Identifying technicity

What does a patent-eligible invention have in common with obscenity? Some may be tempted to answer that, in both cases, I know it when I see it, as the famous phrase goes. 

But the EPO would certainly not share this view, as the Boards of appeal have consistently worked on framing elaborate eligibility / inventive step tests so as to exclude any intuitive approach to the issue – the prize to pay being that this body of case law makes for a difficult read.

In today’s post, Aujain Eghbali examines if and how said extensive case law can be applied to the examination of French patent applications as well.

The examination of applications related to software inventions in France has been known to yield unpredictable outcomes. This is because, while substantive grounds provided to the French patent office (INPI) to refuse applications include the manifest exclusion from the scope of patentability (ineligibility) and the manifest lack of novelty in view of the search report, they do not include the lack of inventive step (which is only a ground for nullity).

Now, readers familiar with EPO practice know that software inventions are nowadays almost systematically examined under the scope of inventive step at the EPO. The mere mention of the use of a computer in a method claim allows passing the eligibility bar.

In this context, it has not been clear whether INPI examiners can rely on the ineligibility ground to refuse applications, or whether on the contrary they have to comply with EPO case law and conclude that there is no ground for a refusal.

Recent French court decisions, some of which were commented on this blog (here, here, here and there), seem to favor the first solution. The Sesame decision in particular confirmed the refusal by the INPI of a computer-implemented business method on the ground of ineligibility.

While this increase in legal certainty is surely appreciated, these recent developments raise other issues. One may notably ask the following question:

To what extent could INPI examiners apply principles established by the EPO in relation with the inventive step analysis in order to assess the patentability of software inventions, when they can only raise another ground?

EPO board of appeal decision T1992/10 of September 8, 2016 may be a good basis for the beginning of an answer.

SAP had filed a European patent application related to a solution to check the integrity of a shipment. The solution consists in calculating an initial identifier of a set of objects of the shipment based on individual identifiers, before sending the shipment. When the shipment arrives, the same algorithm is used to compute a set identifier for all arrived objects and the result is compared to the initial identifier. A match indicates integrity of the shipment.

Claim 1 according to the auxiliary request read as follows:

A computer-implemented method for checking the integrity of a shipment that includes multiple products, the method comprising:

calculating, prior to shipping, a set identifier for the shipment, the calculating comprising:

– receiving (210), at a tag reader, a first identifier from a first identification tag (130a; 570a; 730a) associated with a first physical object (120a; 560a; 720a);

– receiving (220), at the tag reader, a second identifier from a second identification tag (130b; 570b; 730b) associated with a second physical object (120b; 560b; 720b);

– determining (230) the set identifier at the tag reader, the set identifier corresponding to a set (110) of physical objects that includes the first physical object (120a; 560a; 720a) and the second physical object (120b; 560b; 720b), based on the first identifier and the second identifier, wherein the determining further includes:

— sorting (440) the first identifier and the second identifier to produce sorted identifiers, such that, for all pairs of identifiers, a first identifier of a pair appearing before a second identifier of the pair indicates that the first identifier is less than the second identifier;

— combining (450) the sorted identifiers to produce a combined set identifier by concatenating the first identifier and the second identifier in sorted order; and

— applying (460) the SHA1 algorithm to the combined identifier to produce the set identifier;

– associating (240-270) the set identifier with a web page (180a) that corresponds to the set (110);

calculating a set identifier for the shipment after shipping to verify the integrity of the shipment;

when the set identifier calculated prior to shipping matches the set identifier calculated after shipping, determining that no products have been removed from or added to the shipment in the time between the calculation of the two set identifiers, and

when the set identifier calculated prior to shipping differs from the set identifier calculated after shipping, determining that at least one product has been removed from or added to the shipment in the time between the calculation of the two set identifiers.

According to SAP, both with and without the invention, it was necessary to scan all arriving objects; but with the invention, only one comparison subsequently needed to be made: the identifier calculated on arrival had to be compared with the identifier calculated before shipping. Without the invention, many individual comparisons would be needed. Furthermore, SAP argued that the specific algorithm used to produce the set identifier performed speedily. Also, the final comparison could be made fast, thanks to the format of the set identifier.

A non-computer implemented identification tag – therefore a technical one?

The Board considered that the contemplation of a set identifier in particular to perform a shipment integrity check did not involve any technical consideration as such. Furthermore, the Board was not persuaded that the effects argued by the appellant were actually obtained (speedy identifier calculation and fast comparison).

Also, the Board did not buy the argument related to only one set identifier comparison to be eventually made instead of many individual comparisons. On this topic, the Board not only noted that a database programmer would tend to send one composite query rather than a series of individual queries, but the Board also considered again that the alleged effect was not credible since no details about the comparison were provided in claim 1.

As a conclusion, the algorithm did not seek to overcome a limitation of a computer, but was imposed from the outside for the non-technical purpose of providing a set identifier.

Whether we agree with this reasoning or not, the part of the decision most interesting to me lies elsewhere, where the Board considered:

10. This is not a case in which a clearly non-technical method, consisting of non-technical steps, is performed by a computer, essentially by telling it to carry out the steps involved. Such cases normally fail under the approach in T 0641/00, Two identities/COMVIK, OJ 2003, 352, which, by placing the steps in the statement of the objective technical problem, in essence ensures they do not contribute to inventive step. With such a method, the novelty and obviousness of the steps themselves need not be assessed and the salient question for inventive step is often only whether the implementation of the steps using a computer would have been obvious. In most cases, it would have been.

11. This contrasts with the present invention, in which, although the steps are per se non-technical, a technical contribution cannot be immediately ruled out. The need to investigate the obviousness of these steps depends on such a contribution. The aim of the invention is a non-technical one: identify objects and sets of objects, and keep track of them. The present invention, however, starts from an existing technical method of identifying objects. It seeks to overcome shortcomings in that technical method, and raises rather more problems than the cases referred to above. Are the shortcomings themselves technical? Are technical means used to overcome them? In short: what is the technical effect on the prior art system?

12. That is a matter that requires care. On one side, the technology of the starting point, or its shortcomings, should not be trivialised. On another, circumventing a problem, rather than solving it, is no basis for an allowable claim.

As we can see, the Board introduced a distinction here between SAP’s invention and others which consist in performing a clearly non-technical method, consisting of non-technical steps, by a computer.

The Board considered that, in the shipment integrity check case, care should be taken before ruling out the technical contribution of a step apparently non-technical. The Board suggested performing a thorough analysis of effects alleged to be provided by the invention in view of the prior art, and then only searching for those effects which are technical and credibly achieved.

This decision therefore stresses that, when a computer-implemented invention does not relate to performing a clearly non-technical method by a computer, it is of the utmost importance to assess its patentability within the scope of inventive step, such that the prior art can be discussed. The Board thus reminded us that the approach developed by EPO case law is not merely cosmetic.

Now, once again, the ground provided to INPI examiners to refuse computer-implemented inventions is the manifest exclusion from the scope of patentability.

We know that although the INPI can refuse an application on the ground of a manifest lack of novelty, the lack of novelty has to be really blatant for the INPI to refuse the application. We also know that the INPI cannot refuse an application on the ground of a lack of inventive step. As mentioned in the Sesame post, when there is room for discussion on patentability the legislator probably wanted said discussion to occur within a trial rather than during examination.

I believe that this principle should fully apply to computer-implemented inventions: when there is room for discussion on the presence or not of a technical contribution, said discussion should not occur at the examination stage. In other words, there should be situations where the INPI admits that exclusion from the scope of patentability is not manifest.

Decision T1992/10 not only provides a reason why but also a criterion that the INPI could apply: is the computer-implemented method merely a clearly non-technical method implemented by a computer?

Thank you Aujain. Who knows, maybe we will get some clarification in the next version of the French guidelines for examination? Those may still have a long way to go before they can match the completeness and reliability of the EPO guidelines.

CASE REFERENCE: T1992/10, Board 3.5.01, September 8, 2016, Set Identifiers / SAP.

French courts get IT

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

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

Here is to him.

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

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

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

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

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

Claim 1 of the patent read:

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

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

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

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

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

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

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

– a web server (SRVW) including: 

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

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

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

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

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

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

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

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

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

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

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

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

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

Examiners are used to overkilling applications when they refuse them.

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

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

Interestingly, the French court followed both lines of reasoning, holding first that the claim related to software as such and that the programming activity field did not constitute a patentable technical activity, and second that claim 1 described “an abstract scheme which does not offer any technical solution to the application management facilitation problem it pretends to solve since it is not made explicit how the proposed management system effectively helps the user”.

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

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

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

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

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

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

Smart invalidation

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

No claim is etched in stone

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

A system for generating a high density plasma comprising:

a plasma confinement chamber of cylindrical form;

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The trend extends

Usual readers of this blog will certainly get the impression that the author sometimes repeats himself. And they will be right.

On a number of occasions, I expressed the view that French courts have gotten very strict on added matter (i.e. extension of subject-matter beyond the content of the application as filed) over the past few years. I mean “strict” as in “EPO strict“. And this trend seems to be further confirmed based on two recent decisions by the Paris Cour d’appel.

First of all, in a previous post, I reported on a first instance judgment in Jean Chéreau v. Frappa, in which two European patents were revoked for added matter. One patent fell because of a number of intermediate generalizations. The other one fell because the term “roughly longitudinally movable” was replaced by “longitudinally movable” – which was interpreted as having a fundamentally different technical meaning.

The patent proprietor appealed, but to no avail, as the initial judgment was confirmed on appeal, in a ruling dated February 28, 2017.

Second of all, another patent was revoked by the Paris Cour d’appel on the same ground of nullity on January 24, 2017.

Extension patents are OK but patent extensions are not.

Here are the basic facts of the case. Mr. Damour owns a French patent No. FR 2943699 filed on March 31, 2009, directed to a fire resistant sandwiched panel for doors. An exclusive license was granted to the Compagnie de Fabrication Industrielle de Menuiserie (COFIM).

On July 31, 2012, Mr. Damour and COFIM sued a French woodworking company called Breheret for infringement of the patent. However, in a judgment dated December 4, 2014, the Paris Tribunal de grande instance revoked all claims asserted against the defendant, for lack of inventive step.

The plaintiffs appealed and filed a request for limitation of the patent in parallel, which was granted by the INPI (French patent and trademark office) on July 22, 2015.

The Cour d’appel reviewed the limited claims, and came to the conclusion that they were invalid, but this time due to extension of subject-matter.

Here is a working translation of claim 1, with revision marks relative to claim 1 as granted:

A fire-resistant sandwich panel, [in particular] for the production of doors integrated into fire-block units or facades of fire-resistant technical ducts or for the production of fire hatch covers, said panel consisting of at least one core (1) having a density greater than 400 kg/m3, sandwiched between two wood fiber-based facings (2) having a thickness comprised between 1.5 and 50 mmboth facings being assembled to said core (1) by means of a binder preferably by gluing, characterized in combination

– in that the core (1) extends up to the edge of the panel so that there is no need for the use of bands, and a reliable stability of the fixation means is obtained, 

– in that the core (1) consists of a fiber reinforced silicate material having a density greater than 700 kg/m3,

– and in that said core has a thickness comprised between 6 and 30 mm. 

Ironically, among these various changes, the court focused on the recitation that the core extends up to the edge of the panel and concluded that this represented… an extension of subject-matter.

Here is the relevant part of the ruling:

According to lines 20-24 on page 5 of the patent application as filed, which disclose an example of panel of the invention: “the mechanical features of the core 1 and the facings 2 make it possible to avoid the provision of bands. The core 1, which is made of a hard material, provides strength up to the periphery of the panel, which is sufficient to obtain a good hardness of the edges and a reliable stability of the fixation means (such as hinges, espagnoles, brackets or the like)”. These lines, the drafting of which is ambiguous, must be read in the light of the description of the invention presented from line 14 on page 2 to line 5 on page 3, from which it can be derived that it is the use of the core, the material of which is chosen for its high fire resistance, sandwiched between two wood fiber facings, and not the fact that it extends to the edge taken as such, which makes it possible, on the one hand to obtain a hard edge which is not friable over time, and on the other hand to provide the panel with mechanical resistance qualities which are sufficient to afford a good stability of the fixation elements. 

Claim 1 as limited thus adds a technical effect which extends the scope of the patent in that it indicates that it is the fact that the core extends to the edge which affords a better fixation of the ironwork. 

On page 4, lines 7-9 of the application as filed, it is specified that “the drawing shows that the core 1 extends up to the edge 3, therefore illustrating that the use of bands is unnecessary”. This relates to figure 1 showing an embodiment of the invention, and only makes a connection with the fact that the core extends to the edge and that bands are unnecessary. 

It results from the above that claim 1 as limited must be revoked as extending beyond the content of the patent application as filed.  

To put it otherwise, when looking closely at the application, it seems that the patent proprietor mixed language from two passages of the application. In the first passage it is mentioned that the core extends up to the edge and that the use of bands is unnecessary. In the second passage, it is mentioned that the mechanical features of the core and facings make it possible to avoid the use of bands; and that the core, made of a hard material, provides strength to the periphery and thus a reliable stability of the fixation means.

What neither passage explicitly mentions is that the extension of the core up to the edge results in a reliable stability of the fixation means. This technical effect seems to be rather related to the nature of the core material.

The gold standard applied at the EPO for appraising the allowability of an amendment is whether the amendment can be directly and unambiguously derived from the application as filed as a whole. Here, the court noted that the drafting was “ambiguous“. Therefore, the outcome seems to be in keeping with the doctrine of the Boards of appeal.

It should also come as a warning for patent proprietors who limit their claims in an attempt to overcome first instance revocation grounds. This is a very common strategy, but also one which may sometimes lead them somewhere between Scylla and Charybdis.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, January 24, 2017, COFIM & Vincent Damour v. Breheret, RG No. 15/03652.