French courts getting their priorities straight

Everyone in France is familiar with the sportswear and sports equipment retail store chain Decathlon. Well it looks like Decathlon has been running a real litigation marathon for a number of years due to a patent dispute with Time Sport International.

A number of decisions in this judicial saga have been published over the years, and the latest installment was issued two months ago by none less than the supreme court for most patent matters in France, i.e. the Cour de cassation.

In terms of context, it may be sufficient to mention that Decathlon was found guilty of infringement of European patent No. EP 0682885 to Time Sport International. Decathlon’s counterclaim for invalidity of the patent failed.

The priority of the patent was an important aspect of the validity challenge. The point of law raised by Decathlon in front of the cassation judges was precisely related with this particular aspect. The judgment thus provides an opportunity to look at whether the assessment of priority is similar or not in France and at the EPO.

Here is a short answer for readers reluctant to go through the details of the case: yes, the Cour de cassation endorsed the same standard for assessing priority as the EPO.

Claim 1 of the European patent at stake was mainly based on claims 1 and 9 of the French priority document. But the defendants argued that there were still significant differences, so that the subject-matter of the European patent was not the same as that of the French priority (and that the priority was invalid).

Here is claim 1 of the European patent (as maintained in amended form after opposition):

Device for the adjustable occipital fixing of a helmet, notably a helmet for a cyclist and more particularly for a mountain bike enthusiast, comprising a shell designed to fit on the skull of the cyclist and straps fixed to the lateral walls of this shell and connected on each side at a single point equipped with a removable connecting means for rapid hooking and unhooking, comprising a platen, fixed to and articulated with respect to the rear edge of the shell of the helmet, an occipital bearing block and at least one occipital strap, fixed to this occipital bearing block and the platen, the occipital strap being connected to the lateral straps and to the removable connecting means for rapid hooking and unhooking such that, upon the hooking of removable connecting means, the occipital strap provides a traction on the occipital block which is thus pushed against the bottom occipital portion under the occiput without any removal possibility.

In claim 1 of the priority document, reference was made not just to a platen, but to a housing for accommodating the platen. It was also specified that the platen was made of two elements, one fixed to the helmet and another one articulated relative to the first one with means for connecting an occipital bearing block and at least one occipital strap fixed to the second element.

Several features were thus deleted in claim 1 of the European patent, relative to the priority document, and the debate focused on this deletion.

Here is the ideal helmet (and complete outfit) for all “mountain bike enthusiasts” as the patent puts it.

Decisions from the Cour de cassation are a notoriously difficult read. So, let’s hold our horses and digest it step by step.

There were six reasons set forth by Decathlon why the judgment by the Cour d’appel was erroneous on the priority issue.

First reason: the appeal judges distorted the content of the European patent when they noted that claim 1 of the European patent was substantially identical with claims 1 and 9 of the priority document, whereas claim 1 of the European patent does not mention the housing and the two platen elements.

This first reason was quickly dismissed because the appeal judges did not state that European claim 1 was identical with the combination of French claims 1 and 9, but rather stated that it was substantially identical.

Second reason: the appeal judges erroneously reasoned in terms of obviousness for the skilled person instead of assessing whether the claim at stake was directly and unambiguously derivable from the priority document. In particular, according to the appeal decision, the claimed device without any mention of a housing or of a two-part platen “could obviously be contemplated by the skilled person, without any technical effort” and does not presuppose any “inventive step” relative to the teaching of the priority document.

The Cour de cassation agreed that the proper test was:

whether the skilled person can, based on common general knowledge, directly and unambiguously deduce the subject-matter of the claim from the prior application considered as a whole. 

Great news, this is the same test as the one applied at the EPO! The court deemed that this test was properly stated and applied by the appeal judges. The above mentions of obviousness or of the absence of any inventive step in the appeal judgment were admittedly erroneous but they were superfluous and therefore did not justify setting aside the judgment.

Third and fourth reasons: the appeal judges did not perform the required analysis, because they noted that the invention as presented in the priority document could be found in the description and in claims 2 or 9 of the European patent. This is irrelevant, and they should have examined only the subject-matter of claim 1 of the European patent instead.

Again, the Cour de cassation focused on the correct application of the right test by the Cour d’appel and disregarded the superfluous (and, I assume, erroneous) statements challenged in the third and fourth reasons of the cassation appeal.

Fifth reason: when features are deleted in a claim relative to the priority document, it should be examined whether the deleted features were or were not presented as essential in the priority document. This analysis was not properly made by the Cour d’appel, as in particular the Cour d’appel did not address the fact that the deleted features were in the characterizing portion of claim 1 of the priority document.

The Cour de cassation agreed that the omission of essential features from a priority document results in the invalidity of the priority claim. But the court deferred to the appeal judges regarding the factual determination of whether the same essential features are protected in the priority document and in the European patent. Under French law, an appeal judgment does not necessarily have to address all details of the parties’ argumentation. In this case, it is irrelevant that the appeal judges did not comment on the presence of the features at stake in the characterizing portion of claim 1 of the priority document.

Sixth (and last) reason: no distinction should be made between features related to the function and effect of the invention and features unrelated to those, in the priority analysis. The Cour d’appel did make such a distinction as they noted that the housing feature was “devoid of technical effect” and was therefore not an essential feature.

According to the cassation ruling, the statement made by the Cour d’appel was legitimate. It simply showed that “the omission or inclusion of [the housing feature] was irrelevant for the assessment of the priority claim“.

In summary:

  • The Cour d’appel, approved by the Cour de cassation, applied the “golden standard” of the EPO (see G 2/98) for the assessment of priority, i.e. examined whether the claimed invention was directly and unambiguously derivable from the contents of the priority document as a whole, by the skilled person relying on common general knowledge.
  • In particular, when an essential feature is deleted from the main claim, relative to the priority document, the relevant question is whether the deleted feature was presented as essential in the priority document.
  • The Cour d’appel made a number of erroneous statements in the judgment, but was forgiven for doing so, because such statements were superfluous and the proper standard was nevertheless applied.

It would of course have been interesting if a Board of appeal had had the opportunity to assess the validity of the priority claim as well for this case: we would then have had a chance to check whether the standard would have been applied in the same way.

In fact the European patent was opposed, which gave rise to appeal decision T 552/02, but the priority issue was not discussed in it.

One last interesting fact though: the patent was revoked in first instance by the opposition division. Then, the proprietor missed the deadline for filing the statement of grounds of appeal. However, the Board granted the restitutio in integrum requested by the proprietor – and set aside the decision of the opposition division. So, that was a very close shave indeed. If Time Sport International had lost its patent in the opposition, the French Cour de cassation would have missed a chance to get its priorities right.

CASE REFERENCE: Cour de cassation, chambre commerciale, November 22, 2016, Décathlon France v. Time Sport International et al., Appeal No. E 15-16.647.

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