A technical silver lining

They say that every cloud has a silver lining.

Thinking about a recent Philips case in which not one, not two, but three patents were revoked by the Paris Tribunal de grande instance (TGI), this saying seems quite fitting.

From the perspective of IP right holders, the dark cloud is of course that we have just been presented with yet another confirmation that patent validity is severely appraised in France. But the silver lining is that, although software patents were at stake, the court did not strike them down for just being that, but on the contrary fully acknowledged the technical nature of the inventions.

The case at hand was certainly a big one for Philips.

Not only were three patents involved, but there were also parallel proceedings against several unrelated defendants.

So much so that there were in fact four judgments issued on the same day: one pitching Philips against HTC, another against Asus, another against Archos and the last one against Wiko.

Philips reproached all defendants for not joining their “Touch enabled device” license program, and retaliated by filing an infringement action based on European patents No. EP 1384134, EP 0888687 and EP 1571988.

The four judgments look substantially identical, so it should be sufficient to look at only one of them.

Claim 1 of EP’134 reads as follows:

A data processing apparatus having a user interface assisting in searching for information from an ordered list a data array, the apparatus comprising:
an array scroller responsive to user actuation; and
a helper character-generator, actuated by continued user actuation of the array, the helper character generator being operative to display a helper character representative of a portion in the list being scrolled.

In brief, this is a user interface invention. The context is that of a long list of elements. In order to facilitate the retrieval of one element in the list by the user, a so-called “helper character” appears. This helper character may represent e.g. a first letter of a name or a first digit of a telephone number. It is thus representative of a cluster of entries in the list. By scrolling from helper character to helper character, the user may select a desired cluster, and then browse within this cluster instead of browsing through the entire list.

Choosing the right song in a menu, a critical decision to make.

The defendants argued that this was a mere presentation of information, and thus not an invention under art. 52 EPC.

Here is the court’s position on this objection:

Displaying the helper character involves continuous actuation by the user in a scrolling array. 

The patent thus relies on the user taking an active part, via an improved interface interacting with him, thus creating a particular technical effect due to the actuation by the user, allowing a faster choice in an array of elements. 

By combining several modes of scrolling down a list of elements, the patent teaches an adaptive user interface for searching and displaying, and thus does not just present information “as such”. It should also be emphasized that the purpose of the invention is to facilitate the selection of an element in a large set of data, on small size devices, taking into account their specific ergonomic design. 

Therefore, the EP’134 patent undeniably implements technical means to obtain a technical solution to a technical problem. Its subject-matter is thus patentable. 

I asked my partner Aujain Eghbali, who is an ace at computer-implemented inventions, what we can make of this.

His main comment was that this is the same type of reasoning that the EPO could have made. He added that the court’s reasoning is in fact quite patent-friendly even by EPO standards.

In particular, the court relied on the ergonomic character of the human/machine interface when assessing the technical nature of the invention. The Boards of appeal of the EPO have sometimes adopted a similar approach (see T 1779/14) but the Guidelines for examination do not take any clear position on the technical nature of such innovations. Section G-II, 3.7.1 suggests that a “physical ergonomic advantage” could be considered as a technical contribution, but specifically in relation with user input.

The court also took note of a statement in the description of the patent, per which human-machine interaction is particularly challenging when the device is small, due to the physiology of the user. Although effects relying on human physiology are acknowledged in the EPO Guidelines (section G-II, 3.7), they are not commonly accepted by examiners as having a technical character, Aujain said.

Going back to the judgment, the EP’134 patent was thus found to meet the requirements of article 52 EPC.

Further objections of insufficiency of disclosure and lack of novelty were also rejected. But the patent finally died of lack of inventive step.

However, it is important to note that all features of claim 1 were fully taken into account in the inventive step reasoning, in keeping with the court’s finding that the claim related to a technical solution to a technical problem.

The court’s negative opinion on the patent was thus fully based on relevant disclosures identified in the prior art. So, this is your good old, traditional, prior art-based lack of inventive step, if you will; not a this-is-not-technical-enough lack of inventive step.

In more detail:

The EP’036 document teaches that, upon continuous actuation of the scrolling key, the first names are sequentially displayed, in the alphabetic order, for each letter, thus providing a search tool. 

Starting from this search tool disclosed in EP’036, the skilled person, namely an electrical engineer experienced in designing user interfaces for portable electronic devices, confronted with the problem of selecting an element in a scrolling list on a small size screen, would achieve claim 1 of the EP’134 patent, since the search tool of the EP’036 prior art (underlining the first letter of a name) is only a visual alternative to the generation of a help character, which is anyway taught by the US’949 document. 

The EP’036 document also taught scrolling cluster by cluster, allowing the user, by maintaining the scrolling key pressed, to go from letter to letter in the directory, without having to go through all names starting with the same letter. 

Therefore, the features of claim 1 of the EP’134 patent derive from the state of the art. 

Next up was EP’687, another user-interface patent.

See in particular claim 1:

An electronic device comprising:
– at least one display;
– a controller arranged to cause the display to show a rotating menu comprising a plurality of menu options,
which menu is disposed off centre in the display so that at least one option is rotatable off the display at any one time, whereby an arbitrary number of options may be added to the menu without changing its format.

Again, the court fully acknowledged the technical character of the invention:

[…] The EP’687 patent aims at improving a user interface for a screen. To this end, it allows displaying a menu comprising a plurality of options as well as adding an arbitrary number of options to the menu without changing its format. It thus provides a better identification of options. 

The objective of the EP’687 patent is to facilitate adding more articles to the menu without making the display more complex, as long as at least one option in the menu is out of the screen due to the rotating menu being off-centered. 

Therefore, the patent makes it possible for the user to interact with the device, while adding any number of options to the menu, without modifying the format and while keeping their own character making their identification easier.

Consequently, the EP’687 patent, which ensures a better identification of menu options for the user, by means of a controller which combines a particular option display format and a double function of rotation and addition of options, obviously implements technical means to provide a technical solution to a technical problem. Its subject-matter is thus patentable. 

Like for the previous patent, Philips was also able to fend off insufficiency and lack of novelty challenges, but then stumbled on inventive step, as the prior art was deemed to be very similar to the invention.

The third patent was directed to an activity monitor. Its technical character was not challenged. It was revoked for lack of inventive step all the same.

In summary, the present case seems to confirm a trend recently seen in a Thales decision and on the contrary to drift further away from past case law in which the stance on patent eligibility was considerably stricter.

How apropos then that the INPI (French patent office) has just published an updated version of its examination guidelines containing two new sections C.VII.1.3.1 and C.VII.1.3.2 on computer-implemented inventions.

One section is dedicated to CAD and computer simulations. The other one relates to AI. Both provide additional guidance as to what should be considered technical or non-technical, again quite in line with the EPO approach. Maybe the next revision will contain some additional thoughts on graphical user interfaces?


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, July 11, 2019, Koninklijke Philips NV v. SAS HTC France Corporation & HTC Corporation, RG No. 16/02073.

Would a “could” suffice?

Comparing EPO and French case law on validity is one of this blog’s favorite topics.

Today’s post will be dedicated to a cornerstone of the EPO doctrine: the could/would approach in the inventive step reasoning.

The could/would approach was actually nicely summarized by the Paris Cour d’appel in a Sandoz v. Eli Lilly decision (January 13, 2012), making explicit reference to the European case law book that all European patent attorneys have on one of their shelves:

As can be derived from established case law of the Boards of appeal of the EPO, the question is not whether the skilled person could have made the invention by modifying the state of the art, but whether he would have done so in the hope of achieving the advantages that were really obtained in the light of the technical problem at stake, because the state of the art contained suggestions in this respect. 

So far so good, and all supporters of pan-European harmonization must be satisfied.

Not so fast, though, as some recent decisions seem to show that the could/would approach is not as inscribed in the DNA of French IP courts as it is in the EPO’s DNA. Here is an example. 

Modelabs Mobiles is a French company which distributes mobile phones and other IT devices. Modelabs Mobiles filed a French patent application No. FR 3063299 on February 24, 2017, directed to a casing for locking and immobilizing a phone.

Just after the publication of the application, Modelabs Mobiles proceeded with an infringement seizure against its competitor Wiko, on October 23, 2018, and soon thereafter filed an infringement suit, based on the FR’299 application (yes, this is possible before the grant of the patent under French law).

The patent was granted on April 12, 2019. On June 7, 2019, Modelabs filed a claim for preliminary injunction with the judge in charge of case management, and further requested a provisional damages award of more than 2 million euros. Modelabs argued that the existence of infringement acts was likely, and that since the defendant was in a restructuring process, there was a risk that damages could not be recovered.

The judge in charge of case management ruled on September 13, looking first at whether the patent was apparently valid.

Here is claim 1 of the patent:

Casing, in particular intended to contain a telephone, comprising:

– a first shell and a second shell that close onto one another so as to close the casing by rendering its contents inaccessible,

– a slide that is movable in translation on the first shell, comprising at least one coupling member, and which can be actuated from outside the closed casing so as to be positioned by translation in a first, a second or a third positions, wherein the first shell, the second shell and the coupling member(s) are arranged so that, when the casing is closed:

– at least one coupling member is coupled to the second shell when the slide is in the first position, thus opposing the opening of the casing,

– at least one coupling member is coupled to the second shell when the slide is in the second position, thus opposing the opening of the casing,

– the coupling member(s) is/are free when the slide is in the third position, thus allowing the opening of the casing, the casing further comprising:

– a device for locking the slide on one of the shells in the first position, actuable only by means of a dedicated tool from the outside of the casing when this casing is closed,

– first means for reversible immobilization of the slider in the second position,

– second means for reversible immobilization of the slider in the third position.

In summary, this casing can be used for protecting a phone in a store. The casing has three configurations: one which is fully locked, and which requires a tool (e.g. a magnetic one) to be unlocked; one which is unlocked and closed; and one which is unlocked and open. The transitioning between the unlocked / closed and unlocked / open positions can be performed without using an external tool.

Locked – unlocked

Wiko relied on three prior art documents against the novelty and inventive step of the main claim. The judge found that the claim was novel.

Regarding in particular the so-called EP’090 prior art reference, the judge held:

[…] The “movable member” which can correspond to the “slide” of the invention of the patent can be positioned in two different positions, and not three. In order to ensure an anti-theft function, a safety device must be added, comprising an “inserted” external element whereas, in the casing claimed by Modelabs, the safety device is fully part of said casing even if it requires the use of an external tool to be deactivated. 

A similar conclusion was reached regarding the two other prior art references.

However, regarding inventive step, the judge made the following comments:

In view of the state of the art […], the skilled person already knew casings for products on sale, having an integrated locking system, which can be actuated by a dedicated external tool such as a magnetic tool, preventing access to the content of the casing in the absence of said tool without breaking the packaging itself. 

Admittedly, the casing at stake, relative to [this prior art], provides an intermediate position in addition to the mere locked/unlocked alternative. but this mode of using the casing (simply closed in a reversible manner) does not address the technical problem that the invention purported to solve, which was to make the content of the casing safer. 

Besides, it can be legitimately questioned whether the skilled person requires a particular inventive step in adding an intermediate position between the locked/unlocked positions for the coupling member supported by the slide […], in order to keep the casing closed in a reversible manner (thus that can be manually actuated, without a dedicated tool), in view of the state of the art. Indeed, the addition of such an intermediate position prima facie seems to rather logically derive from [the prior art]. 

Therefore, the prior art submitted as a defense provides a serious possible ground for nullity [of the patent]. 

As you can see, the judge does not seem to reason in terms of what the skilled person would have done, but rather in terms of what he or she could have done.

Indeed, although there does not seem to be any suggestion or motivation in the prior art to have this intermediate closed/unlocked position for the slide, as far as I can tell from the judgment, the judge nevertheless concluded that it would have been “logical” for the skilled person to include such an additional position.

By way of comparison, here is the position taken by the EPO examiner in charge of the search report for the French application (based on different, but presumably similar prior art):

Such a casing with three positions for the slide and “reversible immobilization means” […] is completely unknown in the state of the art. Hints pointing to this direction are also absent. 

So, what can we make of this? One interpretation of course is that the inventive step threshold is higher in France than at the EPO. This is of course very possible. Another interpretation is that the judge had questions or doubts and simply did not want to grant a preliminary injunction and preferred to let the case continue on the merits.

That said, my attention was also drawn by the following statement:

Modelabs did not provide any argumentation regarding the inventive step of its patent which differs from the novelty argumentation. 

As always, we should keep in mind that, in view of our rules of civil procedure, and based on a longstanding tradition, French judges limit the scope of their decisions to the arguments put forward by the parties. Therefore, in the absence of any reference in the patentee’s submissions to the could/would approach, it is unsurprising that the judge did not use this reasoning.

Thus, I could say (or make that rather: I would say), that argumentation in French patent litigation has to be complete, including explanations on the legal standards to be applied – or else… 

As a next step, if the case continues on the merits, we will see whether the three-judge panel of the court uses the same or a different approach.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, ordonnance du juge de la mise en état, September 13, 2019, SAS Modelabs Mobiles v. SAS Wiko, RG No. 18/13517.

No way back

There once were submarine patents, living a quiet and inconspicuous life underwater, only to surface one day with a resounding splash.

Turns out what we do sometimes have in France is submarine patent cases. A recent ruling by the Lyon Cour d’appel could be considered as one of those.

In fact, Paris has exclusive jurisdiction over patent matters since November 1, 2009. Thus, I was more or less convinced I would never see again a patent revoked in a provincial court – but I was wrong.

Chavanoz Industrie, proprietor of European patent No. EP 0900294, filed an infringement suit against Mermet SAS in 2009, a couple of months before the November 1 date, and thus in Lyon. The first instance judgment was issued in September 2016.

I assume that the main reason why this lingered for such a long time is that the defendant merged in 2011, and then underwent insolvency proceedings in 2012. In 2013, a so-called continuation plan was ordered.

At any rate, the Lyon TGI hit late, but it hit hard, as the patent was held valid and infringed, and a damages award amounting to a total of more than 25 million euros was issued.

However, the ruling was fully overturned on appeal, a few weeks ago, as the Cour d’appel had a different appreciation of a key aspect of the case from the TGI.

The patent at stake was filed on April 16, 1997, claiming a French priority of May 7, 1996. It was granted in 1999 and limited by the French patent office (INPI)… in 2017, just a few days before it expired. Unusual enough, but wait until you read about the rest of the case.

Claim 1 of the patent as limited reads as follows:

Composite yarn for making a technical fabric for an awning, said yarn comprising a core composed of a continuous yarn made of glass, and a coated sheath composed of a matrix consisting of at least one chlorinated polymer material, for example a polyvinyl chloride or PVC, and a fire-retarding filler incorporated into and distributed within the said matrix, characterized in that, in combination, on the one hand the fire-retarding filler comprises a ternary composition which combines an oxygenated antimony compound, for example antimony trioxide, a hydrated metal oxide, the metal of which is chosen from the group consisting of aluminium, magnesium, tin, zinc and lead, for example an alumina hydrate, and a zinc borate and, on the other hand, together with the said ternary composition, the total weight content of inorganic matter in the yarn is between 4% and 65%.

The alleged infringer asserted that the invention had been made available to the public before the priority date of May 7, 1996, because the patent proprietor Chavanoz had supplied the patented yarn to (among others) a third party, Helioscreen.

Chavanoz responded by relying on a confidentiality agreement signed with Helioscreen on April 9, 1996.

The court had to deal with three thorny issues:

  • Chavanoz stated that most of Mermet’s exhibits relating to the alleged public prior use were illegally obtained, in view of the confidentiality agreement, and that they should thus be disregarded by the court.
  • Then there was the question of whether the supply of the yarn in question was indeed a public disclosure or whether it was confidential.
  • Then there was the question of whether the skilled person would have been able to arrive at the claimed invention by analyzing the supplied yarn, at the priority date.

First things first, the fate of the exhibits.

In support of the public prior use allegation, the infringement defendant filed a number of documents, such as invoices, orders, letters, between the patent proprietor and the third party Helioscreen. These documents were, as far as I understand, willingly provided by Helioscreen. Chavanoz protested that this was in breach of the Chavanoz-Helioscreen confidentiality agreement of April 9, 1996.

The first instance judges agreed and thus discarded the evidence. But the appeal judges came to a different conclusion.

The 1996 confidentiality agreement recites that the parties have been cooperating since May 9, 1994 in the business of technical fabric. Helioscreen provided specifications, Chavanoz made yarn and supplied it to Helioscreen, together with some technical information, Helioscreen made fabric with this yarn and supplied samples of said fabric to Chavanoz for testing. The agreement then basically states that all information, documentation, products exchanged between the parties is confidential, and that the agreement itself is confidential. The agreement also mentions that it is retroactive back to May 9, 1994 and that it will remain in force as long as all of the confidential information has not been made available to the public.

The appeal judges held that the confidentiality agreement expired in November 1997, when the patent application was published. Therefore, Helioscreen was free to provide any documents and information to Mermet. Besides, Mermet was anyway not bound by the confidentiality agreement and was free to provide any material obtained from Helioscreen in order to build its defense. In fact, Helioscreen was not sued by Chavanoz for breach of the confidentiality agreement.

As a result, all of the exhibits filed by Mermet were deemed admissible.

I am not necessarily convinced by the argument that the confidentiality agreement expired when the patent application was published. Indeed, the information exchanged by the parties could possibly extend beyond the contents of the patent application. Notwithstanding, it seems only fair that Mermet, as a third party to the agreement, should be allowed to rely on whatever evidence is at its disposal as a defense in the infringement suit.

This brings us to the second point, namely whether the exchanges between Chavanoz and Helioscreen were confidential or not.

The court analyzed in detail the evidence at hand, and concluded that several dozens of tons of so-called M1B1 yarn were sold by Chavanoz to Helioscreen before the priority date of May 7, 1996. The yarn was first experimented in 1992, but by 1995, the production of the yarn was on an industrial scale. The court further noted that there is no evidence that the formulation of the yarn changed as from 1995-1996, or that the product was still in development – even though further yarn colors were later designed.

Besides, the M1B1 yarn was also supplied to other fabric manufacturers, including Mermet itself and another company called Brochier, in the context of the professional association ScreenGlass, in order for all manufacturers to provide feedback on the yarn.

The court also established that the fabric made by Helioscreen from the M1B1 yarn was sold to various clients before May 7, 1996.

No written confidentiality agreement was in place when all these exchanges took place; in particular, no exhibit on file bears the mention “confidential“.

The court then stated that “there is never a presumption of confidentiality in the context of a relationship with a buyer“.

Next, the appeal judges turned to the confidentiality agreement of April 9, 1996, which, as a reminder, states that all prior exchanges with Helioscreen were confidential. The court was unimpressed by this statement:

The reality of the amounts supplied to Helioscreen and the reality of the industrialization phase emphasized by Chavanoz Industrie itself in its commercial correspondence are never mentioned [in the agreement]. The content of the deliveries that are mentioned only relates to “samples”. 

[…]

It is thus important to determine if a company that has already disclosed its invention to a partner not subjected to an obligation of confidentiality at the time of the disclosure can erase the existence of this disclosure, which may be novelty-destroying, by signing a confidentiality agreement after the facts. 

The public policy provisions of patent law prevent parties to an agreement, from depriving a disclosure which has already occurred of legal effect, even with a retroactive effect.  

An invention is made available to the public when it is disclosed to a person not bound by confidentiality at the time of the disclosure, so that the retroactive provision in the above confidentiality agreement has here no effect on the appraisal of the validity of the patent. 

Is it possible to go back to the pre-disclosure situation?

Long story short, the particulars of the supply of M1B1 yarn by Chavanoz were deemed incompatible with the notion of an implicitly confidential sampling. And a public disclosure cannot be turned confidential ex post.

There was a side argument by the patentee that Helioscreen’s sale of fabric to their client Krüland was a non-prejudicial disclosure under article 55 EPC. This was considered as irrelevant by the court, since overall the public prior use took place even before 6 months prior to the priority date.

The third point at last. Chavanoz argued that the skilled person would not have been able to know the composition of the M1B1 product at the priority date without undue burden.

The defendant performed a number of experimental tests to counter this theory. First, they made the patented product according to the method taught in the patent, and then had the product analyzed. Second, they had a bailiff collect samples of the M1B1 yarn dating back to 1994 in Helioscreen’s premises, and had those analyzed as well.

The manufacturing was performed in the presence of a bailiff. All analyses were conducted in two independent labs, using analysis methods available at the priority date. Various experts’s reports were produced on both sides, either to challenge the results of the analyses, or to support them.

I will not go over the details of the discussion, which was technically quite complex, but it will suffice to say that the court was ultimately not persuaded by Chavanoz’ criticisms, and accepted Mermet’s conclusion that the M1B1 yarn could indeed be determined by the skilled person as falling within the patent claims.

As a result, claims 1, 2, 3, 5, 7 and 8 of the patent were deemed to lack novelty and were revoked, and Chavanoz’ infringement claim was dismissed.

Let me say that this decision is overall well reasoned and makes for an excellent read. I am therefore looking forward to the next submarine from Lyon – if any.

As a take home message, confidentiality agreements should really be put into place initially. There is no way back once a business relationship has started on a non-confidential basis.


CASE REFERENCE: Cour d’appel de Lyon, 1ère chambre civile A, September 12, 2019, SAS Mermet et al. v. SARL Chavanoz Industrie, RG No. 16/06896.

More than just diapers

Rulings from the Enlarged Board of Appeal of the EPO are scarce – this is what makes them so eagerly awaited by the patent profession.

2019 may turn out to be an exceptional year in this respect though, with already three official referrals so far and an imminent fourth one which has not yet been officially issued as of today.

But sometimes I wonder whether these rulings are not in fact too scarce. Overall, the case law of the Boards of Appeal is consistent and contradictions between decisions are infrequent. But there is always room for improvement, right?

Case in point: sufficiency of disclosure and the issue of so-called unclear parameters.

If you read sections II.C.4.5 (“Parameters“) and II.C.7.2 (“Article 83 EPC and Clarity of Claims“) of the EPO case law book, and if you are able to summarize the standard to be applied regarding this question, you will deserve some kudos.

The issue is the following. Some claims contain parameter features, such as “Property X is more than threshold Y“. There are cases wherein the application or patent at stake does not explain in a satisfactory manner how to measure property X. As a result, property X may be close to impossible to measure for the skilled person; or the skilled person may be aware of different possible ways to proceed, leading to wholly different results.

There is little doubt that this can give rise to an objection of lack of clarity of the claims (art. 84 EPC). The real head-scratcher is whether it also gives rise to an objection of insufficiency of disclosure (art. 83 EPC), or can give rise to this objection in some special circumstances.

This is of course extremely important because insufficiency of disclosure is a ground for opposition (and nullity, for that matter), whereas lack of clarity is not. In other words, if the answer to the above question is no, then an ill-defined parameter already present in the granted claims cannot be challenged after grant, no matter how serious the problem is.

Let me just state, incidentally, that on a practical standpoint this can be a major concern for third parties, who can be at a complete loss as to whether they infringe or not, and what to do in order not to infringe.

A large number of Board decisions have addressed this question, in various ways. The question has however never been referred to the Enlarged Board of Appeal.

Only the Boards of Appeal or the President of the EPO can refer a question to the Enlarged Board “to ensure uniform application of the law, or if a point of law of fundamental importance arises” (art. 112 EPC). Parties can only request a referral but without any power whatsoever to force a referral.

Can the case law of the Boards on the relationship between art. 83 and art. 84, in particular as far as ill-defined parameters are concerned, be considered as uniform or not?

My personal impression is that there is some degree of divergence, although this is in fact denied in some decisions.

One approach in particular that has been applied is that the impossibility for the skilled person to know whether he/she is working within the scope of the claims (“forbidden area“) is tantamount to an impossibility of carrying out the invention. 

In T 1811/13 (November 8, 2016), Board 3.2.05 noted that this approach originates from decision T 256/87 and “appears to have gone unnoticed until 2003” (reasons 5.1); that it was adopted by four decisions issued by Board 3.2.06 between 2004 and 2007, including in particular T 464/05; and that on the other hand many other decisions have rejected this approach since 2003, because “the definition of the scope of a claim was related to Article 84 EPC rather than Article 83 EPC“.

Board 3.2.05 concluded (reasons 5.1) that:

It may, therefore, be said that today there is agreement or at least a clearly predominant opinion among the boards that the definition of the “forbidden area” of a claim should not be considered as a matter related to Article 83 EPC. The present board shares this opinion.

Decision T 647/15, issued by the same Board 3.2.05 almost contemporaneously (September 8, 2016), states pretty much the same.

So far so good. Except that Board 3.2.06 in fact stands by its earlier case law.

This was notably illustrated in T 1188/15 of November 24, 2016.

In T 626/14 of  May 24, 2018, Board 3.2.06 explicitly disagreed with the comments made by Board 3.2.05 in T 1811/13 and T 647/15 regarding the earlier 3.2.06 case law, embodied by T 464/05. Said the Board (reasons 1.4.1):

Yet, T1811/13 and T647/15 themselves concentrate only on an individual aspect in e.g. T464/05, namely ‘the area covered by the claim’ without addressing the actual findings in that decision regarding the issue of Article 83 EPC. In fact, T464/05 draws a distinction between the two objections under Articles 83 and 84 EPC respectively and explains the significance thereof. For example, T464/05 considers in Reasons 3.3.2 not the boundaries of the claimed subject-matter which was the subject of T1811/13 and T647/15, but the lack of indications in the patent concerning the measurement of a particular parameter. This is stated in T464/05 as resulting in ‘an undue burden for the skilled person trying to reproduce the invention’. Likewise, in Reasons 3.2, the crucial issue in respect of sufficiency of disclosure concerns the issue of whether a skilled person ‘is capable of reliably measuring (the) parameter’. Thus, T1811/13 and T647/15 do not cause the present Board to see anything which would undermine the reasoning in T464/05 concerning Article 83 EPC. In the sense that a parameter to be measured was at issue in T464/05 with regard to Article 83 EPC, the Board in the present case is faced with the same issue, i.e. the undue burden created by the lack of any information allowing the skilled person to reliably measure the defined thickness. This, as explained supra, results in the skilled person being unable to know whether he has arrived at the invention or not, such that the invention is not sufficiently clearly and completely disclosed.  

In summary, Board 3.2.06 in T 626/14 maintains its position, and insists that if the skilled person is unable to know whether he or she has arrived at the invention, due to a lack of information in the patent, this amounts to an insufficiency of disclosure.

How did the other Board 3.2.05 react? In case T 250/15 (July 20, 2018), one of the opponents requested that the Enlarged Board of Appeal be consulted regarding the question of sufficiency of disclosure in the case of an ill-defined parameter. The Board found the requirements of sufficiency of disclosure to be met in the case at hand, and rejected the request for a referral.

In particular, the Board had this to say regarding the latest comments by Board 3.2.06 (reasons 2.6, translated from French):

The present Board notes that decision T 626/14, just like case T 464/05, concerns a particular constellation in a certain technical field. The present case is however different in that the parameter of the number-average molecular weight Mn relates to a clearly defined property which is inherent to the material. Besides, it has not been challenged that the skilled person has a limited number of appropriate and generally known measurement methods. Therefore, T 626/14 cannot put into question the conclusions expressed above regarding the sufficiency of disclosure of the invention, and the request for a referral to the Enlarged Board of Appeal which was orally presented by respondent I must be rejected. 

In a nutshell, for Board 3.2.05, the facts of the case are different from those of T 626/14, and the parameter at stake here does not raise any difficulty for the skilled person.

Again, so far so good. But the comment on “a particular constellation in a certain technical field“, on the other hand, is puzzling.

The technical field of T 464/05 and T 626/14 is that of sanitary articles, such as diapers and the like.

What could be so special about this technical field? In T 464/05 the contested parameter was a “weighted average mass vapor transmission rate (MVTR)” and in T 626/14 it was simply a thickness which is nevertheless difficult to measure as it relates to a fibrous layer, so that a certain pressure needs to be applied in order to make the measurement.

Admittedly, these two parameters were very specific ones, but there is no doubt that other problematic examples can be found in many other technical fields. There is nothing unique about the diaper constellation.

Fish density on an absorbent article: an ill-defined parameter?

A divergence of approach between some Boards, each one consistently applying its own case law, is not unheard of.

For example, novelty of dosage regimen claims led to disagreements between Boards 3.3.02 and 3.3.04, before the Enlarged Board issued its decision G 2/08.

Is it fair to say that there is such a similar divergence nowadays between Board 3.2.06 and (at least) Board 3.2.05?

If so, would a referral to the Enlarged Board of appeal (in a case fit for this purpose of course) not be a much better solution than putting any divergence under the rug?

The legal standard to be applied to a patent should not depend on its IPC classification and the business distribution scheme of the Boards.

As a disclaimer, what is discussed above is not the full picture of ill-defined parameters. Yet further legal standards have been suggested and debated.

For example, in T 1845/14 of November 8, 2018, Board 3.3.03 analyzed another line of case law, embodied by T 593/09, T 608/07, T 815/07 and T 172/99, according to which “the criterion applied for assessing sufficiency of disclosure was whether the unclear parameter of the claim was so ill-defined that the skilled person would not have been able, on the basis of the disclosure as a whole and using their common general knowledge, to identify (without undue burden) the technical measures (e.g. selection of suitable compounds) necessary to solve the problem underlying the patent at issue“.

After a very thorough analysis, Board 3.3.03 came to the conclusion that this “is not a suitable criterion for assessing sufficiency of disclosure when the problem or an effect derivable from it are not explicitly or implicitly part of the definition of the claimed subject-matter” (reasons 9.8).

The Board then added (reasons 9.9):

The view expressed above could be perceived as a deviation from the above cited decisions or other decisions of the Boards of Appeal in which a criterion for assessing sufficiency of disclosure was whether the ambiguity of a parametric definition deprived the person skilled in the art of the promise of the invention. However, there is no need to refer a question to the Enlarged Board of Appeal as the diverging views arise from a different approach regarding the meaning of the term “invention” in relation to the issue of sufficiency of disclosure and the approach taken in the present decision is supported by the decisions of the Enlarged Board of Appeal G 2/98 (see above) and G 1/03 (see above).

Interestingly, the Board in this case did find the claimed invention to be insufficiently disclosed despite setting aside a legal standard which would have been more demanding for the patent in suit. Said the Board (reasons 11.3):

The ambiguous definition of a parameter in a claim may result in the scope of the claim to be broader than the patentee might have intended. In such a case the question arises whether the teaching of the patent in suit, which was directed to the claimed subject-matter having regard to a specific meaning of that parameter (which, however, was omitted), would nevertheless have enabled the skilled person to carry out the invention outside of the scope intended by the patentee, using common general knowledge and a reasonable amount of experimentation.

It was decided that the teaching was insufficient in this respect.

Anyway, this was another example of a criterion previously applied in the EPO case law, now said to be erroneous by a Board, on the same topic of unclear parameters.

Time will tell whether T 1845/14 will be followed or not, and whether a unanimous frame of reasoning regarding ill-defined parameters will finally emerge from the case law, with or without the involvement of the Enlarged Board.

In the meantime, we may have to deal with a constellation of approaches.

Araxxe wields the axe

Never put all your eggs in the same basket” is probably a truism in many contexts. Including the one of patent rights.

Case in point: Araxxe, a French company, owns European patent No. EP 2087720. The patent gets opposed, gets killed by the opposition division of the EPO, and does not get resurrected by the Board of appeal. But it turns out that Araxxe had another egg in its basket, namely French national patent No. FR 2908572 – originating from the priority application. And the Paris Tribunal de grande instance (TGI) held that the patent was valid and infringed.

Let’s take a few steps back to look more precisely at what happened.

The French patent FR’572 was granted in March 2009. A couple of months later, Araxxe sent a warning letter to the Belgian company Meucci Solutions. Since the exchanges between the two firms did not lead to a resolution, Araxxe filed a complaint in front of the Paris TGI in December 2009. At that time, the European application claiming priority from FR’572 was still pending at the EPO. This led the TGI to issue a stay of proceedings in May 2011. Such a stay is ordered as of right, since the French part of the European patent substitutes for the French patent when it is definitely granted. By “definitely” is meant that a possible opposition should be taken into account.

In this case, Meucci Solutions (later renamed Sigos), did file an opposition against EP’720 after grant, in 2013. The opposition division revoked the patent, and the Board of appeal confirmed this revocation in November 2016 (case T1645/15).

Araxxe could have withdrawn the French designation of the European application in order to try to avoid such a long stay of proceedings. Indeed, the European application as filed contained the same claims as the French patent as granted. Therefore, it was extremely unlikely that the European patent would end up having a broader scope of protection than the French patent. But they did not do so.

Thus, the case resumed after the termination of the EP proceedings, with no EP-FR substitution having taken place due to the demise of the European patent.

Interestingly, Araxxe asserted only claim 8 of the French patent.

One basket, different eggs.

Here is claim 1:

A method for generating scheduled communication operations over one or more communication networks from an information system and verifying their correct invoicing, comprising:
– allocating resources within said information system for a call campaign over a predetermined period of time,
– managing communication equipment in shared time, 
– executing communication or transaction operations, in response to execution orders received from a call scheduling site, 
– collecting invoicing data produced by the operator, and
– automatic data correlation allowing anomaly identification,
characterized in that the method is simultaneously implemented for a plurality of communication operators, the allocated resources being shared, each communication operator being able to issue communication or transaction operation execution orders.

Here is now claim 8:

Application of the method of any one of claims 1 to 6, for the purpose of detecting traffic bypass operations by third parties, said method implementing a comparison of theoretically expected caller identifiers with identifiers actually recorded by the call receiving robot. 

The defendant not only challenged the validity of claim 8, but also that of claim 1, since claim 8 makes reference to claim 1. But the court refused to consider the attack against claim 1, because claim 8 is independent from claim 1, they said.

Under French practice, invalidity counterclaims are in principle only examined when they relate to the claims alleged to be infringed – regrettably so, I would say. This part of the decision is thus relatively unsurprising. As to whether claim 8 can truly be termed an independent claim, I have some doubts. Any dependent claim could actually be termed independent, in that case. Not that this categorization really matters in the end anyway.

As a result, 17 pages of the defendant’s written submissions on invalidity were disregarded. Also, the defendant’s arguments that the patentee had “agreed” that its claims were invalid since they had been modified in front of the EPO, did not fly. The court stated that:

Amending claims during examination or opposition proceedings, in view of remarks made in search reports or observations from the patent offices, is a usual and common practice which cannot be considered as an agreement by the applicant that its right is invalid. 

That is a relief for all patent attorneys I guess.

The remaining validity points to be addressed were inventive step and sufficiency of disclosure.

As an important note, EP’720 was revoked for extension of subject-matter. But the claims of the European patent as granted were different from those of the French patent. Most importantly, the French patent claims were identical to those of the European application as filed. As a result, there was no way the objections entertained by the EPO could apply similarly to the French patent.

Concerning inventive step, the court noted that the claims of the European application were initially held to be obvious during examination. But then the patent was granted, and the opposition division viewed the granted claims as inventive in the preliminary opinion annexed to the summons to oral proceedings. I would say that this is largely irrelevant, again because the European claims as granted were different. Anyhow, the court then looked at the prior art relied upon by the defendant and was not able to find any lack of obviousness.

Concerning sufficiency of disclosure, things unfortunately got somewhat murky in the judgment.

The defendant argued that the European claims had to be restricted to recite a “plurality of robots” – which led to the extension of subject-matter trap; and that this was an essential feature without which the invention could not be implemented. The court replied that claim 8 refers to claim 1, which recites “a plurality of robots“, so that there is no issue. Except that I cannot find this phrase in claim 1. Maybe another claim feature was considered as synonymous or equivalent, but the court did not provide any detailed explanation.

It gets worse at the next sentence, when the court remarked that the European patent was granted anyway. This overlooks the defendant’s whole point, which was that the European claims had to be modified in order to be overcome a serious objection.

And it gets more than worse (I would go as far as saying “worserer”) in the following sentence:

The later revocation of this European patent does not have any impact on the validity of the French patent since said revocation was based on a ground which is specific to the EPC (extension of subject-matter), which has no equivalent in French law. 

Readers will be excused if they have fallen from their seats at this point. Extension of subject-matter, of course, has nothing to do with insufficiency of disclosure, and both are fine grounds of nullity under French law.

I am not saying that the insufficiency attack was very serious, or that the court’s decision to uphold the patent was erroneous – I have no personal opinion at this point. But some parts of the judgment seem to have been drafted too hastily. This is most unfortunate at a time when there is a perception of global increase in the quality of French judgments in patent matters.

In the rest of the decision, Sigos’ challenge against the infringement seizure at a data center owned by a third party failed. As did their challenge against a bailiff report on a website dated December 2009 but filed in court only in November 2017, as a reaction to Sigos’ argumentation.

The court then turned to the analysis of infringement. I will not go into a feature by feature analysis, as the main interesting point in my view was the issue of territoriality. Indeed, Sigos argued that it performed most of its activities abroad.

The court replied:

The infringement seizure report, but also the bailiff internet report and the screenshots prove the use or the offer to use of an allegedly infringing process, by Sigos, in France. Therefore, it cannot be denied that the alleged harm takes place in France. It is irrelevant whether the means to control and handle the supposedly involved robots are in Belgium, where Sigos states its global platform […] and its main assets are located, or whether the correlation operations are performed abroad, since it appears […] that they are active in France with the main French phone companies. 

If my understanding of the above paragraph is correct, the court found it irrelevant that part of the steps of the claimed method may be implemented abroad. In that case, this would be a major departure from the traditional view that the use or purported use of a process has to be implemented in France (period) in order to be infringing.

As a consequence, the TGI issued an injunction against Sigos and awarded damages amounting to 378,000 euros and attorney’s fees amounting to 50,000 euros to Araxxe.

I don’t know if an appeal is pending or not, but some points in the decision would deserve to be further clarified.

At any rate, and going back to my initial comments at the beginning of this post, it is always useful for a right holder to have several different patents or applications in its basket especially for important cases, and this will certainly remain true even if/when the UPC comes into force.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 3ème section, February 1, 2019, Araxxe SAS v. Sigos NV, RG No. 15/15784.