Would a “could” suffice?

Comparing EPO and French case law on validity is one of this blog’s favorite topics.

Today’s post will be dedicated to a cornerstone of the EPO doctrine: the could/would approach in the inventive step reasoning.

The could/would approach was actually nicely summarized by the Paris Cour d’appel in a Sandoz v. Eli Lilly decision (January 13, 2012), making explicit reference to the European case law book that all European patent attorneys have on one of their shelves:

As can be derived from established case law of the Boards of appeal of the EPO, the question is not whether the skilled person could have made the invention by modifying the state of the art, but whether he would have done so in the hope of achieving the advantages that were really obtained in the light of the technical problem at stake, because the state of the art contained suggestions in this respect. 

So far so good, and all supporters of pan-European harmonization must be satisfied.

Not so fast, though, as some recent decisions seem to show that the could/would approach is not as inscribed in the DNA of French IP courts as it is in the EPO’s DNA. Here is an example. 

Modelabs Mobiles is a French company which distributes mobile phones and other IT devices. Modelabs Mobiles filed a French patent application No. FR 3063299 on February 24, 2017, directed to a casing for locking and immobilizing a phone.

Just after the publication of the application, Modelabs Mobiles proceeded with an infringement seizure against its competitor Wiko, on October 23, 2018, and soon thereafter filed an infringement suit, based on the FR’299 application (yes, this is possible before the grant of the patent under French law).

The patent was granted on April 12, 2019. On June 7, 2019, Modelabs filed a claim for preliminary injunction with the judge in charge of case management, and further requested a provisional damages award of more than 2 million euros. Modelabs argued that the existence of infringement acts was likely, and that since the defendant was in a restructuring process, there was a risk that damages could not be recovered.

The judge in charge of case management ruled on September 13, looking first at whether the patent was apparently valid.

Here is claim 1 of the patent:

Casing, in particular intended to contain a telephone, comprising:

– a first shell and a second shell that close onto one another so as to close the casing by rendering its contents inaccessible,

– a slide that is movable in translation on the first shell, comprising at least one coupling member, and which can be actuated from outside the closed casing so as to be positioned by translation in a first, a second or a third positions, wherein the first shell, the second shell and the coupling member(s) are arranged so that, when the casing is closed:

– at least one coupling member is coupled to the second shell when the slide is in the first position, thus opposing the opening of the casing,

– at least one coupling member is coupled to the second shell when the slide is in the second position, thus opposing the opening of the casing,

– the coupling member(s) is/are free when the slide is in the third position, thus allowing the opening of the casing, the casing further comprising:

– a device for locking the slide on one of the shells in the first position, actuable only by means of a dedicated tool from the outside of the casing when this casing is closed,

– first means for reversible immobilization of the slider in the second position,

– second means for reversible immobilization of the slider in the third position.

In summary, this casing can be used for protecting a phone in a store. The casing has three configurations: one which is fully locked, and which requires a tool (e.g. a magnetic one) to be unlocked; one which is unlocked and closed; and one which is unlocked and open. The transitioning between the unlocked / closed and unlocked / open positions can be performed without using an external tool.

Locked – unlocked

Wiko relied on three prior art documents against the novelty and inventive step of the main claim. The judge found that the claim was novel.

Regarding in particular the so-called EP’090 prior art reference, the judge held:

[…] The “movable member” which can correspond to the “slide” of the invention of the patent can be positioned in two different positions, and not three. In order to ensure an anti-theft function, a safety device must be added, comprising an “inserted” external element whereas, in the casing claimed by Modelabs, the safety device is fully part of said casing even if it requires the use of an external tool to be deactivated. 

A similar conclusion was reached regarding the two other prior art references.

However, regarding inventive step, the judge made the following comments:

In view of the state of the art […], the skilled person already knew casings for products on sale, having an integrated locking system, which can be actuated by a dedicated external tool such as a magnetic tool, preventing access to the content of the casing in the absence of said tool without breaking the packaging itself. 

Admittedly, the casing at stake, relative to [this prior art], provides an intermediate position in addition to the mere locked/unlocked alternative. but this mode of using the casing (simply closed in a reversible manner) does not address the technical problem that the invention purported to solve, which was to make the content of the casing safer. 

Besides, it can be legitimately questioned whether the skilled person requires a particular inventive step in adding an intermediate position between the locked/unlocked positions for the coupling member supported by the slide […], in order to keep the casing closed in a reversible manner (thus that can be manually actuated, without a dedicated tool), in view of the state of the art. Indeed, the addition of such an intermediate position prima facie seems to rather logically derive from [the prior art]. 

Therefore, the prior art submitted as a defense provides a serious possible ground for nullity [of the patent]. 

As you can see, the judge does not seem to reason in terms of what the skilled person would have done, but rather in terms of what he or she could have done.

Indeed, although there does not seem to be any suggestion or motivation in the prior art to have this intermediate closed/unlocked position for the slide, as far as I can tell from the judgment, the judge nevertheless concluded that it would have been “logical” for the skilled person to include such an additional position.

By way of comparison, here is the position taken by the EPO examiner in charge of the search report for the French application (based on different, but presumably similar prior art):

Such a casing with three positions for the slide and “reversible immobilization means” […] is completely unknown in the state of the art. Hints pointing to this direction are also absent. 

So, what can we make of this? One interpretation of course is that the inventive step threshold is higher in France than at the EPO. This is of course very possible. Another interpretation is that the judge had questions or doubts and simply did not want to grant a preliminary injunction and preferred to let the case continue on the merits.

That said, my attention was also drawn by the following statement:

Modelabs did not provide any argumentation regarding the inventive step of its patent which differs from the novelty argumentation. 

As always, we should keep in mind that, in view of our rules of civil procedure, and based on a longstanding tradition, French judges limit the scope of their decisions to the arguments put forward by the parties. Therefore, in the absence of any reference in the patentee’s submissions to the could/would approach, it is unsurprising that the judge did not use this reasoning.

Thus, I could say (or make that rather: I would say), that argumentation in French patent litigation has to be complete, including explanations on the legal standards to be applied – or else… 

As a next step, if the case continues on the merits, we will see whether the three-judge panel of the court uses the same or a different approach.


CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 3ème section, ordonnance du juge de la mise en état, September 13, 2019, SAS Modelabs Mobiles v. SAS Wiko, RG No. 18/13517.

3 thoughts on “Would a “could” suffice?”

  1. Beside the discussion about the could/would as used by French courts, I have great sympathy with the position taken by the judge.

    It is clear that the intermediate position of the slide does not help whatsoever to solve the problem of making the content of the casing safer. having a position in which the content of the casing is not safe whatsoever is may be nice in a commercial way, but this is not a technical problem.

    As the means used are not solving the problem underlying the invention at stake, there cannot be any inventive step. Here EP case law is very clear in this respect.

    I would thus not say that the discussion should be about the could/wood, but about how to draft an application which makes the problem underlying the invention also solving the problem of easy presentation of an item normally stored in a sealed container.

    That the EP examiner has had a positive view is not really significant as we all know the pressure under which examiners are presently working is very high. Any way to get a file from one’s desk is thus welcome. I am not blaming the examiner, but rather the management of the EPO who has increased the pressure to unreasonable levels.

    That is probably not something which was on your mind when writing your blog.

  2. In reply to attentive observer, I just would like to point out that the problem top be solved is not necessarily the one expressed in the application itself. Here, I would not advise to just say that the intermediate position does not help to increase safety, so that there is no inventive step.
    I just notice that the claim recited technical features to provide the intermediate position, the latter might give increased ease of use ( intermediate-not locked position when in pocket, first-locked position when on a desk…). increased ease of use, or additional scenario of use might be technical. Then, if there is no provision of the intermediate position in the prior art, the problem, and its solution is inventive.
    I also take opportunity to tell to the readers that the EP guidelines have changed, and that the inventive step has been rewritten. In particular, the closest prior art document can be any document, provided the Inventive Step is successful… We will have more difficulties to convince the Examiners that the closest prior art document is not the one they chose…

  3. Following the comment of “Not too fast, please”, I had a deeper look at the matter.

    When one reads the claim, there are two positions in which the box is locked, P1 and P2, in which either one of a locking device (41, 42) locks either the first half of the box to the second half of the box or vice versa, whereas in a third position P3 neither of the locking devices is in a position to lock the halves together, whereby the box is thus unlocked, and can stay like this indefinitely.

    Simplified, one could say in a first configuration that P3 is a middle position and P1 is a left hand side position with respect of P3 and P2 is a right hand side position with respect of P3. In other words the P3 is a middle position in which the box is unlocked. The locking mechanism can then be said as being symmetrical, and the open position is the middle position.

    On the other hand, in a second configuration, the three positions could be aligned, and starting from the open position P3, one first movement brings in the first locking position P1 (locking of a first half of the box with the other one), and the second position with a further translation brings in the second locking position P2 (locking the second half of the box with the first one). In such a situation the difference there is only a translation from the open position starting from the open position, whereby there are two locking positions.

    Not having seen any drawing or any description, it is educated guess work, and I might be totally wrong.

    It would also be interesting to know in which IPC classes the application has been classified and in which the search has taken place.

    If all the documents cited provide only two positions (locked/unlocked) to be reached by a translation, than I would agree that the provision of a symmetrical locking mechanism in which the middle position is an open position could possibly be inventive. I would then agree with “Not too fast, please”.

    On the other hand in the second situation, only a translation from open to closed would not be inventive, even with two locked positions following each other in the direction of translation. The second locking position would simply be redundant. There I could follow the reasoning of the court.

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