NJOY Netherlands B.V. v. Juul Labs International, Inc., Decision of the UPC Central Division Paris Seat (Section1), 5 November 2023, Case no. UPC CFI 309 /2023
The Dutch branch of US e-cigarette producer NJOY brought several revocation actions against Juul Labs. The Paris Central Division recently gave two decisions. EP 3 498 115 (‘Vaporization Device Systems and Methods’) was revoked due to extension of subject-matter.
Late filed facts and evidence
The CD notes that a clear distinction between newly introduced arguments and arguments raised as a mere reaction to previously filed arguments cannot always be drawn. In order to secure fairness and equity of the proceedings (Preamble 9 RoP 5), especially to safeguard the fundamental right to be heard, a generous standard is to be applied. An argument which may be considered a further reaching response to the other party’s previously raised argument is to be admitted.
Auxiliary requests for amendment
According to the dispositive principle (procedural maxim) a dispute before the Court generally is controlled by the parties; Art. 76 (1) UPCA rules that the Court shall decide in accordance with the requests submitted by the parties. By the sequence of its requests a patent owner as Defendant to a revocation action may indicate that it requests the Court to consider its application(s) to amend the patent prior to the evaluation, if the patent as granted shall be revoked in part and limited by a corresponding amendment of the claims.
Art. 65.3 UPCA only pertains to the granted patent. Art. 65.3 UPCA contains no obligation to the Court to evaluate, if an application to amend the patent filed by the patent owner can be allowed in part. Within an application to amend the patent a certain claim set is either allowable (as such; the complete claim set proposed) or not.
The CD ruled that proposed amendments must be reasonable in number in the circumstances of the case. Not all amendments should be dismissed en bloc if not reasonable in number. In this case Defendant filed 57 conditional auxiliary requests. The amendments proposed by auxiliary requrests 1 to 12 were considered to be reasonable.
The Decision can be read here.
