Literal Infringement

Principle

Literal infringement occurs when all the features of a claim are reproduced (infringement is assessed by similarities, not differences, Paris Court of Appeal, 4th Chamber, June 9, 2000).

In practice, the analysis of this type of infringement is very similar to the analysis we would perform if we were assessing the novelty of the claim in relation to the object in question.

Exception to the Principle: An Addition Contrary to the Purpose of the Invention

However, be aware that an object reproducing all the features of a claim but possessing additional features contrary to the purpose of the invention will not be considered infringing (e.g., adding an expensive part to a device when the purpose of the invention is to reduce costs, Paris Court of Appeal, Pole 5, 1st Chamber, October 2, 2013; Filmop v. Dit et al.). Personally, I find this reasoning flawed, but it is upheld by French courts.

Literal Infringement but Slightly Different Nonetheless…

The imagination of French judges knows no bounds, and this must certainly be credited to them…

In the « Pemetrexed » case (Paris Judicial Court, 3rd Chamber, 3rd Section, September 11, 2020, Case No. 2017/10421), the judges ruled that literal infringement existed because:

  • The claim specified « pemetrexed disodium » (whereas the allegedly infringing product contained pemetrexed diacid), but the person skilled in the art, upon reading the description, would understand that the form of pemetrexed had no impact on the desired effect of the drug and that the addition of the term « disodium » did not truly limit the claims.

Well… Anyway…

So here we have a literal infringement « but not quite, since it is understood that…« 

Infringement by Equivalence

Principle

Under this theory, an essential structural feature of the claims is absent and replaced by a new means.

An essential feature may very well be found in the preamble of the claim (Paris Court of First Instance, 3rd Chamber, 2nd Section, December 10, 2004).

History

In reality, infringement by equivalence is a judicial construction originating in the United States (US Supreme Court: Graver Tank & Mfg. Co. v. Linde Air Products, May 29, 1950).

This judicial construction was subsequently adopted in Europe, particularly in France.

Three-step test

The French test consists of three steps.

For infringement by equivalence to be established, it is necessary that, cumulatively (Court of Appeal of Paris, Pole 5, 1st ch. 14 March 2012):

  • the function of the new means is identical to that of the non-reproduced characteristic; the function is the primary technical effect of the characteristic; for example, the function of a lock is to secure a door; the new means contributes to a result of the same nature (i.e., « the same function, for a result of the same nature ») (Cass. Com., No. 08-14741, 15 September 2009); the result is the intangible advantage that the function provides; for example, the result of a lock is to secure access to a dwelling; the result must be of the same nature (thus not necessarily identical). This result may be slightly inferior; the function of the non-reproduced characteristic (i.e., in the context of the claim) must not be known (i.e., novel) (Regional Court of Paris, 3rd ch., 2nd sect., 6 July 2007 or Cass. Com., No. 08-14741, 15 September 2009 or Com., 20 November 2007, appeal No. 06-17915). Novelty must be assessed as of the filing date of the patent and not as of the date of the infringement (Cass. Com., 31 March 2004).

The distinction between function and result must be clearly made (Cass. Com., 27 June 2018, No. 16-20.644).

As you may have noted, the definition of the function is crucial for this analysis. If a generic function is chosen (likely by considering the characteristic out of context), it is probable that it will be identical and not novel. If a specific function is chosen (by considering the context of the invention), this function will likely not be identical.

Furthermore, it is likely that:

  • the function must be mentioned in the description or obviously derive therefrom; it must not be introduced, a posteriori, by the patent proprietor; the characteristic must not have been added during the examination procedure in response to a notification (Court of Appeal of Paris, 4th ch., sect. A, 24 September 2003). The judges consider that such an addition would have allowed overcoming an objection regarding patentability and therefore does not have a protectable equivalent.

It should be noted that the Protocol on the Interpretation of Article 69 EPC (Article 2) explicitly recognizes the doctrine of equivalents.

Special case of combination inventions?

In the context of a combination invention (i.e., not merely a juxtaposition of means), the Court of Appeal of Paris appeared to indicate that the reasoning of « identical and novel function » cannot be applied (Court of Appeal of Paris, 4th ch., 28 May 1999).

It considers, in fact, that reasoning regarding the known effect of a component taken in isolation is irrelevant, since the very purpose of the invention is to make the components of the invention cooperate « to produce an overall result other than the sum of the results they would produce individually« .

Although at first glance the analysis seems appealing, I do not share the Court’s opinion.

Indeed, any « true » invention (i.e., excluding juxtaposition inventions, I mean) can be seen as a combination invention: an invention is an assembly of known elements (if the claim is broken down into sufficiently small elements) cooperating to produce an inventive result that goes beyond the mere sum of the results of each element.

Infringement by secondary differences or « execution variants »?

In this case, certain non-essential characteristics are not reproduced or are reproduced differently.

This infringement may be:

  • by omission of a non-essential means (Court of Appeal of Paris, 4th ch., sect. B, 19 November 2004, in this case the missing means was indicated as optional in claim 1); by replacement of a non-essential means (Regional Court of Paris, 3rd ch., 16 January 1998): today, it is often considered that such replacement may also be viewed as « infringement by equivalence » (see above); the characteristic must not have been modified during the examination procedure in response to a notification. Indeed, the judges consider in this case that the characteristic is essential (Court of Appeal of Paris, 4th ch., sect. A, 24 September 2003, Marti Sala and Posimat v. Vasquali).

As you may have gathered, I do not really approve of this analysis of infringement, but some believe that such infringement exists (Cass. Com. 6 November 2012, appeal No. 11-19375) and therefore it should be mentioned.

Indeed, I do not understand how we could consider a characteristic as non-essential if the drafter nevertheless included it in the claim… Third-party legal certainty is not ensured by such an approach!

Partial infringement?

Principle

This type of infringement would be the infringement of only part of the claim (C. Cass. com. n°85-16725 of April 28, 1987, Marchal case), even if certain essential features are missing.

Criticism and disappearance of this concept

Legal scholars were outraged upon reading this decision…

This theory of « partial infringement » now appears to be challenged by lower courts, and the rare case law referring to « partial infringement » seems, in reality, to be a misuse of language to describe:

For reference, I would point out this decision by the Court of Cassation of January 17, 1872, which states that there is no partial infringement if an essential element of the claim is not reproduced: in short, the theory of « partial infringement » seems quite shaky…

The abandonment of this approach appears to be confirmed by the decision in Cass. Com. April 3, 2012, appeal no. 10-21084.

Infringement by improvement?

The saying « to improve is to infringe » is often heard…

This is not entirely true: improvement is indeed an infringement only in the sole case where it consists of:

  • adding means to those claimed (literal infringement), or
  • slightly modifying one (potentially, infringement by equivalence, see above).