CASELAW-UPC – reviews of UPC decisions

EP 3 498 115 B1 relates to a vaporizing device, in other words, an e-cigarette.
EP 3 498 115 B1 has a parent application EP 3 430 921 as well as a grandparent application EP 3 086 671

Brief outline of the case

Procedure before the EPO

The patent was opposed at the EPO.
The patent was revoked by the OD. The proprietor had filed no less than 113 AR which were all dealt with by the OD and deemed not allowable, either under Art 76(1) EPC and/or Art 123(3) EPC.
Claim 1 as granted extended beyond the grandparent application, cf. Art 76(1) EPC.
The proprietor appealed the revocation and an appeal is pending at the EPO.

Procedure before the UPC

An action in revocation was filed before the Paris Section of the CD-CFI.
The Paris Section of the CD-CFI revoked the patent as granted for added matter.
The proprietor filed originally AR1-57, but later limited their number to 12.
AR 1-10 were not allowable for the same reason, added matter, as those of the granted patent, and AR 11-12 were not allowable for lack of clarity.

Interpretation of the claim by the CD-CFI

The CD-CFI interpreted claim 1 as already decided by the CoA in the Hanshow case.

The CD-CFI also defined the skilled person. The parties had a different view on the skilled person. It is only after having defined the skilled person that the CD-CFI interpreted the claim.

The CD-CFI added that claim interpretation to be performed by the Court is a question of law and can be performed at any stage.

The invalidity of the patent according to the CD-CFI

The patent is invalid as it contains added matter.

The way to determine added matter was by reference to an order of the LD The Hague, UPC_CFI_131/2024 ACT_14945/2024; 19.06.2024; page 12, mn 3.4).

An amendment is regarded as introducing subject-matter which extends beyond the content of the application as filed, and therefore unallowable, if the overall change in the content of the application, whether by way of addition, alteration or excision, results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art.

Any amendment can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, or the priority date, where appropriate, from the whole of the documents as filed.

For the CD-CFI, any claim

• that refers to the mouthpiece being affixed to a second end of the fluid storage compartment and for the mouthpiece to comprise a second condensation chamber;

• while not defining, that the mouthpiece encloses the second end of the fluid storage compartment
  infringes Art 123(2).

infringes Art 123(2).

Added matter was found in the patent as granted with respect to

• The application as such
• The parent application
• The grandparent application

The CD-CFI further held that granted claim 1 was not disclosed verbatim in all the applications.
The CD-CFI further considered that none of the dependent claims 2 to 7 of the granted patent could resolve the problem of added matter in claim 1 as granted.

Clarity of the claims seen by the CD-CFI

The CD-CFI specified that, when a claim amendment is requested, clarity is a fundamental condition for a claim to be considered allowable, in particular because of its function of defining the subject matter for which protection is sought. Furthermore, according to RoP 50.2 UPC, any request for amendment must explain the reasons why the amendments meet the requirements of Art 84 EPC.
Simply ensuring that an amendment introduces no ambiguity is not sufficient in this respect.

The amendment at stake tried to overcome the objection of added matter and defined that “the mouthpiece (31) encloses the second end of the cartridge (30, 30a) and the second end of the fluid storage compartment (32)”.

Procedural aspects raised by the CD-CFI

Partial revocation

The CD-CFI made clear that Art 65.3 UPCA relates to the patent as granted.

Independent of an application to amend the patent as may be filed by the patent proprietor, cf. RoP 50.2, the Court, according to Art 65.3 UPCA, limits the patent by a corresponding amendment of the claims and revokes it, only, in part.

In the present case, by the sequence of its requests (2) a., (2) b., (2) c., the proprietor indicated that it requests the CD-CFI to consider its application(s) to amend the patent prior to the evaluation, if the patent as granted shall be revoked in part and limited by a corresponding amendment of the claims.
This means that the claims of the granted patent must be examined individually to ascertain whether the grounds for invalidity affect the patent in its entirety or only in part.

The CD-CFI suggested the proprietor to limit the number of AR before the UPC

Filing AR at the UPC is called “Application for amending the patent” and is governed by RoP 30 UPC. Besides the amendments in the requests (2) a., (2) b., (2) c., the proprietor filed AR 1-57 in reply to the nullity action.

Whilst the claimant wanted all the AR to be dismissed “en bloc” as not meeting the criterion of being reasonable in number, the CD-CFI considered that, in the present case, 12 AR were a reasonable number.

The CD_CFI used the discretion given within RoP 9.2 UPC, as the order of 05.07.2024 gave the proprietor the option, “may identify”, until 20.07.2024 to narrow down the set of AR already on file, but did not rule that it must narrow down the set of AR.
However, the CD-CFI noted that, without the motion to file AR 1 to 12, the originally filed AR 1 to 57 would have remained on file to be dealt with in a manner that would yet have to be decided at the hearing.

Comments

In the comments, analogies or differences with procedures before the EPO will be mentioned.

Definition of the skilled person

It is relatively rare to see in a decision of a TBA a precise definition of the skilled person and of its knowledge. In some cases, it has been defined as a group of persons or the combined knowledge of skilled persons in their respective field of experience.
In the present case, the CD-CFI Paris spent quite a lot of time to define the skilled parson.

Definition of added matter

The definition is quite similar to that used at the EPO in that it relies to what can be derived directly and unambiguously, using common general knowledge, but felt it necessary to add that it comprises implicit features.

The EPO found that claim 1 as granted was infringing Art 76(1) EPC over the grand parent, whereas the CD-CFI found that Art 123(2) EPC also applied to the patent as such.

It will have to be seen if the CoA UPC upholds the definition of added matter of the CD-CFI.

All claims of the patent as granted have to be examined

The CD-CFI held that each attacked claim of the granted patent, including each dependent claim has to be examined and its allowability ascertained. This corresponds to the position adopted by the German Federal Court (BGH).

This is a position which is fundamentally different of that of the EPO. At the EPO, one not allowable claim in a set of claims, be it independent or dependent, renders the whole set not allowable.

In case of added matter in an independent claim, it is rare that a dependent claim may save the patent.

This could however be the case if the independent claim contains an intermediate generalisation and a dependent claim reestablishes the full features. This is probably the only case in which the proprietor does not sit in an inescapable trap, cf. G 1/93.

Auxiliary requests

On the one hand, the CD-CFI acknowledges party disposition, cf. Art 76(1) UPCA, but on the other hand, suggested in an order under RoP 9.1 to limit the number of AR. Although the CD-CFI said that AR 1-57 could have been maintained, it might be difficult for a proprietor not to follow a suggestion in an order under RoP 9.1 UPC.

Nowhere in the EPC there is a limitation to the number of AR filed before a first instance division. The RPBA only allow not to admit requests which can be considered as amendments, cf. Art (12+4) RPBA, and/or not properly substantiated, cf. Art 12(3+5) RPBA when entering appeal or filed even later, cf. Art 13(1+2) RPBA.

Clarity

It does not come as a surprise that the CD-CFI has decided that clarity is a fundamental condition to be fulfilled by the claims of any AR.

The decision of the CD-CFI is somehow difficult to understand in that, in AR 11a nd 12, the proprietor added the missing features which led to the infringement of Art 123(2) EPC.

Further issues

One interesting question remains: will, in general, the UPC follow G decisions of the EBA or not?

In view of the presently different way of interpretation at the EPO and at the UPC, diverging decisions might occur. In this respect, G 1/24 will be an important decision.

Action n°: UPC CFI 309 /2023
Revocation action 571669/2023