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Thursday, 4 January 2018

Brussels court in FN Herstal v Heckler & Koch wrestles with combination invention v mere aggregation of features

Merle wondered if he was a combination of
colors or a mere aggregation of features
One of the great joys of being an IP litigator in UK is that you get to meet and work with IP lawyers from all over Europe.  The AmeriKat met Philippe Campolini (Simont Braun) several years ago at the Young EPLAW Congress over a beer in Brussels.  Now, Philippe reports for the IPKat on case from April concerning a patent for automatic small-arms and the SCAR assault rifle developed for the US Special Operations Command.  Not the natural subject matter you would immediately associate with Belgium, but Philippe explains why this case is interesting for Belgian patent law and unfair competition:
"On 28 April 2017, the French-speaking Court of commerce of Brussels rendered a judgment in a patent case opposing the Belgian weapon manufacturer FN Herstal to its German competitor Heckler & Koch.
In a nutshell, Heckler & Koch (H&K) is the holder of a European patent granted for an automatic small-arm comprising a specific sliding mechanism supposed to reduce the risks of jamming in adverse conditions. In 2015, H&K argued that the SCAR assault rifle, developed by FN Herstal in 2004 for the US Special Operations Command (SOCOM), would infringe its patent. After a saisie-description executed at FN Herstal’s premises, FN Herstal launched a nullity action and an action seeking a declaration of non-infringement. H&K launched a separate action for alleged patent infringement and unfair competition. Both cases were joined by the Court.
Besides several formal nullity grounds raised by FN Herstal following modifications of the patent claims in the course of the proceedings by H&K, FN Herstal argued that H&K’s patent lacked novelty and inventive step in the light of several prior uses and documents. The Court followed FN Herstal’s argumentation on the lack of inventive step and annulled H&K’s patent on that ground. 
This judgment is noteworthy for several reasons.
First, it is to our knowledge the first judgment in Belgium that applies the distinction made by the EPO between combination inventions and the mere aggregation of features in a systematic way. The Court reminds us that the existence of a combination invention requires that the relationship between the claim features or groups of claim features be one of functional reciprocity or that they show a combinative effect beyond the sum of their individual effects. If such a relationship between these features cannot be demonstrated, it is sufficient to establish that each of these features is separately obvious in the light of the prior art. In such a case, there is not only one objective technical problem for the assessment of inventive step, but several “partial problems”. 
Applying these principles, the Court considered that the claim features that H&K added to the main claim of its patent in the course of the proceedings (and which were based on the initial dependent claims 2 and 3 of its patent) did not allow it to obtain a technical effect that goes beyond the normal known or obvious technical effect(s) of each of these claim features taken individually. Therefore, what H&K presented as a combination invention was in fact considered by the Court to be a mere aggregation of known features, where each of these features solves its own partial problem in a known or obvious manner.
Second, the judgment is also interesting for its assessment of H&K’s unfair competition action based on alleged slavish copying. H&K argued that even if its patent was declared invalid, FN Herstal would, in any case, have slavishly copied some internal components of H&K’s G36 assault rifle, which would amount to unfair competition. In its assessment of this claim, the Court first considered that features that had already been used by weapon manufacturers prior to their inclusion in H&K’s G36 rifle cannot be considered “copied” by FN Herstal. The Court also stated that features that have been modified by FN Herstal to provide them with additional technical functions cannot be considered “copied” either, and in any event not “slavishly”. The court then goes into a detailed analysis of the different allegedly “copied” features and concludes that none of them was copied “slavishly”.
More interestingly, the Court confirmed, after this factual analysis, that copying – even slavishly – is, as such, not prohibited by law. In line with the case law of the Belgian Supreme Court, the Court held that copying is only prohibited by law if such copying amounts to an IP right infringement or in case it is made under “accompanying circumstances” that are contrary to honest trade practices. This can be the case if a risk of confusion is created or if another unlawful behavior can be identified, it being understood that copying as such cannot be considered an unlawful behavior in the absence of a valid IP right. In the present case, the internal components at stake were not protected by any (valid) IP right and H&K had admitted that there was no risk of confusion.
The other “accompanying circumstances” invoked by H&K were all rejected by the Court. The fact that customers would have been enticed was not established and, according to the Court, it would not make a difference anyway because the enticement would only find its origin in the act of copying, which is as such lawful. The Court also makes clear that the mere fact that alternative technical solutions could have been used, does not mean that the copy would be unlawful either. Even the fact that the one who copies thereby takes advantage of the investments of someone else without himself making any creative effort (which was not the case of FN Herstal in the present case, the Court underlines) cannot amount to accompanying circumstances contrary to honest trade practices.
Finally, it is noteworthy that this judgment has been rendered by a chamber presided by a judge who recently joined the Court of commerce of Brussels and who is both legally and technically qualified, which is rather exceptional in Belgium. The appointment of such a judge at the Court of commerce of Brussels is a welcome evolution for all Belgian patent practitioners given that said Court is exclusively competent for patent cases in Belgium since the 1st of January 2015. " 
The AmeriKat understands the case is pending appeal.  You can access the copy of the decision here (in French).  


THE US anon said...

Reminds me of a discussion awhile back at Patently-0 in which I was corrected by a USPTO examiner in that the MPEP specifically states that rejections of "mere aggregations" are not proper.

Not sure where the MPEP gets this (given Funk Brothers), but it would not be the first time that the MPEP simply gets the law wrong.

Anonymous said...

Are the "formal nullity grounds" an alleged extension of the subject matter of a claim beyond the disclosure of the original application documents? If this is the case, I would not say that this is a formal matter but a very very substantive one just like novelty and inventive step.

Roufousse T. Fairfly said...

When I began looking up this item, I became very mildly annoyed to discover that this item had been already published verbatim on another blog more than three months ago. It could have been updated with information about the context and ramifications of this case.

For instance, why didn't H+K assert US5920028 against FN, if FN had indeed delivered a similar design to US special forces around 2004? (Or if they did, where can one find the details of the action?) For that matter, why wasn't H+K's EP patent asserted earlier than 2014?

Patent EP0803698 was on its last legs when this action was introduced, and expired two months before the decision was pronounced. Furthermore, the French DoD had already adjudicated the preceding year its tender for 100k weapons in favor of H+K.

One might say that FN may have won the gun battle against H+K, but lost the war.

Why is H+K "pounding the rubble" and appealing the decision? What are their arguments in appeal anyway, if it's still pending? Was it just a matter of reminding FN that contesting the result of the tender might bring more trouble?

Looking up the French RFP, most of the commentators lament the disappearance of the national light weapon industry. The manufacturer of the currently issued FAMAS went out of business more than a decade ago. (BTW, they also used to run the famous mail-order "Catalogue Manufrance". It's like if the M16 had been designed and manufactured by Sears Roebuck.) Some comments claim that FN actually won the competition, whereas others state that H+K was the only bidder who passed all tests with flying colors. Would FN have been more responsive without this manifestly strategic action by H+K action? In any case, the price seems to have been the clincher, with a global tender value of 120M€. Keeping the robes busy in Belgium wouldn't have been an insignificant investment for H+K in view of that amount, but still a promising proposition.

I hope H+K are not pursuing their claims of plagiarism in their appeal case. If they actually ever got anywhere, I'm sure the likes of Nestlé (Nespresso, Kit Kat) would take great interest in the result. In any case, copying weapons lock, stock and barrel is historically commonplace in that particular field. Then there is the case of manufacturers, including H+K, selling plans and tooling instead of finished weapons to buyers of less than sterling reputation in order to circumvent export restriction laws.

An important element of this case are the amendments before both the Brussels court and those made before the EPO in a central limitation procedure according to Art. 105a EPC while the Belgian case was pending. I think that may not have impressed the judges very much. This aspect seems to be rather muddled in the précis.

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