1
DECISION
of the Court of First Instance of the Unified Patent Court
Central division Paris Seat (Section 1)
delivered on 28 February 2025
concerning EP 3 504 989
KEYWORDS: revocation, claim interpretation, clarity, added matter, admission of
auxiliary claims
CLAIMANT:
NJOY Netherlands B.V. Westerdoksdjik 423, 1013BX Amsterdam, Netherlands
represented by Attorney-at-law Hon.-Prof. Dr. Henrik Holzapfel, McDermott Will &
Emery, Stadttor 1, 40219 Düsseldorf, Germany
At the hearing also represented by
Mathias Karlhuber, Cohausz & Florack
Laura Woll, McDermott Will & Emery
Diana Pisani, McDermott Will & Emery
Lisa Nassi, McDermott Will & Emery
DEFENDANT:
Juul Labs International, Inc. 560 20th Street, Building 104, San Francisco, California
94107, United States of America
Action n°: UPC CFI 312 /2023
Revocation action 571761/2023
2
Represented by Bernhard Thum, Thum & Partner | Thum, Mötsch, Weickert
Patentanwälte PartG mbB, Siebertstr. 6, 81675 Munich, Germany
Also at the hearing represented by
Andreas Mötsch, German and European Patent Attorney, Thum & Partner
Dr. Jonas Weickert, German and European Patent Attorney, Thum & Partner
Dr. Tilman Müller, Attorney at Law, Bardehle Pagenberg
PATENT AT ISSUE
European patent EP P 3 504 989, hereafter referred to as “EP 989” or as “the Patent”.
PANEL/DIVISION
Panel 1 of the Central Division (Paris Seat)
DECIDINGJUDGES
This decision has been delivered by the presiding judge and judge-rapporteur
François Thomas, the legally qualified judge Maximilian Haedicke and the
technically qualified judge Max Tilmann.
DATE OF THE ORAL HEARING
21 November 2024
SUMMARY OFFACTS ANDREQUESTS
1 The dispute
1.1 On 15 September 2023, Claimant brought a revocation action1 against
Defendant at the Paris Central Division of the Unified Patent Court (Action n°:
UPC CFI 312/2023 Revocation action 571761/2023), requesting the Court to
revoke European Patent No. EP 3 504 989.
1.2 On 26 October 2023, Defendant filed a Preliminary objection No.
App_583478/2023 pursuant to Rules 19.1(a) and 48 of the Rules of Procedure
1 The Statement of Revocation, Defence to Revocation, Reply to the Defence to Revocation and
Rejoinder to the Reply to the Defence to Revocation are herein referred to as ´SfR´, ´DtR´, ´RtD´ and
´R´, respectively.
3
of the Unified Patent Court (‘RoP’) denying the competence of the Court on
the grounds of an allegedly false denomination of Defendant by Claimant.
The Court rejected the Preliminary objection. This holding was confirmed on
appeal No. APL_588423/2023 UPC_CoA_436/2023.
1.3 A Statement of Defence to Revocation dated 4 December 2023 was filed on
20 December 2023. At the same time and within the same submission, an
Application to amend the Patent was filed. A Reply to the Defence was
submitted on 21 February 2024, including a Defence to an Application to
amend the Patent. The Court also received a Rejoinder to the Reply, dated 21
March 2024, that included a Reply to the Defence to an Application to amend
the Patent. On 22 April 2024, Claimant filed a Reply to the Rejoinder and
Reply to Defendant’s Application to amend the Patent in suit.
1.4 On 31 May 2024, the Court received a further submission by Defendant
entitled “Comments to Claimant’s submission of 22 April 2024 including the
Reply to the Defendant’s rejoinder and the reply to Defendant’s application
to amend the patent”.
1.5 On 27 June 2024, the interim conference was held.
1.6 By order of 5 July 2024, the Court – inter alia – set out the order allowing
Defendant to identify, within the set of auxiliary requests already on file,
those set of claims that it wants to pursue further until 20 July 2024.
1.7 On 22 July 2024, Defendant identified 8 auxiliary requests to be pursued
during the oral hearing.
1.8 On 30 August 2024, the Court received the summaries sent by the parties.
1.9 The oral hearing was held on 21 November 2024.
1.10 On 26 and 28 November 2024 the parties filed the Presentations that the
parties used during the hearing via e-mail.
1.11 For the submissions of the parties and previous orders issued by the Court,
reference is made to the case file in the Case Management System.
2 The patent
2.1 The Patent EP 3 504 989 B1 Exhibit MWE 1 entitled VAPORIZATION DEVICE
SYSTEMS was filed on 23 December 2014.
2.2 As indicated by Claimant in mn. 7 SfR and undisputed by Defendant, the
Patent in suit was filed on 15 February 2019 as European patent application
No. 19157427.6 Exhibit MWE 3, as a divisional application of European
patent application no. 14873186.2 and European patent application
No.18000692.6. EP 14873186.2 was originally filed as International Patent
Application No. PCT/US2014/072230, published as WO 2015/100361 A1
4
Exhibit MWE 5, and claimed priority from US Provisional Patent Applications
Nos. 61/920,225 Exhibit MWE 6 (filed on 23 December 2013), 61/936,593
Exhibit MWE 7 (filed on 6 February 2014) and 61/937,755 Exhibit MWE 8
(filed on 10 February 2014).
2.3 The publication of the mention of the grant of the Patent was made on 9 June
2021. Registered owner of the Patent is Defendant.
2.4 According to Claimant’s Statement for Revocation (SfR; mn. 6) and
undisputed by Defendant, EP989 at the time of filing the SfR was valid in the
following member states of the UPCA: Belgium, France, Germany, Italy,
Netherlands, Portugal and Sweden. According to Claimant’s Statement for
Revocation (SfR; mn. 6) and undisputed by Defendant, EP989 at the time of
filing the SfR was also valid in Czechia, Greece, Ireland, Poland, Romania,
Spain, Switzerland/Liechtenstein and the United Kingdom.
2.5 Oppositions against the grant of the Patent at the European Patent Office
(“EPO”) were pending at the time of filing the StR; Claimant is not party to
the opposition proceedings.
2.6 Claim 1 of the Patent, as granted, reads:
A device for generating an inhalable aerosol, the device comprising:
a device body comprising a cartridge receptacle (21) having a notched
body;
a separable cartridge (30) configured to be inserted into the cartridge
receptacle (21), and an airflow path comprising:
a channel (40) comprising a portion of an air inlet passage
(51);
a second air passage (41) in fluid communication with the
channel;
a heater chamber (37) in fluid communication with the second
air passage (51);
a first condensation chamber (45) in fluid communication with
the heater chamber (37);
a second condensation chamber (46) in fluid communication
with the first condensation chamber (45); and
an aerosol outlet (47) in fluid communication with the second
condensation chamber (46);
wherein a channel air inlet (50) through which air enters the
air inlet passage (51) is left exposed when the separable
5
cartridge (30) is inserted into the notched body of the cartridge
receptacle (21).
3 Requests
3.1 Claimant requests:
I - European patent n° EP 3 504 989 be revoked with effect for the
territories of Belgium, France, Germany, Italy, the Netherlands,
Portugal and Sweden.
II - To dismiss Defendant’s alternative requests to maintain the Patent
in suit based on any of Defendant’s proposed amendments of the
claims of the Patent in suit, including all of Defendant’s Auxiliary
Requests, and Defendant’s alternative requests (2)(c) and (d).
III - To dismiss Defendant’s request (3) and, in case that the Court
deems it necessary, to admit Exhibits MWE 20 to 49 to the
proceedings.
IV - The Defendant be ordered to bear the legal costs of the
proceedings.
3.2 Defendant requests:
(1) the revocation action be dismissed;
(2) the patent in suit be maintained:
a. as granted;
b. in the alternative, based on one of the proposed amendments
of the claims of the patent in suit as submitted on 22 July 2024
(Auxiliary Requests I, II, III, IV, V, VI, VII, VIII).
c. 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; ((2)c. as set forth in the
Statement of Defence): and
d. 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 according to one of the
proposed amendments of the claims of the patent in suit ((2)d.
as set forth in the Statement of Defence)
(3) documents MWE 20 to MWE 43 not be admitted into the
proceedings;
(4) the Claimant bear the costs of the proceedings.
6
Regarding the submission of 22 April 2024, Claimant further requests to
admit this submission also insofar as the submission is not limited to
commenting on Defendant’s Application to amend the Patent.
Regarding the submission of 31 May 2024, Defendant further requests
admission of this response.
4 The arguments
4.1 Claimant states that the invention claimed therein is not valid for several
reasons. Claimant argues that the following reasons for revocation apply:
o added matter (Article 138(1)(c) EPC, with reference to Articles 76(1)
and 123(2) EPC),
o lack of novelty (Article 138(1)(a) EPC, with reference to Articles 52(1)
and 54(2) EPC),
o lack of inventive step (Article 138(1)(a) EPC, with reference to Articles
52(1) and 56 EPC).
4.2 Regarding the issue of “added matter”, Claimant in particular argues that
Claim 1 of the Patent contains subject matter extending beyond the
disclosures of the grandparent application PCT/US2014/072230, in the form
of the following :
“wherein a channel air inlet (50) through which air enters the air inlet passage
(51) is left exposed when the separable cartridge (30) is inserted into the
notched body of the cartridge receptacle (21)”.
4.3 In the statement for revocation, the claimant indicates the following :
7
4.4 Claimant argues that in its reply to an official communication (MWE 19), the
patentee alleged that claim 1 is based on original claim 159 combined with
paragraph [170] of the PCT application (MWE 5). According to the Claimant,
original claim 159 of the PCT application specified the presence of the
channel air inlet 50 and the air inlet passage 51, but didn’t specify that the
channel air inlet 50 is left exposed when the cartridge 30 is inserted into the
notch body.
4.5 Claimant underlines that [170] of the grandparent application, in which the
channel air inlet is left exposed, is referring to a specific embodiment that is
depicted in figure 14 of this application. Claimant points out that this figure
14 is a particular embodiment in which the channel air inlet 50 in the cartridge
30 is left exposed due to a notch in the notch body of the cartridge receptacle
21, but that claim 1 of the patent is not limited to the configuration depicted
in figure 14. Claimant stresses that patent claim 1 does not specifiy that the
channel air inlet 50 is provided on the cartridge 30 or that the channel air
inlet 50 is left exposed by a notch in the notched body. Claimant adds that
even by considering that original grandparent claim 159 and paragraph
8
[00170] were combined, the original grandparent application does not
contain a basis application for a more general claim feature that is not limited
to the specific arrangement shown in FIG. 14 of the grandparent application.
4.6 Claimant deduces that Patent Claim 1 extends the disclosure of the patent
beyond the subject matter disclosed in the grandparent application as filed.
4.7 Arguing that, according to European patent practice, original disclosure can
be provided by literal and non-literal but direct and unambiguous disclosure,
and that the original application as a whole (i.e. claims, descriptions and
figures) must be taken into consideration, Defendant disagrees with the
Claimant, who states that claim 1 would not be limited to the specific
configuration of Fig. 14. Defendant confirms that paragraph [170] relates to
an embodiment which is consistent with original claim 159, as illustrated by
figures 5 to 15.
4.8 According to Defendant, Claimant missed the second sentence of [170],
which precises that “the size of the channel air inlet 50 may be varied by
altering the configuration of the notch in the cartridge receptacle 21”.
Defendant says that this second sentence relates merely to an optional
feature, apparent from the use of the term “may be varied”, and that the first
sentence discloses the feature of a channel air inlet which is exposed when
the cartridge is inserted into the notched body. Defendant adds that [170]
discloses the feature of a channel air inlet which is exposed when inserted
into the notched body.
4.9 Defendant asserts that, from original Figs. 10A and 14 and from original
paragraph [00190], it is clear that air enters the air inlet passage through the
channel air inlet. Defendant concludes that the feature, according to the
channel air inlet (50) is left exposed when the separable cartridge (30) is
inserted into the notched body of the cartridge receptacle (21), finds direct
and unambiguous basis in the original application and is disclosed.
GROUNDS FOR THEDECISION
5 Late-filed facts and evidence
5.1 Defendant requests documents MWE 20 to MWE 43 not be admitted into the
proceedings; Claimant requests to dismiss Defendant’s request and, in case
that the Court deems it necessary, to admit Exhibits MWE 20 to 49 to the
proceedings.
9
5.2 Due to the front-loaded approach of the UPC system, Rule 44 RoP requires
the Statement for revocation to contain an indication of the facts relied on
(Rule 44 (f) RoP) and the evidence relied on, where available and an
indication of any further evidence which will be offered in support (Rule 44
(g) RoP). Similarly, the RoP contain provisions which define the admissible
content of the further submissions. The parties are under an obligation to set
out their full case as early as possible (Preamble RoP 7, last sentence) and to
provide all their legal and factual arguments, and any evidence supporting it
in a timely manner.
5.3 Whenever possible, Claimant is obliged to submit its arguments, facts and
attachments in its Statement for Revocation, which it has plenty of time to
prepare. However, when submitting the Statement for Revocation, Claimant
cannot anticipate which points Defendant will dispute or the means by which
it will do so. Therefore, in its Reply to the Statement of Defence, Claimant is
allowed to present arguments in response to arguments raised by Defendant
in its Statement of Defence.
5.4 A clear distinction between newly introduced arguments and arguments
raised as a mere reaction to previously filed arguments cannot always be
drawn. In order to secure fairness and equity of the proceedings (Preamble
RoP 5), especially to safeguard the fundamental right to be heard, a generous
standard is to be applied. An argument which may be considered a further
reaching response to the other party’s previously raised argument is to be
admitted.
Reply to the Statement of Defence and Hajaligol Declaration
5.5 In its Reply to the Statement of Defence dated 21 February 2024, Claimant
filed 24 new documents. Defendant requests not to admit any of the newly
filed documents into the proceedings. This request especially pertains to the
preclusion of the Hajaligol Declaration (MWE 20) and all enclosures.
5.6 The Hajaligol report is admissible as far as it is a reaction to arguments
submitted in the Statement of Defence. Therefore, the report is admissible
as far as it contains arguments regarding the common general knowledge
(‘State of the art before the critical filing date of the Patents‘, mn. 21-33).
These arguments are raised in response to arguments raised by Defendant in
its Statement of Defence to Revocation. Their submission is therefore
admissible.
5.7 The “Hajaligol Declaration” is also admissible as far as it can be considered a
response to Dr. Collins proposed construction of the claim features of the
patent in suit. The report takes issue with the Collins declaration and focuses
on alleged contradictions. A clear distinction between newly added
arguments and arguments which are used as a response to Dr. Collins‘ report
10
cannot be drawn. In order to secure Claimant‘s right to be heard, the entire
Hajaligol report is admitted into the proceedings, including its attachments.
Rejoinder to the Reply to the Defence to Revocation / Reply to the Defence to
the Application to amend the patent
5.8 Rule 52 RoP delineates the scope of the Rejoinder to the Reply to the Defence
to Revocation. According to Rule 52 RoP ‘the defendant may lodge a
Rejoinder to the Reply to the Defence to Revocation together with any Reply
to the Defence to an Application to amend the patent pursuant to Rule 43.3
and 55 (...). The Rejoinder shall be limited to a response to the matters raised
in the Reply.’
5.9 Therefore, as far as the Rejoinder to the Reply to the Defence to Revocation
(19 March 2024) is concerned, the arguments regarding the admissibility of
the Hajaligol Declaration are admitted. Page 1-19 of the Rejoinder are
therefore admissible.
5.10 P. 20-36 of the Rejoinder are a response to Claimant’s Reply to the Defence
to Revocation and to the arguments contained in the Hajaligol Declaration.
As the content of the Hajaligol Declaration is admitted, the response thereto
should also be admitted. P. 20-36 are therefore admitted.
5.11 P. 36-74 of the Rejoinder are admitted. They focus on general issues
concerning patentability, but at the same time, they constitute a response to
the Hajaligol Declaration and to the Reply to the Defence to Revocation. As
previously mentioned, in order to safeguard the fundamental right to be
heard, a generous standard is to be applied.
5.12 Similarly, the expert report of Ramon Alacon (Exhibit TP-13) is admissible, as
it can be considered a reaction to the Hajaligol Declaration, which is admitted
to the proceedings, too.
5.13 According to Rule 55, 32.3 RoP, the ‘proprietor may lodge a Reply to the
Defence to the Application to amend the patent within one month of service
of the Defence (…)’. Applying this rule, this submission of 21 March 2024 is
also admissible as far as it is commenting on the Application to amend the
patent. Therefore, p. 75 et seq. are admitted.
Reply to the Rejoinder and Reply to Defendant’s Application to amend the
Patent in suit
5.14 On 22 April 2024, Claimant filed a ‘Reply to the Rejoinder and Reply to
Defendant’s Application to amend the Patent in suit’.
5.15 According to Rules 55, 43.3, 32.3 RoP, Claimant may lodge a Rejoinder
regarding Defendant’s Application to amend the Patent in suit. P. 15-60 deal
with Defendant’s Application to amend the Patent in suit and are therefore
admissible, including MWE 46 to MWE 49 that form part of this Rejoinder.
11
5.16 According to Rule 32.3 second sentence RoP, the Rejoinder shall be limited
to the matters raised in the Reply’. Claimant requests under Rules 58, 36,
9.1 RoP admission of its submission also insofar as the submission is not
limited to ‘the matters raised in the Reply.’ This request is to be denied,
including not allowing MWE 45 (“Second Hajaligol Declaration”) into the
proceedings. There is no good reason why an exception should be made to
the general rule in Rule 32.3 second sentence RoP. Claimant had the
opportunity to present its case. In the interest of efficient proceedings, no
further arguments can be introduced at this stage of the proceedings. Their
admission would not be in line with the UPC’s front-loaded approach. P. 4 to
14 of Claimant’s submission of 22 April 2024 are therefore inadmissible.
Submission of 31 May 2024
5.17 Defendant’s submission of 31 May 2024 is inadmissible, as there is no legal
basis for it in the RoP. The submission stands in contrast to the front-loaded
approach of the UPC system. There are no good reasons why, as an exception,
the submission should be admitted in this case.
6 Technical introduction
6.1 EP 989 pertains to vaporization device systems. According to [0002] EP989 it
pertains to improvements in electronic inhalable aerosol devices, or
electronic vaping devices, particularly to electronic aerosol devices which
utilize a vaporizable material that is vaporized to create an aerosol vapor
capable of delivering an active ingredient to a user.
6.2 EP 989 describes DE 196 19N536 A1 to disclose a device for inhaling a powder.
The device comprises an inhaler that is inserted into a plate having mul􀆟ple
holes containing a powder. The powder is protected by a covering foil made
of aluminium. The inhaler has a mouthpiece, a handle, a suc􀆟on tube and a
blade to pierce the covering foil.
7 The claimed subject matter
7.1 Claim 1 of the Patent can be divided into the following features:
1.1 A device for generating an inhalable aerosol, the device comprising:
1.2 a device body comprising a cartridge receptacle (21) having a notched
body;
1.3 a separable cartridge (30) configured to be inserted into the cartridge
receptacle (21), and
12
1.4.1 an airflow path comprising: a channel (40) comprising a portion of an
air inlet passage (51);
1.4.2 a second air passage (41) in fluid communication with the channel;
1.4.3 a heater chamber (37) in fluid communication with the second air
passage (51);
1.4.4 a first condensation chamber (45) in fluid communication with the
heater chamber (37);
1.4.5 a second condensation chamber (46) in fluid communication with the
first condensation chamber (45); and
1.4.6 an aerosol outlet (47) in fluid communication with the second
condensation chamber (46);
1.4.7 wherein a channel air inlet (50) through which air enters the air inlet
passage (51) is left exposed when the separable cartridge (30) is
inserted into the notched body of the cartridge receptacle (21).
With the DtR Defendant suggests a different feature analysis, namely
first the airflow path is numbered 1.4 as the generic term and
second the last feature “wherein a channel air inlet (50) through
which air enters the air inlet passage (51) is left exposed when the
separable cartridge (30) is inserted into the notched body of the
cartridge receptacle (21)” is numbered feature 1.5 instead of feature
1.4.7 since this feature describes the interaction of the channel air
inlet and the separable cartridge.
For the purpose of the present decision, the Court will use the feature
analysis as provided by the Claimant. The outcome of this decision is not
dependent on whether or not the term “the airflow path” is identified as a
generic term by way of using an individual number nor is it dependent on
using a number of higher hierarchy-level (1.5 instead of 1.4.7) for the last
feature group of the claim.
Some features of claim 1 of the Patent require interpretation.
Legal framework
7.2 The Court of Appeal of the UPC has laid down the following legal framework
for the interpretation of patent claims (Order dated 26 February 2024 in
UPC_CoA_335/2023, NanoString/10x Genomics, p. 26-27 of the original
13
German language version, also see CoA UPC 13 May 2024,
VusionGroup/Hanshow).
7.3 In accordance with Art. 69 EPC and the Protocol on its interpretation, a patent
claim is not only the starting point, but the decisive basis for determining the
scope of protection of a European patent. The interpretation of a patent
claim does not depend solely on the strict, literal meaning of the wording
used. Rather, the description and the drawings must always be used as
explanatory aids for the interpretation of the patent claim and not only to
resolve any ambiguities in the patent claim. However, this does not mean
that the patent claim merely serves as a guideline and that its subject-matter
also extends to what, after examination of the description and drawings,
appears to be the subject-matter for which the patent proprietor seeks
protection.
7.4 The patent claim is to be interpreted from the point of view of a person skilled
in the art. When interpreting a patent claim, the person skilled in the art does
not apply a philological understanding, but determines the technical meaning
of the terms used with the aid of the description and the drawings. A feature
in a patent claim is always to be interpreted in light of the claim as a
whole (CoA UPC 13 May 2024, VusionGroup/Hanshow, point 29). From the
function of the individual features in the context of the patent claim as a
whole, it must be deduced which technical function these features actually
have both individually and as a whole. The description and the drawings may
show that the patent specification defines terms independently and, in this
respect, may represent a patent´s own lexicon. Even if terms used in the
patent deviate from general usage, it may therefore be that ultimately the
meaning of the terms resulting from the patent specification is authoritative.
7.5 In applying these principles, the aim is to combine adequate protection for
the patent proprietor with sufficient legal certainty for third parties.
7.6 The relevant point in time for interpreting a patent claim for the assessment
of validity is the filing (or priority) date of the application that led to the
Patent.
7.7 The patent claim must be interpreted from the point of view of a person
skilled in the art. The person skilled in the art (skilled person) is a legal fiction
which, in the interests of legal certainty, forms a standardized basis for the
assessment of the legal concepts of "prior art", "novelty", "inventive step"
and "enablement". The skilled person stands for the average expert who is
typically active in the technical field of the invention, has had the usual prior
training and has acquired average knowledge, skills and practical experience.
14
The skilled person
7.8 The person skilled in the art is a mechanical engineer with either a Bachelor’s
degree or as Master’s degree in mechanical engineering and several years of
experience in the technical field of electronic inhalable aerosol devices or
electronic vaping devices, who may be assisted by an electrical engineer for
those issues that relate to the electrical circuitry implemented in electronic
inhalable aerosol devices or electronic vaping devices that he himself cannot
handle.
7.9 Electronic inhalable aerosol devices or electronic vaping devices are
consumer products. General tasks in designing electronic inhalable aerosol
devices or electronic vaping devices relate to the outer physical shape and
mechanical properties of the device; the materials to be used for the device;
the inner physical shape of the device, also as regards fluid dynamics and
thermodynamics. These tasks typically fall into the competence of a
mechanical engineer and not so much into the competence of an electrical
engineer, a chemist or a physicist (as suggested by Claimant (SfR, mn 11)).
7.10 A further task in designing electronic inhalable aerosol devices or electronic
vaping devices relates to the electrical circuitry implemented in these
devices. This additional design task can either be performed by a mechanical
engineer with some years of experience in the technical field of vaporizers or
by way of forming a team between the mechanical engineer and an electrical
engineer.
7.11 Claimant states that, alternatively to a mechanical engineer, the skilled
person could possess a Bachelor’s or Master’s degree in chemistry or physics
or a related field or someone from a related field (mn 11 SfR). This does not
convince, as it would render the selection of the skilled person too unspecific.
Claimant does not provide any substantive reasons for suggesting these
alternatives and hence does not provide any convincing arguments as to why
Claimant’s suggestion should prevail. Likewise, the statement by
Mr. Hajaligol in mn 19 of MWE 20 also provides no further reasoning as to
why Mr. Hajaligol is of the opinion that the person skilled in the art ought to
be defined differently, hence – apart from a singular opinion - not providing
any convincing arguments as to why Claimant’s suggestion should prevail.
15
Claim interpretation from the point of view of the skilled person
7.12 Feature 1.2: “a device body comprising a cartridge receptacle (21) having a
notched body”
7.13 This feature defines the device body to have a notched body. The skilled
person understands this to define a notch to be present on the device body,
as this makes the device body a notched body. To the skilled person’s
understanding, feature 1.2 leaves it open, however, where on the device
body the notch is present.
7.14 Feature 1.4.7: “wherein a channel air inlet (50) through which air enters the
air inlet passage (51) is left exposed when the separable cartridge (30) is
inserted into the notched body of the cartridge receptacle (21).”
7.15 To the skilled person’s understanding, this feature provides a description of
the configuration of the channel air inlet in the assembled state of the device
for generating an inhalable aerosol. In the assembled state, the channel air
inlet is left exposed.
7.16 Feature 1.4.7 makes reference to the notched body. To the skilled person,
the reference to the notched body of the cartridge receptacle in feature 1.4.7
is simply made to define the body into which the separable cartridge is
inserted. To the skilled person, feature 1.4.7 does not define the notch of the
notched body as means for leaving the channel air inlet exposed.
7.17 To the skilled person’s understanding, feature 1.4.7 also defines a spatial
relationship of the channel air inlet and the air inlet passage that both form
parts of the airflow path.
7.18 As one member of the airflow path, feature 1.4.6 defines an aerosol outlet in
fluid communication with the second condensation chamber. To the skilled
person’s understanding the aerosol outlet is final part of the airflow path,
namely the part where the aerosol to be generated by the claimed “device
for generating an inhalable aerosol” leaves the device. To the skilled person’s
understanding the reference to the aerosol outlet being in fluid
communication with the second condensation chamber indicates that the
fluid that is to leave the aerosol outlet as inhalable aerosol flows there
(directly or indirectly) from the second condensation chamber. To the skilled
person understanding, within the airflow path defined in claim 1, the second
condensation chamber is placed upstream of the aerosol outlet. Based on the
same considerations, feature 1.4.5 to the skilled person’s understanding
defines within the airflow path defined in claim 1 the first condensation
16
chamber to be upstream of the second condensation chamber. Based on the
same considerations, feature 1.4.4 to the skilled person’s understanding
defines within the airflow path defined in claim 1 the heater chamber to be
upstream of the first condensation chamber. Based on the same
considerations, feature 1.4.3 to the skilled person’s understanding defines
within the airflow path defined in claim 1 the second air passage to be
upstream of the heater chamber. Based on the same considerations, feature
1.4.2 to the skilled person’s understanding defines within the airflow path
defined in claim 1 the channel to be upstream of the second air passage.
7.19 In the context of this understanding, the skilled person understands the
reference in feature 1.4.7 to air that enters the air inlet passage through a
channel air inlet to indicate that the channel air inlet is upstream of the air
inlet passage. Air that is drawn into the device from the outside first flows
through the channel air inlet, through which it then enters the air inlet
passage.
7.20 In the context of this understanding, the skilled person understands the term
“is left exposed” in feature 1.4.7 to indicated that the channel air inlet is
exposed to the ambient air that surrounds the device when the separable
cartridge is inserted into the notched body of the cartridge receptacle.
According to the skilled person’s understanding, the ambient air that
surrounds the device enters the device via the channel air inlet.
8 Validity
8.1 The Patent as granted is not valid. It extends beyond the content of the
grandparent application PCT/US2014/072330 =WO 2015/100361 A1, MWE
5.
Legal framework
8.2 An amendment is regarded as introducing subject-matter which extends
beyond the content of the application as filed, and therefore unallowable, if
the overall change in the content of the application (whether by way of
addition, alteration or excision) results in the skilled person being presented
with information which is not directly and unambiguously derivable from that
previously presented by the application, even when account is taken of
matter which is implicit to a person skilled in the art. Any amendment can
only be made within the limits of what a skilled person would directly and
unambiguously derive, using common general knowledge, and seen
objectively and relative to the date of filing (or the priority date, where
17
appropriate), from the whole of the documents as filed (LD The Hague,
UPC_CFI_131/2024 ACT_14945/2024; order of 19 June 2024; page 12,
mn 3.4).
8.3 Given that the Patent is a divisional application, the Patent is to be revoked if
any one of the following conditions applies:
1. the Patent extends beyond the content of the European application
as filed No. 1915427.6 (MWE 3);
2. the Patent extends beyond the content of the parent application EP
18000692.6;
3. the European Patent extends beyond the content of the grandparent
application EP 14873186.2 (MWE 5).
Granted claim 1 is not disclosed verbatim in the applications
8.4 The precise wording used for granted claim 1 in its combination and flow of
words (claim 1 “verbatim”) can as such not be found in the European
application as filed No. 1915427.6 (MWE 3); nor in the parent application EP
18000692.6 nor the grandparent application EP 14873186.2.
Starting from starting point used by Defendant within the grandparent
application (MWE 5)
8.5 Based on a comparison between claim 159 of (to which Defendant refers as
basis for the granted claim 1)
and in particular with reference to the feature
“wherein a channel air inlet (50) through which air enters the air inlet
passage (51) is left exposed when the separable cartridge (30) is
inserted into the notched body of the cartridge receptacle (21)”
18
Claimant points out that claim 1 as granted (1) does not specify that the
channel air inlet 50 (mn 32, SoR) is provided on the cartridge 30 and (2) does
not specify that the channel 50 is left exposed by a notch in the notch body.
To Claimant’s view, even when combining the original grandparent claim 159
and paragraph [00170],
relied upon by Defendant, there would be no basis in the original grandparent
application for a more general claim feature that is not limited to the specific
arrangement shown in FIG. 14 of the grandparent application.
8.6 Claimant has shown that there are differences between the basis of
disclosure relied upon by the Defendant and the granted claim 1 that are to
be considered for the patent to contain subject matter that extends beyond
the content of the application as filed. As a consequence, it is Defendant’s
burden of proof to show, that all the changes made to what he considers as
a generic disclosure basis for granted claim 1 (the changes made to claim 159)
do not result in the skilled person being presented with information which is
not directly and unambiguously derivable from that previously presented by
the application, even when account is taken of matter which is implicit to a
person skilled in the art.
8.7 Original claim 159 of the grandparent application (MWE5) reads
8.8 Claim 159 makes no reference to a notch or a notched body. The question
arises whether Defendant has shown that MWE 5 – while it does not disclose
literally in claim 159 a notch or a notched body – in another way discloses for
a channel air inlet through which air enters the air inlet passage which is left
19
exposed when the separable cartridge is inserted into the notched body of
the cartridge receptacle, which is a feature of the granted claim.
8.9 Paragraph [00170], referred to by Defendant for that purpose, of the
grandparent application (MWE5) reads
8.10 Figure 14 of the document MWE5, the same that Fig. 14 of the patent,
explicitly referred to in paragraph [00170] is the following :
8.11 Paragraph [00170] of MWE 5 is a text portion of the grandparent application
that describes a particular embodiment, namely the one shown in Fig. 14.
Paragraph [00170] explicitly states that it is referring to Fig. 14. The disclosure
of [00170] to the skilled person hence is not a disclosure of generic features.
As regards their disclosure, paragraph [00170] and Fig. 14 are intrinsically
linked; only what the skilled person can take from them when looking at them
jointly can be considered as being disclosed to the skilled person. Nothing in
paragraph [00170] indicates to the skilled person that this paragraph is
intended to disclose to the skilled person something else.
8.12 Paragraph [00170] describes Fig. 14 to show the channel air inlet 50 to be left
exposed. From Fig. 14, referred to in that very sentence, the skilled person
takes that it is the notch in the cartridge receptacle 21 that leaves the channel
air inlet 50 to be left exposed. The presence of the notch and the effect of
leaving the channel air inlet 50 exposed when the pod 30a (which the skilled
20
person understands to be a cartridge) is inserted into the notched body of
the cartridge receptacle 21 hence are intrinsically linked to each other in the
skilled person’s understanding.
8.13 Granted claim 1 does not link the effect of leaving the channel air inlet 50
exposed when the cartridge is inserted into the notched body of the cartridge
receptacle 21 to the notch. The amendment made to original claim 159 of the
grandparent application MWE 5 hence results in the skilled person being
presented with information which is not directly and unambiguously
derivable from that previously presented by the application, even when
account is taken of matter which is implicit to a person skilled in the art.
8.14 Defendant further argues that the second sentence of paragraph [00170]
relates merely to an optional feature, which Defendant sees apparent from
the use of the term “may be varied.” To the Defendant’s view the first
sentence discloses the feature of a channel air inlet which is exposed when
inserted into the notched body.
8.15 This argument cannot convince. Already when evaluating the teaching of the
first sentence of paragraph [00170] in conjunction with Fig. 14, the skilled
person learns that it is the notch of the notched body that causes the effect
described in that very sentence, namely leaving the channel air inlet 50
exposed when the pod 30a is inserted into the notched body of the cartridge
receptacle 21 (the term “notched body” also explicitly being used in that very
first sentence). In addition, when seen in conjunction with the first sentence,
the term “may be varied” used in the second sentence is understood by the
skilled person as a disclosure of how the effect of leaving the channel air inlet
50 exposed when the pod 30a is inserted into the notched body of the
cartridge receptacle 21 can be increased or reduced. The second sentence
hence is a reinforcement of the disclosure of what the first sentence says in
conjunction with Fig. 14. The second sentence describes, how an effect that
the skilled person already derives from the first sentence in conjunction with
Fig. 14 can be increased or reduced.
8.16 For the reasons given above, the Patent cannot be maintained as granted in
its entirety.
9 Defendant’s Auxiliary Requests
Request (1)/ Request (2) a
9.1 The Patent cannot be maintained as granted in its entirety. Defendant's
request (1), according to which the revocation action is to be dismissed, is
21
rejected. Similarly, request (2) a., according to which the patent be
maintained as granted, is to be rejected.
Request (2) b. in the numbering of this decision
9.2 With request (2) b. in the numbering of this decision, Defendant requests to
amend the patent based on the Auxiliary Requests I to VIII as submitted on
22 July 2024.
9.3 The Court uses the discretion given within Rule 9.2 RoP and – contrary to
Claimant’s request - will not disregard the auxiliary requests I to VIII filed by
Defendant on 22 July 2024. The order of 05. July 2025 gave Defendant the
option (“may identify”) to narrow down the set of auxiliary requests already
on file. The Court considers Defendant’s motion to narrow down the auxiliary
to the auxiliary requests I to VIII as expedient for an efficient procedure and
hence beneficial to Claimant, too. Without the motion to file the auxiliary
requests I to VIII, the originally filed auxiliary requests 1 to 55 (filed with DtR)
would have remained on file to be dealt with in a manner that would yet have
to be decided. Furthermore, given that 20. July 2024 was a Saturday and
Monday, 22. July 2024, the next working, no substantial harm in the
Claimant’s position can be identified. Under normal business practice one
might expect that Claimant’s representative would have taken note of
Defendant’s submission only on Monday, 22. July 2024 anyways.
Auxiliary request I in the version of 22. July 2024
9.4 Auxiliary request I in the version of 22. July 2024 (AR1 in the following) is
allowable. The amendment to the patent applied for by way of this auxiliary
request renders the reasons for revocation raised by the Claimant mood.
9.5 According to AR1, claim 1 is amended as follows (highlighting of amendments
as provided by Defendant in submission of 22. July 2024):
22
9.6 AR1 is Auxiliary Request 14 of the DfR. AR1 includes the amendments A1, A2,
A3 and A10. Claimant presented his arguments against the allowability of
these amendments in the RtD and the submission of 22. April 2024.
9.7 As a general remark, Claimant states that Fig. 14 includes a number of other
features that are not specified in the granted patent claim 1, such as battery
21, printed circuit board 24, pressure sensor 27, charging contact 28,
magnetic contact 29 and fluid storage compartment 32. Claimant argues that
the skilled person considering paragraphs [00170] and [00171] of the Patent,
in conjunction with FIG. 14, would be required to make a seemingly arbitrary
selection of features, including the notch and its configuration and the
heater, but disregarding the battery and so on, without any pointer or
guidance from the Patent.
9.8 This argument does not convince. While being intrinsically linked to Fig. 14
(as indicated above) the teaching of paragraph [00170] is understood by the
skilled person to be solely directed to the provision of a channel air inlet 50,
23
the effect of leaving it exposed and means for influencing its size. To the
skilled person’s understanding, none of the elements indicated by the
Claimant (battery 21, printed circuit board 24, pressure sensor 27, charging
contact 28, magnetic contact 29 and fluid storage compartment 32) directly
influence the provision of a channel air inlet 50, the effect of leaving it
exposed or the means for influencing its size. Hence, while Fig. 14 as a
particular embodiment does indeed disclose this embodiment to have a
battery 21, printed circuit board 24, pressure sensor 27, charging contact 28,
magnetic contact 29 and fluid storage compartment 32, the skilled person
understands that what is taught in paragraph [00170] is not linked to these
additional elements. To the skilled person’s understanding to obtain the
technical effect intended with the provision of the features described in
paragraph [00170] it is not necessary to also provide the further elements,
namely a battery 21, printed circuit board 24, pressure sensor 27, charging
contact 28, magnetic contact 29 and fluid storage compartment 32. This is
further supported by the fact that these elements are not shown in the plan
view of figure 14, that illustrates the notch and the channel air inlet, which
indicates a lack on intrinsic link between these features and the particular
configuration of the notch and the channel air inlet.
9.9 As regards the further features of Fig. 14 identified by Claimant, amending
claim 1 in the manner proposed by Defendant with AR1 does not results in
the skilled person being presented with information which is not directly and
unambiguously derivable from that previously presented by the application.
The amendment proposed by way of AR1 is made within the limits of what a
skilled person directly and unambiguously derives, using common general
knowledge, and seen objectively and relative to the date of filing (or the
priority date, where appropriate), from the whole of the documents as filed.
Added Subject Matter and Lack of Clarity for AR1
9.10 As regards possibly contravening Art. 76 (1), 84 and 123 (2) EPC, Claimant
only provides arguments regarding the use of Amendment A1 in the context
of Auxiliary Request 1 and 11 filed with the DtR and not as regards Auxiliary
Request 14 of the DtR, which is the present AR1.
9.11 As regards Amendment A2, Claimant argues that amendment A2 does not
specify how the notch configuration defines the size of the channel air inlet.
According to Claimant’s view the claim does not specify that the channel air
inlet is left exposed by the notch.
24
9.12 This argument does not convince. Amendment A2 states that “a size of the
channel air inlet (50) is defined by a configuration of the notch.” According to
the wording of the amended claim 1, the channel air inlet is the object that is
being left exposed. The amendment A2 now specifies that the size of the
channel air inlet (that is: the size of that object that is being left exposed) is
defined by a configuration of the notch. To the skilled person’s understanding
this means that it is the notch that exposes the channel air inlet.
9.13 From the use of the term “altering the configuration of the notch” the skilled
person understands that the teaching of paragraph [00170] is not limited to
the particular V-shaped form of the notch as shown in Fig. 14, but that other
sizes and shapes of notches are possible to leave exposed the channel air
inlet. It is hence not necessary to include a description of the particular notch
shown in Fig. 14 into claim 1.
9.14 By way of Amendment A2 the unallowable amendment identified above for
the granted patent is turned into an allowable amendment.
9.15 Claimant further criticizes that amendment A2 seems to be defined by a
result to be achieved, when the manner in which the notch defines the size
of the channel air inlet could be defined by structural features. Claimant
considers this to contravene Article 84 EPC. This argument does not convince.
The term “configuration” in the term “configuration of the notch” is
understood by the skilled person as the noun “configuration” in the sense of
a general reference to the size and shape of the notch and hence as a general
description of the structural features of the notch.
9.16 The Court does not consider the patent in the amended form as proposed by
AR1 to contrave Art. 76 (1), 84 and 123 (2) EPC.
Novelty
9.17 The subject matter of claim 1 of AR1 is new over the disclosure of Chinese
Patent Application Publication No. 101843368 A (hereinafter referred to as
“Chen”, particular reference being made to the English translation as
provided by Exhibit MWE 10a) and the disclosure of U.S. Pre-grant Patent
Application Publication No. 2011/0036346 A1 (hereinafter referred to as
“Cohen”).
Novelty over „Chen“
9.18 “Chen” does not disclose the feature “wherein the notched body has a notch,
wherein a size of the channel air inlet (50) is defined by a configuration of the
25
notch.” The subject matter of amended claim 1 according to AR1 hence is
new over “Chen”.
9.19 Claimant supports his statement that the subject matter of amendment A2 is
disclosed by „Chen“ by arguing that the notches (“semicircular holes”) 21 of
„Chen“ interact with the cartridge (“mouthpiece”) 1 of „Chen“ to form a
channel air inlet that is exposed when the cartridge is installed, and the
configuration of the semicircular holes play a role in defining the size of that
channel air inlet. Claimant hence only identifies notches that – to Claimant’s
view – at the same time are the channel air inlet.
9.20 As correctly stated by the Defendant, the notch is not the same as the channel
air inlet. As stated above, the Amendment A2 to the skilled person’s
understanding means that it is the notch that exposes the channel air inlet.
9.21 Claimant has not shown that „Chen“ discloses a notch that exposes the
channel air inlet (and hence needs to be something different to the channel
air inlet that is being exposed by the notch).
Novelty over „Cohen“
9.22 “Cohen” does not disclose the feature of granted claim 2, now added to claim
1, namely “wherein the cartridge comprises a fluid storage compartment (32)
and wherein the channel (40) is integral to an exterior surface of the
cartridge, wherein the channel forms a first side of the air inlet passage (51),
and wherein an internal surface of the cartridge receptacle (21) in the device
forms a second side of the air inlet passage (51) when the cartridge is inserted
into the cartridge receptacle.”, because Cohen does at least not show “the
channel (40) is integral to an exterior surface of the cartridge”. The subject
matter of amended claim 1 according to AR1 hence is new over “Cohen”.
9.23 This features defines the air inlet passage to be made up of several sides. This
feature defines that the channel forms a first side of the air inlet passage. This
feature also defines that an internal surface of the cartridge receptacle in the
device forms a second side that the channel.
9.24 In the context of this feature, the skilled person understands the term
“channel” to be a surface feature of the exterior surface of the cartridge, like
a groove, a trough, a depression, a dent, a furrow, a trench, a crease, and a
gutter or the like ([0021] of the patent specification supporting this
understanding of the skilled person). To the skilled person’s understanding
this surface feature provides the predominant portion of the air inlet passage,
but to the skilled person is partially open, wherein an internal surface of the
cartridge receptacle in the device that forms a second side of the air inlet
26
passage complements this partially open surface feature, closing it and hence
completing the air inlet passage.
9.25 In the context of claim 2 of the granted patent (from which Amendment A2
stems) Claimant provides the following picture that is based on Fig. 8 of
„Cohen“
Claimant states that when the atomizing unit 14 is inserted into the
electronics section 12, the annular flange 92 of the atomization unit of the
cartridge abuts the flange 28 of the electronic section of the device. To
Claimant’s view, in this arrangement, the surface of the annular flange 92
and the surface of the flange 28 contact each other and have side-openings
within their walls that align and permit air to flow in and out. Specifically,
claimant points out that the flange 28 includes a number of slots 30 built into
its surface, such that when the flange 28 meets the annular flange 92, a
corresponding number of openings are formed between the internal surface
of the slots 30 (cartridge receptacle/electronics section) and the exterior
surface of the annular flange 92 (cartridge/CAUCC).
9.26 This understanding of the disclosure of „Cohen“ does, however, not show the
feature of amendment A3. The flange 92 of the atomization unit is a flat
surface. This flat surface does not show a channel as a surface feature, like a
groove, a trough, a depression, a dent, a furrow, a trench, a crease, and a
gutter or the like. The slots 30, referred to by Claimant, are surface features
of the flange 28 and hence of the device body, but not of the cartridge.
9.27 The hole 94 also referred to by Claimant does not form a first side of the air
inlet passage that then is supplemented by an internal surface of the
cartridge receptacle in the device as a second side of the air inlet passage.
The skilled person does not consider a hole, like the hole 94, to be a “channel”
in the sense of a surface feature like a groove, a trough, a depression, a dent,
a furrow, a trench, a crease, and a gutter or the like that needs to be
27
supplemented by an internal surface of the cartridge receptacle to form an
air inlet passage.
9.28 Furthermore, “Cohen” does not disclose the feature-combination of feature
1.4.7 and the newly added feature “wherein the notched body has a notch,
wherein a size of the channel air inlet (50) is defined by a configuration of the
notch.” The subject matter of amended claim 1 according to AR1 hence is
new over “Chen” also for this reason.
9.29 As regard the channel air inlet, Claimant argues a channel air inlet to be
formed by the radial holes 94. To illustrate his view, Claimant provides the
following annotated excerpt from Fig. 8 of „Cohen“:
9.30 If Claimant’s view were to be followed, the channel would be arranged
upstream of the channel air inlet.
9.31 As regards feature 1.4.7 Claimant argues that „Cohen“ anticipates Feature
1.4.7. Claimant indicates „Cohen“’s atomizer unit 14 and cartridge 16 in the
fixed together to form ( “combined atomizer unit-cartridge component” 14,
16 (herein referred to as a “CAUCC”)) to include flange 92 on the exterior side
of the atomizing unit 14. Claimant states that when the CAUCC 14, 16 and
the receptacle of the electronic section 12 are joined, the flanges 28, 92 abut
each other. To Claimant’s view, air inlet passages are formed in this manner
by respective slots 30 in the flange 28 of the first coupling 26 and an opposing
surface of the flange 92 of the second coupling 90. These air passages to
Claimant’s view form exposed air inlet passages that allow passage of air from
outside of the device into the device.
9.32 As indicated above, the skilled person understands the reference in feature
1.4.7 to air that enters the air inlet passage through a channel air inlet to
indicate that the channel air inlet is upstream of the air inlet passage. Air that
is drawn into the device from the outside first flows through the channel air
inlet, through which it then enters the air inlet passage.
28
9.32.1 Applying claimant’s understanding of the location of the channel air inlet,
feature 1.4.7 is not shown in „Cohen“, as it is downstream of the channel
(which forms part of the air inlet passage) and not upstream of the channel
as required by feature 1.4.7.
9.33 Moreover and in addition, applying claimant’s understanding of the location
of the channel air inlet this would not be left exposed when the separable
cartridge is inserted into the notched body of the cartridge receptacle. As
indicated above, according to the skilled person’s understanding, the
ambient air that surrounds the device enters the device via the channel air
inlet. In Claimant’s understanding, the channel air inlet would, however, be
arranged deep down in the device and air would enter the device via the
channel. Hence, „Cohen“ does now show feature 1.4.7 also for this reason.
9.34 As regards a disclosure of an air inlet passage, in the hearing of 21. November
2024 Claimant provided the view that can best be presented by way of a
figure presented by Claimant as part of their presentation in the hearing:
9.35 This manifests the view that according to Claimant’s understanding the air
enters the device via the air inlet passage (and not via a channel air inlet as
required by claim 1).
9.36 Even if Claimant had meant the blue writing “Air inlet passage” to mean
“Channel air inlet”, „Cohen“ would not disclose the subject matter of claim 1
of AR1. The notch is not the same as the channel air inlet. As stated above,
the Amendment A2 to the skilled person’s understanding means that it is the
notch that exposes the channel air inlet. In „Cohen“, the “notch” is provided
by the slots 30 in the flange 28 (the part to which the black arrow next to the
term “Air inlet passage” points in the above figure). Give that these slots 30
are the notches, they cannot be considered to be a channel air inlet.
29
9.37 Claimant has not shown that „Chen“ discloses a notch that exposes the
channel air inlet (and hence needs to be something different to the channel
air inlet that is being exposed by the notch).
Inventive step
9.38 Having regard to “Chen” or “Cohen”, the subject matter of claim 1 of AR1 is
to be considered as involving an inventive step, because having regard to
“Chen” or “Cohen, the subject matter of claim 1 of AR1 is not obvious to a
person skilled in the art.
9.39 As indicated above, “Chen” does not disclose the feature “wherein the
notched body has a notch, wherein a size of the channel air inlet (50) is
defined by a configuration of the notch.” Claimant has not provided the Court
with a convincing argument, how it would be obvious to the skilled person to
provide this feature within the device disclosed in “Chen”.
9.40 As indicated above, “Cohen” does not disclose the feature of granted claim
2, now added to claim 1, namely “wherein the cartridge comprises a fluid
storage compartment (32) and wherein the channel (40) is integral to an
exterior surface of the cartridge, wherein the channel forms a first side of the
air inlet passage (51), and wherein an internal surface of the cartridge
receptacle (21) in the device forms a second side of the air inlet passage (51)
when the cartridge is inserted into the cartridge receptacle.” Claimant has
not provided the Court with a convincing argument, how it would be obvious
to the skilled person to provide this feature-combination within the device
disclosed in “Cohen”.
9.41 As indicated above, “Cohen” does not disclose the feature-combination of
feature 1.4.7 and the newly added feature “wherein the notched body has a
notch, wherein a size of the channel air inlet (50) is defined by a configuration
of the notch.” Claimant has not provided the Court with a convincing
argument, how it would be obvious to the skilled person to provide this
feature-combination within the device disclosed in “Cohen”.
10 Extend of protection
10.1 For the reasons given above, the European patent n° EP 3 504 989 is to be
maintained with effect for the territories of Belgium, France, Germany, Italy,
the Netherlands, Portugal and Sweden with the extent of the protection
conferred by the set of claims as provided by Auxiliary Request 1 in the
version filed on 22. July 2024 and repeated above.
30
10.2 For avoidance of doubt, the set of claims as provided by Auxiliary Request 1
in the version filed on 22. July 2024 is repeated below:
11 Costs
11.1 Both parties only succeed in part. While the Claimant succeeds with his
request to revoke the patent as granted, Defendant’s application to amend
31
the patent is successful. In accordance with Article 69.2 UPCA and Rule 118.5
RoP, the Court orders that the parties bear their own costs.
DECISION
Having heard the parties on all relevant aspects of the case, the Central Division:
1. Maintains European patent n° EP 3 504 989 with effect for the
territories of Belgium, France, Germany, Italy, the Netherlands,
Portugal and Sweden as amended by Auxiliary Request 1 in the version
filed on 22. July 2024 and repeated above.
2. Admits documents MWE 20 to MWE 43 and MWE 46 to 49 into the
proceedings.
3. Does not admit pages 4-14 of Claimant’s submission of 22 April 2024,
including MWE 45.
4. Admits p. 15-60 of Claimant’s submission of 22 April 2024.
5. Does not admit Defendant’s submission of 31 May 2024.
6. Orders that the Registry shall send a copy of this decision to the
European Patent Office and to the national patent office of any
Contracting Member States concerned, after the deadline for appeal
has passed.
7. Orders the parties to bear their own costs.
NAMES ANDSIGNATURES
Judges
François Thomas, Presiding judge and judge-rapporteur:
Maximilian Haedicke, Legally qualified judge:
Max Tilmann, Technically qualified judge:
For the Deputy-Registrar
FRANÇOIS
PAUL
ETIENNE
Thomas
Signature
numérique de
FRANÇOIS PAUL
ETIENNE Thomas
Date : 2025.02.28
11:49:47 +01'00'
Digital signiert von Maximilian
Wilhelm Haedicke
DN: cn=Maximilian Wilhelm
Haedicke, c=DE
Datum: 2025.02.28 13:10:11
+01'00'
Maximilian
Wilhelm
Haedicke
Date :
2025.02.28
14:41:12 +01'00'
32
Information about appeal
An appeal against the present Decision may be lodged at the Court of Appeal, by any
party which has been unsuccessful, in whole or in part, in its submissions, within two
months of the date of its notification (Art. 73(1) UPCA, Rule 220.1(a), 224.1(a) RoP).
Information about enforcement
Art. 82 UPCA, Art. 37(2) UPCA, Rule 118.8, 158.2, 354, 355.4 RoP.
An authentic copy of the enforceable decision will be issued by the Deputy-Registrar
upon request of the enforcing party, Rule 69 RegR.
ORDER DETAILS
Order no. ORD_10060/2025 in ACTION NUMBER: ACT_571761/2023
UPC number: UPC_CFI_312/2023
Action type: Revocation Action
Related proceeding no. Not provided Not provided
Not provided Not provided
Max
Wilhelm
Tilmann
Digital
unterschrieben von
Max Wilhelm Tilmann
Datum: 2025.02.28
12:06:42 +01'00'