A patent up in the air

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.

The ups and downs of patent litigation.

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!


CASE REFERENCE: Tribunal judiciaire de Paris, 3ème chambre 2ème section, December 4, 2020, Lufthansa Technik AG v. Thales Avionics Inc. et al., RG No. 18/04501.

Not a tough patent to crack

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.

An effect of the 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!


CASE REFERENCE: Tribunal judiciaire de Paris, 3ème chambre 3ème section, November 6, 2020, Terpan v. Action Solidaire développement & SAFE, RG No. 17/12393.

Seeing the patent half empty

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.

Liquid selecting means – so pre-Covid…

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.


CASE REFERENCE: Tribunal judiciaire de Paris, 3ème chambre 1ère section, February 6, 2020, Directbuy v. LCCF Distribution, RG No.18/02372.

Adding pepper to a tomato and broccoli salad

At this time, all readers are probably already aware of the issuance of opinion G 3/19 of the Enlarged Board of Appeal on May 14, 2020.

I know, twelve days is a long time in the internet era.

But trust me, Lionel Vial’s below report on this topic is worth reading.  Lionel loves making predictions, and his forecast on plants and animals obtained by essentially biological processes is that this hot topic is not about to cool down and that we are in for ongoing legal controversy – and possibly one or more future referrals.  

Is the illustrated cactus a plant obtained by an essentially biological process?

Here is Lionel’s report.

As this blog has consistently strained to keep pace with the seemingly never ending developments regarding the patentability of plant and animals obtained by essentially biological processes, as reported here, here and here, we felt compelled to comment on opinion G 3/19 of the Enlarged Board of Appeal (EBA) of the EPO, which was rendered on May 14, 2020.

To make a long story short, G 3/19 (Pepper) follows from a referral pursuant to Article 112(1)(b) EPC of the President of the EPO, itself following from decision T 1063/18 of Board of Appeal 3.3.04 of December 5, 2018, which decided that in accordance with Article 164(2) EPC, the interpretation of Article 53(b) EPC by the EBA in decisions G 2/12 (Tomatoes II) and G 2/13 (Broccoli II) prevailed over Rule 28(2) EPC.

In other words the Board of Appeal decided plants and animals obtained by essentially biological processes were not to be considered exceptions to patentability pursuant to Article 53(b) EPC in spite of Rule 28(2) EPC, which was introduced by a Decision of the Administrative Council of June 29, 2017 and entered into force on July 1, 2017. Rule 28(2) EPC provides that under Article 53(b) EPC, European patents shall not be granted in respect of plants or animals exclusively obtained by means of an essentially biological process.

There are two parts in opinion G 3/19, a part which relates to institutional provisions and a part which relates to substantive provisions.

Turning first to the substantive part of the opinion, which directly impacts daily practice at the EPO, the EBA, adopting a “dynamic interpretation” of Article 53(b) EPC for the circumstance, has abandoned the interpretation of Article 53(b) EPC given in decision G 2/12 and G 2/13, in the light of Rule 28(2) EPC.

As a consequence, this new understanding of Article 53(b) EPC has a negative effect on the allowability of product claims or product-by-process claims directed to plants, plant material or animals, if the claimed product is exclusively obtained by means of an essentially biological process or if the claimed process features define an essentially biological process.

It is to be noted that the EBA goes beyond the wording of Rule 28(2) EPC and also excludes plant material exclusively obtained by means of an essentially biological process. This may call for future clarification (see below).

Besides, in order to ensure legal certainty and to protect the legitimate interests of patent proprietors and applicants, the Enlarged Board ruled that the new interpretation of Article 53(b) EPC given in G 3/19 has no retroactive effect on European patents containing such claims which were granted before July 1, 2017, when Rule 28(2) EPC entered into force, or on pending European patent applications seeking protection for such claims which were filed or have a priority date before that date.

This contradicts the Decision of the Administrative Council which provided in its Article 3 that Rule 28(2) EPC applied to European patent applications filed on or after July 1, 2017, as well as to European patent applications and European patents pending at that time.

At this stage of the post, we should self-congratulate for having foreseen in our previous post on the subject of July 3, 2017 that the consequence of the Decision of the Administrative Council would be that plants and animals exclusively obtained by means of an essentially biological process are exceptions to patentability, but that the new Rule 28(2) EPC could not apply to patents and applications filed before July 1, 2017. However, to be frank, at that time we had not anticipated that a Board of Appeal would refuse to apply Rule 28(2) EPC pursuant to Article 164(2) EPC because it was in contradiction with the interpretation of Article 53(b) given by the EBA.

This brings us to the institutional part of the opinion of the EBA.

The EBA does not consider that there would be a general prohibition on adopting secondary legislation [by the Administrative Council] which concerns the interpretation of a provision of primary legislation given by itself (see point XXV.3.1).

Besides, the EBA considers that the exception to patentability brought by Rule 28(2) EPC is not incompatible with the wording of Article 53(b), which does not rule out this broader construction of the term “essentially biological processes for the production of plants or animals” and that Rule 28(2) EPC could be considered to reflect the Contracting States’ intention to give a special meaning to that term (see point XXVI.6).

As such, the new Rule 28(2) EPC has to be taken into account in the dynamic interpretation of Article 53(b) as seen above.

It follows that the content of Rule 28(2) EPC does not stand in contradiction with the new interpretation of Article 53(b) EPC given by the EBA and that there is no conflict between these provisions. Hence, Article 164(2) EPC is not relevant (see point XXVII of the opinion).

As far as we are concerned, we are not sure if it was ever the initial intent of those who drafted the EPC to have the substantive patent law provisions of the EPC, especially Chapter I Patentability, interpreted by the Implementing Regulation, but let’s not be more Catholic than the pope.

So, is this the end of tomatoes, broccoli or pepper decisions? Let us take another bet here: No, in our opinion, other questions will need to be answered by the Boards of appeal of the EPO and perhaps by the EBA.

Here is a short list, probably not exhaustive, of likely questions:

        • Can parts of plants, such as fruits, be considered to be exclusively obtained by means of an essentially biological process?
        • Are plants or animals which are obtained by means of an essentially biological process but which can also be obtained by a non-essentially biological process exceptions to patentability?
        • Are plants or animals which are obtained by a process comprising an essentially biological process and a further step of a technical nature which does not serve to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants exceptions to patentability?

Eventually, this leads us to our concluding riddle: After tomatoes, broccoli and pepper, what will be the name of the plant attached to the next decision, or opinion, of the EBA?


CASE REFERENCE: Enlarged Board of Appeal of the European Patent Office, G 3/19, May 14, 2020, Pepper (follow-up to “Tomatoes II” and “Broccoli II”).

Insufficiently disclosed or reasoned?

After almost 2 months spent buried at home, is there a more appropriate patent to discuss today than one relating to underground civil engineering equipment?

The patent in suit is FR 2941716, granted on April 22, 2011 to the French company SEMAP, and later limited in front of the INPI in July 2016.

SEMAP has been marketing underground chambers for the connection of e.g. telecom cables since 2013, via its distributor Frans Bonhomme.

The adverse party in the case is the British company Northstone (NI) Ltd., active in the same business, via its distributor PUM Plastique.

Since 2007, Northstone had been supplying the French telecom provider Orange with connection chambers. But in 2014, Orange revised the procurement of these goods and granted the entirety of the market to Frans Bonhomme – SEMAP’s distributor. Northstone learned on this occasion that Orange had concerns about a possible infringement of SEMAP’s FR’716 patent.

This led Northstone to initiate legal proceedings in March 2016, with a claim for nullity of the FR’716 patent, an auxiliary claim for a declaration of non-infringement, and an additional claim for damages due to disparagement.

An underground chamber suitable for the next confinement stage?

The plaintiff raised two grounds for nullity: insufficiency of disclosure and lack of inventive step.

Claim 1 of the patent as limited reads as follows:

Connection chamber device consisting in a rectangular cuboid part buried underground, closed on the upper side by one or more lids, and containing means for connecting wires or cables belonging to a distribution network, characterized in that it is constituted by the superposition, by interlocking means, of at least two elements, each obtained by molding a composite material, and each comprising a peripheral wall comprising two skins delimiting a space, as well as openings for the injection of concrete into said space, in that the upper element has means for adaptation of a frame for receiving one or more lids on its upper side, and in that the lower element comprises a bottom provided with water evacuation means, the bottom of the lower element being fixed thereto by interlocking means, which have the same profile as the interlocking means of the two lower and upper elements. 

The important part here is the presence of the openings for the injection of concrete. The nullity claimant argued that the disclosure of the patent was insufficient with respect to this particular feature.

The court, which we still need to get used to calling the TJ (tribunal judiciaire) instead of the TGI (tribunal de grande instance), made an important initial remark on the burden and standard of proof:

The party raising insufficiency of disclosure has the burden of proof. But the patentee needs to prove common general knowledge relied upon, which includes reference textbooks and general technical literature, but in principle not patent literature nor scientific articles. 

It is noteworthy that what is available as documentary evidence of common general knowledge seems to be the same for French courts as for the EPO.

In this case, the court did find that the disclosure was insufficient. Here is what it had to say on this matter:

The patent does not precisely disclose where and how the openings must be made, in order to pour concrete, nor the quality and consistence of the concrete that should be used. It does not discuss either the compatibility of the presence of “braced elements through the internal walls of the double skins” (p.2 l.5) or the presence of “transverse openings for passing wire or cables” with the injection of this concrete. 

At this stage I have mixed feelings about this assessment.

From an EPO perspective, an insufficiency objection presupposes serious doubts substantiated by verifiable facts. Here, the court only notes that some aspects are not discussed in the patent. But whether this does indeed raise difficulties for the skilled person is hard to determine based on such brief explanations.

It is possible that the claimant’s submissions contained more detailed and more convincing arguments, but if so they unfortunately did not find their way into the judgment.

What I do not have mixed feelings about, and what I actually take issue with, is the next part of the reasoning:

Even if, as suggested by SEMAP, the skilled person could do despite these shortcomings using common general knowledge, it remains that there is a blatant contradiction between claim 1 on the one hand, which in its characterizing portion mentions the existence of openings for pouring concrete, which thus appear to be an essential element of the invention, and the description of the patent on the other hand, which mentions towards the very end the advantageous possibility (and therefore not mandatory for implementing the invention) of injecting this material. In view of this contradiction, which does not make it possible for the skilled person to determine whether the presence of openings is necessarily required, or if it is only optional, the patent is insufficiently disclosed and must thus be revoked. 

This, with all due respect, seems to be over the top.

Of course the presence of the openings is required, since it is explicitly recited in claim 1. The mere fact that the word “advantageously” is used in the description to introduce these openings does not make any difference.

Assuming that there is indeed a contradiction between the claims and the description, it appears to be a merely formal one, not a substantial one leading to actual implementation difficulties.

And it could even be argued that there is no contradiction at all, since “advantageously(“de manière avantageuse“) could plausibly be understood as meaning that this is an advantage of the invention (not an optional feature of the invention).

Truth be told, it is not the first time that a French court has picked up on some unfortunate but truly minor drafting inaccuracy and has blown it out of proportion.

The patent being revoked on the ground of insufficiency, inventive step was not addressed.

As for the disparagement claim, it was rejected. There was evidence that Orange had been warned about a potential infringement of SEMAP’s patent. But, unfortunately for the plaintiff, based on the available paper trail, it was not proven that SEMAP was directly responsible for this patent infringement rumor.

There is thus cause for unhappiness for both parties, and it is hard to tell which one is more disgruntled – especially since the court, in a not-so-common move, did not award any cost order under article 700 CPC against either party.


Tribunal judiciaire de Paris, 3ème chambre 3ème section, January 10, 2020, Northstone (NI) Ltd. v. SEMPA SAS & SEMAP Composite SAS, RG No. 16/04839.