EPLAW Patent Blog

FR - Teisseire France S.A.S. v. La Societe Routin

Teisseire France S.A.S., le directeur de l'INPI, v. La Societe Routin S.A., Paris Court of Appeal, France, 30 March 2011, Case No. 10/10045

The Paris Court of Appeal here gives one of its first decisions regarding the admissibility of a third party appeal against the decision of the Patent Office Director to limit a French patent (further to the request of its owner). The Paris Court of Appeal ruled that such appeal was not admissible.

Routin SA sued Teisseire France SAS for patent infringement before the Paris First Instance Court.  In  counterclaim, Teisseire  requested  the revocation of the patent (lack of novelty, inventive step, insufficiency).In parallel with the infringement/revocation proceedings, Routin SA filed a request before the Patent Office  requesting  limitation of its patent, on the grounds  of article L.613-24 of the Intellectual Property Code (introduced by  law n°2008-776 of 4 August 2008), which was accepted.

Teisseire France SAS filed an appeal against the decision of the Patent Office Director to accept the limitation and claimed that the limitation was not a real limitation and did in fact result in a extension of the scope of the patent.

The Paris Court of Appeal ruled that such appeal was not admissible.

DE - Maschinensatz (Machine assembly) / infringement proceedings

DE – Maschinensatz (Machine assembly), infringement proceedings, German Federal Supreme Court, 6 May 2010, Docket No. Xa ZR 70/08

German Federal Surpreme Court on staying infringement proceedings in cases in which the patentee asserts only a limited claim version as compared with the granted claim version: If a patent is asserted in infringement proceedings with a limited claim version – which is defended in parallel invalidity proceedings –, the limited claim version must be considered in the infringement proceedings even before a final decision in the invalidity proceedings is rendered.

Read the decision (in German) here.

Read a summary, provided by Bardehle & Pagenberg, (in English) here.

Head note: Tilman Müller-Stoy

DE - Polymerisierbare Zementmischung

Polymerisierbare Zementmischung, Federal Court of Justice, Germany, 11 May 2010, Case no. X ZR 51/06

As the nullity action in the first instance was only based on one or more ground(s) set out in Art. 138 (1) EPC the inclusion of a further ground for nullity in the appeal represents an amendment to the claim within the meaning of the requirement of § 533 no. 1 Code of Civil Procedure, which is also applicable in patent nullity proceedings pursuant to § 99 (1) Patent Act.
 
This Federal Court of Justice decision states that in patent nullity proceedings under the old law (patent nullity claims filed with the Federal Patent Court prior to 01.10.2009) the inclusion of a new ground for nullity may as a rule be regarded as relevant if the new ground for nullity can become part of the oral hearing in the appeal. Hence the inclusion of a new ground for nullity would normally be permitted.

On the other hand it is doubtful whether or not this applies to patent nullity proceedings filed after 01.10.2009. Pursuant to the new requirements set out in §§ 116, 117 Patent Act an amendment to the claim may as a rule only be supported by facts which were already subject of the first instance. Given the above, the inclusion of a new ground for nullity under the new law may only then be permitted if all facts necessary to illustrate the new ground were already pleaded in detail in the first instance so that on this basis alone a decision can be taken on the new ground for nullity.

Read the decision (in German) here.

Head note: Jan Dombrowski

NL - Newell Rubbermaid v. Vermop Salmon

Newell Rubbermaid Luxembourg SARL, v. Vermop Salmon GmbH, District Court The Hague, 14 July 2010 Case No. / Docket No.: 367112 / KG ZA 10-677

During the ISSA Interclean fair Rubbermaid has presented a mop that allegedly infringes Vermop's European patent on a mop holder. Vermop has seized the mop during the fair. Rubbermaid requests a lift of the seizure in summary proceedings. Vermop has filed an amended set of claims one day before the hearing, which the court finds undesirable in the light of due process of law.

The court, under reference to case T 1067/99, finds that the amendments in the claims are features extracted from a preferred embodiment and these features had a clear functional relationship with other features of that embodiment. These features may therefore not be extracted from the other features of the preferred embodiment. Therefore the court rules that there is a real chance that the patent will be held invalid for added matter in a procedure on the merits and lifts the seizure because the amended claim cannot be the basis for a seizure.

Read the judgment (in Dutch) here.

Head note: Paul van Dongen

UK - Fosroc v. Grace

Fosroc International Limited v. W.R. Grace & Co-Conn, Patents Court, Chancery Division, High Court of Justice, London, UK, 12 July 2010, [2010] EWHC 1702 (Pat)

The Patents Court has held Grace’s amended patent EP (UK) 0 415 799 to be valid.

Grace’s patent related to cement compositions used to form concrete and in particular the addition of higher trialkanolamine compounds.Fosroc sought to revoke the patent and as a result Grace made an unconditional application to amend the patent. Fosroc opposed the amendment on the basis of added matter and contended that the patent lacked inventive step even in its amended form. Forsoc also claimed that the patent was insufficient.

Mr Justice Floyd rejected the added matter objection and held that the amendments proposed by Grace were allowable in principle. The allegation of lack of inventive step based on four prior art documents failed as did the allegation of insufficiency. Mr Justice Floyd observed that a case of obviousness is seldom enhanced by the citation of multiple prior art references and the present case was no exception.

Read the judgment (in English) here.

Head note: Robert Fitt

AT - Nebivolol

Nebivolol, limitation of patent claims, Austrian Supreme Court (Oberster Gerichtshof) 19 November, 2009, Case No. 17 Ob 24/09t

A limitation of a patent claim is only admissible if it leads to a narrower scope of protection and does not go beyond the original disclosure of the patent. Under these conditions, the patent owner is free to base an infringement action on a limited version of its claims, irrespectively of initiating formal limitation proceedings.

An application for cost reimbursement by the Main Association of the Austrian Social Insurance Institutions, which contains a declaration of the price and the availability of a generic product, constitutes an offering for sale within the meaning of Section 22 para 1 of the Austrian Patent Act. Defendant therefore can be ordered to withdraw a pending application and enjoined from filing a new one before the patents expires.

NL - Bébécar-Utilidades Para Crianca v. Maxi Miliaan

Bébécar-Utilidades Para Crianca LDA v. Maxi Miliaan B.V., The Hague Court of Appeal, The Netherlands, 30 March 2010, Case No. 105.002.137/01, with thanks to Willem Hoorneman, CMS Derks Star Busman

Article 138 EPC now gives the patentee the right to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings. In an earlier decision, the Dutch Supreme Court decided that the Dutch limitations on the possibility to amend European patents (the so-called Spiro/Flamco doctrine) could no longer be reconciled with the new EPC (HR Boston/Medinol).  

In this decision, the Dutch Court of Appeal states that the same approach should be used for Dutch patents. By analogy with the transitional provisions of the Act revising the EPC, the new approach shall also be applied to patents which were already granted on 13 December 2007.

Read the decision (in Dutch) here.

FR - Document Security System v. European Central Bank

Document Security Systems Inc and Trebuchet Capital Partners v. European Central Bank, Court of Appeal, Paris, France, 17 March 2010, Case No. 08/09140

Document Security Systems' EP 0455750 (which later was partially transferred to Trebuchet Capital Partners) relating to anti-counterfeiting technology was invalidated by the French first instance court because the subject-matter of the patent extended beyond the content of the application as filed. On appeal Document Security System argued that Articles 138(1)(c) and 123 EPC were applied by the court in a too strict and formalistic way. The court of appeal disagrees and confirms the earlier judgment.

The patent so far has been upheld in Germany, the Netherlands and Spain, while it has been invalidated in the United Kingdom, Austria, Belgium and now France. Invalidity proceedings in Italy are still pending. Infringement proceedings in Germany, the Netherlands and Spain have been initiated or are on their way.

Read the decision on appeal (in French) here.

NL - WDS Luxe v. Spant Best B.V. (Plameco)

WDS Luxe B.V. v. Joseph Spanjers and Spant Best B.V. (Plameco),  invalidity and infringement proceedings, The Hague District Court, The Netherlands, 13 January 2010, Docket No. 336602 / HA ZA 09-1505

Claim 1 of EP 308 is not novel over the Tombu patent. No violation of the principles of due process due to the late filing (prior to oral proceedings) of the auxiliary request. The auxiliary request adds an element to claim 1 that can not be directly and unambiguously derived from the application and is thus not allowable. The same goes for the alternatively filed auxiliary request, which was moreover filed too late (at the hearing). Also claims 2 to 7 are invalid.

Read the judgment (in Dutch) here. 

FR - Institut Pasteur v. Chiron

Institut Pasteur v. Chiron Healthcare c.s., appeal in infringement proceedings, Cour d'Appel, Paris, France, 4 March 2009, Docket No. 07/08437, with thanks to Pierre Véron, Véron & Associés

Even a pioneer patent cannot be granted a general scope if its claims are drafted using restrictive words.

A non-ambiguous claim with a narrow scope cannot be granted a general scope on the pretext of an interpretation when, in particular, the patentee was forced to limit the scope of the claim during the grant and opposition procedures in order to be distinguished from the prior art.

The patentee, which amended its claims to confer them a restricted scope, cannot, without damaging the legal certainty of third parties, allege that the amendments were not necessary, that the restricted claims would have the same scope as the initial broader claims and that the prior art documents having motivated the amendments would not be relevant.

Institut Pasteur cannot use the doctrine of equivalents, since claim 8 does not cover the general means but the specific means. 

Read the judgment (in French) here.

Read the judgment (in English) here.