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.

A toll on Bell

Acts of infringement are broadly defined under French law, and this definition was further expanded in 2014. If we consider direct infringement of a product, article L. 613-3 (a) of the Code de la propriété intellectuelle defines the acts that are prohibited without the consent of the patent proprietor as:

making, offering, putting on the market, using, importing, exporting, transshipping or possessing for these purposes the product which is the subject-matter of the patent.  

Exporting and transshipping are the two terms which were added in 2014. However, the most interesting terms for the purposes of a legal discussion are probably “offering” and “putting on the market“, as they leave quite a bit of room for interpretation, one recent example being an infringement case brought by Eurocopter, later renamed Airbus Helicopters, against the U.S. group Bell Helicopter, based on French patent No. FR 2749561 directed to a landing gear with skids.

In 2012, the Paris Tribunal de Grande Instance (TGI) rejected all infringement claims, as well as all invalidity counterclaims.

In 2015, the Paris Cour d’appel partly reversed, upholding the validity part of the first instance judgment but reaching a different conclusion on infringement. In particular, the appeal judges had a broader view than the first instance judges on what can constitute an offer for sale.

In 2005, Bell Helicopter presented a first version of a helicopter called Bell 429 to the public:

  • by including it in their catalogue;
  • by showing a model in September 2005 in the good town of Toussus le Noble, which was reported on the website of a helicopter enthusiast (Bell argued that this was a confidential presentation);
  • by putting it up on the website of Rotor & Aircraft, their distributor in France.

The Bell 429, first version, incorporated the claimed landing gear, and this does not seem to have been contested by the defendant:

This literal reproduction was admitted when Mr. Robert G., structure manager of Bell Helicopter, was cross-examined during the Canadian proceedings and it is not challenged by Bell Helicopter Textron in the present proceedings. 

But, said Bell, this first version of Bell 429 was a prototype. The TGI agreed, and noted in particular that when this first version was presented in France, it was not yet approved for sale.

But the Cour d’appel took a different view:

Since this was a prototype, only Bell Helicopter Textron can be responsible for the presentation to the public, which they do not deny. They state that the presentation of September 15, 2005 was confidential. But the public was aware of it, since a third party mentioned it. The fact that this website was not updated has no influence on the validity of the offer made at this date, since the prototype was presented on an internet website accessible from France by a company representing Bell Helicopter Textron in France. 

[…]

Offering for sale extends to any material operation aiming at putting a product in contact with potential customers, at preparing a commercial launch, even if said product, which in the present case was not yet approved, could not be marketed. Indeed, this presentation of a competitor’s product in France may turn away part of the competitor’s customers. In fact, this presentation in France was preceded by presentations at the Heli-Expo congress in Houston, USA and at the annual forum of the American Helicopter Society in Montreal, Canada; and it was followed by short-term marketing of the second version apparatus, the approval of this second version having been obtained partly based on tests made on the first version. 

This offer, in these circumstances, is an act of infringement. 

So, even without any sale, and even if no sale is even possible because the product is not yet approved for sale, a presentation of the product to the public in France is an act of infringement if it can be analyzed as part of a preparation for future marketing. This seems to make sense, as it is certainly possible to start attracting customers even before the first product is actually sold.

Bell developed another line of defense based on article L. 613-5 of the Code, which provides a list of exemptions:

The rights conferred by the patent do not extend: 

a) To acts performed in a private context and for non-commercial purposes; 

b) To experimental acts concerning the subject-matter of the patented invention. 

[…]

However, this line of defense was dismissed by the court, since Bell could not prove that any scientific experimentation had been performed. Therefore, the presentation was deemed commercial in nature.

Having dealt with the first version of the Bell 429 helicopter, the court turned to the second version, which appears to have been designed as a workaround of the Airbus patent. The second version was approved for sale in 2009.

The efficacy of the workaround was put to the test in front of the court – and it failed.

The claimed landing gear was in particular characterized by the presence of skids comprising, in the front, a double curvature inclined transition zone, transversely oriented with respect to longitudinal support stretches, and forming an integrated front cross-piece, offset relative to a front delimitation of a plane of contact of the longitudinal support stretches.

Bell’s non-infringement argument was that there was no cross-piece structurally integrated to the landing gear. Instead, there was a cross-piece fixed owing to connecting sleeves. In addition, the gear was longer toward the front, so that there was no offset of the cross-piece relative to the front delimitation of a plane of contact. Finally, the technical advantages offered by the patent were not achieved, as in particular the weight of the landing gear was increased in this second version of Bell 429.

But the court held that there was still a double curvature inclined transition zone in the second version. Although a piece had been added in the front, the claim did not require the cross-piece to be at the front end of the gear, but only required the cross-piece to be offset relative to a front delimitation of the plane of contact, which was still the case. Regarding the structural integration of the cross-piece, the court noted that said cross-piece formed “a functional set” with the skids, so as to transmit mechanical constraints.

According to the court,

This configuration differs from classical landing gears, the cross-pieces of which are fixed with connecting sleeves and do not form a functional set. 

Without having access to the evidence, it is of course difficult to know whether the assessment made by the court is technically correct or not. But what is remarkable anyway is that the fact that the configuration of the infringing device was similar to that of the claimed invention, while at the same time different from conventional devices, appears to have been a key factor.

But the actual test that French courts are supposed to apply relies on a functional analysis, which is why the Cour d’appel also looked at the function of patented features and investigated whether those were (i) reproduced by the Bell 429, second version, and (ii) could be protected per se (irrespective of the claim wording).

According to the patent, deformations are present on the inclined transition zones, that is, as a whole, and not only on the curves. This technical effect is also reproduced on the second version of the landing gear of the Bell 429 apparatus from Bell Helicopter Textron, as indicated by Mr. PPL who states that the deformations are present essentially regularly on the whole transition zone, the zone with the largest level of constraints being where the cross-piece is fixed on the apparatus. 

[…]

The Airbus Helicopters patent covers, contrary to what is stated by Bell Helicopter Textron (namely that the implemented functions were known from the prior art), novel technical functions (front cross-piece with double curvature inclined transition zones, offset, which works in flexion on several planes and in torsion, related to the structure of the apparatus which transmits part of the constraints towards the skids), consisting in addressing the problem of resonance on the ground, by a better adsorption of forces upon landing. 

The documents communicated by Bell Helicopter Textron to demonstrate that the functions performed by the inclined transition zones of the Airbus Helicopters’ patent would be known from prior art landing gears are not relevant as these documents relate to conventional landing gears which do not have an inclined transition zone and work, unlike the invention, in flexion in only one plane, and it was previously stated that this invention is novel and particularly innovative. 

Quite interestingly, the patent proprietor conducted numerical simulations to demonstrate that the second version behaved similarly to the claimed invention in terms of energy adsorption. These numerical simulations were very criticized by the defendant, but the court did find them convincing.

Also, Bell had apparently submitted that the landing gear, second version, behaved similarly to the landing gear, first version, in the approval procedure for the helicopter in Canada.

The overall conclusion was thus the following:

This second version, despite the presence of a connecting sleeve on the first transition zone, and the addition of an element at the front end of the skid, has the same functions for the same result as the invention, and it is irrelevant that this result is not of the same level of sophistication as the invention’s. It should be noted that this modification of the first version was quickly implemented, apparently so as to react to the infringement lawsuit against the Canadian Bell company, a degraded embodiment making it possible to try to conceal the copying. 

In other terms, the second version was found to infringe the patent as well.

For whom the bell tolls.
For whom the bell tolls.

Another noteworthy aspect of the judgment is that statements and evidence from the parallel proceedings in Canada were abundantly referred to, which is not really usual. Very often, judges do take interest in foreign proceedings but they do not directly cite them. However, in this case, they took note of some relevant statements:

Mr. Robert G., manager at Bell Helicopter Textron, who was heard during the Canadian proceedings, acknowledged in front of the court that this modification was determined further to some quick thinking in order to give the second version of the landing gear a behavior identical to the first version. 

So the takeaway message for defendants could well be that a workaround supposed to work in the same way as a claimed invention is at a risk of being found infringing under the doctrine of equivalence. Unless of course the application of this doctrine can be ruled out because the technical functions at stake are already known from the prior art. At the very least, extreme caution is thus required at the time of the design-around.

As for this litigation, this is probably not the end of the story. First, a petition to the Cour de cassation (supreme court) is very likely in a high stake case such as this one. Second, the quantum of damages still needs to be determined. So, unless the parties settle (which is always an option, especially in the context of multinational litigation), we should hear again about Airbus Helicopters and Bell.


CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 2, March 20, 2015, Airbus Helicopters v. Bell Helicopter Textron Inc. et al., RG No. 13/00552.

Hardcore litigation

A few years back, it was a common thought that standard-essential patents (SEPs) are the jewel in the crown of a telecom IP portfolio. SEPs are patents that are mandatory to work for the implementation of an industry standard, such as for instance the GSM (2G), UMTS (3G) or LTE (4G) standards in the telecom industry. Because it is not possible to make and market devices which do not implement the relevant standards, SEPs may seem like the perfect tool for putting pressure on potential licensees because any non-infringement defense is supposed to be made more difficult.

But nowadays, SEPs probably look much less powerful than they used to.

First of all, patent owners have to abide by the rules of standards-setting organizations, which require them to offer licenses on FRAND (Fair, Reasonable And Non Discriminatory) terms. Defendants have questioned whether it is allowable at all to enforce FRAND-encumbered IP rights against third parties, especially when it comes to the mother of all remedies, namely injunctive relief. This FRAND defense has given rise to complex legal discussions (revolving in particular around the issue of what is a willing or unwilling licensee) which have culminated in the CJEU.

But more fundamentally, the overall outcome of the many smartphone patent wars which have been waged in the past few years, both based on SEPs and on non-SEPs, is far from being positive for patent owners – despite a few resounding wins. Therefore, it seems that SEPs did not deliver on their promise of being easier to win on by practically excluding any non-infringement challenge.

Although SEP litigation has been much more abundant in Germany and the U.S. than in France, one case decided on last year confirms this global trend in a spectacular fashion.

Core Wireless Licensing is a monetizing entity holding a portfolio of more than 2,000 patents acquired from prolific patent applicant Nokia. The majority of these patents were declared as essential for the 2G, 3G and/or 4G standards at the ETSI (European Telecomunications Standards Institute). Core negotiated a license on this portfolio with the Korean giant LG Electronics between 2012 and 2014, without success.

In 2014, Core started legal action in France against LG. Core did not request an injunction but requested that the court should award damages for the past as well as force LG into a license and set the level of royalties for the future.

It is not possible in practice to ask a court to look at an entire portfolio of hundreds or thousands of patents. On the other hand, Core did need a finding of infringement in order to get the court to issue the requested order.

Thus, Core selected a group of five SEPs from the portfolio and claimed that these five patents were infringed by LG.

Why five patents and not just one? Well, the rationale may have been that every single patent is at a risk of being found invalid, or not infringed. But the more patents you pile up, the more unlikely it becomes, on a purely statistical standpoint, that they will all be found invalid or not infringed. The defendant needs to fend off all patents in order to win, while the plaintiff only needs one to get through. So, was this indeed a rock-solid strategy?

The answer is no.

The Tribunal de Grande Instance (TGI), defying the odds, held that there was no evidence of infringement of any of the five SEPs, and rejected all of Core’s requests.

I know that it is always much easier to explain why a strategy failed after the facts, but in my view there are two main circumstances which may account for this prima facie surprising outcome.

Contrary to what you could think, telecom litigation is not always kawaii.
Contrary to what you could think, telecom litigation is not always kawaii.

The first circumstance is that Core requested accelerated proceedings. Note that these were proceedings on the merits, and not proceedings for obtaining a provisional order. But the claimant did request and obtain an extremely tight schedule based on the alleged urgency of the case. Practically speaking, the judge immediately set a date for the trial at the onset of the action: the complaint was served on LG on September 30, 2014, and the pleadings hearing took place on January 16, 2015, the latest written submissions of the parties having been filed respectively four days and one day before that date…

This is as much of a rocket docket as you can possibly think of.

The second circumstance is that the case was extremely complex. Both on a legal standpoint, with five patents at stake and thus five separate validity and infringement discussions, plus a FRAND defense, plus an exhaustion defense based on alleged pass-through rights from the electronic chip manufacturer Qualcomm; and on a technical standpoint, because the five patents were rather abstract and difficult to grasp for a non-specialist.

We can easily imagine that the French judges, with no technical education and no technical assistance whatsoever, confronted with probably hundreds of pages of written submissions to digest containing highly sophisticated developments on signal processing, having heard oral explanations for a couple of hours at best, and having dozens of other cases on their desks to review in the same period of time, were faced with an insurmountable task.

This is reflected in the decision itself. If we take the first patent in the list, one issue with respect to infringement related to two steps in a process which appeared to be in a different order in the patent claims and in the technical specification for the UMTS standard which was relied upon by the plaintiff as evidence of infringement. The court held:

However, as rightly put by the defendants, contending that the operations of data propagation and power modification can be performed in any order in the 3GPP TS 25.213 V.11.4.0 specification is a statement that is not confirmed or justified by any evidence. 

More generally, any claimant has the burden of proving its case. It is indisputable that Core have limited themselves, in order to show that the 786 patent is essential, to filing an analysis drafted by an expert that they have hired and selected, without proceeding in a meticulous, precise and understandable way with demonstrating that the reduction in power described by the patent is necessarily reproduced by all cell phones implementing the 3GPP TS 25.213 V.11.4.0 and 3GPP TS 25.302 V10.0.0 specifications. It should be added that infringement by equivalence requires another demonstration, namely that other means can be used to implement the same patentable result, which is not present either.   

The court’s findings on the other four patents were similar: each time, the court stated that the defendants’ non-infringement defense had not been clearly proven wrong by the claimant.

The bottom line is that demonstrating that an SEP is infringed is not a piece of cake – since a declaration at the relevant standards-setting organization that the patent is or may be essential cannot be taken for granted, as the organization does not check whether this is indeed the case. So, any declaration of essentiality notwithstanding, the burden of proof remains on the patent proprietor to demonstrate infringement, and the TGI’s decision reminds us that it is a heavy one.

Indeed, the wording and technical explanations used in a patent are usually very different from the wording and technical explanations used in a standard specification. Again, unless you are a specialist in signal processing, it can prove difficult to get your bearings.

So, is there any solution at all for telecom patent owners – except waiting for the advent of the UPC, which will likely have more resources and be better equipped for handling complex litigation of this kind, notably owing to the presence of technical judges?

Well, there may be one. Article L. 615-20 of the Code de la propriété intellectuelle provides that the court may

either ex officio or upon request of a party, appoint any consultant for following the proceedings from the case management, and be present at the hearing. The consultant can be authorized to ask questions to their parties or their representatives. 

Judges without any technical background can thus get assistance from a technically skilled consultant in order to make a better-informed decision on a case.

This option has seldom been used by courts and litigants. Does it add a layer of procedural complexity to a case? Yes. Is the outcome of the case highly dependent on the consultant’s skills, not only on the technical standpoint, but also in terms of understanding the patent law issues which are really at stake for the court? Certainly. So, isn’t this a solution which is far from ideal? I would agree, but it could also be the only acceptable one in this particular context.

To finish on the Core case, the court rejected all claims and counterclaims. The invalidity counterclaims were not examined as they were submitted in an auxiliary manner. The court also held that there was no need for setting a FRAND royalty rate in the absence of demonstration of the essential character of the patents; and that there was no need to force Core to file the Nokia / Qualcomm license agreement, again in view of the essentiality finding. Furthermore, the court rejected LG’s counterclaim for damages based on Core’s alleged bad faith in the negotiations, as well as LG’s counterclaims for abuse of dominant position and for abuse of procedure.

The court’s position on the negotiations between the parties is actually noteworthy:

[…] the negotiations between the parties lasted for more than two years, which tends to show that neither of them behaved with enough bad faith to prompt the other one to stop this phase. 

Besides, the parties blame each other so that the court, which does not know everything about these negotiations, is not in a position to state that bad faith is more on one side than the other. 

Again, the message is clear: each party should prove its case, and allegations will not suffice.


CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 2ème section, April 17, 2015, Core Wireless Licensing Sàrl v. LG Electronics France & LG Electronics Inc., RG No. 14/14124.

Sufficiently suitable

My good friend Lionel Vial’s brand new website is up and running! And in order to celebrate, Lionel kindly sent me another contribution on the appraisal of sufficiency of disclosure of functional claims. He writes:

In our previous post regarding the sufficiency of disclosure requirement applied to therapeutic purpose-limited product claims when there is a doubt that the therapeutic effect is attained, Renaud wondered if the bar had been raised.

Well, the decision discussed today might be just another hint that there is indeed a trend towards a wider application of the requirement of achievement of the claimed technical effect by the Boards of appeal of the EPO in regard of sufficiency of disclosure.

Decision T 528/11 was rendered on November 19, 2015 on an appeal formed by the opponent (appellant) against the decision of the opposition division to uphold European patent No. EP 1427808.

Claim 1 of the main request filed during the appeal proceedings read:

An isolated bacterial strain of the genus Lactobacillus characterized by that it is selected from the group consisting of the strain of Lactobacillus casei subsp rhamnosus, LN 113, deposited under number LMG P-20562, and the strain of Lactobacillus fermentum, LN 99, deposited under number LMG P-20561, and having the ability to colonise and become established in a human vagina, displaying a disturbed vaginal flora of microorganisms, upon vaginal administration, even during menstrual discharge, wherein said bacterial strain or strains is/are considered established if the bacterial strain or strains is/are still present in the vagina after at least two menstrual cycles from the time of administration, said strains were deposited at Belgian Coordinated Collections of Microorganisms on 14 June 2001 (emphasis added).

Among other arguments, the appellant submitted that although the deposit of strains LN 99 and LN 113 ensured their availability, this did not guarantee that they fulfilled the functional feature required by claim 1 (underlined above). None of the examples of the patent showed that the deposited strains indeed had this feature, which was necessary in order to meet the requirements of Article 83 EPC. The in vivo assay, required to reliably determine whether the strains had the alleged feature, was not described in the prior art. Post-published document D13 could not be used to prove sufficiency of disclosure. The functional feature that strains LN 99 and LN 113 were required to exhibit was not reproducible. Thus, according to decision G 1/03 (OJ EPO 2004, page 413), there was a lack of sufficiency of disclosure (see point XI of the Summary of Facts and Submissions).

If the Board did not share the same appreciation of the facts and arrived at the conclusion that the claimed invention was sufficiently disclosed (see points 10-14 of the Reasons), it nevertheless followed the appellant’s view as to the application of the requirement of sufficiency of disclosure to the feature at stake:

According to decision G 1/03 (supra), “(i)f an effect is expressed in a claim [and is not achieved by the claimed subject-matter; added by the board], there is lack of sufficient disclosure. Otherwise, i.e. if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step” (cf. G 1/03, supra, point 2.5.2 of the Reasons).

In line therewith, the claimed strains LN 99 and LN 113 must have the functional feature cited in claim 1. Otherwise, there is lack of sufficient disclosure (point 9 of the Reasons).

This famous obiter dictum of the Enlarged Board of Appeal is an enlightening reminder of the principles underlying the interplay between insufficiency of disclosure (as in decision T 609/02) and lack of inventive step (as in decision T 939/92) when there is a doubt that an effect is achieved.

Attaining the technical effect - always vital!
Attaining the technical effect – always vital!

However, in our opinion the present decision marks an evolution in the application of this sufficiency of disclosure principle to product claims.

Indeed, following decision T 609/02, this principle was mainly applied to a particular subset of product claims, the therapeutic purpose-limited product claims (“Product X for use in the treatment of Y”), i.e. so-called medical use claims, which are in fact hybrid between product and use claims. For these claims, attaining the claimed therapeutic effect is a functional technical feature of the claim.

In the present case, what the board refers to as a functional feature (underlined above) is generally considered to merely define a suitable use of the claimed bacterial strain, as can be construed from the tell-tale expression “having the ability to”. In fact, it is clear, e.g. from the Guidelines for Examination in the EPO (F-IV, 4.13) that such features are usually not considered as true functional features like those of medical use claims:

Similarly, a claim to a substance or composition for a particular use should be construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty. However, if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty. An exception to this general principle of interpretation is where the claim is to a known substance or composition for use in a surgical, therapeutic or diagnostic method (see G‑II, 4.2).

In contrast to an apparatus or product claim, in case of a method claim commencing with such words as: “Method for remelting galvanic layers” the part “for remelting …” should not be understood as meaning that the process is merely suitable for remelting galvanic layers, but rather as a functional feature concerning the remelting of galvanic layers and, hence, defining one of the method steps of the claimed method (see T 848/93).

Accordingly, the Board’s finding extends the scope of application of this sufficiency of disclosure requirement for product claims outside the field of medical use claims to which it was confined. Should this decision be followed, the requirement of achievement of the recited technical effect could thus expand to just about any technical field provided the product claim considered recites that a feature is suitable for attaining an effect.

Given the feeble gain in terms of patentability offered by “suitable for” features, in contrast to non-functional features, their usefulness could in the future very well be outweighed by the risk they impart to the claims containing them. Accordingly, drafters should be cautious when incorporating them in a claim. As for opponents, well, it is a promising new field to explore.

Lionel, I do hope you are right. It would probably be a good idea for the EPO to look more closely at the sufficiency of disclosure of functionally-drafted claims – in all fields of technology.

I personally tend to think that “suitable for“-type functional features can be powerful weapons in the hands of patent owners. In practice, it can be quite difficult for an opponent to demonstrate with absolute certainty that a prior art product is “suitable for” a certain purpose not explicitly stated in the prior art disclosure. The patent proprietor simply needs to cast enough doubts on the nature of the prior art product (based on the necessary incompleteness of the disclosure), which is easier than having to positively demonstrate something. And once novelty is acknowledged, inventive step generally follows since the problem-and-solution approach requires some explicit motivation in the prior art, which will often be missing assuming that the claimed purpose is not explicitly recited.

As all Spider-Man fans know very well,

With great power comes great responsibility.

Therefore, it is certainly appropriate for the Boards of Appeal to very carefully check whether there is sufficient information in the patent (and not merely in post-published evidence) for carrying out the claimed functional feature – or any unclaimed technical effect relied upon for arguing inventive step, for that matter. Otherwise, it is simply too easy for deep-pocketed firms to preempt future technological developments by skillfully drafting and then prematurely filing many patent applications directed to potential future inventions that have not yet been actually carried out. I have come across a significant number of such “paper” patents in the past few years, and they may be a symptom that it is indeed time to raise the bar for real.


CASE REFERENCE: Board of Appeal 3.3.08, T 528/11SCA Hygiene Products AB v. Ellen Aktienbolag, November 19, 2015.

Getting a handle on limitation

Last week’s post was about a famous chemical case which found its way up to the Cour de cassation twice, due to a tricky limitation issue combined with a tricky SPC issue.

Today, I would like to reassure readers versed in the mechanical arts. Yes, they too are entitled to get some fun with fancy limitation questions.

The case at hand relates to French patent No. FR 2843372 (FR’372), which is concerned with a sales display pack for door or window handles. The patent proprietor Société de Fonderie du Centre (SOFOC) has apparently had a complicated relationship with DIY store chain Bricorama over the past twenty years. A recent episode of their hectic partnership is an infringement lawsuit brought by SOFOC against Bricorama based on FR’372.

Interestingly, the legal action was started only one month after a limitation of the patent was granted by the INPI (French patent office).

Bricorama counterclaimed for invalidity – why would they not – and my focus will be on their argument that some of the patent claims were invalid due to extension of the scope of protection after grant, further to the alleged “limitation” of the patent. Speaking EPO language, this would be an “Art.123(3) objection“.

The patent as granted comprised a main claim and seven dependent claims. Claim 1 read as follows:

Sales display pack for door or window handles comprising a finger-plate and a lever-handle, characterized in that it is composed firstly of cardboard folded on itself in two flaps, a presentation flap and a back flap, and secondly means of attachment of the said handle(s) to be presented on said cardboard fitting into cut-outs formed in said cardboard, the said cardboard comprising two fixing cut-outs formed facing each other on the two flaps, at least four cut-outs for attachment of the handle(s) to the said display pack, said cut-outs being formed facing each other in pairs in the two flaps and at least one cut-out formed on the presentation flap, in which a transparent compartment is placed for containing assembly accessories for the presented handle(s).

After the limitation, claim 1 was worded as follows (the highlighted expressions corresponding to added features):

Sales display pack for door or window handles comprising a finger-plate and a lever-handle, characterized in that it is composed firstly of cardboard folded on itself in two flaps, a presentation flap and a back flap, and secondly means of attachment of two handles to be presented on said cardboard fitting into cut-outs formed in said cardboard, so that the finger-plates rest against the presentation flap, said cardboard comprising two fixing cut-outs formed facing each other on the two flaps, at least four cut-outs for attachment of the two handles to the said display pack, said cut-outs being formed facing each other in pairs in the two flaps and at least one cut-out formed on the presentation flap, in which a transparent compartment is placed for containing assembly accessories for the presented handles.

It was not challenged that amended claim 1 was more restricted than claim 1 as granted.

The issue was that, together with the amendment of claim 1, the patent proprietor had also filed five brand new claims 9 to 13 which, they said, were merely dependent claims.

New claim 9 was worded as follows (the highlighted portions being in my view the most important ones):

A set of two door or window handles attached to a sales display pack, each handle comprising a finger-plate and a lever-handle, characterized in that the sales display pack is composed of cardboard folded on itself in two flaps, a presentation flap and a back flap, and secondly means of attachment of the two handles fitting into cut-outs formed in said cardboard, the finger-plates resting against the presentation flap, said cardboard comprising two fixing cut-outs formed facing each other on the two flaps, at least four cut-outs for attachment of the two handles to said display pack, said cut-outs being formed facing each other in pairs in the two flaps and at least one cut-out formed on the presentation flap, in which a transparent compartment is placed for containing assembly accessories for the presented handles, the sales display pack being according to one of claims 1 to 8.

The following new claims 10 to 13 were also directed to a set of handles attached to a sales display pack, making reference to claim 9. For the defendant, claim 9 was an independent claim, and not a mere dependent claim as advocated by the plaintiff. They also argued that claims 9 to 13 extended the scope of protection of the patent and were thus invalid.

Fancy handles are best displayed in their natural environment.
Fancy handles are best displayed in their natural environment.

The Tribunal de grande instance (TGI) ruled in the defendant’s favor:

It is true that claim 9 repeats the wording of claim 1 regarding the definition of the sales display pack, but it is directed to “a set of two door or window handles characterized in that the handles are attached to a sales display pack”. Now, claim 1 only relates to the sales display pack which supports the handles, and not to the set composed of these distinct elements. The scope of protection under Article L. 612-6 of the Code de la propriété intellectuelle, restricted to the sales display pack in claim 1, is extended in claim 9 to a different product made of the combination of the handles and previously characterized sales display pack. Claim 9 adds relative to the features of claim 1 and concerns a distinct subject-matter, whereas claims 10 to 13, which are mere embodiments of claim 9, depend on it. 

With this assessment of the nature of claim 9, it comes as no surprise that the TGI found that there had been an extension of the scope of protection:

[…] Article L. 613-24 of the Code de la propriété intellectuelle mentions limitation only as far as claims are modified. Per se, the addition of 5 dependent claims cannot be analyzed as a modification of preexisting claims. In fact, [SOFOC] does not contend that going from 8 to 13 claims would be the result of a mere redrafting of the initial claims 1 to 8, which remain unchanged – with the exception of the definition of the number of handles supported by the sales display pack. 

Moreover, it is now acknowledged that claim 9 does not simply repeat the features of claims 1 to 8 but includes a set made of the sales display pack and two handles in the scope of protection conferred by the patent. Even if it is clear that the description relates to a sales display pack intended for supporting door or window handles, it does absolutely not institute the combination of the two elements of the invention, and by the way the sole drawing of the patent does not show the handles. The latter are only mentioned in the description in order to understand the purpose of the sales display pack, which is the sole subject-matter of the invention. Also, the modification of claim 1 was sufficient to limit the protection to a sales display pack intended for supporting two door or window handles, without any need for the addition of 5 new claims. Thus, independent claim 9 and dependent claims 10 to 13 involve a broadening of the scope of protection conferred by the patent, which in fact would have had a significant impact on a possible damages computation, to a new object not comprised in the description and in the features of initial claims 1 to 8. They are therefore invalid.

In summary, the amendment was objectionable on two grounds.

First, limitation proceedings are not meant to add claims, but rather to modify and more precisely restrict existing claims. This seems to be in keeping with the Guidelines for examination in the EPO (section D-X, 4.3):

Likewise, adding dependent claims in limitation is not permissible if not directly caused by the limitation introduced in the claims.

In the present case, the addition of the supplemental claims seems to have been uncorrelated to the modification of claim 1 and thus unjustified.

The second ground retained by the judges is that new claim 9 and its dependent claims covered a different object from the one covered in the patent as granted. This is probably a more controversial point. For one thing, the TGI analyzed claim 9 as an independent claim, even though it explicitly refers to claims 1 to 8 and includes all the limitations of these preceding claims. This appraisal may not be fully consistent with the definition of independent and dependent claims provided in section F-IV, 3.4 of the Guidelines for examination in the EPO.

But, more importantly, the combination of a sales display pack and two handles, recited in claim 9, was considered as a different object (an aliud) in comparison with the sales display pack as such recited in claims 1 to 8. This approach is comparable to that adopted by the INPI in the Syngenta case discussed last week: the INPI considered that adding a second active substance to a claim directed to a fungicide composition comprising a first active substance resulted in a shift of the scope of protection towards a different object. As explained in the post, the Cour de cassation finally rejected the objection in Syngenta. But did they fully weigh all relevant factors? One cannot really tell based on the brief and cryptic reasons for the decision.

There are, to my mind, valuable reasons for making a distinction between (A) further restricting some features of a claimed object; and (B) adding a supplemental object in a claim. If case (A) undoubtedly corresponds to a real limitation, case (B) is not so simple, as it may in some instances pave the way for a new contributory infringement complaint, or for an increase in the amount of damages, as rightly noted by the court in the above citation – in addition to also making it theoretically possible to extend the duration of protection in the pharmaceutical or phytosanitary field, by way of an SPC application, as discussed last week.

A somewhat more indirect parallel can also be made with the Nespresso judgment discussed in a previous post. The TGI had objected to the presence of a claim directed to a device for the extraction of a capsule, plus the capsule itself, in combination, while the application as filed focused on the device without presenting the capsule as part of the invention. In this case, the nullity ground was extension of subject-matter beyond the contents of the application as filed, and not extension of the scope of protection after grant. But the underlying idea is similar.

A common feature of NespressoSyngenta and Bricorama is that the patent proprietor tried to change the focus of the invention after the filing date in order to gain a particular legal advantage. In all three cases, the judges thwarted the patentees’ strategy:

  • In Nespresso, the combination claim was introduced at a late stage during examination proceedings (after the issuance of the communication on the intent to grant by the EPO) presumably specifically in order to make it possible to sue capsule manufacturers. The combination claim was viewed by the French judges as improperly adding matter.
  • In Syngenta, a dependent claim was limited after grant in the hope of making it compliant with the Medeva standards, as a basis for a combo SPC application. The Cour de cassation validated the limitation but the SPC application was rejected all the same, and the rejection was confirmed by the Cour d’appel.
  • In Bricorama, new claims were added by way of limitation proceedings a few weeks before launching an infringement action, potentially modifying the quantum of damages. Those claims were revoked.

Could it be that courts are not that keen on too smart patentees?

As a final note, SOFOC did not have such a bad time in court after all. Having revoked claims 9 to 13, the court also revoked claims 1 to 4 (for lack of inventive step) but then held that dependent claims 5 to 8 were valid and infringed. This certainly made the judgment much easier for SOFOC to ahem… handle.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 1ère section, May 21, 2015, Société de Fonderie du Centre SA v. Bricorama France SAS & Bricorama SA, RG No. 2014/02007.