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UPC CFI 312/2023
Sep 12, 2023·EP3504989 +1 more: VAPORIZATION DEVICE SYSTEMS AND METHODS
- Case details
- StatusCase ClosedActionRevocationCategoryMain Revocation Action
- Parties
- ClaimantsReps: Hon.-Prof. Dr. Henrik Holzapfel (McDermott Will & Schulte); Mathias Karlhuber (Cohausz & Florack)RespondentsReps: Bernhard Thum (Thum & Partner); Andreas Mötsch (Thum & Partner); Jonas Weickert (Thum & Partner); Tilman Müller (Bardehle Pagenberg)
- Division
- Paris CD
- Technology
- Consumer Goods · E-Cigarettes · Electric Techniques
- Language
- English
- First decided
- Feb 28, 2025
Claims
At issueall
Amendedall
Notes: EP 3 504 989 as granted found invalid but maintained in amended form per Auxiliary Request 1; no specific individual claim numbers identified as revoked or maintained in excerpt.
Decisions
- 2025-02-28Patent amendedRevocation meritsRevocation Action
Decision on the revocation action by NJOY Netherlands B.V. against Juul Labs International Inc. concerning EP 3 504 989 (vaping/e-cigarette device). The court maintained the patent in amended form (Auxiliary Request 1, filed 22 July 2024) with effect for Belgium, France, Germany, Italy, Netherlands, Portugal and Sweden. The patent as granted was found invalid. Each party bears its own costs since both parties partially succeeded.
Legal issues:Revocation actionClaim interpretationClarityAdded matterAdmission of auxiliary claimsPatent maintained in amended form (Art. 138(3) EPC)
Documents
| Document title | Date | Public |
|---|---|---|
| action.phaseChange.caseClose | 2025-11-24 | Not public |
| Receipt | 2025-03-28 | Not public |
| Application for a cost decision | 2025-03-28 | Not public |
| Exhibit MWE 51 | 2025-03-28 | Not public |
| decision | 2025-02-28 | Public |
| Hearing-Dates | 2024-11-12 | Not public |
| Outcome of the Order | 2024-09-04 | Not public |
| order closing workflows | 2024-09-04 | Public |
| Outcome of the Order | 2024-09-04 | Not public |
| order closing workflow | 2024-09-04 | Public |
| order | 2024-09-03 | Public |
| Receipt | 2024-09-02 | Not public |
| Receipt | 2024-09-02 | Not public |
| UPC_CFI_312_2023 - ACT_571761_2023 - EP 989 - 20 pages summary - final_signed | 2024-08-30 | Not public |
| Summary of Claimant's pleading | 2024-08-30 | Not public |
| order on value | 2024-08-23 | Public |
| JUU-19903-KPN-UPC EP 989 Selected Auxiliary Requests | 2024-07-22 | Not public |
| JUU-19903-KPN-UPC DRAFT Application to reduce the number of auxiliary requests - EP989 - signed | 2024-07-22 | Not public |
| UPC_CFI_312_2023_Comments on litigation value - EP989_TP_signed | 2024-07-22 | Not public |
| Comments on litigation value | 2024-07-20 | Not public |
| Comments on litigation value | 2024-07-20 | Not public |
| Outcome of the Order | 2024-07-16 | Not public |
| order closing workflow after Druskexemplar | 2024-07-16 | Public |
| order after IC | 2024-07-09 | Not public |
| writtenProcedureClosure | 2024-07-09 | Not public |
| order after interim conference | 2024-07-05 | Not public |
| Outcome of the Order | 2024-07-04 | Not public |
| closing workflow | 2024-07-04 | Public |
| Outcome of the Order | 2024-07-04 | Not public |
| closing workflow | 2024-07-04 | Public |
| Receipt | 2024-07-02 | Not public |
| Filing Druckexemplar | 2024-07-02 | Not public |
| Exhibit MWE 50 Druckexemplar | 2024-07-02 | Not public |
| Outcome of the Order | 2024-06-28 | Not public |
| closing workflow | 2024-06-28 | Public |
| Receipt | 2024-05-31 | Not public |
| EP 989 - Response to further submission of NJOY and Summary of topics for Interim Conference_31 May 2024 TP_signed | 2024-05-31 | Not public |
| Receipt | 2024-05-31 | Not public |
| Summary of suggested topics for the Interim Conference | 2024-05-31 | Not public |
| order | 2024-05-24 | Public |
| Hearing-Dates | 2024-05-07 | Not public |
| order dates | 2024-05-07 | Public |
| Receipt | 2024-04-22 | Not public |
| Exhibit MWE 44 | 2024-04-22 | Not public |
| Exhibit MWE 47 | 2024-04-22 | Not public |
| Exhibit MWE 49 | 2024-04-22 | Not public |
| Exhibit MWE 48 | 2024-04-22 | Not public |
| Exhibit MWE 31a | 2024-04-22 | Not public |
| Reply to the Rejoinder and Reply to Defendant's Application to amend the Patent | 2024-04-22 | Not public |
| Exhibit MWE 46 | 2024-04-22 | Not public |
| Exhibit MWE 32a | 2024-04-22 | Not public |
| Exhibit MWE 34a | 2024-04-22 | Not public |
| Exhibit MWE 45 | 2024-04-22 | Not public |
| TuP - Reply to Preliminary Order Rule 28 RoP - 25 March 2024 - confirmation of hearing dates for Juul cases_signed | 2024-03-25 | Not public |
| Reply to Order 28 RoP re date setting | 2024-03-22 | Not public |
| Acknowledgement-of-lodging | 2024-03-21 | Not public |
| UPC_CFI_312_2023 - ACT_571761_2023 - EP 989 - Rejoinder_TuP_signed | 2024-03-21 | Not public |
| Exhibit TP-14 - CV Ramon Alarcon | 2024-03-21 | Not public |
| Exhibit TP-13 - Declaration of Ramon Alarcon - Counter opinion to Hajalogol declaration | 2024-03-21 | Not public |
| order dates setting | 2024-03-18 | Not public |
| Template-Order | 2024-03-18 | Not public |
| Acknowledgement-of-lodging | 2024-02-21 | Not public |
| Exhibit MWE 39 | 2024-02-21 | Not public |
| Exhibit MWE 29 | 2024-02-21 | Not public |
| Reply to Statement of Defence | 2024-02-21 | Not public |
| Exhibit MWE 42 | 2024-02-21 | Not public |
| Exhibit MWE 24 | 2024-02-21 | Not public |
| Exhibit MWE 30 | 2024-02-21 | Not public |
| Exhibit MWE 38 | 2024-02-21 | Not public |
| Exhibit MWE 26 | 2024-02-21 | Not public |
| Exhibit MWE 22 | 2024-02-21 | Not public |
| Exhibit MWE 31 | 2024-02-21 | Not public |
| Exhibit MWE 27 | 2024-02-21 | Not public |
| Exhibit MWE 25 | 2024-02-21 | Not public |
| Exhibit MWE 28 | 2024-02-21 | Not public |
| Exhibit MWE 35 | 2024-02-21 | Not public |
| Exhibit MWE 43 | 2024-02-21 | Not public |
| Exhibit MWE 40 | 2024-02-21 | Not public |
| Exhibit MWE 20 | 2024-02-21 | Not public |
| Exhibit MWE 32 | 2024-02-21 | Not public |
| Exhibit MWE 26 | 2024-02-21 | Not public |
| Exhibit MWE 21 | 2024-02-21 | Not public |
| Exhibit MWE 37 | 2024-02-21 | Not public |
| Exhibit MWE 36 | 2024-02-21 | Not public |
| Exhibit MWE 33 | 2024-02-21 | Not public |
| Exhibit MWE 23 | 2024-02-21 | Not public |
| Exhibit MWE 41 | 2024-02-21 | Not public |
| Exhibit MWE 34 | 2024-02-21 | Not public |
| exhibit 3 - MLD - ACT 459987_2023 - Conflicting Hearing-Dates - second request by MLD | 2024-02-12 | Not public |
| exhibit 2 - MLD - ACT 459987_2023 - Conflicting Hearing Dates - first summons by MLD | 2024-02-12 | Not public |
| exhibit 1 - MLD - ACT 459987_2023 - Conflicting Hearing Dates - first request by MLD | 2024-02-12 | Not public |
| Reply to Preliminary Order Rule 28 RoP - 12 Feb 2024 | 2024-02-12 | Not public |
| Reply to Order 28 RoP re date setting | 2024-02-09 | Not public |
| preliminary order | 2024-01-26 | Not public |
| preliminary order | 2024-01-26 | Not public |
| Hearing-Dates | 2024-01-26 | Not public |
| Outcome of the Order | 2024-01-22 | Not public |
| order | 2024-01-22 | Not public |
| Receipt | 2024-01-08 | Not public |
| Application re confirmation of deadline for Claimant's Reply | 2024-01-03 | Not public |
| Acknowledgement-of-lodging | 2023-12-21 | Not public |
| Formal-checks_Notification-of-positive-outcome | 2023-12-21 | Not public |
| Corrected Exhibit TP-6 - John Collins CV | 2023-12-20 | Not public |
| Corrected Exhibit TP-7 - EP989 Feature Analysis | 2023-12-20 | Not public |
| Exhibit TP-9 - Merriam Webster Compartment | 2023-12-20 | Not public |
| Corrected Exhibit TP-10 - Parent application 18000692.6 | 2023-12-20 | Not public |
| Corrected Exhibit TP-9 - Merriam Webster Compartment | 2023-12-20 | Not public |
| Corrected Exhibit TP-11 - WO2015100361A1 (grandparent application) | 2023-12-20 | Not public |
| UPC_CFI_312_2023 - ACT_571761_2023 - EP989 - Statement of Defence_TuP_signed | 2023-12-20 | Not public |
| Exhibit TP-4 - Claims as maintained in opposition proceedings based on Auxiliary Request 20 | 2023-12-20 | Not public |
| Exhibit TP-10 - Parent application 18000692.6 | 2023-12-20 | Not public |
| Corrected Exhibit TP-5 - John Collins Expert Report | 2023-12-20 | Not public |
| Corrected Exhibit TP-8 - Oxford Advanced Learners Dictionary on the term receptacle | 2023-12-20 | Not public |
| Exhibit TP-11 - WO2015100361A1 (grandparent application) | 2023-12-20 | Not public |
| Exhibit TP-6 - John Collins CV | 2023-12-20 | Not public |
| Exhibit TP-12 - Claim sets for Auxiliary Requests | 2023-12-20 | Not public |
| UPC_CFI_312_2023 - ACT_571761_2023 - EP989 - Formal response to request for amendments_signed | 2023-12-20 | Not public |
| Corrected Exhibit TP-12 - Claim sets for Auxiliary Requests | 2023-12-20 | Not public |
| Corrected Exhibit TP-4 - Claims as maintained in opposition proceedings based on Auxiliary Request 20 | 2023-12-20 | Not public |
| Exhibit TP-8 - Oxford Advanced Learners Dictionary on the term receptacle | 2023-12-20 | Not public |
| Exhibit TP-5 - John Collins Expert Report | 2023-12-20 | Not public |
| Exhibit TP-7 - EP989 Feature Analysis | 2023-12-20 | Not public |
| UPC_CFI_312_2023 - ACT_571761_2023 - EP989 - Corrected Statement of Defence of 4 December 2023_signed | 2023-12-20 | Not public |
| Formal-checks_Request-for-correction | 2023-12-08 | Not public |
| Acknowledgement-of-lodging | 2023-12-04 | Not public |
| UPC_CFI_312_2023 - ACT_571761_2023 - EP989 - Statement of Defence_TuP_signed | 2023-12-04 | Not public |
| Exhibit TP-5 - John Collins Expert Report | 2023-12-04 | Not public |
| Exhibit TP-8 - Oxford Advanced Learners Dictionary on the term receptacle | 2023-12-04 | Not public |
| Exhibit TP-11 - WO2015100361A1 (grandparent application) | 2023-12-04 | Not public |
| Exhibit TP-6 - John Collins CV | 2023-12-04 | Not public |
| Exhibit TP-4 - Claims as maintained in opposition proceedings based on Auxiliary Request 20 | 2023-12-04 | Not public |
| Exhibit TP-7 - EP989 Feature Analysis | 2023-12-04 | Not public |
| Exhibit TP-9 - Merriam Webster Compartment | 2023-12-04 | Not public |
| Exhibit TP-10 - Parent application 18000692.6 | 2023-12-04 | Not public |
| Exhibit TP-12 - Claim sets for Auxiliary Requests | 2023-12-04 | Not public |
| re-upload order case 581181 (ORD_583813_2023) | 2023-11-24 | Not public |
| Outcome of the Order | 2023-11-06 | Not public |
| final order 581438/2023 | 2023-11-06 | Not public |
| Outcome of the Order | 2023-11-06 | Not public |
| final order 581438/2023 | 2023-11-06 | Not public |
| Outcome of the Order | 2023-11-06 | Not public |
| final order 581438/2023 | 2023-11-06 | Not public |
| Outcome of the Order | 2023-11-06 | Not public |
| final order 581438/2023 | 2023-11-06 | Not public |
| final order 581438/2023 | 2023-11-06 | Not public |
| Receipt | 2023-11-03 | Not public |
| Preliminary_Objection_DecisionOutcome | 2023-11-03 | Not public |
| final order PO 312 2023 | 2023-11-03 | Not public |
| Application re Defendant's request for extension of deadline | 2023-11-03 | Not public |
| Receipt | 2023-11-02 | Not public |
| Submission reactive to Claimant's comments on request for time extension | 2023-11-02 | Not public |
| Outcome of the Order | 2023-10-27 | Not public |
| order case 581181-2023 | 2023-10-27 | Not public |
| commentPreliminaryObjection | 2023-10-26 | Not public |
| Comment on Preliminary objection under Rule 19 ROP | 2023-10-26 | Not public |
| preliminaryObjection | 2023-10-26 | Not public |
| Preliminary Objection according to R. 19 RoP | 2023-10-26 | Public |
| Exhibit TP-1 to Preliminary Objection | 2023-10-26 | Not public |
| Receipt | 2023-10-24 | Not public |
| Application re Defendant's request for extension of deadline | 2023-10-23 | Not public |
| Receipt | 2023-10-20 | Not public |
| Receipt | 2023-10-20 | Not public |
| Application for time extension | 2023-10-19 | Not public |
| Application for file inspection | 2023-10-18 | Not public |
| Acknowledgement of access to case | 2023-09-26 | Not public |
| Notification Of Service | 2023-09-26 | Not public |
| Panel-Appointment | 2023-09-22 | Not public |
| epoUploadDocumentsWorkflow | 2023-09-19 | Not public |
| Document from EPO | 2023-09-18 | Not public |
| EPO-Request-for-case-pending | 2023-09-15 | Not public |
| Acknowledgement-of-lodging | 2023-09-15 | Not public |
| Formal-checks_Notification-of-positive-outcome | 2023-09-15 | Not public |
| Exhibit MWE 8 | 2023-09-15 | Not public |
| Exhibit MWE 2a | 2023-09-15 | Not public |
| Exhibit MWE 15 | 2023-09-15 | Not public |
| Exhibit MWE 13 Thompson | 2023-09-15 | Not public |
| Exhibit MWE 10 Chen | 2023-09-15 | Not public |
| Exhibit MWE 5 | 2023-09-15 | Not public |
| Exhibit MWE 16 | 2023-09-15 | Not public |
| Exhibit MWE 2 | 2023-09-15 | Not public |
| Exhibit MWE 10 Chen | 2023-09-15 | Not public |
| Exhibit MWE 3 | 2023-09-15 | Not public |
| Exhibit MWE 14 | 2023-09-15 | Not public |
| Revocation action EP 3 504 989 | 2023-09-15 | Not public |
| Exhibit MWE 19 | 2023-09-15 | Not public |
| Exhibit MWE 9 | 2023-09-15 | Not public |
| Exhibit MWE 4 | 2023-09-15 | Not public |
| Exhibit MWE 11 Cohen | 2023-09-15 | Not public |
| Exhibit MWE 1 | 2023-09-15 | Not public |
| Exhibit MWE 12 Cross | 2023-09-15 | Not public |
| Corrected Statement of claim for revocation of EP 3 504 989 | 2023-09-15 | Not public |
| Exhibit MWE 6 | 2023-09-15 | Not public |
| Corrected Statement of claim for revocation against EP 3 504 991 | 2023-09-15 | Not public |
| Exhibit MWE 18 | 2023-09-15 | Not public |
| Exhibit MWE 7 | 2023-09-15 | Not public |
| Exhibit MWE 17 | 2023-09-15 | Not public |
| Formal-checks_Request-for-correction | 2023-09-14 | Not public |
| Exhibit MWE 10 Chen | 2023-09-14 | Not public |
| Exhibit MWE 14 | 2023-09-14 | Not public |
| Exhibit MWE 18 | 2023-09-14 | Not public |
| Corrected Statement of claim for revocation against EP 3 504 991 | 2023-09-14 | Not public |
| Exhibit MWE 4 | 2023-09-14 | Not public |
| Exhibit MWE 10 Chen | 2023-09-14 | Not public |
| Exhibit MWE 9 | 2023-09-14 | Not public |
| Exhibit MWE 12 Cross | 2023-09-14 | Not public |
| Exhibit MWE 7 | 2023-09-14 | Not public |
| Exhibit MWE 5 | 2023-09-14 | Not public |
| Exhibit MWE 13 Thompson | 2023-09-14 | Not public |
| Exhibit MWE 2a | 2023-09-14 | Not public |
| Exhibit MWE 3 | 2023-09-14 | Not public |
| Exhibit MWE 17 | 2023-09-14 | Not public |
| Exhibit MWE 6 | 2023-09-14 | Not public |
| Exhibit MWE 15 | 2023-09-14 | Not public |
| Exhibit MWE 16 | 2023-09-14 | Not public |
| Exhibit MWE 8 | 2023-09-14 | Not public |
| Exhibit MWE 1 | 2023-09-14 | Not public |
| Exhibit MWE 2 | 2023-09-14 | Not public |
| Exhibit MWE 19 | 2023-09-14 | Not public |
| Revocation action EP 3 504 989 | 2023-09-14 | Not public |
| Exhibit MWE 11 Cohen | 2023-09-14 | Not public |
| Formal-checks_Request-for-correction | 2023-09-12 | Not public |
| Exhibit MWE 2 | 2023-09-11 | Not public |
| Exhibit MWE 18 | 2023-09-11 | Not public |
| Exhibit MWE 5 | 2023-09-11 | Not public |
| Exhibit MWE 16 | 2023-09-11 | Not public |
| Exhibit MWE 3 | 2023-09-11 | Not public |
| Exhibit MWE 2a | 2023-09-11 | Not public |
| Exhibit MWE 12 Cross | 2023-09-11 | Not public |
| Exhibit MWE 15 | 2023-09-11 | Not public |
| Exhibit MWE 6 | 2023-09-11 | Not public |
| Exhibit MWE 9 | 2023-09-11 | Not public |
| Exhibit MWE 4 | 2023-09-11 | Not public |
| Revocation action EP 3 504 989 | 2023-09-11 | Not public |
| Exhibit MWE 11 Cohen | 2023-09-11 | Not public |
| Exhibit MWE 10 Chen | 2023-09-11 | Not public |
| Exhibit MWE 19 | 2023-09-11 | Not public |
| Exhibit MWE 17 | 2023-09-11 | Not public |
| Exhibit MWE 1 | 2023-09-11 | Not public |
| Exhibit MWE 14 | 2023-09-11 | Not public |
| Exhibit MWE 7 | 2023-09-11 | Not public |
| Exhibit MWE 8 | 2023-09-11 | Not public |
| Exhibit MWE 13 Thompson | 2023-09-11 | Not public |
| Exhibit MWE 10 Chen | 2023-09-11 | Not public |
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary
NJOY Netherlands challenged Juul Labs' EP 3 504 989 (vaporization device systems) before the Paris Central Division. The court found the patent as granted invalid but maintained it in amended form based on Auxiliary Request 1 filed during the proceedings. Both parties succeeded in part, so each bore their own costs. Several late-filed submissions and auxiliary requests from both parties were excluded from the proceedings.
Accepted arguments
What the court agreed with — by party.
EP 3 504 989 as granted is invalid (grounds not fully visible in excerpt but patent was found invalid as granted)
ClaimantLegal basis: Art. 138 EPCNote: NJOY succeeded in having the granted patent found invalid.
Patent valid as amended by Auxiliary Request 1 (filed 22 July 2024)
RespondentLegal basis: Art. 65 UPCA; Art. 138 EPCNote: The amended claims survived the invalidity attack; patent maintained for Belgium, France, Germany, Italy, Netherlands, Portugal and Sweden.
Rejected arguments
What the court did not agree with — and why.
Defendant's submission of 31 May 2024 (inadmissible late submission)
RespondentLegal basis: R. 9.2 RoPReason: Not admitted into proceedings.
Auxiliary Requests IIA, VIIA, VIIIA, IXA and XIIA filed on 13 November 2024
RespondentLegal basis: R. 50.2 RoPReason: Not admitted into proceedings (late filed).
Key legal principles
Doctrines and rules cited in the reasoning.
Claim interpretation and clarity are threshold issues in revocation proceedingsAdded matter under Art. 123(2) EPC assessed for both granted claims and proposed amendmentsLate auxiliary requests may be rejected as inadmissible; reasonable number of conditional amendments required (R.50(2) RoP)Where both parties partially succeed (patent invalid as granted but maintained as amended), each party bears its own costs (Art. 69(2) UPCA)
Browse other cases on this principle.
Claim construction notes
The decision's keywords highlight claim interpretation, clarity, and added matter as the central issues, consistent with typical e-cigarette device patent disputes in this series. The excerpt does not provide detailed claim construction reasoning beyond confirming that Auxiliary Request 1 overcame the invalidity grounds.