2024 Week 48
In NJOY v VMR, the UPC Central Division Paris revoked VMR’s patent EP 3456214 B2 on 27 November 2024. The patent was held to be obvious, despite being maintained in amended form by the EPO opposition division in 2023. The way the court reached their decision on inventive step is itself interesting, but also of note is their explanation of the degree of flex in the UPC’s “front-loaded” procedure, intended to speed cases through to the oral hearing.
Inventive step
We’re back on e-cigarettes again. After the EPO opposition, the sole independent claim in the patent was pretty long and detailed. The basic claim defined a vaporizer (e-cigarette system) with a replaceable cartridge atomizer (“cartomizer”) and a shell with the battery and an open chamber for receiving the cartomizer. The novel feature was that there was a window in the shell to give a view into the chamber. The effect of this is that you can see part of the cartomizer when the vaporizer is assembled ready for use. But the patent didn’t really say anything further than this in terms of technical advantages.
The embodiments looked like these, shown in Fig. 4 of the patent. Cartomizer 200 fits into a cavity at the top of shell 100, leaving just the mouthpiece 220 sticking out of the top. A window 130 is located so that you can see at least a bit of the cartomizer that has been inserted into the cavity.
As we have explained before, several UPC decisions on inventive step ask how the skilled person would have addressed the “underlying technical problem” solved by the invention by considering obvious modifications to individual prior art starting points.
The patentee’s point of view was that the notional skilled person should not be given pointers towards the solution by the way in which the technical problem is formulated. For this reason, they said that the problem to be solved should be stated somewhat nebulously as: to provide a vaporizer with an improved user experience. The court dismissed this as miles too unspecific and without a link to what the invention actually achieves over the prior art.
The court instead formulated the underlying technical problem as:
to develop a 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 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 court’s view was that this was an acceptable statement of the underlying technical problem, and not a pointer to the solution. They said that the benefit of the invention would only be provided with this type of vaporiser and so it was necessary to set out these structural features and a specific technical effect of the solution.
With this (front loaded!) statement of the underlying technical problem, it was downhill from here for the patentee VMR. The court decided that it was entirely obvious to solve this problem by putting a window into the shell. There was no clear disclosure of such a window in a shell in the prior art, but there was disclosure of windows in cartomizers to allow the user to see the remaining level of vaping liquid.
What happened in the EPO opposition?
The EPO opposition was based on different prior art. This meant that there were additional features missing from the closest prior art at the EPO compared with the UPC, leading the EPO opposition division to decide that the claims as amended in the opposition were patentable.
Front loading but with an emphasis on efficiency
One of the stated aims of the UPC is to get to an oral hearing on the merits of a case within 12 months. To achieve this, we are seeing the courts be very strict about extensions of time but also about preventing parties from gradually developing their case.
Here’s an outline of the tight timeline for the written procedure for a UPC central revocation action with a defence involving an application to amend the patent:
The idea of the front loaded procedure is that the statement for revocation should set out the full case for revocation, including the prior art documents relied on. Trying to add new grounds of invalidity later, or to introduce new “closest prior art” documents will normally not be allowed.
In this case, the claimant NJOY filed new evidence with its reply to the defence for revocation (see the + 4 months line above). The patentee VMR objected, saying that this evidence could and should have been filed earlier. The court allowed the evidence into the proceedings. The issues addressed by the new evidence were claim interpretation and the common general knowledge of the skilled person. Although in principle the new evidence could have been prepared and filed at the outset, the court said that it is reasonable for the claimant to be allowed to allege new facts in support of the main facts already timely alleged and then disputed by the defendant.
This is a key case management decision, similarly explained recently by the UPC Court of Appeal in Nelissen v OrthoApnea in relation to a new argument. Yes, the rules are strict, but this is intended to be for overall procedural efficiency, not simply for the sake of strictness itself. If the only way to follow the rules is to throw enormous amounts of evidence and arguments in at the opening stages of the action, because there will be no chance to file supplementary evidence or arguments later, this itself will not be efficient.
The decision therefore gives a little bit of welcome flex to the front loading of the UPC procedure, in allowing the claimant to present a full but concise case with evidence at the outset, with the understanding that the claimant should be allowed to react to unforeseen (but maybe strictly foreseeable) arguments raised by the defendant.
