Unraveling contributory infringement

As a change from GMOs and mathematical methods, today’s patent is about a toilet paper dispenser. Rest assured that I heroically resisted the urge to come up with an introductory pun closely related to the invention at stake – lest this blog be rated by readers as not classy enough.

That said, a relatively simple technical field does not necessarily entail a straightforward ruling. In fact, today’s decision addresses the complex issue of contributory infringement heads on.

SCA Tissue France was originally a subsidiary of the US group Georgia Pacific, a world leader in cellulose-based products. Think Lotus toilet paper. This business has now been acquired by the Swedish group SCA. Tissue France owns European patent No. EP 1799083, on a toilet paper dispenser, and markets the so-called SmartOne dispenser, together with matching toilet paper.

In March 2011, Tissue France started infringement proceedings based on the EP’083 patent against Sipinco and Global Hygiène. An opposition was filed against the patent in parallel. The patent was upheld as granted both by the opposition division and by the board of appeal.

In parallel, the Paris Tribunal de grande instance revoked the French part of EP’083 for insufficiency of disclosure, in March 2013 and therefore rejected Tissue France’s infringement claim.

However, on appeal, the first instance judgment was set aside and the patent was acknowledged as valid.

Tissue France had raised two infringement claims:

  • The defendants had committed direct infringement by putting on the market a toilet paper dispenser as well as toilet paper within the scope of EP’083.
  • The defendants had also committed contributory infringement by marketing toilet paper intended to be used with the patented SmartOne dispensers.

The appeal judges sided with the patentee on the first count but rejected the claim based on the second count. See the ruling dated November 25, 2014.

The patent proprietor did not give up on the contributory infringement count and filed an appeal on points of law. We can imagine that whether contributory infringement is established or not may have a significant impact on the computation of damages.

They did well, as the Cour de cassation has now vacated the appeal judgment and remitted the case back to the Cour d’appel, ordering them to examine again the question of contributory infringement.

In order to understand this whole discussion, it is certainly useful to have a look at the main claim of the patent:

Paper dispenser, comprising a housing in which a roll of a paper strip is housed, which comprises precuts transverse to the strip and defining rectangular paper sheets, of which the width is transverse and the length is longitudinal, the housing comprising a dispensing orifice through which the paper strip is unwound, the width of a sheet being between 125 mm and 180 mm and the ratio of the width of a sheet to its length being between 0.45 and 1, preferably between 0.5 and 0.65, characterized in that the said paper is a toilet paper and the said dispenser comprises a nozzle with the said dispensing orifice, the said nozzle and the said roll of paper being designed so that the paper sheets are unwound one at a time and emerge with less crumpling at the outlet of the nozzle, the paper being consumed in an optimum and pleasant manner.

In other terms, the claimed subject-matter is a paper dispenser which comprises a number of features (notably a housing and a nozzle) as well as a roll of paper strip in the housing.

When in the men / women’s room, always watch out for the bear.

Now, here is the relevant legal provision which defines contributory infringement under French law, namely article L.613-4 Code de la propriété intellectuelle, first paragraph:

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. 

The supreme court judges found that the Cour d’appel erred in three different respects.

First, the original appeal judgment held the following:

[…] Regarding the existence of acts of indirect, contributory infringement […], according to Tissue France […] itself, its invention lies in a new combination between, on the one hand, a specific toilet paper, and on the other hand, the use of a nozzle for dispensing sheets associated with a specific precut paper strop, in order to achieve a dispensing of sheets one at a time, with less crumpling at the outlet of the nozzle […].

[…] Therefore this is a combination invention which lies in the association of means (toilet paper and nozzle) which cooperate, notably due to their particular arrangement as described in the patent, for a common result (dispensing of the sheets one at a time, with little crumpling). Only the arrangement of the means which cooperate together for a common result is protected by the patent. 

[…] In such a case, the means in relation with an essential element of the patented invention under article L. 613-4 cannot only consist in one of the combined means, just because this means (here, the paper roll) is part of the constitution of the invention and contributes to the result that it provides. 

The Cour de cassation disagreed and held that this was a breach of article L. 613-4, because:

[…] contributory infringement of an invention consisting in a combination of means can result from the supply of a means relating to an essential element thereof […] even if it is a constitutive element thereof. 

By the way, don’t look for more detailed explanations in the ruling. There are none. It is the unfortunate tradition of cassation judgments that they have to be drafted as concisely and cryptically as possible. Basically, the cassation judges just cite relevant parts of the appeal judgment and state: “this is wrong“. Period. Sometimes, the statement of cassation appeal which is annexed to the decision provides useful additional information. But not so much in this case.

That said, I think what can be taken from this part of the ruling is that article L. 613-4 should apply in a similar manner to combination inventions and non-combinations inventions. No distinction between these two types of inventions is made in the statute.

As far as I understand, combination inventions are those where the contribution of the invention to the art lies in special features present in two different means which cooperate together. Here, the toilet paper is specially adapted to the dispenser, and the dispenser is specially adapted to the toilet paper.

To my mind, this clarification by the Cour de cassation is rather well in line with previous case law on this matter.

For instance, in at least two distinct cases related to an invention associating a dispenser with plastic bags, it was held that the supply of plastic bags was an act of contributory infringement: see Publi Embal v. Coprima and Simahee v. MultyPack. In another case where the invention related to the association of special fixing means on a digger with a special bucket intended to be placed on the fixing means, the supply of buckets was also viewed as an act of contributory infringement: see Morin v. Magsi.

The important point for contributory infringement to be established always seems to be that the means which is supplied should play an important role in how the invention works.

In contrast, if the invention lies entirely elsewhere than in the supplied means, there should be no contributory infringement. See Calor v. Filtech for an example of a demineralizing cartridge for an iron.

The second passage of the appeal judgment that the Cour de cassation did not like was the following:

[…] Besides, there can be no contributory infringement when the means which are supplied are, as in the present case, consumables which are to be integrated to the patented device, which exists independently of the consumables.  

The Cour de cassation noted that

it does not matter whether the means may consist in consumables, if they have an essential character. 

Again, it seems that the Cour d’appel imposed another criterion which is simply not present in the statute. No distinction is made depending on the nature of the supplied means. The only important thing is whether the supplied means relate to an essential element of the invention or not.

In fact, what the appeal judges probably had in mind is the second paragraph of article L. 613-4:

The provisions of [the first paragraph] are not applicable when the means for implementing [the invention] are products which are commonly on the market, unless the third party incites the person to whom the supply is made to commit the acts prohibited by article L. 613-3 [i.e. acts of direct infringement]. 

This is a special provision for products which are “commonly on the market“. But those are not the same as “consumables“. It is easy to picture consumables which have very peculiar features and are thus not really commonly on the market. Conversely, products commonly on the market certainly encompass other products than consumables (screws and nails, for instance).

So, the test applied by the Cour d’appel as to the nature of the supplied means was not the right one.

Last, the Cour d’appel had held that:

[…] no document from Sipinco mentioned that its toilet paper rolls were compatible with the dispensers marketed by Tissue France […]. 

Here is the Cour de cassation comment on this, which is slightly more detailed this time:

[…] By making this determination, whereas Tissue France argued in its appeal submissions that, due to its specific dimensions, the paper at stake did not correspond to toilet papers commonly on the market, the Cour d’appel, that did not investigate whether this was correct, and in this case whether this should be taken into consideration to examine whether Sipinco and Global Hygiene knew, or circumstances made it obvious, that these rolls were adapted and intended for implementing the invention, the Cour d’appel did not provide a legal basis for its decision.

Now, the issue is that the Cour d’appel did not find evidence that there was any incitation to customers for them to use the toilet paper at stake with the patented dispensers, which is the test under paragraph 2 of article L. 613-4.

But, before making that determination, it should have been checked whether the toilet paper was a product commonly on the market or not.

If not, then paragraph 2 should not come into play. And in this respect, the patentee’s argument was that the dimensions of the toilet paper were so specific that it could not be considered as a product commonly on the market, so that only paragraph 1 should apply. While the Cour de cassation did not formally endorse the patentee’s argument and just requested that it should be further considered by the Cour d’appel on remand, it certainly looks like they thought that it had merit.

If this is correct, then it means that a relatively cheap and commonplace product such as toilet paper is not a product “commonly on the market” if it has some specific features which make it original relative to other, similar products. 

In summary, this Tissue France decision will probably be important for future cases involving so-called combination inventions, as well as cases where a defense related to “products commonly on the market” is raised.

And now the Cour d’appel will have to dispense another judgment in this litigation.


CASE REFERENCE: Cour de cassation, ch. com., June 8, 2017, Tissue France v. Sipinco & Global Hygiène, pourvoi No. 15-29.378.

3 thoughts on “Unraveling contributory infringement”

  1. For your information, SCA Tissue France is not a subsidiary of of the US group Georgia Pacific. It is a subsidiary of the Swedish group SCA.

    1. Thank you for pointing this out to me. The decision of Nov. 25, 2014 mentioned that the company belonged to the Georgia Pacific group without specifying that Georgia-Pacific´s European tissue business has acquired by the Swedish group SCA. The post has been corrected accordingly.

Leave a Reply

Your email address will not be published.