,5S)dihydroxy-(E)-6-heptenoic acid or a non-toxic pharmaceutically acceptable salt thereof.

This is the full name of rosuvastatin, either in the form of an acid or of a salt – any possible salt, it would seem.

Dependent claims 2, 3 and 4 respectively and specifically relate to the acid form, to the calcium salt and to the sodium salt of rosuvastatin.

The judge referred to article 69 EPC and the interpretative protocol, and made the following comments as to which rosuvastatin salts are protected by the patent:

[The patent] is drafted as disclosing a new pharmaceutical active substance, rosuvastatin, and the pharmaceutically acceptable salts of this substance, and the cited examples are only indicative and do not limit the protection to the only cited examples. However, the description and notably paragraph 007 provides examples of pharmaceutically acceptable non-toxic salts of rosuvastatin and makes reference to two families of metallic ions which were commonly used in the formulation of tablets of statins already known at the priority date, and in particular alcaline metal ions and alcaline earth metal ions. […] Thus, the pharmaceutically acceptable non-toxic salts are in these two families […], as the patent does not give any indication to the skilled person to select a salt in another family. On the contrary, the description focuses on these salts because they were already commonly used for the formulation of statin tablets; it does not provide any other lead, so that the skilled person will select a salt in the families offered by the patent as being the only relevant families for statins. He/she will not try to select salts of other families as the patent does not teach anything in this respect. 

Therefore, only salts belonging to the cited families, namely alcaline metals like sodium or alcaline earth metals like calcium, or those which can be part of the most commonly used cations for the formulation of statin tablets are concerned by the patent. The other salt families are not mentioned and thus excluded from the scope of protection of the patent

In summary, claim 1, taken at face value, covers any pharmaceutically acceptable salts of rosuvastatin. But according to the judge, the actual scope of the patent is narrower, as only two families of salts are covered: alcaline metal salts (such as sodium) and alcaline earth metal salts (such as calcium).

So beware: the interpretation of the claims in view of the description can result not only in a broadening of the scope of protection relative to the literal wording of the claims, but also in a restriction of the scope.

Just to be clear, this finding does not seem to be related to the existence of an SPC. The (re)definition of the scope of the patent was made with respect to the patent, not the SPC. See in particular the following comment in the judgment:

Although the Crestor MA designates the calcium salt of rosuvastatin, the scope of the […] SPC extends to all forms of rosuvastatin as covered by the EP’471 patent.

A judgment to be taken with a grain of salt?

Again, the limitation of the patent devised by the judge may come as a surprise from a European perspective. But I think it is in keeping with traditional French practice. French judges have consistently had a large degree of discretion in defining the scope of protection based on the overall teaching of the patent – or spirit of the invention.

Maybe another way to look at this would be to consider that the invention was sufficiently disclosed in the patent only for the two salt families explicitly mentioned (and exemplified) in the patent, which, as far as I understand, were the two usual salt families for other similar drugs at the priority date. Using other salts would have required further research.

Anyway, the consequence of this interpretation of the claim is that there was no direct infringement of the patent. Indeed, the Biogaran product is a zinc form of rosuvastatin, and zinc does not belong to the alcaline or alcaline earth metal families.

And now comes the last part of the judgment, which deals with an auxiliary argument by the claimants, which was articulated as follows:

Biogaran commits acts of contributory infringement because it provides essential means for implementing the invention [….]. The salt form under which rosuvastatin is administered decomposes as follows, as soon as it reaches the gastro-intestinal system of the patient. The salt is dissolved, which leads to the separation of the cation (for example the calcium or zinc ion) and of the anion (namely rosuvastatin in anionic form). Since the pH of the stomach is low (less than the pKa of the acid group of rosuvastatin), the rosuvastatin anion surrounded by H+ protons attracts them so as to make the free acid form of rosuvastatin. […] Therefore the invention is implemented in vivo, in the patient’s stomach, after the administration of the Biogaran rosuvastatin, which thus infringes the EP’471 patent by contributory infringement. 

An interesting theory, but which did not hold water for the judge:

The act of infringement in suit can only be the supply or marketing of the drug, and not the decomposition of the drug in the patient’s body. […]

Contrary to what is argued by the plaintiffs, contributory infringement does not consist in providing means allowing the decomposition of the rosuvastatin salt in anionic rosuvastatin and salt in the human body. This is a consequence of the ingestion of the drug in the body, and of its mode of action but it is not an essential means of the invention, which only relates to the formulation of the rosuvastatin tablet. […]

[Contributory infringement] cannot be relied upon in the context of an artificial auxiliary argument […] whereas the Biogaran product is a generic of Crestor and thus clearly intended for the same therapeutic indication.

Biogaran does not supply any means but a product equivalent to the one protected by the EP’471 patent and the SPC so that contributory infringement is neither established nor likely.

The reasoning is very clear. Contributory infringement is a notion intended to target suppliers of only part of an invention. It is “artificial” and therefore wrong to try to extend this notion to the situation of a drug which undergoes a chemical transformation into a patented compound only in the patient’s body.

It is remarkable, though, that the judge noted in passing that the Biogaran product is equivalent to the claimed invention. It seems that the plaintiffs did not argue infringement under the doctrine of equivalence. Would the outcome have been different if they had? Maybe we will find out with the case on the merits (assuming it proceeds to trial).

CASE REFERENCE: Tribunal de grande instance de Paris, ordonnance de référé, July 4, 2016, Shionigi Seiyaku Kabushiki Kaisha & Astrazeneca UK Ltd v. Biogaran, RG No. 16/56067.

Terminal lawsuit

Standard-essential patent (SEP) litigation is something of a venture, as already illustrated in a previous post. The “terminal lawsuit” reported in today’s post provides yet further illustration. In fact, not only was this a lawsuit on a terminal, namely an electronic payment terminal, but it also turned out to be terminal for the patent proprietor’s business strategy.

The story begins, as always in such a case, with licence negotiations between a patent proprietor, Koninklijke KPN NV, which I will be happy to simply refer to as KPN, and another big player, France-based Ingenico Group. The standard at stake is the EMV standard, which stands for Europay, Mastercard, Visa. Self-understandably, this is a standard relating to payment cards, payment terminals, and the protocols according to which they interact together.

KPN owns European patent EP 0873554. Ingenico manufactures and markets EMV-compliant payment terminals and KPN argued that the patent is implemented by the EMV standard. KPN sued Ingenico for infringement in front of the Paris Tribunal de grande instance after the licence negotiations failed.

In short, KPN lost. For the long story, we need to refer to the very detailed judgment which is dated April 14, 2016.

A key part of the discussion relates to the determination of the scope of protection of the patent. The judgment contains a number of interesting (albeit sometimes controversial) statements in this respect.

Here is claim 1 of the patent. Not exactly an easy read, but we have seen worse, haven’t we:

Method of protectedly performing a transaction using an electronic payment means and a payment station, the method comprising:

– an initial step, in which:

– the payment station transfers a first random value to the payment means,

– the payment means, in response to said first random value, transfers a first authentication code to the payment station, which authentication code is determined on the basis of at least a first start value, a first random value and first transaction data of the payment means using a predetermined process, the process further producing a first end value,

– a further step, in which:

– the payment station transfers a second random value to the payment means,

– the payment means transfers a second authentication code to the payment station, which authentication code is determined on the basis of at least a second start value, the second random value and second transaction data of the payment means using said process, the second start value being based on the first end value.

The scope of claim 1 was in dispute. Claim 1 generically mentions an “electronic payment means”. But the defendant argued that the term should be construed as only covering a card containing units to be debited, and not other electronic cards such as bank cards.

This claim construction was of course vigorously fought by the plaintiff, since the allegedly infringing payment terminals were used with bank cards. Said KPN:

[…] The embodiment mentioned in the description concerning prepayment electronic cards does not restrict the scope of the invention, which relates to any payment mode using a chip card such as a bank card. The transfer of the balance can be omitted or replaced by an acknowledgment receipt or by a card authentication. […] In the claims as well as the description and drawings, in particular Figure 1 which shows a chip card used to make a payment in a shop and connected to the card carrier’s bank and the shopkeeper’s bank, the expression “electronic payment means” encompasses any type of chip card and not only a prepaid, rechargeable card. This expression, […] just like the terms “chip card” or “smart card”, covers any type of payment card, including bank cards. 

The court started with making a few general remarks on claim interpretation. The following passage in particular, on claim drafting, caught my attention and might leave some patent attorneys flabbergasted:

[…] The structure of the claim is essential for determining the […] scope of protection afforded by the right. The claim preamble sets forth the state of the art, whereas the characterizing part, introduced by the words “characterized in that”, sets out the elements which make up the invention, namely the novel and inventive means taken in their form and function, which apply to the object comprised in the state of the art and benefit from exclusive protection. The characterizing part is only considered “in relation” with the preamble because the latter is the support for the former, and because the means for which protection is claimed apply to the product described in the preamble. This relation, just like the interpretation which is made in the light of the description and drawings, does not result in an extension of protection to elements which cannot benefit from a monopoly for they are comprised in the state of the art; but it identifies the concrete subject-matter of the means which make up the invention. The violation of the exclusive right is in fact characterized not by the reproduction of elements in the preamble but by that of the means claimed in the characterizing part

Many professionals (including myself) are uncomfortable with the idea that the interpretation of a claim should depend on where in the claim the “characterized in that” phrase is placed. The division of the claim into two parts may not necessarily accurately reflect the contribution of the invention to the art: only one piece of prior art is usually taken into account when drafting a two-part claim; the applicant may not agree with the characterizing portion demanded by the examiner but may not have a lot of leeway to challenge his/her position; etc.

Although it makes perfect sense for the court to focus on what the invention is really about, relying on the two-part form to perform this analysis could lead to unfair outcomes.

The court regretted that, in the present case, “the structure of claim 1 does not comply with the implementing regulations since it does not comprise a clearly stated characterizing part“. The court seems to have overlooked that R. 43 EPC explicitly provides that the two-part form should be used “wherever appropriate“, as opposed to in all circumstances. The Guidelines for examination provide a number of examples in which it is not appropriate to use the two-part form.

Actually, after reading this judgment, I think it is certainly advisable to avoid casting a claim into a two-part form whenever possible since this may unduly restrict claim interpretation in subsequent litigation.

The court then turned to a detailed analysis of the contents of the description of the patent.

In passing, the court noted that the file wrapper should not be taken into account in the claim construction process:

[…] Examination proceedings and potential variations between the application and the granted patent are irrelevant in the context of analyzing the scope of the patent, which is solely made considering the latter, because on the one hand it defines the protection from the publication under article 64 of the Convention (since the protection conferred by article 67 to the patent application is only temporary) and on the other hand legal certainty explicitly mentioned in the interpretative protocol of article 69 demands that third parties can determine the extent of protection solely based on reading the patent without having to embark on uncertain interpretation of the applicant’s intent in view of modifications made since filing. 

Makes sense. Although, shouldn’t a distinction be made between statements made by patentees during prosecution that third parties may want to rely on vs. self-serving statements?

Anyway, back to the (complex) analysis of the description and drawings.

The court came to the conclusion that the invention is about a closed dialogue between the card and the terminal, as opposed to one which would include a bank server – as would be the case if the electronic payment means were a bank card.

One of the main arguments raised by the patent proprietor was probably that Fig.1 of the patent does schematically show the interaction of the card and terminal with respective banks. Here is what the court had to say about the drawing:

[Fig. 1] is not explained an the dotted line between the card or terminal and the bank is not defined. The association between the card and the bank and the one between the terminal and the bank are not understandable. The only exchanges described are those between the card and the terminal and then between the banks, which take place respectively during and after the transaction phase […]. And, the sentence “During a transaction there basically does not take place communication between the payment station and the payment institution in question (so-called offline system)” means that there is absolutely no exchange between the card or terminal and the bank, not only because it is defined by the expression between brackets, but also because the sentence is a reminder of the risks of abuse attributable to this lack of communication […].  

And so here is the overall conclusion:

Thus the sole payment means contemplated in claim 1 […] is a card comprising a balance of units to be debited or credited and not a bank card. The fact that the latter is also a payment means and is designated under this generic name in the EMV specifications is irrelevant. The transaction data transferred to the terminal is restricted (with the exception of authentication codes) to the balance on the card. Consequently, the protection of the process does not extend to securing bank card transactions, which necessitates an open and more complex dialogue.  

So all of this did not bode well for the patentee’s infringement claim, since Ingenico’s terminals are meant to be used for payments via bank cards.

They did preserve the patent though, as Ingenico’s counterclaim for invalidity was unsuccessful.

Among others, an auxiliary objection of extension of subject-matter was raised in case the court were to retain a broad interpretation of claim 1. That is a “squeeze“-type, either-I-am-not-infringing-the-patent-or-there-was-some-extension-of-subject-matter-but-you-cannot-have-it-both-ways-type of argument. The court bought the narrow claim interpretation and accordingly rejected the auxiliary objection.

Credit card: the nightmare of teleshopping addicts.
Suggestion for a crosswords definition of electronic payment means: the nightmare of teleshopping addicts.

A few more words on the infringement part of the judgment. First, the court noted a technical difference between the subject-matter of claim 1 and the EMV standard – which I am not going to comment on.

Second, and more interestingly, the court held that there was no contributory infringement anyway, irrespective of whether the patent was implemented in the standard.

The court stated that the statutory provisions on contributory infringement need to be appraised in a very strict manner. In particular, there can only be contributory infringement if “means for implementing the invention […], relating to an essential element thereof” are supplied by the alleged infringer.

Ingenico is accused of selling payment terminals compliant to standards which implement the patented process. […] The essential element [of the invention] lies in the dependence between the second authentication code and the first one. It is the sole novel and inventive element which provides the desired security. And it is exclusively performed by the undefined and unclaimed function of the card. […] The role of the terminal is limited to sending the card a random value to initiate the authentication step. This phase was known from the prior art and is not novel. 

It is true that the first final value is calculated partly based on this random value. But the essential element does not lie in this use but in the conservation of the cryptographic residue from the processing as a first final value, which is the basis for the second code. The terminal is not involved in this process. The fact that it is mentioned in claim 1 (in the part which should actually have been the preamble) is irrelevant. 

The invention covered by claim 1 is implemented by the function of the card, which is the subject-matter of product claims. It is not implemented by the terminal […]. 

Therefore, no matter whether the claims are reproduced (literally or by equivalence) by the EMV standards, the means supplied by Ingenico, i.e. the terminal, cannot generate the result of the invention and does not relate to a constitutive element thereof. 

The way I understand French case law, very schematically, contributory infringement applies if an invention is made of two interacting parts, for instance the wipers discussed here. But if the novel and inventive features of the invention lie in one element only, and if someone then supplies another element to be used with the former, there is no infringement.

I think the case law is clear in this respect, which is certainly a very good thing.

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, April 14, 2016, Koninklijke KPN NV v. SA Ingenico Group, RG No. 14/11998.

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.

Infringement wiped out

It is an infrequent but real pleasure for a litigant to face an opponent who does not fight and does not bring any contradiction to the litigant’s case. But I guess the pleasure is considerably reduced when the opponent in question is a Chinese infringer which vanishes from the radar and might always reappear later in another form.

It seems that the wiper business of the Valeo group was confronted with this situation, as suggested by two judgments from the Cour d’appel de Paris dated April 14, 2015 against two Chinese companies which did not even appoint a lawyer to defend them.

At first instance, both companies were found guilty of infringement of the French part of European patent No. EP 1486134. In one of these cases, the defendant was in addition found guilty of infringing two trademarks as well as of passing off. This looks more like organized piracy than conventional patent infringement.

However, the first instance judges rejected two further infringement claims based on patents No. EP 1485280 (EP’280) and  EP 1565359 (EP’359). Valeo appealed, and the Cour d’appel partly reversed the first instance decisions, finding in favor of the claimants.

This gives us the opportunity to look at how French courts appraise contributory infringement. The relevant legal provision is article L. 613-4 of the Code de la propriété intellectuelle:

Unless the patent proprietor consents, the supply or offer to supply, on the French territory, to another person than those entitled to work the patented invention, of means for implementing this invention on this territory, in relation with an essential element thereof, is also prohibited, when the third party knows or circumstances make it obvious that these means are suitable and intended for this implementation. 

Claim 1 of the EP’280 patent reads as follows:

Wiper device (10), particularly for wiping vehicle windscreens, comprising a drivable wiper arm (14), with a flat wiper blade (16) positionable on the wiper arm (14), which (wiper blade) comprises a wiping rubber (18), the support elements (20) bearing the wiping rubber (18), which (support elements) may preferably be designed in the form of strip-like elongated spring rails and means of connection for connection to the free end (12) of the wiper arm (14), wherein the means of connection comprise a carrier element (22) firmly arranged on the support elements (20) and a connecting element (24) arranged to be partially pivotable in relation to the carrier element (22) and the connecting element (24) is detachably connectable to the free end (12) of the wiper arm (14), characterized in that the free end (12) of the wiper arm (14) presents several, preferably two, tongues (30, 32) extending in the longitudinal direction, which in the installed state engage in tongue receptacles (34, 36) provided on the connecting element (24) and that the tongues (30, 32) are designed in one piece with the free end (12) of the wiper arm (14) and project at least in sections in the direction facing the windscreen.

So, the claim is directed to a wiper device made of several elements, including a so-called “connecting element“. The mention and characterization of the connecting element are underlined above. The defendants marketed wiper connectors in France having the same features as the connecting element of the above claim.

The first instance judges had rejected the infringement claim by simply noting that the products marketed by the defendants did not reproduce all the features of claim 1 of EP’280, since said defendants did not market wiper arms compatible with the (infringing) connecting element.

I would have loved to illustrate this post with Eiffel tower wipers but strangely enough it seems like nobody had the idea of patenting them.

I would have loved to illustrate this post with Eiffel tower wipers but strangely enough it seems like nobody had the idea of patenting them.

This was certainly an incomplete reasoning, since the existence of contributory infringement does not require that the infringer markets all parts of the claimed product, even separately. It is only necessary that the infringer markets one part of the claimed product, provided that this part represents means for implementing the invention in relation with an essential element thereof.

The appeal judges thus held differently. Quoting from one of the two appeal judgments:

[…] The connecting element (24) contributes to the result of the main claim of the patented invention, which is to offer a wiper device comprising a wiper blade arranged on a wiper arm (14) the free end (12) of which comprises two tongues (30, 32) arranged in tongue receptacles (34, 36) provided to that end on this connecting element; this element therefore is a means for implementing the patented invention, relating to an essential element of the invention. 

This finding seems to make perfect sense because, looking at the claimed wiper device, if we leave aside features which are probably common to most wipers (such as the presence of a drivable wiper arm with a wiper blade comprising a wiper rubber, etc.), the features which seem to be really characteristic of the invention are, on the one hand, the presence of tongues on the free end of the wiper arm, and on the other hand the presence of corresponding tongue receptacles on the connecting element.

In other terms, the invention really is about a particular manner of connecting the connecting element to the wiper arm (at least, this is what is reflected in the characterizing portion of the claim).

Therefore, the connecting element having the right shape and connecting features does indeed relate to (or even, is) an essential, i.e. original, problem-solving, element of the invention.

Turning now to the other patent, EP’359, the main claim is the following:

Device (10) for detachably connecting a wiper blade (12) with a drivable wiper arm (14), with the wiper blade (12) having a wiping strip (16) facing the screen to be wiped, at least one strip-like elongated carrier element (18, 20), a slider element (22) connected to the carrier element (18, 20) and an oscillatably mounted connecting element (24) on the slider element for connection to a coupling section (26) of the wiper arm, characterized in that the coupling section (26) has a tongue-like insertion section (28), the connecting element (24) has a receptacle (30) for the insertion section (28) and the coupling section (26) and the connecting element (24) have securing sections (42, 56) for mutual permanent connection, wherein in order to achieve a preinstallation position in which the longitudinal axis of the wiper arm (14) and the longitudinal axis of the connecting element (24) form an angle a in the range of approx. 10° to 100°, the insertion section (28) can be broadly linearly (64) inserted into the receptacle (30) and wherein in order to achieve a final installation position the wiper arm (14) and the connecting section (24) are pivoted towards each other around the contact area between the insertion section/receptacle until the securing sections (40, 42, 56) allow a mutually permanent connection.

What is important to note in this claim, beside the word “oscillatably” which is probably a challenge to most automatic spelling correction softwares (the original claim was in the German language, which may be an explanation), is the features which characterize the connecting element, which I have underlined.

Again, the defendants marketed a connecting element similar to the one recited in the claim, under reference Q-P in one case (the connecting element infringing EP’280 being referenced as Q-B), and under reference FG9 in the other case (the connecting element infringing EP’280 being referenced as FG7)…

And again, the court found that the connecting element was “a means for implementing the patented invention relating to an essential element of the invention“.

This makes a lot of sense just like in the EP’280 case, as this is still a plug/socket type of invention, wherein the innovative features relate to the way two elements are connected together. Therefore, the invention is embodied both in the plug and in the socket – or, in this case, both in the wiper arm and in the connecting element.

In both of its orders, the Cour d’appel pronounced an injunction and awarded damages to the claimants, as expected.

But, most interestingly, the judges additionally ordered that the infringing products be seized and remitted to the claimants. This measure is not very often ordered and it is certainly attributable to the unusual context of the case. In particular, the judges may have thought that it would not be easy for the claimants to recover the ordered damages from the foreign defendants, so that a seizure was probably necessary as a form or relief.

CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 1, April 14, 2015, SASU Valeo Systèmes d’Essuyage, Valeo Wischersysteme GmbH & SASU Valeo Service v. Ningbo Youngsun Auto Parts Co. Ltd., RG No. 13/15794; Cour d’appel de Paris, Pôle 5 chambre 1, April 14, 2015, SASU Valeo Systèmes d’Essuyage, Valeo Wischersysteme GmbH & SASU Valeo Service v. Qeep Auto Spare Parts Ltd., RG No. 13/15800.