Extension of subject-matter and/or of scope

Every profession has its own telltale expressions.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The court held the following:

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

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

– an electric motor which sets the gate in motion, 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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


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

Getting a handle on limitation

Last week’s post was about a famous chemical case which found its way up to the Cour de cassation twice, due to a tricky limitation issue combined with a tricky SPC issue.

Today, I would like to reassure readers versed in the mechanical arts. Yes, they too are entitled to get some fun with fancy limitation questions.

The case at hand relates to French patent No. FR 2843372 (FR’372), which is concerned with a sales display pack for door or window handles. The patent proprietor Société de Fonderie du Centre (SOFOC) has apparently had a complicated relationship with DIY store chain Bricorama over the past twenty years. A recent episode of their hectic partnership is an infringement lawsuit brought by SOFOC against Bricorama based on FR’372.

Interestingly, the legal action was started only one month after a limitation of the patent was granted by the INPI (French patent office).

Bricorama counterclaimed for invalidity – why would they not – and my focus will be on their argument that some of the patent claims were invalid due to extension of the scope of protection after grant, further to the alleged “limitation” of the patent. Speaking EPO language, this would be an “Art.123(3) objection“.

The patent as granted comprised a main claim and seven dependent claims. Claim 1 read as follows:

Sales display pack for door or window handles comprising a finger-plate and a lever-handle, characterized in that it is composed firstly of cardboard folded on itself in two flaps, a presentation flap and a back flap, and secondly means of attachment of the said handle(s) to be presented on said cardboard fitting into cut-outs formed in said cardboard, the said cardboard comprising two fixing cut-outs formed facing each other on the two flaps, at least four cut-outs for attachment of the handle(s) to the said display pack, said cut-outs being formed facing each other in pairs in the two flaps and at least one cut-out formed on the presentation flap, in which a transparent compartment is placed for containing assembly accessories for the presented handle(s).

After the limitation, claim 1 was worded as follows (the highlighted expressions corresponding to added features):

Sales display pack for door or window handles comprising a finger-plate and a lever-handle, characterized in that it is composed firstly of cardboard folded on itself in two flaps, a presentation flap and a back flap, and secondly means of attachment of two handles to be presented on said cardboard fitting into cut-outs formed in said cardboard, so that the finger-plates rest against the presentation flap, said cardboard comprising two fixing cut-outs formed facing each other on the two flaps, at least four cut-outs for attachment of the two handles to the said display pack, said cut-outs being formed facing each other in pairs in the two flaps and at least one cut-out formed on the presentation flap, in which a transparent compartment is placed for containing assembly accessories for the presented handles.

It was not challenged that amended claim 1 was more restricted than claim 1 as granted.

The issue was that, together with the amendment of claim 1, the patent proprietor had also filed five brand new claims 9 to 13 which, they said, were merely dependent claims.

New claim 9 was worded as follows (the highlighted portions being in my view the most important ones):

A set of two door or window handles attached to a sales display pack, each handle comprising a finger-plate and a lever-handle, characterized in that the sales display pack is composed of cardboard folded on itself in two flaps, a presentation flap and a back flap, and secondly means of attachment of the two handles fitting into cut-outs formed in said cardboard, the finger-plates resting against the presentation flap, said cardboard comprising two fixing cut-outs formed facing each other on the two flaps, at least four cut-outs for attachment of the two handles to said display pack, said cut-outs being formed facing each other in pairs in the two flaps and at least one cut-out formed on the presentation flap, in which a transparent compartment is placed for containing assembly accessories for the presented handles, the sales display pack being according to one of claims 1 to 8.

The following new claims 10 to 13 were also directed to a set of handles attached to a sales display pack, making reference to claim 9. For the defendant, claim 9 was an independent claim, and not a mere dependent claim as advocated by the plaintiff. They also argued that claims 9 to 13 extended the scope of protection of the patent and were thus invalid.

Fancy handles are best displayed in their natural environment.
Fancy handles are best displayed in their natural environment.

The Tribunal de grande instance (TGI) ruled in the defendant’s favor:

It is true that claim 9 repeats the wording of claim 1 regarding the definition of the sales display pack, but it is directed to “a set of two door or window handles characterized in that the handles are attached to a sales display pack”. Now, claim 1 only relates to the sales display pack which supports the handles, and not to the set composed of these distinct elements. The scope of protection under Article L. 612-6 of the Code de la propriété intellectuelle, restricted to the sales display pack in claim 1, is extended in claim 9 to a different product made of the combination of the handles and previously characterized sales display pack. Claim 9 adds relative to the features of claim 1 and concerns a distinct subject-matter, whereas claims 10 to 13, which are mere embodiments of claim 9, depend on it. 

With this assessment of the nature of claim 9, it comes as no surprise that the TGI found that there had been an extension of the scope of protection:

[…] Article L. 613-24 of the Code de la propriété intellectuelle mentions limitation only as far as claims are modified. Per se, the addition of 5 dependent claims cannot be analyzed as a modification of preexisting claims. In fact, [SOFOC] does not contend that going from 8 to 13 claims would be the result of a mere redrafting of the initial claims 1 to 8, which remain unchanged – with the exception of the definition of the number of handles supported by the sales display pack. 

Moreover, it is now acknowledged that claim 9 does not simply repeat the features of claims 1 to 8 but includes a set made of the sales display pack and two handles in the scope of protection conferred by the patent. Even if it is clear that the description relates to a sales display pack intended for supporting door or window handles, it does absolutely not institute the combination of the two elements of the invention, and by the way the sole drawing of the patent does not show the handles. The latter are only mentioned in the description in order to understand the purpose of the sales display pack, which is the sole subject-matter of the invention. Also, the modification of claim 1 was sufficient to limit the protection to a sales display pack intended for supporting two door or window handles, without any need for the addition of 5 new claims. Thus, independent claim 9 and dependent claims 10 to 13 involve a broadening of the scope of protection conferred by the patent, which in fact would have had a significant impact on a possible damages computation, to a new object not comprised in the description and in the features of initial claims 1 to 8. They are therefore invalid.

In summary, the amendment was objectionable on two grounds.

First, limitation proceedings are not meant to add claims, but rather to modify and more precisely restrict existing claims. This seems to be in keeping with the Guidelines for examination in the EPO (section D-X, 4.3):

Likewise, adding dependent claims in limitation is not permissible if not directly caused by the limitation introduced in the claims.

In the present case, the addition of the supplemental claims seems to have been uncorrelated to the modification of claim 1 and thus unjustified.

The second ground retained by the judges is that new claim 9 and its dependent claims covered a different object from the one covered in the patent as granted. This is probably a more controversial point. For one thing, the TGI analyzed claim 9 as an independent claim, even though it explicitly refers to claims 1 to 8 and includes all the limitations of these preceding claims. This appraisal may not be fully consistent with the definition of independent and dependent claims provided in section F-IV, 3.4 of the Guidelines for examination in the EPO.

But, more importantly, the combination of a sales display pack and two handles, recited in claim 9, was considered as a different object (an aliud) in comparison with the sales display pack as such recited in claims 1 to 8. This approach is comparable to that adopted by the INPI in the Syngenta case discussed last week: the INPI considered that adding a second active substance to a claim directed to a fungicide composition comprising a first active substance resulted in a shift of the scope of protection towards a different object. As explained in the post, the Cour de cassation finally rejected the objection in Syngenta. But did they fully weigh all relevant factors? One cannot really tell based on the brief and cryptic reasons for the decision.

There are, to my mind, valuable reasons for making a distinction between (A) further restricting some features of a claimed object; and (B) adding a supplemental object in a claim. If case (A) undoubtedly corresponds to a real limitation, case (B) is not so simple, as it may in some instances pave the way for a new contributory infringement complaint, or for an increase in the amount of damages, as rightly noted by the court in the above citation – in addition to also making it theoretically possible to extend the duration of protection in the pharmaceutical or phytosanitary field, by way of an SPC application, as discussed last week.

A somewhat more indirect parallel can also be made with the Nespresso judgment discussed in a previous post. The TGI had objected to the presence of a claim directed to a device for the extraction of a capsule, plus the capsule itself, in combination, while the application as filed focused on the device without presenting the capsule as part of the invention. In this case, the nullity ground was extension of subject-matter beyond the contents of the application as filed, and not extension of the scope of protection after grant. But the underlying idea is similar.

A common feature of NespressoSyngenta and Bricorama is that the patent proprietor tried to change the focus of the invention after the filing date in order to gain a particular legal advantage. In all three cases, the judges thwarted the patentees’ strategy:

  • In Nespresso, the combination claim was introduced at a late stage during examination proceedings (after the issuance of the communication on the intent to grant by the EPO) presumably specifically in order to make it possible to sue capsule manufacturers. The combination claim was viewed by the French judges as improperly adding matter.
  • In Syngenta, a dependent claim was limited after grant in the hope of making it compliant with the Medeva standards, as a basis for a combo SPC application. The Cour de cassation validated the limitation but the SPC application was rejected all the same, and the rejection was confirmed by the Cour d’appel.
  • In Bricorama, new claims were added by way of limitation proceedings a few weeks before launching an infringement action, potentially modifying the quantum of damages. Those claims were revoked.

Could it be that courts are not that keen on too smart patentees?

As a final note, SOFOC did not have such a bad time in court after all. Having revoked claims 9 to 13, the court also revoked claims 1 to 4 (for lack of inventive step) but then held that dependent claims 5 to 8 were valid and infringed. This certainly made the judgment much easier for SOFOC to ahem… handle.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 1ère section, May 21, 2015, Société de Fonderie du Centre SA v. Bricorama France SAS & Bricorama SA, RG No. 2014/02007.