After almost 2 months spent buried at home, is there a more appropriate patent to discuss today than one relating to underground civil engineering equipment?
The patent in suit is FR 2941716, granted on April 22, 2011 to the French company SEMAP, and later limited in front of the INPI in July 2016.
SEMAP has been marketing underground chambers for the connection of e.g. telecom cables since 2013, via its distributor Frans Bonhomme.
The adverse party in the case is the British company Northstone (NI) Ltd., active in the same business, via its distributor PUM Plastique.
Since 2007, Northstone had been supplying the French telecom provider Orange with connection chambers. But in 2014, Orange revised the procurement of these goods and granted the entirety of the market to Frans Bonhomme – SEMAP’s distributor. Northstone learned on this occasion that Orange had concerns about a possible infringement of SEMAP’s FR’716 patent.
This led Northstone to initiate legal proceedings in March 2016, with a claim for nullity of the FR’716 patent, an auxiliary claim for a declaration of non-infringement, and an additional claim for damages due to disparagement.
The plaintiff raised two grounds for nullity: insufficiency of disclosure and lack of inventive step.
Claim 1 of the patent as limited reads as follows:
Connection chamber device consisting in a rectangular cuboid part buried underground, closed on the upper side by one or more lids, and containing means for connecting wires or cables belonging to a distribution network, characterized in that it is constituted by the superposition, by interlocking means, of at least two elements, each obtained by molding a composite material, and each comprising a peripheral wall comprising two skins delimiting a space, as well as openings for the injection of concrete into said space, in that the upper element has means for adaptation of a frame for receiving one or more lids on its upper side, and in that the lower element comprises a bottom provided with water evacuation means, the bottom of the lower element being fixed thereto by interlocking means, which have the same profile as the interlocking means of the two lower and upper elements.
The important part here is the presence of the openings for the injection of concrete. The nullity claimant argued that the disclosure of the patent was insufficient with respect to this particular feature.
The court, which we still need to get used to calling the TJ (tribunal judiciaire) instead of the TGI (tribunal de grande instance), made an important initial remark on the burden and standard of proof:
The party raising insufficiency of disclosure has the burden of proof. But the patentee needs to prove common general knowledge relied upon, which includes reference textbooks and general technical literature, but in principle not patent literature nor scientific articles.
It is noteworthy that what is available as documentary evidence of common general knowledge seems to be the same for French courts as for the EPO.
In this case, the court did find that the disclosure was insufficient. Here is what it had to say on this matter:
The patent does not precisely disclose where and how the openings must be made, in order to pour concrete, nor the quality and consistence of the concrete that should be used. It does not discuss either the compatibility of the presence of “braced elements through the internal walls of the double skins” (p.2 l.5) or the presence of “transverse openings for passing wire or cables” with the injection of this concrete.
At this stage I have mixed feelings about this assessment.
From an EPO perspective, an insufficiency objection presupposes serious doubts substantiated by verifiable facts. Here, the court only notes that some aspects are not discussed in the patent. But whether this does indeed raise difficulties for the skilled person is hard to determine based on such brief explanations.
It is possible that the claimant’s submissions contained more detailed and more convincing arguments, but if so they unfortunately did not find their way into the judgment.
What I do not have mixed feelings about, and what I actually take issue with, is the next part of the reasoning:
Even if, as suggested by SEMAP, the skilled person could do despite these shortcomings using common general knowledge, it remains that there is a blatant contradiction between claim 1 on the one hand, which in its characterizing portion mentions the existence of openings for pouring concrete, which thus appear to be an essential element of the invention, and the description of the patent on the other hand, which mentions towards the very end the advantageous possibility (and therefore not mandatory for implementing the invention) of injecting this material. In view of this contradiction, which does not make it possible for the skilled person to determine whether the presence of openings is necessarily required, or if it is only optional, the patent is insufficiently disclosed and must thus be revoked.
This, with all due respect, seems to be over the top.
Of course the presence of the openings is required, since it is explicitly recited in claim 1. The mere fact that the word “advantageously” is used in the description to introduce these openings does not make any difference.
Assuming that there is indeed a contradiction between the claims and the description, it appears to be a merely formal one, not a substantial one leading to actual implementation difficulties.
And it could even be argued that there is no contradiction at all, since “advantageously” (“de manière avantageuse“) could plausibly be understood as meaning that this is an advantage of the invention (not an optional feature of the invention).
Truth be told, it is not the first time that a French court has picked up on some unfortunate but truly minor drafting inaccuracy and has blown it out of proportion.
The patent being revoked on the ground of insufficiency, inventive step was not addressed.
As for the disparagement claim, it was rejected. There was evidence that Orange had been warned about a potential infringement of SEMAP’s patent. But, unfortunately for the plaintiff, based on the available paper trail, it was not proven that SEMAP was directly responsible for this patent infringement rumor.
There is thus cause for unhappiness for both parties, and it is hard to tell which one is more disgruntled – especially since the court, in a not-so-common move, did not award any cost order under article 700 CPC against either party.
Tribunal judiciaire de Paris, 3ème chambre 3ème section, January 10, 2020, Northstone (NI) Ltd. v. SEMPA SAS & SEMAP Composite SAS, RG No. 16/04839.
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