Will case law crystallize?

Today, it is back again to one of the topics regularly addressed on this blog, namely the statute of limitations for patent nullity actions in France (but not only!).

Matthieu Dhenne was kind enough to send me a brand new decision from the Paris Tribunal de grande instance (TGI) which, once more, sheds new light on this thorny issue.

The patent at stake is the French part of EP 1455756, to Merck Sharp & Dohme Corp. (MSD). The patent was granted on July 9, 2008. It was opposed by two generic drug manufacturers. At first instance, the patent was maintained in amended form, according to a decision dated December 3, 2010. The opponents appealed, and their appeals were dismissed by the Board of appeal in a decision dated July 17, 2014. The publication of the amended patent took place on September 23, 2015.

Soon thereafter, on December 2, 2015, Ethypharm filed a nullity action with the Paris TGI, requesting that the French part of the patent should be revoked.

Quite predictably, MSD argued that the nullity action was time-barred.

If one directly applied the recent case law of the Paris Cour d’appel (discussed here), this should be a winning argument. Indeed, the Cour d’appel has proposed that the five year-limitation period be computed from the date of grant of the patent. With this in mind, in this case, the limitation period would have ended on July 9, 2013.

But you and I know that things are not that straightforward, as the Paris TGI does not follow the case law of the upper court, and generally favors an in concreto determination of the starting point for the limitation period (see a recent example here).

Yet, in today’s ruling you will not find any protracted discussion of an in concreto starting point. Instead, the issue is disposed of in just one paragraph:

[…] It is only on [July, 7, 2014, i.e. the date of the Board of appeal’s decision] that the drafting of the patent which is sought to be revoked was stabilized and that Ethypharm was able to precisely know the content of the claims of said patent as well as all the facts making it possible for them to act, so that the action is not time-barred and is admissible. 

I must say I have mixed feelings about this.

My initial reaction was, oh no, you must be kidding me, there is now yet another way of determining the starting point for the limitation period? This is not legal uncertainty anymore, this is legal chaos.

A few seconds later, I thought, well yes, it does make sense after all, you can’t possibly be expected to shoot at a moving target. When a patent is modified during opposition proceedings, any appeal filed at the EPO has a suspensive effect, and thus it is only once the appeal proceedings are terminated that the content of the patent is final.

A party must act within five years from the date at which they knew or should have known that the patent at stake is a possible impediment for their current or future business activities, or else be time-barred (this is more or less what I understand to be the TGI’s usual position). And how can a party know this before the patent is even its final form?

However, this ruling raises more questions than it provides answers.

What if an opposition is rejected by the opposition division and the patent thus maintained as granted instead of as amended? Should the reasoning be the same? What if an opposition is filed by a straw man (which is allowable at the EPO) and there is thus an unverifiable suspicion that the nullity claimant itself may be the true opponent, in an attempt to artificially extend the limitation period by several years?

In his message to me, Matthieu Dhenne also noted that the court’s reasoning could be applicable to other situations: limitation proceedings, but also a prior nullity suit brought forward by a third party. Taking this one step further, he observed that a patent right can in fact be modified at any time and is therefore theoretically never “stabilized” until it expires (sometimes, it can even be retroactively “stabilized” only after its expiry). He thus suggested that the full consequence of the court’s reasoning should be that the limitation period can only start running at the expiry of the patent, so that the well-identified drawbacks of this limitation period should in practice never occur.

Matthieu added that there would thus be a complete parallelism between the limitation period for infringement actions and nullity actions. Accordingly, invalid patents would not be able to unduly hinder free competition.

Definitely an interesting suggestion, but is it really what the TGI had in mind? I am quite sure we can expect more surprises in future decisions.

Apart from this, the decision is worth the read beyond the admissibility part.

First, it turns out that the nullity claim was held ill-founded on the merits and thus dismissed. As the patent in suit is a pharma patent, this is already quite remarkable. A majority of pharma patents which are litigated in this country are revoked one way or another.

Second, the decision tackles the very interesting issue of plausibility.

There has been a significant trend in France for patents to be revoked when they are held to be of a speculative nature. See for instance previous posts here, here and there.

In the present case, Ethypharm argued that the patent was of the speculative kind, which resulted in insufficiency of disclosure and lack of inventive step.

Now may be a good time to have a look at claim 1:

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, 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.

This drug composition is useful in the treatment of nausea and vomiting, especially those induced by a chemotherapeutic treatment. The short name of the active compound is aprepitant. According to the patent, the technical problem at stake was to improve the bioavailability of aprepitant. This is stated in the patent but no experimental test results are present, which led Ethypharm to consider that there was no evidence in the patent that the technical problem was properly solved.

Ethypharm also tried to use some of MSD’s posterior testing against them, by claiming that they proved that there were features missing in the patent which were essential for successfully implementing the invention.

The court was not convinced that there were indeed such essential features missing. The court also noted that there was a reference in the patent in suit to 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.

Thus, said the court, the improvement in bioavailability provided by the nanoparticle form of aprepitant was plausible.

In such a case, the court continued, evidence which is external to the patent can indeed be taken into consideration for demonstrating that the technical problem is solved. The court then reviewed a number of articles and reports and was satisfied that the technical effect of improving bioavailability was well achieved.

In summary, this is an important decision for the fine-tuning of the appraisal of a speculative patent-type objection.

To me, the take-away message is that a reference in a patent to a prior art document disclosing a technical effect provides some plausibility that the technical effect is indeed achieved.

From drug crystals to crystal balls: could they possibly help us decipher future case law?

The patent survived other attacks of insufficiency of disclosure, extension of subject-matter and lack of inventive step. Quite remarkably, the main claim was in particular found to be non-obvious over the “Nanocrystal ” European patent of the same family as the U.S. patent mentioned above, which was used for supporting the plausibility of the technical effect.

The court held that:

[The “Nanocrystal” prior art] does not disclose chemical structures or features of drugs intended to be used by this process. It only mentions that it can be implemented with a large variety of medicinal substances, the substance having to be poorly soluble, that is less than 10 mg/mL, so that the skilled person does not know which actives […] can be tested with a reasonable expectation of success. He was all the less incited to do so that in December 2001, i.e. almost ten years after the priority date of [the Nanocrystal patent], the nanonization process, which has a number of constraints (in particular the heat released during milling may change the structure of the active substance and reduction to a very small size may create a problem of chemical and physical stability), was used on only four active substances (danazol, steroid A, compound WIN 63,394 and naproxene) with a verified effect on bioavailability […]. 

I have the uneasy feeling that there may be a contradiction here between the sufficiency and inventive step prongs of the court’s reasoning.

If the teaching of the Nanocrystal patent cannot be applied in an obvious manner to aprepitant, and if there are many technical uncertainties, why is it then not necessary for the MSD patent to contain evidence in the form of experimental tests showing that the process can in fact be effectively applied to this particular drug?

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 2ème section, January 26, 2018, Ethypharm SAS v. Merck Sharp & Dohme Corp., RG No. 16/01225.

A patent in the cross hairs

Frankly, I am not so fond of the finasteride litigation, previously discussed here, here and there. But this may simply have something to do with the fact that I am sensitive to the issue of hair loss.

That said, I am grateful to Denis Schertenleib for drawing my attention to the cassation ruling issued a few days ago on this topic.

As a reminder, European patent No. EP 0724444 to Merck Sharp & Dohme Corp. relates to the second medical use of finasteride for the treatment of androgenic alopecia, with a particular dosage regimen.

The French part of EP’744 was declared invalid twice by the Paris Cour d’appel: the first time for lack of novelty (what I would call the Actavis part of the lawsuit), and the second time for insufficiency of disclosure (the Teva part of the lawsuit).

Merck did not bow and tried its luck in front of the Cour de cassation – to no avail.

The cassation ruling (Teva part) is interesting in that it confirms the sufficiency standard to be applied in the field of therapeutic inventions.

Merck argued that the appeal decision (which, again, can be found on this page) was legally incorrect on 9 different grounds – or “branches“, as they are nicely called in the supreme court parlance. As I tend to find cassation decisions unreadable, I will try to reformulate these grounds in my own words.

On a general standpoint:

1. The question that the appeal judges should have addressed is only whether the drug with the right dosage could be manufactured by the skilled person.

2. The appeal judges mixed up sufficiency with novelty and inventive step, as they examined whether there was a “specific technical teaching” in the patent, and wrongly looked for a comparison of the invention with the state of the art in the patent. They should have focused on whether the information in the patent made it plausible that the claimed dosage was therapeutically effective.

Example 4 of EP’444 describes a protocol for measuring haircount in subjects. As I commented in my earlier post, its conclusion is rather vague and unspecific in terms of technical effect achieved, which led it to be disregarded by the Cour d’appel. The following grounds were raised in relation with this example 4:

3. The appeal judges failed to realize that the example 4 shows the technical effect linked to the claimed low dosage of finasteride.

4. The appeal judges said that clinical tests are not required for showing a therapeutic use, but then contradicted themselves when they disregarded the example as not corresponding to an actual clinical test.

5. The appeal judges failed to realize that the example provides a methodology making it possible for the skilled person to verify the claimed therapeutic use.

As for example 5 of the patent, it is supposed to show a reduction in the amount of dihydro testosterone (DHT) in the scalp of patients taking finasteride. But it is also quite imprecise and kind of looks like a paper example (just like example 4). The following grounds were raised in relation with this example 5:

6. The same contradiction already mentioned in item 4. happened again when the appeal judges discussed example 5.

7. The appeal judges failed to realize that example 5 shows that the claimed dosage has an effect on the metabolic mechanism involved in alopecia – so that example 5 indirectly also supports the technical effect linked to the claimed low dosage of finasteride.

8. The appeal judges held that the example was doubtful in view of the leaflet of the Propecia drug, without checking if this leaflet was available to the skilled person at the priority date.

9. The example mentions a reduction in the amount of DHT in the scalp of patients after 6 weeks, which is why the Cour d’appel found it doubtful, as the effect on hair growth is supposed to occur after 12 weeks at least. But the court should have realized that this is normal as hair growth can only occur after the reduction in the amount of DHT.

Is Santa going to mail some interesting decisions to me this Christmas?

As usual, the Cour de cassation did not address in a detailed manner each criticism and basically simply stated that the Cour d’appel was right and that the grounds of cassation are ill-founded.

In particular, there is (alas) no general discussion on the level of plausibility required from a patent, and on the conditions under which post-published evidence may be relied upon.

Items No.8 and 9 in the above list were treated slightly differently, though. Those were found to relate to a redundant ground (“un moyen surabondant“) in the appeal decision, which means that the Cour de cassation refrained from stating whether they are correct or not, as anyway there are enough correct grounds in the appeal decision for it to be confirmed.

The key part of the ruling is translated in its entirety below (I have taken the liberty of dividing up the never-ending single sentence of the ruling into hopefully more intelligible bits):

[…] Firstly, when a claim relates to a [second] therapeutic application of a substance or composition, obtaining this therapeutic effect is a functional technical feature of the claim. Therefore, in order to meet the requirement of sufficiency of disclosure, it is not necessary to clinically demonstrate this technical effect; but the patent application must directly and unambiguously reflect the claimed therapeutic application, so that the skilled person can understand, based on commonly accepted models, that the results reflect this therapeutic application. 

The decision mentions first that, regarding claim 1 […], the description does not indicate what the technical advantage or effect resulting from this type of oral administration is. It does not contain any element showing the potential efficacy of any finasteride dosage, and does not comprise any information on the new effect of the claimed dosage and the particular properties of this new therapeutic application. The dosage between 0.05 and 1.0 mg is unrelated to the administration rate and patient body weight. Then, according to the decision, the description of the patent only mentions the “surprising and unexpected” discovery of this new therapeutic application, without describing its particular pharmacological properties relative to the state of the art, which only derive from an arbitrary selection. In view of these findings, the Cour d’appel was in a position to deduce that the patent application did not directly and unambiguously reflect the claimed therapeutic applications; and that the skilled person unaware of any specific technical teaching was not able to reproduce the invention and had to implement a research program him/herself; so that [claims 1 to 3 were] insufficiently disclosed.  

Secondly, regarding the the examples cited in the description of the patent, the appeal decision […] disregarded examples 1 and 2, which relate to the preparation of finasteride, the manufacturing process of which was known for years; and example 3, which does not relate to androgenic alopecia.

[The decision] notes on the one hand that example 4 discloses a photographic protocol for detecting hair growth by counting on a period of twelve months and holds that, since [the example] does not give any information on the conditions of a potential test and does neither describe the experiments nor the technical effect resulting from the lowering of the claimed dosage relative to prior art dosages, this example appears to be a measurement method and cannot be considered as a report on a trial. 

[The decision] notes on the other hand that example 5 does not provide any detail on the experimentation or protocol applied when finasteride is administered for six weeks. The results have shown a significant reduction in the amount of DHT but have not established hair growth or the stop of hair loss. [The decision] holds that, in the absence of any comparison criterion, whereas the reduction in DHT levels in scalp due to the administration of finasteride was already known, this example does not make it possible to compare the effects of the claimed dosage relative to a higher dosage, of the order of 5 mg, disclosed in the state of the art. 

Based on these findings, the Cour d’appel did not misrepresent the patent and did not require a clinical demonstration of the therapeutic effect of the new dosage. [Thus, the Cour d’appel rightly] considered that these examples did not directly and unambiguously reflect the claimed therapeutic application and could not remedy its insufficiency of disclosure as already noted above.

This approval of the approach taken by the appeal judges is of course important for all practitioners in the pharma field.

The trend is now once and for all confirmed, per which patents considered as “paper patentsi.e. seen as overly speculative at the date of filing, will not fare well in France.

Before concluding this post and wishing all readers happy holidays, a final word on two procedural aspects.

First, Merck also criticized the appeal decision for holding Teva’s nullity claim admissible, although, when the first instance judgment was issued in the Teva part of the lawsuit, the patent had already been revoked by the Tribunal de grande instance in the Actavis part of the lawsuit.

The Cour de cassation held that:

[…] The Cour d’appel rightly stated that the decision revoking a patent has an absolute effect [with respect to third parties] only once it is res judicata, that the [Actavis first instance] judgment was under appeal, and deduced that the Teva companies were admissible in seeking the revocation of the same patent. 

This is a welcome clarification.

The last point is that Merck of course also filed a cassation appeal against the other appeal decision in which the same patent was revoked for lack of novelty, as requested by Actavis. Here, the Cour de cassation trod the easiest path and simply dismissed the cassation appeal in a distinct ruling by noting that the patent claims have now been definitely held invalid in view of the Teva ruling.

Too bad for us commentators, as the Actavis part of the lawsuit also involved some interesting legal points.

With that, as promised, I wish all readers happy holidays.

CASE REFERENCE: Cour de cassation, chambre commerciale, December 6, 2017, Merck Sharp & Dohme Corp. v. Teva Pharmaceutical Industries Ltd. & Teva santé, pourvoi No. 15-19726. 

An eccentricity issue

Judgments in which a mechanical engineering patent is revoked for insufficiency of disclosure are few and far between. Typically, insufficiency problems tend to arise in the context of chemical or medicinal inventions – although they are not unheard of with mechanical inventions.

So, today’s decision may be viewed as somewhat eccentric in this respect. But the best part is that the feature which was found to be problematic revolves around… an eccentric (mechanism). End of pun.

In the case at hand, the patent (EP 1023111) was commonly owned by its three inventors, and licensed to a company called LPG Systems. LPG are the initials of one of the inventors, who, not unexpectedly, was a partner of the licensee.

At some point of time, things must have gone wrong, as LPG put an end to the license agreement. As a result, the two other owners of the patent filed suit for wrongful termination. And as a counter-strike, LPG filed a patent nullity action.

The patent was revoked for insufficiency of disclosure in first instance. This was confirmed in a judgment by the Cour d’appel de Paris dated September 9, 2014. The two disgruntled patent proprietors filed an appeal on points to law with the Cour de cassation (judicial supreme court). This final appeal was dismissed in a judgment dated October 4, 2016.

In order to properly understand what was wrong with this patent, it is easier to go back to the 2014 appeal ruling, as judgments from the Cour de cassation have this tendency to be somewhat cryptic and in particular to only partially recall the relevant facts.

The patent at stake relates to an apparatus for restoring the balance of the human body.

Due to various medical conditions, patients sometimes need to have their balance corrected or restored. This can be achieved owing to a training apparatus, such as the one claimed in the patent:

Apparatus for restoring the balance of the human body, consisting essentially of a mobile circular platform intended to support the subject to be treated and which can have an oscillatory movement imparted to it, and in which the said platform has its oscillatory movement imparted to it about a central support point, this movement being combined with a reciprocating rotational movement, by means of a single motor connected to transmission means and without the intervention of the patientthis being in the plane of the platform supporting the subject, about the geometric axis perpendicular to the said platform and passing through its centre, the amplitude and speed both of the oscillation and of the rotation being adjustable and capable of being varied during use, means being associated with the said apparatus so that the subject can be held on the platform either in a standing position or in a crouched or seated position.

The expressions highlighted above are probably the most significant ones for the decision.

LPG claimed that the patent at stake does not disclose appropriate means for adjusting the amplitude of the oscillation and rotation during use and that the skilled person would not be able to implement this feature of the claim.

The Cour d’appel agreed. The court reviewed the description of the patent. Said description does disclose a mechanism for providing the claimed oscillatory and rotary movement of the platform: the platform is mounted at the extremity of a shaft of a cylinder, which imparts the desired oscillations. And rotation can be generated owing to another shaft connected to an eccentric.

The court stated that both the rotation amplitude and the oscillation amplitude could be adjusted by acting on respective relevant parts (cylinder shaft and eccentric). However, it was only possible to do so when the apparatus was not working. But the claim required the possibility to adjust this amplitude in use. Such possibility was not taught in the patent.

The appellants submitted two expert opinions aiming at showing possible ways to implement the claimed feature. The description of the opinions is very brief in the judgment. It seems that the first one suggested to use an electric or hydraulic cylinder for the eccentric itself, so that the patient could actuate it during use; and that the second one offered to mount an electric or hydraulic cylinder on the eccentric so as to actuate it and rotate with it.

The court dismissed these expert opinions. They noted that the first opinion called for the intervention of the patient; and that both relied on the presence of an additional motor. And this was not consistent with the teaching of the patent. They also added that the technical solutions contemplated in the expert opinions required more than mere implementation steps.

Eccentricity can sometimes be brilliant.
Eccentricity can sometimes be brilliant.

In order to challenge an appeal judgment in front of the Cour de cassation, it must be shown that the law was not correctly applied. This is seldom an easy task. It is often said that appeal courts are skilled in drafting judgments relying almost entirely on facts (and not on any particular interpretation of the law) in order to reduce the risk of being overturned. Conversely, cassation appellants tend to artificially disguise arguments that the Cour d’appel erroneously assessed facts as arguments that the Cour d’appel violated the law. An interesting game indeed.

In the present case, first the appellants stated that the Cour d’appel had come up with an argument of its own (which they are not supposed to do) without hearing the parties on it (which they are not supposed to do either). The argument in question was that the adjustment at stake could not possibly be made by the patient him/herself. The Cour de cassation disagreed because this argument made by the appellate judges was actually derivable from the main claim itself.

Second, the appellants submitted that the patent does not require the claimed adjustment to be made without the intervention of the patient, and with a single motor – as asserted by the appellate judges. The main claim requires on the one hand that the oscillatory movement is “combined with a reciprocating rotational movement, by means of a single motor“; and on the other hand that “the amplitude and speed both of the oscillation and of the rotation [are] adjustable and capable of being varied during use“.

In other words, there is no explicit limitation in the claim to an adjustment by means of a single motor, without any intervention of the patient. Paragraph [0026] of the description mentions an “oscillatory movement around a central support point, which is combined with an alternate rotation movement, owing to a single motor connected to transmission means and without any intervention of the patient”. Here again, it is not explicitly stated that the requirements of a single motor and of the absence of intervention of a patient apply to the adjustment of the movement.

Here is how the cassation judges dealt with the argument:

This description is not clear and accurate. It does not mention that the single motor does not provide the adjustment of the speed and amplitude of oscillation or of the alternate rotation. Nor does it mention that another means should be used for that purpose. The Cour d’appel held that the addition of a supplementary motor was contrary to the teaching of the patent based on an interpretation which had to be made due to the ambiguity of the description – and therefore the decision was correctly reasoned. 

In other words, the appellate judges were at a liberty to interpret the claim in a restrictive manner because the description of the patent did not clearly and unambiguously lead to a different interpretation. Again, it is not the Cour de cassation’s job to redo the work done by the Cour d’appel. They only focus on possible errors of law. I figure that a blatant interpretation mistake could be considered as misapplying the law, but this was not the case here.

The appellants also blamed the Cour d’appel with not sufficiently taking into account the experts’ opinions in its reasoning. But the Cour de cassation considered that the reasoning was sufficient: based on the above claim interpretation, the movement adjustment was supposed to be performed owing to the single motor – according to the patent. Since the experts’ opinions relied on an additional motor, the Cour d’appel did not err in rejecting those.

I guess this is one of those cases where it is in fact a lack of clarity of the claims which made the patent fall down the abyss of insufficiency of disclosure.

Probably not that eccentric an outcome, if you ask a chemical engineering patent attorney.

CASE REFERENCE: Cour de cassation, ch. com., October 4, 2016, Bardon & Tudico v. Guitay & LPG Systems, appeal No. Y 15-12.294.

Defense ripped to shreds

Today’s case relates to a shredder for plant materials. And while I was browsing online desperately looking for some kind of introductory witticism for this post, I came across a fiction character called the Shredder, to whom a very detailed Wikipedia page is dedicated. It turns out the Shredder is a villain in the Teenage Mutant Ninja Turtles comics – which I must confess I really do not know anything about.

It is actually fascinating to find out that the Shredder’s webpage is significantly longer than the Wikipedia page on, say, the European Patent Convention. Just to put things into perspective.

So back to what I might indeed attempt to comment on, i.e. a dispute between Société d’Equipements pour l’Environnement (or SEE), owner of a French patent No. FR 2795661 and a European patent No. EP 1066883 (EP’883 claiming the priority of FR’661), and Rabaud, against which the two patents were asserted.

There are at least four different points which are of interest in the judgment handed down by the Cour d’appel de Paris on this case:

  • The invalidation of several claims of FR’661 for insufficiency of disclosure.
  • The finding that Rabaud’s shredder called Xylomix infringes the French part of claim 1 of EP’883 by equivalence.
  • An additional finding of contributory infringement.
  • The rejection of a false marking claim.

Let’s have a look at the invalidity issue first. Claim 1 of the priority patent FR’661 is quite different from claim 1 of the subsequent patent EP’883, which is why this invalidity issue only applies to the former.

Claim 1 of FR’661 concerns a shredder having a shredding rotor, wherein, in particular, “the rotor is suitable for creating an air flow for ejecting matter towards the ejection zone“.

The court noted that the claim does not define how the air flow is created, and that the description of the patent is also silent on this. Specific features seem to be present in the drawings, but without any explanation:

[….] The drawings do not make it possible for the skilled person to understand what the means for creating the air flow in claim 1 is, since the inverted S-shaped line which can be seen on Figures 2 to 4 and the inverted S-shaped double line which can be seen on Figure 6 are not captioned, unlike the other elements making up the rotor, and do not make it possible to interpret claim 1 in such a way that the means is made of ventilation blades. 

[…] In fact, on the other hand, this ventilation means is precisely described in claim 1 of [EP’883], at [paragraphs] [0033] to [0035] of the description, and is captioned in Figures 2 to 4 and 6 (with reference 16) and reproduced in three-dimensional view on Figure 7, which implies that without this description of the means for creating the air flow, the skilled person was not able to implement the invention simply based on common general knowledge. 

A finding of insufficiency of disclosure is not a common thing. And when this finding is in the mechanical field, it is all the more uncommon. Even if the ventilation blades were not mentioned in FR’661, it may not be too difficult for the skilled person to think of such blades as a possible means for generating an air flow. So, was there something specific about the shape or positioning of the ventilation blades which was not obvious to achieve for the skilled person?

The judgment does not tell. But clearly the more detailed explanations in the European patent were held against the French patent. So, drafters had better be careful about leaving claimed functional features unexplained in the description.

See how easy it is to create an air flow?
See how easy it is to create an air flow?

After invalidating claim 1 of the French patent (as well as all other dependent claims asserted by SEE, for the same reason), the court turned to the European patent. Apparently no invalidity defense was raised by Rabaud, which was of course of a great help to the patent proprietor.

Rabaud focused on a non-infringement defense. 

Claim 1 of EP’883 reads as follows (adding the same feature analysis taken up by the court):

a. A shredder, more particularly intended for reducing plants or other materials,

b. comprising a feeding section

c. and an ejection section,

d. between which is arranged a chamber provided with shredding means

e. which consist of a rotor including specific tools depending on the type of plants or materials to be shredded, in alternating positions,

f. i.e.: cutting tools intended for shredding a type of plants,

g. and defibring and bursting tools intended for shredding other types of hard plants or materials,

characterized in that,

h. on the same rotor are also positioned ventilation means, positioned with respect to said cutting tools, so as to define the gauge of the chunks of plants or other materials cut by said cutting tools, allowing the discharge of the shredded plants and other materials out of said chamber,

and in that,

i. in said shredder, said cutting tools, said defibring and bursting tools and said ventilation means are positioned with respect to each other, depending on the direction of the rotor rotation, so as to successively allow the defibring or the bursting operation, the definition of the gauge of the chunks to be cut, the cutting and the discharge of the shredded plants or other materials, 

j. so as to serve as a multipurpose active drum. 

The defendant argued that features h. and i. were not reproduced by the Xylomix apparatus.

Regarding feature i., Rabaud argued that Xylomix’ flails (defibring and bursting tools) do not act on the plant materials before its knives (cutting tools), whereas such a particular order of operation is required by claim 1. But the court was not convinced, especially because they said the order of operation is defined more particularly in a dependent claim 6, so that claim 1 is broader.

The judgment does not specifically address the word “successively” in feature i., which may support Rabaud’s defense. My understanding is that the court interpreted this adverb as simply introducing the various operations, as opposed to requiring a certain order between them. Such interpretation may be debatable. Also, depending claim 6 further specifies driving sections for the flails and knives and does not just add an order of operation to what is recited in claim 1.

As for feature h., the infringement theory was based on equivalence. As a reminder, under French practice and as recalled in the judgment itself:

Two means are held equivalent when, although they are of a different structure, they have the same function for achieving a result of a similar nature or degree. 

In the Xylomix apparatus, the gauge is obtained by way of dedicated metal sheets and not by the ventilation means as required by feature h. Nevertheless, the court acknowledged that the gauge function is achieved in the Xylomix apparatus like in the patent and that the result is of a similar nature. Therefore, there was infringement by equivalence.

One effective defense against the doctrine of equivalence generally consists in arguing that the doctrine does not apply because the claimed function is known from the prior art. But in this case it seems that the defendant did not rely on any prior art at all, which is why the court did not have to examine this particular aspect.

The third interesting point in the judgment relates to contributory infringement. In addition to Xylomix devices having both flails and knives, which were found to be a direct infringement of the patent, Rabaud also marketed “simple” Xylomix devices, with only knives or only flails. Also these simple devices were held to infringe under article L. 613-4 Code de la propriété intellectuelle. Said the court:

[…] The Xylomix shredder brochure intended for Rabaud’s customers, which was seized during the infringement seizure, highlights that it is possible with one rotor to rapidly transition between knives, flails or dual mode, and that the rotor, pictured as “3 in 1” is the only one “capable of addressing all market needs”. 

As rightly noted by the first instance judges, the user who bought a shredder having a “simple” rotor can then buy knives or flails, which are sold separately from the shredder, so as to make it work in a dual mode and thus implement the patented invention without having a right to do so. 

What I think is the most interesting question though is whether all simple rotor sales will be taken into account in the assessment of damages, or only a fraction of those. But this question has been left unanswered so far as the court did not rule on damages, an expertise being ongoing in parallel.

Fourth, and last, false marking. SEE claimed that, in addition to patent infringement, Rabaud was also guilty of unfair competition, due to various mentions in their commercial brochures dating back to 2011. One mention in particular was that Xylomix was “patented“, which was in fact not the case. The first instance judgment sided with SEE on this question, but the Cour d’appel reversed this part of the judgment. The reversal was based on the fact that Rabaud had filed a French patent application in 2009 and then a European patent application in 2010. The French patent was granted in 2014.

The bottom line seems to be that it is OK to put the cart before the horse and refer to a “patented” device when in fact the patent is still pending. Not that I would recommend doing so, though.

CASE REFERENCE: Cour d’appel de Paris, Pôle 5, chambre 1, May 17, 2016, Rabaud v. Société d’Equipements pour l’Environnement, RG No.14/10335.

Three strikes – you’re out

One, two, three strikes you’re out. Today, I will be discussing an invalidity decision again, and a rather remarkable one. It is not every day that three different grounds of nullity are held against a patent, including what some practitioners could consider as their white whale, namely… the lack of industrial application.

The origin of the case is a dispute between two inventors owning a French patent and a corresponding European patent relating to a cloth coated with mother-of-pearl, and their licensee, Van Robaeys Frères. As part of the dispute, the patent proprietors in particular requested from the Dunkerque Tribunal de grande instance (TGI) that the license agreement should be terminated. The disgruntled licensee retaliated by filing a nullity suit in front of the Paris TGI – which, as explained in a recent post, has exclusive jurisdiction in patent matters.

The first part of the judgment is dedicated to an inadmissibility defense based on an alleged lack of standing. This has actually been a serious defense since a famous Barilla case three years ago, in which a nullity claimant was found to lack standing because they had not demonstrated that they were preparing for carrying out acts prohibited by the patent.

Yet, in the present case, the nullity claim was quite logically found to be admissible:

With respect to patent nullity actions, those who can act are those who can establish that, at the time the complaint is filed, the claims which are sought to be revoked, are or may be an impediment for carrying out their economic activity, because they work or plan to work in the field of the patented invention. In this case, as a licensee in a license agreement on the exploitation of the French patent for which a termination is requested by the licensor, Van Robaeys Frères has an economic activity notably in the field of linen cloths, and thus has standing for seeking nullity of the patents of Mr. Thierry D’Arras & Albert Paoli, which it will no longer benefit from due to the termination. 

That being settled, let’s have a quick look at the two patents at stake, FR 2941712 (FR’712) and EP 2393979 (EP’979). Claim 1 of EP’979 reads very simply:

A cloth comprising a support and a light deconstructing layer characterized in that said layer comprises mother-of-pearl.

Claims 2 to 8 are dependent claims. Claim 9 relates to:

A method for preparing a cloth according to one of claims 1 to 8, comprising a step to impregnate a support in a mother-of-pearl solution.

Claim 10 depends on claim 9, and claim 11 is directed to

The use of a cloth according to one of claims 1 to 8 or of a cloth obtained with the method according to claims 9 to 10 to manufacture products which reflect away the infrared such as blind fabrics, tent fabrics and clothing.

The claims of FR’712 are identical to those of EP’979, except that claim 1 of FR’712 is somewhat broader as it also recites the alternative of using a substance equivalent to mother-of-pearl.

Mother and her pearls
Mother and her pearls

The first ground of nullity upheld by the court was a lack of novelty due to the inventors’ own activities before the priority date. More precisely, Van Robaeys argued that the invention was disclosed to the public in two ways: because of trials at the Centre européen du non-tissé (CENT) a couple of months before the priority date, and because of a meeting at the Ecole polytechnique a couple of weeks before the priority date.

The inventors’ defense was that both events were confidential. But the court held that this was not adequately proven. In particular, it seems that the court was of the opinion that explicit confidentiality agreements should have been in place, which was apparently not the case:

However, it can only be derived from the exchange of emails concerning the 2008 trials that a draft of confidentiality agreement was received by [the inventors]; and concerning the [meeting] of January 2009, it can be derived from the report dated January 19, 2009 on the meeting at Polytechnique that it was intended that all documents would be confidential, that “the university insists on the execution of a confidentiality agreement”, that “a draft of confidentiality agreement” was received by Mr. … from Polytechnique, but no confidentiality agreement was submitted by the parties. 

Yet, it is conventional to execute an agreement of this type […]. 

The court did not investigate whether it could be considered that there was an implicit obligation of confidentiality due to the circumstances of the two disclosures – and it is possible that the patent proprietors did not phrase the argument in this manner.

This is a defense that might have been successful in front of a Board of appeal of the EPO. There are not enough details in the judgment to really understand the full circumstances of the disclosures, but one could probably argue that there was a common understanding by the participants that the information made available during the trials and the meeting was provided in confidence.

So, are French courts more severe than the EPO on this issue? That’s very possible, as this is not the first decision that I have seen where an explicit confidentiality agreement is viewed as necessary in order to disqualify a disclosure as a public one. On the other hand, another decision issued by another section of the Paris TGI earlier in 2015 (and that I might comment on in a further post) accepted that the supply of prototypes to a lab for testing purposes implies a duty of confidentiality for the lab.

The bottom line is that, even if French courts may not draw the line at exactly the same position as the Boards of appeal of the EPO, in the end the question of whether a disclosure is considered as a confidential one or a public one is extremely fact-dependent, and there are never two exactly similar situations.

With that, claims 1 to 5 and 11 were found to lack novelty, which left claims 6 to 10 still standing.

Lack of inventive step was the next ground of invalidity tackled by the court, and it was quickly discarded. Indeed, it seems that none of the documents relied on by the claimant disclosed the use of mother-of-pearl on a cloth for filtering infrared and ultraviolet rays without interfering with visible light, which was the technical problem at stake.

Thus, the court turned to insufficiency of disclosure, which as readers may know is not a ground of invalidity that patent proprietors should take lightly in this country.

At this point, the judgment gets very surprising.

The court started by examining claim 6, which recites that “the light deconstructing layer is continuous“. According to the court, the description sets out that a continuous layer can be obtained by dipping or spraying, so that there is no insufficiency issue.

But then, the court turned to method claims 9 and 10 and explained that the notion of “mother-of-pearl solution” recited in these claims raises significant difficulties:

It is only mentioned in claim 10 that the mother-of-pearl solution comprises 10 to 20% mother-of-pearl, and it is mentioned in the description […] that “said mother-of-pearl is a powder of mother-of-pearl. Among the powders of mother-of-pearl which can be used in the invention, the one obtained by grinding the inside of mollusk shells can be cited.” 

Yet, the patent does not provide any indication on the formulation of the mother-of-pearl solution, although this element is essential since it defines the composition of the “layer” which needs to be homogeneous during preparation, its condition, its ability to penetrate or not the support or its ability to adhere to said support. 

Thus, it can be derived from the opinion drafted by Prof. D. […] that “the possibility to implement the invention depends on the possibility to implement the method of claims 9 and 10 […]. On the chemical standpoint, the term ‘solution’ is not sufficient to make it possible to carry out the invention and it raises many questions. Mother-of-pearl is mainly formed of calcium carbonate in the aragonite crystalline form, and it is very poorly soluble in water. One needs to know exactly what the solution is made of.”

The technical opinion of the engineer Mr. V. […] is consistent with this and adds that the composition the solution should probably vary depending on the fiber which is used […]. 

Therefore, the court held that method claims 9 and 10 are invalid due to insufficiency of disclosure and then added that “the product of claims 6 to 8 is also invalid because the methods for making the cloth are invalid“.

To say the least, this wording is clumsy. After stating that there was no defect of insufficiency of disclosure in claim 6, the court sort of changed its mind and held that the claim was invalid because the method of claims 9 and 10 is insufficiently disclosed.

It would certainly have been much clearer to start with claims 9 and 10, and then explain that since the skilled person does not know how to carry out the claimed manufacturing method, and in the absence of another readily available method, the product claims necessarily suffer from the same defect.

This clumsy wording notwithstanding, the court’s reasoning seems to make perfect sense. The analysis relies on experts’ opinions and it is true that the description of both patents is quite short and does not provide very detailed information, and in particular no example – in contrast to another recent case discussed here.

And finally, the white whale, i.e. the court’s position on the lack of industrial application of the patent:

It can be derived from the exchanges of emails in June 2011 between the parties as well as from the affidavit of Mr. J in charge of the project […] that the inventors faced unresolved difficulties of implementation of the non-woven linen cloth awnings coated with mother-of-pearl solution in a continuous layer, and it is not demonstrated that these difficulties only concerned roller awnings [as alleged by the defendants]. 

The inventors claimed that products according to the patent were manufactured and marketed, but only photographs and invoices were provided as evidence, which did not make it possible for the court to determine whether the invention was actually implemented in those products or not.

This lack of industrial application is in fact very similar to an insufficiency of disclosure. So, the whale may not be so white after all, upon closer inspection. But it is true that if an invention cannot be carried out by the skilled person, then it is not possible to make it or use it “in any kind of industry, including agriculture” as Article 57 EPC puts it.

And that was the last nail in the patents’ coffin.

As a final word, we should always bear in mind that French court are strictly bound by the parties’ submissions; therefore, surprising court’s findings may sometimes only reflect unusual parties’ submissions. But to some extent, it seems like this judgment is really a pearl.

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre 1ère section, September 10, 2015, SA Van Robaeys Frères v. D’Arras & Paoli, RG No. 13/12618.