Should you do it?

In the case reported on today, two of the plaintiffs, namely one Korean company and its French subsidiary, are called I Do It. This a great name, which immediately suggested a title to me but also a guideline for this post: today’s question is indeed, if they do it, should you do it too?

European patent No. EP 1930982, relating to a “Horn array antenna for dual linear polarization“, was granted in 2010 to two individuals, Mr. Joon Im and Mr. Wan Ryu. In December, 2015, the patent was assigned to their company, I Do It (the Korean one).

Before the assignment, in October 2013, the French I Do It company commissioned a bailiff’s report in an exhibition. In June 2015, both the French and Korean companies filed a patent infringement lawsuit against Alden, a company based in Alsace, in front of the Paris Tribunal de grande instance (TGI).

The first interesting issue in the decision issued by the TGI relates to the admissibility of the infringement complaint. When the complaint was filed, in June 2015, I Do It did not yet hold any rights on the patent at stake.

The assignment was only executed in December 2015, and published at the French patent register in February 2016. What is more, the 2015 assignment did not contain any provision authorizing the assignee to sue for infringement acts performed before the assignment.

I assume that this point was raised by Alden during the written proceedings, which led the original patent owners and I Do It to execute an addendum to the assignment in February 2017, granting I Do It the missing authorization to sue for past infringement acts.

In view of article 126 of the Code de procédure civile, the court held that the complaint was admissible, since this legal provision makes it possible for an initially inadmissible complaint to be regularized up to the day the judgment is issued.

So, should yo do it too? Well I would certainly advise against initiating patent infringement proceedings on behalf of a company not holding any current or past right on the relevant IP. But, for once, French law appears to be quite flexible and little demanding in this respect.

For those who like to do it themselves: here is a patent application directed to an item comprising a piece of coal and an instruction manual. I quote: the benefit to the purchaser is the fun in reading the manual, and imagining that they can turn the coal into a diamond like one of the pictured ideas presented in the manual.

Second interesting issue, the bailiff’s report of October 2013. The important point here is that we are talking about a standard bailiff’s report, and not about a seizure (saisie-contrefaçon), which is the usual measure taken at the onset of patent litigation in this country.

The French company I Do It filed a request in front of the Bobigny Tribunal de commerce and obtained an order from this court authorizing a bailiff to go to an exhibition, verify whether an allegedly infringing antenna was presented by Alden there, inquire about the pricing and origin of the product, etc. The order was granted and the report drawn up by the bailiff accordingly.

The legal basis for the request and order was article 145 of the Code de procédure civile, which is a very general provision per which “if there is a legitimate reason, prior to any litigation, for preserving or establishing the evidence of facts on which the outcome of litigation could depend, legally admissible measures of taking evidence may be ordered upon request of any interested party, ex parte or in urgency proceedings“.

Alden argued that the inspection of the exhibition by the bailiff was in fact a saisie-contrefaçon and should thus have been requested under the special provisions of article L. 615-5 of the Code de la propriété intellectuelle. They thus requested the cancellation of the bailiff’s report.

The court held that “the mission [of the bailiff] did not comprise any measure relating to a saisie-contrefaçon, and besides the bailiff did not accomplish any investigations exceeding the scope of a report“. Therefore, the 2013 bailiff’s report was not canceled.

I must say that I am quite surprised by this part of the decision. Going to an exhibition, checking whether an allegedly infringing product is present, inquiring about the price and origin of the product… These are very typical steps taken during a saisie-contrefaçon.

Had the judges seen things this way, then it seems highly doubtful that they would have found that resorting to a bailiff’s report under the general provision of article 145 is a possible alternative to a true saisie-contrefaçon.

The reason why the appropriate legal basis for the investigation at the exhibition is so important is that the special rules of the saisie-contrefaçon are very different from the general rules of an article 145 measure. To name a few examples:

  • If I Do It had gone for a saisie-contrefaçon, they would have needed to place their request with a specialized IP judge in the Paris TGI, instead of a suburban court fully inexperienced in patent matters.
  • A request for saisie-contrefaçon would certainly have been denied by the specialized IP judge based on the facts at hand, as I Do It apparently did not hold any rights to the patent back in 2013.
  • Assuming that a saisie-contrefaçon had been performed, I Do It would then have had approximately 1 month to file a patent infringement lawsuit, or else the seizure (including the bailiff’s report) would have been automatically void. In contrast, by resorting to an article 145 investigation, I Do It was able to wait for almost 2 years before filing suit.

In summary, although the saisie-contrefaçon is often viewed as a powerful tool for patent rights holders to collect evidence, it also offers a number of guarantees to the defendant, which are not all necessarily present in an article 145 investigation.

So, should you do it too, i.e. should you consider an article 145 investigation as a creative alternative to the usual saisie-contrefaçon when faced with suspected patent infringement?

Well, this option is certainly worth considering. But I would certainly recommend extreme caution, as today’s decision is somewhat surprising and does not necessarily set a strong precedent.

Third and last interesting point: the assessment of infringement. Here, again, the case was unusual.

The plaintiffs’ argument was that Alden bought antennas from an Austrian distributor of I Do It’s products, made minor modifications and then marketed the antennas under their brand name. “Therefore“, I Do It argued, Alden’s antennas exactly corresponded to the product protected by EP’982; and exhaustion of rights did not apply as the products marketed by the defendant no longer exactly corresponded to those put on the market with the consent of I Do It.

Unsurprisingly, the TGI dismissed the infringement claim, as there was no demonstration of the implementation of the claimed subject-matter by the allegedly infringing antennas.

It is certainly not sufficient for a patent proprietor to assert that its own products are covered by a patent. Even this assertion, assuming it is relevant in a particular case, needs to be precisely demonstrated, claimed feature by claimed feature.

So here the conclusion is pretty clear: no you should not do it, i.e. you should never consider as a patent owner that you can do without a thorough, detailed, technical demonstration that the products at stake fall within the scope of a patent.

Before, concluding this post, I would like to say a few words about an exciting upcoming conference regarding the French statute of limitations for nullity actions in IP law.

Frequent readers of this blog know of course that this is a very hot topic these days.

The date is March 15, 2018, the time is 1:30 pm to 6 pm, and the venue is Paris, Assemblée nationale – no less. Here is a link to the program of the conference as well as the necessary information for signing up.

Should you do it, i.e. attend this event? Yes indeed, and as I will unfortunately be unable to be present, I would be most grateful if any attendee could provide us with the highlights of this afternoon.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, November 10, 2017, Seung Joon Im, SARL I Do It & I Do It Company Ltd v. SAS Alden, RG No. 15/10320.

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