UPC CFI, CD Paris, 17 January 2025: 12 Auxiliary requests the upper limit of what is reasonable in this case

Patent revoked because of ‘added matter' (Article 65 UPCA)(Article 138(1)(c) EPC). 

It extends beyond the content of the European Patent Application as filed (MWE 3) and beyond the content of the parent application (MWE 4). Especially, MWE 3 and MWE 4 do not specify that the heater is attached to a first end of the fluid storage compartment (features 1.4 and 11.5) in the way as this term needs to be understood by way of claim interpretation and do not specify that the mouthpiece is attached to a second end of the fluid storage compartment (features 1.5 and 11.6) in the way as this term needs to be understood by way of claim interpretation. Any claim that refers to the heater being attached to a first end of the fluid storage department and the mouthpiece being attached to a second end of the fluid storage compartment while not defining, that the heater encloses the first end of the fluid storage compartment and the mouthpiece encloses the second end of the fluid storage compartment results in the skilled person being presented with information, which is not directly and unambiguously derivable from that application as filed (MWE 3) and which is not directly and unambiguously derivable from the parent application MWE 4. 

Person skilled in the art of vaping devices (Article 56 EPC) is a mechanical engineer with either a Bachelor’s degree or as Master’s degree in mechanical engineering and several years of experience in the technical field of electronic inhalable aerosol devices or electronic vaping devices, who may be assisted by an electrical engineer for those issues that relate to the electrical circuitry implemented in electronic inhalable aerosol devices or electronic vaping devices that he himself cannot handle 

Claim interpretation “the heater is attached to a first end of the FSC” and “the mouthpiece is attached to a second of the FSC” Article 69 EPC). 

Skilled person understands from the description and drawings that the term “to a first end of the FSC” in the term “attached to a first end of the FSC” defines the location where the heater is after having being attached rather than being a reference to an existing (part of an) object to which the heater is affixed. Similar to feature 1.4, using the description and the drawings as explanatory aids for the interpretation of the patent claim, the skilled person understands that the term “to a second end of the FSC” in the term “attached to a second end of the FSC” defines the location of the free end of the mouthpiece that is intended to be inserted into the user’s mouth to be at a second end of the FSC. Taking the description and the drawings as explanatory aids for the interpretation of the patent claim, in the features 1.4 and 1.5 both references to “end of the fluid storage compartment” (first end of the fluid storage compartment; second end of the fluid storage compartment) need to be interpreted and are interpreted in a similar way, in order to be in line with the description. The need to apply this interpretation to two individual features in the same way reinforces the interpretation for the respective one of the two features. 

Auxiliary requests.  

Late filed auxiliary request 2b (R. 30. 2 RoP). Although Defendant indeed acted swiftly in submitting the application within one week after the EP 115 decision becoming available, the substantive part of the EP 115 decision that triggered the filing of new auxiliary requests, i.e. the claim clarity argument, could not have come as a surprise to Defendant. In the current proceedings, the “clarity argument”, i.e. the argument that the term “the mouthpiece (31) encloses the second end of the cartridge (30, 30a) and the second end of the fluid storage compartment (32)” is unclear, has been raised by Claimant in the present proceedings in its Reply to Defence to Revocation and Defence to an Application to amend the Patent in mn 359, 390. 

Auxiliary request 2c allowed by discretion of the Court (R. 9.2 RoP) and will not disregard the auxiliary requests 1 to 12 filed by Defendant on 30 October 2024. The order of 25 June 2024 gave Defendant the option (“may identify”) to narrow down the set of auxiliary requests already on file. The Court considers Defendant’s motion to narrow down the auxiliary to the auxiliary requests I to XII as expedient for an efficient procedure and hence beneficial to Claimant, too. Without the motion to file the auxiliary requests I to XII, the originally filed auxiliary requests 1 to 57 would have remained on file to be dealt with in a manner that would yet have to be decided. 

Requests to review 65 auxiliary requests to be rejected as unreasonable in number in the circumstances of the case (R. 30.1 RoP, R. 50.2 RoP). In the particular case, the proposed twelve conditional amendments that form the twelve auxiliary requests of request are considered to be the upper limit of what can be considered reasonable. 

Auxiliary request 2d unallowable because it is unclear and not supported by any arguments from the defendants. Defendant did not file any particular claim-sets that would indicate to the Court, which combinations of claims Defendant would want the Court to examine under request (2) d. in which order. 

IPPT20250117, UPC CFI, CD Paris, NJOY Netherlands v Juul Labs