Central Division
Paris Seat

DECISION
of the Court of First Instance of the Unified Patent Court
Central division (Paris seat)
issued on 21 January 2025
in the revocation action No. 571745/2023
UPC_CFI 311/2023

HEADNOTES: In order to assess whether or not a claimed invention lacks inventive step, it is first
necessary to determine one or more realistic starting points in the state of the art, which would be
of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to
develop a product or process similar to that disclosed in the prior art. In particular, realistic starting
points are the documents which disclose the main relevant features as those disclosed in the
challenged patent or which address the same or a similar underlying problem.

KEYWORDS: inventive step.

CLAIMANT:
NJOY Netherlands B.V. - Westerdoksdjik 423, 1013BX Amsterdam, Netherlands
represented by Henrik Holzapfel, McDermott Will & Emery

DEFENDANT:
VMR Products LLC - 560 20th Street - California 94107 - San Francisco - US
represented by Bernhard Thum, Thum & Partner
assisted by Jonas Weickert and Andreas Mötsch, Thum & Partner
co-represented by Tobias Wuttke, Bardehle Pagenberg Partnerschaft mbB

PATENT AT ISSUE:
European patent n° EP 3 626 092

PANEL:
Panel 2:
Paolo Catallozzi Presiding judge and judge-rapporteur
Tatyana Zhilova Legally qualified judge
Max Tilmann Technically qualified judge

SUMMARY OF FACTS AND PARTIES’ REQUESTS:
1. On 15 September 2023, NJOY Netherlands B.V. filed a revocation action against VMR Products
LLC before this Central Division, registered as No. ACT_571745/2023 UPC_CFI_311/2023,
requesting that the patent at issue (‘092) be revoked with effect to the territories of Austria,
Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy Latvia, Lithuania,
Luxembourg, Malta, Netherlands, Portugal, Slovenia and Sweden, and that the defendant be
ordered to bear the legal costs of the proceedings.
2. The patent at issue was filed on 14 March 2014 and published on 25 March 2020 and claims a
priority of two patent applications of 12 November 2013 (US201361903344 P) and 10 February
2014 (US 201461937851 P). The date of publication and mention of the grant of the patent is 5
July 2023. The patent was opposed; the opposition proceedings are pending before the
Opposition Division of the European Patent Office.
3. The patent relates to the fields of vaporizers, which may also be referred to as electronic
cigarettes. Its independent claim 1 reads as follows:
“A vaporizer device comprising:
a battery portion (100), the battery portion (100) having a first end (102A) and a second end
(104A) and comprising:
an outer shell (106) for covering or protecting one or more of the components of the
battery portion (100);
a battery housing segment (102) proximate the first end (102A) of the battery portion
(100);
a cartomizer receiving segment (104) proximate the second end (104A) of the battery
portion (100), wherein the outer shell (106) is commonly shared by the battery
housing segment (102) and the cartomizer receiving segment (104), wherein a
cartomizer chamber (108) is provided within at least a portion of the cartomizer
receiving segment (104), the chamber (108) having an insertion end distal to the
battery housing segment (102) and a base end proximate to the battery housing
segment (102); and
a cartomizer (200) insertable into the chamber (108) at the insertion end of the chamber
(108), the cartomizer (200) having a mouthpiece end (212) and an insertion end (210)
defined opposite the mouthpiece end, the cartomizer (200A) comprising:
a cartomizer body (208) configured to hold a fluid vaporizable substance, wherein at
least a portion of the cartomizer body (208) comprises a translucent material
configured to allow viewing of the fluid vaporizable substance, wherein the
cartomizer body (208) is configured for insertion into the chamber (108);
a heating element (214) and a wicking element (216) within the cartomizer body
(208), wherein the heating element (214) is configured to heat the fluid vaporizable
material;
an inhalation tube (222) in fluid communication with the heating element (214) and
the wicking element (216);
a mouthpiece (220) at or proximate to the mouthpiece end (212), the mouthpiece
(220) in fluid communication with the inhalation tube (222), the mouthpiece (220)
extending from the insertion end of the chamber (108) when the cartomizer (200) is
inserted in the chamber (108);
a plurality of cartomizer electrical contacts (218) on an exterior of the insertion end
(210), and
cartomizer electrical circuitry operable to direct an electronic current between the
cartomizer electrical contacts (218) and the heating element (214);
a battery (110) housed within the battery housing segment (102);
battery electrical contacts provided between the base end of the chamber and the battery
housing segment (102), the battery electrical contacts positioned to contact the cartomizer
electrical contacts (218) when the cartomizer (200) is inserted in the chamber (108); and
battery electrical circuitry housed within the battery housing segment (102) and operable to
direct an electrical current between the battery (110), the battery electrical contacts, the
cartomizer electrical contacts, the heating element (214) and the inserted cartomizer (200).
4. In the statement of claim the claimant argues that the patent is not valid because of the lack of
inventive step, assuming as starting point either U.S. Patent Application No. 2010/0242974 A1
(‘Pan’) or US-Patent Application No 2005/0268911 A1 (‘Cross’).
5. On 18 December 2023 the defendant lodged the (corrected) defence to revocation which
included a conditional application to amend the patent based on 7 different amendments and
consisting of 20 auxiliary requests. The defendant requested that: the revocation action be
dismissed and the patent be maintained as granted; in the alternative, the patent be maintained
based on one of the proposed amendments, further in the alternative in parts based on the
independent validity of one or more of its dependent claims in combination with independent
claim 1 as granted and yet further in the alternative in parts based on the independent validity
of one or more of its dependent claims as granted in combination with claim 1 of the proposed
amendments of the claims of the patent; the claimant bears the costs of the proceedings.
6. With its reply to defence to revocation and defence to the application to amend the patent, filed
on 19 February 2024, the claimant also requested the Court to dismiss the defendant’s
alternative requests.
7. On 19 March 2024 the defendant lodged its rejoinder to claimant’s reply requesting that exhibits
‘MWE 16’ to ‘MWE 39’ and ‘MWE 41’ to ‘MWE 44a’ and document DE 20 2010 002 041,
submitted by the claimant with its reply, not be admitted into the proceedings.
8. On 19 April 2024 the claimant filed its rejoinder to the reply to the defence to the application to
amend the patent requesting the Court to dismiss this latter defendant’s request and to admit
Exhibits ‘MWE 16’ to ‘MWE 53’ to the proceedings, as well as the submission insofar as the
submission was not limited to commenting on defendant’s application to amend the patent.
9. On 10 May 2024 the defendant submitted its comments to this latter claimant’s previous written
pleadings confirming that its previous requests are maintained and, furthermore, requesting not
to admit any of newly filed documents ‘MWE 16’ to ‘MWE 53’.
10. After the closure of the written procedure an interim conference was held on 15 May 2024 in
which the judge-rapporteur took several decisions and, in particular, stated that the application
to amend the patent was admissible with regard to the provision set by Rule 30 (1) (b) of the
Rules of Procedure (‘RoP’), the grounds of revocation not asserted in the statement for
revocation, as well as any new facts and/or evidence submitted after the first writ that do not
directly respond to arguments raised by the opposing party, shall be excluded from
consideration and that the submission of comments to claimant’s submissions of 19 April 2024
lodged by the defendant on 10 May 2024 shall also be excluded from consideration.
11. On 26 November 2024, in reaction to the invitation of the judge-rapporteur to examine the
possibility of reducing the number of amendments to the patent, the defendant submitted an
application reducing the number of auxiliary requests to 10.
12. On 4 December 2024 defendant filed a further submission and a certified translation as ‘TP 12’,
requesting not to permit the translation ‘MWE 9a’ provided by the claimant into the
proceedings.
13. On 5 December 2025 claimant filed a submission in reply to defendant’s submission of 4
December 2024.
14. Finally, the oral hearing was held on 5 December 2024.
GROUNDS FOR THE DECISION
Admissibility of late filed assertions and late filed evidentiary documents.
15. As previously mentioned, the claimant submitted new evidentiary documents (Exhibits ‘MWE
16’ to ‘MWE 39’ and ‘MWE 41’ to ‘MWE 44a’ and document DE 20 2010 002 041 ) with its reply
to defence to revocation and the defendant objected to the admission of these documents,
arguing that with the exception of documents ‘MWE 40’ each of the newly filed documents could
have already been submitted with the statement for revocation and that claimant’s filing as well
as all arguments relating to these documents constitute an amendment of the case which is not
admissible as the claimant did not apply for leave to amend its case according to Rule 263 ‘RoP’
and, in any case, the requirements for amending the case set forth by this Rule were not met.
16. The claimant contested that Rule 263 ‘RoP’ deals with situations that have nothing to do with
filing further documents in a reply to support a position in the statement for revocation, that
the claimant is permitted to raise new arguments and submit further documents supporting its
case in its reply according to Rule 51 ‘RoP’ and that the claimant cannot possibly anticipate which
points the defendant will dispute and needs to be proved.
17. By order issued pursuant to Rule 105 ‘RoP’ on 12 June 2024 the judge-rapporteur stated that
grounds of revocation not asserted in the statement for revocation, as well as any new facts
and/or evidence submitted after the first writ, that do not directly respond to arguments raised
by the opposing party, shall be excluded from consideration. The panel agrees with the judge-
rapporteur's statement and considers appropriate to give a more accurate reasoning on the
issue.
18. Rule 44 ‘RoP’ states that the statement for revocation shall contain “… (e) one or more grounds
for revocation, which shall as far as possible be supported by arguments of law, and where
appropriate an explanation of the claimant’s proposed claim construction; (f) an indication of
the facts relied on; (g) the evidence relied on, where available, and an indication of any further
evidence which will be offered in support …”.
19. Similar requirements are requested in the statement of claim as Rule 13 ‘RoP’ provides that this
written pleading shall contain “an indication of the facts relied on” [lett. (l)], “the evidence relied
on” [lett. (m)] and “the reasons why the facts relied on constitute an infringement of the patent
claims, including arguments of law and where appropriate an explanation of the proposed claim
interpretation” [lett. (n)].
20. In general, the parties are under an obligation to set out their full case as early as possible
(Preamble ‘RoP’, para. 7, last sentence).
21. This legal framework introduces the so-called ‘front loaded’ procedural system whereby a
claimant is required to concretely elaborate his arguments and evidence in his first written
pleading (see, on this issue, Paris CD, decision issued on 29 July 2024, UPC_CFI_263/2023;
Brussels LD, order issued on 8 July 2024, UPC_CFI_376/2023). The rationale behind these
provisions is to ensure that the defendant is aware of the factual elements and grounds upon
which the claim against him is based, as well as the evidence available to the claimant, thereby
enabling him to prepare an adequate defence, and, at the same time, to expedite the
proceedings. This is one of the primary objectives of the Court, which would be undermined if
the claimant were permitted to gradually introduce new factual circumstances, new legal
arguments, or new evidence into the proceedings.
22. However, these provisions must also be interpreted in the light of the principle of proportionality,
as set out in the Preamble of the ‘RoP’, which requires that the parties should not be burdened
with tasks that are unnecessary to achieve the stated objective. In this regard, it must be noted
that Rule 44 ‘RoP’ requires an “indication” of the facts relied on and this seems to support an
interpretation of the relevant provisions contrary to an overly strict application of the ‘front
loaded’ procedural system.
23. Furthermore, account must also be taken of the need, which is served by the principle of
procedural efficiency, to avoid excessive and overly detailed allegations of facts and the
production of multiple documents in relation to matters that can be presumed to be known to
the opposing party and not to be disputed by them, provided that their allegation and evidence
is preserved if challenged, thus considering the natural course of the procedural dynamics.
24. Moreover, an excessive and redundant allegation of facts and production of documents can also
become an obstacle to the effective exercise of the right of defence, imposing on the opposing
party a burdensome task of studying the claim and the evidence presented, and hindering the
efficient functioning of the judicial response, by overburdening the Court with unnecessary
activities.
25. Additionally, it can be argued that a document may be introduced into the proceedings at a later
stage, if it was created or became available to the party during the proceedings, given the
principle of fairness which protects a party that has acted in a diligent way.
26. It can therefore be stated that, in revocation actions, the claimant is required to specify in detail
the grounds of invalidity that allegedly affect the contested patent, as well as the prior art
documents relied upon to support any allegation of lack of novelty or inventive step. This defines
the subject matter of the dispute and enables the defendant to understand the allegations made
against it and to prepare an adequate defence, as well as allowing the Court to determine the
scope of its jurisdiction in relation to the claim.
27. Consequently, the claimant cannot introduce new grounds of invalidity of the attacked patent
or introduce new documents considered novelty destroying or affecting inventive step in
subsequent written acts. This would result in a broadening or, in any case, a modification of the
subject matter of the dispute, constituting an amendment of the case and falling within the
scope of Rule 263 ‘RoP’, which may only be permitted by the Court upon specific request and
after demonstrating that the requirements of that Rule have been met.
28. Similarly, the claimant must specify in the statement for revocation the facts that it considers
necessary to prove in order to succeed in its claim, together with the relevant evidence.
29. However, it should be noted that in certain situations, following the defence raised by the
defendant, the claimant may need to allege new facts, insofar as they are considered capable of
supporting the main facts already timely alleged and disputed by the defendant. In this case, the
need to respond to the defendant's defence, the terms of which cannot be foreseen ex ante by
the claimant, justifies the introduction of such new facts in the reply to defence to revocation.
30. Likewise, the need to produce new evidence may arise from the defendant's defence which
disputes the facts alleged by the claimant or the probative value of the evidence already filed in
Court.
31. This is consistent with the principles set by the Court of Appeal (decision issued on 21 November
2024, UPC_CoA_456/2024) according to which while the parties are required to set out their
case as early as possible in the proceedings nevertheless specific new arguments may be
admitted into the proceedings in consideration of specific circumstances of the case.
32. Applying these principles to the present case, it must be concluded that the documents
introduced by the claimant in the reply to defence to revocation – including the declaration
released by and the documents referred to in that
statement – are admissible, given that they contain arguments regarding the common general
knowledge and the claim construction which are intended to contrast and react to the
arguments raised by defendant in its defence to revocation and the evidence
filed in support of these latter arguments. The admissibility of these
late filed documents shall also extend to arguments that, while not constituting a direct response
to the defendant’s arguments, are closely related to them.
33. In its rejoinder to the reply to the defence to the application to amend the patent the claimant
did not limit to commenting on the defendant’s application to amend the patent but illustrated
some arguments in reaction to new points that the defendant’s rejoinder had raised.
34. The defendant, then, lodged an application commenting this latter claimant’s writ and argued
that its comments were responsive to those arguments raised by the claimant which did not
represent a rejoinder to the application to amend the patent.
35. In this regard, it should be recalled that where an application to amend the patent is filed, Rule
32 ‘RoP’, as referred to in Rule 55 ‘RoP’, allows the claimant to file a reasoned defence to the
application to amend the patent; therefore, the patent proprietor may lodge a reply to the
defence to the application to amend the patent and the claimant may lodge a rejoinder to the
reply to the defence to the application to amend the patent which shall be limited to the matters
raised in the reply.
36. It is clear from the plain wording of the Rule, as well as from the overall structure of the written
procedure, that the claimant cannot raise in its rejoinder arguments that were not previously
raised in the reply. Accordingly, those portions of the claimant's rejoinder that do not address
the arguments in the defendant’s reply – in particular, section B), C), D), E) and F) of the writ –,
as well as Exhibit MWE 45 to 53 shall be disregarded.
37. The same conclusion must be reached with respect to the defendant's comments filed on 10
May 2024, as the Rules of Procedure do not provide for the defendant to lodge any further
written submissions after having filed an application to amend the patent and, subsequently, a
reply to the defence to the application to amend the patent.
38. Both parties have sought the admission of their latter writs under Rules 36 and 58 ‘RoP’, which
permit the further exchange of written pleadings. On this point, the Court notes that the
discretionary power to allow the further exchange of written pleadings requires a reasoned
request from a party, and neither party has submitted such a request.
39. As previously mentioned, parties’ applications dated 4 and 5 December 2024 concern the
accuracy of the translation of para. [0005] of the Korean Patent Application Publication No.
2012-0074625 A (‘Lee’). The translation provided by the claimant in ‘MWE 9a’ reads that: “[…]
In particular, in such electronic cigarettes designed to provide several tens or more smoking
sessions from a single refill of a cartridge, their mouthpiece is typically made of a transparent or
semi-transparent structure so as to facilitate checking of the level of liquid refillable solution
stored inside the cartridge.” This translation is challenged by the defendant with the said
application filed only on 4 December 2024, which submitted a different translation as ‘TP-12’.
The defendant argues that an English translation of para. [0005] of ‘Lee’ ought not to include
the term “typically” which is included in the translation submitted by the claimant as ‘MWE 9a’
and which may mislead the Court.
40. The Court is of the opinion that regardless of whether the defendant’s submission (and
claimant’s consequential one) are admissible or not, as they were filed well after the closure of
the written procedure, the issue raised by the defendant is not relevant for the outcome of the
action because even assuming that the translation submitted by the defendant is the correct
one, the alleged erroneous presence of the term “typically” does not affect the general teaching
of para. [0005] of ‘Lee’ for the purposes of the present judgment. Indeed, the word “typically”
in the translation provided as ‘MWE 9a’ is to be understood that mouthpieces are most often
made of a transparent or semi-transparent structure but may also be made of an opaque
structure. The absence of the term “typically” – according to the translation deemed correct by
the defendant (‘TP-12’) – would make the meaning of the teaching of para. [0005] of ‘Lee’ even
stronger, since it would be understood that all the mouthpieces must be made of a transparent
or semi-transparent structure. This would strengthen the arguments of the claimant which rely
on the fact that ‘Lee’ discloses mouthpieces made of transparent or semi-transparent structure,
rather than those of the defendant
The patent at issue.
41. The patent at issue contains 9 claims in which claim 1 is an independent claim and claims 2 to 9
are dependent on claim 1. Claim 1 relates to a vaporizer (also referred to as electronic cigarette).
42. Electronic cigarettes have recently emerged as a new product for providing nicotine through a
smokeless inhalation process. Typically, implementations consist of a power supply and an
atomizing device. In reusable electronic cigarettes the two items are separated into a battery
and a cartomizer, to allow the disposal and replacement of a nicotine containing fluid cartomizer
while preserving the more costly battery and associated circuitry for additional use. In disposable
electronic cigarettes, the two items are combined to integrate the functions into one unit that
is discarded after either the battery energy or the nicotine containing liquid is exhausted (para.
[0002]).
43. The electronic cigarette liquid used to vaporize ingredients such as nicotine is generally a
solution of propylene glycol, vegetable glycerine, or polyethylene glycol 400, as well as their
mixtures to which a flavour and/or nicotine has been added. The solution is often sold in a bottle
(for refilling by the user) or in disposable cartridges or cartomizers. Many different flavours are
incorporated into these liquids, including those that resemble the taste of regular tobacco,
menthol, vanilla, coffee, cola and/or various fruits. Various nicotine concentrations are also
available, and nicotine-free solutions are also common (para. [0003]).
44. As suggested by the defendant claim 1 of the patent at issue may be structured as follows:
(1.1) A vaporizer device comprising:
(1.2) a battery portion (100), the battery portion (100) having a first end (102A) and a
second end (104A)
(1.2.1) and comprising:
an outer shell (106) for covering or protecting one or more of the components of the
battery portion (100);
(1.2.2) a battery housing segment (102) proximate the first end (102A) of the battery portion
(100);
(1.2.3) a cartomizer receiving segment (104) proximate the second end (104A) of the battery
portion (100),
(1.2.4) wherein the outer shell (106) is commonly shared by the battery housing segment
(102) and the cartomizer receiving segment (104),
(1.2.5) wherein a cartomizer chamber (108) is provided within at least a portion of the
cartomizer receiving segment (104), the chamber (108) having an insertion end distal
to the battery housing segment (102) and a base end proximate to the battery
housing segment (102); and
(1.3) a cartomizer (200) insertable into the chamber (108) at the insertion end of the
chamber (108), the cartomizer (200) having a mouthpiece end (212) and an insertion
end (210) defined opposite the mouthpiece end, the cartomizer (200A) comprising:
(1.3.1) a cartomizer body (208) configured to hold a fluid vaporizable substance, wherein at
least a portion of the cartomizer body (208) comprises a translucent material
configured to allow viewing of the fluid vaporizable substance, wherein the
cartomizer body (208) is configured for insertion into the chamber (108);
(1.3.2) a heating element (214) and a wicking element (216) within the cartomizer body
(208), wherein the heating element (214) is configured to heat the fluid vaporizable
material;
(1.3.3) an inhalation tube (222) in fluid communication with the heating element (214) and
the wicking element (216);
(1.3.4) a mouthpiece (220) at or proximate to the mouthpiece end (212), the mouthpiece
(220) in fluid communication with the inhalation tube (222),
(1.3.5) the mouthpiece (220) extending from the insertion end of the chamber (108) when
the cartomizer (200) is inserted in the chamber (108);
(1.3.6) a plurality of cartomizer electrical contacts (218) on an exterior of the insertion end
(210), and
(1.3.7) cartomizer electrical circuitry operable to direct an electronic current between the
cartomizer electrical contacts (218) and the heating element (214);
(1.4) a battery (110) housed within the battery housing segment (102);
(1.5) battery electrical contacts provided between the base end of the chamber and the
battery housing segment (102), the battery electrical contacts positioned to contact
the cartomizer electrical contacts (218) when the cartomizer (200) is inserted in the
chamber (108);
(1.6) and battery electrical circuitry housed within the battery housing segment (102) and
operable to direct an electrical current between the battery (110), the battery
electrical contacts, the cartomizer electrical contacts, the heating element (214) and
the inserted cartomizer (200).
45. With regard to the interpretation of the claims, it must be born in mind that: the patent claim is
not only the starting point, but the decisive basis for determining the protective scope of the
European patent; the interpretation of a patent claim does not depend solely on the strict, literal
meaning of the wording used, as the description and the drawings must always be used as
explanatory aids for the interpretation of the patent claim, but this does not mean that the
patent claim serves only as a guideline and that its subject-matter may extend to what, from a
consideration of the description and drawings, the patent proprietor has contemplated (see,
Court of Appeal, order issued on 26 February 2024, UPC_CoA_335/2023).
46. The relative assessment must be carried from the point of view of a person skilled in the art
which, in the present case, may be identified in a mechanical engineer with several years of
experience in the technical field of vaporizers or in a team formed by a mechanical engineer and
an electrical engineer. Indeed, common tasks in designing vaporizers fall into the competence of
a mechanical engineer, as they relate to the outer physical shape and the mechanical properties
of the devices, to the materials used for these devices and to their inner physical shape and
regards also fluid dynamics and thermodynamics and requires knowledge of the electrical
circuitry implemented in the devices of in other electronic inhalable aerosol devices as well.
47. The claimant argues that alternatively to a mechanical engineer the skilled person could
alternatively possess a bachelor’s or master’s degree in chemistry or physics or a related field or
someone from a related field. This does not convince as it would render the selection of the
skilled person almost to an arbitrary measure and no persuasive argument is provided in support
of this proposition.
48. Several features need to be carefully examined as the parties debated about their interpretation
and, in any case, relate to relevant aspect of the claimed invention.
49. Firstly, with regard to feature (1.3.6) that specifies that the cartomizer includes a plurality of
cartomizer electrical contacts on an exterior of the insertion end, the skilled person understands
this feature in conjunction with feature (1.5) that specifies the battery electrical contacts to be
provided between the base end of the chamber and the battery housing segment and specifies
that the battery electrical contacts are positioned to contact the cartomizer electrical contacts
when the cartomizer is inserted in the chamber. From this the skilled person understands that
the requirement of feature (1.3.6) is a solution to enable the contact between the battery
electrical contacts and the cartomizer electrical contacts when the cartomizer is inserted in the
chamber. Therefore, considering that claim 1 does not disclose a specific design of the
cartomizer electrical contacts or the battery electrical contacts, nor a particular arrangement on
an exterior of the insertion end, any design of cartomizer electrical contacts on the insertion end
of the cartomizer that – in dependence and conjunction with a particular design of the battery
electrical contacts – may provide the contact specified in feature (1.5) falls under the design rule
of feature (1.3.6).
50. In further support of this conclusion, it may be noted that Figs. 2 and 11 of the patent at issue
show that different designs for the cartomizer electrical contacts on an insertion end of the
cartomizer are possible. Fig. 2 (partially represented below, left) shows the cartomizer electrical
contacts flush with a downward facing surface of the cartomizer, while Fig. 11 (below, right)
shows the cartomizer electrical contacts to be bulge shaped and to protrude from a downward
facing surface of the cartomizer. This shows that the term ‘on the exterior’ is not limited to those
arrangements where the cartomizer electrical contacts were to be arranged flush with an
insertion end surface of the cartomizer.
51. Secondly, feature (1.3.4) specifies that the cartomizer includes a mouthpiece in fluid
communication with an inhalation tube. The claim language does not disclose how the
mouthpiece is technically realized and does not require the mouthpiece to be detachable from
the cartomizer body.
52. The claimant argues that it is axiomatic that a component cannot be in fluid communication with
itself, and if the mouthpiece were only a portion of the cartomizer body, it could not be in fluid
communication with the inhalation tube within the cartomizer body and would therefore be
incapable of embodying this feature. This argument does not convince. Indeed, the terms
‘cartomizer body’ and ‘mouthpiece’ must be understood with regard to the functions that they
provide, which are, respectively, to be able to hold a vaporizable substance and to be insertable
into the mouth of the user.
53. Lastly, claim 1 in feature (1.3.1) provides a functional definition according to which at least a
portion of the cartomizer body is to comprise a translucent material configured to allow viewing
of the fluid vaporizable substance. This feature needs to be seen in conjunction with the
remainder of claim 1 and particularly in conjunction with the particular type of cartomizer that
claim 1 refers to. The vaporizer of claim 1 is limited to the use of a cartomizer that has a
particularly designed cartomizer body, a particularly designed heating element and wicking
element as well as a particular inhalation tube, a particular mouthpiece, particular cartomizer
contacts and a particular cartomizer electrical circuitry. All these aspects need to be
incorporated in the cartomizer and provide structural limitations on how the cartomizer can be
designed. Within such a particular cartomizer, the claimed vaporizer wants the cartomizer body
and the way the fluid vaporizable substance is held in that cartomizer body to be designed such
that making at least a portion of the cartomizer body to comprise a translucent material makes
it possible to view the fluid vaporizable substance.
54. The cartomizer body is configured to hold a fluid vaporizable substance and configured for
insertion into the chamber, which has influence on the geometric shape of the cartomizer and
the need for a design that allows the fluid vaporizable substance to be held. The heating element
and the wicking element are within the cartomizer body, wherein the heating element is
configured to heat the fluid vaporizable material, which provides limitations on the spatial
arrangement of elements within the cartomizer. The inhalation tube is in fluid communication
with the heating element and the wicking element, providing an additional limitation on the
spatial arrangement of parts within the cartomizer. The mouthpiece is at or proximate to the
mouthpiece end and in fluid communication with the inhalation tube, while it further needs to
be accommodated that the mouthpiece extends from the insertion end of the chamber when
the cartomizer is inserted in the chamber, all three issues translating into yet more specific
geometric requirements to the design of the cartomizer and further limitations on the spatial
arrangement of elements within the cartomizer. The plurality of cartomizer electrical contacts
is on an exterior of the insertion end, while cartomizer electrical circuitry is operable to direct
an electronic current between the cartomizer electrical contacts and the heating element, which
yet again requires the cartomizer to be adopted for implementation of these features. Within
such a particular cartomizer, the claimed vaporizer wants the cartomizer body and the way the
fluid vaporizable substance is held in that cartomizer body to be designed such that making at
least a portion of the cartomizer body to comprise a translucent material makes it possible to
view the fluid vaporizable substance.
Claim 1. Lack of inventive step: a) ‘Pan’ as a starting point and common general knowledge or
‘Lee’.
55. The claimant argues that claim 1 lacks an inventive step over ‘‘Cross’ combined with ‘Lee’ and/or
common general knowledge and also over ‘Pan’ combined with ‘Lee’ and/or common general
knowledge.
56. The Court notes that the assessment of the inventive step must be carried out in the light of
Article 56 ‘EPC’ according to which ‘An invention shall be considered as involving an inventive
step if, having regard to the state of the art, it is not obvious to a person skilled in the art’. Hence,
it is necessary to determine whether, given the state of the art, a person skilled in the art would
have obtained the technical solution claimed by the patent using their technical knowledge and
carrying out simple operations. Inventive step is defined in terms of the specific problem
encountered by the person skilled in the art (see, Paris LD, decision issued on 3 July 2024,
UPC_CFI_230/2023).
57. In order to assess whether or not a claimed invention is obvious to a person skilled in the art, it
is first necessary to determine one or more teachings in the prior art that would have been of
interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking
to develop a product or process similar to that disclosed in the prior art. Then, it must be
assessed whether it would have been obvious for the skilled person to arrive at the claimed
solution of the underlying technical problem on the basis of a realistic disclosure of the selected
prior art (see, Munich CD, decision issued on 17 October 2024, UPC_CFI_252/2023; Dusseldorf
LD, decision issued on 10 October 2024, UPC_CFI_363/2023).
58. The patent at issue does not explicitly state which problem is solved by the claimed solution.
Para. [0014] generally states that at least a portion of the cartomizer body is composed of a
translucent material. In relation to a particular embodiment, para. [0023] describes at least a
portion of body 208 may be composed of translucent or substantially translucent material, such
as glass or plastic, so that a user may see fluid 300A held within.
59. Given this background the underlying problem of the invention is to be seen to develop a
vaporizer that has a cartomizer with a cartomizer body and a battery portion with a cartomizer
chamber provided in at least a portion of a cartomizer receiving segment of the battery portion,
the cartomizer being of the particular design that it has a cartomizer body configured to hold a
fluid vaporizable substance and configured for insertion into the chamber, while a heating
element and a wicking element are arranged within this cartomizer body, the heating element
being configured to heat the fluid vaporizable material, and the cartomizer further comprising
an inhalation tube in fluid communication with the heating element and the wicking element, a
mouthpiece at or proximate to the mouthpiece end, the mouthpiece in fluid communication
with the inhalation tube, the mouthpiece being designed to extend from the insertion end of
the chamber when the cartomizer is inserted in the chamber, while a plurality of cartomizer
electrical contacts are provided on an exterior of the insertion end with cartomizer electrical
circuitry being operable to direct an electronic current between the cartomizer electrical
contacts and the heating element in such a manner that the fluid vaporizable substance in the
cartomizer body can be viewed.
60. What the claimed invention aims to achieve is very much limited to the specific described
structure of the cartomizer used, as the claimed invention is linked to and at the same time
limited to vaporizers that use the particular cartomizers. Defining within the underlying problem
the particular design of the cartomizer, is not a pointer to the solution, but describes the
technical context in which the claimed invention must be seen.
61. The defendant argues that the overall common problem is to provide a vaporizer with an
improved user experience (see para. 174 of the defence to revocation), but this argument is not
convincing, as the suggested technical problem appears to be too unspecific and without a link
to what the invention actually achieves over the state of the art, and furthermore, lacking any
reference to the technical aspects of the claimed invention.
62. Having said that, the Court is of the opinion that the teachings disclosed in ‘Pan’, combined with
‘Lee’, are a suitable starting point in the assessment of the inventive step.
63. The claimant considers that the skilled person starting from ‘Pan’ and seeking to facilitate the
consumer’s determination of how much vaporizable substance is present when viewing the
cartridge would be motivated to provide a translucent portion in the cartomizer. In this regard
the claimant points out that translucent cartridges were well known in the state of the art on
the earliest priority date claimed by the patent for allowing a person to identify how much
solution remains in the device, and hence when a refill is needed, as clearly evident in ‘Lee’.
64. ‘Pan’ relates to an electronic cigarette and discloses a vaporizer with all features of the claimed
invention with the exception of the feature (1.3.1). Actually, the defendant does not explicitly
contest that ‘Pan’ describes a vaporizer with the features (1.1), (1.2), (1.2.1), (1.2.2), (1.2.3),
(1.2.4), (1.2.5) (1.3), (1.3.2), (1.3.3), (1.3.4), (1.3.5), (1.3.7), (1.4), (1.6).
65. For completeness, it may be noted that ‘Pan’ shows an electronic cigarette [see para. 0002], that
has an inhale tube 10 (a battery portion), which is an outer shell that is commonly shared by a
part, in which the electric power source 5 (a battery) is arranged (a battery housing portion) and
covered and protected by the outer shell, and a part into which the integrated electronic
atomizer (a cartomizer) is (partially) inserted (the cartomizer receiving segment) (see paras.
[0029], [0033], [0034], [0035] and [0037] and Figs. 3, 5 and 7). The inhaler tube 10 has an open-
end chamber, into which the integrated electronic atomizer is partially inserted, which is distal
from the part of inhaler tube 10 in which the electric power source 5 is arranged and has a base
end that is arranged proximate that part of inhaler tube 10 (see para. [0037] and Figs. 5 and 7).
At one end of the integrated electronic atomizer a mouthpiece is arranged (see Fig. 3), that
extends from the open-ended chamber, when the electric power source 5 is inserted in the
inhaler tube 10 (Fig. 7). Furthermore, para. [0029] describes the liquid container 261, hence
configuring the cartomizer body to hold a vaporizable substance, while para. [0012] describes
the functioning of an electric heat wire and a heat equalizer with absorbed liquid from the liquid-
container, which are a heating element and a wicking element within the cartomizer body. Fig.
3 shows an inhalation tube arranged proximate to and in flow communication with the hole in
the mouthpiece and extending downward, that is in fluid communication with the electric heat
wire and the heat equalizer. Lastly, paras. [0012] and [0037] describe the electric connections
and how the battery electrical circuitry housed within the battery housing segment is operable
to direct an electrical current between the battery (electric power source 5), the battery
electrical contacts (DC plug-socket type), the cartomizer electrical contacts (DC plug 21), the
heating element and the inserted cartomizer. All this gives evidence that features (1.1), (1.2),
(1.2.1), (1.2.2), 1.2.3), (1.2.4), (1.2.5) (1.3), (1.3.2), (1.3.3), (1.3.4), (1.3.5), (1.4), (1.6) are
disclosed in ‘Pan’.
66. Regarding feature (1.3.6) in ‘Pan’ the integrated electronic atomizer has a DC plug 21 located on
a plug seat 71 (see para. [0029] and Fig. 3, below reproduced in a version annotated by the
claimant with some explanatory information). To the skilled person, the term ‘a DC plug’
indicates an electrical connector for supplying direct current (DC) power. ‘Pan’ shows a DC plug-
socket type second electric connector 21 of the integrated electronic atomizer that is
understood to provide electrical contacts (in the plural) (see paras. [0029], [0033] and [0037]
and Figs. 3, 5 and 7).
67. A pin of the DC plug of the cartomizer (the electronic atomizer in ‘Pan’) protrudes from its
bottom end. Similarly, the electric contacts 218 shown in the embodiment of Fig. 11 of the
patent at issue also protrude from the lower part of the cartomizer. Therefore, the Court
concludes that the described pin of the DC plug of ‘Pan’ provides a plurality of cartomizer
electrical contacts on an exterior of an insertion end of the cartomizer. From the arrangement
of the DC plug described in ‘Pan’ in para. [0029] and the operational behaviour described in para.
[0012], the skilled person understands a cartomizer electrical circuitry to be operable in the
electronic atomizer of ‘Pan’ to direct an electronic current between the DC plug and the heating
element (feature (1.3.7)).
68. Paras. [0033] and [0037] together with Fig. 5 and 7 describe that the battery portion in ‘Pan’ (the
electronic inhaler in the patent at issue) has a DC plug-socket type (below an annotated copy of
Fig. 5 as provided by the claimant is reproduced). This DC plug-socket type forms (part of) a
battery electrical contacts that is provided between the base end of the chamber and the battery
housing segment and is positioned to contact the DC plug 21 (the cartomizer electrical contacts)
when the electronic atomizer is inserted in the electronic inhaler. It follows that feature (1.5) is
also disclosed in ‘Pan’.
69. Defendant’s argument as regard to feature (1.5), which is primarily based on the use of the plural
in the term “battery electrical contacts” does not convince. As highlighted in the annotated copy
of Fig. 5 below, the skilled person understands the DC plug-socket type to have a positive
connection and a negative connection and hence contacts (in the plural); one being the central
pin highlighted in orange, one being the further object arranged to the right of the central pin
and also highlighted in orange in the annotated Fig. 5 below.
70. Both parties agree that ‘Pan’ does not disclose the part of feature (1.3.1) that concerns at least
a portion of the cartomizer body to comprise a translucent material configured to allow viewing
of the fluid vaporizable substance.
71. The claimant argues that the provision of a cartomizer body that includes a translucent portion
would be obvious and points out that translucent cartridges were well known in the state of the
art on the earliest priority date claimed by the patent for allowing a person to identify how much
solution remains in the device, and hence when a refill is needed and refers to ‘Lee’ and to
fountain pens, as well as, further documents filed with the reply to defence to further support
the claimed common general knowledge, consisting of U.S. Patent Application Publication No.
2013/0168880 (‘Duke’, ‘MWE 35’), U.S. Patent Application Publication No. 2013/0192623
(‘Tucker’, ‘MWE 36’) and Chinese Publication No. CN100593982C (Technical Institute of Physics
and Chemistry of CAS, ‘CAS’, ‘MWE 37’ and ‘MWE 37a’).
72. The Court acknowledge that this statement is correct for the type of cartridges referred to by
the claimant. Nevertheless, this would not guide the skilled person to make the wall of the
atomizer tube 263 in ‘Pan’ translucent. Indeed, while ‘Pan’ is similar to the vaporizer of claim 1
in that it uses the same particular cartomizer as the claimed vaporizer (which is also, why ‘Pan’
provides a good starting point for the evaluation of inventive step), ‘Pan’ at the same time shows
that the mere measure of making at least a part of the cartomizer body (the atomizer tube 263)
to comprise a translucent portion does not automatically lead to allowing the fluid vaporizable
substance to be viewed. As highlighted by the defendant, ‘Pan’ discloses that the liquid container
261 (which is arranged as a separate element inside the atomizer tube 263) includes liquid-
storing media 264 that is made of cotton filled with liquids. As a result, making a portion of the
atomizer tube 263 translucent would not allow a user to view the vaporizable liquid within the
cartomizer. Even if the atomizer tube 263 were made partially transparent (and not only
translucent), a user would – at most – see the outside of the liquid container 261.
73. In addition, since – as defendant also rightly points out – ‘Pan’ discloses in para. [0027] a side-
space for airflow between the liquid container 261 and the liquid storing media 264. Such a side-
space for airflow or an airflow through the liquid-storing media 264 in general would cause the
internal surface of the liquid container 261 to become dirty during use, thereby inhibiting the
visibility of the chamber from outside the shell. Therefore, making a portion of the atomizer tube
263 translucent would not be a solution that the skilled person would consider in the attempt
to allow viewing of the fluid vaporizable substance.
74. In conclusion, starting from ‘Pan’ it was not obvious to suggest the claimed vaporizer, because
neither the common general knowledge claimed by the claimant, nor ‘Lee’ would provide the
skilled person with guidance on how making at least a portion of the cartomizer body (of the
atomizer tube 263) could be used to allow viewing of the fluid vaporizable substance.
75. It may be added that as far as claimant intended to use the combination of ‘Pan’ with either
‘Duke’, ‘Tucker’ or ‘CAS’ as individual line of argument and outside the line of argument based
on common general knowledge as raised in the statement for revocation, such an individual line
of argument is considered late filed by the Court as it was not raised in the statement for
revocation, but only in the reply to the defence and hence must be disregarded.
Claim 1. Lack of inventive step: b) ‘Cross’ as a starting point and common general knowledge or
‘Lee’.
76. The claimant argues that claim 1 lacks an inventive step over ‘Cross’ combined with common
general knowledge and/or ‘Lee’.
77. As previously mentioned, in order to assess whether or not a claimed invention lacks inventive
step, it is first necessary to determine one or more realistic starting points in the state of the art
which would be of interest to a person skilled in the art who, at the priority date of the patent
in suit, was seeking to develop a product or process similar to that disclosed in the prior art.
78. In particular, realistic starting points are the documents which disclose the main relevant
features as those disclosed in the challenged patent or which address the same or a similar
underlying problem.
79. Against this background, ‘Cross’ is not a suitable starting point for the evaluation of inventive
step.
80. ‘Cross’ relates to the vaporisation of dry, solid vaporizable substance, which is provided as a
coating on the respective heating element (the individual support of the series of supports 78 in
‘Cross’; see Fig. 3 below). Claimant’s references to liquids mentioned in paras. [0069] and [0092]
do not change this evaluation. Here, ‘Cross’ describes production methods used to produce the
device, namely methods for applying the substance onto the respective support of the series of
supports 78 (the heating element) by way of brushing, dip coating, spray coating, screen
printing, roller coating, inkjet printing, vapor-phase deposition or spin coating. For these
production methods the substance to be applied temporarily needs to be made liquid itself or
dissolved in a liquid. In the cause of production, the applied substance dries out, however, and
in the device described is present as a dry, solid substance. This is already obvious from the
device being a consumer product that needs to be designed to be held or carried in any kind of
orientation (even upside down), making a liquid vaporizable substance unsuitable as this would
leave the heating elements if the device was held upside down. The need for the substance to
be solid and dry in ‘Cross’ is also obvious as otherwise the substance may flow from one support
to a neighbouring support, ruining the intended vaporization of a specific dose of substance per
application, which can only be achieved, if this specific does is present as a dry substance on the
respective support.
81. Because ‘Cross’ lacks a fluid vaporizable substance, it is evident that its structural and functional
main features diverge from those disclosed in the patent at issue and also that the issue of
allowing the user to view a fluid vaporizable substance, which is the underlying problem
addressed by this later patent, does not arise.
82. Even if ‘Cross’ were taken as a starting point, the Court does not consider that it would be
obvious for as skilled person to amend the solution of ‘Cross’ such that at least a portion of the
cartomizer body (which in ‘Cross’ is the cartridge) would comprise a translucent material
configured to allow viewing of the fluid vaporizable substance.
83. Firstly, the Court is not convinced that it would be possible to view the vaporizable substance
on the supports inside the cartridge, even if the cartridge were transparent. Thus, there is a lack
of motivation to make the cartridge transparent for the purpose of viewing a fluid vaporizable
substance. The supports are described to be fabricated from 0.0005-inch-thick stainless-steel
foils having a surface area of 0.2 cm2 and hence far too small to be reliable observed. Secondly,
by way of the display 162 ‘Cross’ already comprises means for monitoring the applied doses that
operates much more precisely than trying to see the substance on the minute sized supports.
The skilled person would not be motivated to do away with the already existing means for
monitoring in favour of a less reliable method. Stating the opposite is an argument made in
hindsight. Thirdly, as can be seen from Fig. 7 inserted below, in ‘Cross’ the part of the cartridge
that contains the substance on the heating element is fully arranged inside the dispensing unit.
Even if the cartridge were translucent, the user would not be able to look inside the cartridge in
the inbuilt state of the cartridge. Hence the skilled person lacks motivation to make the cartridge
translucent.
84. In summary, the arguments presented by claimant starting from ‘Cross’ have not convinced the
Court that it would have been obvious to suggest the claimed vaporizer, regardless of ‘Cross’
being combined with an alleged common general knowledge or with ‘Lee’.
85. Finally, as stated in para. 75, it is not possible to consider ‘Cross’ with either ‘Duke’, ‘Tucker’ or
‘CAS’ as individual line of argument and outside the line of argument based on common general
knowledge as late filed.
Conclusions.
86. For these reasons, the grounds for invalidity raised by the claimant against the patent at issue
and addressed by the panel are not well founded and any arguments of the parties which have
not been specifically considered must be deemed absorbed.
87. Therefore, patent EP ‘092 shall be maintained as granted.
Costs
88. The costs of the Court and of the defendant shall be borne by the claimant, as the unsuccessful
party.
89. The panel notes that during the interim conference, the value of the revocation action for the
purpose of applying the scale of ceilings for recoverable costs was set at 500,000.00 euros and
confirms this evaluation.

DECISION
The Court:
a) dismisses the revocation action filed by NJOY Netherlands B.V. against VMR Products LLC
concerning the European patent EP 3 626 092 B1.
b) maintains European patent EP 3 626 092 B1 as granted.
c) orders that the costs of the proceedings shall be borne by the defendant.

Issued on 21 January 2025.

ORDER DETAILS
Order no. ORD_598528/2023 in ACTION NUMBER: ACT_571745/2023
UPC number: UPC_CFI_311/2023
Action type: Revocation Action