Prior art to no purpose

French courts and the Boards of appeal of the EPO are supposed to apply the same validity rules to European patents. But in fact a patentee’s chances to withstand a validity challenge differ between Paris and Munich depending on the nature of this challenge. So much so that one could go as far as saying that, depending on which strongest arguments a third party may have against a patent, either an opposition at the EPO or a nullity action before the Paris Tribunal de Grande Instance (TGI) would be a better option.

Some previous posts have illustrated that French courts tend to have an extremely restrictive, and actually rather surprising, approach concerning patentability of therapeutic inventions or computer programs (see e.g. here or here).

One recent decision illustrates another interesting discrepancy, with a patent found novel but insufficiently disclosed in France, whereas it could very well have been held sufficiently disclosed but lacking novelty by a Board of appeal – although this assumption will never be tested, since no opposition was filed.

I will address the novelty aspect in the present post and the sufficiency aspect in a next post.

The patent at stake is European patent No. EP 1490005, assigned to The General Hospital Corporation (hereafter General Hospital). General Hospital, together with its exclusive licensee Zeltiq Aesthetics Inc., sued a small business named Clinipro for infringement of the patent, both in Spain and in France. It seems that the patent was held invalid in Spain (although a preliminary injunction had been obtained first). Unfortunately, the French judgment does not explain on which grounds the patent was found invalid by the Spanish judges (it would have been interesting to be able to make a comparison with the French approach).

In first instance, the Paris TGI held that the patent was valid and infringed. At that time, only lack of novelty and lack of inventive step had been raised as an invalidity defense by Clinipro. On appeal, Clinipro added an insufficiency challenge, which carried the day.

By the way, this is yet another difference, a procedural one, with respect to EPO proceedings, since an opponent would not be allowed to introduce a new ground for opposition at the appeal stage – unless the patentee agrees to it, said the Enlarged Board of Appeal with a deadpan sense of humor.

Claim 1 of the patent reads as follows:

A device for selectively disrupting lipid rich cells in a non-infant human subject by cooling, comprising:

– cooling means for cooling a local region of the subject’s skin to selectively disrupt lipid rich cells of the region, while, concurrently therewith, maintaining the subject’s skin at a temperature whereby non-lipid rich cells are not disrupted, wherein the cooling means are adapted to cool the lipid rich cells to a temperature between about -10°C and about 25 °C, 

– a temperature control unit for controlling the temperature of the cooling means, and temperature measuring means which are adapted to measure the temperature of the subject’s skin and/or the temperature in the subject’s skin and/or the temperature on the surface of the subject’s skin; characterized in that 

– the temperature control unit is further adapted to control the temperature of the cooling means such that the temperature of the subjects skin and/or the temperature in the subject’s skin and/or the temperature on the surface of the subject’s skin does not fall below a predetermined minimum temperature on the basis of the temperature of the subjects skin and/or the temperature in the subject’s skin and/or the temperature on the surface of the subject’s skin.  

Let’s now examine the novelty attacks against this claim, which failed.

The novelty standard applied in France, which is invariably cited in each decision including this one, is that

[…] in order to be comprised in the state of the art and thus lack novelty, the invention must be entirely found in a single piece of prior art in all certainty, with the same elements which make it up, in the same form, the same arrangement and the same mode of operation in order to achieve the same technical result

The last part of the sentence is very noteworthy: a prior art disclosure will take away novelty of a claim if and only if, not just the structure of the invention is taught in the prior art disclosure, but also the function and technical result of said invention.

This is particularly significant in a case such as the present one which deals with a claim directed to a “device for” – here, “a device for selectively disrupting lipid rich cells in a non-infant human“.

The court not only fully relied on this feature in the novelty analysis, but in fact also took into account the general purpose stated in the patent, which is to reduce orange-peel skin by destroying subcutaneous fat tissue without damaging the dermis or the epidermis.

Thus, when analyzing a first prior art reference called Thorner, the court stated that:

[…] The invention thus disclosed by this patent application is only intended for treating diseased or injured animal tissues, for instance inflamed limbs, by cooling the limb to a temperature of between 13 and 18°C or skin cancer by cooling the limb to temperatures below zero. 

[…] This prior art therefore does not disclose a set composed of the same means having the same function and leading to the same result as the patent at stake, namely selectively cooling lipid-rich cells in a non-infant human subject so as to break those up and reduce the excess of fatty cells without causing damage to other tissues. 

Turning to another prior art reference called SI Industries, the court used a similar reasoning:

[…] The invention thus disclosed by this patent application is only intended for cooling (or warming up) a limb in a controlled manner below the normal temperature of the body in a medical treatment, in order to eliminate the excess of fluid stored in muscular compartments further to a wound so as to avoid the occurrence of the compartment syndrome related to excessive pressure on nerves and blood vessels. 

[…] Similarly, this prior art does not disclose a set composed of the same means having the same function and leading to the same result as the patent at stake. 

Fat and cold are not always incompatible.
Fat and cold are not always incompatible.

This approach is very different from the EPO’s, which is well summarized in section F-IV, 4.13 of the Guidelines for examination:

If a claim commences with such words as: “Apparatus for carrying out the process etc…” this must be construed as meaning merely apparatus suitable for carrying out the process. Apparatus which otherwise possesses all of the features specified in the claims but which would be unsuitable for the stated purpose or would require modification to enable it to be so used, should normally not be considered as anticipating the claim.

Therefore, if a Board of appeal had examined novelty of claim 1 of this patent, it would certainly have focused on whether the prior art devices were suitable, i.e. could potentially be used, for the claimed purpose, and not on whether the claimed purpose was disclosed per se in the prior art.

The Paris approach is thus much more lenient with patent proprietors than the Munich one.

I am not sure which one is the best one, but I can see two advantages with the French way of handling novelty.

First, it may provide increased legal certainty, as it may be easier to assess whether the function and result of a claimed device are disclosed in the prior art than to figure out whether a prior art device could potentially be used in the same way as the claimed invention. I think this latter question leaves more room for interpretation and discussion: is the new use simply a matter of changing the settings of the prior art device, or would structural redesign be necessary as well?

Second, especially in the medical device field, it makes it possible to more adequately reward innovation, taking into account the prohibition of therapeutic or surgical use claims. If we take the present case, a new method of disrupting lipid-rich cells might not be patentable, since it is probably considered as being of a therapeutic and/or surgical nature. However, it may make sense to grant a patent on an apparatus specifically designed to implement this new method, if there is an actual (novel and inventive) invention involved.

The real paradox however is that, in those situations where the EPO does fully take into account a claimed purpose in a novelty analysis, as is the case with second medical use claims, French courts tend to be reluctant to do the same. I am thinking in particular of dosage regimen features, which tend to be ignored by French courts if they are not considered as relating to a “different technical teaching” (see e.g. here).

Anyway, if General Hospital benefited from a liberal stance of the Cour d’appel in the first part of the judgment, alas the bad surprise for them came in the second part, which I will deal with in a next post.


CASE REFERENCE: Cour d’appel de Paris, Pole 5, chambre 1, January 12, 2016, Patrick M. & Clinipro v. The General Hospital Corporation & Zeltiq Aesthetics Inc., RG No. 13/13050

One to rule them all (UPC breaking news)

A lot has already been written about the referendum in the UK scheduled on June 23, 2016 regarding a possible break-up with the European Union – nicknamed “Brexit. Many in the European patent profession have expressed concerns about the impact that a Brexit could have on the Unified Patent Court (UPC). One issue in particular is that Article 7(2) of the Agreement on a Unified Patent Court (A-UPC) specifies that “the central division shall have its seat in Paris, with sections in London and Munich”: should the UK no longer be part of the system, maintaining one third of the central division of the court in London would seem to be out of the question.

I am glad to report, thanks to a well-informed source at the European Commission, that a solution to this tricky problem has fortunately just been found. In fact, it seems that a special taskforce involving representatives from all participating states was secretly set up a few months ago in order to propose a protocol amending the A-UPC in case of a Brexit.

The initial draft, proposed by a Scottish member of the European Parliament (MEP), planned to simply move the London section of the central division to Edinburgh. However, it was rejected after the MEP was kindly reminded by his peers in the taskforce that Scotland was still part of the UK (in the absence of a Scoxit), so that the proposed move was in fact impractical.

Finally, after more than 2,000 hours of uninterrupted negotiations and 56 circulated drafts, it seems that a groundbreaking compromise has been reached, which effectively means that the UPC will be saved, irrespective of the outcome of the referendum.

Thus, the paramount aim of simplifying patent litigation in Europe without offending the sensitivity of any member state will not be jeopardized.

The proposed protocol (which will still need to be signed and ratified by member states) seeks to amend Article 7(2) as follows:

The central division shall have its seat in Paris, with sections in Munich, Luxembourg and The Hague. The section in Luxembourg shall have secondary offices in Monaco, Geneva, Jersey and Guernsey. The section in Munich shall have secondary offices at Erhardtstrasse, Bayerstrasse and Grasserstrasse. The section in The Hague shall have nine rotating offices which shall be allocated every three years to the nine cities of the Member States in which the highest amount of fish per inhabitant was consumed during the fourth month preceding the date of allocation.

A case brought before the central division shall be distributed to the office from the above list in which the last name of the presiding judge is alphabetically closest to the fifth word of the main claim of the European patent in suit. If this cannot be easily determined, the case shall be distributed to any office in Germany. 

As a spokesperson for the taskforce, probably exhausted after so many days at the negotiating table, told my anonymous source:

Three sections for the legally qualified judges under the Agreement,

Seven secondary offices for the technically qualified judges in their halls of justice,

Nine rotating offices for defendants doomed to litigate,

One seat for the President on his or her throne,

One seat to rule them all, one seat to find them,

One seat to bring them all and to EU law bind them.

I don’t know what readers think, but this sounds like a rather ominous statement to me…

The UBC board game
The UBC board game

Hidden in plain sight

Sometimes, an object is best hidden in plain sight. Like the diamond in the crystal chandelier of Alfred Hitchcock’s classic motion picture Family Plot.

The same can be true of Easter eggs, which many readers may have hunted over the weekend – successfully, I hope.

And the same can be true of a teaching in a prior art document, based on a recent decision which left a number of us wondering whether Board of Appeal 3.3.10 may have discarded or at least amended a long-standing novelty test endorsed by the Enlarged Board of Appeal.

A well hidden technical disclosure in an Easter egg
A well hidden technical disclosure in an Easter egg

Lionel Vial reports on that case.

The decision we will discuss today relates to the difficult question of knowing under which conditions the chemical composition of a product is made available to the public.

Decision T 719/12 was rendered on October 29, 2015 on an appeal formed by the proprietor (appellant) of European patent No. 1539673 against the decision of the opposition division to revoke the patent. The decision of the opposition division was based on the lack of novelty of the subject-matter of claims 9 and 10 in view of the disclosure of document (1) (Blicke et al. (1942) J. Am. Chem. Soc. 64:451 to 454).

Claims 9 and 10 respectively claimed the compounds of formulae II and VI:

F2

wherein R1 can be a thienyl (i.e. the cycle shown in formula VI), R2 can be a C1-8 alkyl (i.e. a -CnH2n+1 group where 1 ≤ n ≤ 8) and R4 is methyl (-CH3), ethyl (-CH2CH3), isobutyl (-CH2CH(CH3)2) or tert-butyl (-C(CH3)3).

Document (1) identified the compound methyl-2-(α-thenoyl)-ethylamine by its chemical name. For those not versed in the chemical arts, here is what it looks like:

methyl-2-(α-thenoyl)-ethylamine
methyl-2-(α-thenoyl)-ethylamine

It can readily be seen that this compound falls within formulae II and VI of the opposed patent.

Indeed, this fact was contested by neither of the parties as is noted by the Board in point 2 of the reasons for the decision and the question was rather whether methyl-2-(α-thenoyl)-ethylamine had been made available to the public.

There the Board recalled that:

It is the established jurisprudence of the Boards of Appeal that the subject-matter described in a document can only be regarded as having been made available to the public, and therefore as comprised in the state of the art pursuant to Article 54(1) EPC, if the information given therein is sufficient to enable the skilled person, at the relevant date of the the [sic] document, to practise the technical teaching which is the subject of the document, taking into account also the general knowledge at the time in the field to be expected of him (see T 206/83, OJ EPO 1987, 5) (point 2.2. of the Reasons).

However, even though document (1) aimed at synthesizing methyl-2-(α-thenoyl)-ethylamine through a Mannich reaction or the steam distillation of the corresponding tertiary amine, the authors of the document could neither isolate it nor obtain it when the reactions were actually carried out, in spite of the use of conditions which were considered favorable for its formation. The Board thus went on to consider that document (1) alone did not make the compound methyl-2-(α-thenoyl)-ethylamine available to the public, since the specific attempts to prepare it, which are described in said document, failed (see point 2.2 of the Reasons).

The opponent (Respondent) replied by arguing that document (1) did nonetheless make the compound methyl-2-(α-thenoyl)-ethylamine available to the public, since on repeating the preparation of the tertiary amine methyl[di-2-(α-thenoyl)-ethyl]amine 5 of document (1) in experimental report V1 it submitted, the compound methyl-2-(α-thenoyl)-ethylamine was indeed produced (but went unnoticed by the authors of document (1)).

This did not convince the Board:

[…] the Board holds that in view of the categorical statement in document (1) that despite attempts to synthesise it, the secondary amine could be neither isolated nor obtained, the skilled person, at the date of publication of document (1), would not have seriously contemplated repeating its teaching in order to undertake further investigations as to whether the secondary amine was formed after all. Thus, regardless of whether the report V1 repeats the method of document (1) exactly, the Appellant contesting this fact (see point IV above), the skilled person had no motivation to perform the steps in the experimental report V1 which are not disclosed in document (1), namely of analysing the product mixture obtained or of recrystallising from the mother liquor (point 2.3 of the Reasons, emphasis added).

Hence, even if methyl-2-(α-thenoyl)-ethylamine were inevitably produced by a method described in document (1), since its presence remained undetected by the skilled person, it had not been made available to the public (point 2.3 of the Reasons, emphasis added).

Well so long for the astute novelty attack, but doesn’t that ring a bell? G 1/92 of course:

The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed and reproduced by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition (emphasis added).

Except that the Board appeared to favor an opposite view to that of the Enlarged board of appeal. Unfortunately, the Board did not discuss the particulars of this case with respect to G 1/92, leaving us in uncertainty as to the interpretation of this decision: is it to be understood as going against G 1/92 or can it be reconciled with it?

Let’s try to see by ourselves.

A reminder of the case behind G 1/92 might be useful at this stage.

G 1/92 followed from a question referred to the Enlarged board of appeal by the President of the EPO pursuant to Article 112(1)(b) EPC which arose as consequence of decision T 93/89. It was held in this latter decision that if the composition of a commercially available product (e.g. aqueous polyvinyl ester dispersion) can be established only by a chemical analysis, the ingredients of the product (e.g. polyvinyl acetate, native starch, polyvinyl alcohol) have not been made available to the public unless there was a reason for experts to investigate it (see Headnote and point 8.2 of the Reasons).

The case at hand thus differs from the case at the origin of G 1/92 in that the product is not “directly” available to the public since it has to be manufactured before it can submitted to a chemical analysis (as opposed to a commercially available product). As such, decision T 719/12 could be interpreted as meaning that when a product is not commonly available to the public and needs to be manufactured to become so, then it would become relevant that one of skill in the art should have a special motivation to perform the manufacture and the analysis of the product.

However, this point of view is not totally satisfying as this would amount to making a distinction between the different means by which any information is made available to the public under Article 54(1) EPC, i.e. public use vs. written description, which is something G 1/92 specifically warned against (see point 1.2 of the Reasons).

Accordingly, even though the Board in decision T 719/12 does not explicitly take position against G 1/92, one might wonder whether after more than 23 years of good service the latter has not been silently euthanized.

Thank you Lionel. It is indeed somewhat strange to read about the absence of motivation for the skilled person in the context of a novelty analysis.

Of course, the facts of the case were very specific, with on the one hand a prior art document explicitly stating that a compound is not obtained, and on the other hand a recreation of the prior art by the opponent showing that the compound is indeed obtained.

Such recreations are always heavily criticized by the patent proprietor, as there are inevitably some details missing in the prior art disclosure, which need to be completed by the experimenter – and this case is no exception (see section IV of the Summary of Facts and Submissions).

With that in mind it does not really come as a surprise that the Board preferred to rely on the explicit statement in the prior art document rather than on a posterior, disputed, demonstration. But the reasons put forward by the Board do come as a surprise.


CASE REFERENCE: Board of Appeal 3.3.10, T 719/12, Lonza AG v. Merck Patent GmbH, October 29, 2015.

A fishy appeal?

It is not an easy task to report on case law from the EPO Boards of Appeal, as there are so many commentators in the blogosphere (and elsewhere) poised to jump on any fresh decision that being original is tricky, unless you do high frequency posting. Nevertheless, I am wondering whether decisions drafted in French might as a general rule fly a little bit more under the radar, since French is certainly the official language of the EPO which is the least spoken by the European patent profession.

With that in mind, here is a report on one of these low flying decisions, which I find noteworthy for two reasons. The first reason is that the main claim of the patent in suit was directed to a container containing precooked tuna fish, which opens up an ocean of possible aquatic puns for this blogger. And the second reason is that the decision deals with an interesting point of law regarding the burden of proof in appeal proceedings.

The patent owned by Brittany-based Etablissements Paul Paulet had been revoked by an opposition division due to insufficiency of disclosure.

Claim 1 as granted was the following:

A rigid container containing foodstuff, the container comprising a receptacle and a cover and being made of a material selected from aluminum, steel, glass, or a plastics material that is oxygen-proof, the foodstuff being constituted by pre-cooked fish that is in solid form, eventually comprising an additive, a preservative, or a small amount of water or oil, characterized in that

– the closed container presents substantially no liquid after sterilization, such that the liquid content is less than 10% of the total weight of the content, and

– the container contains only the foodstuff and a gas, wherein the volume content of dioxygen in the gas is less than 15%, the gas being nitrogen.

Both features of the characterizing part of the claim were viewed by the opposition division as raising implementation issues.

If we focus on the liquid content feature, the opposition division noted that the patent taught to place the precooked fish into the container, add liquid nitrogen which will be turned into gaseous nitrogen, then close the container and sterilize the product. Based on various statements made by the patent proprietor during the opposition proceedings and information contained in the patent itself, as well as in an experimental report referenced as T4 (filed – unfortunately – by the patent proprietor), it could be concluded that, during the sterilization step, the liquid content in the container can change, and in particular can increase or decrease. Many factors may influence this change in the liquid content, including the type of fish, the precooking procedure, the shape of the fish, the additives and the conditions of sterilization. The opposition division deemed that the patent did not teach how to control these various parameters.

A container for fish hopefully containing more than 10% of liquid
A container for fish hopefully containing more than 10% of liquid

With its statement of grounds of appeal, the patent proprietor filed a modified version of claim 1 as a main request (corresponding to one of the auxiliary requests discussed in first instance). In this modified version of claim 1, the material of the container was somewhat restricted, and the nature of the fish was further specified to be “pre-cooked tuna fish in solid form“.

With the summons to oral proceedings, the Board expressed the preliminary opinion that there was an issue of sufficiency of disclosure with the liquid content feature, although it did not share the view of the opposition division regarding the other feature of the nitrogen / oxygen content.

One month before the oral proceedings, the patent proprietor submitted a new document T18, which was an experimental report focusing on the processing of tuna fish. The admissibility of document T18 at this late stage of the proceedings was debated in front of the Board, in view of R. 13(3) of the Rules of Procedure of the Boards of Appeal.

The patent proprietor’s argument was that:

  • the first instance decision relied on experimental report T4, in which experiments were conducted on billfish product;
  • the main claim was now restricted to tuna fish, so that the first instance decision was no longer applicable;
  • the Board raised a new objection in the preliminary opinion by stating that even with precooked tuna fish the variations in liquid content were unpredictable;
  • therefore the patent proprietor had reacted in a timely manner by filing the new experimental report T18 focusing on tuna fish.

The Board rejected the argument by analyzing the first instance decision, which mentioned a number of ill-controlled parameters influencing the liquid content and not just the type of fish; and by noting that the main request in the appeal was the third auxiliary request in first instance and had thus also been rejected by the opposition division.

The most interesting part of the discussion relates to whether the admission of T18 into the proceedings would violate the opponents / respondents’ right to be heard – in view of the lateness of the filing. The appellant said no, because the respondents had failed to provided detailed justifications and evidence in their response to the statement of grounds of appeal; on the other hand, the appellant did not have to file additional evidence with its statement of grounds of appeal since:

the burden of proof of insufficiency of disclosure lies exclusively with the opponents, in all circumstances. This also applies on appeal further to a decision revoking the patent for insufficiency of disclosure, notably when the grounds of the decision at stake no longer adversely affect the appellant due to a modification of the claimed subject-matter (reasons, 1.4.1).

The Board rejected the argument in view of the very nature of the appeal proceedings.

The respondents brought forward elements during the opposition proceedings which were apparently sufficiently credible as to the impossibility to carry out the invention in a systematic and reproducible manner by relying on the information contained in the patent; moreover, this information would be too limited and contradictory. This led the opposition division to hand down the decision at stake, which was duly reasoned. This decision not only brings an end to the opposition proceedings, but also as a consequence assigns different roles to the parties for the appeal stage. Once the patent has been revoked, it is up to the patent proprietor as the appellant to take a more active part and present, firstly, a detailed argumentation in its statement of grounds of appeal, even if by filing a new set of claims the grounds for the challenged decision seem to be overcome. The appellant cannot simply wait for the respondents to demonstrate the invalidity of the patent.

The patent proprietor, as the appellant, must therefore act against the challenged decision, that is, must, in the present case, demonstrate that common general knowledge does make it possible to carry out the invention based on the patent. This demonstration must be complete and not selective, without waiting for the Board or the parties to invite it to develop it more. In this respect, the appeal proceedings are not a continuation of the opposition proceedings but a new procedure instituted by the appellant. Therefore, the principles which initially governed the opposition proceedings are no longer necessarily applicable at the appeal stage, and those stated in the Rules of Procedure of the Boards of Appeal replace them, notably the duty to provide the complete means in view of which the decision cannot be maintained. A patent proprietor who thinks that they can discard the basis for the challenged decision owing to grounds of appeal limited to only one aspect of said decision runs the risk of later being in a situation where the filing of additional grounds or evidence during the appeal proceedings may be considered late under articles 13(1) and/or 13(3) RPBA (reasons 1.4.2).

I think it is fair to say that the burden of proof of insufficiency of disclosure on the opponents is a very heavy one in opposition proceedings.

However, according to the present decision, the onus shifts on appeal, if the patent is revoked by the opposition division. More generally, it can be derived from the Board’s comments that the first instance decision is presumed valid until the contrary is proven – although I am not sure that this has often been stated in this way in the case law.

On the merits, the Board reached a similar conclusion as the opposition division regarding the unpredictability of the liquid content in the container after sterilization, and therefore dismissed the appeal.

The parties will have the opportunity to continue the discussion and fish for further arguments on the liquid content feature, since there are opposition proceedings pending in connection with the divisional patent, and since the same feature is present in the independent claims. My guess is it will be an uphill battle for the patent proprietor but at least they can hope to be able to rely on the additional evidence that the Board has refused to take into account in this case.


CASE REFERENCE: Board of Appeal 3.2.07, T 30/15, Etablissements Paul Paulet v. Princes Limited & Bolton Alimentari S.P.A, January 20, 2016.

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.