Context: Recently, one recurring theme in Unified Patent Court (UPC) litigation has been the admissibility of arguments raised for the first time at a late stage of proceeding. The Court of Appeal (CoA) allowed Meril to invoke a different statute on appeal when seeking a stay (November 24, 2024 ip fray article) and left it to the Court of First Instance (CFI) to decide whether an equivalence-based infringement argument could be raised by a patentee in reply to OrthoApnea and Vivisol’s statement of defense (item 1.2 of another November 24, 2024 ip fray article).
What’s new: It took less than a week for the Paris seat of the Central Division (CD) to apply the latter CoA decision to a revocation action before it (PDF). NJOY Netherlands achieved the complete revocation of a vaporizer patent belonging to VMR Products (EP3456214). It made a winning argument in reply to the patentee’s defense.
Direct impact: The patent had survived, in an amended form, an EPO opposition proceeding, but for now it is deemed revoked in any UPC member states in which it was registered. Even a last-ditch request to uphold the patent in part failed for lack of being sufficiently substantiated. But an appeal is pretty much a given.
Wider ramifications: While appellate clarification will be helpful, the decision is, at least for the time being, rather instructive. It explains the standard for new arguments to be raised at a late stage of proceeding in light of the intention that UPC proceedings be “frontloaded” and takes the position that a patentee’s statement on a technique widely in use at the time of the filing of an application can serve as an indication of something being part of common general knowledge. It also shows that an effort to salvage a patent in part requires more substantiation than some may have thought, and that an excessive number of proposed amendments can backfire.
Frontloaded proceedings: yes, but that does not mean excess baggage
The UPC’s emphasis of speedy proceedings is well-known. The frontloaded nature of its proceedings serves another purpose, though: to give defendants the chance to develop their arguments early on. That also applies, of course, to patent holders when they defend against revocation claims, such as in this case, where NJOY wanted to do away with a VMR vaporizer patent.
What the decision explains very well, in the headnotes as well as the body of the document, is that it would (in other words) be counterproductive if the UPC effectively required every claimant to present redundant and duplicative arguments early on. For that reason and others, it must therefore be possible to raise certain arguments at a later stage if the court is satisfied that this was the right time to do so. The question is not merely whether an argument could previously have been raised, but whether it could also have been reasonably expected at that earlier stage of proceeding or whether it was actually better, possibly even in the interest of the defendant, to do so only when it turned out to be relevant.
Para. 30 of the decision is partly redacted, but it appears that the argument(s) admitted by the court over the patentee’s objection involved, primarily or at least to a significant degree, the question of what constituted common general knowledge as of the priority date.
Common general knowledge can be indicated by patent application
Anyone who can challenge a patent based on specific prior art references will do so, but sometimes it is inevitable that a challenger must invoke the relatively vague concept of common general knowledge. NJOY did so as well, and pointed to what a patent application said. Para. 75 of the decision is interesting as it explains why in this particular case, a statement contained in a patent application was “seen as an indication” that something constituted part of common general knowledge:
In addition, the Court notes that ‘Lee’ indicates in para. [0005] that in existing electronic cigarettes designed to provide several tens or more smoking sessions from a single refill of a cartridge, their mouthpiece is typically made of a transparent or semi-transparent structure to facilitate checking of the level of liquid refillable solution stored inside the cartridge. While it is in general questionable that a particular published patent application or patent specification can be considered as an indication of the common general knowledge, however said para. [0005] describes what the author of the patent considered to be a widely spread approach at the time. Therefore, by the nature of this type of description, para. [0005] can be seen as an indication that providing a mouthpiece of an e-cigarette with a transparent or semi-transparent structure so as to facilitate checking of the level of liquid refillable solution stored inside the cartridge belonged to the common general knowledge at the time of filing of the application, namely in December 2010.
(emphasis added)
Substantiation required for request to uphold patent in part; unreasonable number of amendments can backfire
Besides defending the patent in its granted form, in numerous amended forms and on the basis of dependent claims, VMR also requested “in the alternative, that in case the grounds for revocation affect the patent only in part the patent is maintained to the extent of one or more of its dependent claims as granted in combination with claim 1 of the proposed amendments of the claims of the patent.” (para. 151)
The Paris seat of the CD already allowed this, in principle, in another case involving NJOY earlier this month (LinkedIn post). But in this case, there were certain issues that doomed that attempt at salvaging the patent:
153. However, the defendant does not explain why the possible combinations of the claims would provide particular reasons to uphold the patent, even if partially, leaving the request unclear and not substantiated.
154. It may be further considered that, according to Rules 30 (1) (c) and 50 (2) ‘RoP’, the proposed amendments, if they are conditional like in the present case, must be reasonable in number in the circumstances of the case. In the current proceedings, the conditional amendments that have been submitted with regard to the request of a partial invalidity of the patent are not reasonable in number.
Panel and counsel
Panel: Presiding Judge (and here, judge-rapporteur) Paolo Catallozzi, Judge Tatyana Zhilova (Sofia, Bulgaria) and Technically Qualified Judge Max Tilmann.
Counsel for NJOY (the successful challenger): McDermott Will & Emery’s Professor Henrik Holzapfel.
Counsel for VMR: Thum & Partner’s Bernhard Thum, Dr. Jonas Weickert and Andreas Moetsch (“Mötsch” in German), as well as Bardehle Pagenberg’s Dr. Tobias Wuttke.