Shooting gallery

We are all familiar with the quote “Football is a simple game. Twenty-two men chase a ball for 90 minutes and at the end, the Germans win. Turns out the quote has an author, by the way, if Wikipedia can be trusted on this one.

Well, the same could be said of public prior use as a patent invalidity defense. It is a simple game. The alleged infringer (or the opponent) collects bits and pieces of evidence for months, and at the end the court (or the EPO) says the patentee wins.

This is because no matter how thorough and careful you are when documenting a public prior use story, it seems that you are almost never thorough and careful enough.

OK, this is oversimplified of course. But I have already reported on how severe judges can be with evidence of public prior use. And the Filmop decision that I talked about last week is another telling example of how a public prior use story can be wiped out, piece by piece, like in a shooting gallery.

This shooting gallery was patented in 1914 – a year sadly famous for many other shootings.

In my previous post, I explained that the FR’204 patent to Concept Microfibre was revoked for lack of inventive step on appeal. But before getting there, the court first discarded allegations of lack of novelty in view (among others) of two public prior uses.

The first public prior use was a so-called Puli-Srub washcloth, which was precisely the allegedly infringing product. According to the defendants, this product was already marketed by Korean companies B&H and Daego, starting from the end of 2006.

The second public prior use was a so-called MN Heavy washcloth, supposedly marketed by Swedish company MN Produkter Ab since 2006.

The FR’204 patent was filed in January 2008.

Regarding the Puli-Srub product, we can gather from the decision that the following evidence was offered:

  • one or more affidavits from the CEO of B&H, with a sample of washcloth attached, concerning sales to a company called Lilleborg in 2006;
  • an affidavit from the CEO of B&H, with a sample of washcloth attached, concerning sales to another (Danish) company called Stadsing, together with an affidavit from Stadsing itself;
  • screenshots from the 2006/2007 Stadsing catalogue;
  • invoices from Daego to Stadsing dated 2006-early 2007;
  • emails dated 2007 between B&H and Lilleborg;
  • emails dated 2005 between Daego and Filmop (one of the alleged infringers in the lawsuit);
  • invoices from Daego to Filmop as well as travel documents dated 2006;
  • affidavits from two employees of DME (the other alleged infringer in the lawsuit, a subsidiary of Filmop).

Quite an impressive list, right? Uh, no, in fact the court was not impressed at all.

First, the court remarked that the B&H affidavits, “drafted more than six years after the facts, are not confirmed by contemporaneous objective evidence”. Further down, they noted that some of the other affidavits were drafted by “employees of DME, a party to the present proceedings”.

I think the bottom-line is that the court does not really trust affidavits. Those signed by employees of a litigant are inherently suspect, while those signed by third parties are also deemed untrustworthy if they relate to facts which took place in the distant past. Such mistrust is understandable but, on the face of it, somewhat unfortunate. Testimonies should be given serious consideration – even though they should of course be carefully examined. Also, they are necessarily prepared only when litigation arises, as there is no need for them beforehand. But as will appear below, in this case there were probably a number of objective reasons for not simply trusting the affidavits.

So, it seems that affidavits are only really taken into account if they confirm non-testimonial evidence on the record.

Here, the non-testimonial evidence was deemed inconclusive.

For instance there was no clear evidence that the washcloth samples were the same as those marketed from 2006. Besides, the packing list which was provided regarding B&H’s sales to Lilliborg was only dated 2008.

The Stadsing affidavit was altogether ignored as it was in English and untranslated. The screenshots of the Stadsing catalogue were said to be less conclusive than an original version or even a photocopy, and were also said to be illegible – which certainly does not help.

The Daego invoices contained product references which could not be directly linked to the Puli Srub product. And the various emails on file concerned various projects, labeling or technical issues, but not actual sales.

Regarding the alleged sales to DME / Filmop, the court primarily relied on the patentee’s evidence, namely the infringement seizure dated July 2012. Based on the bailiff’s report and on the Filmop catalogues, the court held that the Puli Scrub was placed on the market only in 2010. DME and Filmop’s argument was that the same product was previously marketed under the name Micro Activa. But the court concluded that it was a different product, as it was still advertised in the catalogue in 2010 and 2011 beside Puli Scrub. Furthermore, based on the 2007 catalogue, it appeared that the Micro Activa washcloth was made of microfibers only – and therefore was not according to claim 1 of the patent (as reproduced in the previous post).

Next, regarding the MN Heavy prior use, we can gather from the decision that the following evidence was offered:

  • printouts of the MN Produkter website made by a bailiff in 2015;
  • a letter from the CEO of Decitex dated 2015, further to a judicial request made by the appellants, regarding the provision of a sample of MN Heavy from MN Produkter to Decitex;
  • emails dated 2008 and 2016 between the CEO of Decitex and MN Produkter’s commercial manager.

Starting with the website printouts made by the bailiff, the nullity claimants apparently relied on the mention “copyright 2006” on the website to argue that the content of the 2015 website was the same as that of the 2006 website. The court replied that this mention was no evidence at all. In addition, an interesting argument was made based on the photograph dates of the MN Heavy product on the website, which were apparently earlier than the patent filing date.

In this respect, the court relied on a counter-report filed by the patent proprietor, which showed that an online photograph date can easily be modified by editing the properties of the file. Therefore, the photograph dates found by the bailiff in 2015 were not necessarily the exact dates at which the photographs were taken. And, most importantly, what mattered was the date at which the photographs were posted online – which remained unknown anyhow.

Turning now to the CEO of Decitex, he stated that he received a sample of MN Heavy when he visited MN Produkter in the summer 2008. This was after the filing date of the patent, but he added that the product was on the market since at least January 2007. The court noted that the circumstances of the supply of the sample were unclear, and doubted how the CEO could possibly be certain that the 2008 sample corresponded to a product on the market since 2007. On a more formal (if not formalistic) note, this person did not testify as an individual but rather as the CEO of Decitex (since the judicial request to which he replied was addressed to the company itself). And he joined Decitex only in 2010, namely two years after the reported supply of sample by MN Produkter.

The 2008 emails between Decitex and MN Produkter were not persuasive as it can be derived from them that MN Produkter ordered washcloths from Decitex, and not the other way around.

Finally, the 2016 emails were also discarded. Although we do not know their detailed contents based on the decision, it seems that they made reference to an old page of the MN Produkter website, available on the website. The court stated that this is:

an archive service operated by a private entity without any legal authority and the operation conditions of which are unknown, which does not make it possible to consider that the date or content of the archived webpage are undeniably proven.

It is interesting to make a parallel with the EPO’s policy in this respect. Although the website was originally considered in some board of appeal decisions as an insufficiently reliable archive source (see e.g. T1134/06), more recent decisions seem to consider the website as trustworthy (see e.g. T286/10) – although this is also a matter of which standard of evidence the Board decides to apply in each case.

In section G-IV, 7.5.4 of the Guidelines for examination, it is now stated that the archives on this website “are admittedly incomplete, but this does not prejudice the reliability of the data that they contain”.

It is likely that the court, in the present case, was not fully briefed on how works and why it can be considered as a reliable source of information. If they had been, maybe their approach would have been more similar to the EPO’s.

Apart from that, the court’s way of dealing with public prior use allegations does not strike me as markedly different to the EPO’s. According to the latter, the date, subject-matter and circumstances of the public prior use are to be established in a precise manner (Guidelines for examination, G-IV, 7.1). Again, if there is any loophole, inconsistency, or lack of reliability in the evidential record, the conclusion is generally that the public prior use is not adequately proven.

This is harsh on opponents or litigants who happen to know (or believe) for a fact that the public prior use allegation is true and relevant but have a hard time collecting evidence. But this high standard is the price to pay to prevent patents from being revoked due to unreal or made up prior art.

CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 1, September 27, 2016, Filmop Srl & SASU Distribution de Matériel Européen v. SAS Concept Microfibre, RG No. 14/18000.

The blind date

I initially thought today’s decision raised an exciting conundrum. But after figuring it out, I must say I feel sort of disappointed. Like someone having heard of the famous curious incident of the dog in the night-time may be underwhelmed to hear that the incident was that there was in fact no incident.

Speaking of dog incidents, the decision is precisely related to serious dog incidents and how to prevent them. Indeed, the invention at stake is in the field of dog collars – the kind that contain chemicals to prevent severe parasitic diseases. The invention is protected by European patent No. EP 1022944 (EP’944), which was initially filed by Hoescht Roussel Vet and later assigned to Akzo Nobel and then Intervet International.

Two companies from the Bayer group jointly filed a nullity suit against Intervet in front of the Paris Tribunal de grande instance (TGI). The patent proprietor counterclaimed for infringement of the patent.

The patent contains three independent Swiss-type claims. The first one is worded as follows:

Use of a pyrethroid in the manufacture of a medicament in the form of a collar for the protection of dogs from bites of phlebotomine sandflies.

The other two are similar except that the use is respectively “for the control of leishmaniasis in dogs“, and “for the control of human visceral leishmaniasis“.

When prophylaxis meets fashion.
If only prophylaxis could sometimes meet fashion.

Bayer argued that the three main claims lacked novelty over an article authored by the inventors themselves. There seems to have been little debate over the fact that, in terms of contents, the article was indeed prejudicial to the novelty of the claims. But the central discussion was rather whether the article belonged to the state of the art in the first place.

The patent claims a priority date of June 18, 1997. The article was published in the issue of Medical and Veterinary Entomology of April 1997But the patent proprietor’s defense was that:

Back in 1997, the publication of this type of document took a certain time and […] contrary to what one could think in view of the journal, it was published for the first time on June 19, 1997, after the priority date of the EP’944 patent. 

Hmm, as far as I can remember, back in 1997 journals were no longer delivered by stagecoaches, but why not. Which evidence did the patentee provide? Two faxes.

The first fax was sent from the editor Blackwell Sciences to one of the inventors on January 6, 1998. The fax indicates that the article dated April 1997 was published for the first time on June 19, 1997. By the way, this is exactly the day after the priority date.

The second fax was sent from the British Library to the original applicant two days later, on January 8, 1998. The fax mentions that the issue of the journal at stake was received by the library on June 25, 1997 and made available to the public on that same date.

The court was not convinced by these messages faxed during the priority year.

The court’s appraisal of the second fax seems to make perfect sense:  the fact that one particular library (however prestigious it may be) received a copy of the journal issue on a certain date does not disprove that other recipients may have received their own copies significantly earlier.

The fate of the first fax is probably more debatable. The court noted that the recipient was one of the inventors, just like the recipient of the other fax was the applicant. These are “persons or companies having a vested interest in the patent […], which weakens the probative value of these documents“.

Now, this is tough! How were the inventors / applicants supposed to proceed in order to determine the exact date of publication of the article other than try to obtain a statement from the editor?

The court also remarked that the context of the faxes is unknown, i.e. Intervet did not explain why these faxes were requested from the editor and the library. I personally do not think that this is critical. What is important is the contents of the faxes. Besides, it can be fairly assumed that the applicant was aware of a possible novelty challenge due to the April 1997 article and thus sought to preserve evidence that the article was not prior art. This does not look particularly suspicious.

Finally and more importantly, the court stated that

This statement was not accompanied by any further evidence confirming the publication delay and was not supplemented by other documents from the edition services. 

So, one isolated piece of evidence was not sufficient for the court in view of the basic and natural presumption that a journal issue dated April 1997 was indeed published during that month.

Now, here comes the conundrum that I mentioned at the beginning of this post. The court noted in passing that

The fact that the examining division of the EPO in the context of the examination of the patent acknowledged the date of June 19, 1997 is not sufficient to convince the court. 

I was curious about this acknowledgment by the examining division, and I therefore looked at the file wrapper of the patent as well as of the priority application (which was also a European application). In both cases, the article is cited in the search report in category X (highly relevant prior art). But then, in subsequent communications from the examining division, it is indeed acknowledged that this document was published on June 19, 1997 and is thus not prior art.

I wondered whether the EPO databases contained additional information on the publication date of the article; and if such additional information existed somewhere, I wondered why the patent proprietor did not make use of the information to strengthen its case.

But upon closer inspection, what actually happened is probably less remarkable. The first document in which the statement by the examiner can be found is the international preliminary examination report (IPER) issued in connection with the PCT application on which EP’944 was based. The exchanges between the applicant and the EPO in its capacity of IPEA (international preliminary examination authority) are not accessible online but it can be assumed that the applicant filed the faxes of January 1998 and made the argument that in view in particular of the first fax, the actual publication date was June 19, 1997. The examiner was likely convinced, which led to the statement in the IPER. This statement was then later repeated in communications from the examining division, not only in the EP’944 examination proceedings, but also in the corresponding examination proceedings in connection with the priority application (which initially puzzled me).

So if my assumption is correct and if the mystery is indeed solved, it simply means that the examining division reached a different conclusion from the French court based on the same evidence – business as usual.

At any rate, the three independent claims were invalidated for lack of novelty in view of the inventor’s article, as well as dependent claims 5 and 6. Dependent claim 4 was found to lack an inventive step over the same disclosure.

The court did not stop there and committed what some professors at the CEIPI patent course like to call overkilling.

Namely, the main claims were also found to lack an inventive step irrespective of the disputed article.

The reasoning in the decision is relatively short in this respect, but it seems that a veterinary thesis published in 1991 was very relevant as it disclosed a plate impregnated with cypermethrin (a pyrethroid) as a means for preventing phlebotomine bites, in the context of leishmaniosis prophylaxis. The only difference between the claimed invention and this disclosure was the impregnation of a dog collar instead of a plate. This was seen by the judges as an obvious development since impregnated dog collars have been known for a long time.

It is also noted in the decision that the German part of EP’944 was revoked by the Bundespatentgericht in April 2015. Furthermore, a parallel lawsuit is pending in front of the Turin court, and the court-appointed expert issued a report in which the patent was considered to lack an inventive step. It seems that the French court has relied on this report to some extent in its own analysis. So, as far as one can tell from the decision, Bayer seems to be sweeping the board across Europe.

But Intervet will certainly get another shot on appeal.

Indeed, it can be seen from the European patent register that a central request for limitation of the patent was filed in July and is currently pending. One main request and two auxiliary requests were filed. Independent claims 2 and 3 were deleted and independent claim 1 was inter alia restricted to a particular compound, deltamethrin.

If the limitation is accepted by the EPO, I guess the court of appeal will have to look at the case starting from scratch…

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 4ème section, April 14, 2016, SAS Bayer Healthcare & Bayer Animal Health GmbH v. Intervet International BV, RG No.14/05992.

An uplifting patent

It seems that we will not be getting any UPC case law to comment on any time soon after all… In fact, some in the European IP profession have expressed quite a bit of distress at last week’s political upheaval. So I thought that today’s post had better be uplifting in order to curb current gloominess.

Unfortunately all that I have been able to find in terms of uplifting is… a patent case related to a lifting platform. Well, at least that’s something, isn’t it?

So, cheer up and back to good old national case law!

There are two different aspects which may be of some interest in today’s decision. One relates to patent substitution, and the other one relates to public prior use.

But first things first with the basic facts of the case.

FOG Automotive Distribution is the owner of a French patent No. FR 2896785 and of a corresponding European patent No. EP 1813568, claiming the priority of the French one. Or rather, was, as the company was liquidated during the litigation, its interests being then represented by the liquidator.

FOG sued three interrelated companies Launch France, Launch
Europe GMBH and Launch Tech, for, ahem, “launching” lifting platforms infringing the patent.

At first instance, the Paris Tribunal de grande instance (TGI) held that the French patent had ceased to be in force but that the French part of the European patent was indeed valid and infringed.

On May 27, 2016, the Cour d’appel confirmed most of this ruling and put an end to the case by directly awarding the liquidator a (relatively modest) amount of damages.

As I explained in a previous post, a European patent is said to substitute for a French patent, when both patents have three elements in common:

  • Same inventor(s).
  • Same filing or priority date.
  • Same invention.

By way of analogy with the assessment of a priority claim, the most frequent issue is whether both patents actually relate to “the same invention“. In order to properly answer the question, you need to look at the claims and more particularly the main claims of both patents.

In this case, claim 1 of the French patent reads as follows:

Lifting platform, in particular for a motor vehicle, comprising at least one column (1), at least one carriage (2) which is movable along the at least one column (1), and designed to support the motor vehicle or part of the latter directly or by means of a support element, and means forming a locking/unlocking lock designed to lock in a given position the said at least one carriage or allow it to be movable along the column, the locking/unlocking means consisting of a rail comprising a plurality of slots (6) and means forming a locking/unlocking (20) catch, characterised in that along the at least one column there are at least two catches (20, 40) spaced apart from one another in respect of their height, the height dimension of the rail being approximately equal to the distance between the at least two catches (20, 40).

Claim 1 of the European patent is identical but for the last underlined part, which reads as follows: “the height dimension of the rail being lower than the height of the catch (40) furthest from the base of the at least two catches“. 

The court held:

[…] The European patent was more specific than the French patent claim. The latter only specified approximately equal heights, while the European patent was more specific by indicating a height dimension for the rail which is lower than the height of the catch. […] Therefore, the first instance judges rightly held that FOG’s claims relating to the French patent are inadmissible due to the grant of the European patent on the same invention which results in the French patent no longer being in force. 

I think the conclusion is correct but the reasoning is not very accurate. Indeed, unless I missed something, I think it is the European claim which is broader than the French claim and not the other way around.

The European claim merely recites a maximum value for the height dimension of the rail, whereas the French claim demands that the height dimension be approximately equal to a certain value. Therefore, it certainly makes sense for the European patent to fully substitute for the French patent. The most usual situation is for a European patent to be more restricted than the French priority patent. In this case, part of the broader French patent survives the substitution. But the present situation is different.

Another form of platform: a platform shoe with a storage compartment. The application suggests to use this compartment for "keys, driver’s license, money, and other small but necessary articles".
Another form of platform: a platform shoe with a storage compartment. The application conveniently suggests to use this compartment for “keys, driver’s license, money, and other small but necessary articles”.

The second point of interest in the decision is the novelty challenge raised by the appellant, which was based on an alleged public prior use. Launch Tech first argued that they had publicly presented several lifting platforms to the public before the priority date of January 27, 2006: some at a fair in Frankfurt in September 2004 and others at the Equip’auto fair of October 2005.

As evidence, Launch offered photographs of the equipment presented at the fairs. Those were however quickly dismissed by the court, since their date was not proven.

Then Launch made reference to a lifting platform referenced as TLTE 240SBA and delivered to a workshop in Dillenburg, Germany.

Launch filed a report written by a patent attorney. The patent attorney stated that he went to the workshop and took pictures of the platform. He noted the presence of a metal plate under the platform bearing the reference number TLTE 240SBA, the manufacturing date “2005/08” and the name and address of Launch Tech.

The court noted:

[…] He indicates that the information was engraved on the plate which was connected to the column and adds: “at first sight this is the original plate i.e. I do not think that it was replaced by another plate”. This indication is obviously an impression reported by Mr. T. which cannot prove the date of the lifting platform at stake and does not make it possible to retain it as prior art. 

Still concerning this lifting platform in the Dillenburg workshop, the alleged infringer also filed an affidavit by one of its technicians. The technician stated that he remembered delivering and putting the machine into service in December 2005. A copy of the corresponding intervention request was annexed to the affidavit.

Again, the court rejected the evidence.

First, the court noted a discrepancy between the platform reference number in the document in annex (TLTE 40SBA) and the actual platform reference number (TLTE 240SBA). An explanation for the discrepancy, though: the first number was an abbreviation for the second number, the missing figure 2 simply meaning a platform with two columns.

Second, the court more generally put the credibility of the witness into question:

[…] Nevertheless this affidavit was drafted by an employee of Launch Tech; and it is also questionable because, although Launch Tech markets different types of materials and lifting platforms, he stated that he remembered the serial number of a platform sold in 2005 when he wrote the affidavit on May 2, 2014. 

As a final remark on this issue, the court blamed the appellant with simply stating that the claims of the European patent were anticipated by its platforms TLTE 232SBA, TLTE 240SBA, TLT 235SBA and TLT 235SCA, without explaining the differences between the models and without describing their specific features (including the catches).

Consequently, the novelty challenge failed. So did the inventive step challenge. And the appeal judges also confirmed the first instance finding of literal infringement based on a bailiff’s saisie report of October 2011.

Interestingly, the infringing platforms bore the reference numbers TLTE 32SBA and TLTE 40SBA, i.e. similar references to those used in the unsuccessful public prior use defense. So at least the fact that the alleged prior use apparatuses had all claimed features appears relatively credible – although it can always be theoretically contemplated that the design of a device with a certain reference number can change over time.

In summary, the demonstration of public prior use in this country requires a high burden of proof – as in “Everest high” – just like at the EPO, although we do not use the warlike expression “up to the hilt”. 

On the one hand it is certainly very reasonable to demand absolute certainty when the patent proprietor has no personal knowledge of the alleged prior use and no access to the relevant evidence.

But on the other hand, this situation can also be quite frustrating for a nullity plaintiff (or similarly for an opponent at the EPO). You sometimes get the feeling that actual public prior uses are impossible to rely on in practice because there will never be enough records from that time and because every document or affidavit can be criticized one way or another as being incomplete or doubtful.

How a more fair balance could be reached is a tricky question. Maybe through greater resort to depositions of witnesses under oath?

CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 2, May 27, 2016, Launch Tech Company Ltd. v. FOG Automotive Distribution, RG No. 14/02829.

Search for meaning

Today’s Board of appeal decision was already reported on elsewhere, but it may be worth another commentary, since it relates to a fundamental aspect of patent law, namely the rules of claim interpretation, and more specifically the question of how much one should rely on the description and drawings when interpreting the claims – in particular for the assessment of novelty and inventive step.

One could think that such a basic issue should have long been very clearly settled. Well, one could think again.

Art. 69(1) EPC provides that “the extent of the protection conferred by
a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims“.

The official Case Law book (Case Law of the Boards of Appeal of the European Patent Office, 7th edition, section II.A.6) reminds us that a number of decisions referred to Art. 69 as a legal basis for interpreting the claims in the light of the description and drawings. Others pointed out that Art. 69 is concerned with the question of infringement, and is therefore only for courts of law to deal with, and not for departments of the EPO (except when assessing a potential extension of scope of protection after grant – Art.123(3) EPC).

For example, in T 1279/04, the Board explicitly stated that a different standard should be applied for interpreting the claims in examination or opposition proceedings and in infringement proceedings – which is somewhat reminiscent of the U.S. approach. As the Case Law book puts it, according to this decision:

in examination and opposition proceedings the value of future legal certainty was paramount. […] There was no case for anything other than a strict definitional approach, given that in this procedural stage the claim could and should be amended to ensure legally certain patentability, in particular novelty and inventive step over any known prior art. Amendment rather than protracted argument should be the answer to genuine difficulties of interpretation in all aspects of the examination and opposition procedure.

The strict approach advocated in T 1279/04 does not strike me as being commonly applied.

The position that first instance departments are officially supposed to follow (Guidelines for examination, F-IV, 4.2) seems somewhat more flexible. It refers to the description and drawings in the context of “particular cases“, where “the description gives the words a special meaning“. Otherwise, reference is more generally made to the meaning that words “normally have in the relevant art“, and to the necessity of attempting “to make technical sense out of” the claim.

And in practice, I feel that most of the time parties as well as the EPO tend to turn first and foremost to the description when interpreting the claims – and not just in particular cases when there is a special definition in the spec.

So, back to today’s decision T 1871/09, which sheds another interesting light on claim interpretation in view of the description.

The Board provided extensive general remarks on claim interpretation, and then applied their approach to the case at hand, where several terms raised interpretation issues.

A first important point is that the Board followed the approach adopted in T 556/02, per which reliance on the description and drawings to interpret the claims is justified by a general principle of law:

The Board was confronted with diverging argumentations from the parties regarding the meaning that the claims should have, and in particular some concepts that they refer to. The Board endeavored to look at the specification of the patent taken as a whole for the meaning that the skilled person would give to them. The Board applied a general principle of interpretation, of which Article 69 EPC is only an illustration, per which a part of a document cannot be interpreted independently from its context, and to the contrary the entirety of the document should be taken into consideration, when looking for the meaning of a certain statement which is made. […] Therefore, even if the provisions of Article 69 EPC on the scope of protection do not […] apply to departments ruling on opposition cases, the principle set out in this article is nevertheless applicable (reasons 3.1 – this passage and the following ones were freely translated from the French original version).

This makes sense and is a nice way to justify what most people would intuitively think is right – even if not explicitly enshrined in the Convention – i.e.: do not read the claims in isolation without considering the rest of the patent.

In the next paragraph, the Board recalled that the reader is the skilled person, and that he/she is the one supposed to interpret the claims. This is a very classical statement.

Then, the Board went on to warn that:

The interpretation principle recalled here applies to all, that is not only the opponents but also the patent proprietor, and third parties as well. The patent proprietor cannot possibly attribute a meaning to the terms that are used or to the features recited in a claim which the general context does not really make it possible to establish. It is thus not justified in this respect to rely on one passage of the description instead of another, so as to give a particular color to some terms that are used (reasons, 3.3).

So, patentees have to deal with their description as a whole. They cannot rely on just one paragraph which may support their preferred interpretation, without looking at other paragraphs which provide a different view.

And then comes the last bit of the general remarks, which is probably the most interesting one:

That said, the specificity of a patent specification should not be forgotten, that is the claims are supposed to generalize particular embodiments effectively disclosed in the patent specification. To which extent this specificity plays a role in the interpretation depends on the case. In this respect, some aspects such as the purpose of the invention and the number of examples are especially relevant. But it remains that the terms chosen in the claims are supposed to have been selected to serve this objective of generalization of particular embodiments. As a consequence, when the patentee omits, voluntarily or not, to define some concepts, or accepts that certain ambiguities remain in the patent description related to the request at stake, they cannot validly hide behind a limitative interpretation of the terms of the claim, at least insofar as the general interpretation which is retained makes sense on the technical standpoint and is consistent with the general teaching of the patent (reasons, 3.4)

Oftentimes in opposition proceedings, a patent proprietor would like a narrow interpretation of the claims to be used – in order to resist novelty and inventive step challenges.

One important consideration may however play against this defense: by nature and by function, claims are supposed to be more general than the embodiments disclosed in the description. Therefore, the fact that the description offers a narrow illustration of the claims may not by itself validly support the narrow interpretation of the claims. Or, to put it otherwise, the scope of the claims cannot be assumed to be limited by the “scope” of the description.

These principles were applied by the Board to the case at hand a number of times.

Claim 1 of the main request (patent as granted) read as follows:

Spectral content enrichment process of a signal having an incomplete spectrum including a first spectral band, the process consisting of the following stages:
– at least one transposition of the spectral content of the said first band into a second spectral band not included in the said spectrum in order to generate a transposed spectrum signal of restricted spectrum, to the said second spectral band;
– transformation of the spectrum of the signal with the transposed spectrum to obtain an enrichment signal;
– combination of the incomplete spectral signal and of the enrichment signal to produce an enriched spectral signal;
characterized in that the generation of the transposed spectral signal includes a whitening stage of the said spectral content such that the spectrum of the signal to the transposed spectrum is a whitened version of the said spectral content.

A device with spectral bands.
A device with spectral bands.

Novelty of this claim over a prior art document D1 was discussed. The two patent proprietors argued that the document did not disclose a process wherein the second spectral band is “not included” in the spectrum.

Remarkably, the Board rejected both the interpretation of the term “included” offered by the patent proprietors and the one offered by one of the opponents. The opponent had put forward a mathematical definition of the term. But the Board held that this “turns out to be too theoretical and does not take into account the content of the specification of the patent, where nothing suggests that these usual terms should be given a particular mathematical meaning” (reasons, 5.3.1).

As for the patent proprietors, their position was that the first and second spectral bands should necessarily be adjacent or separated. The argument was based on two embodiments in the description corresponding to these two possibilities. But the Board decided that the claim could not be interpreted in such a restrictive manner:

The passages of the patent relating to these embodiments are very general and do absolutely not suggest that the disclosed solutions are the only ones which can be contemplated. Therefore, in the absence of indications in the patent as to the meaning which the concept of inclusion should have, and taking into account the fact that claims are meant to generalize the teaching of the disclosed embodiments, the Board considers that the expression “not included” should be given a general meaning. The formulation used can thus not be interpreted as excluding the partial superposition of spectra of the initial and transposed signals (reasons 5.3.1). 

A second point of interpretation concerned the concept of “whitening“, which had to be compared with the notion of sub-band energy equalization in the prior art. The patent proprietors submitted that “whitening” the signal meant making the peaks of the spectral envelope more uniform, which was different from sub-band energy equalization.

Even though the other parties did not directly criticize this definition of whitening, the Board was not fully satisfied, because the definition “is not devoid of ambiguity” (reasons, 5.3.2). Then followed a detailed technical discussion showing that since the notion of spectral envelope is not clearly defined, there are many different ways to whiten the signal according to this broad definition. One of the opponents had filed an example showing that a sub-band energy equalization was tantamount to one possible form of whitening, and the Board was convinced by the demonstration.

One important last argument was discussed in this respect. Claim 1 called for one step of transposition and one step of transformation, the whitening being part of the transposition step, and being therefore before the transformation step. But in the prior art document, the whitening discussed above took place at the same time as the transformation. So, on the face of it, there was a difference between the process of claim 1 and that of the prior art.

But the Board decided that claim 1 should be interpreted more broadly than its literal wording, in view of the description:

When the granted patent is taken into account, this however leads to a generalization of the claimed process beyond its literal interpretation. Indeed, paragraph [0033] of the patent mentions the possibility of whitening and filtering in one operation by a transfer function filter equal to the product of the respective transfer functions of the whitening filter and of the transformation filter. It is unfortunate that the version of the description was not adapted to the version of the claims considered patentable by the Examining division and results in what is above all a problem of clarity of the claimed process. The version of the patent is however the entire responsibility of the appellant. Although no clarity objection […] can be raised against the granted version of the patent […], the patent proprietors must nevertheless accept that any contradiction, ambiguity or imprecision may be used by the opponents who can in particular rely on the extended scope of the claims made possible by such circumstances. In the present case, the argument that D1 reproduces the process of claim 1, as interpreted in the light of the description, is thus justified. 

All in all, this decision is actually a serious warning to applicants, who must carefully check whether the description is consistent with the claims, bearing in mind that:

  • On the one hand, the fact that the description discloses specific embodiments cannot by itself justify a narrow interpretation of the claims, since the function of the claims is such that they are supposed to be broader than these embodiments.
  • On the other hand, if the invention appears to be somewhat broader than the claims literally imply, based on the description (for instance because the description was not properly adapted to amended claims), then the claims may need to be reinterpreted in a broader manner.

Readers interested in the outcome of the case will have to wait a few more years, since the Board remitted the case to the first instance for further prosecution on the basis of an auxiliary request, after admitting new relevant documents into the proceedings.

As a final remark, there has been a long-standing tradition for French courts to rely a lot of the description and drawings to come up with their own understanding of what the invention really is about – irrespective of the exact wording used in the claims.

Does the French nationality of the patent proprietors explain why such a large part of the legal discussion in this case revolved around claim interpretation in view of the description? Possibly, but it seems that the description did little to help them in Munich after all.

CASE REFERENCE: Board of Appeal 3.4.01, T 1871/09, Orange et al. v. Stefanie Kremer et al., November 24, 2015.

Three strikes – you’re out

One, two, three strikes you’re out. Today, I will be discussing an invalidity decision again, and a rather remarkable one. It is not every day that three different grounds of nullity are held against a patent, including what some practitioners could consider as their white whale, namely… the lack of industrial application.

The origin of the case is a dispute between two inventors owning a French patent and a corresponding European patent relating to a cloth coated with mother-of-pearl, and their licensee, Van Robaeys Frères. As part of the dispute, the patent proprietors in particular requested from the Dunkerque Tribunal de grande instance (TGI) that the license agreement should be terminated. The disgruntled licensee retaliated by filing a nullity suit in front of the Paris TGI – which, as explained in a recent post, has exclusive jurisdiction in patent matters.

The first part of the judgment is dedicated to an inadmissibility defense based on an alleged lack of standing. This has actually been a serious defense since a famous Barilla case three years ago, in which a nullity claimant was found to lack standing because they had not demonstrated that they were preparing for carrying out acts prohibited by the patent.

Yet, in the present case, the nullity claim was quite logically found to be admissible:

With respect to patent nullity actions, those who can act are those who can establish that, at the time the complaint is filed, the claims which are sought to be revoked, are or may be an impediment for carrying out their economic activity, because they work or plan to work in the field of the patented invention. In this case, as a licensee in a license agreement on the exploitation of the French patent for which a termination is requested by the licensor, Van Robaeys Frères has an economic activity notably in the field of linen cloths, and thus has standing for seeking nullity of the patents of Mr. Thierry D’Arras & Albert Paoli, which it will no longer benefit from due to the termination. 

That being settled, let’s have a quick look at the two patents at stake, FR 2941712 (FR’712) and EP 2393979 (EP’979). Claim 1 of EP’979 reads very simply:

A cloth comprising a support and a light deconstructing layer characterized in that said layer comprises mother-of-pearl.

Claims 2 to 8 are dependent claims. Claim 9 relates to:

A method for preparing a cloth according to one of claims 1 to 8, comprising a step to impregnate a support in a mother-of-pearl solution.

Claim 10 depends on claim 9, and claim 11 is directed to

The use of a cloth according to one of claims 1 to 8 or of a cloth obtained with the method according to claims 9 to 10 to manufacture products which reflect away the infrared such as blind fabrics, tent fabrics and clothing.

The claims of FR’712 are identical to those of EP’979, except that claim 1 of FR’712 is somewhat broader as it also recites the alternative of using a substance equivalent to mother-of-pearl.

Mother and her pearls
Mother and her pearls

The first ground of nullity upheld by the court was a lack of novelty due to the inventors’ own activities before the priority date. More precisely, Van Robaeys argued that the invention was disclosed to the public in two ways: because of trials at the Centre européen du non-tissé (CENT) a couple of months before the priority date, and because of a meeting at the Ecole polytechnique a couple of weeks before the priority date.

The inventors’ defense was that both events were confidential. But the court held that this was not adequately proven. In particular, it seems that the court was of the opinion that explicit confidentiality agreements should have been in place, which was apparently not the case:

However, it can only be derived from the exchange of emails concerning the 2008 trials that a draft of confidentiality agreement was received by [the inventors]; and concerning the [meeting] of January 2009, it can be derived from the report dated January 19, 2009 on the meeting at Polytechnique that it was intended that all documents would be confidential, that “the university insists on the execution of a confidentiality agreement”, that “a draft of confidentiality agreement” was received by Mr. … from Polytechnique, but no confidentiality agreement was submitted by the parties. 

Yet, it is conventional to execute an agreement of this type […]. 

The court did not investigate whether it could be considered that there was an implicit obligation of confidentiality due to the circumstances of the two disclosures – and it is possible that the patent proprietors did not phrase the argument in this manner.

This is a defense that might have been successful in front of a Board of appeal of the EPO. There are not enough details in the judgment to really understand the full circumstances of the disclosures, but one could probably argue that there was a common understanding by the participants that the information made available during the trials and the meeting was provided in confidence.

So, are French courts more severe than the EPO on this issue? That’s very possible, as this is not the first decision that I have seen where an explicit confidentiality agreement is viewed as necessary in order to disqualify a disclosure as a public one. On the other hand, another decision issued by another section of the Paris TGI earlier in 2015 (and that I might comment on in a further post) accepted that the supply of prototypes to a lab for testing purposes implies a duty of confidentiality for the lab.

The bottom line is that, even if French courts may not draw the line at exactly the same position as the Boards of appeal of the EPO, in the end the question of whether a disclosure is considered as a confidential one or a public one is extremely fact-dependent, and there are never two exactly similar situations.

With that, claims 1 to 5 and 11 were found to lack novelty, which left claims 6 to 10 still standing.

Lack of inventive step was the next ground of invalidity tackled by the court, and it was quickly discarded. Indeed, it seems that none of the documents relied on by the claimant disclosed the use of mother-of-pearl on a cloth for filtering infrared and ultraviolet rays without interfering with visible light, which was the technical problem at stake.

Thus, the court turned to insufficiency of disclosure, which as readers may know is not a ground of invalidity that patent proprietors should take lightly in this country.

At this point, the judgment gets very surprising.

The court started by examining claim 6, which recites that “the light deconstructing layer is continuous“. According to the court, the description sets out that a continuous layer can be obtained by dipping or spraying, so that there is no insufficiency issue.

But then, the court turned to method claims 9 and 10 and explained that the notion of “mother-of-pearl solution” recited in these claims raises significant difficulties:

It is only mentioned in claim 10 that the mother-of-pearl solution comprises 10 to 20% mother-of-pearl, and it is mentioned in the description […] that “said mother-of-pearl is a powder of mother-of-pearl. Among the powders of mother-of-pearl which can be used in the invention, the one obtained by grinding the inside of mollusk shells can be cited.” 

Yet, the patent does not provide any indication on the formulation of the mother-of-pearl solution, although this element is essential since it defines the composition of the “layer” which needs to be homogeneous during preparation, its condition, its ability to penetrate or not the support or its ability to adhere to said support. 

Thus, it can be derived from the opinion drafted by Prof. D. […] that “the possibility to implement the invention depends on the possibility to implement the method of claims 9 and 10 […]. On the chemical standpoint, the term ‘solution’ is not sufficient to make it possible to carry out the invention and it raises many questions. Mother-of-pearl is mainly formed of calcium carbonate in the aragonite crystalline form, and it is very poorly soluble in water. One needs to know exactly what the solution is made of.”

The technical opinion of the engineer Mr. V. […] is consistent with this and adds that the composition the solution should probably vary depending on the fiber which is used […]. 

Therefore, the court held that method claims 9 and 10 are invalid due to insufficiency of disclosure and then added that “the product of claims 6 to 8 is also invalid because the methods for making the cloth are invalid“.

To say the least, this wording is clumsy. After stating that there was no defect of insufficiency of disclosure in claim 6, the court sort of changed its mind and held that the claim was invalid because the method of claims 9 and 10 is insufficiently disclosed.

It would certainly have been much clearer to start with claims 9 and 10, and then explain that since the skilled person does not know how to carry out the claimed manufacturing method, and in the absence of another readily available method, the product claims necessarily suffer from the same defect.

This clumsy wording notwithstanding, the court’s reasoning seems to make perfect sense. The analysis relies on experts’ opinions and it is true that the description of both patents is quite short and does not provide very detailed information, and in particular no example – in contrast to another recent case discussed here.

And finally, the white whale, i.e. the court’s position on the lack of industrial application of the patent:

It can be derived from the exchanges of emails in June 2011 between the parties as well as from the affidavit of Mr. J in charge of the project […] that the inventors faced unresolved difficulties of implementation of the non-woven linen cloth awnings coated with mother-of-pearl solution in a continuous layer, and it is not demonstrated that these difficulties only concerned roller awnings [as alleged by the defendants]. 

The inventors claimed that products according to the patent were manufactured and marketed, but only photographs and invoices were provided as evidence, which did not make it possible for the court to determine whether the invention was actually implemented in those products or not.

This lack of industrial application is in fact very similar to an insufficiency of disclosure. So, the whale may not be so white after all, upon closer inspection. But it is true that if an invention cannot be carried out by the skilled person, then it is not possible to make it or use it “in any kind of industry, including agriculture” as Article 57 EPC puts it.

And that was the last nail in the patents’ coffin.

As a final word, we should always bear in mind that French court are strictly bound by the parties’ submissions; therefore, surprising court’s findings may sometimes only reflect unusual parties’ submissions. But to some extent, it seems like this judgment is really a pearl.

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, September 10, 2015, SA Van Robaeys Frères v. D’Arras & Paoli, RG No. 13/12618.