Central Division takes pragmatic approach to late-filed submissions and revokes VMR’s patent for lack of inventive step

In Njoy v VMR (UPC_CFI_308/2023), the Paris Central Division confirmed that the “front loaded” provisions of the UPC should be interpreted in line with the principles of proportionality and procedural efficiency.

The court held that, while the “front loaded” nature of UPC proceedings prevented a claimant from subsequently introducing new grounds of invalidity, new novelty-destroying documents or new starting points for inventive step, the claimant was entitled to allege new facts and evidence in response to the patentee’s defence, insofar as these new submissions supported the main facts that were timely filed and disputed by the defendant.

Background

This case concerns Njoy’s successful application for revocation of VMR’s EP 3 456 214 B1 on the grounds of lack of inventive step.  The action is the third of nine revocation actions filed by Njoy against Juul or its subsidiary VMR in the field of e-cigarettes.

Late-filed documents and arguments

Njoy filed a declaration and supporting documents in reply to VMR’s defence to revocation. However, despite the front loaded nature of UPC proceedings, the court held these late documents to be admissible because they contained arguments regarding the common general knowledge and claim construction as a reaction to the arguments raised by defendant in its defence to revocation.  The court also held that the admissibility of these late-filed documents also extended to arguments that, while not constituting a direct response to the defendant’s arguments, were closely related to them.  The decision confirms the UPC’s pragmatic approach to the its “front loaded” procedure.

Lack of Inventive Step

As with Njoy’s revocation action against Juul’s EP 3 504 991 B1 (reported here), VMR’s EP 3 456 214 B1 did not disclose the underlying problem.  Accordingly, the underlying problem had to be construed.  Whereas in relation to EP 3 504 991 B1, the underlying problem was construed in terms of the interplay between some of the claimed features, the court in this instance construed the underlying problem in view of the description of the patent.  The court appeared to focus on the technical effect associated with one of the distinguishing features, namely the window provided at a cartomizer receiving segment that allowed a portion of the chamber to be visible from outside.  In this connection, the court saw the problem being linked and limited to vaporizers having a very specific construction, as the claimed invention “would achieve nothing” with vaporizers of a different construction. Thus, defining the problem in terms of these specific constructional features was not seen as a pointer to the solution, but the technical context in which the claimed invention should be seen.

Although there was no explicit disclosure of the technical difference (i.e. a window in the requisite position) in the prior art, the court held that this feature was obvious in the light of the common general knowledge.  In an alternative lack of inventive step attack, Njoy also referred to a secondary document, “Lee”, that disclosed the use of a window in the mouthpiece rather than the cartomizer receiving segment as required by claim 1.  The court held that the use of a window in the mouthpiece was sufficient to provide a skilled person with the general guidance to look into the chamber that contains the cartridge. Thus, the claimed subject matter was also deemed to lack an inventive step based on “Lee”.

Conclusions

The case demonstrates that, where the court is convinced that a skilled person would arrive at the claimed subject matter on their “knowledge and skills”, the UPC is willing to find for obviousness even in cases where there is no direct and unambiguous disclosure of the distinguishing feature in the prior art.  Those accustomed to EPO practice will appreciate that this can sometimes be difficult at the EPO.  Indeed, in EPO opposition proceedings relating to the same patent[1], the same secondary reference, “Lee”, was not deemed sufficient to render the use of a window in the cartomizer obvious.

[1] Nicoventures was opponent, not Njoy

This article was prepared by Partner & Patent Attorney Hsu Min Chung.