La Cour de cassation (French Supreme Court) in France has vacated a judgement by the Cour d’Appel (Court of Appeal) and remitted an infringement case, SCA Tissue France vs. Sipinco and Global Hygiéne, back to Cour d’appel ordering them to reexamine the issue of contributory infringement. In the ruling from the Cour de Cassation, the question regarding how to interpret contributory infringement for a combination invention is dealt with.

Contributory infringement is provided for in Article L 613-4 of IPC, which prevents the supply or offer to supply, in France, of the means of implementing, in France, the invention with respect to an essential element thereof.

The patent at issue is EP 1 799 083 B1 concerning a paper dispenser comprising a dispensing orifice with a nozzle and a toilet paper roll comprising rectangular paper sheets defined by precuts, the paper sheets having a specific length, width and a specific length/width ratio, wherein the nozzle and the roll of paper is designed so that the paper sheets are unwound one at a time and emerge with less crumpling from the nozzle and are consumed in an optimum manner.

In opposition proceedings at the EPO, the Boards of Appeal decided to maintain the patent as granted.

In parallel, the Tribunal de grand instance in France (High Court) decided to revoke EP’083 for insufficient disclosure and rejected therefore SCA Tissue France’s infringement claim. The decision from the Tribunal de grand instance was however later set aside by the Cour d’appel and the patent was held valid.

Cour d’appel de Paris

Cour d’appel de Paris therefore had two infringement questions to consider;

  1. Whether defendants had committed direct infringement by selling a paper dispenser and toilet paper falling with the scope of the patent?
  2. Whether defendants also had committed contributory infringement by delivering toilet paper falling with the scope of the patent intended to be used in the patented paper dispenser?

It may easily be understood that it may have a significant impact for the calculation of damages whether also selling only the toilet paper is considered to be patent infringement.

Cour d’appel decided that direct infringement had been committed by the defendants, but they did not consider that contributory infringement had been committed. The motivation for the latter decision was;

  • That the invention lies in the combination of, on the one hand a toilet paper with specific features, and on the other hand a paper dispenser with specific features, adapted to dispense paper sections one at a time in an advantageous manner. Therefore the means in relation with an essential element of the patented invention in accordance with in Article L 613-4 of IPC may not consist of one of the combined means.
  • That there can be no contributory infringement when the supplied products (toilet paper) are consumable goods which are to be integrated into the patented dispenser existing independently from the consumable goods,
  • That the toilet paper roll in question was sold or marketed without any documents mentioning that the toilet paper roll was compatible with the patented dispenser.

La Cour de cassation de Paris

SCA Tissue France appealed the judgement taken by the Cour d’appel in respect to contributory infringement at the Cour de cassation.

In the ruling by the Cour de cassation, the decision that contributoy infringment has not been committed is vacated and the case is remitted back to the Cour d’appel for reexamination of the question if contributory infringement has been committed by Sipinco and Global Hygiéne.

In the ruling from the Cour de cassation it is stated that contributory infringement of a patent covering an invention consisting of a combination of means (in this case toilet paper rolls and a paper dispenser having certain features) may result from the provision of a means relating to an essential element thereof where the third party knows or it is evident that this means is suitable and intended for the implementation of this invention, even though it is a constituent element thereof.

Cour de cassation also commented on the point in the decision from the Cour d’appel regarding consumer goods and that there can be no contributory infringement when the supplied product is a consumable product which is to be integrated into the patented dispenser existing independently from the consumable product. The Cour de cassation ruled in this regard that this does not influence the decision of contributory infringement; the determining factor is if the means constitutes an essential element of the invention.

As to the question, whether it has an impact if there is any documentation or not in connection with the toilet paper rolls regarding that these are compatible with the patented paper dispenser, the Cour de cassation considers that the crucial question is if the specific paper sheet dimensions correspond to dimensions commonly found on the market or not, so that it is therefore obvious that the toilet paper rolls are intended for use in accordance with the patent EP ’083.

To conclude, it does not come as a surprise that the Cour de cassation considers that for contributory infringement no distinction should be made between non-consumable and consumable goods, as in this case toilet paper rolls intended for use in a paper dispenser. The fact that Cour de cassation considers that contributory infringement should not be judged differently for an invention regarding a combination of means also seems reasonable.

Cour de cassation furthermore rules that it is only for cases where the products are commonly on the market that it needs to be established whether the third party has incited the person to whom he supplies the products to commit infringement. This is certainly an ease of the burden of proof for the plaintiff in cases regarding contributory infringement