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UPC CFI 316/2023
Sep 12, 2023·EP3430921 +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); Laura Woll (McDermott Will & Schulte); Diana Pisani (McDermott Will & Schulte); Lisa Nassi (McDermott Will & Schulte)RespondentsReps: Bernhard Thum (Thum & Partner); Andreas Mötsch (Thum & Partner); Jonas Weickert (Thum & Partner); Tobias Wuttke (Bardehle Pagenberg); Tilman Müller (Bardehle Pagenberg)
- Division
- Paris CD
- Technology
- Consumer Goods · E-Cigarettes · Electric Techniques
- Language
- English
Claims
At issueall
Revokedall
Notes: EP 3 430 921 B1 revoked entirely; all 12 auxiliary requests rejected; defendant's request to maintain patent based on dependent claims was unclear and unallowable.
Decisions
- 2025-01-17RevokedRevocation Action
The Paris Central Division (Seat, Panel 1) revoked European patent EP 3 430 921 B1 in its entirety, with effect for Belgium, France, Germany, Italy, Luxembourg, Netherlands, Portugal and Sweden. The claimant NJOY Netherlands B.V. succeeded in demonstrating that granted claim 1 lacked clarity/added matter, and the defendant Juul Labs International Inc.'s twelve auxiliary requests were all found unallowable. A thirteenth conditional auxiliary request (2d) was rejected as unreasonably numerous and unclear. Juul Labs was ordered to bear the costs of the proceedings.
Legal issues:Revocation actionClaim interpretation and clarityAdded matterAdmission of auxiliary requestsReasonableness in number of conditional amendments (R. 50.2 RoP)
Documents
| Document title | Date | Public |
|---|---|---|
| Outcome of the Order | 2025-01-21 | Not public |
| close app | 2025-01-21 | Public |
| Outcome of the Order | 2025-01-21 | Not public |
| close app | 2025-01-21 | Public |
| Outcome of the Order | 2025-01-21 | Not public |
| close app | 2025-01-21 | Public |
| Outcome of the Order | 2025-01-21 | Not public |
| close app | 2025-01-21 | Public |
| Headnote-and-Keywords | 2025-01-21 | Not public |
| DecisionOutcome | 2025-01-17 | Not public |
| decision 571808_23 | 2025-01-17 | Public |
| Decision 571808_2023 | 2025-01-15 | Not public |
| Hearing recording | 2025-01-15 | Not public |
| Hearing recording | 2025-01-15 | Not public |
| Receipt | 2024-11-13 | Not public |
| Exhibit TP-12 - EP921 - Claim sets for Auxiliary Requests IIA VIIA VIIIA IXA XIIA | 2024-11-13 | Not public |
| EP921 - Subsequent request to amend the patent pursuant to Rule 30 | 2024-11-13 | Not public |
| Receipt | 2024-11-12 | Not public |
| Receipt | 2024-11-12 | Not public |
| UPC_CFI_316_2023 - ACT_571808_2023 - EP 921 - 20 pages summary_TuP_8 Nov | 2024-11-08 | Not public |
| 20-page summary of Claimant's pleading | 2024-11-08 | Not public |
| Exhibit MWE 52 EPO Decision | 2024-11-08 | Not public |
| Receipt | 2024-10-31 | Not public |
| EP921 Auxiliary Requests I to XII - reduced for oral hearing - 30 Oct. 2024 | 2024-10-30 | Not public |
| EP921 Application to reduce the number of auxiliary requests - UPC_CFI_316_2023 - 30 Oct. 2024 - signed | 2024-10-30 | Not public |
| interimProcedureClosure | 2024-07-27 | Not public |
| summons | 2024-07-27 | Not public |
| summons | 2024-07-27 | Public |
| Hearing-Dates | 2024-07-27 | Not public |
| value litigation | 2024-07-25 | Public |
| Outcome of the Order | 2024-07-16 | Not public |
| order closing workflow after Druckexemplar | 2024-07-16 | Public |
| UPC_CFI_316_2023_Comments on litigation value - EP921_TP_signed | 2024-07-12 | Not public |
| Comments on litigation value | 2024-07-12 | Not public |
| Receipt | 2024-06-28 | Not public |
| MWE 51 Druckexemplar | 2024-06-28 | Not public |
| Submission of Druckexemplar (printing copy) | 2024-06-28 | Not public |
| order after interim conference | 2024-06-26 | Not public |
| Hearing Refence | 2024-06-26 | Not public |
| Hearing Refence | 2024-06-26 | Not public |
| Outcome of the Order | 2024-06-21 | Not public |
| receipt and close app | 2024-06-21 | Public |
| Template-Order | 2024-06-21 | Not public |
| Outcome of the Order | 2024-06-07 | Not public |
| receipt and close app | 2024-06-07 | Public |
| Outcome of the Order | 2024-06-07 | Not public |
| receipt and close app | 2024-06-07 | Public |
| Fix-Interim-Conference-Date | 2024-06-07 | Not public |
| interimConferenceDecision | 2024-06-04 | Not public |
| writtenProcedureClosure | 2024-06-04 | Not public |
| Receipt | 2024-06-03 | Not public |
| UPC_316_2023-ACT_571808_2023- EP921 - Response to further submission of NJOY and summary of topics for interim conferenc | 2024-05-31 | Not public |
| Receipt | 2024-05-31 | Not public |
| Summary of suggested topics for the Interim Conference | 2024-05-31 | Not public |
| closure of written proceedings | 2024-05-24 | Public |
| Hearing date confirmation | 2024-05-16 | Public |
| Receipt | 2024-04-23 | Not public |
| Exhibit MWE 32a | 2024-04-22 | Not public |
| Exhibit MWE 31a | 2024-04-22 | Not public |
| Exhibit MWE 49 | 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 45 | 2024-04-22 | Not public |
| Exhibit MWE 48 | 2024-04-22 | Not public |
| Exhibit MWE 47 | 2024-04-22 | Not public |
| Exhibit MWE 50 | 2024-04-22 | Not public |
| Exhibit MWE 44 | 2024-04-22 | Not public |
| Exhibit MWE 46 | 2024-04-22 | Not public |
| Acknowledgement-of-lodging | 2024-03-21 | Not public |
| Exhibit TP-10 - Declaration of Ramon Alarcon - Counter opinion to Hajalogol declaration | 2024-03-21 | Not public |
| UPC CFI 316_2023 - ACT 571808_2023 - EP 921 - Rejoinder_TuP_signed | 2024-03-21 | Not public |
| Exhibit TP-11 - CV Ramon Alarcon | 2024-03-21 | Not public |
| Hearing-Dates | 2024-03-18 | Not public |
| date setting | 2024-03-18 | Public |
| Acknowledgement-of-lodging | 2024-02-21 | Not public |
| Exhibit MWE 36 | 2024-02-21 | Not public |
| Exhibit MWE 25 | 2024-02-21 | Not public |
| Exhibit MWE 21 | 2024-02-21 | Not public |
| Exhibit MWE 41 | 2024-02-21 | Not public |
| Exhibit MWE 38 | 2024-02-21 | Not public |
| Exhibit MWE 39 | 2024-02-21 | Not public |
| Exhibit MWE 32 | 2024-02-21 | Not public |
| Exhibit MWE 26 | 2024-02-21 | Not public |
| Exhibit MWE 20 | 2024-02-21 | Not public |
| Exhibit MWE 30 | 2024-02-21 | Not public |
| Exhibit MWE 23 | 2024-02-21 | Not public |
| Exhibit MWE 27 | 2024-02-21 | Not public |
| Exhibit MWE 22 | 2024-02-21 | Not public |
| Exhibit MWE 34 | 2024-02-21 | Not public |
| Exhibit MWE 28 | 2024-02-21 | Not public |
| Exhibit MWE 37 | 2024-02-21 | Not public |
| Exhibit MWE 40 | 2024-02-21 | Not public |
| Exhibit MWE 29 | 2024-02-21 | Not public |
| Exhibit MWE 26 | 2024-02-21 | Not public |
| Exhibit MWE 31 | 2024-02-21 | Not public |
| Exhibit MWE 43 | 2024-02-21 | Not public |
| Exhibit MWE 33 | 2024-02-21 | Not public |
| Exhibit MWE 42 | 2024-02-21 | Not public |
| Exhibit MWE 35 | 2024-02-21 | Not public |
| Reply to Statement of Defence | 2024-02-21 | Not public |
| Exhibit MWE 24 | 2024-02-21 | 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 |
| 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 |
| Reply to Order 28 RoP re date setting | 2024-02-09 | Not public |
| Outcome of the Order | 2024-01-26 | Not public |
| rule 9 808 | 2024-01-26 | Not public |
| preliminary date setting | 2024-01-26 | Not public |
| Hearing-Dates | 2024-01-26 | 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 |
| Exhibit TP-4 - Expert opinion of Dr. John Collins | 2023-12-20 | Not public |
| UPC_CFI_316_2023 - ACT_571808_2023 - Corrected Statement of Defence of 4 December 2023_signed | 2023-12-20 | Not public |
| Exhibit TP-7 - European patent application 18000692.6 (parent application) | 2023-12-20 | Not public |
| Exhibit TP-6 - Merriam Webster Compartment | 2023-12-20 | Not public |
| UPC_CFI_316_2023 - ACT_571808_2023_Formal response to the request for amendments_signed | 2023-12-20 | Not public |
| Exhibit TP-8 - International publication WO 2015100361 A1 (grandparent application) | 2023-12-20 | Not public |
| UPC CFI 316_2023 - ACT 571808_2023 - Statement of Defence for EP3430921_TuP_signed | 2023-12-20 | Not public |
| Exhibit TP-5 - CV of Dr. John Collins | 2023-12-20 | Not public |
| Exhibit TP-9 - Claim sets for auxiliary requests | 2023-12-20 | Not public |
| Formal-checks_Request-for-correction | 2023-12-08 | Not public |
| Acknowledgement-of-lodging | 2023-12-05 | Not public |
| Exhibit TP-7 - European patent application 18000692.6 (parent application) | 2023-12-05 | Not public |
| Exhibit TP-8 - International publication WO 2015100361 A1 (grandparent application) | 2023-12-05 | Not public |
| Exhibit TP-5 - CV of Dr. John Collins | 2023-12-05 | Not public |
| UPC CFI 316_2023 - ACT 571808_2023 - Statement of Defence for EP3430921_TuP_signed | 2023-12-05 | Not public |
| Exhibit TP-9 - Claim sets for auxiliary requests | 2023-12-05 | Not public |
| Exhibit TP-4 - Expert opinion of Dr. John Collins | 2023-12-05 | Not public |
| Exhibit TP-6 - Merriam Webster Compartment | 2023-12-05 | Not public |
| order closing app (ORD_583832_2023) | 2023-11-28 | Not public |
| Outcome of the Order | 2023-11-13 | Not public |
| final order closing the app | 2023-11-13 | Not public |
| Outcome of the Order | 2023-11-13 | Not public |
| final order closing app | 2023-11-13 | Not public |
| Template-Order | 2023-11-13 | Not public |
| Outcome of the Order | 2023-11-13 | Not public |
| final order | 2023-11-13 | Not public |
| Outcome of the Order | 2023-11-05 | Not public |
| order time ext 921 | 2023-11-05 | Not public |
| Receipt | 2023-11-03 | Not public |
| Preliminary_Objection_DecisionOutcome | 2023-11-03 | Not public |
| Application re Defendant's request for extension of deadline | 2023-11-03 | Not public |
| Final Order PO 316 2023 | 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 581183-2023 | 2023-10-27 | Not public |
| commentPreliminaryObjection | 2023-10-27 | Not public |
| Comment on Preliminary objection under Rule 19 ROP | 2023-10-27 | Not public |
| preliminaryObjection | 2023-10-27 | Not public |
| Exhibit TP-1 to Preliminary Objection | 2023-10-26 | Not public |
| Preliminary Objection according to R. 19 RoP | 2023-10-26 | 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 | 2023-09-27 | Not public |
| Notification Of Service | 2023-09-27 | 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 | 2023-09-14 | Not public |
| Acknowledgement-of-lodging | 2023-09-14 | Not public |
| Formal-checks_Notification-of-positive-outcome | 2023-09-14 | Not public |
| Exhibit MWE 9a | 2023-09-13 | Not public |
| Exhibit MWE 10 Chen | 2023-09-13 | Not public |
| Exhibit MWE 2 | 2023-09-13 | Not public |
| Exhibit MWE 14 Thompson | 2023-09-13 | Not public |
| Exhibit MWE 19 Cross | 2023-09-13 | Not public |
| Exhibit MWE 4 | 2023-09-13 | Not public |
| Exhibit MWE 1 | 2023-09-13 | Not public |
| Exhibit MWE 7 | 2023-09-13 | Not public |
| Exhibit MWE 8 | 2023-09-13 | Not public |
| Exhibit MWE 6 | 2023-09-13 | Not public |
| Exhibit MWE 9d | 2023-09-13 | Not public |
| Exhibit MWE 9b | 2023-09-13 | Not public |
| Exhibit MWE 3 | 2023-09-13 | Not public |
| Exhibit MWE 13 Lee | 2023-09-13 | Not public |
| Exhibit MWE 13 Lee | 2023-09-13 | Not public |
| Exhibit MWE 11 Cohen | 2023-09-13 | Not public |
| Exhibit MWE 15 Abehasera | 2023-09-13 | Not public |
| Exhibit MWE 5 | 2023-09-13 | Not public |
| Exhibit MWE 9 | 2023-09-13 | Not public |
| Exhibit MWE 17 Darth Vapor | 2023-09-13 | Not public |
| Exhibit MWE 10 Chen | 2023-09-13 | Not public |
| Exhibit MWE 2a | 2023-09-13 | Not public |
| Exhibit MWE 16 Robinson | 2023-09-13 | Not public |
| Corrected Revocation action against EP 3 430 921 | 2023-09-13 | Not public |
| Revocation Action EP 3 430 921 | 2023-09-13 | Not public |
| Exhibit MWE 18 Pan | 2023-09-13 | Not public |
| Corrected Statement of claim for revocation of EP 3 430 921 | 2023-09-13 | Not public |
| Exhibit MWE 9c | 2023-09-13 | Not public |
| Exhibit MWE 12 Monsees | 2023-09-13 | Not public |
| Formal-checks_Request-for-correction | 2023-09-12 | Not public |
| Exhibit MWE 1 | 2023-09-12 | Not public |
| Exhibit MWE 9c | 2023-09-12 | Not public |
| Exhibit MWE 16 Robinson | 2023-09-12 | Not public |
| Exhibit MWE 17 Darth Vapor | 2023-09-12 | Not public |
| Exhibit MWE 18 Pan | 2023-09-12 | Not public |
| Exhibit MWE 4 | 2023-09-12 | Not public |
| Exhibit MWE 8 | 2023-09-12 | Not public |
| Exhibit MWE 12 Monsees | 2023-09-12 | Not public |
| Exhibit MWE 9d | 2023-09-12 | Not public |
| Exhibit MWE 19 Cross | 2023-09-12 | Not public |
| Exhibit MWE 6 | 2023-09-12 | Not public |
| Exhibit MWE 10 Chen | 2023-09-12 | Not public |
| Exhibit MWE 9a | 2023-09-12 | Not public |
| Exhibit MWE 5 | 2023-09-12 | Not public |
| Exhibit MWE 15 Abehasera | 2023-09-12 | Not public |
| Exhibit MWE 13 Lee | 2023-09-12 | Not public |
| Exhibit MWE 2 | 2023-09-12 | Not public |
| Exhibit MWE 11 Cohen | 2023-09-12 | Not public |
| Exhibit MWE 7 | 2023-09-12 | Not public |
| Exhibit MWE 3 | 2023-09-12 | Not public |
| Revocation Action EP 3 430 921 | 2023-09-12 | Not public |
| Exhibit MWE 13 Lee | 2023-09-12 | Not public |
| Exhibit MWE 14 Thompson | 2023-09-12 | Not public |
| Exhibit MWE 9b | 2023-09-12 | Not public |
| Exhibit MWE 9 | 2023-09-12 | Not public |
| Exhibit MWE 2a | 2023-09-12 | Not public |
| Exhibit MWE 10 Chen | 2023-09-12 | Not public |
| Corrected Statement of claim for revocation of EP 3 430 921 | 2023-09-12 | Not public |
| Formal-checks_Request-for-correction | 2023-09-12 | Not public |
| Exhibit MWE 13 Lee | 2023-09-11 | Not public |
| Exhibit MWE 18 Pan | 2023-09-11 | Not public |
| Exhibit MWE 6 | 2023-09-11 | Not public |
| Exhibit MWE 5 | 2023-09-11 | Not public |
| Exhibit MWE 9a | 2023-09-11 | Not public |
| Exhibit MWE 11 Cohen | 2023-09-11 | Not public |
| Revocation Action EP 3 430 921 | 2023-09-11 | Not public |
| Exhibit MWE 12 Monsees | 2023-09-11 | Not public |
| Exhibit MWE 16 Robinson | 2023-09-11 | Not public |
| Exhibit MWE 10 Chen | 2023-09-11 | Not public |
| Exhibit MWE 14 Thompson | 2023-09-11 | Not public |
| Exhibit MWE 10 Chen | 2023-09-11 | Not public |
| Exhibit MWE 15 Abehasera | 2023-09-11 | Not public |
| Exhibit MWE 2a | 2023-09-11 | Not public |
| Exhibit MWE 2 | 2023-09-11 | Not public |
| Exhibit MWE 9c | 2023-09-11 | Not public |
| Exhibit MWE 19 Cross | 2023-09-11 | Not public |
| Exhibit MWE 7 | 2023-09-11 | Not public |
| Exhibit MWE 13 Lee | 2023-09-11 | Not public |
| Exhibit MWE 17 Darth Vapor | 2023-09-11 | Not public |
| Exhibit MWE 9d | 2023-09-11 | Not public |
| Exhibit MWE 8 | 2023-09-11 | Not public |
| Exhibit MWE 4 | 2023-09-11 | Not public |
| Exhibit MWE 9b | 2023-09-11 | Not public |
| Exhibit MWE 1 | 2023-09-11 | Not public |
| Exhibit MWE 9 | 2023-09-11 | Not public |
| Exhibit MWE 3 | 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 3 430 921 (vaporization device) before the Paris Central Division, which found the patent fully invalid on grounds of clarity and/or added matter. All twelve formally admitted auxiliary requests failed to cure the defect, and a thirteenth conditional request was rejected as unclear and unreasonably numerous. The patent was revoked entirely with effect for eight Contracting Member States and Juul Labs was ordered to pay NJOY's costs.
Accepted arguments
What the court agreed with — by party.
EP 3 430 921 lacks clarity / added matter such that claim 1 as granted is unallowable
ClaimantLegal basis: Art. 84 EPC (clarity); Art. 123(2) EPC (added matter); Art. 138 EPCNote: The court found claim 1 invalid and all twelve auxiliary requests (I through XII) also unallowable, resulting in full revocation.
Rejected arguments
What the court did not agree with — and why.
Patent valid as granted: claim 1 meets clarity and added matter requirements
RespondentLegal basis: Art. 84 EPC; Art. 123(2) EPCReason: Claim 1 found to lack clarity or contain added matter; none of the twelve auxiliary requests cured the defect.
Thirteen auxiliary requests (including conditional request (2)d. for 'one or more dependent claims as granted in combination with claim 1 of auxiliary request 1')
RespondentLegal basis: R.50.2 RoP; R.30.1(c) RoPReason: Request (2)d. was unclear (undefined which combination to examine first), exceeded the reasonable number of conditional amendments under R.50.2 RoP, and was unsupported by any argument explaining why any combination would support validity.
Defendant's submission of 31 May 2024 (inadmissible late submission)
RespondentLegal basis: R.9.2 RoPReason: Not admitted into proceedings.
Key legal principles
Doctrines and rules cited in the reasoning.
Conditional amendments (auxiliary requests) must be reasonable in number and precisely formulated; vague references to 'any combination' of dependent claims do not constitute allowable requestsTwelve conditional auxiliary requests considered the upper limit of what is reasonable in a revocation actionRequests for partial maintenance must identify specific combinations and provide arguments why those combinations support validityAdded matter / clarity: claim 1 invalidity necessarily invalidates dependent claims 2-5 when they are not independently sustained
Browse other cases on this principle.
Claim construction notes
The decision keywords — revocation, claim interpretation, clarity, added matter — indicate that clarity and added matter under Art. 123(2) EPC were the operative grounds. The excerpt does not disclose which specific features of EP 3 430 921 were found to lack clarity or constitute added matter.