NJOY Netherlands B.V. v. VMR Products LLC, Central Division Paris, Decision issued on 27 November 2024, ACT_571565/2023, UPC_CFI_308/2023
Background
On 14 September 2023, NJOY filed a revocation action with the Unified Patent Court's (UPC) Central Division Paris against VMR's European patent EP 3 456 214 B2. The patent relates to the field of vaporizers, also known as electronic cigarettes. NJOY argued the patent was invalid due to lack of inventive step. With its statement of defence to the revocation action VMR also filed a conditional application to amend the patent with 35 auxiliary requests. In its reply to the defence for revocation and in its defence against the application to amend the patent, NJOY submitted new evidentiary documents. The defendant VMR objected to the admission of these documents, arguing they could have been submitted with the statement of revocation already.
Court Decision
On 27 November 2024 the Central Division Paris revoked VMR's patent in its entirety for the UPC territories where the patent had effect, despite its prior maintenance in amended form by the Opposition Division of the European Patent Office (EPO) in October 2023.
Front-Loaded Procedural System
The Central Division Paris emphasized the significance of the UPC's "front-loaded" procedural system. The parties were obliged to "set out their full case as early as possible in the proceedings" (Preamble, para. 7, last sentence of the Rules of Procedure (RoP)). The claimant was required to concretely elaborate its invalidity arguments and submit the evidence in its first written pleading to enable the defendant to prepare an adequate defence and to expedite the proceedings. The latter being a primary objective of the UPC, which would be undermined if the claimant was permitted to gradually introduce new factual circumstances, new legal arguments, or new evidence into the proceedings.
However, the Court stated that this had to be interpreted also in the light of the principles of proportionality and procedural efficiency. The parties should not be burdened with tasks unnecessary to achieve the stated objective. Rule 44 RoP required an "indication" of the facts relied on. Excessive and overly detailed allegations of facts and the production of multiple documents in relation to matters that were presumably known by the opposing party and not to be disputed should be avoided.
A document could also be introduced at a later stage, if it was created or became available to the party during the proceedings, provided that the party had acted in a diligent way. Furthermore, in certain situations, following the defence raised by the defendant, a claimant might also need to allege new facts and evidence, insofar as they were considered capable of supporting the main facts already timely alleged and disputed by the defendant.
Therefore, the Central Division Paris allowed part of the newly filed documents by NJOY into the proceedings, as they addressed the claim interpretation and the common general knowledge of the skilled person to contrast and react to arguments raised by defendant in its defence to revocation. On the other hand, in its rejoinder to the reply to the defence to the application to amend the patent the claimant also illustrated some arguments in reaction to new arguments that the defendant had raised in its rejoinder. In that context, the Central Division Paris stated that it was clear from the wording of Rule 32 RoP and the structure of the proceedings, that the claimant could not raise arguments in its rejoinder that were not previously raised in the reply. Consequently, the judges disregarded those portions of the claimant's response.
Lack of Inventive Step
The assessment of the inventive step by the Central Division Paris was similar to the approach established by the Central Division Munich (see e.g. CD Munich, decision issued on 17 October 2024, UPC_CFI_252/2023; CD Munich, decision issued on 16 July 2024, UPC_CFI_1/2023). Accordingly, it is necessary to determine one or more teachings in the prior art that would have been of interest to a person skilled in the art who seeks to develop an invention or process similar to that disclosed in the prior art. It must then be assessed whether it would have been obvious for the skilled person to arrive at the claimed solution of the underlying technical problem starting from a "realistic" prior art disclosure.
In the case at hand the judges held the patent did not explicitly state which problem was solved by the claimed solution. When assessing how to formulate the underlying problem, the panel looked at the patent's description. They also ruled that the teachings disclosed in the prior art combined with the common general knowledge would have allowed the person skilled in the art to solve the underlying problem of developing a vaporizer that allows a portion of a cartomizer receiving chamber of the shell to be visible from the outside (by inserting a window to facilitate checking the level of liquid inside).
Reduction of Auxiliary Requests
In reaction to the invitation of the judge-rapporteur to examine the possibility of reducing the number of amendments to the patent, the defendant reduced the number of its auxiliary requests from initially 35 to 10. The Central Division found none of them to be inventive.
Key Takeaways
The decision provides valuable guidance to litigants in UPC revocation proceedings:
- Claimants should set out their full case as early as possible
Claimants should specify their grounds of invalidity, as well as the facts and prior art relied on to support the alleged lack of novelty and inventive step in their statement of claim. The Court does not review grounds for invalidity not raised by the claimant.
A claimant cannot per se introduce new grounds of invalidity or new documents considered novelty destroying or a convincing starting point for the assessment of lack of inventive step in subsequent written submissions. Rather, this could be considered a modification of the case, which is permissible only upon specific request and under certain conditions (R. 263 RoP).
- Later submission of new facts or evidence under limited conditions only
According to the Central Division Paris claimants may, however, face a need to introduce new facts also at a later stage. In certain situations, following the defence raised by the defendant, the claimant may thus allege new facts and new evidence, but only insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant or the probative value of the evidence already filed. This underlines again the importance to establish the case as timely as possible. Another exception can be made, for example, if a document was created or became available to a diligently acting party during the proceedings.
- UPC's assessment differs slightly from the EPO's approach
The considerations on the assessment of inventive step are in line with decisions of the Central Division Munich. Although there are some similarities compared to the EPO's "problem-solution approach" when assessing inventive step, the Central Divisions of the UPC seem to adopt a slightly different approach. For example, contrary to the EPO, the UPC does not require beginning with the "closest prior art" for the assessment, but a "realistic starting point" in the prior art seems sufficient.
- Handling of auxiliary requests to be monitored
As regards the number of auxiliary requests, it remains to be seen whether the UPC will continue to encourage patentees to limit their number in general, or whether this is a question of the specific circumstances of each case.
The authors thank Nick Siedler for his valuable support in the preparation of this article.
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