UPC CFI 263/2023
Jun 29, 2023·EP3414708 · ADAPTIVE SENSOR SAMPLING OF A COLD CHAIN DISTRIBUTION SYSTEM
Action number: ACT 555899/2023
- Case details
- StatusCase Closed (Patent upheld as amended)ActionRevocationCategoryMain revocation action
- Parties
- Division
- Paris CD
- Technology
- Electrical engineeringComputer technology · IT methods for management
- InstrumentsMeasurement
- Language
- English
- First decided
- Jan 8, 2024
- Last decision
- Jul 29, 2024
- EPO Opposition
- Bitzer Electronics A/SAdmissible2023-06-28
| Patent revoked | Median days to first decision | |
|---|---|---|
| All UPC | 37% (34/91) | 124 |
| Paris CD | Locked | Locked |
| Judge François Thomas | Locked | Locked |
| Judge Paolo Catallozzi | Locked | Locked |
| Judge Ulrike Keltsch | Locked | Locked |
At the UPC: BITZER Electronics A/S (5 cases)·Carrier Corporation (5 cases)
This dispute contains 2 other proceedings
- 2024-07-29Revocation ActionPublic
Summary: The Paris Central Division rejected the revocation action filed by BITZER Electronics A/S against EP 3 414 708 (claim 1), maintaining claim 1 as amended by auxiliary request II submitted during the proceedings; costs were borne 60% by the claimant and 40% by the defendant.
Show the legal issues (4)
- Revocation of cold chain monitoring patent
- Admissibility of patent amendments
- Admissibility of late revocation grounds
- Scope of claims attacked in partial revocation action
- 2024-04-05Revocation ActionPublic
Summary: The judge-rapporteur issued an interim conference order setting out procedural directions for the revocation action concerning EP 3 414 708, including discussion of the validity of the priority claim and allowable form of amendments; no substantive ruling on patentability was made.
Show the legal issues (2)
- Validity of priority claim
- Admissibility of patent amendments
- 2024-01-08Revocation ActionPublic
Summary: The Paris Central Division rejected Carrier Corporation's application to stay the revocation proceedings against EP3414708 pending EPO opposition proceedings, finding that the requirement of a 'rapid decision' from the EPO was not fulfilled because no concrete timeline for the EPO ruling had been established.
Show the legal issues (4)
- Stay of UPC proceedings pending EPO opposition (Art. 33(10) UPCA, Rule 295(1)(a) RoP)
- Criterion of 'rapid decision' by EPO as condition for stay
- Balancing parallel EPO and UPC proceedings
- Access to justice and proportionality
| Document title | Date | Public |
|---|---|---|
| DecisionOutcome | 2024-07-29 | Not public |
| Headnote-and-Keywords | 2024-07-29 | Not public |
| decision | 2024-07-29 | Public |
| decision | 2024-07-29 | Not public |
| Hearing Reference | 2024-06-21 | Not public |
| Hearing Reference | 2024-06-21 | Not public |
| interimProcedureClosure | 2024-06-13 | Not public |
| summons | 2024-06-13 | Not public |
| rule 108 | 2024-06-13 | Public |
| rule 108 | 2024-06-13 | Not public |
| Outcome of the Order | 2024-06-13 | Not public |
| rule 263 | 2024-06-13 | Public |
| Receipt | 2024-06-11 | Not public |
| R263 Application | 2024-06-10 | Not public |
| Amended Application to Amend (tracked) | 2024-06-10 | Not public |
| Amended Statement of Defence (clean) | 2024-06-10 | Not public |
| Mark-up of Auxiliary Request 13 | 2024-06-10 | Not public |
| Auxiliary Request 13 | 2024-06-10 | Not public |
| Amended Statement of Defence (tracked) | 2024-06-10 | Not public |
| Mark-up of Auxiliary Request 14 | 2024-06-10 | Not public |
| Amended Application to Amend (clean) | 2024-06-10 | Not public |
| Auxiliary Request 14 | 2024-06-10 | Not public |
| Outcome of the Order | 2024-04-30 | Not public |
| rule 333 | 2024-04-30 | Public |
| Receipt | 2024-04-19 | Not public |
| Application for Review of Case Management Order | 2024-04-18 | Not public |
| Proof of fee payment | 2024-04-18 | Not public |
| Outcome of the Order | 2024-04-17 | Not public |
| closing workflow | 2024-04-17 | Public |
| Outcome of the Order | 2024-04-17 | Not public |
| closing workflow | 2024-04-17 | Public |
| Outcome of the Order | 2024-04-17 | Not public |
| closing workflow | 2024-04-17 | Public |
| replyAmendPatentDefence | 2024-04-11 | Not public |
| Rejoinder to Reply to the Defence to the Statement of Claim and Reply to Defence to the Application to Amend | 2024-04-11 | Not public |
| Exhibit A - Summons and preliminary opinion | 2024-04-11 | Not public |
| Cover Letter | 2024-04-11 | Not public |
| Hearing-Dates | 2024-04-05 | Not public |
| rule 105 | 2024-04-05 | Public |
| Receipt | 2024-04-02 | Not public |
| Application under Rule 9 | 2024-04-02 | Not public |
| Hearing Reference | 2024-04-02 | Not public |
| Hearing Reference | 2024-04-02 | Not public |
| Fix-Interim-Conference-Date | 2024-03-27 | Not public |
| interim conference | 2024-03-27 | Public |
| interimConferenceDecision | 2024-03-27 | Not public |
| writtenProcedureClosure | 2024-03-27 | Not public |
| Receipt | 2024-03-27 | Not public |
| Application under Rule 336 | 2024-03-26 | Not public |
| Receipt | 2024-03-25 | Not public |
| Application under Rule 336 | 2024-03-22 | Not public |
| Hearing-Dates | 2024-03-13 | Not public |
| rule 28 | 2024-03-13 | Public |
| Email from the EPO | 2024-03-13 | Not public |
| Confirmation of availability | 2024-03-13 | Not public |
| confirmation schedule CMC and OP | 2024-03-01 | Not public |
| rule 28 | 2024-02-26 | Not public |
| Comments on proposed dates | 2024-02-23 | Not public |
| Acknowledgement-of-lodging | 2024-02-19 | Not public |
| Rejoinder to the reply to the defence and reply to the defence to the application to amend | 2024-02-19 | Not public |
| Exhibit A - Summons and preliminary opinion | 2024-02-19 | Not public |
| Confirmation of availability | 2024-02-19 | Not public |
| preliminary order | 2024-02-19 | Not public |
| Confirmation of availability | 2024-02-12 | Not public |
| comments to the hearing set dates | 2024-02-12 | Not public |
| rule 28 | 2024-02-05 | Not public |
| Hearing-Dates | 2024-02-05 | Not public |
| amendPatentDefence | 2024-01-19 | Not public |
| Reply to revocation defence and application for amendment | 2024-01-19 | Not public |
| Exhibit MB 5' | 2024-01-19 | Not public |
| Exhibit MB 10 | 2024-01-19 | Not public |
| Acknowledgement-of-lodging | 2024-01-19 | Not public |
| Reply to revocation defence and application for amendment | 2024-01-19 | Not public |
| Exhibit 5' | 2024-01-19 | Not public |
| Exhibit MB 10 | 2024-01-19 | Not public |
| Outcome of the Order | 2024-01-08 | Not public |
| request for stay | 2024-01-08 | Not public |
| request for stay | 2024-01-08 | Not public |
| Comments to request for stay | 2023-12-15 | Not public |
| request for proceeding stay | 2023-12-04 | Not public |
| Receipt | 2023-12-04 | Not public |
| Exhibit B - Statement of Claim | 2023-12-01 | Not public |
| Exhibit E - Opposition observations | 2023-12-01 | Not public |
| Application to stay proceedings | 2023-12-01 | Not public |
| Covering letter | 2023-12-01 | Not public |
| Exhibit A - Notice of Opposition | 2023-12-01 | Not public |
| Exhibit D - Letter from the President of the EPO | 2023-12-01 | Not public |
| Exhibit C - Request for opposition acceleration | 2023-12-01 | Not public |
| Acknowledgement-of-lodging | 2023-11-22 | Not public |
| Formal-checks_Notification-of-positive-outcome | 2023-11-22 | Not public |
| Formal-checks_Notification-of-positive-outcome | 2023-11-22 | Not public |
| Acknowledgement-of-lodging | 2023-11-20 | Not public |
| Auxiliary Request 2 | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 9 amendments | 2023-11-20 | Not public |
| Auxiliary Request 10 | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 6 amendments | 2023-11-20 | Not public |
| Auxiliary Request 7 | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 4 amendments | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 5 amendments | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 11 amendments | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 12 amendments | 2023-11-20 | Not public |
| Mark-up of Main Request amendments | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 8 amendments | 2023-11-20 | Not public |
| Auxiliary Request 1 | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 3 amendments | 2023-11-20 | Not public |
| Auxiliary Request 4 | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 10 amendments | 2023-11-20 | Not public |
| Auxiliary Request 9 | 2023-11-20 | Not public |
| Auxiliary Request 6 | 2023-11-20 | Not public |
| Auxiliary Request 8 | 2023-11-20 | Not public |
| Application to amend | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 7 amendments | 2023-11-20 | Not public |
| Auxiliary Request 12 | 2023-11-20 | Not public |
| Main Request | 2023-11-20 | Not public |
| Auxiliary Request 3 | 2023-11-20 | Not public |
| Auxiliary Request 5 | 2023-11-20 | Not public |
| Auxiliary Request 11 | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 1 amendments | 2023-11-20 | Not public |
| Mark-up of Auxiliary Request 2 amendments | 2023-11-20 | Not public |
| Statement of defence | 2023-11-20 | Not public |
| Covering letter | 2023-11-20 | Not public |
| Acknowledgement of access to case | 2023-09-18 | Not public |
| Notification Of Service | 2023-09-18 | Not public |
| Panel-Appointment | 2023-08-09 | Not public |
| epoUploadDocumentsWorkflow | 2023-08-03 | Not public |
| Document from EPO | 2023-08-02 | Not public |
| statementOfRevocation | 2023-08-01 | Not public |
| Acknowledgement-of-lodging | 2023-07-31 | Not public |
| Formal-checks_Notification-of-positive-outcome | 2023-07-31 | Not public |
| MB8 | 2023-07-27 | Not public |
| MB1a | 2023-07-27 | Not public |
| MB1b | 2023-07-27 | Not public |
| MB9 | 2023-07-27 | Not public |
| MB4 | 2023-07-27 | Not public |
| MB6 | 2023-07-27 | Not public |
| MB7 | 2023-07-27 | Not public |
| MB2 | 2023-07-27 | Not public |
| corrected statement of claim | 2023-07-27 | Not public |
| MB3 | 2023-07-27 | Not public |
| MB5 | 2023-07-27 | Not public |
| revocation action | 2023-07-27 | Not public |
| MB1c | 2023-07-27 | Not public |
| MB1d | 2023-07-27 | Not public |
BITZER Electronics sought revocation of Carrier Corporation's EP 3 414 708 (cold chain monitoring apparatus with adaptive sensor sampling). The Paris Central Division dismissed the revocation action as against the patent amended by auxiliary request II, finding that the prior art did not teach or suggest adjusting the sampling rate based on environmental altering or user-induced events. The court also set important procedural precedent on the admissibility of late-filed documents and the scope of permissible patent amendments in partial revocation proceedings.
Amended claim 1 (auxiliary request II) is inventive over the cited prior art because none of the documents teach adjusting sampling rate based on environmental altering or user-induced events
RespondentLegal basis: Art. 56 EPCNote: The court found no motivation in the prior art to solve the technical problem by adjusting the sampling rate based on event triggers, rather than by other means such as more sophisticated devices or reduced measuring frequency.
Patent proprietor entitled to amend challenged claims by inserting features from non-challenged claims
RespondentLegal basis: Art. 65 UPCA; Rule 30 RoPNote: The court established that where a patent is only partially attacked, the proprietor may propose amendments to challenged claims by inserting features from non-attacked claims.
Late-filed prior art documents MB2 and MB4 should be admitted and undermine inventive step
ClaimantLegal basis: Art. 56 EPC; Rule 9.2 RoP (advancement of proceedings)Reason: The late-filed documents did not relate to the defence raised by the opponent or the amendment application, and therefore did not constitute a legitimate response that would justify late filing; additionally MB2 was published after the priority date.
Request to amend patent is inadmissible with respect to non-challenged claims
ClaimantReason: The court ruled the amendment request inadmissible only as to the non-challenged claims, but admissible as to challenged claims, so this argument was only partially accepted.
New grounds for revocation introduced in reply to defence constitute permissible arguments
ClaimantLegal basis: Rule 9.2 RoPReason: Grounds that could have been included in the initial statement of revocation are inadmissible if they do not relate to the defence or the amendment application.
Browse other cases on this principle.
- MB2 (European patent application published 9 September 2016)Obviousness combination
- MB4 (unspecified prior art document)Obviousness combination
The contested claim 1 as amended under auxiliary request II requires a plurality of environmental sensors (specifically monitoring temperatures) each with a dedicated power source, an event detector for environmental altering or user-induced events, and a controller that adjusts the sampling rate depending on those events. The court did not extensively discuss individual term construction but analysed the distinctiveness of the event-triggered sampling rate adjustment feature.