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Overview · Filed: Oct 23, 2024

UPC_CFI_613/2024

AIR-FLOW IN A NEBULIZER HEAD

RevocationMain Revocation ActionMilan CDRevocationCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Plain-English summary

Pari Pharma GmbH brought a revocation action at the Milan Central Division against Koninklijke Philips N.V.'s EP 3 397 329 (air-flow in a nebuliser head). The court found claim 1 as granted lacked novelty over D1 but upheld the patent in amended form pursuant to auxiliary request 2, rejecting all obviousness attacks including the D3+D7+D5 combination because D3 teaches away from omitting the inhalation valve. A subsequent rectification order corrected an error stating the patent had unitary effect.

Accepted arguments
What the court agreed with — by party.

  • Any entity operating in the technical field and potentially needing freedom to operate has standing to bring a revocation action

    ClaimantLegal basis: Art. 47(6) UPCA

    Note: Court confirmed Pari Pharma had standing as a company potentially needing freedom to operate in the nebuliser field.

  • Claim 1 as granted lacks novelty over D1

    Claimant

    Note: The court accepted that claim 1 as granted is anticipated by D1; this drove the need for the patent to be maintained in amended form.

  • Auxiliary request 2 claim 1 is inventive over all prior art combinations relied upon by claimant

    Respondent

    Note: Court found that D3 teaches away from omitting the inhalation valve and the skilled person would not combine D3 with D7 and D5 to arrive at the claimed invention.

  • Skilled person will not directly and unambiguously deduce dimensions from schematic figures

    Respondent

    Note: Court held as a headnote principle that schematic figures cannot serve as a source of dimensional disclosure.

Rejected arguments
What the court did not agree with — and why.

  • Combination of D3 with D7 and D5 renders auxiliary request 2 obvious

    Claimant

    Reason: D3 is directed to a device that accumulates aerosol during exhalation using an inhalation valve — an essential feature; there is no hint to remove the valve and D3 teaches away from omitting it, so the combination is not obvious.

  • Attack based on Pari eMotion plus D2 or D7 plus D5 against claim 1 as amended

    ClaimantLegal basis: UPC RoP front-loaded proceedings principle

    Reason: This attack was raised for the first time at oral hearing and is precluded by the front-loaded nature of UPC proceedings; claimant should have anticipated the narrower claim construction and presented this attack earlier.

Key legal principles
Doctrines and rules cited in the reasoning.
Any person needing freedom to operate in the patent's field has standing under Art. 47(6) UPCASkilled person will not derive dimensions from schematic figuresFront-loaded proceedings preclude new invalidity attacks first raised at oral hearingPrior art that teaches away from a modification renders an obviousness combination based on that modification untenableProblem-solution approach: objective technical problem must be identified before assessing whether the skilled person would arrive at the claimed solution

Browse other cases on this principle.

Prior art relied on
References cited and the role they played.
  • D1Novelty-destroying
  • D2Obviousness combination
  • D3Obviousness combination
  • D5Obviousness combination
  • D7Obviousness combination
  • Pari eMotion (prior art device)Obviousness combination
Claim construction notes

The court construed claim 1 as amended (auxiliary request 2) of EP 3 397 329 (nebuliser head airflow) more narrowly than the claimant anticipated, particularly regarding the 'backside opening' feature. The claimant expected the respondent would accept any opening behind the aperture surface as qualifying; the court found there was reason to anticipate the narrower construction, making the late-raised Pari eMotion attack precluded.