UPC CFI 315/2023
Sep 12, 2023·EP3504991 · VAPORIZATION DEVICE SYSTEMS AND METHODS
Action number: ACT 571801/2023
- Case details
- StatusCase Closed (Patent upheld as granted)ActionRevocationCategoryMain revocation action
- Parties
- Claimants
- NJOY Netherlands B.V.Operating co.
Representatives- Henrik Holzapfel-McDermott Will & Schulte
- Mathias Karlhuber-Cohausz & Florack
- Laura Woll-McDermott Will & Schulte
- Diana Pisani-McDermott Will & Schulte
- Lisa Nassi-McDermott Will & Schulte
Respondents- Juul Labs, Inc.Operating co.
Representatives- Bernhard Thum-Thum & Partner
- Tobias Wuttke-Bardehle Pagenberg
- Tilman Müller-Bardehle Pagenberg
- Andreas Mötsch-Thum & Partner
- Jonas Weickert-Thum & Partner
- Division
- Paris CD
- Technology
- Electrical engineeringElectrical machinery, apparatus, energy
- InstrumentsMedical technology
- Other fieldsOther consumer goods
- Language
- English
- First decided
- Nov 5, 2024
- EPO Opposition
- Nicoventures Trading LimitedAdmissible2021-10-27
- Smokeless.world GmbHAdmissible2021-10-27
| Patent revoked | Median days to first decision | |
|---|---|---|
| All UPC | 37% (34/91) | 124 |
| Paris CD | Locked | Locked |
| Judge François Thomas | Locked | Locked |
| Judge Maximilian Haedicke | Locked | Locked |
| Judge Max Tilmann | Locked | Locked |
At the UPC: Altria Group (45 cases)·Juul Labs Group (33 cases)
This dispute contains 17 other proceedings
UPC CFI 531/2026·UPC CFI 537/2026·UPC CFI 538/2026·UPC CoA 328/2025·UPC CFI 298/2025 and 12 more
5 other defendants litigating the same or a related patent
UPC CFI 330/2023·APL 588420/2023·APL 588422/2023·APL 588423/2023·APL 588426/2023
- 2024-11-05Revocation ActionPublic
Summary: Paris Central Division (Section 1) dismissed NJOY's revocation action against EP 3 504 991 B1 (Juul Labs - vaping device cartridge). The Court found the patent valid, holding that novelty and inventive step requirements were met. NJOY as the unsuccessful party was ordered to bear Juul Labs' costs.
Show the legal issues (4)
- Novelty and inventive step (Art. 54, 56 EPC)
- Objective approach to inventive step
- Late filing of facts and evidence (front-loading)
- Person skilled in the art
| Document title | Date | Public |
|---|---|---|
| Outcome of the Order | 2025-03-30 | Not public |
| close workflow | 2025-03-30 | Public |
| Receipt | 2024-12-18 | Not public |
| Exhibit MWE 58 | 2024-12-18 | Not public |
| Response to Defendant's submission of 13 December 2024 | 2024-12-18 | Not public |
| Headnote-and-Keywords | 2024-11-06 | Not public |
| order on patent | 2024-11-06 | Public |
| DecisionOutcome | 2024-11-05 | Not public |
| order on patent | 2024-11-05 | Public |
| Outcome of the Order | 2024-10-08 | Not public |
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.
Inventive step must be evaluated objectively; subjective knowledge of inventors or parties is irrelevant
RespondentLegal basis: Art. 56 EPCNote: 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) UPCANote: 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 EPCNote: 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. 5Note: 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.
EP 3 504 991 B1 lacks novelty over Cohen
ClaimantLegal basis: Art. 54 EPCReason: 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 EPCReason: Claim 1 involves an inventive step; dependent claims 2–11 also involve inventive step via dependency on claim 1 or 3.
Browse other cases on this principle.
- CohenNovelty-destroying
- Chen (CN 101843368 A)Background
- Thompson (US 2013/0192617 A1)Background
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.