In the patentee’s shoes

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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


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

One thought on “In the patentee’s shoes”

  1. One should never forget that added subject-matter and novelty are two sides of the same coin. What is possible on the one side, e.g. novelty, is not possible on the other sided, e.g. added matter and vice-versa.

    It would be interesting to see whether there has been litigation in Germany.
    When looking at BGH X ZR 161/12 (Wound treatment device), the proprietor would have bee better off as the BGH ruled that revocation or annulment is not necessary when the unallowable feature does not result in an aliud (something never envisaged). The unallowable feature is merely disregarded when assessing patentability….. In other words, G 1/93is to be ignored!

    On the other hand the Paris TGI and the Court of Appeal have delivered some judgements which one could consider surprising to put it mildly.

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