Not sailing to victory

Thanks to Jérôme Tassi, I was made aware of a new French decision revoking a patent due to extension of subject-matter.

As I mentioned no earlier than in last week’s post, this is a ground for nullity that needs to be taken very seriously nowadays. There may previously have been a perception that added matter objections were deemed to fail in front of a court of law, and that painstaking dissections of the exact wording originally used in patent applications should be reserved for hearings taking place at Erhardtstrasse. But if so, this perception is no longer accurate.

The patent at stake is EP 2179917 to the Swiss company Createx SA.

This patent (EP’917) was filed as a divisional application stemming from EP 1531979, itself originally filed as a PCT application published under No. WO 2004/005009.

The technical field is the manufacture of fabric for sails. Yes, as in sailing boats. This is about as exotic as you can get when dealing with patent case law.

On December 31, 2015, Createx and its licensee, the U.S. company North Sails Group LLC, filed a patent infringement complaint against the French companies Incidences La Rochelle and Incidences Technologies.

On August 22, 2016, Createx filed a request for limitation of the French part of EP’917 with the INPI. It can be assumed that this was a reaction to some invalidity arguments brought forward by the defendants. The limitation was granted by the INPI on September 27, 2016.

The defendants counterclaimed for nullity of the EP’917 patent and as announced at the beginning of this post, the Paris Tribunal de grande instance (TGI) did in fact hold the patent invalid for extension of subject-matter beyond the content of the parent application as filed.

The patent as limited contains two independent claims, namely claim 1 directed to a fabric and claim 13 directed to a sail. Let’s focus on claim 1 only:

A fabric comprising:

a plurality of strips, each of the strips being formed from a plurality of substantially parallel reinforcing elements formed of threads arranged in a unidirectional manner, the threads being made of thousands of filaments distributed over the width of each strip, each of the substantially parallel reinforcing elements comprising said substantially parallel filaments; and an activated resin encasing the filaments to form a fabric;

wherein part of each strip is disposed on the juxtaposed strips; 

wherein at least some of the plurality of strips partially overlap adjacent strips, at least some of the strips substantially overlap over a length of each strip, at least some of the strips are arranged in parallel, so that a first end of a strip substantially overlap with a first end of another strip. 

Some sails look more threatening than others.

The key issue here is that the parent application as filed did not contain any claim directed to such a fabric or to a sail as recited in claim 13. All original claims related to a method of manufacturing a fabric, using a particular system.

Here is original claim 1 by way of comparison with the limited claim in the divisional patent:

A method of manufacturing shaped and reinforced fabrics, characterized in that it consists in making a fabric made of a membrane which encases continuous alternated reinforcing elements in a press which comprises an upper vessel the lower part of which is made of a supple element and a lower vessel the upper part of which is made of a supple element, the upper vessel comprising a shaping lath the shape of which can be adjusted by setting rods and the adjusting shape of which causes the three-dimensional elastic deformation of the supple elements and thus of the membrane and reinforcing elements within the press, into an active position in which the lath has a shape and an inactive position in which the shaping lath is inactive and does not cause any deformation of the membrane and reinforcing elements which are pressed flat, in that the portions of the membrane and of reinforcing elements are prepared before pressing on a conveyor belt which is disposed on a preparation table which then places these portions under the press with pressure and heat, and in that the portions of membrane and reinforcing elements overlap during the preparation so that they make a homogeneous fabric at the outlet of the press, which comprises flat portions and three-dimensional-shaped portions according to multiple shapes determined by the setting of the shaping lath upon pressing each membrane portion and reinforcing elements, the length of which is determined by the width of the press and preparation table. 

Here is the court’s take on this:

Through this rule [of the prohibition of extension of added matter], it is to be ensured that the patent proprietor cannot improve its position by adding elements that are not disclosed in the application as filed, which would be such as to confer an undue advantage by obtaining a different monopoly from the one initially claimed, which may harm legal certainty for third parties who rely on the content of the initial application.

In this case, the [parent] application as filed […] is exclusively directed to an invention which relates to a manufacturing method […]. It thus clearly derives from this initial application that the subject-matter of the protection does not relate to the product “fabric”. The EP’917 patent […] is no longer directed to a manufacturing method but expressly to products, and more particularly a “fabric” […] and a sail […]. 

[…] By altering the subject-matter of the patent […], the patent proprietor may now have a protection on any identical product independently of its manufacturing method. 

Thus, the patent proprietor necessarily increased the scope of protection initially requested, since this patent makes it possible to include within the scope of the patent products why may be obtained by different methods than the one claimed in the initial application. It is further noted that this modification also led the proprietor to encompass within the scope of protection of the patent […] a product which was not explicitly mentioned in the initial application, namely a “sail”, which cannot be entirely assimilated to [a fabric] and which was not within the subject-matter of the initial invention except through a mere reference to the prior art, which is not sufficient to include it within the perimeter of protection. 

The content of the (parent) application as filed has to be considered as a whole, including the claims, description and drawings. Due to some of the words used by the court in the above quote, there could be a suspicion that the court really focused on the claims only and confused extension of subject-matter with extension of scope of protection. But I doubt that this suspicion would be well-founded.

Indeed, not only did the original set of claims not contain any claim to a fabric or a sail, but also the original description did not recite a fabric or a sail as such as subject-matter of the invention.

Thus, it was considered that the shift in scope of protection could not be expected by third parties relying on the original application documents, which offended legal certainty. This is reminiscent of a Nestec decision already discussed on this blog.

In this earlier case, a claim to a device for the extraction of a capsule plus the capsule itself, in combination, was found to offend article 123(2) EPC because this category of product was not originally claimed, and could only be indirectly derived from the application based on how the capsule interacted with the device in operation.

I must say that, upon reading the claims of EP’917 (even before the French national limitation) and comparing them with the parent PCT as filed, I was curious about the examination process. Indeed, it seems that the divisional claims were completely drafted from scratch, combining pieces of wording from several passages of the original disclosure. This is not to say that such thorough redrafting necessarily adds matter. It may be allowable in some cases. But in my experience the EPO almost always at least requires detailed justifications that the skilled person would indeed directly and unambiguously derive the new claims from the original disclosure, which must not be treated as a reservoir from which you are allowed to pick and choose any combination of features.

To my surprise, it seems that the applicant did not submit any indication of a support for the claimed features when filing the divisional application, and that the examiner did not ask any questions and directly agreed to grant a patent.

So I wonder what happened here, and why the applicant was not even asked for any clarification by the EPO. This took place in 2009-2010, which is not that long ago.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 2ème section, February 9, 2018, Createx & North Sails Group LLC v. Incidences Technologies & Incidences SailsRG No. 16/00023.

An electric dispute

When Matthieu Dhenne kindly sent me a copy of the recent judgment Quadlogic Controls Corporation v. SA Enedis, I immediately knew that it would contain a part on the limitation period for nullity claims, as this is one of his favorite topics.

But quite to my delight, when diving into the judgment, I realized that extension of subject-matter is also discussed at length. And it turns out that this is one of my favorite topics.

I will leave it up to readers to decide which favorite topic is more off-putting, his or mine.

Quadlogic is a New-York based company specialized in energy management products. They own European patent No. EP 1260090 to a System and method for on-line monitoring and billing of power consumption.

Enedis, previously known as ERDF, is a subsidiary of EDF, the public company turned private which is still responsible for distributing most of the electricity used in France. Enedis on the other hand is in charge of handling the electricity network.

One huge project that has been keeping Enedis busy for a number of years now is the replacement of traditional electricity meters by smart (and somewhat controversial) meters known as the “Linky” meters. By the end of 2017, 35,000 new Linky meters are supposed to be set up every day.

It is therefore a pretty big deal that Quadlogic stated that the Linky technology infringed the EP’090 patent. In 2015, a number of letters were exchanged between the parties, but no amicable agreement was reached.

Thus, Quadlogic filed an infringement suit in February 2016, after performing an infringement seizure in January. Enedis raised a number of defenses and in particular challenged the validity of the patent and requested its revocation.

At this point, Quadlogic replied that Enedis was time-barred from filing a nullity counterclaim – a classical defense nowadays. However, this time the Paris Tribunal de grande instance (TGI) disposed of the issue relatively quickly.

Although the patent was filed as early as February 2001, it was only granted by the EPO in October 2013.

The court held:

It is established that the nullity of a patent can only be requested as from the date of grant, namely October 9, 2013 so that the nullity requested by Enedis for the first time in its counterclaim of February 21, 2017 is admissible. No limitation period can thus be raised against Enedis. 

As a reminder, there is now a limitation period for nullity claims in this country, according to recent case law, which is 5 years. The starting point of the period is much debated, with diverging views between first instance and appeal judges.

However, it is now relatively clear that the starting point cannot be before the grant of the patent. At least the TGI and the Cour d’appel are on the same page on this – see a recent report here.

The court then turned to the merits of the validity challenge and reviewed the amendments made during examination.

1911 – when electricity was still a miracle.

Claim 1 of the patent reads as follows:

A system for monitoring energy usage on a power line comprising:
(a) an electronic microprocessor-controlled digital electricity metering device coupled to a power line and including a non-volatile non-battery-powered memory, wherein said metering device is operable to perform interval metering for each of a plurality of intervals, is operable to store in said memory data acquired by said interval metering for each of said plurality of intervals, in a manner that enables recovery of measurements for individual intervals of said plurality of intervals and is operable to receive a data request and transmit data in response to said request over said power line; and
(b) a data collector coupled to the metering device via said power line, the data collector being operable to receive data from and transmit data to the metering device over the power line; operable to store data received from the metering device over the power line, and operable to receive data from and transmit data to a remotely located computer.

The expression highlighted above was added during examination and was at the center of the court’s attention.

The court noted that the expression could not be found in any of the 63 original claims and thus turned to the description and drawings. Quadlogic apparently relied on a single short passage as a support, which the court thought was a little bit too light:

Quadlogic only quotes the first sentence of paragraph 132 in its submissions, namely: “Interval metering stores independent records of metering data for future recall”. 

And this single sentence in a patent comprising 60 pages of description, supposed to be the crux of the invention, does not mean that individual records of the metering intervals are made. It mentions the possibility of independent records without stating that there is a prior problem that the skilled person had to solve. 

This mention cannot be considered as supporting the added feature, which makes it possible for the invention to exist, since the metering, storing and recovering of metering intervals on energy consumption were known; this feature is the only novel one in view of the known prior art. Since the entire device was known except this feature which is the only one to confer novelty to the invention, in order to avoid extension beyond the content of the application, elements to support the invention itself must be found in the description and drawings. 

What is remarkable in this explanation by the court is that a feature added in order to distinguish the claimed invention from the prior art seems to be subjected to a more thorough and strict evaluation than more innocent features. The EPO on the other hand usually does not make a distinction between novelty-conferring features and non-novelty-conferring features in the added matter analysis.

What is also remarkable is that the court did not simply look at the sentence in isolation, but took into account the general context of the entire patent. In this case, the supporting sentence is only recited in passing, without any statement of a technical problem to be solved. The way I understand it, in order for the invention to be redefined based on a specific feature, this feature must be originally identified as addressing a particular problem.

The court then delved into a more technical investigation.

This sentence “Interval metering stores independent records of metering data for future recall”  means that the recorded interval metering is independent from the values of counting energy consumption.  

The part of the sentence “for future recall” is much too elliptic to be admitted as supporting the recovery of measurements of individual intervals. It only refers to the existence in the system of a function for recovering stored data owing to a transfer to the computer. 

In other words, the sentence relied on by the patentee does not expressly refer to the notion of storing data so as to be able to recover measurements for individual intervals – as claimed. Moreover, the court found that it was not clear that this is what was implicitly meant there. See also the following statement in the judgment:

Indeed, the fact that measurements are stored as “independent records” does not imply that the measurements, wholly or partly related to these records, can be recovered in an individual manner.

In this respect, the EPO’s gold standard of direct and unambiguous derivability seems to be applied by the French judges.

Extensively examining the rest of the description and drawings, the court noted that there was no actual disclosure of technical means to perform the claimed feature:

No means for separately recovering one of the measurements of the non-volatile memory is ever mentioned in the description of the patent. 

[…]

And table 6 […] effectively shows that the measurements of intervals are recorded one after each other, half hour by half hour during a certain time, which is a measurement and storing mode already widely known without adding any means to individualize data. 

The court continued by noting that the recovery of an individual measurement for a certain interval requires for instance predefined addressable memory areas. But no such embodiment was disclosed in EP’090.

In summary, the subject-matter of claim 1 was found to extend beyond the content of the application as filed, the same conclusion applying to all of the following claims, and the patent was declared invalid.

The issue of infringement was accordingly not addressed.

Whether readers agree or disagree with the court’s findings, the good news is that a very thorough assessment of the technical information made available to the skilled person in the application as filed was performed, which looks every bit as good as what we could find in a decision by a Board of appeal of the EPO.

The judgment is also yet another reminder that completely redefining an invention during examination proceedings by digging for some isolated disclosure may be a winning strategy for the grant, but a losing one during opposition or litigation.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, November 2, 2017, Quadlogic Controls Corporation v. SA Enedis, RG No. 16/03165.

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.