Not a tough patent to crack

After electronic cigarettes in the latest post, I have decided to take this blog one giant step further today, by discussing a patent on… crack pipes.

There are three actors in this case.

First, Terpan is a company active in the field of STD prevention. Owing to a cooperation with seven associations in Paris, they designed a risk-reducing kit for crack cocaine users, called “Kit Base“. This kit can be employed by users to reduce the risk of blood-mediated HIV or hepatitis C infection.

Terpan filed a French patent No. FR 3002724 on this kit in February 2014 (claiming an internal priority of March 2013).

The second actor, Action Solidaire Développement (ASD) is a one-person business distributing risk-reducing kits to various associations.

Finally, SAFE is an association active with drug users. By the way, it is one of the seven associations that participated in the elaboration of the Kit Base with Terpan.

Until 2017, ASD and SAFE bought the Kit Base from Terpan. Then they stopped and started providing users with another kit (somewhat unsurprisingly called Kit Crack), which Terpan considers is an infringement of its patent. Terpan thus launched an infringement action in July 2017.

ASD and SAFE filed a nullity counterclaim.

The first ground of nullity addressed in the judgment is a rather exceptional one. The defendants argued that the invention was excluded from patentability because its commercial exploitation would be contrary to ordre public and morality.

Claim 1 of the patent is broadly directed to a “kit for consuming solid or semi-solid products by inhalation“. However, the court held that the context of the description makes it clear that the invention is specifically about drug (and more particularly crack cocaine) usage.

The defendants’ argument interestingly relied on an old judgment by the Tribunal civil de la Seine, in 1913, which held a patent on an opium pipe contrary to ordre public and morality. However, one century later, the Paris Tribunal judiciaire did not follow this case law.

The court noted that, although drug use is prohibited in France, a first law authorizing public health measures against drug addiction was enacted in 1970. More recent reforms in 2004 and 2018 strengthened this policy. And so there are in particular public centers dedicated to drug users, in which kits such as the patented one can be legally distributed. These kits may thus be viewed as tools of public health prevention, and they do not breach the ordre public requirement. The 1913 judgment is now outdated since this public health policy did not exist at that time.

The court then moved on to the second ground of nullity, namely lack of novelty over the public prior use of Terpan’s own Kit Base.

An effect of the Kit Base?

Remember that the FR’724 patent claims an internal French priority of March 4, 2013? Well, according to SAFE, Kit Base was marketed as from 2012. This was not challenged by Terpan. However, the patent proprietor stated that the kit was modified over time based on feedback from various associations so that there was no evidence that the kit in use in 2012 corresponded to the claimed invention.

The court was not persuaded by Terpan’s defense. The court took a body of evidence into account:

  • Terpan’s website mentions that the Kit Base “in its final version” has been available on the market since April 2012.
  • Terpan supplied one association in 2010-2011 with filters made of wire having exactly the dimensions and wire diameter specifications recited in dependent claims 2, 3, 6 and 7. The context makes it clear that these filters were intended to make drug usage kits.
  • In April 2012, Terpan supplied various drug risk reduction centers with the Kit Base, under a single common reference.
  • A Kit Base sample allegedly supplied to an association in 2012 was described in a bailiff’s report in 2017 as corresponding to the claimed invention.

Regarding this latter point, the court acknowledged that the evidence was not bullet-proof as the kit described in the report was not taken from an intact original package.

Nevertheless, overall, this body of evidence was sufficient to convince the court that the Kit Base marketed in the Spring of 2012 already contained the same elements as the current Kit Base which implements the FR’724 patent.

Therefore, all claims alleged to be infringed were held invalid as lacking novelty over Terpan’s own marketing of the Kit Base.

A few remarks on this finding, if I may.

The court seems to have applied some sort of balance of probabilities approach in appraising the available evidence.

This seems very reasonable. Since the alleged public prior use originated from the patent proprietor (and plaintiff) itself, said patent proprietor had (or should have had) all of the necessary evidence to counter the defendants’ allegations.

In particular, the proprietor’s contention that the Kit Base may have changed over time seems to be clearly lacking. Since the Kit Base is theirs, they should be able to precisely set out and prove which modifications were made and when. I often find it disheartening when a party makes a good prima facie infringement or invalidity case which is successfully brushed off by the other side simply because the burden of proof is completely one-sided. This was not the case here, and I think it is a sound approach.

Finally, the court made reference in its reasoning to article L. 611-13 Code de la propriété intellectuelle, which mirrors article 55 EPC and relates to non-prejudicial disclosures – and frankly I have no idea why.

The court noted that Kit Base was put on the market more than 6 months before the priority date of the patent at stake, “so that” the claims lack novelty. However, as far as I understand, there was no allegation that the disclosure was an evident abuse. In fact the disclosure was made by the proprietor itself, which seems to leave little room for a possible abuse argument. Therefore, and unless some points made by the parties are not properly reflected in the judgment, there was probably no reason whatsoever to refer to this 6-month period. Did I miss something, or are we talking about a French patent here and not a German utility model? Just to be clear, there is no grace period in this country.

The final part of the judgment relates to Terpan’s additional claim for unfair competition and commercial free-riding. Terpan reproached the defendants with copying features of its Kit Base.

Again, the court did not find in favor of the plaintiff.

First, Terpan’s alleged R&D investments were not proven, especially because the kit was the result of collective work together with various associations.

Second, the presentation similarities noted by Terpan between the defendants’ Kit Crack and the original Kit Base (presence of a soothing cream and of a kit assembling drawing) were said to relate to commonplace features; whereas, on the other hand, the court insisted on some significant differences between the two kits (such as the presence of an alcohol-imbibed pad, or different looking packages).

With a decision as interesting as this one, one could easily become addicted to case law.

PS: Many thanks to Jérôme Tassi for first drawing my attention to this decision!


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

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