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In many jurisdictions, the scope of protection afforded by a patent is defined by the claims as read either literally or under doctrine of equivalents.  Infringement based on the doctrine of equivalents may be based in part on statutory law, the interpretation of which is generally established via case law (e.g. court decisions).  The purpose of the doctrine of equivalents is to promote fair patent coverage so that trivial departures (e.g., variants or deviations) from the claim language cannot be used to avoid infringement.

This is the sixth post in our series examining the law governing the doctrine of equivalents in several European countries.  Our first post examined the law governing the doctrine of equivalents in Spain, our second post examined the law in the Netherlands, our third post examined the law in Germany, our fourth post examined the law in Denmark, and our fifth post examined the law in the United Kingdom.  These posts can be viewed here:  Doctrine of Equivalents – Spain, Doctrine of Equivalents – the Netherlands,  Doctrine of Equivalents – Germany,  Doctrine of Equivalents – Denmark, and Doctrine of Equivalents – United Kingdom.

Doctrine of Equivalents in France

Background 

In France, the Paris courts have exclusive jurisdiction to hear patent infringement proceedings, and since April 2020, share its jurisdiction on patent validity with the French Intellectual Property Office (Institut National de la Propriété Intellectuelle – INPI).

With regard to the courts specifically, at first instance, patent disputes are within the exclusive jurisdiction of the Paris Court of First Instance (Tribunal Judiciaire de Paris, ex Tribunal de Grande Instance), and on appeal, at the Paris Court of Appeal (Cour d’Appel de Paris).  The third chamber of the Paris Court of First Instance has three panels of three judges that handle only intellectual property matters. Despite these judges being designated to a specialized chamber, judges may have knowledge in different legal matters (e.g., criminal law, divorce, etc.) and usually do not have a technical or scientific background.  Preliminary injunction proceedings are handled by the presiding judge of one of the three panels, or, when an action on the merits is already pending, by the judge of the panel who is in charge of the case preparation (Juge de la Mise en Etat).  The fifth division of the Paris Court of Appeal comprises two chambers of three judges specialized in intellectual property matters who deal with appeals against judgments relating to patent matters. The courts render between forty and sixty patent litigation decisions a year.

Since April 2020, oppositions against French patents became available and can be filed. INPI has exclusive jurisdiction for oppositions and thus, in this context, renders decisions on patent validity. INPI examiners in oppositions are specialized in patents and have technical backgrounds. This new opposition procedure aims to reinforce the value of patents in France since applications are not subject to a rigorous, in-depth examination by INPI.  Thus, oppositions provide a mechanism for a third party to challenge the validity of a patent that is less costly than filing a judicial procedure, such as a nullity action.  Any appeal filed in response to a decision rendered by INPI during an opposition falls within the exclusive jurisdiction of the Paris Appeal Court.

The burden of proof, both in infringement and nullity actions, rests with the claimant.  Before the courts, the claimant’s writ of summons must contain detailed arguments in both law and fact such that the Court can form a judgment by itself.  Infringement can be proven by any means, such as a bailiff’s report or a saisie-contrefaçon.  Unlike litigation in the U.S. or United Kingdom, proceedings in France do not include discovery or disclosure.  The saisie-contrefaçon is a very specific and efficient probative measure which is generally carried out as the first step in infringement proceedings.  This procedure allows any claimant or potential claimant to instruct a bailiff to enter any location and write a detailed description of the alleged infringing product (with or without taking samples) or process.  The bailiff may be assisted by experts (such as patent attorneys) designated by the claimant.  In order to perform a saisie-contrefaçon, the claimant must obtain an order from the President of the Paris Court of First Instance by way of an ex parte request.  In order to obtain such an order, the claimant only needs to prove that s/he is entitled to bring an infringement action (namely, s/he is the patent owner or exclusive licensee) and that the patent is in force (e.g., the annuity fees have been paid).  It is not necessary to prove infringement in order to obtain permission to carry out a saisie-contrefaçon, because the purpose of a saisie-contrefaçon is to determine whether an infringement has occurred, and if so, to what extent.  Nonetheless, the claimant is required to present “reasonably available evidence of infringement” (Paris Court of First Instances, 22 December 2017, 17/14521, Constellium Issoire/Arconic Inc.).  Once a saisie-contrefaçon has been performed, the requesting party must bring an infringement action on the merits within a month.  If the requesting party fails to bring such an action, the saisie-contrefaçon can be annulled, without prejudice to any compensatory damages that the seized party may claim for any losses incurred.  The party subject to the saisie-contrefaçon can challenge or modify the order or request its withdrawal in summary proceedings.  Additionally, it can also obtain a court order protecting the confidentiality of the seized material.

Once an action is filed, a Juge de la Mise en Etat sets the timeline of the proceedings and both sides generally file two or three briefs.  Once the case is ready to be heard, no further briefs or exhibits can be submitted, and a final oral hearing is set.

Given the fact that all evidence and arguments need to be set forth in writing, the hearings last at most one or two hours for each party, depending on the complexity of the case. In 99% of the cases, the hearing is limited to the pleadings of the attorney of each party. Neither the claimant or defendant are heard and there is no witness or expert hearing.

Infringement and nullity are dealt with during the same hearing, and both can be involved as counterclaims. Claims of a patent can be amended during the proceedings, in the context of  parallel specific proceedings before the INPI, and even throughout an appeal.

The average length of time for first instance proceedings is approximately 18 to 24 months.  Appeals generally take a similar length of time.

Direct Infringement

The French Intellectual Property Code (IPC) broadly defines the following as acts of patent infringement:

  • The manufacture, supply, placing on the market, use, importation, exportation and transshipment or holding of, for the aforementioned purposes, of a product that is the subject of a patent;
  • The use of a process subject to a patent or, where a third party knows or where circumstances make it clear that the use of the process is prohibited without the consent of the owner of the patent, offering the use of such a process in France; and
  • The supply, placing on the market, use, importation, exportation, transshipment or possession for the aforementioned purposes of the product obtained directly by a process that is the subject of the patent.

However, in order to decide whether direct infringement is present, it is first necessary to construe whether an allegedly infringing product or process falls within the scope of the claims.  As in other European jurisdictions, patents must be construed in France in accordance with Article 69 of the European Patent Convention (EPC) and the Protocol on the Interpretation of Article 69 of the EPC (Protocol).

Claim Construction

Article 69 of the EPC and Article L.613-2 of the IPC, which are identical, describe the scope of protection provided by a patent and states: “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”  Further guidance is provided in the Protocol to Article 69 of the EPC.  Article 1 of the Protocol requires that when determining the scope of protection of a patent, a balance be struck between the strict, literal meaning of the words of the claim and using the claims as merely a guideline.  Specifically, Article 1 state:

Article 1 – General principles

Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes, which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.

Article 2 of the Protocol also makes it clear that equivalents must be considered when determining the scope of protection:

Article 2 – Equivalents

For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

The approach in France with respect to claim construction is defined by a decision by the Court of Appeal of Paris in Dolle v Emsens on October 11, 1990, where the Court stated:

Article 69, as completed by its protocol, has chosen a middle way between a literal construction of the claim, in which the description and the drawings should be used only to dissipate ambiguities, and a road map, in which the claim would be used just as a guideline and in which the protection would extend to what, according to the skilled person, the patentee intended to protect.

 This compromise must ensure a fair protection for the patentee against the skill of the infringer to disguise infringement, and enable third parties to know with certainty what is protected.

 In view of Article 69, the judge must construe the claims by reference to the description and drawings.

 He must give the claim its full meaning, so that this condensed text is understood.

 The construction leads to a definition of the substance of the claimed invention, without adding any element which the claim did not include and did not suggest. (emphasis added)

The reference to the full meaning of the claim and the substance of the claimed invention demonstrates that in France, judges seek a fair balance to ensure both reasonable protection for the patentee as well as a reasonable degree of legal certainty for third parties.  Specifically, when construing claims, judges seek to understand, through the eyes of a skilled person, the technical problem solved by the patent and the means taught to solve the problem, including their function.  However, the construction of a claim cannot result in (i) adding a feature which is not clearly part of the invention (e.g., the interpretation must not involve adding a feature); or (ii) omitting a feature which is clearly part of the invention.

Under French law, claim construction is partly a mixed question of law and fact and the claims and specification are construed as of the date of the filing or priority date (where applicable) of the application. When construing the claims, judges may take into account definitions of terms that are contained in dictionaries, handbooks or other documents that are submitted by the parties; however, these definitions will not supersede the meaning of term that is provided in the patent itself.  Documents can be submitted to help clarify the knowledge of a skilled person and how s/he would read and understand a patent. Additionally, a written opinion from an expert can also be provided to further clarify the documentary evidence and substantiate the knowledge of a skilled person.  All of this information can be used to help judges distinguish between features which should be considered to be:

  1. “essential” (e.g., those features without which (i) the claim could not be considered to be novel and inventive; or (ii) the claimed means would not perform the function of the invention); and
  2. “non-essential” or “minor” (e.g., those features that are not necessary for the claim to be considered novel and inventive or are not indispensable for the claimed means to perform the function of the invention)

Prosecution History Estoppel

There is no prosecution history estoppel under the IPC; therefore, judges are under no obligation to consider or refer the prosecution history during an infringement proceeding. Whether or not the prosecution history is taken into account is considered by the judges on a case-by-case basis like any other fact in the case. Essentially, it is up to the judges to assess the potential relevance and impact of the statements and amendments made by the Patentee during prosecution and/or litigation. Nonetheless, French case law comprises a number of decisions in which the prosecution history has been used to clarify issues involving the construction of the claims of a patent. For example, in Institut Pasteur v Siemens Healthcare Diagnostics, the Tribunal de Grande Instance de Paris, 3rd chamber, 2nd section, on May 28, 2010 stated:

Institut Pasteur rightly argues that only these provisions [Article 69 and its Protocol] govern the interpretation of the claims‘ wording and that the ‘file wrapper estoppel’ theory, which consists in also taking into account, to interpret a patent, the statements made by the applicant during the grant or opposition proceedings, cannot be applied […]  However, they in no way exclude the possibility for the court, which has to rule on the extent of the protection conferred by the patent, of referring to the wording of the claims as initially filed and of appraising the scope thereof, in particular, in light of the amendments made during the grant or opposition proceedings before the European Patent Office.

Determination of Infringement Under French Law

French law provides a three-part test for determining infringement.  The test involves asking the following questions:

  1. Is there literal infringement, namely, does the allegedly infringing (or contested) means reproduce the claimed invention (or means) in both its form (or structure) and function to achieve the same result? If the answer is yes, there is literal infringement, if the answer is no, go to question 2.
  2. Is there infringement by reproduction of the essential means of the claimed invention, namely, are the differences between the claimed means and the allegedly infringing or contested means only with respect to details which are not part of the essential means (e.g., directed to a minor feature) of the claim? If the answer is yes, there is infringement; if the answer is no, go to question 3.
  3. Is there infringement by equivalence, namely, does the allegedly infringing or contested means performs the same function to provide the same result as the claimed means? If the answer is yes, there is infringement by equivalence; if the answer is no, there is no infringement.

With respect to each of these questions, the claimed means and the allegedly infringing or contested means should be considered not only in terms of their form (or structure) but also in terms of their function (meaning, its primary technical effect) and results (meaning the advantages provided by the claimed means).

Furthermore, under question 2, over time, French case law has articulated various questions which should be examined to determine whether a feature is merely a detail (e.g., a minor feature) or an essential feature of the claim:

  1. Is the feature presented as essential in the patent or during the pre-grant prosecution phase (e.g., does the patent mention alternatives)?
  2. Is the feature one of those without which the claim would not have been found to be novel and inventive?
  3. Is the feature indispensable for fulfilling the function of the claimed means and solving the technical problem underlying the invention?

If a claimed feature or means which is not literally reproduced is found to be a minor feature (e.g., detail), then there will be a finding of infringement.

With respect to finding infringement by equivalence under question 3, such infringement occurs when the allegedly infringing or contested means performs the same function to achieve the same result.  However, the doctrine of equivalence only applies if it has been established that the function of the claimed invention or means is novel.  Therefore, the test for infringement by equivalence involves analyzing three questions:

  1. Do the essential means of the patent whose form is not reproduced (e.g., the “means at issue”) perform a novel function? If the answer is yes, go to question 2.  If the answer is no, there is no infringement by equivalence.
  2. Do the contested means perform the same function? If the answer is yes, go to question 3.  If the answer is no, there is no infringement by equivalence.
  3. Do the contested means provide the same result? If the answer is yes, there is infringement by equivalence. If no, there is no infringement by equivalence.

Under question 1, the doctrine of equivalence only applies if the claimed means at issue performs a novel function.  Specifically, infringement by equivalence only exists if the claimed means at issue differs from the prior art not only by its form (or structure) but also by the function it performs.  More specifically, if the function of a claimed means at issue is known in the prior art, then the scope of the claim is limited to the claimed structure (and minor variants thereof). In this case, the claims cover specific means and the doctrine of equivalence does not apply.  In contrast, if the function of the claimed means at issue is novel, the scope of the claim extends to structures performing the same function to achieve the same result.  Under this scenario, the claim is considered to cover “general” means and the doctrine of equivalence applies. Therefore, when assessing infringement under the doctrine of equivalence, the key question is the contribution of the invention to the art.

With respect to question 2, two means are considered to perform the same function if they result or produce the same primary technical effect.  The “primary technical effect” is defined as the effect that is directly and immediately produced by the implementation of the means (which is not to be confused with the result, which is the advantage provided by the means).

Under question 3, the result obtained the allegedly infringing means must be “of the same nature and identical quality and efficacy“.

Because an analysis of infringement can be very complex due to the doctrine of equivalents, French judges, who, as mentioned previously herein, do not have a technical background, can designate an expert to assist them during the hearing.

Life Science Cases Involving the Doctrine of Equivalents

The doctrine of equivalents is rarely applied by French judges in the life sciences field.

Recently, the doctrine of equivalents was explained in the decision Eli Lilly v Fresenius, Tribunal Judiciaire de Paris, 3rd chamber, 3rd section, on September 11, 2020 were the Court stated:

The amendment for addition of matter is not such as to prohibit the patentee from invoking infringement by equivalents, since it is a condition of form, relating to the substance of the inventive contribution and the literal content of the specification, which prohibits the patentee from adding an element that could not be directly and unambiguously deduced from the patent, it does not alter the basis on which the interpretation must be made and it has no impact on the scope of protection conferred. On the contrary, with regard to the assessment of the scope of the patent, Article 69 of the EPC requires that equivalents be considered. It infers that an addition of material under the issuance, does not prohibit the invoking of infringement by equivalence, provided that the particular means or combination of means claimed […] have a function new […], except to render the doctrine of equivalents completely ineffective.

This decision clarifies the application of the doctrine of equivalents with regard to patent scope and infringement. The case provides that the addition of a new means to the claims at the time of issuance does not preclude invoking infringement by equivalence if the means has a new function. It is important to note that in this case, Fresenius was considered to be a literal infringer and hence the Court avoided examining infringement by equivalents for the product.

Also, in the previously mentioned decision, Institut Pasteur v Siemens Healthcare Diagnostics, the Tribunal de Grande Instance de Paris, 3rd chamber, 2nd section, on May 28, 2010 stated:

That it follows that in the patented means, the use of probes consisting of DNA fragments, is only new in its form, the function of hybridization with viral RNA for the detection of the disease being known;

That infringement by equivalence, which in the present case cannot therefore result based on the identity of functions, can therefore only result if the very form of the patented means is reproduced, in an equivalent form, and in view of what characterizes its patentability, namely, probes consisting of fragments of cloned DNA defined by their restriction sites and corresponding to the retroviral genome contained in the clone λJI9…

Another example is the decision in Mundipharma Laboratories and others v Sandoz and others where the Tribunal de Grande Instance de Paris, 3rd chamber, 3rd section, on July 2, 2010 stated:

In the present case, in order to prevail under the theory of equivalents, the function of the cellulose ether in claim 1 had to be new, but this function, which was recognized as delaying the release of the active ingredient, was already known in prior art. Thus, the UK patent 2 196 848 filed on October 22, 1987 with a priority date of October 31, 1986, relating to a composition of controlled release hydromorphone, guaranteed an analgesic action of at least twelve hours, with a dissolution profile falling within the rate values claimed in the contested patent and specified that the substances in the patent were not a controlled release matrix are hydrophilic or hydrophobic polymers, as gum, cellulose ether…

Under these conditions, infringement by equivalence cannot be retained.

We note that in the two above cases, the claimed means did not perform a novel function, thus there was no infringement under the doctrine of equivalents.

This post was written by Lisa Mueller of Casimir Jones, and Francine Le Péchon-Joubert and Carlyne Sevestre of De Gaulle Fleurance & Associes

 

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