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SA FN Herstal v. Heckler & Koch GmbH, Tribunal de Commerce Francophone de Bruxelles, 28 April 2017

Combination invention vs. mere aggregation of features in patent law

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 on a systematic way. The Court reminds 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 depend claims 2 and 3 of its patent) did not allow 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 considers 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 states 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 confirms, 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 reminds that copying is only prohibited by law in case 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 clients 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 allow to consider 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.

An appeal against the decision is pending.

A copy of the judgment (in French) can be read here.

Summary: Philippe Campolini, Simont Braun (representing FN Herstal in this matter)