Short Summary
NJOY Netherlands B.V. filed a revocation action against VMR Products LLC concerning European patent EP 2 875 740 B1, which relates to electronic vapour products. NJOY challenged the patent's validity on the ground of lack of inventive step, relying on prior art documents including 'Cross', 'Pan', and 'DiFonzo', as well as common general knowledge. The Court of First Instance of the Unified Patent Court (Central Division, Paris Seat) dismissed the revocation action, finding that the invention was not obvious in view of the cited prior art combinations, and maintained the patent as granted, ordering NJOY to bear the costs.
Detailed Summary
This revocation action was filed by NJOY Netherlands B.V. (a subsidiary of the Altria Group) against VMR Products LLC (a subsidiary of Juul Labs) on 15 September 2023 before the Central Division (Paris Seat) of the Court of First Instance of the Unified Patent Court. The parties are competitors in the market for electronic vapour products. The patent at issue, EP 2 875 740 B1, was filed on 14 March 2014 claiming US priorities from November 2013 and February 2014, and was published on 24 October 2018. At the time of filing, the patent was in effect in France and Germany. No opposition had been filed before the European Patent Office, and no opt-out from the exclusive jurisdiction of the UPC had been declared.
The Claimant challenged the validity of the patent solely on the ground of lack of inventive step. The Defendant contested the alleged grounds for revocation and, in the alternative, submitted 41 auxiliary requests to amend the patent, later reduced to six auxiliary requests (AR I to VI).
Procedurally, the Court addressed the Claimant's late-filed documents (Exhibits MWE 11–MWE 28) submitted with the Reply. The Court discussed the front-loaded nature of UPC proceedings under Rules 13 and 44 RoP, balanced against the principle of proportionality and procedural efficiency. The Court held that while a claimant must specify in detail the grounds of invalidity and prior art relied upon, new grounds or new documents considered novelty-destroying or convincing starting points for inventive step assessment cannot be introduced in subsequent written pleadings, as this would constitute an amendment of the case under Rule 263 RoP.
On the merits, the Court examined the inventive step of claim 1 of the patent. The Court assessed the technical field as relating to electronic cigarettes/vaporizers, where the skilled person would be a team of engineers with experience in electronics and vaporizer technology. The Court analyzed the technical contribution of the patent, particularly the use of magnetic elements (permanent magnets and electromagnet) for connecting the power unit and the vaporizer cartridge, allowing for secure connection while maintaining low power consumption.
The Court evaluated the prior art combinations:
1. 'Cross' combined with 'DiFonzo' and/or CGK: The Court found that 'Cross' did not disclose the use of magnetic elements for connecting components, and the skilled person would not turn to 'DiFonzo' (relating to laptop accessories) for guidance, as the power supply in a vaporizer is very limited and a skilled person would not introduce solutions requiring additional power (such as an electromagnet).
2. 'Pan' combined with CGK: The Court found that 'Pan' disclosed screw thread or DC socket connections, and the skilled person would not consider applying magnetic solutions requiring additional power to a vaporizer.
3. 'Pan' combined with 'DiFonzo': For similar reasons, the Court found the skilled person would not turn to 'DiFonzo' from 'Pan', as 'Pan' addressed complexity and cost issues with screw thread connections, and nothing motivated looking at laptop accessory solutions.
The Court concluded that the alleged lack of inventive step of claim 1 over 'Cross' or 'Pan' combined with 'DiFonzo' and/or CGK was not proved. The validity of independent claim 1 justified the validity of dependent claims 2–6. The Court therefore dismissed the revocation action and maintained the patent as granted, with no need to discuss the auxiliary requests. The Claimant, as the unsuccessful party, was ordered to bear the costs of the proceedings up to the ceiling of EUR 500,001.00 under Article 69 of the UPCA.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Paris (FR) Central Division - Seat. Understanding the court's reasoning in NJOY Netherlands BV vs VMR Products LLC is valuable context for structuring arguments or assessing risk in similar proceedings.
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