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…
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.
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:
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:
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.
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.
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.
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.
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.
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, whichappears 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.
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.