Overview. Sabine AGÉ Avocat. Munich 24 February 2017

Transcription

1 Literal infringement and the doctrine of equivalence from a European perspective - s that are infringed? Union IP Round Table Sabine AGÉ Avocat Paris Lyon Overview Claim construction and doctrine of equivalence under French law when compared to German or UK approaches Examples: 1.Cooking vessel 2.Helicopter landing gear 3.Clone DNA sequences 2 perspective - s that are infringed? 1

2 Claim construction Art. L of the French intellectual property code (idem Art. 69 EPC) : The extent of the protection conferred by a patent shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims. construction of the terms employed and understanding of the substance of the invention through the problem solved and the essential means of the solution 3 General definition of infringement the infringing means are those which reproduce the essential means of the patented invention, i.e. the new and inventive means which are necessary and sufficient to perform the function of the invention the essential means are defined when assessing the novelty and inventive step of the claimed invention with respect to the prior art, in the framework of the nullity counterclaim which is filed in almost all cases for infringement statements of the patentee during examination and opposition are taken into account 4 perspective - s that are infringed? 2

3 From literal infringement to equivalence: a multi step test (1/4) 1 st step: does the accused means reproduces the claimed means in its (or their) form and in their function for the same result? Yes: literal infringement No: go to 2 nd step 5 From literal infringement to equivalence: a multi step test (2/4) 2 nd step: does the difference between the accused means and the claims means relate to essential features? No: literal infringement (by reproduction of the essential features) Yes: go to 3 rd step 6 perspective - s that are infringed? 3

4 From literal infringement to equivalence: a multi step test (3/4) 3 rd step: Do the claimed means implement a novel function? No: the scope of the claim is limited to the particular means and does not extend to equivalent ones Yes: go to 4 th step 7 From literal infringement to equivalence: a multi step test (4/4) 4 th step: Do the accused means perform the same function for the same result (in the same way) as the claimed means? No: no infringement Yes: infringement under the doctrine of equivalence 8 perspective - s that are infringed? 4

5 Differences with the tests applied in other European countries Obviousness of the variant is not considered as relevant: even if it is patentable, an equivalent means can be considered as infringing Intent of the one skilled in the art is irrelevant but the teaching of the patent is taken into consideration Prosecution history file is taken into account 9 Food processor with a mixing vessel and a drive mechanism for an agitator in the mixing vessel EP , claim 1: Kitchen machine (1) with a stirrer vessel (6) and a drive (8) for an agitator (10) in the stirrer vessel (6), wherein the stirrer vessel (6) in its lower region can be heated up, wherein the stirrer vessel (6) is covered by an inserted lid (14), characterised in that on the inserted lid (14) is arranged a top piece (22) which has a perforated bottom (29) for preparation by steaming of foods (38), wherein the perforations (31) are formed in a cooking material support of the bottom (29) of the top piece and condensate or moisture formed is conducted back into the stirrer vessel (6). 10 perspective - s that are infringed? 5

6 Food processor: amendment during PCT phase DE , claim 1 (priority): Kitchen machine (1) with a stirrer vessel (6) and a drive (8) for an agitator (10) in the stirrer vessel (6), wherein the stirrer vessel (6) in its lower region can be heated up, wherein the stirrer vessel (6) is covered by an inserted lid (14), characterised in that on the inserted lid (14) is arranged a top piece (22) for the stirrer vessel (6) which has a perforated bottom (29) for preparation by steaming of foods (38), wherein the perforations (31) are formed in a cooking material support of the bottom (29) of the top piece and condensate or moisture formed is conducted back into the stirrer vessel (6). Inserted lid added with regard to this prior art: 11 Food processor: the first accused device 1st accused device has a top piece made in two parts: the so-called top piece, made of metal; and a skirt-shaped annular inferior part, made of synthetics, which assembles the top piece on the vessel through a fitting method; these two parts being assembled by four rivets 12 perspective - s that are infringed? 6

7 Food processor: the second accused device 2 nd accused device has a top piece made of metal which comprises an annular lower part forming a shoulder, around which a seal: 13 Food processor: decisions on infringement (France) 1st device accused device held infringing (TGI Paris, 14/01/2011): although the accused food processors do not include an inserted lid as taught in claim 1 of patent EP , the annular lower part of the top piece is a means of a different form fulfilling the same function, namely ensuring the arrangement of the top piece above the stirrer vessel, to achieve the same result [ ]. 2 nd device held infringing under doctrine of equivalence (TGI Paris, 2/07/2015): It follows that, even if the [accused] food processor does not comprise an inserted lid as taught in claim 1 of patent EP , the embossed annular lower part of the steaming bowl combined with the peripheral seal, is a means [of a different form] fulfilling the same function, namely ensuring the arrangement of the top piece above the stirrer vessel, to achieve the same result, that is, the rise of steam from the stirrer vessel to the upper part of the top piece through the perforations provided for this purpose and the conducting back of the condensate or moisture into the stirrer vessel through the same perforations. The infringement by equivalence of claim 1 is therefore established. 14 perspective - s that are infringed? 7

8 Food processor: decisions on infringement (ES, IT, DE) Court of appeal of Barcelona held that even the 1st device does not reproduce claim 1 (CA Barcelona, 01/07/2010): The [SPTO] report affirms that inside the vessel 1 is arranged below the inserted lid 7 a top piece 2 with perforations for steaming foods. In respect of the amendment to [the] claims, it adds: On the other hand, independent claim 1 of the present applications defines a top piece 22 placed onto the inserted lid 14 with perforations for steaming foods. This useful position of a cooking insert for steaming foods onto the lid of a heatable vessel was not obvious for an expert in the field. Therefore, the subject matter of independent claim 1 meets the requirements of Article 33.2 & 3 of the Patent Cooperation Treaty in respect of novelty and inventive step. (The underlined words are from the report itself). ( ) it must be concluded that the appellant voluntarily introduced, as a distinguishing element of the claim, the assertion that the top piece for steaming foods is placed on the inserted lid of the mixing vessel (prosecution history estoppel). Same outcome in Italy with similar accused device 15 Helicopter landing gear with skids FR , claims 1 and 15: 1. Helicopter landing gear, comprising two skids (P) each having a longitudinal support stretch (1) for standing on the ground and which are connected to a 5 front cross-piece and a rear cross-piece (2) which are themselves attached to the structure of the aircraft by connecting devices (4, 6), the rear cross-piece (2) being fixed by the ends of its descending branches (2a) to the rear part of the said longitudinal support stretches (1), characterized in that each of the said skids (P) has at the front an inclined transition zone (T) with double curvature (C1, C2) orienting itself transversely with respect to the said longitudinal support stretches which stand on the ground, above the plane of the latter, the two transition zones together constituting in this way an integrated front cross-piece offset with respect to the front delimitation of the plane of contact of the said longitudinal support stretches of the skids on the ground. «15. Landing gear according to any one of the preceding claims, characterized in that the said integrated front cross-piece (8) is offset forwards with respect to the front delimitation of the plane of contact of the longitudinal support stretches of the skids on the ground. 16 perspective - s that are infringed? 8

9 Landing gear: the first accused device ( Legacy gear ) CA Paris, 20/03/2015: It constitutes the slavish copy of the illustrated landing gear as mentioned above on figure 10 of [the] patent. 17 Landing gear: the second accused device ( Production gear ) CA Paris, 20/03/2015: This second version, despite the presence of a connecting device placed on the first transition zone, and the addition of a spatula at the front end of the skid, fulfils the same functions to achieve the same result as the invention; it is without incidence that this result is not of the same degree of improvement than that of the invention. This new coupling piece still located on the first transition zone itself constitutes the first inclination, which constitutes an infringement by equivalence as this different form has the same advantages to achieve the same result since there is always at the front of the skids an inclined transition zone with a double change of direction placing the front crosspiece, an integrated front cross-piece within the meaning of the patent ( ). 18 perspective - s that are infringed? 9

10 Landing gear: Canadian decision on infringement Federal court of Canada, 30/01/2012 (confirmed in appeal, 24/09/2013): Once the claims of the patent have been construed, the Court s next task is to determine whether there has, in fact, been infringement of the patent. Very simply, there is infringement if all of the essential elements of a claim are present in the product, but there is no infringement if an essential element is different or omitted; there may still be infringement, however, if non-essential elements are substituted or omitted (Free World Trust, above, at paras 31 and 68). That said, a patent is not infringed merely because a defendant s product achieves the same result as the patented invention. The substitutability of non-essential elements derives from an informed interpretation of the language of the claims at the time of publication of the patent. Both the element specified in the claim and the variant not making use of this element must be presented to the POSITA 1. The patentee bears the burden to establish known and obvious substitutability (Free World Trust, above, at para 55). If the patentee fails to discharge that onus, the descriptive word or expression in the claim is to be considered essential unless the context of the claims language otherwise dictates (Free World Trust, above, at para 57). 1 POSITA stands for Person of Ordinary Skill in the Art 19 Landing gear: Canadian decision on infringement Federal court of Canada, 30/01/2012 (confirmed in appeal, 24/09/2013): Looking at the actual Production gear, the evidence is clear that the front cross piece of the Production gear is attached to the skids by means of saddle joints. Having heard the experts arguments and examined the Production gear at the M. facility, the Court finds that notably the Production gear does not feature the double curvature, which, as aforesaid, is one of the essential elements of claim 1. Further, the Production gear does not have the integrated front cross piece required by claim 1. The Production gear consists of a straight front cross piece connected to a straight skid via a saddle connection, with the skid continuing forward of the saddle and terminating in a ski tip. Thus, a POSITA 1 would understand that the 787 Patent contrasts two different means of attachment, and thus that a cross piece attached with a saddle is, by definition, not integrated. 20 perspective - s that are infringed? 10

11 Landing gear: US Summary judgement on a declaration for non infringement United States District Court For The District Of Columbia, 28/08/2014: The doctrine of equivalents applies when the accused device performs substantially the same function in substantially the same way to obtain the same result. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (internal quotation marks and citation omitted). In other words, [f]or a claim limitation to be equivalently present in an accused device, there must be only insubstantial differences between the missing claim limitation and corresponding aspects of the accused device. Zodiac Pool Care, Inc. v. Hoffinger Indus., Inc., 206 F.3d 1408, 1415 (Fed. Cir. 2000) (citation omitted). Moreover, what constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case[,] with consideration for the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. Graver Tank & Mfg. Co., 339 U.S. at Landing gear: US Summary judgement on a declaration for non infringement United States District Court For The District Of Columbia, 28/08/2014: As noted, the Court has construed the term a front to mean the portion of the skid forward of the longitudinal support stretch, i.e., the portion of the skid that contacts the ground. ( ). A front is a specific structural element and constitutes a part of the skid forward of the longitudinal support stretch. See 621 Patent, col. 5, lines ( At the front, each of the skids P has, after the corresponding longitudinal support stretch 1, a transition zone T with double curvature before constituting the integrated front cross-piece 8. ) (emphasis added). The Court agrees with B. that the part of the skid forward of the longitudinal support stretch in the Modified Gear is a ski tip. The ski tip concededly does not comprise an inclined transition zone with double curvature, as claim 1 of the patent requires. Accordingly, the Modified Gear does not contain an equivalent structure to a front of claim 1 as that term is defined by the Court. 22 perspective - s that are infringed? 11

12 Cloned DNA sequences, hybridizable with genomic RNA of lymphadenopathy-associated virus (LAV) 1 EP B1, claims 8 and 11: 8. A method for the in vitro detection of viral infection due to the LAV virus which comprises contacting a biological sample originating from a person to be diagnosed for LAV infection and containing RNA in a form suitable for hybridization with the probe of claim 7 2 under hybridizing conditions and detecting the hybridized probe. 11. The purified RNA of LAV virus which has a size from 9.1 to 9.2 kb and which corresponds to the cdna contained in lambda-j19 (CNCM I-338). 1 LAV is synonymous of HIV (Human Immunodeficiency Virus) 2 Claim 7: A probe in the in vitro detection of LAV which consists of a DNA according to any of claims 1 to 6. Claim 1: A cloned DNA which contains a DNA corresponding to the LAV retroviral genome contained in lambda-j19 (CNCM I-338), said cloned DNA including LTR elements U3, R and U5 of said retroviral genome. 23 Cloned DNA sequences: amendments to claim 8 during examination and opposition Claims 8 amended during examination and opposition: Original claim: A method for the in vitro detection of viral infection due to the LAV viruses which comprises contacting a biological sample originating from a person to be diagnosed for LAV infection and containing DNA in a form suitable for hybridization with the probe of claim 18 under hybridizing conditions and detecting the hybridized probe. Amendment during examination: A method for the in vitro detection of viral infection due to the LAV viruses which comprises contacting a biological sample originating from a person to be diagnosed for LAV infection and containing RNA in a form suitable for hybridization with the probe of claim 20 under hybridizing conditions and detecting the hybridized probe. 24 perspective - s that are infringed? 12

13 Cloned DNA sequences: accused detection kit screening test consists in three successive steps: preparing samples notably by capturing target RNA with oligonucleotides which hybridize with target RNA amplifying samples detecting each of those steps uses oligonucleotides which are not DNA probes but chimerical oligonucleotides composed of DNA and RNA (this type of molecule can be produced only by chemical synthesis and not by cloning) 25 Clone DNA sequences: claim for infringement by equivalence dismissed CA Paris, 4/03/2009: INSTITUT PASTEUR cannot use the doctrine of equivalents, since claim 8 does not cover the general means of hybridization but the specific means of hybridization of viral RNA with a probe composed of a DNA fragment which corresponds to the genome contained in the clone λ-j19; 26 perspective - s that are infringed? 13

14 Clone DNA sequences: claim for literal infringement dismissed CA Paris, 4/03/2009: ( ) scope of claim 8 is limited to a detection method involving the use of the probe, the subject-matter of claim 7, which depends on claims 1 to 6 protecting cloned DNA fragments defined by their restriction sites and corresponding to the retroviral genome contained in λ-j19. ( ) These oligonucleotides are not DNA probes but chimerical oligonucleotides composed of DNA for one part and of RNA for the second part, the part hybridizing with the HIV RNA being composed of RNA; which can be produced only by chemical synthesis and not by cloning; Nor do the promoter primers constitute probes of claim 8 since they include a promoter T7 area necessary to the function of RNA polymerase which is not found in the retroviral genome contained in λ-j19; 27 Sabine Agé Thank you 1, rue Volney Paris Tel. +33 (0) Fax +33 (0) , rue Président Édouard Herriot Lyon Tel. +33 (0) Fax +33 (0) sabine.age@veron.com perspective - s that are infringed? 14