ACT_571801/2023

RevocationMain Revocation ActionParis CDRevocation Action—

Overview Decisions Reasoning Citations Documents Timeline

Plain-English summary

NJOY Netherlands B.V. sought to revoke EP 3 504 991 B1 (Juul Labs International, a vaping device cartridge with dual condensation chambers) before the Paris Central Division, relying on Cohen, Chen, and Thompson as prior art. The court dismissed the revocation action, finding the patent novel and inventive; it declined to assess Chen/Thompson-based obviousness attacks not raised by NJOY as the revocation scope is defined by the claimant. The court also reaffirmed that inventive step is an objective inquiry and that parties may substantiate initial arguments when challenged by the opponent.

Accepted arguments

What the court agreed with — by party.

Inventive step must be evaluated objectively; subjective knowledge of inventors or parties is irrelevant
RespondentLegal basis: Art. 56 EPC
Note: Paris Central Division held that inventive step under Art. 56 EPC is an objective inquiry; the 'person skilled in the art' reference excludes subjective considerations.
Court does not evaluate revocation reasons not raised by the claimant
RespondentLegal basis: Art. 76(1) UPCA
Note: Claimant defines scope of revocation evaluation; court applied dispositive principle and declined to assess obviousness over Chen/Thompson as starting points since claimant had not raised this.
Patent valid for novelty and inventive step over asserted prior art
RespondentLegal basis: Art. 54, 56 EPC
Note: Court dismissed revocation action, finding the claimed vaping cartridge (with dual condensation chambers and specified mouthpiece configuration) novel and inventive.
Party may further substantiate initial argument in second submission where opponent challenged it in reply
RespondentLegal basis: RoP Preamble para. 5
Note: Court balanced front-loading obligation with fairness: if a party raises an argument in its first submission and the opponent challenges it, the first party may further substantiate in its second submission.

Rejected arguments

What the court did not agree with — and why.

EP 3 504 991 B1 lacks novelty over Cohen
ClaimantLegal basis: Art. 54 EPC
Reason: Features 1.2–1.8 of claim 1 disputed between parties; court found it unnecessary to fully resolve whether Cohen discloses all disputed features because inventive step finding sufficed; revocation action dismissed.
Claim 1 invalid for lack of inventive step
ClaimantLegal basis: Art. 56 EPC
Reason: Claim 1 involves an inventive step; dependent claims 2–11 also involve inventive step via dependency on claim 1 or 3.

Key legal principles

Doctrines and rules cited in the reasoning.

Inventive step assessment is objective — subjective knowledge of inventors or parties irrelevant Dispositive principle: court evaluates only revocation grounds actually raised by claimant (Art. 76(1) UPCA)Front-loading obligation balanced by fairness: further substantiation of initial argument permitted in response to opponent's challenge Problem-solution approach: motivation to combine prior art must be established Dependent claim validity follows claim 1 where claimant raises no specific dependent-claim arguments

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Prior art relied on

References cited and the role they played.

CohenNovelty-destroying
Chen (CN 101843368 A)Background
Thompson (US 2013/0192617 A1)Background

Claim construction notes

Claim 1 covers a vaping cartridge with specified features including a fluid storage compartment (1.2), an air inlet passage portion (1.3), a heater chamber, a first condensation chamber (1.6) in fluid communication with the heater chamber, a second condensation chamber (1.7) in fluid communication with the first, and a mouthpiece (1.8) affixed to a second end of the cartridge with an aerosol outlet in fluid communication with the second condensation chamber. The court evaluated which of these features are present in Cohen.