NJOY Netherlands B.V. v VMR Products LLC, UPC Court of First Instance, Paris (FR) Central Division, 27 November 2024, Case no. UPC_CFI_308/2023
The Paris Central Division (CD) has revoked VMR’s patent EP 3 456 214 (EP 214) concerning vapourisers (also known as electronic cigarettes, or e-cigarettes) due to a lack of inventive step.
The court reached a different decision to the EPO Opposition Division, which had previously maintained the patent in in amended form.
This is an important procedural decision. The court confirmed that the UPC uses a “front-loaded” procedure which is subject to the principles of proportionality and procedural efficiency. This means that although a claimant cannot introduce new grounds of invalidity, new novelty destroying prior art or prior art which would be considered a realistic starting point for an inventive step assessment, they can allege new facts and evidence in response to the defence provided that those arguments support the main arguments.
Background
VMR’s patent EP 214 relates to vapourisers. The patent was opposed and upheld by the EPO Opposition Division in amended form.
NJOY filed a revocation action against VMR’s patent EP 214 before the Paris CD on 14 September 2023, arguing that the patent is invalid because of the lack of inventive step. NJOY subsequently filed a new declaration and supporting documents in response to VMR’s defence, to which VMR objected on the basis that they had been filed too late.
Decision
Admissibility of late filed arguments and evidence
Despite the fact that the additional documents were filed late, and the UPC has a front-loaded procedure, in the circumstances the court allowed the additional documents filed by NJOY to be admitted.
The court expanded on its reasoning, and the nature of this “front-loaded” procedure, which puts a claimant under an obligation to set out its full case as early as possible in the first written procedure (paragraph 7 of the Preamble of the RoP). The rationale behind this is to enable a defendant to properly understand and respond to the case against it. It also serves to expedite proceedings; it would undermine one of the primary aims of the UPC system if a party were permitted to gradually introduce arguments into the proceedings.
However, the court went on to say that, there is an element of flexibility, and this requirement should be interpreted in the light of the principle of proportionality and the specific circumstances of each case (Preamble to the RoP). In particular, neither the parties nor the court should not be burdened with tasks that are unnecessary to achieve the stated objective, or excessive and overly detailed allegations of facts and documents which may be presumed to be known to the parties. However, the principle of fairness allows documents that have only become available during the proceedings to be introduced at a later stage, provided the requesting party has behaved diligently.
In revocation actions, the court specified that the claimant must specify in detail the grounds of invalidity and prior art relied upon to support an allegation of novelty or inventive step, which defines the subject matter of the dispute and enables the defendant to prepare a defence, as well as enabling the court to determine if it has jurisdiction to hear the case. This means that a claimant cannot introduce new grounds of invalidity or new prior art which may be considered novelty destroying or convincing starting points for the assessment of lack of inventive step at a later stage. This would result in a broadening or modification of the subject matter of the dispute, and would amount to an amendment of the case (which can only be permitted by the Court in accordance with Rule 263 RoP).
However, the Court acknowledged that a claimant may need to produce new facts or evidence in response to the defendant’s defence which disputes the facts alleged by the claimant or the probative value of the evidence already filed. The court said that this is consistent with the principles set by the Court of Appeal (decision issued on 21 November 2024, UPC_CoA_456/2024 – see EPLAW post here) that while the parties must set out their case as early as possible, specific new arguments may be admitted in the light of specific circumstances of the case.
In the present case, the Court allowed NJOY’s late-filed documents to be admitted because they contained arguments relating to the CGK and claim construction in response to arguments VMR had raised in its defence. Of note is the fact that the court said that the admissibility of the late-filed documents not only relates to arguments that directly respond to the defendant’s arguments but also extends to those that are closely related to them.
Validity: inventive step assessment
The Paris CD held that EP 214 was obvious in view of the prior art.
The court’s approach aligns with earlier UPC decisions, adopting a more holistic version of the EPO’s problem-solution approach.
The court noted that inventive step is defined in terms of the specific problem encountered by the skilled person (Paris LD, Dexcom v Abbott, decision of 4 July 2024, UPC_CFI_230/2023). However, in the present case the patent did not explicitly state which problem is solved by the claimed solution, and the court therefore had to construe it.
The court disagreed with VMR’s characterisation of the problem being to provide a vapouriser with an improved user experience, which it said was too unspecific, did not link to what the invention actually achieves over the prior art and had no reference to the technical aspects of the invention.
Instead, it construed the problem by looking into the patent specification, and found the underlying problem of the invention to be to “develop vaporizer that has a shell having a battery segment and a cartomizer receiving segment with the cartomizer receiving segment defining a chamber having an insertion end distal from the battery 12 segment and a base end proximate to the battery segment and a cartomizer insertable into the chamber at the insertion end, in such a manner that it allows a portion of a cartomizer receiving chamber of the shell to be visible from the outside.” The key aspect of the alleged invention is that it, essentially, contains a window in the cartomizer receiving chamber which allows a portion of the chamber to be visible from the outside. The court said that this is not a pointer to the solution, but the technical context in which the invention must be seen.
The court then went on to consider the prior art, and agreed with NJOY that the teachings disclosed in ‘Pan’ (U.S. Patent Application No. 2010/0242974 A1), plus the CGK, are a suitable starting point for the assessment of inventive step.
In terms of the teachings, the Court found that ‘Pan’ discloses an electronic cigarette with a vapouriser that includes all features of the claimed invention of EP 412, apart from one feature – it does not describe a shell including a window at the cartomizer receiving segment so that a portion of the chamber can be seen from the outside.
However, the court found that including a window as a solution to the problem of allowing a portion of the chamber to be visible from the outside is part of the skilled person’s CGK, and indeed “is the most basic approach known to him or her when confronted with the problem”.
The court went on to note that a second piece of prior art, ‘Lee’ (Korean Patent Application Publication No. 2012-0074625 A) indicates that in existing electronic cigarettes, the mouthpiece is typically made of a transparent or semi-transparent structure to facilitate checking of the level of liquid refillable solution stored inside the cartridge. While the court recognised that using a published patent application or patent specification as an indication of the CGK is questionable, the nature of this type of description can still demonstrate certain techniques that the patentee considered to be widely known at the time, and therefore found this to be CGK.
Therefore, the court went on to find that given this CGK, the skilled person attempting to solve the underlying problem would find the inclusion of a window in the device already disclosed in Pan to be an obvious modification of the prior art. The court therefore found EP 214 to be invalid, and also concluded that none of the auxiliary requests were valid.
Note that while the court reached a different conclusion to the EPO Opposition Division, the prior art before the EPO was different.
Conclusion
This is an important and pragmatic procedural decision. While highlighting the fact that UPC proceedings are front-loaded, it reminds parties to take a balanced approach, prioritising procedural efficiency and speed, whilst maintaining fairness by enabling parties to file additional evidence in response to unexpected arguments.
A copy of the decision can be read here.
