When Matthieu Dhenne kindly sent me a copy of the recent judgment Quadlogic Controls Corporation v. SA Enedis, I immediately knew that it would contain a part on the limitation period for nullity claims, as this is one of his favorite topics.
But quite to my delight, when diving into the judgment, I realized that extension of subject-matter is also discussed at length. And it turns out that this is one of my favorite topics.
I will leave it up to readers to decide which favorite topic is more off-putting, his or mine.
Quadlogic is a New-York based company specialized in energy management products. They own European patent No. EP 1260090 to a System and method for on-line monitoring and billing of power consumption.
Enedis, previously known as ERDF, is a subsidiary of EDF, the public company turned private which is still responsible for distributing most of the electricity used in France. Enedis on the other hand is in charge of handling the electricity network.
One huge project that has been keeping Enedis busy for a number of years now is the replacement of traditional electricity meters by smart (and somewhat controversial) meters known as the “Linky” meters. By the end of 2017, 35,000 new Linky meters are supposed to be set up every day.
It is therefore a pretty big deal that Quadlogic stated that the Linky technology infringed the EP’090 patent. In 2015, a number of letters were exchanged between the parties, but no amicable agreement was reached.
Thus, Quadlogic filed an infringement suit in February 2016, after performing an infringement seizure in January. Enedis raised a number of defenses and in particular challenged the validity of the patent and requested its revocation.
At this point, Quadlogic replied that Enedis was time-barred from filing a nullity counterclaim – a classical defense nowadays. However, this time the Paris Tribunal de grande instance (TGI) disposed of the issue relatively quickly.
Although the patent was filed as early as February 2001, it was only granted by the EPO in October 2013.
The court held:
It is established that the nullity of a patent can only be requested as from the date of grant, namely October 9, 2013 so that the nullity requested by Enedis for the first time in its counterclaim of February 21, 2017 is admissible. No limitation period can thus be raised against Enedis.
As a reminder, there is now a limitation period for nullity claims in this country, according to recent case law, which is 5 years. The starting point of the period is much debated, with diverging views between first instance and appeal judges.
However, it is now relatively clear that the starting point cannot be before the grant of the patent. At least the TGI and the Cour d’appel are on the same page on this – see a recent report here.
The court then turned to the merits of the validity challenge and reviewed the amendments made during examination.
Claim 1 of the patent reads as follows:
A system for monitoring energy usage on a power line comprising:
(a) an electronic microprocessor-controlled digital electricity metering device coupled to a power line and including a non-volatile non-battery-powered memory, wherein said metering device is operable to perform interval metering for each of a plurality of intervals, is operable to store in said memory data acquired by said interval metering for each of said plurality of intervals, in a manner that enables recovery of measurements for individual intervals of said plurality of intervals and is operable to receive a data request and transmit data in response to said request over said power line; and
(b) a data collector coupled to the metering device via said power line, the data collector being operable to receive data from and transmit data to the metering device over the power line; operable to store data received from the metering device over the power line, and operable to receive data from and transmit data to a remotely located computer.
The expression highlighted above was added during examination and was at the center of the court’s attention.
The court noted that the expression could not be found in any of the 63 original claims and thus turned to the description and drawings. Quadlogic apparently relied on a single short passage as a support, which the court thought was a little bit too light:
Quadlogic only quotes the first sentence of paragraph 132 in its submissions, namely: “Interval metering stores independent records of metering data for future recall”.
And this single sentence in a patent comprising 60 pages of description, supposed to be the crux of the invention, does not mean that individual records of the metering intervals are made. It mentions the possibility of independent records without stating that there is a prior problem that the skilled person had to solve.
This mention cannot be considered as supporting the added feature, which makes it possible for the invention to exist, since the metering, storing and recovering of metering intervals on energy consumption were known; this feature is the only novel one in view of the known prior art. Since the entire device was known except this feature which is the only one to confer novelty to the invention, in order to avoid extension beyond the content of the application, elements to support the invention itself must be found in the description and drawings.
What is remarkable in this explanation by the court is that a feature added in order to distinguish the claimed invention from the prior art seems to be subjected to a more thorough and strict evaluation than more innocent features. The EPO on the other hand usually does not make a distinction between novelty-conferring features and non-novelty-conferring features in the added matter analysis.
What is also remarkable is that the court did not simply look at the sentence in isolation, but took into account the general context of the entire patent. In this case, the supporting sentence is only recited in passing, without any statement of a technical problem to be solved. The way I understand it, in order for the invention to be redefined based on a specific feature, this feature must be originally identified as addressing a particular problem.
The court then delved into a more technical investigation.
This sentence “Interval metering stores independent records of metering data for future recall” means that the recorded interval metering is independent from the values of counting energy consumption.
The part of the sentence “for future recall” is much too elliptic to be admitted as supporting the recovery of measurements of individual intervals. It only refers to the existence in the system of a function for recovering stored data owing to a transfer to the computer.
In other words, the sentence relied on by the patentee does not expressly refer to the notion of storing data so as to be able to recover measurements for individual intervals – as claimed. Moreover, the court found that it was not clear that this is what was implicitly meant there. See also the following statement in the judgment:
Indeed, the fact that measurements are stored as “independent records” does not imply that the measurements, wholly or partly related to these records, can be recovered in an individual manner.
In this respect, the EPO’s gold standard of direct and unambiguous derivability seems to be applied by the French judges.
Extensively examining the rest of the description and drawings, the court noted that there was no actual disclosure of technical means to perform the claimed feature:
No means for separately recovering one of the measurements of the non-volatile memory is ever mentioned in the description of the patent.
And table 6 […] effectively shows that the measurements of intervals are recorded one after each other, half hour by half hour during a certain time, which is a measurement and storing mode already widely known without adding any means to individualize data.
The court continued by noting that the recovery of an individual measurement for a certain interval requires for instance predefined addressable memory areas. But no such embodiment was disclosed in EP’090.
In summary, the subject-matter of claim 1 was found to extend beyond the content of the application as filed, the same conclusion applying to all of the following claims, and the patent was declared invalid.
The issue of infringement was accordingly not addressed.
Whether readers agree or disagree with the court’s findings, the good news is that a very thorough assessment of the technical information made available to the skilled person in the application as filed was performed, which looks every bit as good as what we could find in a decision by a Board of appeal of the EPO.
The judgment is also yet another reminder that completely redefining an invention during examination proceedings by digging for some isolated disclosure may be a winning strategy for the grant, but a losing one during opposition or litigation.
CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, November 2, 2017, Quadlogic Controls Corporation v. SA Enedis, RG No. 16/03165.