Orange on a new track

One of the first posts of this blog was dedicated to a prominent lawsuit between two telecom operators, Orange and Free. As was reported at the time, Orange claimed infringement of the French part of its European patent EP 2044797.

Orange lost in first instance, as the Paris Tribunal de grande instance (TGI) revoked the patent in a judgment dated June 18, 2015. Some of the claims were found to lack novelty, while others were found to be directed to computer programs as such, i.e. were found not to be directed to patent-eligible subject-matter.

Orange lodged an appeal against this decision on July 27, 2015 – which as far as I can tell is still pending. However, there was an interesting side development, which leads me to today’s discussion.

On August 26, 2015, Orange filed a request for limitation of the French part of the European patent at stake. This is now a classical move in patent litigation in this country: amending claims so as to render a nullity challenge moot. Since the confirmation rate at the appeal stage is relatively high, the limitation of a patent after a revocation in first instance is sometimes the only way to shake things up for the patentee.

On September 2, the Institut National de la Propriété Industrielle (INPI) accepted the request for limitation. This is only one week after the request was submitted. This is fast, isn’t it? As in light’s speed fast, actually. A centralized limitation of the patent at the European patent office (EPO) would certainly have taken much longer, at least several months. This is certainly a strong incentive for going the national way when considering the limitation of a patent.

Free, the alleged infringer and nullity claimant, that prevailed in first instance, lodged an appeal against the limitation decision. Appeals against decisions issued by the INPI are handled by the Paris Cour d’appel. In this case, the appeal gave rise to two judgments, both dated September 9, 2016.

Why two judgments? Well, part of the case made by Free was that several provisions of the Code de la propriété intellectuelle (CPI) are contrary to the French constitution. This what is called a QPC, which stands for “question prioritaire de constitutionnalité” (or priority constitutionality question). QPCs are referred to the Conseil constitutionnel – which is our supreme court for constitutional issues – but only after passing two filters. The first filter is that the court to which the QPC is submitted must accept to forward the QPC to the Cour de cassation or the Conseil d’Etat (respectively judicial supreme court and administrative supreme court). The second filter is that the Cour de cassation or the Conseil d’Etat must then accept to forward the QPC to the Conseil constitutionnel.

The QPC system is out of the scope of the present post. It will suffice to say that in the present litigation the QPC was handled separately from the rest of the case, hence the two judgments.

The constitution - beautiful as a pyramid. But wait - this is not the right constitution is it?
The constitution – beautiful as a pyramid. But wait – this is not the right constitution is it?

However, the outcome was similar as both Free’s appeal per se and its QPC were held inadmissible.

There are not many details in both judgments regarding Free’s arguments on the merits. It is simply stated that they claimed there was “an absence of clarity and concision of the limitation, which, in the absence of a corresponding description, is not a limitation“.

The court discarded these objections to the limitation with the following paragraph:

[…] The arguments made by Free and Freebox in favor of their request for cancellation of the decision of the INPI’s director can in fact be analyzed as arguments of nullity of the patent which is asserted against them in the context of the infringement suit […]. These arguments intend to call into question the limitation itself, namely the conformity of the amended claims to the applicable legal provisions. They pertain to the jurisdiction of the judge in charge of controlling patent validity, which in this case is actually already involved. This jurisdiction extends to arguments relating to an alleged extension as well as relating to a lack of clarity of the claims or their absence of support in the description. 

This finding will not come as a surprise to all those familiar with previous case law on limitation proceedings. It is consistent with a number of previous rulings. Courts are not keen on allowing appeals against national limitation decisions; they believe that whether the limitation complies with the requirements of the CPI should be handled in the context of a nullity action or claim.

However, to some extent this established case law is problematic, as many observers have long realized. Indeed, grounds for nullity (be it of a French patent or a French part of a European patent) include inter alia lack of novelty, lack of inventive step, insufficiency of disclosure, extension of subject-matter and extension of the scope of protection. This list of grounds for nullity is provided in article L. 613-25 CPI for French patents and article 138 EPC for European patents (to which article L. 614-12 CPI makes reference).

However, a lack of clarity or concision of the claims, or a lack of support of the claims by the description, are not grounds for nullity. All European practitioners know very well that lack of clarity or support by the description are not grounds for opposition at the EPO – well the same is true of grounds for nullity.

On the other hand, clarity, conciseness and support by the description are requirements which are to be taken into account in examination proceedings but are not supposed to be reviewed in a nullity suit.

Importantly, these requirements are also taken into account during limitation proceedings – which may be viewed as a partial reopening of examination. This is true of centralized limitation at the EPO, but also of national limitation. See in particular article L. 613-45 CPI, which sets a number of conditions to be examined by the INPI when a request for limitation is filed:

[…] If, when the limitation is requested, the amended claims are not a limitation with respect to the previous claims of the patent, or if they do not meet the requirements of article L. 612-6, this is notified in a substantiated manner to the petitioner. A time limit is set to regularize the request or file observations. If there are no regularization and no observations overcoming the objection, the request is rejected by a decision of the director of the INPI. […]

As for article L. 612-6 referred to above, it reads:

The claims define the subject-matter of the protection which is requested. They must be clear and concise and be supported by the description. 

Therefore, it seems that clarity, conciseness, and support by the description are legal requirements that the INPI must check when examining a request for limitation. And those are not grounds for nullity. Thus, if amended claims that are unclear, lack conciseness, or are unsupported by the description (which is not the same as covering subject-matter extending beyond the contents of the application as filed) are nevertheless accepted by the INPI, it would make sense to be able to challenge the work done by the INPI in the context of an appeal against the limitation decision.

But the Cour d’appel, in this case like in previous ones, said this was the job of the judges in charge of the nullity complaint. Therefore, we can only hope that, for reasons of consistency, those judges will actually and seriously review compliance of the amended claims with article L. 612-6 CPI – even if it is not part of the official list of grounds of nullity…

Another argument made by Free was that a number of provisions of the CPI contravene non only our constitution, but also article 6 of the European Convention on Human Rights (ECHR) on fair trial. The court noted that the objection based on article 6 ECHR was actually the same as the objection which gave rise to the QPC. Thus:

First, the INPI is an administrative public institution which cannot be subjected to all rules on fair trial. Second, it was already stated that this [QPC] is the subject-matter of a distinct procedure registered under number RG 15/24934 and is dealt with in another judgment also issued today. Free and Freebox can therefore not ask the court to decide on a question which they request should be examined first by the Conseil constitutionnel. 

If I understand the first sentence in this paragraph, I cannot help wondering about the second part. If my law school memories are correct, the Conseil constitutionnel does not control compliance of French laws with the ECHR or any other international treaty. This task is left to judicial and administrative judges. It seems that Free’s objections to the law were basically the same from the viewpoint of the ECHR and of the French constitution. But there were apparently two distinct legal bases for the objections, and I wonder whether it was correct to lump them together.

So, let’s move on with the second judgment on the QPC. The legal provisions which were challenged in the QPC were articles L. 613-24, L. 613-25 and L. 614-12 CPI. The first one is the main legal provision allowing a patentee to request a limitation of its patent. The second one contains the grounds for nullity of a French patent and specifies that the patent may be limited in the course of a nullity action. The third one provides that the grounds for nullity of a European patent are set forth in article 138 EPC and that it is possible to limit the patent in the course of a nullity action. According to Free, these articles breach fundamental rights enshrined in the constitution, including the right to a fair trial.

What was the court’s reaction? Well it simply dismissed the QPC by noting that

the admissibility of the [QPC] which is raised in the course of the appeal against the decision of the INPI of September 2, 2015 depends on the admissibility of said appeal.

Since the appeal was dismissed as inadmissible, as noted above, the QPC was therefore also held inadmissible.

This is a little bit of a vicious circle. According to this reasoning, how can one possibly challenge the constitutionality of a legal provision which makes an appeal inadmissible?

We will see what happens in case Free raises the QPC again in the course of the appeal proceedings in the merits.

As a last word, it may be interesting to look at the claims as limited, which can be found here on the online register. Claims 1, 4, 9 and 11 were modified by the insertion of a number of additional features.

Also, claims 12 to 15 directed to a software product and to a support for the software were deleted. Those were the claims which were found in first instance to relate to excluded subject-matter.

The deletion of these claims looks like a good move, strategically speaking. But it is too bad that we will not get the Cour d’appel’s take on the patentability of claims directed to “software products” as well as software supports.

CASE REFERENCES: Cour d’appel de Paris, Pôle 5 chambre 2, September 9, 2016, Free & Freebox v. Directeur général de l’INPI & Orange, RG No. 15/21319; and Cour d’appel de Paris, Pôle 5 chambre 2, September 9, 2016, Free & Freebox v. Directeur général de l’INPI & Orange, RG No. 15/24934.

4 thoughts on “Orange on a new track”

  1. I do not agree that the limitation procedure at the EPO should take much more time than at the INPI.

    The limitation procedure before the EPO is a short procedure, the proprietor is given only one chance to amend his request in case of a formal deficiency (time limit 2 months), and only one chance to amend his request in case of a substantial deficiency (time limit 4 months). If the requester does not grab this chance, the request for limitation is not admissible or not well founded.

    There is no examination on patentability (novelty or inventive step), but clarity and added subject-matter and extension of protection have to be checked, cf. Guidelines D-X, 4.3.

    What can make things longer is a possible request for oral proceedings.

    The text of the patent after limitation is binding for the proprietor and third parties.

    What is puzzling is that in France apparently a third party which is not part of the limitation procedure as such can appeal the decision on limitation. This is certainly not possible in European procedure.

    If this is possible in French procedure, which is surprising, this would be a clear incentive to request a limitation before the EPO, but then the limitation is valid in all contracting states in which the patent has been validated, and a new “national” validation phase has to restart in the same way as if the patent is maintained in amended form after an opposition.

    Entre deux maux choisissons le moindre!

    1. In fact, at some point of time I looked at the duration of limitation proceedings at the EPO (from the filing of the request until the publication of the amended version of the patent). It seems that the median duration and the average duration are approximately 9-10 months. I have not come across any example of limitation proceedings which lasted less than 3 months. This is certainly more than 1 week like in the present case.

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