2024-07-29 - CD Paris - BITZER Electronics v. Carrier - UPC_CFI_263/2023
- Aktenzeichen:
- UPC_CFI_263/2023
- Datum:
- Spruchkörper:
- Court of First Instance - Paris (FR) Central Division - Seat
- Art:
- Proceeding Decision
- Parteien:
- BITZER Electronics A/S v. Carrier Corporation
Kernaussage: 1.
2024-07-29 - CD Paris - BITZER Electronics
v.
Carrier - UPC_CFI_263/2023
1. The request to amend the patent which concerns both claims challenged by the revocation action and claims not challenged by it is inadmissible (only) with regard to these latter claims.
2. In a situation in which the patent is not entirely attacked, the patent proprietor is entitled to propose amendments to the challenged claims also by inserting features, omitted in the original claims, mentioned in the non-attacked claims.
3. Grounds for revocation that could have been included in the initial statement to revocation are inadmissible if they do not relate to the content of the defence raised by the opposing party or to the application to amend the patent and, therefore, do not constitute a legitimate response to them.
notable
The Paris Central Division (Seat) dismissed BITZER's revocation action against Carrier's cold-chain monitoring patent EP 3 414 708 and maintained the patent in the form of Auxiliary Request II. Main-request claim 1 was held to lack novelty over WO 2016/140969 (MB2), but AR II — requiring a dedicated power source per environmental sensor — was novel over MB2 and MB4 and involved an inventive step over MB5/MB6 because the prior art gave no motivation to adjust the transmission sampling rate based on environmental or user-induced events. The Court issued three important procedural rulings: (i) an application to amend covering both attacked and non-attacked claims is admissible only as regards the attacked claims, but the proprietor may still import features from non-attacked dependent claims into the attacked claim; (ii) grounds for revocation that could have been raised in the Statement of Revocation are inadmissible when filed in the Reply if they do not genuinely respond to the defence or to the application to amend; and (iii) in the UPC's adversarial system, parties must substantiate their invalidity attacks — the judge will not supplement insufficient argument ex officio.
Stichwörter
amendments to patent; written procedure
Nichtigkeitsgründe
Art. 138 EPCNovelty
Partially invalid (this ground)Art. 54 EPC · Art. 138(1)(a) EPC
“Claim 1 as granted (main request) lacks novelty over MB2 [57-66]. AR II novel over MB2 (dedicated power source not disclosed for communication-enabled sensors) [73-74] and over MB4 (no disclosure of sampling-rate adjustment) [75-78]. Novelty attacks on MB5/MB6 and MB7/MB8 dismissed as late-filed or unsubstantiated.”
Inventive Step
Patent survived (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“AR II inventive over MB5 and MB6: neither discloses adjusting the sampling rate based on environmental altering or user-induced events; no motivation to combine [82-89]. Claimant's late-filed inventive-step attacks based on MB4/MB7 disregarded [90-91].”
Added Matter
Patent survived (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“Art. 123(2) EPC: contested feature 'a plurality of environmental sensors (22)...dedicated power source' is supported by claim 2, Fig. 1 and para. [0031] of application as originally filed [72]. 'At least one' encompasses 'a plurality' [43].”
Insufficiency of Disclosure
Patent survived (this ground)Art. 83 EPC · Art. 138(1)(b) EPC
“User-induced event (e.g. door opening) sufficiently disclosed; detection systems for door opening are part of skilled person's common general knowledge [44-50].”
Clarity
Patent survived (this ground)Art. 84 EPC · derivative
“'Plurality of sensors to monitor temperatures' given its natural meaning: multiple sensors each monitoring temperature; supported by description and figures [51-52].”