Infringement wiped out

It is an infrequent but real pleasure for a litigant to face an opponent who does not fight and does not bring any contradiction to the litigant’s case. But I guess the pleasure is considerably reduced when the opponent in question is a Chinese infringer which vanishes from the radar and might always reappear later in another form.

It seems that the wiper business of the Valeo group was confronted with this situation, as suggested by two judgments from the Cour d’appel de Paris dated April 14, 2015 against two Chinese companies which did not even appoint a lawyer to defend them.

At first instance, both companies were found guilty of infringement of the French part of European patent No. EP 1486134. In one of these cases, the defendant was in addition found guilty of infringing two trademarks as well as of passing off. This looks more like organized piracy than conventional patent infringement.

However, the first instance judges rejected two further infringement claims based on patents No. EP 1485280 (EP’280) and  EP 1565359 (EP’359). Valeo appealed, and the Cour d’appel partly reversed the first instance decisions, finding in favor of the claimants.

This gives us the opportunity to look at how French courts appraise contributory infringement. The relevant legal provision is article L. 613-4 of the Code de la propriété intellectuelle:

Unless the patent proprietor consents, the supply or offer to supply, on the French territory, to another person than those entitled to work the patented invention, of means for implementing this invention on this territory, in relation with an essential element thereof, is also prohibited, when the third party knows or circumstances make it obvious that these means are suitable and intended for this implementation. 

Claim 1 of the EP’280 patent reads as follows:

Wiper device (10), particularly for wiping vehicle windscreens, comprising a drivable wiper arm (14), with a flat wiper blade (16) positionable on the wiper arm (14), which (wiper blade) comprises a wiping rubber (18), the support elements (20) bearing the wiping rubber (18), which (support elements) may preferably be designed in the form of strip-like elongated spring rails and means of connection for connection to the free end (12) of the wiper arm (14), wherein the means of connection comprise a carrier element (22) firmly arranged on the support elements (20) and a connecting element (24) arranged to be partially pivotable in relation to the carrier element (22) and the connecting element (24) is detachably connectable to the free end (12) of the wiper arm (14), characterized in that the free end (12) of the wiper arm (14) presents several, preferably two, tongues (30, 32) extending in the longitudinal direction, which in the installed state engage in tongue receptacles (34, 36) provided on the connecting element (24) and that the tongues (30, 32) are designed in one piece with the free end (12) of the wiper arm (14) and project at least in sections in the direction facing the windscreen.

So, the claim is directed to a wiper device made of several elements, including a so-called “connecting element“. The mention and characterization of the connecting element are underlined above. The defendants marketed wiper connectors in France having the same features as the connecting element of the above claim.

The first instance judges had rejected the infringement claim by simply noting that the products marketed by the defendants did not reproduce all the features of claim 1 of EP’280, since said defendants did not market wiper arms compatible with the (infringing) connecting element.

I would have loved to illustrate this post with Eiffel tower wipers but strangely enough it seems like nobody had the idea of patenting them.

I would have loved to illustrate this post with Eiffel tower wipers but strangely enough it seems like nobody had the idea of patenting them.

This was certainly an incomplete reasoning, since the existence of contributory infringement does not require that the infringer markets all parts of the claimed product, even separately. It is only necessary that the infringer markets one part of the claimed product, provided that this part represents means for implementing the invention in relation with an essential element thereof.

The appeal judges thus held differently. Quoting from one of the two appeal judgments:

[…] The connecting element (24) contributes to the result of the main claim of the patented invention, which is to offer a wiper device comprising a wiper blade arranged on a wiper arm (14) the free end (12) of which comprises two tongues (30, 32) arranged in tongue receptacles (34, 36) provided to that end on this connecting element; this element therefore is a means for implementing the patented invention, relating to an essential element of the invention. 

This finding seems to make perfect sense because, looking at the claimed wiper device, if we leave aside features which are probably common to most wipers (such as the presence of a drivable wiper arm with a wiper blade comprising a wiper rubber, etc.), the features which seem to be really characteristic of the invention are, on the one hand, the presence of tongues on the free end of the wiper arm, and on the other hand the presence of corresponding tongue receptacles on the connecting element.

In other terms, the invention really is about a particular manner of connecting the connecting element to the wiper arm (at least, this is what is reflected in the characterizing portion of the claim).

Therefore, the connecting element having the right shape and connecting features does indeed relate to (or even, is) an essential, i.e. original, problem-solving, element of the invention.

Turning now to the other patent, EP’359, the main claim is the following:

Device (10) for detachably connecting a wiper blade (12) with a drivable wiper arm (14), with the wiper blade (12) having a wiping strip (16) facing the screen to be wiped, at least one strip-like elongated carrier element (18, 20), a slider element (22) connected to the carrier element (18, 20) and an oscillatably mounted connecting element (24) on the slider element for connection to a coupling section (26) of the wiper arm, characterized in that the coupling section (26) has a tongue-like insertion section (28), the connecting element (24) has a receptacle (30) for the insertion section (28) and the coupling section (26) and the connecting element (24) have securing sections (42, 56) for mutual permanent connection, wherein in order to achieve a preinstallation position in which the longitudinal axis of the wiper arm (14) and the longitudinal axis of the connecting element (24) form an angle a in the range of approx. 10° to 100°, the insertion section (28) can be broadly linearly (64) inserted into the receptacle (30) and wherein in order to achieve a final installation position the wiper arm (14) and the connecting section (24) are pivoted towards each other around the contact area between the insertion section/receptacle until the securing sections (40, 42, 56) allow a mutually permanent connection.

What is important to note in this claim, beside the word “oscillatably” which is probably a challenge to most automatic spelling correction softwares (the original claim was in the German language, which may be an explanation), is the features which characterize the connecting element, which I have underlined.

Again, the defendants marketed a connecting element similar to the one recited in the claim, under reference Q-P in one case (the connecting element infringing EP’280 being referenced as Q-B), and under reference FG9 in the other case (the connecting element infringing EP’280 being referenced as FG7)…

And again, the court found that the connecting element was “a means for implementing the patented invention relating to an essential element of the invention“.

This makes a lot of sense just like in the EP’280 case, as this is still a plug/socket type of invention, wherein the innovative features relate to the way two elements are connected together. Therefore, the invention is embodied both in the plug and in the socket – or, in this case, both in the wiper arm and in the connecting element.

In both of its orders, the Cour d’appel pronounced an injunction and awarded damages to the claimants, as expected.

But, most interestingly, the judges additionally ordered that the infringing products be seized and remitted to the claimants. This measure is not very often ordered and it is certainly attributable to the unusual context of the case. In particular, the judges may have thought that it would not be easy for the claimants to recover the ordered damages from the foreign defendants, so that a seizure was probably necessary as a form or relief.

CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 1, April 14, 2015, SASU Valeo Systèmes d’Essuyage, Valeo Wischersysteme GmbH & SASU Valeo Service v. Ningbo Youngsun Auto Parts Co. Ltd., RG No. 13/15794; Cour d’appel de Paris, Pôle 5 chambre 1, April 14, 2015, SASU Valeo Systèmes d’Essuyage, Valeo Wischersysteme GmbH & SASU Valeo Service v. Qeep Auto Spare Parts Ltd., RG No. 13/15800.

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