NJOY v VMR Products (UPC_CFI_308/2023)
Decision date:
27 November 2024
Osborne Clarke summary
- NJOY filed a revocation action against VMR Products, requesting that VMR's patent relating to vaporizers or electronic cigarettes be revoked due to lack of inventive step. The Paris CD upheld NJOY's claim and found the patent invalid.
- In assessing inventive step, the Paris CD followed the problem-solution approach. In this case, the patent did not explicitly state which problem was solved by the claimed solution so this had to be construed. The court found that the underlying problem of the invention was to develop a vaporizer that had a shell with a battery segment and cartomizer segment defined by how they were inserted into the cartridge, which allows a portion of the cartomizer chamber of the shell to be visible from the outside.
- VMR sought to argue that the problem was to provide a vaporizer with an improved user experience. The court did not find this convincing as it was too unspecific, lacked refence to the technical aspects of the invention and did not have a link to what the invention actually achieved over the state of the art.
- Ultimately, the court held that the skilled person would arrive at the claimed subject matter on the basis of their knowledge and skills, even though there was no direct and unambiguous disclosure of the distinguishing feature in the prior art, as it would have been an obvious modification.
- During the course of the judgment, the Paris CD noted the "front-loaded" nature of UPC proceedings whereby a claimant is required to concretely set out its arguments and evidence in its first written pleadings. In revocation actions, the claimant is required to specify in detail the grounds of invalidity that allegedly affect the contested patent, as well as prior art documents relied on in relation to allegations of lack of novelty or inventive step. As such, a claimant cannot introduce new grounds of invalidity or new documents considered novelty destroying or as good starting points for the inventive step assessment subsequently. However, it may be possible for the claimant to allege new facts and evidence insofar as they are supportive of the main facts already alleged.
Issue
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