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.

Useless drawings

If anyone still had a doubt that French courts have gotten really tough on extension of subject-matter, despite previous indications to this effect (here, here, here and there), the present post may come as a final confirmation.

The patent which was revoked this time is EP 1215336, in the name of Paper Machinery Technology Italia SpA (or PMT Italia) – as first reported on this French blog. As the name of the company suggests, the patent relates to a machine for manufacturing paper.

PMT Italia sued French Alps-based ABK Machinery for infringement of the patent in February 2012. The defendant lodged a nullity counterclaim which was successful, according to a judgment from the Paris Tribunal de grande instance dated May 7, 2014.

PMT Italia appealed. The appeal proceedings were suspended between January 2015 and June 2016, as ABK Machinery went bankrupt, before resuming in the presence of the court-appointed liquidator. On October 7, 2016, the Cour d’appel confirmed the first instance judgment.

Claim 1 of the patent as granted reads as follows:

A counterblade assembly (10) for a wet section (1) of a paper machine, comprising a fixed structure (13) fixed to a frame (5) of the machine; a counterblade (9) connected to said fixed structure (13) and movable, with respect to it, by actuating means (25) to exert pressure on two wires (2, 3) travelling between said counterblade (9) and a guide surface (8) along a substantially horizontal traveling path (P); and connecting means (22) interposed between said counterblade (9) and said fixed structure (13), characterized in that said connecting means (22) are articulated-parallelogram type connecting means and include a plurality of articulated rod elements (16) hinged to said fixed structure (13) and to said counterblade (9) about respective horizontal axes (A, B) perpendicular to said travelling path (P).

In the above paragraph, expressions in bold are those which were added relative to claim 1 as filed.

This modification was introduced by the applicant in response to the sole communication from the examining division during examination proceedings. Here is what the representative wrote in the letter to the EPO regarding compliance with Art. 123(2) EPC:

The added feature in the claim is at least implicitly disclosed in the description as originally filed (page 5, second paragraph) and clearly and unambiguously disclosed in the drawings (figs. 2 and 4). Therefore, the amendment does not contravene art. 123(2) EPC. However, an explicit support has been added in amended sheet 5 of the description.


Amended drawings 1 and 2 are also filed, with added reference signs for axes A, B and added reference signs P1, P2 in fig. 1.

Therefore, although an implicit support for claim 1 was supposed to be present in the application as filed, it appeared necessary to modify the description and drawings to make the support more explicit.

Clearly, the court was not very fond of this approach.

The judges started by looking at the modified paragraph of the description, which reads as follows:

More specifically, each connecting assembly 22 comprises two pairs of elements 16 located on opposite sides of post 15 and bar 21, and each defined by two parallel elements 16 extending in a substantially horizontal direction. Each element has one end 16a hinged to post 15, and one end 16b hinged to bar 21 about respective horizontal axes A, B that are perpendicular to the traveling path P of wires 2, 3.

Again, the underlined phrase corresponds to the addition relative to the application as filed.

Says the court:

The respondent rightly notes that, in the original application, nothing taught the skilled person […] about the orientation that the articulation axes should have, namely a position perpendicular to the direction of travel of the wires, for implementing the invention as recited in the claim as amended during examination proceedings. 

Indeed, the paragraph relied upon […] does not contain nor suggest any information on this orientation which was precisely set at 90° during examination proceedings, and the appellant wrongly claims that it is implicitly disclosed. 

Quite frankly, I have not fully studied the application, but the above assessment seems to make a lot of sense. The original paragraph at stake was simply silent on the orientation of the articulation axes.

The next step in the court’s reasoning is probably more controversial, though. Indeed, the court stated that Figures 2 and 4 of the original application as filed could not possibly be relied upon

insofar as the implicit disclosure from the above-mentioned second paragraph on page 5 cannot be acknowledged; the drawings are optional, they are meant to supplement the description which is the only one which is mandatory, since it is not possible to protect something which is claimed without being described (so as to interpret it), and not the other way around.

It seems that the court introduced a hierarchy between the description and drawings (because the presence of a description is mandatory whereas drawings can very well be omitted). According to this hierarchy, the drawings could not be used as the sole support for a claim amendment.

There can certainly be valuable arguments for this approach, but it is contrary to the case law of the Boards of appeal, per which drawings are “to be treated on an equal footing with the other parts of the application” (see Case Law of the Boards of Appeal of the European Patent Office, 8th edition, July 2016, section II.E.1.12.1, p.453).

It is in fact also contradictory with earlier case law from the Cour d’appel itself. Indeed, at least in a judgment Knauf Insulation v. Saint-Gobain Isover dated May 16, 2014, the court accepted that a certain claimed feature could be derived from the drawing figures of the application as filed.

In the present case, the stricter standard applied made all the difference, because it seems that the perpendicular orientation of the axes recited in claim 1 of the granted patent with respect to the traveling path P was indeed visible on the drawings.

This does not imply that the amendment was necessarily allowable by the Boards of Appeal’s standards, though. Indeed, according to the latter, “the EPC does not prohibit the amendment of claims to include features from drawings, provided the structure and the function of such features were clearly, unmistakably and fully derivable from the drawings by the skilled person and not at odds with the other parts of the disclosure. Nor could any element be dropped” (Ibid.). A thorough analysis would thus be necessary to come to a conclusion -which was not performed by the court.

Sometimes drawings are the crux of a patent
Sometimes drawings are the crux of a patent

There are two different ways of looking at this, a pessimistic one and an optimistic one.

The pessimistic view is that the court made an error of law by conflating support of the claims in the description and extension of subject-matter, or in other terms Art. 84 EPC and Art. 123(2) EPC. Indeed, Art. 84 EPC, which was explicitly cited in the decision, provides that the claims “shall be clear and concise and be supported by the description“. Note: “by the description“, the law says, and not “by the description and/or the drawings“.

But non-compliance with Art. 84 EPC is not a ground for revocation of a granted patent. Only non-compliance with Art. 123(2) EPC is (see Art. 138(1)(c) EPC). And the latter broadly makes reference to “the content of the application as filed“, without distinguishing between the original description, claims and drawings. In summary, according to this pessimistic view, the court had it all wrong.

But there is a more optimistic view, which is that the court in fact made a thorough assessment of the application as filed, and came to the conclusion that, in this particular case, the amendment could not possibly be justified by the drawings.

The reasoning is not sufficiently explicit to definitively exclude one of these two views, but the optimistic one can be supported by the following statements in the judgment.

First, the court noted that the description makes it clear that variations can be made relative to what is depicted in the drawings. If my understanding is correct, the added feature was therefore considered by the judges as a non-essential, or even unimportant one, in view of the original disclosure, so that the skilled person would not have isolated it from the disclosure to include it in the main claim.

Second, the court emphasized that the applicant heavily relied on the added feature during examination proceedings in support of inventive step. For the court, “the new claim brings a technical contribution to the invention, it does not merely correspond to a reformulation of the technical problem and of its solution which could be deduced from the overall content of the application as filed“.

Again, trying to translate what is meant there, the point is the added feature completely changes the problem at stake and its solution. As this change was not derivable from the original application, the addition is unallowable.

In summary, if the optimistic view is correct, the analysis made by the French judges may not be that different from the analysis that a Board could have made, after all.

Anyway, claim 1 was held invalid. The same applied to dependent claims 2-7, quite easily so as the patentee did not develop any specific argumentation to defend these claims.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 2, October 7, 2016, Paper Machinery Technology Italia SpA v. SA ABK Machinery, RG No. 14/16544.

In the patentee’s shoes

It is not always easy to be in the patentee’s shoes – as today’s decision will confirm again. In fact, patent proprietors and alleged infringers are not on a equal footing, since the latter need only prevail on one defense, while the former must thwart all possible challenges in order to win the case. And this is all the more difficult when the patent gets off on the wrong foot at the examination stage.

As readers may have guessed based on the lexical field of the first paragraph of this post, today’s decision is concerned with the footwear industry.

French company Exten.S owns European patent No. EP 1383402 directed to a sole for a shoe. Together with its exclusive licensee Eram (a well-known shoe distributor), Exten.S sued a Spanish company called Calzados Hergar for infringement of the patent in France.

On November 25, 2008, the Paris Tribunal de grande instance (TGI) revoked claims 1 to 4 of the French part of the European patent – as requested in the defendant’s counterclaim. The judgment was confirmed by the Cour d’appel on October 27, 2010. An appeal on a point a law was submitted to the Cour de cassation, and on January 31, 2012 the court set aside the appeal judgment. The patentee waited almost two years before reinstating the case in front of the Cour d’appel, which finally leads us to the judgment discussed today, which is dated April 8, 2016.

So this is a long story which could probably have been much shorter. Indeed:

  • The TGI originally revoked claims 1 to 4 due to extension of subject-matter.
  • The Cour d’appel fully agreed in 2010.
  • The Cour d’appel still fully agreed in 2016.

In the meantime, Exten.S and Eram regained hope with the 2012 ruling of the Cour de cassation. However, the first appeal judgment was set aside on purely procedural grounds. It turns out that some exhibits filed by the claimants had been discarded by the court (because they were in a foreign language), although they should not have, said the supreme court, because partial translations were in fact provided. So, the supreme court did not look at the merits of the case, which is why it was relatively straightforward for the Cour d’appel to copy and paste its first judgment upon remittal…

Let’s now examine why the subject-matter of the patent was found to have been extended in an unallowable manner relative to the contents of the application as filed.

According to the introduction of the patent, the invention relates to a sole of a shoe making it possible for different foot widths to be fitted easily. Usually shoes are manufactured with a width chosen by the manufacturer, which does not vary as a function of the width of the wearer’s foot. It is also known how to adapt to several foot widths by manufacturing an upper part in elastic material, but without being able to enlarge the lower part in contact with the sole. The purpose of the invention was to remedy these disadvantages.

Claims 1 and 2 of the (PCT) application as filed accordingly read as follows:

1. Extensible sole for shoes of the type where the rigid sole base is glued onto the edges of the upper, characterized in that said base is glued or molded on an insert, which is transversally mounted in an extensible manner, between the gluing zones of said base and said upper.

2. Extensible shoe according to claim 1, characterized in that it comprises at least one insert provided with protrusions in its lower surface, produced by molding a shape memory extensible material glued or injection welded on a rigid sole base, the forepart of which is provided with openings wherein protrusions are embedded, in a sealed way.

One half shoe, one quarter fur coat and one quarter Peruvian hat make a great invention.

One half shoe, one quarter fur coat and one quarter Peruvian hat make a great invention.

Claim 1 as granted was more or less obtained by combining original claims 1 and 2 – the important part of the sentence being of course “more or less“:

1. Extensible sole for shoes of the type where the rigid sole base is glued onto the edges of the upper, characterized in that said base comprises an insert, transversally extensible and provided with one or several protrusions in its lower surface, said insert being produced by molding a shape memory material and being glued or injection welded on said base, the forepart of said base being provided with one or several openings, wherein the protrusion or protrusions are embedded, in a sealed way.

The original wording of openings (plural) and protrusions (plural) was replaced by a broader language encompassing also a single opening and a single protrusion. Sadly for Exten.S, the court deemed that there was no support in the application as filed for such a broadening:

In the description of the PCT application […] it is recited, in relation with the base of the sole, “openings” (p.1 l.25), “the openings” (p.2 l.29 and 36 and p.3 l.1) and “openings” in claim 2. […] Claim 2 […] teaches the presence of openings in which the protrusions are embedded in a sealed way. Figures 1, 3 and 4 of this PCT application show several openings (reference 4), actually five, on the base of the sole, which match the number of protrusions. 

There was only one hint at a single opening in the text but it was considered to relate to a different embodiment:

[…] Although according to p.1 l.24 to p.2 l.1, “the deformable part of the forepart can be obtained by producing one or several longitudinal openings”, this passage relates to “other embodiments”, which is not challenged. Therefore, neither the description nor the claims or drawings of the PCT application mention the presence of a single opening in the base of the sole. 

It would probably have been useful to explain in the reasons for the decision why the context of this sentence was different from the context of granted claim 1, so that no generalization to one or several openings could be allowed – beyond the note on the wording “other embodiments” which can mean several things.

When briefly reviewing the PCT application, it did not immediately strike me why there should be an incompatibility between the option of the single opening and the other features of claim 1 as granted. But a more thorough review could lead to a different conclusion.

Another interesting line of defense based on implicit disclosure was brought up by the patentee and the licensee, also to no avail:

The appellants cannot claim that, since the protrusions cooperate with the openings, a single opening in the forepart of the base of the sole is implicitly disclosed, in view of a single passage of the description of the PCT application (p.1 l.19) per which “this extensible insert is flat on the upper face and provided with one or several protrusions on the lower face. These protrusions are intended to be set countersunk in the base of the sole”. Indeed, as already stated, the PCT application only discloses the presence of several openings and anyway the respondent rightly notes that the presence of a single protrusion in the insert does not necessarily imply the presence of a single opening in the base of the sole. 

This is tough, but very much in line with the criterion of direct and unambiguous disclosure applied at the EPO. If one protrusion does not necessarily equate with one opening, then there is insufficient support in the original PCT application for claim 1 as granted. Even though it might be obvious for the skilled person to come up with the idea of “one opening“, obviousness or equivalents should not come into play in this analysis.

Finally, another ground of extension of subject-matter was entertained by the court, which I have to say is more difficult to understand:

It should additionally be noted that, according to claim 1 of the PCT application, the base of the sole is glued or molded on an insert, but this feature cannot be found in claim 1 of the patent in suit as granted […] according to which, to the contrary, “said insert […] is glued or injection welded on said base” and the insert “is […] mounted between the gluing zones of said base and said upper”.

Basically this is a case of impermissible deletion of an essential feature. But it is stated in a confusing way in the ruling. My two cents is that the deletion of the term “glued or molded” is not really objectionable as claim 1 still requires that the insert be glued or injection welded on the base. And in fact this wording is from original claim 2 and thus seems to correspond to a particular embodiment of the “glued or molded” general statement in original claim 1.

On the other hand, there may indeed be an issue because the feature “mounted between the gluing zones of said base and said upper” no longer appears in claim 1 as granted – although, again, the ruling is not crystal clear in this respect.

All in all, the present decision, which fully confirms two previous similar decisions on the same patent, comes as a further reminder (if needed) that French courts tend to be very strict nowadays in their appraisal of extension of subject-matter: see other examples here, here and there.

The EPO has had the reputation of being the toughest forum for the appraisal of added matter, but there now seems to be some competition in France.

CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 2, April 8, 2016, Exten.S & Eram v. Calzados Hergar, RG. No. 14/00580.

Longitudinal vs. roughly longitudinal: same difference?

The third and last one of the series of posts on how French courts seem to have gotten stricter on extension of subject-matter is dedicated to a dispute between two French truck manufacturers, Chéreau and Frappa. The former sued the latter for infringement of two European patents concerning buffers mounted at the rear end of the vehicle chassis.

Once again, both patents (one of which had gone through and survived opposition proceedings at the EPO) were revoked by the Paris TGI for extension of subject-matter.

Of these two revocations, one was based on a relatively typical reasoning of intermediate generalization: some features were taken from the description and imported into claim 1, and the court decided that it was not allowable to isolate these features from the others with which it was originally disclosed in combination.

The other revocation is more remarkable. The file wrapper of the patent can be found here. Claim 1 as filed related to a vehicle chassis comprising, inter alia, a thrust element. Claim 2 as filed specified that the thrust element was a thrust arm with roughly longitudinal mobility relative to the chassis. In claim 1 as granted, the thrust element was restricted to a thrust arm with longitudinal mobility relative to the chassis. In case you have not noticed, the term “roughly” disappeared in the process, and this turned out to bring about the demise of the patent.

At first sight, the amendment may look like pretty innocuous. In fact, examiners often protest against the presence of vague adverbs such as “roughly”, “approximately” and the like in patent claims, and they regularly request that the applicant should get rid of them before grant. This is hardly ever seen as an issue at all from the added matter standpoint.

So, in the present case, if there was support in the original disclosure for “roughly” longitudinal mobility, why wasn’t there any support for longitudinal mobility as such? In order to understand this, one needs to have a closer look at the application as filed, which contained only one detailed embodiment of the displacement of the thrust arm.

According to this embodiment, the thrust arm rotates around an axis by a few degrees, and this is said to be tantamount to a longitudinal displacement. This comment is quite understandable because, if you zoom in on a portion of a circle, it looks pretty much like a straight line (if my math memories are correct, this is what they call a first order approximation).

In the light of the description, the term “roughly longitudinal” in original claim 2 was therefore interpreted by the court as actually referring to a pivotal movement. By deleting the adverb “roughly”, this was changed to a truly longitudinal movement, but such change was not properly supported by the application as filed.

Quoting from the judgment:

“By omitting the adverb ‘roughly’, Chéreau can argue that claim 1 covers any longitudinal displacement and no longer only a rotation displacement of the thrust arms.

Departing from the roughly longitudinal displacement corresponding to a rotation of a few degrees mentioned in the description, claim 1 covers the longitudinal mobility of the thrust arms by the deletion of the adverb ‘roughly’”.

So, paradoxically, by specifying that the displacement is longitudinal and not just “roughly longitudinal“, the applicant had shifted the scope of protection to claim an aliud. The innocuous-looking amendment was therefore not so innocuous after all.

An example of a pivotal arm having a roughly longitudinal displacement.
An example of a pivotal arm having a roughly longitudinal displacement.

Now, having reporting on this third recent example of added matter ruling, I would certainly be interested in knowing what readers think about this general approach which to me is very reminiscent of EPO practice. Is such harmonization to be welcome? Or are French judges being more Catholic than the pope?

CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 4ème section, SAS Jean Chéreau v. SAS Frappa, November 6, 2014, RG No. 12/10879.