UPC CFI, CD Paris, 29 November 2024: No lack of inventive step - assessment based on different starting points

Revocation EP 740 dismissed (Article 65 UPCA). No alleged lack of inventive step. 

The validity of the independent claim 1 justifies validity of the dependent claims 2 – 6. 

Admissible late filed documents in the Reply to defence to revocation (R. 44 RoP). It must be concluded that the documents introduced by the Claimant in the Reply to defence to revocation – […] – are admissible, given that it contains arguments regarding the common general knowledge and the claim construction which are intended to contrast and react to the arguments raised by the Defendant in its Defence to revocation and […] opinion, filed in support of these latter arguments. 

Reply to Rejoinder to the Reply to the Defence to revocation inadmissible (R. 51 RoP, R. 52 RoP). 

Person skilled in the art  (Article 56 EPC) of electronic inhalable aerosol devices. The skilled person stands for the average expert who is typically active in the technical field of the invention, has had the usual prior training and has acquired average knowledge, skills and practical experience for routine work, but does not have inventive imagination, thinking and skills. When interpreting a patent claim, the person skilled in the art does not apply a philological understanding but determines the technical meaning of the terms used with the aid of the description and the drawings. 

Common general knowledge (‘CKG’) is not all publicly available knowledge (Article 56 EPC, Article 54 UPCA). Neither an individual product nor a patent application as such are a familiar source of information. In general common general knowledge is information which has been commonly known to the skilled person from written sources or from practical experience in the relevant technical field. The ‘CGK’ includes knowledge which is directly available from familiar sources of information relating to the specific technical field at the prior date but is not to be confused with publicly available knowledge, which may not be general and common. 

No lack of inventive step (Article 56 EPC). An assessment based on different starting points will be more complete and objective than problem-solution approach, which is only one possible way for assessment of the inventive step. There is no legal rule that requires its application or restricts the application of other approaches. This panel considers that an assessment based on different starting points as suggested by the Claimant will be more complete and objective. 

Starting from ‘Cross’ the skilled person has to redesign the whole structure of the device and search for solution how to secure the cartomizer above the battery segment which is not commonly and generally known. Turning to ‘Cross’ in combination with ‘CGK’ is a step taking in hindsight by the Claimant, therefore features 1.7, 1.7.1, 1.8, 1.8.1 and 1.8.2 are not obvious in view of ‘Cross’ combined with ‘CGK’. Skilled person will not combine Cross with DiFonzo. When faced with problems which relate to providing a secure connection between the cartomizer and the chamber, the skilled person, however, does, not look in the different technical field of accessories (power connectors) for laptops. 

Starting from Pan: given that the power supply in a vaporizer is very limited, a skilled person would not consider applying a solution that introduced further power requirements into the device (the power to drive the electromagnet) suitable for a vaporizer.

IPPT20241129, UPC CFI, CD Paris, NJOY Netherlands v VMR Products