Patentee schussing down

Are you getting tired of automotive equipment technology and anti-hypercholesterolemic drugs?

This would be understandable. Cheer up, as today I give you a seasonal alternative, with this ruling which involves a patent directed to a “method of securing, monitoring and management of the ski area of wintersportplaces“.

As if this technical field weren’t unconventional enough, the ruling is also unusual in that it was issued by the Lyon Cour d’appel.

The Paris courts have had exclusive jurisdiction over patent matters for a number of years now, so it is increasingly infrequent to come across a judgment issued in another forum. Who knows, this could actually be the very last one.

Mr. Costa, who lives in the Rhône département, owns European patent No. EP 1048789, filed in 2000 and which claims a French priority. The patent was licensed to a local company, Construction Moulage Fabrication Polyester (CMFP).

The patent was granted in 2003. Shortly thereafter, the patentee and the licensee initiated infringement proceedings against Perception and Guidance Embedded Systems (now Perguisys), Kässbohrer Engins au Service de l’Environnement as well as SA Aménagement Touristique de l’Alpe d’Huez et des Grandes Rousses. Already from the name of the third defendant, it can be inferred that the alleged infringement takes place in the Alps area.

As this was 15 years ago, the complaint was filed with the Lyon Tribunal de grande instance (TGI), which had jurisdiction at that time.

Two oppositions were filed at the EPO, one by Sabatier SA and a joint one by the defendants Perguisys and Kässbohrer. This led the Lyon TGI to stay proceedings pending the outcome of the opposition. Hence the extraordinary length of the proceedings.

The oppositions were rejected by the opposition division in 2006 and the rejection of the oppositions was confirmed by the Board of appeal in 2009. Only then were the infringement proceedings resumed. But it took 6 more years for the Lyon TGI to issue its judgment, in 2015. This is amazingly long but (1) we don’t know all the details, and it is possible that all parties did their best to delay the proceedings; and (2) now that patent litigation is centralized in Paris, my understanding is that there are no longer cases that drag on forever to this extent – except when the Cour de cassation successively sets aside appeal judgments four times, like in the Nergeco case discussed last week.

In the first instance judgment, the infringement claim was dismissed, and so was the defendants’ nullity counterclaim. The plaintiffs appealed, which now brings us to the appeal judgment.

Here is claim 1 of the patent at stake, again, not a conventional one, as you will see:

Method for protecting, following up maintenance and managing the field intended for skiing in a winter sports resort using mobile protection, control and maintenance means equipped with means for marking the position and guiding vehicles from a satellite network or from fixed markers, using fixed devices which need to be controlled and maintained, using a digitized cartography, as well as radio or remote transmission cables for transmitting digital data between at least one computer situated in a central station and computer terminals situated in intervention services or on mobile means fully or partially associated with automatic or manual coding means, characterized in that the computer system situated in the central station is able to divide the site of the winter sports resort into homogeneous zones with respect to at least one criterion from a series of coherent criteria zones stored in said computer system connected by remote transmission means to the mobile means and the intervention services so that when a mobile element is positioned in an homogeneous zone of the skiing field, the computer system of the central station is able to immediately be aware of the criteria applied to this homogeneous zone so as to deduce from this task orders, observations or action to be taken by the central unit and/or by the mobile element and/or by the intervention or maintenance services.

Peter Rabbit managing the ski area.

The validity discussion is extremely short in the decision.

Apparently, the defendants raised the same arguments of lack of novelty and lack of inventive step that they had already raised in first instance. The appeal judges thus simply stated that they agreed with the first instance judges and had nothing to add.

The infringement discussion is more interesting. The plaintiffs alleged that there was infringement by equivalence.

According to the court, the patented method comprises numerically mapping a ski resort site in the form of points according to coordinates, and then storing the information in a computer of a central station so as to provide a virtual grid in the form of planar polygones (cf. the claimed “digitized cartography“).

Fixed and mobile devices are deployed in the ski area and supply positional information to the central station using transmission means.

Still according to the court, the alleged infringement does not make use of virtual mapping and of a central station. Thus, the court held:

[…] Even though the [allegedly infringing] system uses GPS technical means, it does not achieve the sophistication of the patented system, in that it does not make it possible to provide a division of the area into homogeneous zones in real time on the screen, based on predefined and modifiable criteria.  Contrary to what the appelants state, this sophistication […] prevents infringement by equivalence from being acknowledged, as the Snow Sat system is of a lesser quality and lesser efficiency. 

Okay. This is kind of frustrating as it is very far from being a clear and complete infringement reasoning. But again, you probably cannot expect too much from a court that may not have seen any other patent case in a number of years.

But there is possibly one interesting take-away message though.

The established standard for assessing infringement by equivalence under French law is the following: two means are equivalent when, although they are of a different form, they perform a same function for a result of a same nature, if not of the same degree.

Lyon’s position is that, since the defendants’ method is not as efficient as the patented one, it does not infringe.

This is clearly confirmed by the court’s following statement:

[…] A means is not equivalent when its different implementation leads to a result of a same nature but of a different quality or efficiency. 

This is not a common aspect of equivalence discussions. But it is not unheard of. In fact, in a previous post, I reported on a similar analysis by the Paris Cour d’appel.

Thus, if anything, today’s judgment confirms that assessing infringement by equivalence is tricky. You cannot just look at the function of the means at stake – and at whether the function was known from the prior art. You also have to look at how effective the means is and what the quality of the end result is.


CASE REFERENCE: Cour d’appel de Lyon, 1ère chambre civile A, September 20, 2018, Antoine Costa et al. v. Perguisys et al. (RG No. 2015/06635).

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