2025-12-29 - CoA - VMR Products v. NJOY - UPC_CoA_71/2025

If an Application to amend the patent is lodged, the claimant shall lodge a Defence to the Application to amend the patent (R. 43.3 RoP). Where appropriate in view of the proposed amendments, the Defence to the Application to amend the patent may contain submissions in accordance with R. 44(d) to (h) RoP and alternative non-infringement submissions (R. 32.2 RoP). - The Defence to the Application to amend the patent does not provide the claimant with an opportunity to introduce new grounds of invalidity in relation to the patent as granted, such as new prior art considered either novelty destroying or convincing starting points for the assessment of lack of inventive step, unless leave to amend the case is granted (R. 263 RoP). This means that a distinction must be made between the grounds, facts and evidence relied on in relation to the patent as granted and those relied on in relation to the proposed amendments. - Under the front-loaded procedural system of the UPC, the parties are required to set out their full case as early as possible (RoP, preamble at 7). Nevertheless, specific new arguments may be admitted into the proceedings in consideration of specific circumstances of the case (CoA 21 November 2024, UPC_CoA_456/2024, OrthoApnea). The provisions must also be interpreted in the light of the principle of proportionality (RoP, preamble at 3). R. 44 RoP requires an “indication” of the facts relied on which contradicts an overly strict application. - Furthermore, fairness (RoP, preamble at 5) in the application of the adversarial principle may require that the claimant in an action for revocation be allowed to introduce new facts and evidence in response to the Statement of defence. This may include evidence to prove a point already made by the claimant on the common general knowledge of the skilled person, or to rebut evidence brought forward by the defendant on this point.

The Court of Appeal upheld the Munich Central Division's revocation of a vaporizer patent and rejected the proprietor's appeal. Its headnotes concern what a defence to an application to amend the patent may contain. Such a defence is required where an application to amend is lodged and may carry submissions under R. 44(d) to (h) RoP and alternative non-infringement submissions, but it does not let the revocation claimant introduce new grounds of invalidity against the patent as granted — new prior art said to destroy novelty or to be a starting point for obviousness — without leave to amend its case, so a distinction must be drawn between what is relied on against the granted patent and what is relied on against the proposed amendments. The front-loaded system requires the parties to set out their full case as early as possible, yet specific new arguments may still be admitted on the circumstances, the rules must be read in the light of proportionality, and R. 44 RoP asks only for an indication of the facts relied on, which tells against an overly strict application. Fairness in the adversarial principle may also require a revocation claimant to be allowed new facts and evidence answering the defence, including evidence proving a point it had already made about the common general knowledge or rebutting the defendant's evidence on it. On the merits the Court construed the disputed features functionally, rejected the proprietor's attempt to formulate an objective problem resting on a synergy the specification does not support, and held claim 1 obvious over a prior electronic-cigarette document together with common general knowledge, the only feature that document did not disclose being a window making part of the chamber visible.