In 2010, a French telecom provider launched the sixth generation of its “box”, which serves as an interface between the provider’s network and subscribers’ IT and/or audiovisual and/or telecom equipment and allows such subscribers to have access to the Internet, including TV and telecom services via IP. This “box” is made of two electronic devices (a router and a TV box) linked through a PLC (Power Line Communication) or Ethernet connection.
Its direct competitor is the owner of a European patent called “Switching of multimedia session of a mobile terminal to an equipment of a local home network”.
Considering that the above equipment of the “box” implements claims of the French part of the patent in question, the patent owner has set up an infringement seizure, appoints an expert and sues the telecom provider for infringement. More precisely, the patent owner blames this provider for infringing its patent by importing, manufacturing, offering, marketing and holding for these purposes, the router box and its specific firmware as well as the application allowing for a remote management interface of the “box”.
The defendant invokes the invalidity of the claims of the French part of the European patent relating to computer programs per se because they are excluded from patentability in application of Article 52-2c) and 3 of the Munich European Patent Convention (“EPC”).
The patent holder does not challenge the fact that such claims cover computer programs but argues that according to the practice of the EPO, such programs are patentable.
Nevertheless, the Paris Court of First Instance states, on the one hand, that in application of Article 52-2 of the EPC, “computer programs are not considered as inventions”. On the other hand, according to Article L.614-12 of the French Intellectual Property Code, “the invalidity of the European patent shall be declared by French courts for any and all grounds referred to in Article 138, paragraph 1 of the EPC,” in particular the lack of patentability of the subject-matter of the patent in application of Articles 52 to 57 of the EPC. Moreover, the court further noted that “Article 52 of the EPC is perfectly clear and does not require any interpretation: computer programs per se are excluded from patentability because they are protected by author rights”.
The patent holder argues that the EPO admits claims relating to computer programs by naming them “program-products” (defined by the EPO as a “‘computer program’ product that, when run on a computer, (…) produces a further technical effect which goes beyond the “normal” physical interactions between a program (software) and a computer (hardware)”, EPO, Board of appeal, T 1173/97, IBM, 1st July 1998). Such argument is rejected by the Paris Court of First Instance which states that such “trickery of speech” shall not allow the grant of patents contra legem.
Finally, one of the claims invoked by the patent owner related to a “storage medium on which programs may be stored.” The court reminds that if a computer program is included in a patent application, such argument shall not exclude the invention from the scope of patentability. The court also stated that a computer program may be protected if it provides a further technical effect to the invention without it having to be clearly defined. However, according to the court, in the present case, the storing medium does not claim any particular technical characteristic and its sole function is the storing of computer programs.
Consequently, the Paris Court of First Instance declares the invalidity of all the claims relating to computer programs per se for lack of patentability and found inadmissible the patent owner’s infringement action against its competitor.