Betting the farm on inventive step

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.

A less intensive form of farming not requiring any ventilation system.

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.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, January 19, 2021, I-Tek v. Heughebaert Danièle et Philippe, RG No.18/28089.

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.


In the patent profession, cases have this way of always coming back at us.

You may work hard on a case and complete a difficult action, possibly with some sense of achievement (or relief). But then, a few months or years later, the case is back with a vengeance.

Happy about the way you have drafted your patent application, having navigated through all of the prior art and the inventor’s wishes? Wait until you get the search report. Enjoying your ride or flight back home after having been steam-rollered in opposition oral proceedings? Let’s meet again in 2 years’ time for the appeal. Satisfied that you have managed to digest the other party’s 300-page submissions just in time to file your reply in court? As well you should, although next time you will get 350 pages from them.

And so it is with this blog.

Almost exactly 2 years ago, I published a post on Ethypharm SAS v. Merck Sharp & Dohme Corp. 

Now that the appeal judgment has been handed down, it seems like a good time to revisit this litigation.

Most appeal judgments in France confirm the first instance decisions (it is said that the confirmation rate is around 80%). But this one did not confirm, which makes it all the more interesting.

As a reminder, the case pitches Ethypharm as a nullity plaintiff against Merck Sharp & Dohme Corp. (MSD), defendant and owner of the patent in suit, EP 1455756.

The first topic addressed in my previous post was the assessment of whether the action was time-barred. On this aspect, the appeal judges came to the same conclusion as their colleagues below, with a slightly different reasoning.

The TGI had decided that the starting point for the 5-year limitation period was the date of the EPO Board of appeal’s decision (July 7, 2014), announced during the oral proceedings, per which the patent under opposition was to be maintained in amended form.

As noted in my post, this finding was already a deviation from earlier case law.

The Paris Cour d’appel took an even later date as a starting point, namely the day on which the amended patent was published by the EPO (September 23, 2015). Said the court: “this is when the modified patent became opposable to third parties“.

An entirely reasonable finding, but which makes it more difficult than ever to know and predict how this limitation period should be computed in general. Case law keeps going all over the place. Fortunately, the statute has now been amended so as to take away this disastrous limitation period. We will still have to live with this legal mess, but less and less so.

The other notable point in my earlier post was that I felt there may be some contradiction in the TGI’s position regarding sufficiency on the one hand and inventive step on the other hand.

As a reminder which is probably quite necessary (at least for me), claim 1 reads as follows:

A nanoparticulate composition comprising the compound 2-(R)-(1-(R)-(3,5-bis(trifluoromethyl)phenyl)ethoxy)-3-(S)-(4-fluoro)phenyl-4-(3-(5-oxo-1H,4H-1,2,4-triazolo)methylmorpholine [a.k.a. aprepitant], or a pharmaceutically acceptable salt thereof, the compound having adsorbed on the surface thereof at least one surface stabilizer in an amount sufficient to maintain an effective average particle size of less than about 1000 nm; where “effective average particle size of less than about 1000 nm” means that at least 95% of the particles, by weight, have a particle size of less than about 1000 nm.

Ethypharm’s insufficiency challenge failed at first instance, as the court noted that there was a prior U.S. patent disclosing the so-called “Nanocrystal” method, for making nanoparticles with a surface modifier adsorbed thereon, having an average size of less than 400 nm. This Nanocrystal patent also taught that such nanoparticles improve the bioavailability of poorly water-soluble actives.

Ethypharm also argued lack of inventive step of claim 1 over this Nanocrystal patent, but the attack failed. The lower court held that the teaching of the Nanocrystal patent could not be applied in an obvious manner to aprepitant, and that there were many technical uncertainties.

I was not completely comfortable with the articulation between both positions.

Maybe the appeal judges also had trouble with this approach: while they agreed that the invention was sufficiently disclosed in the patent, they held that it lacked inventive step.

Starting with sufficiency, the court tackled plausibility, an essential phase of most pharma cases. The court repeated the now well-established French criterion per which the patent must “directly and unambiguously reflect the therapeutic effect” at stake. But then they added that “it is not systematically required that the description of the patent should contain tests, this condition is not required in case of a product claim”. A helpful comment, quite in line with the Boards of appeal’s stance on the matter.

The court further remarked that the patent in suit made reference to the U.S. Nanocrystal patent, which made it plausible for the skilled person that nanoparticulate aprepitant had improved bioavailability. Ethypharm did not demonstrate that this was not the case and thus did not discharge its burden of proof. In fact, it appears that some test reports were filed by the plaintiff to support the sufficiency challenge, but they were deemed inconclusive.

Turning then to inventive step, MSD’s case was that increasing bioavailability was a complex problem, and that there were many parameters to be taken into account.

To them, reducing the size of aprepitant particles to less than 1000 nm was not an approach that the skilled person would have used.

But the court relied on expert’s evidence showing that the dissolution rate is often a limiting factor in bioavailability; and that reducing the particle size of a drug makes it possible to increase the contact surface area between the undissolved active and the solvent, which generally increases the dissolution rate. Reference was made in particular to a 1982 textbook.

MSD countered that reducing the particle size to less than 1000 nm was not commonly practiced at the priority date, and had been little explored. The court was not persuaded. Some nanoparticulate drugs were tested already in the 1990s, and it had been proposed in a general manner that a poorly soluble drug could be reduced to a nano size. The Nanocrystal technology of course was also taken into consideration. Not just the patent, but also a press release by Elan Technologies, according to which their process was broadly applicable to many poorly soluble actives.

MSD further relied on a document showing that micronization of aprepitant did not give satisfactory results, so as to show that the skilled person would not have continued with this approach. But the document was an internal one and the skilled person would of course not have been aware of it.

In the end, the court did not deny that there were several possible approaches for the skilled person, but found that the nanoparticulate approach was nevertheless obvious to try:

Even if the skilled person knew of other methods and if the EP’299 patent only showed tests on three different active ingredients, he […] knew that nanonization improved the bioavailability of poorly soluble active substances and was thus incited, based on converging information […], to start research on this pathway in order to improve the bioavailability of aprepitant when used as a drug.

The Board of appeal decision per which the patent was maintained in amended form, namely T 210/11 (Board 3.3.07) reached an opposite conclusion of course:

It results that the skilled person, looking for a solution to the problem as defined above, faces multiple possible solutions to said problem of low bioavailability of aprepitant, and would not be conducted by the teaching of documents (5), (6) or (7) to the use of a nano-particulate composition of aprepitant.

Ethypharm was not a party to the opposition proceedings at the EPO, and the Paris court may have been presented with additional evidence that the Board did not see.

But my overall impression is that this is basically a matter of the court and the board placing the inventive step bar at different heights. This may be one of those grey-area cases, with complex facts to consider, which may very well go one way or the other depending on who looks at them.

This is the end of the story – for now, unless there is a cassation appeal and the case comes back to haunt this blog again.

Here it comes again.

CASE REFERENCE: Cour d’appel de Paris, pôle 5 chambre 1, October 29, 2019, SAS Ethypharm v. Merck Sharp & Dohme Corp., RG No.18/03876.

A technical silver lining

They say that every cloud has a silver lining.

Thinking about a recent Philips case in which not one, not two, but three patents were revoked by the Paris Tribunal de grande instance (TGI), this saying seems quite fitting.

From the perspective of IP right holders, the dark cloud is of course that we have just been presented with yet another confirmation that patent validity is severely appraised in France. But the silver lining is that, although software patents were at stake, the court did not strike them down for just being that, but on the contrary fully acknowledged the technical nature of the inventions.

The case at hand was certainly a big one for Philips.

Not only were three patents involved, but there were also parallel proceedings against several unrelated defendants.

So much so that there were in fact four judgments issued on the same day: one pitching Philips against HTC, another against Asus, another against Archos and the last one against Wiko.

Philips reproached all defendants for not joining their “Touch enabled device” license program, and retaliated by filing an infringement action based on European patents No. EP 1384134, EP 0888687 and EP 1571988.

The four judgments look substantially identical, so it should be sufficient to look at only one of them.

Claim 1 of EP’134 reads as follows:

A data processing apparatus having a user interface assisting in searching for information from an ordered list a data array, the apparatus comprising:
an array scroller responsive to user actuation; and
a helper character-generator, actuated by continued user actuation of the array, the helper character generator being operative to display a helper character representative of a portion in the list being scrolled.

In brief, this is a user interface invention. The context is that of a long list of elements. In order to facilitate the retrieval of one element in the list by the user, a so-called “helper character” appears. This helper character may represent e.g. a first letter of a name or a first digit of a telephone number. It is thus representative of a cluster of entries in the list. By scrolling from helper character to helper character, the user may select a desired cluster, and then browse within this cluster instead of browsing through the entire list.

Choosing the right song in a menu, a critical decision to make.

The defendants argued that this was a mere presentation of information, and thus not an invention under art. 52 EPC.

Here is the court’s position on this objection:

Displaying the helper character involves continuous actuation by the user in a scrolling array. 

The patent thus relies on the user taking an active part, via an improved interface interacting with him, thus creating a particular technical effect due to the actuation by the user, allowing a faster choice in an array of elements. 

By combining several modes of scrolling down a list of elements, the patent teaches an adaptive user interface for searching and displaying, and thus does not just present information “as such”. It should also be emphasized that the purpose of the invention is to facilitate the selection of an element in a large set of data, on small size devices, taking into account their specific ergonomic design. 

Therefore, the EP’134 patent undeniably implements technical means to obtain a technical solution to a technical problem. Its subject-matter is thus patentable. 

I asked my partner Aujain Eghbali, who is an ace at computer-implemented inventions, what we can make of this.

His main comment was that this is the same type of reasoning that the EPO could have made. He added that the court’s reasoning is in fact quite patent-friendly even by EPO standards.

In particular, the court relied on the ergonomic character of the human/machine interface when assessing the technical nature of the invention. The Boards of appeal of the EPO have sometimes adopted a similar approach (see T 1779/14) but the Guidelines for examination do not take any clear position on the technical nature of such innovations. Section G-II, 3.7.1 suggests that a “physical ergonomic advantage” could be considered as a technical contribution, but specifically in relation with user input.

The court also took note of a statement in the description of the patent, per which human-machine interaction is particularly challenging when the device is small, due to the physiology of the user. Although effects relying on human physiology are acknowledged in the EPO Guidelines (section G-II, 3.7), they are not commonly accepted by examiners as having a technical character, Aujain said.

Going back to the judgment, the EP’134 patent was thus found to meet the requirements of article 52 EPC.

Further objections of insufficiency of disclosure and lack of novelty were also rejected. But the patent finally died of lack of inventive step.

However, it is important to note that all features of claim 1 were fully taken into account in the inventive step reasoning, in keeping with the court’s finding that the claim related to a technical solution to a technical problem.

The court’s negative opinion on the patent was thus fully based on relevant disclosures identified in the prior art. So, this is your good old, traditional, prior art-based lack of inventive step, if you will; not a this-is-not-technical-enough lack of inventive step.

In more detail:

The EP’036 document teaches that, upon continuous actuation of the scrolling key, the first names are sequentially displayed, in the alphabetic order, for each letter, thus providing a search tool. 

Starting from this search tool disclosed in EP’036, the skilled person, namely an electrical engineer experienced in designing user interfaces for portable electronic devices, confronted with the problem of selecting an element in a scrolling list on a small size screen, would achieve claim 1 of the EP’134 patent, since the search tool of the EP’036 prior art (underlining the first letter of a name) is only a visual alternative to the generation of a help character, which is anyway taught by the US’949 document. 

The EP’036 document also taught scrolling cluster by cluster, allowing the user, by maintaining the scrolling key pressed, to go from letter to letter in the directory, without having to go through all names starting with the same letter. 

Therefore, the features of claim 1 of the EP’134 patent derive from the state of the art. 

Next up was EP’687, another user-interface patent.

See in particular claim 1:

An electronic device comprising:
– at least one display;
– a controller arranged to cause the display to show a rotating menu comprising a plurality of menu options,
which menu is disposed off centre in the display so that at least one option is rotatable off the display at any one time, whereby an arbitrary number of options may be added to the menu without changing its format.

Again, the court fully acknowledged the technical character of the invention:

[…] The EP’687 patent aims at improving a user interface for a screen. To this end, it allows displaying a menu comprising a plurality of options as well as adding an arbitrary number of options to the menu without changing its format. It thus provides a better identification of options. 

The objective of the EP’687 patent is to facilitate adding more articles to the menu without making the display more complex, as long as at least one option in the menu is out of the screen due to the rotating menu being off-centered. 

Therefore, the patent makes it possible for the user to interact with the device, while adding any number of options to the menu, without modifying the format and while keeping their own character making their identification easier.

Consequently, the EP’687 patent, which ensures a better identification of menu options for the user, by means of a controller which combines a particular option display format and a double function of rotation and addition of options, obviously implements technical means to provide a technical solution to a technical problem. Its subject-matter is thus patentable. 

Like for the previous patent, Philips was also able to fend off insufficiency and lack of novelty challenges, but then stumbled on inventive step, as the prior art was deemed to be very similar to the invention.

The third patent was directed to an activity monitor. Its technical character was not challenged. It was revoked for lack of inventive step all the same.

In summary, the present case seems to confirm a trend recently seen in a Thales decision and on the contrary to drift further away from past case law in which the stance on patent eligibility was considerably stricter.

How apropos then that the INPI (French patent office) has just published an updated version of its examination guidelines containing two new sections C.VII.1.3.1 and C.VII.1.3.2 on computer-implemented inventions.

One section is dedicated to CAD and computer simulations. The other one relates to AI. Both provide additional guidance as to what should be considered technical or non-technical, again quite in line with the EPO approach. Maybe the next revision will contain some additional thoughts on graphical user interfaces?

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, July 11, 2019, Koninklijke Philips NV v. SAS HTC France Corporation & HTC Corporation, RG No. 16/02073.

Would a “could” suffice?

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

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

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

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

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

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

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

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

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

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

Here is claim 1 of the patent:

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

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

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

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

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

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

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

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

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

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

Locked – unlocked

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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