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Wednesday, 16 January 2008

DSS have French patent revoked


The IPKat has just received a very helpful and friendly message from Otto Swens, a partner at Vondst Advocaten, about the latest episode in the ongoing DSS story. Regular IPKat readers will already be familiar with this company, which has been attempting to enforce their European patent relating to anti-forgery measures, and in particular against the European Central Bank, who DSS would argue are either already using or at least will want to use their patented technology in banknotes. The ECB has responded by attempting to have the patent revoked in each state in which it is in force. Otto takes up the story:

"On your website you posted various messages already [IPKat comment: here and here] on the action that the US company DSS filed at the European Court of First Instance against the European Central Bank for infringement of their European patent no. 0 455 750 with regard to the Euro banknotes. This action referred to 9 jurisdictions, namely Netherlands, Germany, UK, France, Italy, Belgium, Austria, Spain and Luxembourg. In response, the European Central Bank filed in March 2006 nullity actions against the relevant national parts of the European patent in suit in these nine jurisdictions claiming the patent to be invalid among others for added matter.

In this context, there is currently an interesting Europe-wide discussion on "added matter" ongoing. IP Kat already reported about this on 4 September 2007, indicating the German Court rejected the added matter argument by the ECB and ruled that the German part of the DSS patent was valid, whilst the UK High Court previously had accepted the same added matter argument and revoked the UK part of the DSS patent.

Now, there is a third decision available, namely the judgment of the Tribunal de Grande Instance in Paris of January 9, 2008 [available here] revoking the French part of the patent for added matter (cf. Pages 4 ff. of the attached English translation of the judgment, in particular page 12). Just like the UK Court [decision here], the Paris Court rejects DSS' main defence argument that claim 1 as granted would be disclosed in claim 13 of the application as originally filed. DSS had mainly relied on this claim which refers to copying an original document in a scanning copier. DSS argued that it disclosed the incorporation of the claimed security feature (overlay of a grid); in other words, DSS argued that by simply copying an original image with a copier, a "copy-protected document" would allegedly be created which includes an overlaid grid. The Paris Court rejected this approach. It held that the inventor had only disclosed a concept of rearranging lines of an artistic image but not the claimed overlay of a specific grid over the image lines. Interestingly, the French Court shortly addressed the ruling of the German Court on the parallel German patent and stated that the German judges erred in their construction of the original application, in particular of claim 13. Rather, the Paris Court followed the UK judgment to which it also explicitly referred. The French and UK judge apparently agree!"
A press release from DSS says that they will be appealing against this ruling. Putting his predicting hat on, the IPKat would hazard a guess that DSS now have a much slimmer chance of winning their fight to get large sums of money out of the ECB, now that they appear to have lost the fight (but not necessarily the whole battle, given the possibility of appeals) in both the UK and France. The words stone and blood come to mind, for some strange reason. One must, however, wait to see how the German court decides on the question of infringement, given that the EP(DE) patent has been found to be valid.

5 comments:

zoobab said...

What is "added matter"?

David said...

A123(2) EPC: "The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed."

RTFM, as they say.

Anonymous said...

From Zoobab a fair question, I would say. The German Federal Patents Court couldn't see that "matter" had been "added" to the app as filed, whereas the British and the French could. Mind you, the German courts always have struggled to grasp the concept of what a document "discloses". See, they construe a novelty reference as of the date of the claim, and they can't tell the difference between what the doc discloses and what's obvious to a technically skilled reader. It's a puzzle to them, every time the EPO declines to follow the German national line. Myself, I blame the German system of court-appointed technical experts, to tell the judges what a technical document discloses. In the DSS case, the first line of appeal from the Pats Ct is the Supreme Court. Only snag for the ECB Appellant is the 5 year waiting list.

zoobab said...

Why do you blame the German system of court-appointed technical experts?

Anonymous said...

Zoobab, because: A patent is to be construed by the technical reader, right? Not a lawyer. The judges are not that reader, right? The judges need help. It lies deep in the German psyche to defer to the top expert. On the TV, the name of the weather forecaster is given in the sub-title not as Michael Fish but as Diplom. Meteorolog. Michael Fish, so we know that his forecast is authoritative. Politicians sport their doctor titles whenever they need extra clout. When the good Prof. Dr.Rer.Nat. Dr. Chemie. opines on what a doc means, the court can't do much else but swallow it (because it lacks the fact-finding tool of cross-examination of party witnesses). And the good professor is not a professor of the profession of telling the difference between what a doc discloses and what it makes "obvious" to the skilled reader. He has no professional qualification and has had no Ausbildung or work experience that sensitises him to that distinction. You see that from his "expert opinion" on the matter. Was there a court expert in the DSS case? I don't know. But I bet there will be one when the case gets up to the BGH. 5 years from now.

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