A core issue

I have already reported twice on the Core Wireless v. LG litigation in France: the first time to report on the first instance judgment, and the second time to report on a procedural ruling issued during the appeal proceedings.

Today’s post will be about Conversant v. LG… which is exactly the same litigation, since Core Wireless Licensing SARL has now become Conversant Wireless Licensing SARL.

So, the appeal ruling is out – and it basically confirms the first instance judgment.

As a reminder, Conversant (Core) holds a portfolio of Nokia-originating telecom patents. More than a thousand of these patents were declared essential for the 2G, 3G and 4G standards before the European Telecommunications Standards Institute (ETSI).

Core negotiated for several years with South-Korean giant LG Electronics in an attempt to reach a license agreement over this portfolio – but the negotiations failed. In September 2014, Core filed a complaint with the Paris Tribunal de grande instance (TGI), claimed damages and requested that the court should set a royalty rate for LG’s telecommunication devices. The complaint was based on a set of five European patents.

The TGI held that there was no evidence of infringement of the five patents by LG, and thus dismissed Core’s claims in April 2015.

The many traps of standard essential patent litigation.

Core appealed. When I commented on an interim case management ruling, I assumed that the only remaining issue on appeal was the determination of the royalty rate. This understanding was based on a somewhat misleading comment in the interim ruling – and it was thus incorrect.

In fact, similar issues were raised on appeal as in first instance. The main difference is that Conversant no longer asserted three of the patents initially discussed and preferred to focus on the remaining two.

Conversant still claimed that these two patents were infringed by LG and requested that the court should set a worldwide FRAND royalty rate for its portfolio. LG raised a number of defenses: invalidity of the two patents, absence of FRAND offer by Conversant, exhaustion of rights (based on a Nokia – Qualcomm license), absence of essentiality of the two patents, etc.

The first interesting part of the appeal ruling is a procedural one. The parties and the court made extensive use of the new provisions offered by the law of July 30, 2018 on the protection of trade secrets.

As already explained in the report on the interim ruling, the access to some of the exhibits (especially license agreements) was restricted to the parties’ lawyers and to some designated persons having signed confidentiality agreements (especially interpreters and economist experts).

Also, two versions of the written submissions, were filed, namely a complete one and a redacted one deprived of any reference to confidential information relating to the various license agreements at stake.

Finally, the hearing was scheduled over three days.

On the first day, Nokia’s FRAND commitment, an alleged abuse of dominant position and the exhaustion defense were debated. During part of the day, access to the courtroom was restricted to the lawyers of the parties as well as a couple of representatives from said parties. This closed session revolved around the most sensitive exhibit (the Nokia-Qualcomm agreement) and the exhaustion defense.

On the second day, the determination of the FRAND rate was discussed. Again, access to the courtroom was restricted to the above persons, plus a number of designated experts, during part of the day – when comparable license agreements were disclosed.

On the third day, validity, essentiality and infringement of the patents were discussed (without any access restriction).

The recent modernization of French procedural rules which has made this type of customized arrangement possible is most commendable – and was long overdue. It has probably put France on an equal footing with other major patent jurisdictions that have long been accustomed to such notions.

As readers may already have noted, a three-day appeal hearing for a patent case, especially at the appeal stage, is truly exceptional in France. This duration was certainly justified by the complexity of the case.

Hence, it could legitimately be assumed that a significant decision would come out of this whole process, namely a worldwide FRAND rate-setting determination. It did not.

First, the court reviewed the two sample patents asserted by Conversant, and addressed the invalidity challenges brought by LG. The court concluded that both patents were valid.

Second, the court addressed whether these two patents, declared as essential, were indeed essential for the standards at stake. Walking in the footsteps of the first instance judges, they concluded that they are not.

Since the demonstration of infringement was solely based on the essentiality of these patents (and on the compliance of LG’s devices with the standards), and since no other patent from the portfolio was asserted in the lawsuit, the court was finally not aware of any actual Standard-Essential Patent (SEP) held by Conversant.

As a result, the court did not rule on exhaustion of rights, on the FRAND royalty rate and on all other exciting questions raised by the case.

Again, I guess that a number of stakeholders may be disappointed by this underwhelming decision, not so much because the plaintiff lost, but because legal certainty is currently relatively low when it comes to SEPs, FRAND royalty rates and exhaustion of rights.

Additional guidance from a French court would thus have been welcome.

That being said, looking at the non-essentiality finding in the ruling in more detail is rather interesting.

Claim 1 of the first patent, EP 0978210, is directed to a “method for selecting a base station in a mobile communication system“. One of the steps of the method consists in, “in response to recognizing the poor radio signal, measuring“, well, a certain something.

According to the relevant technical specifications of the UMTS (3G) and LTE (4G) standards, as explained by the parties and their experts, if a radio connection having a quality lower than a threshold is identified, a measuring step as claimed must be performed. But if the quality of the radio connection is higher than the threshold, the terminal may decide not to perform any measurement, which means that it may conversely decide to perform a measurement anyway.

The court concluded that a terminal which also performs the measurement when there is a good connection would be compliant with the standards but would not infringe the patent. Therefore, the patent is not an SEP.

Claim 1 of the second patent, EP 0950330, can be quoted in its entirety: “A user terminal comprising a wireless interface and a formatting device for formatting a signal for transmission over said wireless interface in accordance with a low level signal format protocol, characterised in that it comprises means for receiving a type signal, wherein said type signal is indicative of a high level signalling protocol to be used in transmitting said signal, and for formatting said signal in accordance with said high level signalling protocol“.

According to Conversant’s expert, LTE terminals can access both of the so-called IPv4 and IPv6 networks. If a network can work with only one of IPv4 or IPv6, the terminal will use it. If a network can work with both IPv4 and IPv6, the terminal will select one of those. Thus, the claimant argued, the subject-matter of claim 1 is implemented.

However, LG replied that IPv4 and IPv6 are just two versions of the same protocol, and not two different protocols. The court was quite sensitive to this argument, as the patent itself, although it was filed after IPv4 and IPv6 were established, does not distinguish between these versions and only broadly refers to the internet protocol (IP). Besides, the standard does not explicitly state that the terminal should select between IPv4 and IPv6 when both are available. It is thus not possible to consider that such a selection step would be demanded by the standard.

Again, the conclusion is that the patent is not an SEP.

Essentiality was thus the core issue throughout this litigation.

This appeal ruling should come as a warning that claim mapping of a standard is far from being straightforward.

Among the 1,000+ patents of the portfolio, it can be safely assumed that the five (later narrowed down to two) patents asserted in this case were rated as being among the “strongest” or “best” ones by their holder. And yet, even with these two particularly “strong” or “good” patents, the essentiality case was not clear-cut, as delicate issues of claim interpretation arose.

This is not completely surprising, as standards are elaborated quite independently from the patents which may be owned by members of the standard-setting body. Also, a standard contains a number of minimal rules but does not provide all implementation details. Even if, in practice, all implementations use a certain feature, it does not necessarily mean that this feature is required by the standard itself.

This makes me wonder about the proportion of patents declared as potentially essential which would be viewed as actually essential by a court? I assume that proportion could in fact be rather low. Definitely some food for thought for all those involved in license negotiations.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, April 16, 2019, Conversant Wireless Licensing SARL v. LG Electronics France SAS & LG Electronics Inc., RG No. 15/17037.

A packed Pacte

France has a funny bicameral system.

Both chambers of the parliament, the Assemblée nationale and the Sénat, get to debate on, amend and vote bills. But if they fail to agree on the same version of a bill, in the end the Assemblée nationale has the last word.

And so it is with the so-called “Loi Pacte“, first discussed on this blog post. There was some suspense as to what the bill would finally contain, as it bounced back and forth, being amended and dis-amended from one chamber to the other. But now the suspense has come to an end as the bill has been finally adopted and will become the law of the land.

Well, unless there is a last minute surprise, as the constitutionality of the bill will likely be challenged in front of the Conseil constitutionnel (our constitutional supreme court) by disgruntled members of parliament.

The final text is here and it is 408 pages long (yes, that is some packed Pacte). It has many different aspects, including some controversial ones – like the privatization of ADP (the company that runs Paris’ airports). It also contains some provisions on IP, including just a few ones on patent law – but they are very important provisions indeed.

Basically, the report that I previously made on the draft still stands, although the articles have been renumbered:

  • The maximum duration of utility certificates will be brought from 6 years to 10 years (article 118).
  • It will be possible to convert a utility certificate application into a patent application within a deadline which still needs to be determined, whereas only the opposite is possible as of today (article 118).
  • The government is authorized to rule by way of an ordonnance in order to set up a procedure for third parties to oppose a granted patent (article 121).
  • The INPI (French patent office) will be able to refuse a patent application if its subject-matter is not an invention or is excluded from patentability, in contrast with the current formulation, per which its subject-matter is “manifestly” not an invention or is “manifestly” excluded from patentability (article 122).
  • The INPI will be able to refuse a patent application if its subject-matter is not novel or not inventive, in contrast with the current formulation, per which an application may be refused if it was not modified despite a “manifest” lack of novelty (article 122).
  • Infringement actions will be time-barred five years after the day the right owner knew or should have known the last fact allowing them to act, as opposed to the current formulation, which is five years “from the facts” (article 124).
  • The statute of limitations will no longer apply to patent nullity actions (article 124).

So, there you have it, I don’t know if it is spring or winter, but a new season is definitely coming.

In the year 2525 – if patents can survive.

So what next? Well, first we will have to carefully look at transitional provisions.

In this respect, I have noted the following:

  • The new provisions on utility certificates shall enter into force when the implementing decree is published, or one year from the publication of the law at the latest.
  • The timeline for the introduction of the opposition proceedings is still unclear, as it will depend on the regulations (ordonnance) that the government will issue.
  • Provisions extending the scope of examination of patent applications by the INPI shall enter into force one year from the publication of the law.
  • The new provision on the statute of limitations for nullity actions will immediately enter into force – but will have no effect on decisions that have become res judicata. It remains to be seen how this will be interpreted in practice.

The bottom line is that, regarding the biggest changes for patent applicants, patent attorneys and the patent office, we have some time to get prepared – but we all know how that usually flies.

The nitty-gritty of the new system is still unclear and will require our full attention.

Moreover, another question mark is how the INPI will adapt to this upheaval.

Based on a report on a meeting between the INPI management and representatives of the patent profession a few weeks ago, the following seems to be contemplated at present:

  • The projected date of entry into force of the patent opposition proceedings is January 1, 2020 (this is quite ambitious).
  • The projected start of the examination of inventive step is mid-2021 (this is because the new law will only apply to newly filed applications, I presume).
  • In terms of HR efforts, 15 patent examiners currently working on a backlog of national search reports will be redeployed to deal with opposition cases, and 16 new patent examiners will be hired to deal in particular with the increased workload related to the examination proceedings.

We also learn from this report that the new French “provisional patent application“, that we have heard of a number of times, is not dead. It should be created soon by way of a government decree.

I am curious to know what such a provisional application will look like. So far, patent professionals have been extremely skeptical about this – to put it mildly.

According to one apocryphal anecdote, President Macron was told by a French start-upper a few years ago that U.S. law is much more favorable to innovators than French law, because they have provisional applications in the U.S.

As a reminder, filing a French patent application without claims and without paying any taxes gives you a filing date, which is all you need to later claim priority. So, if there is any truth to this anecdote, it probably means that our President never met a French patent attorney – or at least that such a meeting did not leave as strong an impression as the ones he had with start-up folks. Which, let’s face it, is quite understandable.

A travel back in time

Regular readers of this blog are probably aware that Lionel Vial is a frequent contributor.

I am grateful for his thorough reporting on pharma / biotech case law. Today, he once again keeps us apprised of the latest SPC tidbit. As he even provided the illustration, I really have nothing to add but say thanks!

While we are all waiting for the decision of the CJEU in the Santen case (C-673/18) to finally know if, in application of the Neurim (C-130/11) case law, a patented novel medical use in humans of a product having already been authorized for a previous different medical use in humans deserves a supplementary protection certificate (SPC), the decision discussed today will take us back to the pre-Neurim era, a time of uncertainty as we will see.

At that time, the prevailing case law regarding further medical use consisted in Pharmacia Italia SpA (C-31/03) rendered on October 19, 2004, and Yissum (C-202/05) rendered on April 17, 2007.

According to the judgment in Pharmacia Italia SpA:

The grant of a supplementary protection certificate in a Member State of the Community on the basis of a medicinal product for human use authorised in that Member State is precluded by an authorisation to place the product on the market as a veterinary medicinal product granted in another Member State of the Community before the date specified in Article 19(1) of Council Regulation No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products.

On the other hand, the order in Yissum reads:

Article 1(b) of Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products […] is to be interpreted as meaning that in a case where a basic patent protects a second medical use of an active ingredient, that use does not form an integral part of the definition of the product.

The DeLorean remains the best way to travel in time with style.

The Regents of the University of Colorado (hereafter the University) was granted European patent No. 1658858 on November 18, 2009 for the use of a botulinum toxin, in particular botulinum toxin type A, in the preparation of a pharmaceutical composition for treating a recalcitrant voiding dysfunction, in particular urinary incontinence.

A corresponding marketing authorization was then granted on August 22, 2011.

The University had six month (that is until February 22, 2012) to file an SPC application. However, since botulinum toxin type A had benefited of previous marketing authorizations and in view of the then prevailing case law, the University considered it impossible to have an SPC granted and therefore no SPC application was filed.

Then the Neurim judgment was rendered on July 19, 2012. It notably provides that:

Articles 3 and 4 of Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products must be interpreted as meaning that, in a case such as that in the main proceedings, the mere existence of an earlier marketing authorisation obtained for a veterinary medicinal product does not preclude the grant of a supplementary protection certificate for a different application of the same product for which a marketing authorisation has been granted, provided that the application is within the limits of the protection conferred by the basic patent relied upon for the purposes of the application for the supplementary protection certificate.

Neurim has often been considered as a complete reversal of the previous case law.

Besides, for many commentators, it opened the door to SPCs for novel medical uses in humans of products having already been authorized for a previous different medical use in humans.

The University therefore filed an SPC application on September 19, 2012, i.e. within 2 months of the publication of the Neurim judgment, but about 7 months after the end of the deadline for doing so.

The University sought to benefit from the provisions of Article L. 612-16 of the Code de la propriété intellectuelle, according to which:

Where an applicant has not complied with a time limit as regards the Institut National de la Propriété Industrielle, it may submit an appeal for reinstatement of it rights if it is able to give a legitimate reason and if the direct consequence of the hindrance has been refusal of its patent application or of a request or the loss of any other right or means of appeal.

The appeal must be submitted to the Director of the Institut National de la Propriété Industrielle within two months of the cessation of the hindrance. The act that has not been carried out must be accomplished within that period. The appeal shall only be admissible within a period of one year from expiry of the time limit not complied with. […]

However, the INPI (French patent office) was not convinced and rejected the appeal for reinstatement on June 30, 2015.

The University and Allergan (to whom the SPC application and the basic patent had then been assigned) appealed the decision of the Director of the INPI before the Paris Cour d’appel on September 18, 2015.

In a first decision dated September 16, 2016 the Cour d’appel confirmed the decision of the INPI. However, the decision was invalidated by the Cour de cassation, the French Supreme court, on April 5, 2018, for procedural reasons, as the Cour d’appel had neglected notifying observations made by the INPI to the University and Allergan.

The case then came back in front of the Paris Cour d’appel which, albeit with different judges, again confirmed the decision of the INPI on February 12, 2019 in the following terms:

However, according to the terms of article L. 612-16 of the intellectual property code, the legitimate reason must be understood as a “hindrance”;

Even considering that the case law of the CJEU, before the Neurim judgement, did not allow the University to expect obtaining an SPC and could therefore discourage it to file an SPC application, the director of the INPI rightly observes that this situation does not characterize a hindrance according to the previously cited provision, given that the case law, be it that of the Court of justice, evolves, that even with the Pharmacia Italia and Yissum case law other operators have indeed filed SPC applications in relation to further medical uses, one of which having given rise to the Neurim judgment, and that the lack of filing of an SPC application by the University was the result of its free appreciation of the latter and not of an objective impossibility, independent of its will.

In any case, pursuant to article 7 of regulation No. 469/2009 concerning the supplementary protection certificate for medicinal products, the University had a six-month period expiring on February 22, 2012 to file its SPC application; the reference for preliminary ruling to the Court of justice of the European Union was received at the Court on March 16, 2011 and published in the OJEU on June 18, 2011; under these conditions, as is rightly observed by the director of the INPI, the University had to consider a possible reversal of the case law of the Court of justice;

As such, the decision of the director of the INPI is exempt from criticism in having retained that the lack of respect of the deadline imparted to the University for filing its SPC application was not due to a hindrance for which it would benefit from a legitimate reason, but to its will not to proceed with a filing that it did not consider appropriate and this in spite of the reference for a preliminary ruling submitted to the Court of justice duly published on June 18, 2011.

Perhaps, this case is an illustration that too much knowledge is sometimes dangerous, and that we, as counsels, should always be careful when giving opinions on the likely outcome of a filing on the basis of our knowledge of established case law, bearing in mind that there is always a possibility, even a remote one, that a case law can be overturned.

In any case, the University and Allergan should refrain from nourishing regrets on their missed filing at least until the result of the Santen referral (C-673/18) is known, as this latter case precisely arises from a decision of rejection of an SPC application by the INPI in relation to a further medical use.

Well, the way I see it, getting SPC law 100% right is a little bit like having to hit a wire with a connecting hook at precisely eighty-eight miles per hour the instant a lightning strikes a tower. Everything will be fine.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, February 12, 2019, The Regents of the University of Colorado & Allergan Inc. v. Directeur de l’Institut National de la Propriété Industrielle, RG No. 18/14291.

A ruling not so Great for Manitou

In a rather exceptional move, two patent attorneys professional organizations took sides in a lawsuit between two private companies.

In fact, the CNCPI (Compagnie nationale des conseils en propriété industrielle) and the ACPI (Association des conseils en propriété industrielle) filed an intervention in an appeal on points of law in front of the Cour de cassation.

I know this may sound like a nerdy and rather unamusing April Fools’ day prank, but it is not. I have temporarily given up on those since reality has started catching up with the imagination of jesters on a daily basis (anyone up to a Brexit joke these days?).

So, yes there was indeed such an intervention, in the litigation pitching British company JC Bamford Excavators Ltd. (JCB) against Manitou BF.

How did we get there and how did this all end?

JCB specializes in the production of manufacturing equipment e.g. for construction and agriculture. Manitou is a French manufacturer of fork lifts and other heavy equipment.

JCB owns in particular two European patents (EP 1532065 and EP 2263965) that it believes have been infringed by Manitou on the French territory.

On April 26-27, 2017, JCB rented a telehandler called Manitou MT 1840 and had tests performed on this device by two JCB employees, in the presence of two French patent attorneys. These tests were aimed at demonstrating infringement of the patents at stake. The two patent attorneys involved in this testing issued a report for JCB.

On May 5, 2017, JCB filed a complaint for patent infringement against Manitou.

A few weeks later, on June 1, 2017, JCB filed a request for an ex parte order to be authorized to carry out an infringement seizure in Manitou’s premises. It is somewhat unusual for an infringement seizure to be requested after the infringement proceedings have already been initiated, but it is certainly possible to proceed in such a “reverse” order. The ex parte order was granted the next day.

On June 16, 2017, the infringement seizure was carried out by a bailiff in Manitou’s premises. It must have been a rather exhausting one for all those concerned, as it lasted until 2:15 am the next day…

The bailiff was assisted during the seizure by two patent attorneys – as is almost always the case. But the important point here is that the two patent attorneys at stake were those who had assisted JCB with the April testing.

One week later, Manitou filed a motion for canceling the infringement seizure order. The judge rejected the motion in another order dated October 5, 2017. Manitou appealed.

On March 27, 2018, the Paris Cour d’appel set aside the October 2017 order, and canceled the infringement seizure order of June 2017 – thus also canceling at the same time the bailiff’s infringement seizure report.

The court expressed the following principle:

[…] The right to a fair trial set out in article 6 of the European Convention on Human Rights [ECHR] requires that the expert assisting the bailiff should be independent from the parties […]. 

The court then reasoned as follows:

Mr. […] and Mr. […] were designated twice in the same infringement lawsuit between [JCB] and Manitou; a first time on April 26, 2017, upon [JCB]’s request, to perform tests on a Manitou MT 1840 vehicle, and to hand out on May 4, 2017 a private expert report describing the features of the material which was examined; and then by way of an order dated June 2, 2017, in which they were designated as judicial experts to assist the bailiff during the infringement seizure relating again to the MT 1840 model, already examined during the private expertise, as well as to further Manitou models. Obviously, and regardless of their status which requires compliance with rules of ethics, patent attorneys cannot be designated as experts by a judicial authority while they have previously been involved as experts on behalf of one of the parties in the same case […], without violating the impartiality principle required by article 6 [ECHR]. Their designation was illegal, so that the June 2, 2017 order shall be canceled, and the October 5, 2017 order shall be set aside.

JCB filed an appeal on points of law in front of the Cour de cassation.

The Cour de cassation: the Great Manitou of French litigation.

The March 2018 ruling sent some shock waves through the French patent profession as it seemed to establish new requirements for patent attorneys to be able to assist a bailiff during an infringement seizure.

Hit by these shock waves, the two abovementioned patent attorney professional organizations stepped in, in support of JCB’s case.

Hot from the dematerialized press, here is now the judgment issued by the cassation judges a few days ago, which the Cour de cassation set aside the March 2018 ruling of the Paris Cour d’appel.

Locating the key part of a cassation judgment is a rather easy task. Such judgments are so brief that there is hardly any meat at all around the key part. So here it comes (broken down into shorter sentences):

The fact that the patent attorney of the seizing party had, on the initiative of the latter, established a report describing the features of the product at stake, does not prevent a later designation, upon request of the seizing party, as an expert to assist the bailiff in a patent infringement seizure. [Indeed], his mission is not subjected to a duty of impartiality since it is not an expertise under articles 232 and following of the Code de procédure civile. [Therefore], by ruling in this manner, the Cour d’appel breached the above legal provisions [i.e. article 6 ECHR and article L. 615-5 Code de la propriété intellectuelle].  

I bet this ruling will come as a relief for most of the patent profession.

The mistake made by the Cour d’appel seems to have been to consider the patent attorneys assisting the bailiff as court-appointed judicial experts. They are not.

They are supposed to help the bailiff find evidence of infringement, they are not there to provide an impartial recommendation to a judge regarding the outcome of a discussion.

Calling upon patent attorneys to assist the bailiff, as opposed to employees of the infringement plaintiff for instance (which is prohibited), offers a number of guarantees for the seized party, due to the rules of ethics that patent attorneys have to follow. For instance, a patent attorney should not and will not communicate to the plaintiff any confidential information that he/she becomes privy to during the seizure.

But on the other hand there is no requirement for the patent attorney not to have advised the plaintiff in the past – including regarding the case at hand.

By the way, the CNCPI and ACPI’s intervention in the appeal was found admissible.

This may pave the way for similar interventions in the future in case the rights and prerogatives of patent attorneys are at stake in a litigation.

CASE REFERENCE: Cour de cassation, ch. commerciale, March 27, 2019, JC Bamford Excavators Ltd. v. Manitou BF, appeal No. H 18-15.005.