How many deaths can one die?

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Case No. O2017_015 | Decision of 7 November 2019 | ‘Rame ferroviaire modulaire’

HEADNOTE

Art. 56 EPC, Art. 1(2) PatA: Inventive step and technical disadvantages in the event of a change in the teaching of the state of the art.

If an obvious technical disadvantage for the skilled person results from a change of the teaching of a prior art leading to the claimed invention, it cannot be asserted, that the skilled person would not seriously consider such a change of the teaching of the prior art, if at the same time the claimed invention does not remedy that disadvantage in an unexpected manner, but merely accepts it.

Alstom’s logo

The patent at stake in this infringement case is Alstom‘s EP 1 024 070 B1; see EPO Register and Swissreg for further bibliographic information. We have reported about the main hearing in this matter on this Blog here.

Alstom alleged that Bombardier‘s Twindexx train in the IR100 (SBB RABe 502) configuration infringes EP’070:

The IR100 configuration of Bombardier’s Twindexx train
SBB logo

Please find some further information about the Twindexx train on SBB’s website, and on Bombardier’s swissdosto.ch website and fact sheet. The video below is embedded from swissdosto.ch, for amusement of the railway enthusiasts out there before we are going to have a closer look at the more legal issues of the case …

Promo video, embedded from swissdosto.ch (Bombardier)

The relevant claims are the independent claim 1 and its dependent claim 7 (emphasis added), as asserted by Alstom:


Claim 1:

A modular railway rake formed of at least two vehicles (1, 2) with two superposed levels, including at least one bogie (10) including at least one driving axle, at least one bogie (11) including at least one carrying axle, and on-board equipment including at least one power supply electronic unit (19) for supplying motive power to one or more traction motors, at least one motive power supply unit (22, 25) for supplying power to the electronic unit (19), at least one auxiliary power supply unit (30) for supplying power to auxiliary equipment, and at least one device (21) for connection to an overhead power supply network, in which rake the motive power factor of a vehicle or a group of vehicles is defined as the ratio of the number of driving axles to the total number of axles of the vehicle or group, the rake being characterized in that at least one vehicle (1) includes at least one bogie (10) including at least one driving axle and at least one bogie (11) including at least one carrying axle, at least one bogie (11) of the rake including at least one carrying axle is associated with at least one of said on-board equipment items (19; 22, 25; 30; 21) disposed approximately over that bogie, and the ratio between the respective motive power factors of any two groups of two vehicles of the rake is not less than 1/3 and not more than 3.

Claim 7:

A railway rake according to claim 1, characterized in that at least one power supply unit (22, 25; 30) is disposed approximately over a bogie (11) including at least one carrying axle.
Bombardier Logo

Bombardier took the position that the IR100 did not make use of the features as marked-up in bold above; in particular, that the IR100 was not modular and did not have two superposed levels in the sense of EP’070.

Alstom had amended the request for injunctive relief after the instructional hearing in that the term ‘modular’ was replaced by the following:

What ‘modular’ means, in Alstom’s view

With regard to modularity, the court came to the conclusion that only a modularity could be meant which allows the train operator to react on momentary needs, by way of adding vehicles to preexisting train compositions. The decision refers to ¶¶[0002]-[0003] of the general specification of EP’070, as well as the explanations with respect to specific embodiments:

Alstom had argued that also modifications in medium and long term would be covered by the term ‘modular’ when properly construed. This, however, did not convince the judges because such broad reading would cover virtually any system composed of a plurality of parts. The term must necessarily have a (more narrow) meaning. Otherwise, so the decision, it would not have been used (¶19):

Par conséquent, étant donné que la rame ferroviaire est définie dans la revendication comme etant «modulaire», ce terme doit nécessairement avoir une signification particulière, sinon il n’aurauit pas été spécifié dans la revendication.

That’s pretty catchy, isn’t it? I would not be surprised if (mis?)use of this reasoning will become somewhat popular in response to an invalidity challenge:

Uuhu, hold on, the feature is in the claim, it must have a very specific meaning, else it wouldn’t be there.

Well, not necessarily. Sometimes there are features in a claim that are just trivial — and can be (easily) challenged as such.

Anyway, the decision holds that omission of the term ‘modular’ in the plaintiff’s request for injuctive relief as amended resulted in the court’s finding that the request went beyond the scope of protection of EP’070 and that it had to be rejected already for this reason alone; ¶21. Death #1.

This could have been it. However, the decision gives even more reasons as to why the complaint had to be rejected: EP’070 was neither valid nor infringed.

After a detailed claim construction, the decision holds that EP’070 to the invoked extent was novel over the closest prior art, D1, at least for the modularity of the rake and for the positioning of heavy elements approximatively above the carrying axle bogie.

Now … what is D1?!

But … what the heck is D1?

The decision is silent on what D1 is — which is regrettable. No chance to really review the stringency of the court’s line of arguments. It can only be assumed from what had been pleaded at the main hearing and some annotations in figures reproduced in the decision that D1 is a publication about the first generation DD-IRM (1994) train of the Dutch Railways (see Wikipedia: NS_VIRM).

Anyway, the decision holds that the subject-matter of EP’070 to the invoked extent did not involve an inventive step over the teachings of D1. The differentiating features (first, the modularity; and, second, the positioning of heavy elements approximatively above the carrying axle bogie) are associated with the technical effects that the weight is distributed evenly over the length of the train rake and that train operation becomes more profitable.

As to modularity, the decision holds that the skilled person would arrive at a modular train without further ado if he/she were to develop a more flexible and hence more profitable train rake.

With regard to the positioning of heavy equipment (such as the down chopper module in D1) the judges agreed with the patentee in that such heavy equipment would intuitively be placed in the lowest possible location of the rake, e.g. at the bottom of a low voltage machine room. However, and this is where the headnote stems from, if the claimed invention merely accepts an obvious disadvantage without suggesting any remedy thereto, the unfavorable feature cannot support the finding of an inventive step.

... when an apparent technical disadvantage of a technical solution is not overcome in a non-obvious manner but merely accepted.

In consequence, EP’070 was found obvious over D1 in combination with the skilled person’s general technical knowledge. Death #2.

At the face of it, the hn makes much sense against the background of the case at hand. But is the absolute character of the statement justified? One might well think of situations, where a particular disadvantage of a feature would be merely accepted (rather than remedied), but where the choice of the feature would still be non-obvious. For example, when the commonly known and persisting drawbacks are set off by other, unrelated or indirect advantages associated with the feature. In our perception, the hn should be understood with the provision marked-up below:

[…] if at the same time the claimed invention does not remedy that disadvantage in an unexpected manner, but merely accepts it and does not compensate for it by any unexpected technical advantage.

This would actually be perfectly in line with established case law of the Boards of Appeal of the EPO; see Case Law of the Boards of Appeal (2019), I.D.9.19.1, in particular T 119/82 (hn 2).

Again, the decision could have ended at this point. But the decision also expands on the question of infringement, i.e. that Bombardier’s Twindexx IR100 was not modular in the sense as described above. In particular, it could not, due to software issues, be supplemented with additional coaches nor could coaches be removed by the train operator in the short run. Also, no equivalent feature providing such flexibility could be found in the IR100 train. Death #3.

It is remarkable that the decision gives no less than three reasons for rejecting the request for injunctive relief. This is rarely seen. Still, it may well serve procedural economy: Both the parties and the appellate body are provided with a more complete picture of the first instance’s views. This way, the unsuccessful party can make a more informed decision on whether or not to lodge an appeal; and if an appeal is lodged, the appellate body might not have to remit the case back to the first instance — hence saving time and money.

Patent Reaper

But as if three reasons were not enough, death #4 was just around the corner: EP’070 lapsed after 20y in January 2020.

The decision has not been appealed / is final.

Reported by Jolanda MINDER and Martin WILMING

BIBLIOGRAPHY

Case No. O2017_015 | Decision of 7 November 2019 | ‘Rame ferroviaire modulaire’

Alstom Transport Technologies SASU
./.
Bombardier Transportation (Switzerland) AG

Panel of Judges:

    • Dr. Philippe DUCOR
    • Dr. Tobias BREMI
    • Christophe SAAM

Judge-rapporteur:

    • Dr. Tobias BREMI

Court Clerk:

    • Agnieszka TABERSKA

Representative(s) of Plaintiff:

Representative(s) of Defendant:

DECISION IN FULL

PATENT IN SUIT

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One Reply to “How many deaths can one die?”

  1. When looking at the wheel configuration the Bombardier train, it is as modular as the Alstom one. And it has two levels as well.

    The Dutch IRM cannot be divided as they run in a fixed configuration and are thus not modular. A TGV is neither modular because it has a Jakob bogie between two coaches which cannot be separated at will.

    As far as the on-board equipment is concerned, it could also have been disposed at the lower part of the coach supported by the bogie. As the skilled person has three possibilities at his disposal for the on-board equipment (on the roof, over the bogie and at the lower part of the coach), and he choses one, it has to be explained why he chose the claimed solution.

    Furthermore, Art 56 does not require that an improvement over prior art is achieved.

    With due respect to the court, I have difficulties in following the decision. It smells strongly of an ex-post facto reasoning.

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