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Overview · Filed: Sep 12, 2023

UPC_CFI_316/2023

VAPORIZATION DEVICE SYSTEMS AND METHODS

RevocationMain Revocation ActionParis CDRevocationCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
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 The patent was revoked entirely with effect for eight Contracting Member States and Juul Labs was ordered to pay NJOY's costs.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 EPC

    Note: 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) EPC

    Reason: 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) RoP

    Reason: 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 RoP

    Reason: 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.