2025-01-17 - CD Paris - NJOY v. Juul Labs - UPC_CFI_316/2023
- Aktenzeichen:
- UPC_CFI_316/2023
- Datum:
- Spruchkörper:
- Court of First Instance - Paris (FR) Central Division - Seat
- Art:
- Proceeding Decision
- Parteien:
- NJOY Netherlands B.V. v. Juul Labs, Inc.
Kernaussage: The Paris Central Division revoked Juul's vaporization-device patent EP 3 430 921 in its entirety for added matter.
2025-01-17 - CD Paris - NJOY
v.
Juul Labs - UPC_CFI_316/2023
notable
The Paris Central Division revoked Juul's vaporization-device patent EP 3 430 921 in its entirety for added matter. Features 1.4/11.5 ('the heater is attached to a first end of the fluid storage compartment') and 1.5/11.6 ('the mouthpiece is attached to a second end of the fluid storage compartment') were held not to be directly and unambiguously derivable from either the divisional application or the parent application, whose disclosures consistently speak of attachment to or enclosure of ends of the cartridge, and whose figures show the heater and mouthpiece enclosing — not being attached to — ends of the fluid storage compartment. All twelve admitted auxiliary requests were rejected: half preserved the offending language without remedy, the other half introduced a redundant double-condition ('encloses the second end of the cartridge and the second end of the fluid storage compartment') that the Court held unclear under Art. 84 EPC. A subsequent application filed one week before the oral hearing seeking to add five further auxiliary requests was refused as an unjustified late filing under the front-loaded system. The decision also expressly declares that twelve conditional auxiliary requests is the upper limit of what is 'reasonable in number' under R. 50.2 in conjunction with R. 30.1(c) RoP.
Nichtigkeitsgründe
Art. 138 EPCAdded Matter
Patent invalid (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“Features 1.4/11.5 and 1.5/11.6 held to extend beyond both the divisional application as filed (MWE 3) and the parent application (MWE 4, WO 2015/100361) [9.1-9.35]. Parent claims 149 and 158, and description paragraphs [0042]/[0046]/[0048]/[00179], are ambiguous as to whether 'first/second end' refers to the cartridge or the fluid storage compartment; Fig. 9 shows enclosure, not attachment to an end of the fluid storage compartment.”
Clarity
Patent invalid (this ground)Art. 84 EPC · derivative
“Auxiliary requests II, VII, VIII, IX, XII rejected under Art. 84 EPC [10.9, 10.12-10.18]. The double condition 'the heater/mouthpiece encloses the first/second end of the cartridge AND the first/second end of the fluid storage compartment' was held unclear; mere verbatim repetition of the phrase from the description does not cure the ambiguity.”