The third and last one of the series of posts on how French courts seem to have gotten stricter on extension of subject-matter is dedicated to a dispute between two French truck manufacturers, Chéreau and Frappa. The former sued the latter for infringement of two European patents concerning buffers mounted at the rear end of the vehicle chassis.
Once again, both patents (one of which had gone through and survived opposition proceedings at the EPO) were revoked by the Paris TGI for extension of subject-matter.
Of these two revocations, one was based on a relatively typical reasoning of intermediate generalization: some features were taken from the description and imported into claim 1, and the court decided that it was not allowable to isolate these features from the others with which it was originally disclosed in combination.
The other revocation is more remarkable. The file wrapper of the patent can be found here. Claim 1 as filed related to a vehicle chassis comprising, inter alia, a thrust element. Claim 2 as filed specified that the thrust element was a thrust arm with roughly longitudinal mobility relative to the chassis. In claim 1 as granted, the thrust element was restricted to a thrust arm with longitudinal mobility relative to the chassis. In case you have not noticed, the term “roughly” disappeared in the process, and this turned out to bring about the demise of the patent.
At first sight, the amendment may look like pretty innocuous. In fact, examiners often protest against the presence of vague adverbs such as “roughly”, “approximately” and the like in patent claims, and they regularly request that the applicant should get rid of them before grant. This is hardly ever seen as an issue at all from the added matter standpoint.
So, in the present case, if there was support in the original disclosure for “roughly” longitudinal mobility, why wasn’t there any support for longitudinal mobility as such? In order to understand this, one needs to have a closer look at the application as filed, which contained only one detailed embodiment of the displacement of the thrust arm.
According to this embodiment, the thrust arm rotates around an axis by a few degrees, and this is said to be tantamount to a longitudinal displacement. This comment is quite understandable because, if you zoom in on a portion of a circle, it looks pretty much like a straight line (if my math memories are correct, this is what they call a first order approximation).
In the light of the description, the term “roughly longitudinal” in original claim 2 was therefore interpreted by the court as actually referring to a pivotal movement. By deleting the adverb “roughly”, this was changed to a truly longitudinal movement, but such change was not properly supported by the application as filed.
Quoting from the judgment:
“By omitting the adverb ‘roughly’, Chéreau can argue that claim 1 covers any longitudinal displacement and no longer only a rotation displacement of the thrust arms.
Departing from the roughly longitudinal displacement corresponding to a rotation of a few degrees mentioned in the description, claim 1 covers the longitudinal mobility of the thrust arms by the deletion of the adverb ‘roughly’”.
So, paradoxically, by specifying that the displacement is longitudinal and not just “roughly longitudinal“, the applicant had shifted the scope of protection to claim an aliud. The innocuous-looking amendment was therefore not so innocuous after all.
Now, having reporting on this third recent example of added matter ruling, I would certainly be interested in knowing what readers think about this general approach which to me is very reminiscent of EPO practice. Is such harmonization to be welcome? Or are French judges being more Catholic than the pope?
CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 4ème section, SAS Jean Chéreau v. SAS Frappa, November 6, 2014, RG No. 12/10879.
As a second installment in the story of how French courts seem to have gotten tougher on extension of subject-matter, I would like to say a few words on our local share of the much commented upon Nespresso IP saga (see e.g. here).
Of the two European patents of the same family that the patentee Nestec and its licensee Nespresso France asserted against several defendants, one (let’s call it the divisional patent) was revoked by a Board of appeal of the EPO, for… well, extension of subject-matter. The other one, namely the parent patent (EP 1646305), went unopposed. But the patent proprietor filed a request for national limitation at the French patent office – in parallel to the ongoing infringement suit. It is therefore the patent as limited in France that was held invalid by the court.
Claims 1 to 9 of the patent as limited are directed to a device for the extraction of a capsule provided with a collar. Claim 10 is directed to the device of claim 6 and a capsule in combination, and it further specifies that the capsule is frustoconical and is asymmetric with respect to the plane of the collar.
The court found that the subject-matter of the EP’305 patent as limited unallowably extends beyond the contents of the application as filed for three different reasons.
The first one is the feature of the capsule being provided with a collar. The application as filed does disclose a coffee capsule provided with a collar but, said the court, only specific capsules of this kind, namely those described in a prior art document EP 0512148, as opposed to any capsule with a collar. The capsules disclosed in EP’148 are asymmetric, frustoconical, and the collar is situated on the larger end of the cone.
If it is true that the capsules in question are not directly described in this application, it remains that the reference that it contains to the ‘148 patent must be taken into account so as to understand which capsules are meant.
As the defendants rightly point out, this ‘148 patent discloses capsules, made of a soft material, of a frustoconical […] shape, with the collar present on the larger end of the frustum.
Now, the patent as limited does not reproduce these specifications in its claim 1, since it simply describes a capsule with a collar, without mentioning its shape nor the position of this collar.
It is true that, as noted by Nespresso, claim 10 expressly recites that the capsule comprises a collar and an extraction face, and that it is frustoconical. However, this claim does absolutely not mention the position of the collar, and there is no indication that it is located on the larger end of the frustum, whereas it can also be located elsewhere, for instance on the smaller end or also in the middle of the capsule. This omission, which causes the patent as limited to protect a collar which is less specific than the one deriving from the reference made in the patent as filed to the ‘148 patent, is such that it has a scope of protection which is more extended than the initial protection.
This is an extension beyond the application, which as a consequence invalidates claims 1 and 10 of the patent in suit.
Although the expression is not used here, this is a finding of intermediate generalization: during examination proceedings and post-grant limitation, the patentee isolated some features relating to the capsule that is to be used with the device of the invention, without taking the full picture of said capsule. But what is more original here is that the omitted features were not expressly recited in the application as filed. In fact, this is an intermediate generalization relative to the contents of a prior art document cited in the application – in other words a prior art document which the court has considered as being incorporated by reference in the application.
I will skip the second reason for invalidating the patent, which is probably less interesting in the context of this post, and instead I will then turn to the third reason.
As mentioned above, claim 10 relates to a device for the extraction of a capsule plus the capsule itself, in combination. So, this looks like a kit claim. The original set of claims did not contain any such kit claim, but only device claims. The defendants argued that the addition of the kit claim conferred an undue advantage to the patentee and offended legal certainty for third parties, while the patentee’s case was that the application as filed contained a detailed description of how the device interacts with the capsule, so that third parties reading this application should have expected that a kit claim could be later added. Again, the court sided with the defendants:
However, when carefully reading the application as originally filed, it is obvious that this was then only a device patent, describing and protecting “a device for extracting a capsule, as well as the machine comprising this device”, wherein the capsule appeared only in a minimal way, so as to state how it was arranged and how it was extracted, but it was never, as mentioned above, really described for what it was, the only details that were provided being that the capsule was “asymmetric with respect to its collar” and that it could be “of any type”.
Thus, this is again obviously an extension beyond the application purporting to protect capsules which were not protected before, and the fact that the interaction between the device and the capsules was described did not have the effect at that time to protect these capsules as much as they have been since the grant and even more so since the limitation.
As rightly put by the defendants, this extension cannot be portrayed as insignificant, since it is precisely what makes it possible for the plaintiffs to sue them for infringement today, blaming them for marketing such capsules.
This is an interesting situation because, to some extent, it could be argued that the notion of “combination” between a device and a capsule did not add any new technical information relative to a thorough description of how the device interacts with the capsule. Nevertheless, the court found that the combination claim dramatically altered the subject-matter of the patent, and its potential use against third parties, by making the capsules themselves part of the invention.
In its “limiting feature” decision G1/93, the Enlarged Board of Appeal of the EPO held that:
With regard to Article 123(2) EPC, the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application.
It seems that the TGI took the same view that legal security of third parties is a paramount concern when examining compliance of a patent with Article 123(2) EPC. As bitter as that coffee may be for some, going back to the raison d’être of this rule (which is undoubtedly one of the cornerstones of the European patent system) before applying it to the facts of the case does make a lot of sense.
Based on a number of judgments issued in France over the last couple of years, it seems that there has been a new trend towards the invalidation of patents due to extension of subject-matter. I have a feeling that, not so long ago, this used to be a ground of revocation that no one really took seriously outside of the EPO. And especially so in France, where there has been a long standing tradition of judges looking more closely at the description of a patent than at its claims, and coming up with their own definition of what the invention really is about, notwithstanding the exact wording used in the claims.
But as a famous singer once said, the times they are a-changin’, which brings us to the invalidation proceedings initiated by Normandy-based company Nexira against the British and Japanese owners of European patent EP 1611159. The patent relates to a modified gum arabic from Acacia senegal (that’s the scientific name of the tree from which the gum is collected). This gum can notably be used as an emulsifier in food products.
The main claim of the patent reads as follows:
A water-soluble modified gum arabic from Acacia senegal, having a weight average molecular weight of not less than 0.9 million Da or an arabinogalactan protein content of not less than 17 weight %, and an RMS-radius of gyration of 42.3 to 138 nm, obtainable by heating unmodified gum arabic at 110°C for not less than 15 hours, wherein the weight average molecular weight, arabinogalactan protein content, and RMS-radius of gyration are obtained by processing the data obtained by subjecting the modified gum arabic to a GPC-MALLS using software ASTRA version 4.5 and wherein said data for the whole peaks in the chromatogram obtained using an RI detector are processed as two peaks, the two peaks being divided into the eluted fraction of high molecular weight components containing the arabinogalactan protein of the gum arabic which eluted first and the eluted fraction of low molecular weight components which eluted at a later time, wherein the arabinogalactan protein content corresponds to the obtained recovery ratio of the peak of the eluted fraction of high molecular weight components which eluted first.
The crux of the discussion was the feature of the radius of gyration. The range of 42.3 to 138 nm was not disclosed per se in the application as filed; but the end values of the range were disclosed in the context of two respective examples.
The judgment does not explicitly refer to the case law of the Boards of appeal of the EPO. But there can be little doubt that the court relied on it, since they called this situation a case of “intermediate generalization”, which is typical EPO parlance. What is more, the standard put forward by the court for determining whether the intermediate generalization is admissible or not closely matches the test routinely applied in Munich. Said the court:
It is possible to generalize a range of values from an example, but such intermediate generalization is only admissible under Art. 123(2) EPC if the skilled person can deduce without any doubt from the application as filed that these features are not closely linked to other features of the embodiment, but that they directly and unambiguously apply to the more general context.
In order for this intermediate generalization to be admissible, it must result from the non-ambiguous information that the skilled person would derive by reading the example and the content of the application as filed.
Taking into account the whole content of the application, determining whether features isolated from the examples are closely tied to other features or not, and using direct and unambiguous derivability as a threshold: all European patent attorneys are familiar with these principles, as they are cornerstones of the assessment of extension of subject-matter by the Boards of appeal.
In the Nexira case, the outcome of the Court’s appraisal was negative:
In the present case, the skilled person could not deduce, without any doubt, when reading the international application, that these features, taken from two embodiment examples based on gum arabic having particular dimensions and composition, are not closely linked to other features of these embodiment examples, and directly and unambiguously apply to the more general context.
As a result, the addition of this range of radius of gyration RMS in claim 1 of the EP’159 patent whereas it was not in claim 1 of the international application, shows an extension of its subject-matter beyond the initial application.
Strictly speaking, it would have been interesting to get more detailed explanations in the decision as to why the radius of gyration in the examples should be viewed as being specific to the samples in question. One can also wonder about the relationship between the range of the radius of gyration and the other parameters recited in the main claim, such as the molecular weight, the protein content and the product-by-process features.
The question of who primarily has the burden of proof in this respect (the plaintiff or the defendant-patent proprietor) is also an interesting one which is not clearly addressed in the judgment – as there was probably no reason for addressing it.
Anyway, the outcome of the case should not come as a real surprise: it is a risky gamble indeed to take values from an example section of a patent application and insert them into a claim. If the patent at stake had been subjected to opposition proceedings, chances are it would probably have faced a hard Art. 100(c) EPC challenge. The patent proprietors were lucky enough not to be faced with an opposition; but not lucky enough to get their patent tried by a court insensitive to EPO traditional case law.
This situation stands in sharp contrast with other French cases previously discussed here and here, where major deviations from EPO case law were observed, in connection with the issue of patent eligibility.
As a present to priority nerds, and probably a punishment to others, here is another post on the burning issue of partial priority.
In a previous post, I attempted to provide some practical tips to patent drafters anxious about the outcome of the referral to the Enlarged Board of Appeal on the issue of poisonous (or toxic, whichever you like best) divisionals. As was recalled in this post, the issue boils down to how partial priority is assessed: under what we could call a “broad” or “generous” interpretation of partial priority, any generalized claim can partly benefit from the priority of a partial original disclosure, and thus be immune to anticipation by any poisonous divisional, poisonous parent or any other poisonous you-name-it family member; if, however, one believes that partial priority requires certain specific conditions in order to be acknowledged (let’s call this the “narrow” or “strict” interpretation), then generalized claims which do not pass the test (whatever it is) may be prone to some kind of incestuous anticipation.
Several boards of appeal adopted the strict interpretation of partial priority, whereas Board 3.3.07 preferred the broad and generous interpretation, notably in decision T 1222/11. This is the divergence in case law which led to the referral to the Enlarged Board.
Today, I would like to focus on this decision T 1222/11 in more detail: not so much on the (very interesting) obiter part of the ruling where the Board discusses in detail why they believe the strict interpretation put forward by other boards is wrong; but rather on the rest of the decision, which should not be ignored and is very informative indeed.
Oh – and did I forget to mention it? In this ex parte case T 1222/11, the patent application died in the end. It did not die because of a toxic divisional though, as Board 3.3.07 does not believe in toxic divisionals – and as this was not an issue anyway. But it died all right, and because of an invalid priority claim.
With this in mind, is it possible that the broad and generous interpretation might not be so generous after all with applicants and patent proprietors? At any rate it is certainly worth having a closer look at what exactly went wrong in T 1222/11 for the applicant Kao Corporation, and how they were unfortunately K.O.-ed.
In the case at hand, the application claimed the priority of a Japanese patent application, and the text of the application as filed was identical to the English translation of this Japanese patent application (reasons, 7).
But there was also an earlier PCT application by the same applicant, D4b, with a similar disclosure. In particular, D4b included several examples falling within the scope of the claims of the application at stake.
According to Kao, since D4b was only intermediate prior art under Article 54(3) EPC, it was possible to introduce a disclaimer into the main claim, more precisely a G 1/03-type undisclosed disclaimer, so as to restore novelty over D4b. Various formulations for the disclaimer were put forward as a main request and auxiliary requests.
This line of defense by the applicant was based on the presupposition that the priority claim of the application was valid.
If however the priority claim was in fact invalid, then D4b became full prior art under Article 54(2) EPC, as a result of which the introduction of an undisclosed disclaimer to restore novelty over D4b was no longer permitted, in view of the conditions set forth in G 1/03.
This is why the Board examined the validity of the priority claim, focusing on the fact that
According to Article 87(1) EPC, a requirement for enjoying a right of priority for filing a European patent application is that the application for a patent […] on the basis of which the priority is claimed must be the first application in respect of the same invention (reasons, 7).
The Board therefore compared the teaching of the priority document with that of the earlier application D4b by the same applicant. The Board explained that, if the earlier application D4b related to the same invention as the Japanese priority document, then said Japanese priority document could not be considered as a “first application” and thus the priority claim was invalid.
As a side note, the applicant could not possibly rely on the mechanism of Article 87(4) EPC, per which
a subsequent application in respect of the same subject-matter as a previous first application and filed in or for the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority.
Indeed, D4b had been published and (if only for this reason) could not be considered as having been merely replaced by the later Japanese application.
Let’s now go back to the comparison between the priority document (substantially identical to the application at stake) and the earlier application D4b. The priority document, just like the claimed invention itself, was directed to a leave-on hair cosmetic composition containing an organic dicarboxylic acid (A) and an organic solvent (B), and further characterized by a certain pH and a certain buffering capacity. The Board first of all noted that 6 examples of compositions in D4b fell within the scope of claim 1 – these were the formulations that the applicant tried to exclude from the application at stake by way of a disclaimer. In addition, there were many more similarities between the priority document and D4b, including in terms of preferred components.
Only the buffering capacity was not explicitly recited in D4b, but for the Board, this parameter was simply a consequence of the other technical features present in D4b.
This finding meant that the priority document related to the same invention as D4b – and therefore the priority claim was invalid.
One aspect was more particularly discussed by the applicant, namely the fact that D4b was limited to the use of a combination of malic acid and lactic acid as component (A), whereas the priority document and the claimed invention were not.
According to the Board, this
does not mean that D4b and the present application do not contain a common subject-matter or invention, but only means that the disclosure of D4b does not extend to the use of malic acid without any lactic acid. In other words, the present subject-matter can be seen as the invention of D4b supplemented with additional subject-matter relating to the use of malic acid without lactic acid (reasons, 9.4).
To put it differently, the priority document as well as the claimed invention were generalized relative to the subject-matter of the earlier application D4b.
But, despite such generalization, both the priority document / the application and D4b were found to relate to the same invention. This is made quite clear in the other following statements by the Board:
It follows from the above that the combination of features defined in positive terms in the first part of present claim 1 of the Main Request cannot be distinguished from the disclosure of the earlier application D4b. Example Products 10 to 14 and Example Product 6 of D4b constitute prior disclosures of the combination of features defined in positive terms in the first part of present claim 1 of the Main Request and therefore cannot be held to relate to a different subject-matter, i.e. a different invention (reasons, 9.2)
It must be concluded […] that the Appellants cannot benefit from the priority claimed for the combination of features defined in positive terms in amended claim 1, in so far as it covers subject-matter disclosed in D4b, in particular in so far as it covers the six compositions disclosed in D4b which the Appellants are seeking to disclaim (reasons, 10).
Further down in the decision, in the obiter dictum on partial priority, the Board explains that it is sufficient for the purpose of benefiting from partial priority if alternative subject-matters in a broad claim can be conceptually identified – a very undemanding requirement.
The Board further notes that this
also implies in view of the necessary coherence of rules of law on the subject of claiming priority defined in the EPC, that when an application on the basis of which a priority date is claimed encompasses a narrower subject-matter already disclosed by the same applicant in an earlier application, the decision on whether the claim to priority on the basis of the later application is valid does not depend on whether the narrower subject-matter disclosed in the earlier application is identified in said later application. The latter situation is precisely the one underlying the case under appeal (reasons, 11.8).
The bottom line of this rationale is that, when two successive applications are filed by a same applicant, the second one having a broader subject-matter than the first one, then the second application can never be used to claim priority for a (yet) subsequent filing – unless use is made of the special provisions of Article 87(4) EPC, i.e. the first application is nipped in the bud.
Logically, one should reach the opposite conclusion if the “narrow” interpretation of partial priority advocated by the other, poisonous divisionals-friendly boards, is used.
So, the “broad” interpretation may save a number of patents from the unpleasant agony of being poisoned by another member of their family; but it may also toll the bell for some applicants who like to file successive applications for relatively similar subject-matters, and possibly broaden the definition of their inventions over time, starting from specific examples.
Thus, whatever the outcome of the pending referral is, it seems that extreme caution will still be required for properly claiming priority.
CASE REFERENCE: Board of Appeal 3.3.07, T 1222/11, Kao Corporation, December 4, 2012
In a previous post, I gave an example of a French patent which was revoked because it was considered as not relating to an invention but to a mere discovery.
Still on the subject of patent eligibility, the same section of the Paris Tribunal de Grande Instance (TGI), chaired by the same presiding judge, Ms. Courboulay, confirmed their relatively harsh stance on this topic, this time in relation with a computer-implemented invention. The judgment was already reported on the Blog du droit européen des brevets but since it is really remarkable I thought it would be worth mentioning it here as well, just in case some readers missed it.
The telecommunications giant Orange brought an infringement action against its competitor Free, based on European patent No. EP 2044797. Unsurprisingly, Free filed a revocation counterclaim, and, as the title of this post suggests, Orange lost the case. Indeed, the court revoked all of the patent claims which were asserted by Orange.
Some of these claims were held invalid due to lack of novelty, but this is not the part of the decision which I would like to discuss. I would like to focus on claims 12, 13, 14 and 15.
Claim 12 read as follows:
Computer program product downloadable from a communication network and/or stored on a computer-readable medium and/or executable by a microprocessor of a mobile terminal (2) including means for detecting the radio field (160) of a base station (16) of a home local area network (150), said home local area network including one or more home equipments (11-14) connected to a home gateway (15), said mobile terminal (2) including means for exchanging data with said gateway via a radio link with the base station (16), characterized in that it includes program code instructions for sending to said home gateway (15), in response to detection of the radio field (160), information relating to the establishment of a multimedia session in progress between said mobile terminal (2) and an applicative system (20), and in that it further includes program code instructions for displaying a list of home equipments sent by the home gateway (15) and means for selecting at least one home equipment (11; 12; 13; 14) in said list.
The court was apparently not very happy with how this claim was drafted. They stated:
Article 52 EPC is perfectly clear and does not require any interpretation: programs for computers as such are excluded from patentability, and this is because they are protected by copyright.
The emphasis on “as such” was put by the court, and the way I understand it, the expression was interpreted as meaning that programs for computers are “inherently” or “absolutely” excluded from patentability.
But, wait a minute, isn’t this understanding completely at odds with the position taken by the Boards of appeal of the EPO? After all, the Enlarged Board of Appeal, in its opinion G 3/08 on computer programs, stated that:
The present position of the case law is thus that […] a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium (reasons, 10.13).
In other terms, according to the case law that the Enlarged Board endorsed, the wording “as such” in Article 52 means quite the opposite to what the TGI believes, i.e. it means that only pure computer programs can possibly be excluded from patentability, but any mention of a technical feature such as a computer or a storage medium is sufficient to escape exclusion from patentability. To make this easier to understand, the Enlarged Board made a comparison between computer programs and pictures (also excluded from patentability as such), which can be printed on a (patentable) physical support:
a claim to a computer implemented method or a computer program on a computer-readable storage medium will never fall within the exclusion of claimed subject-matter under Articles 52(2) and (3) EPC, just as a claim to a picture on a cup will also never fall under this exclusion.
The TGI was evidently well aware of the EPO case law on the issue but was unimpressed:
It cannot be validly argued, as the sole defense to deny nullity of these two claims, that the practice of the EPO is to admit claims to programs for computers by calling them ‘program-products’.
In fact, it cannot be accepted that a mere trick of language would make it possible to grant patents contra legem. Indeed, the grant of patents to computer programs, even if they are called program products, is not supported by any statute or by any difficulty of interpretation of the EPC, and on the contrary those are clearly excluded as such from patentability.
Claims 13 and 14 contained the same wording of “computer program product” as claim 12 and they were therefore smashed for the same reason.
As for claim 15, it was directed to a “storage medium storing the program according to any one of claims 12 to 14”, but the court found that this does not make any difference:
In this case, and in view of the way claim 15 of the EP’797 patent is drafted, it appears that the storage medium does not have any particular technical feature. It is again a dressing which does not make it possible to escape the exclusion from patentability which concerns computer programs. There is in fact no more information on this storage medium in the description of the patent, and Orange has obtained a protection and the consequent monopoly on an object the only function of which is to contain computer programs which are excluded from patentability.
Claim 15 was therefore canceled as well.
Scathing comments in a ruling often add some spice to it, and Ms. Courboulay did not skimp on those. In this respect, her statement on the EPO’s contra legem practice of granting patents to computer program products is nothing short of astonishing. I will leave it up to the readership to decide for themselves whether the red card mentioned in the title of this post should in fact be shown to her court rather than to the claimant.
But beyond this parfum de scandale, applicants should keep in mind that, at least according to latest case law, claims directed to computer programs seem to be simply outlawed in France. Therefore, they should definitely include method claims in their French or European applications if they want the novelty and inventive step of their inventions to be assessed at all.
In view of the very firm stance taken by the court in Orange, I would not bet on any argumentation advocating the technical character of computer program inventions in front of the TGI.
As to the significant discrepancy between French case law and EPO practice, there are other striking examples (not just in the software field), and I will probably come back to this issue in future posts.