This blog has been silent for a number of weeks now. Hopefully, regular posting will resume soon.
In the meantime, here is a very brief post today, to make all readers (on the beach or not) aware of a new referral to the Enlarged Board of Appeal, on a topic which enthralls the pharma patent crowd – and beyond – in every season, namely: plausibility.
The case of interest is T 116/18, pitching Syngenta Ltd. as the opponent against Sumitomo Chemical Company, Ltd. as the patentee. This case actually relates to an insecticide composition and not a pharmaceutical one.
Oral proceedings took place on July 22, 2021, and based on the minutes issued on July 30, 2021, it appears that the Board intends to submit three questions to the Enlarged Board, which are provisionally phrased as follows:
If for acknowledgement of inventive step the patent proprietor relies on a technical effect and has submitted data or other evidence to proof such effect, such data or other evidence having been generated only after the priority or filing date of the patent (post-published data):
1. Should an exception to the principle of free evaluation of evidence (see e.g. G 1/21 reasons 31) be accepted in that the post-published data must be disregarded on the ground that the proof of the effect rests exclusively on such post-published data?
2. If the answer is yes (post published data must be disregarded if the proof of the effect rests exclusively on these data): can post-published data be taken into consideration if based on the information in the patent application the skilled person at the relevant date would have considered the effect plausible (ab initio plausibility)?
3. If the answer to the first question is yes (post published data must be disregarded if the proof of the effect rests exclusively on these data): can post-published data be taken into consideration if based on the information in the patent application the skilled person at the relevant date would have seen no reasons to consider the effect implausible (ab initio implausibility)?
Let’s wait for the written referral decision and the final form of the questions, but it can already be guessed that the stakes will be very high for pharmaceutical companies and the so-called “chemistry” segment at large.
Thank you to my colleague Horst Vissel for first drawing my attention to this referral on LinkedIn. I seldom do breaking news, but it is the heart of the summer, everything is probably somewhat quieter on the big blogs, so it was now or never!
After several posts dealing with the intricacies and oddities of SPC law, I thought we might as well take a break, look at a simple, straightforward case for a change – yes, there are some – and get a post completed in fewer than 1,500 words .
I don’t know whether this will be a breath of fresh air, but the patent in suit, EP 0899518, relates to a ventilation system for a building containing (especially porcine) livestock.
The patent proprietor, I-Tek, based in Saint-Malo, sued Heughebaert Danièle et Philippe, in Evreux, for alleged infringement of the patent. Bretons and Normans: little wonder this got contentious.
In November 2018, the Paris TGI granted the defendant’s invalidity counterclaim and revoked claims 1-4 of the patent for lack of inventive step. I-Tek appealed, so that the issue was revisited by the Paris Cour d’appel.
Here is claim 1:
Ventilation system for a building containing at least one row of compartments intended to be occupied by at least one animal, the said system including at least one air intake interconnecting, beneath the said compartments, with lower intake apertures for each of the shafts, at least one air outlet in the said building connected to air suction devices intended to create negative air pressure inside the building so as to provide for the suction through the said shafts of air let in through the said or each inlet, the said or each air outlet being positioned above the said compartments, an outlet aperture from each shaft being positioned beneath a ceiling of the said building and each shaft being fitted with means of regulating the velocity of the air sucked through its outlet aperture to a set value so that the said value provides for ventilation of the said ceiling above each shaft, the system is characterized in that the outlet aperture from each shaft is located appreciably above the floor.
The court started with recalling that the question is whether
[…] taking into account the state of the art, the skilled person, in view of the problem that the invention purports to solve, would achieve the technical solution claimed in the patent using their professional knowledge and making simple operations. Inventive step is defined relative to the specific problem with which the skilled person is confronted.
The court added:
The closest prior art to be selected must be relevant, i.e. it must correspond to a similar use and require the minimum of structural and functional modifications to achieve the claimed invention. This closest prior art must therefore aim at reaching the same objective or achieving the same effect as the invention or at least belong to the same technical field as the claimed invention or a field which is closely related.
Most readers have probably recognized an almost verbatim quote of the EPO’s case law and guidelines on the problem and solution approach.
The next sentence in the judgment is thus somewhat surprising:
Article 56 EPC does not necessitate, in order to determine if a patent involves an inventive step, to proceed according to a problem and solution approach requiring first defining a closest prior art […], as this is specific to the EPO’s Boards of appeal and is not mandatory for French courts.
There is some contradiction here, but I think the message may be: please do not tell us what we should do; but we will do it anyway.
The court then identified three relevant prior art documents, designated as G, D and S.
Document G discloses a ventilation system according to claim 1, except that it fails to disclose that each shaft is fitted with means of regulating the velocity of the air sucked through its outlet aperture to a set value.
Document D discloses a ventilation system for avian livestock comprising lateral active air inlets equipped with closing means adjusting the air inflow rate to a constant value, based on measurements made by a detector.
Document S discloses a ventilation system for porcine livestock including an axial shutter and shafts having motor-controlled openings.
The court identified G as the closest prior art, which confirms that they did apply the problem and solution approach.
The problem to be solved, they said, was the provision of a ventilation system comprising shafts and air flow regulation means, to achieve good ventilation of the entire building. This formulation could be criticized as already containing a pointer to the solution – but I am not persuaded that this really had a bearing on the outcome.
The important point, I think, is that the court found that documents D and S were combinable with G, “by simple technical operations and based on common general knowledge“.
It seems that I-Tek argued that document D would not have been taken into account as the regulation of air flow is different in this prior art. In particular, the air flow is horizontal in D but vertical in G (and the claimed invention). The court disagreed. They concluded that claim 1 corresponds to a mere juxtaposition of known means, not to an inventive combination having a novel function – thus confirming the findings of the court below. Dependent claims 2-4 shared the same fate as claim 1.
Interestingly, the patent was opposed at the EPO by another third party, more than fifteen years earlier.
The opposition was quite minimal, and it was rejected without oral proceedings. Document G was also considered as the closest prior art in the opposition decision but another document was cited as a secondary reference instead of D and S. The opposition division held that the skilled person starting from G would not achieve the claimed invention as this secondary reference did not teach the distinguishing feature.
The court therefore simply discarded this decision by noting that the opposition division was not presented with prior art D and S. Based on a very quick look at the documents, it does seem that D may indeed be more relevant than the secondary reference filed by the opponent at the EPO. The latter mentions some regulation means but D seems more specific in that it calls for a regulated constant air flow.
In my opinion this decision is an illustration of how flexible the problem and solution approach can be.
Criticisms have been raised against the problem and solution approach over time, including on this blog. But I would submit that the unconvincing inventive step reasonings that we sometimes see in EPO decisions are not really due to the approach itself, but rather to an objectionable, sometimes overly rigid, application of the approach.
In this respect, the selection of the closest prior art and the formulation of the objective technical problem are more often than not hotly debated.
But let’s not forget the third stage of the approach, namely the appraisal of (non-)obviousness, which probably gives the most leeway to the deciding body.
Case in point: for a narrow-sighted skilled person, the airflow rate regulation means of document D would not be obvious to incorporate into the ventilation system of the closest prior art G, as the positioning of the openings and direction of airflow are different. But if the skilled person has just a little bit more imagination, then the modification of the closest prior art becomes perfectly obvious.
In summary, IP courts have full discretion in deciding how high or low the inventive step bar should be, even if they follow the problem and solution framework, which can thus be viewed, at its core, as a convenient common language for the entire European patent profession.
With all the recent renewed talk about the UPC, the decision commented upon today reminds us how fragmented the European patent litigation landscape still is at this time.
The case at hand was in fact already mentioned on this blog a few months ago, when the judge in charge of case management, in an unusual move, decided that the court should hear a patent invalidity defense and rule on it first, before dealing with confidential exhibits in connection with the infringement claim, if necessary.
It turns out that this may have been the most efficient way to proceed after all, as the court has now declared that the claims of the patent in suit are invalid – so that the infringement claim no longer needs to be examined.
In this case, the patent proprietor is Lufthansa Technik AG, and the defendants are Thales Avionics Inc., Astronics Advanced Electronic System and Panasonic Avionics Corporation. The patent is EP 0881145, expired since May 2018, directed to a voltage supply apparatus for supplying voltage to electric devices in an airplane cabin.
The Paris Tribunal judiciaire deemed that the asserted claims are novel, but lack inventive step.
The reasoning does not lend itself to a full summary in a blog post such as this one; analyzing it in detail would require taking a hard look at the patent and the prior art.
What I do find interesting to note, though, is how the court commented on foreign decisions previously issued in connection with the same European patent.
Indeed, the patent was also asserted in Germany and in the UK against one of the same co-defendants.
In Germany, back in 2012, the patent was upheld by the Bundespatentgericht in amended form, with a combination of claims 1 and 2. The Mannheim Landgericht then found that the amended patent was infringed.
In the UK, the High Court found the same patent valid and infringed, in a judgment issued on July 22, 2020.
For the sake of completeness, I should add that Lufthansa was not so lucky on the other side of the pond, as the corresponding U.S. patent was held invalid for indefiniteness in a summary judgment issued by the district court of the Western district of Washington (upheld on appeal). But this is somewhat less relevant for us, since U.S. law is an entirely different story.
Going back to Europe, it thus appears that the French court came to a different conclusion from its German and British counterparts regarding the validity of the patent. Interestingly enough, the French judgment does not shy away from a comparison with the foreign judgments. On the contrary, it contains a couple of references to these foreign judgments.
First, in the novelty discussion, the court explicitly agreed with a portion of the British judgment, and relied on an admission made by one of the defendants’ experts in the UK to interpret a prior art document.
However, when examining inventive step of claim 2, the court expressed its disagreement with the position of the German and British courts, and more specifically with their interpretation of a prior art document called Neuenschwander. Let’s have a closer look at the point of contention.
Claim 1 of the Lufthansa patent is the following (with particular emphasis on the most important features for the discussion):
A voltage supply apparatus for providing a supply voltage for electric devices in an aeroplane cabin, comprising: a socket to which the device is connectable by means of a plug and to which the supply voltage can be applied, the socket comprising a socket detector detecting the presence of a plug inserted in the socket, and a supply device being provided remotely from the socket and being connected to the socket via a signal line and via a supply line for the supply voltage, the supply device applying the supply voltage to the socket when the plug detectors indicate the presence of the plug via the signal line to the supply device, characterized in that the plug detector is formed such as to detect the presence of two contact pins of the plug in the socket, and the supply device only applies the supply voltage to the socket if the presence of two contact pins of the plug is detected simultaneously.
Claim 2 adds that:
[…] the supply device only applies the supply voltage if a maximum contact time is not exceeded between the detection of the first and the second contact pin of the plug.
A prior art document called Neuenschwander discloses a contact system for use at an outlet end of an electric supply line, comprising “two barrier portions, each of which is associated with [a connector end] and arranged between its associated connector end and [one opening] so as to operate [a] relay for connection of [a] supply line with [the] connector ends only when contact pins of an attachment plug are moved substantially simultaneously toward, and into contact with, said connector end“ (claim 3 of Neuenschwander).
One key issue was whether this teaches the claimed supply of voltage depending on a maximum contact time not being exceeded.
The TJ carefully looked at the analysis made by foreign European courts:
The meaning of this expression and the disclosure or not of a time out function by this prior art are extensively addressed in paragraphs 149 to 162 of the High Court judgment. Lufthansa Technik asserts, in keeping with the British judge’s ruling but also with the position adopted by the German court, that the notion of substantially simultaneous introduction of the contact pins is not mentioned as a condition for the supply – and thus as an additional level of desired safety – but as a fact related to the normal configuration of a plug.
The Bundespatentgericht also rejected the assumption of a time out required by claim 3 of the Neuenschwander patent, because no time measurement is mentioned and none of the disclosed embodiments has a configuration including this timing function. […]
But the French judges disagreed with this assessment:
However, as rightly mentioned by the defendants, on the one hand this interpretation is remote from the literal wording of […] claim 3; and on the other hand, the EP’145 patent is not more explicit as to the implementation of this feature, since the scope of the invention is limited to a time measurement condition, or timing “concept”, irrespective of the technical means enabling its application, which leads to the conclusion that the skilled person was in a position to adapt the device by integrating such a function owing to their common general knowledge.
The court went on with analyzing further documents to be taken into account in the inventive step assessment, and added the following general comment:
The implementation of this timing criterion involved operations of adaptation of the electric circuit within the skilled person’s reach, which Lufthansa Technik does not deny in its argumentation regarding the auxiliary objection of invalidity of claim 2 for insufficiency of disclosure, and which can be deduced from the very wording of the EP’145 patent which does not provide any indication in this respect.
Lack of judicial consistency in pan-European patent litigation is usually considered a bad thing and one of reasons why we badly need the UPC.
On the other hand, since we do have a divided court system in place, I find it rather reassuring that each court pays close attention to reasonings developed abroad but still makes its own independent assessment of the case. Reasonable minds can differ, after all.
As another remark, and with the caveat that I have not looked in detail at the patent and the prior art and have thus not formed a personal opinion on this matter, it is interesting that the court has taken into account the extent of actual disclosure in the patent when determining whether a claimed feature is actually distinguishing over a similar general statement in the prior art.
It would appear that there is room for so-called squeeze arguments in France.
A big thank you to Sandrine Bouvier-Ravon and Jean-Martin Chevalier for sending this decision!
After electronic cigarettes in the latest post, I have decided to take this blog one giant step further today, by discussing a patent on… crack pipes.
There are three actors in this case.
First, Terpan is a company active in the field of STD prevention. Owing to a cooperation with seven associations in Paris, they designed a risk-reducing kit for crack cocaine users, called “Kit Base“. This kit can be employed by users to reduce the risk of blood-mediated HIV or hepatitis C infection.
Terpan filed a French patent No. FR 3002724 on this kit in February 2014 (claiming an internal priority of March 2013).
The second actor, Action Solidaire Développement (ASD) is a one-person business distributing risk-reducing kits to various associations.
Finally, SAFE is an association active with drug users. By the way, it is one of the seven associations that participated in the elaboration of the Kit Base with Terpan.
Until 2017, ASD and SAFE bought the Kit Base from Terpan. Then they stopped and started providing users with another kit (somewhat unsurprisingly called Kit Crack), which Terpan considers is an infringement of its patent. Terpan thus launched an infringement action in July 2017.
ASD and SAFE filed a nullity counterclaim.
The first ground of nullity addressed in the judgment is a rather exceptional one. The defendants argued that the invention was excluded from patentability because its commercial exploitation would be contrary to ordre public and morality.
Claim 1 of the patent is broadly directed to a “kit for consuming solid or semi-solid products by inhalation“. However, the court held that the context of the description makes it clear that the invention is specifically about drug (and more particularly crack cocaine) usage.
The defendants’ argument interestingly relied on an old judgment by the Tribunal civil de la Seine, in 1913, which held a patent on an opium pipe contrary to ordre public and morality. However, one century later, the Paris Tribunal judiciaire did not follow this case law.
The court noted that, although drug use is prohibited in France, a first law authorizing public health measures against drug addiction was enacted in 1970. More recent reforms in 2004 and 2018 strengthened this policy. And so there are in particular public centers dedicated to drug users, in which kits such as the patented one can be legally distributed. These kits may thus be viewed as tools of public health prevention, and they do not breach the ordre public requirement. The 1913 judgment is now outdated since this public health policy did not exist at that time.
The court then moved on to the second ground of nullity, namely lack of novelty over the public prior use of Terpan’s own Kit Base.
Remember that the FR’724 patent claims an internal French priority of March 4, 2013? Well, according to SAFE, Kit Base was marketed as from 2012. This was not challenged by Terpan. However, the patent proprietor stated that the kit was modified over time based on feedback from various associations so that there was no evidence that the kit in use in 2012 corresponded to the claimed invention.
The court was not persuaded by Terpan’s defense. The court took a body of evidence into account:
Terpan’s website mentions that the Kit Base “in its final version” has been available on the market since April 2012.
Terpan supplied one association in 2010-2011 with filters made of wire having exactly the dimensions and wire diameter specifications recited in dependent claims 2, 3, 6 and 7. The context makes it clear that these filters were intended to make drug usage kits.
In April 2012, Terpan supplied various drug risk reduction centers with the Kit Base, under a single common reference.
A Kit Base sample allegedly supplied to an association in 2012 was described in a bailiff’s report in 2017 as corresponding to the claimed invention.
Regarding this latter point, the court acknowledged that the evidence was not bullet-proof as the kit described in the report was not taken from an intact original package.
Nevertheless, overall, this body of evidence was sufficient to convince the court that the Kit Base marketed in the Spring of 2012 already contained the same elements as the current Kit Base which implements the FR’724 patent.
Therefore, all claims alleged to be infringed were held invalid as lacking novelty over Terpan’s own marketing of the Kit Base.
A few remarks on this finding, if I may.
The court seems to have applied some sort of balance of probabilities approach in appraising the available evidence.
This seems very reasonable. Since the alleged public prior use originated from the patent proprietor (and plaintiff) itself, said patent proprietor had (or should have had) all of the necessary evidence to counter the defendants’ allegations.
In particular, the proprietor’s contention that the Kit Base may have changed over time seems to be clearly lacking. Since the Kit Base is theirs, they should be able to precisely set out and prove which modifications were made and when. I often find it disheartening when a party makes a good prima facie infringement or invalidity case which is successfully brushed off by the other side simply because the burden of proof is completely one-sided. This was not the case here, and I think it is a sound approach.
Finally, the court made reference in its reasoning to article L. 611-13 Code de la propriété intellectuelle, which mirrors article 55 EPC and relates to non-prejudicial disclosures – and frankly I have no idea why.
The court noted that Kit Base was put on the market more than 6 months before the priority date of the patent at stake, “so that” the claims lack novelty. However, as far as I understand, there was no allegation that the disclosure was an evident abuse. In fact the disclosure was made by the proprietor itself, which seems to leave little room for a possible abuse argument. Therefore, and unless some points made by the parties are not properly reflected in the judgment, there was probably no reason whatsoever to refer to this 6-month period. Did I miss something, or are we talking about a French patent here and not a German utility model? Just to be clear, there is no grace period in this country.
The final part of the judgment relates to Terpan’s additional claim for unfair competition and commercial free-riding. Terpan reproached the defendants with copying features of its Kit Base.
Again, the court did not find in favor of the plaintiff.
First, Terpan’s alleged R&D investments were not proven, especially because the kit was the result of collective work together with various associations.
Second, the presentation similarities noted by Terpan between the defendants’ Kit Crack and the original Kit Base (presence of a soothing cream and of a kit assembling drawing) were said to relate to commonplace features; whereas, on the other hand, the court insisted on some significant differences between the two kits (such as the presence of an alcohol-imbibed pad, or different looking packages).
With a decision as interesting as this one, one could easily become addicted to case law.
PS: Many thanks to Jérôme Tassi for first drawing my attention to this decision!
As an introduction, I am pleased to pass on the announcement of the upcoming patent seminar of the Institut de Boufflers, which will take place next week – online as you may guess.
The program is here, it looks great as usual, and I personally will be honored to participate in a panel discussion on the second day of the seminar (Nov. 25), dedicated to the evolution of European patent law. See you there.
Moving on to today’s case law report, I rarely miss an opportunity to comment on a decision touching upon a serious point of insufficiency of disclosure.
As a matter of fact, this ground of nullity is so seldom successful that it suddenly becomes quite interesting when it is – especially in the non-medical arts.
Directbuy is a French company specialized in electronic cigarettes and related liquids and accessories. It is located in Heillecourt, Lorraine, 5527 inhabitants (says Wikipedia). It filed a French patent application in April 2015, which was granted on November 3, 2017 under number FR 3034627. The patent relates to a device for assembling an e-cigarette and filling it with liquid.
In January 2018, Directbuy initiated infringement proceedings based on this patent against LCCF Distribution, another company located in Saint Martial d’Albarède, population of 467, (yes, that would be more than 10 times fewer than Heillecourt) in Dordogne. What would I do without Wikipedia indeed.
LCCF Distribution filed a nullity counterclaim, raising several grounds of nullity.
Had they prevailed on their first ground of nullity, the decision of the Paris Tribunal judiciaire would have been even more remarkable – but they did not.
This first ground of nullity was indeed that the patent did not relate to an invention.
Here is claim 1 of the patent:
A device for assembling and filling a vial with liquid for an electronic cigarette comprising at least one means for filling said liquid to which means are connected for supplying this liquid, characterized in that said means for filling are connected to means for supplying at least two liquids of different compositions through selection means to select, under the impulse of appropriate control means, the distribution of a liquid or a mixture of liquid in varying proportions.
LCCF’s argument was that the claim merely recites results to be achieved and that the structural and functional means allowing to obtain these results were not disclosed. In other terms, only a technical problem was claimed.
As you can see, this argument already had a flavor of insufficiency of disclosure. It was squarely rejected by the court as follows:
It is recalled that, in order to determine whether a patent application relates to an invention falling within the scope of patents, it is necessary to examine the nature of the problem that the patent application proposes to solve and the solution it intends to provide therein. Patentability can relate only to solutions having a technical character, while an immediate technical result in the industrial field is necessary, even though this result is weak and of weak interest.
The patent in dispute, highlighting the shortcomings linked to the traditional method of making manual mixtures of liquid, sometimes dangerous for the user and with imprecise nicotine concentrations, intends to solve these difficulties by implementing a device for assembling and filling a liquid vial by methods providing for mechanical filling by means of supplying at least two different liquids through selection tools.
The patent, which does not simply describe results, therefore proposes a technical solution to solve a technical problem.
However, turning to the second ground of nullity, insufficiency, the court noted that the description of the patent was excessively empty:
The description is particularly limited as to the described device. It merely reproduces the wording of claim 1 of the patent to explain the only including figure which is extremely schematic.
No details are given on the nature of the filling means and the liquid supply means. The means of selection invoked are not described. No explanation is given on the means of calculating the nicotine concentration of the liquid mixture which are only mentioned.
The description does not include any embodiment of the invention which may clarify the claims.
Consequently, the patent is not sufficiently described for a person skilled in the art to be able to implement the invention (with the sole assistance of the description and the drawing).
Therefore, the patent was revoked in its entirety, without examining the other grounds of nullity of lack of novelty and lack of inventive step.
I have had a look at the patent at stake, and it is true that the description is rather succinct. The description is only two and half pages long, of which one page is dedicated to the prior art. In the rest of the description, the various “means” recited in claim 1 and its two dependent claims are mentioned, but without much in terms of additional explanations.
In other words, the court’s analysis of the patent appears to be correct. What they did not address, though, is common general knowledge. Could it somehow make up for the shortcomings of the description?
That said, even if sufficiency had been acknowledged (taking into account common general knowledge), there may have been serious issues concerning novelty and inventive step as well – which may be why the court directly went for the jugular.
In fact, looking at the preliminary search report issued by the EPO (on behalf of the INPI), all three claims as filed were deemed to lack novelty over a D1 document and to lack inventive step over a D2 document combined with a D3 document.
In its response to the search report, the applicant did not amend the claims and argued thusly:
The prior art is analyzed as follows:
Document D1 is an article published online and reviewing the state of the art in the field of electronic cigarettes and machines for filling vials with liquid for these cigarettes.
Document D1 does not disclose all the technical features recited in claim 1 of the invention.
Document D2 is a patent application publication relating to a method for filling vials for electronic cigarettes and the related device .
Document D2 does not disclose all the technical features recited in claim 1 of the invention.
Document D3 is a patent application publication describing a device for filling containers in the pharmaceutical field.
Document D3 does not disclose all the technical features recited in claim 1 of the invention.
These three documents are therefore not relevant for the appraisal of novelty.
The applicant’s comments on inventive step were of the same nature. As a next step, the patent was granted.
As I am sure all readers are well aware, the French patent statute has been recently amended by the PACTE law. One major aspect of the reform was to strengthen examination of national patent applications in France. The patent at stake was granted under the former, pre-PACTE provisions, which, obviously, made it possible to obtain a patent without spending much effort on setting out why exactly the invention deserved one.
I have heard, and even expressed myself, concerns that the PACTE reform may hurt local applicants wary of the higher costs typically associated with more serious, EPO-type prosecution.
On the other hand, maybe today’s decision could be viewed as an example of why raising the bar, while not a perfect solution, was in fact necessary.