The third and last one of the series of posts on how French courts seem to have gotten stricter on extension of subject-matter is dedicated to a dispute between two French truck manufacturers, Chéreau and Frappa. The former sued the latter for infringement of two European patents concerning buffers mounted at the rear end of the vehicle chassis.
Once again, both patents (one of which had gone through and survived opposition proceedings at the EPO) were revoked by the Paris TGI for extension of subject-matter.
Of these two revocations, one was based on a relatively typical reasoning of intermediate generalization: some features were taken from the description and imported into claim 1, and the court decided that it was not allowable to isolate these features from the others with which it was originally disclosed in combination.
The other revocation is more remarkable. The file wrapper of the patent can be found here. Claim 1 as filed related to a vehicle chassis comprising, inter alia, a thrust element. Claim 2 as filed specified that the thrust element was a thrust arm with roughly longitudinal mobility relative to the chassis. In claim 1 as granted, the thrust element was restricted to a thrust arm with longitudinal mobility relative to the chassis. In case you have not noticed, the term “roughly” disappeared in the process, and this turned out to bring about the demise of the patent.
At first sight, the amendment may look like pretty innocuous. In fact, examiners often protest against the presence of vague adverbs such as “roughly”, “approximately” and the like in patent claims, and they regularly request that the applicant should get rid of them before grant. This is hardly ever seen as an issue at all from the added matter standpoint.
So, in the present case, if there was support in the original disclosure for “roughly” longitudinal mobility, why wasn’t there any support for longitudinal mobility as such? In order to understand this, one needs to have a closer look at the application as filed, which contained only one detailed embodiment of the displacement of the thrust arm.
According to this embodiment, the thrust arm rotates around an axis by a few degrees, and this is said to be tantamount to a longitudinal displacement. This comment is quite understandable because, if you zoom in on a portion of a circle, it looks pretty much like a straight line (if my math memories are correct, this is what they call a first order approximation).
In the light of the description, the term “roughly longitudinal” in original claim 2 was therefore interpreted by the court as actually referring to a pivotal movement. By deleting the adverb “roughly”, this was changed to a truly longitudinal movement, but such change was not properly supported by the application as filed.
Quoting from the judgment:
“By omitting the adverb ‘roughly’, Chéreau can argue that claim 1 covers any longitudinal displacement and no longer only a rotation displacement of the thrust arms.
Departing from the roughly longitudinal displacement corresponding to a rotation of a few degrees mentioned in the description, claim 1 covers the longitudinal mobility of the thrust arms by the deletion of the adverb ‘roughly’”.
So, paradoxically, by specifying that the displacement is longitudinal and not just “roughly longitudinal“, the applicant had shifted the scope of protection to claim an aliud. The innocuous-looking amendment was therefore not so innocuous after all.
Now, having reporting on this third recent example of added matter ruling, I would certainly be interested in knowing what readers think about this general approach which to me is very reminiscent of EPO practice. Is such harmonization to be welcome? Or are French judges being more Catholic than the pope?
CASE REFERENCE: Tribunal de Grande Instance de Paris, 3ème chambre, 4ème section, SAS Jean Chéreau v. SAS Frappa, November 6, 2014, RG No. 12/10879.