Short Summary
NJOY Netherlands B.V. brought a revocation action before the Central Division (Paris Seat) of the Unified Patent Court seeking to revoke European Patent EP 3 430 921 B1, owned by Juul Labs International, Inc. and directed to vaporization device systems. The Court revoked the patent entirely with effect for Belgium, France, Germany, Italy, Luxembourg, Netherlands, Portugal and Sweden, and ordered Juul Labs to bear the costs of the proceedings.
Detailed Summary
This revocation action concerned European Patent EP 3 430 921 B1, entitled 'VAPORIZATION DEVICE SYSTEMS,' filed on 23 December 2014 and granted on 4 August 2021, with Juul Labs International, Inc. as the registered proprietor. The patent was based on a divisional application of European application 14873186.2 (the regional phase of PCT/US2014/072230, published as WO 2015/100361 A1) and claimed priority from three US provisional applications filed in December 2013 and February 2014. At the time of filing the Statement for Revocation, the patent was validated in Belgium, France, Germany, Italy, Luxembourg, Netherlands, Portugal and Sweden, and oppositions were pending at the European Patent Office (in which NJOY was not a party).
Claim 1 as granted related to a device for generating an inhalable aerosol comprising a device body with a cartridge receptacle and a cartridge with a heater having at least one condensation chamber, a fluid storage compartment, and a mouthpiece, with specific characterising features regarding the formation of an air inlet passage when the cartridge is inserted into the receptacle. Claim 11 was directed to a corresponding cartridge.
NJOY (Claimant) sought revocation of the patent and dismissal of all of Juul Labs' (Defendant's) auxiliary requests and alternative requests to maintain the patent in amended form. Juul Labs counter-requested dismissal of the revocation action and, alternatively, maintenance of the patent as granted or in amended form based on numerous auxiliary requests (including Auxiliary Requests I to XII submitted on 30 October 2024, and a subsequent application of 13 November 2024 seeking to add Auxiliary Requests IIA, VIIA, VIIIA, IXA and XIIA).
Procedurally, Juul Labs filed a preliminary objection under Rules 19.1(a) and 48 RoP challenging the Court's competence on the basis of an allegedly false denomination of the defendant; this was rejected by the Court and confirmed on appeal (APL_588426/2023, UPC_CoA_438/2023). The Court also addressed numerous procedural and evidentiary matters, including the admission of exhibits MWE 20 to MWE 50, the admission of pages of Claimant's submission of 22 April 2024, and the admission of Defendant's submission of 31 May 2024.
On the substance, the Court examined issues of claim interpretation, clarity, added matter, and inventive step. The Court found that the patent as granted did not meet the requirements of the European Patent Convention, including on grounds of added matter extending beyond the content of the application as filed. The Court also assessed the validity of the various auxiliary requests. The Court declined to admit Defendant's subsequent Auxiliary Requests IIA, VIIA, VIIIA, IXA and XIIA submitted on 13 November 2024, finding them not to be a proper development of the case. The Court further found that Defendant's request (2)(d) — seeking maintenance based on combinations of dependent claims as granted with claim 1 of auxiliary requests — was imprecise, ambiguous, not reasonable in number under Rule 50.2 RoP read with Rule 30.1(c), and unsupported by arguments.
In its final decision of 17 January 2025, the Central Division (Panel 1, comprising presiding judge François Thomas, legally qualified judge and judge-rapporteur Maximilian Haedicke, and technically qualified judge Max Tilmann): (1) revoked European patent EP 3 430 921 B1 with effect for the territories of Belgium, France, Germany, Italy, Luxembourg, Netherlands, Portugal and Sweden; (2) admitted documents MWE 20 to MWE 44 and MWE 46 to MWE 50 into the proceedings; (3) did not admit pages 1–14 of Claimant's submission of 22 April 2024 (including MWE 45); (4) admitted pages 15–80 of that submission; (5) did not admit Defendant's submission of 31 May 2024; (6) did not admit Defendant's Auxiliary Requests IIA, VIIA, VIIIA, IXA and XIIA; (7) ordered the Registry to send a copy of the decision to the European Patent Office and to the national patent offices of the concerned Contracting Member States after the appeal deadline; and (8) ordered Juul Labs to bear the costs of the proceedings pursuant to Article 69 UPCA and Rule 118.5 RoP, as the unsuccessful party.
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 B.V. vs Juul Labs International, Inc. is valuable context for structuring arguments or assessing risk in similar proceedings.
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