UPC Weekly - NJOY duel with Juul

2024 Week 45

5 November 2024 saw two decisions handed down by the UPC Paris Central Division (CD) in revocation actions filed by NJOY against two related Juul patents.

In the first decision, against EP 3498115 B1, the patent was revoked. In the second decision, against EP 3504991 B1, the patent was maintained as granted. So, it seems like one win each. But both patents have been revoked by the EPO opposition division, now subject to appeal at the EPO.

Each decision gives plenty of food for thought – we pick out some highlights here.

How did the UPC assess inventive step of EP 3504991 B1?

The Paris CD followed the same type of approach seen from other UPC decisions. Although at first sight, references to a “problem” and “solution” suggest that the EPO problem-solution approach is being followed, the UPC seems to be charting a different course.

The court emphasised that the test for inventive step must be objective. This includes the knowledge and motivations of the skilled person – subjective considerations must be avoided.

Compared with the EPO approach of carefully deciding which document to take as the closest prior art, the court explained that inventive step should be assessed relative to any element that forms part of the state of the art. They considered that limiting the evaluation of inventive step to a document perceived to be the closest prior art bears the risk of introducing subjective elements into the evaluation of inventive step. However, for efficiency, they were happy to focus on certain documents as starting points.

Coming to the key question, the Paris CD then explain that devising an invention is an activity, i.e. an act of changing what was already known in the prior art to reach the claimed subject matter. An activity can be motivated by an underlying problem.  What is then decisive is:

… whether what is claimed as an invention did or did not follow from the prior art in such a way that the skilled person would have found it in their attempt to solve the underlying problem on the basis of their knowledge and skills, for example by obvious modification of what was already known. [pronouns changed for consistency]

The court therefore carefully considered what should be taken as the underlying problem. They noted that the patent did not specify an underlying problem. Therefore, the court interpreted the claim to understand the effects provided by the interaction of specific features of the claim. Although this sounds like the EPO approach of working out a technical effect for the formulation of the objective technical problem, it must be noted that in the UPC decision, this stage was done before considering the relevance of the prior art.

NJOY could not point to common general knowledge or specific prior art in which the novel features of the claim were done together, and certainly none in which the underlying problem was explained to be addressed by such features. European patent attorneys will be familiar with arguing at the EPO about whether the skilled person “could” or “would” modify the prior art to reach an invention. But in this case the court in effect is saying here that, never mind would, there is no available combination of prior art that the skilled person could make in order to reach the invention. 

On the basis of the attacks made by NJOY, the court therefore decided that the claims were inventive.

Tantalisingly, the court “left undecided” whether the claimed invention was obvious when starting from other prior art documents in evidence.  NJOY had not set out a case from these documents and the view of the court was that it is for NJOY to define the scope of evaluation for a revocation action.

Given that the judges explicitly said that it is reasonable to assess inventive step from different starting points, and then hinted that other attacks may have been better, a clear learning point for revocation actions is to include inventive step attacks from multiple starting points where appropriate – there’s no need to choose and justify a single closest prior art document. 

How did the UPC assess added matter of EP 3498115 B1?

EP 3498115 B1 was revoked for added matter. The approach taken by the Paris CD was very similar to what we would expect (and indeed did see) from an EPO opposition division.  

Claim 1 of the patent was said to be based on an original claim from the original grandparent application. However, claim 1 of the patent omitted a feature of that original claim. This point was decisive – omission of this feature resulted in a new combination of features that presented the skilled person with information that was not directly and unambiguously derivable from the original application.

To our eyes, it is important that the court said that the burden of proof here is on the patent proprietor to show that the claim as granted does not add matter. For other grounds of invalidity, the burden of proof would routinely be on the party seeking revocation of the patent.

Any flexibility in the UPC’s front-loaded procedure?

In both revocation actions, the Paris CD reinforced the front-loaded approach of the UPC. They noted that in a revocation action, the claimant has “plenty of time to prepare” and so is obliged to submit its arguments, facts and evidence at the outset. In replies and rejoinders, the parties can file new arguments, but these are usually limited to being in reply to previous arguments. 

However, the Paris CD noted that a clear distinction sometimes cannot be made between newly introduced arguments (not allowed) and arguments raised “as a mere reaction” to previously filed arguments (allowed). So, to secure fairness and equity, and to safeguard the fundamental right to be heard, the Paris CD considered that a generous standard should be applied and an argument which may be considered “a further reaching response to the other party’s previously raised argument is to be admitted.” 

In applying this approach, the Paris CD admitted entire pieces of evidence into the proceedings where a clear distinction could not be drawn between newly added arguments, and arguments which are in response. However, they also chose not to admit some parts of the claimant’s rejoinders, because they were not limited to “the matters raised in the Reply”. 

So, there may be some flexibility in the UPC’s front-loaded approach, but only if there is no “clear distinction” between new arguments, and arguments raised in reply. As a complex case develops, there may be scope to introduce additional expert evidence and arguments, if they can be presented as replying to new points raised in the previous round.

Ongoing EPO oppositions

Both of these patents have been opposed at the EPO (not by NJOY, but by different opponents). The result from the EPO opposition division is that both patents are revoked for adding subject-matter. These revocations are now subject to appeal at the EPO.

The EPO opposition division decided that claim 1 of EP 3498115 B1 added subject-matter for the same reasons as the UPC. 

Interestingly however, NJOY did not raise any added subject-matter attacks against EP 3504991 B1 in their UPC revocation action. There may be some strategic reason for this, but we cannot explain it otherwise.

This blog was co-authored by Lucy Coe and Matthew Naylor.