UPC CFI 314/2023 (ACT 571795/2023) – NJOY Netherlands B.V. v Juul Labs International, Inc.

Expert Commentary

Full Decision Text

1 DECISION of the Court of First Instance of the Unified Patent Court Central division Paris Seat (Section 1) delivered on 7 February 2025 concerning EP 3 504 990 B1 KEYWORDS: : revocation, claim interpretation, clarity, added matter, admission of auxiliary claims CLAIMANT: NJOY Netherlands B.V. Westerdoksdjik 423, 1013BX Amsterdam, Netherlands represented by Attorney-at-law Hon.-Prof. Dr. Henrik Holzapfel, McDermott Will & Emery, Stadttor 1, 40219 Düsseldorf, Germany At the hearing also represented by • Mathias Karlhuber, Cohausz & Florack • Laura Woll, McDermott Will & Emery • Diana Pisani, McDermott Will & Emery • Lisa Nassi, McDermott Will & Emery DEFENDANT: Action n°: UPC CFI 314 /2023 Revocation action 571795/2023 2 Juul Labs International, Inc. 560 20th Street, Building 104, San Francisco, California 94107, United States of America Represented by Bernhard Thum, Thum & Partner | Thum, Mötsch, Weickert Patentanwälte PartG mbB, Siebertstr. 6, 81675 Munich, Germany Also at the hearing represented by • Andreas Mötsch, German and European Patent Attorney, Thum & Partner • Dr. Jonas Weickert, German and European Patent Attorney, Thum & Partner • Dr. Tilman Müller, Attorney at Law, Bardehle Pagenberg PATENT AT ISSUE European patent EP 3 504 990 B1, hereafter referred to as “EP 990” or as “the Patent”. PANEL/DIVISION Panel 1 of the Central Division (Paris Seat) DECIDING JUDGES This decision has been delivered by the presiding judge and judge-rapporteur François Thomas, the legally qualified judge Maximilian Haedicke and the technically qualified judge Max Tilmann. DATE OF THE ORAL HEARING 09 December 2024 SUMMARY OF FACTS AND REQUESTS 1 The dispute 3 1.1 On 14 September 2023, Claimant brought a revocation action1 against Defendant at the Paris Central Division of the Unified Patent Court (Action n°: UPC CFI 314 /2023 Revocation action 571795/2023), requesting the Court to revoke European Patent No. EP 3 504 990 B1. 1.2 On 23 October 2023, Defendant filed a Preliminary objection No. App 582209/2023 pursuant to Rules 19.1(a) and 48 of the Rules of Procedure of the Unified Patent Court (‘RoP’) denying the competence of the Court on the grounds of an allegedly false denomination of Defendant by Claimant. The Court rejected the Preliminary objection. This holding was confirmed on appeal No. APL 588422/2023 UPC CoA 435/2023. 1.3 A Statement of Defence to Revocation dated 28 November 2023 was filed on 12 December 2023. At the same time and within the same submission, an application to amend the Patent was filed. A Reply to the Defence was submitted on 19 February 2024, including a Defence to an Application to amend the Patent. The Court also received a Rejoinder to the Reply, dated 19 March 2024, that included a Reply to the Defence to an Application to amend the Patent. On 19 April 2024, Claimant filed a Reply to the Rejoinder and Reply to Defendant’s Application to amend the Patent in suit. 1.4 On 31 May 2024, the Court received a further submission by Defendant entitled “Comments to Claimant’s submission of 19 April 2024 including the Reply to Defendant’s rejoinder and the Reply to Defendant’s application to amend the patent”. 1.5 On 28 June 2024, the interim conference was held. 1.6 By order of 5 July 2024, the Court – inter alia – set out the order allowing Defendant to identify, within the set of auxiliary requests already on file, those set of claims that it wants to pursue further until 20 July 2024. 1.7 On 22 July 2024, Defendant identified 11 auxiliary requests to be pursued during the oral hearing. 1.8 On 30 August 2024, the Court received the summaries sent by the parties. 1.9 On 3 December 2024, Defendant submitted a subsequent request to amend the patent. 1.10 The oral hearing was held on 9 December 2024. 1.11 On 13 December 2024 the parties filed the Presentations that the parties used during the hearing via e-mail. 1 The Statement of Revocation, Defence to Revocation, Reply to the Defence to Revocation and Rejoinder to the Reply to the Defence to Revocation are herein referred to as ´SfR´, ´DtR´, ´RtD´ and ´R´, respectively. 4 1.12 For the submissions of the parties and previous orders issued by the Court, reference is made to the case file in the Case Management System. 2 The patent 2.1 The Patent EP 3 504 990 B1 Exhibit MWE 1 entitled VAPORIZATION DEVICE SYSTEMS AND METHODS was filed on 23 December 2014. 2.2 As indicated by Claimant in mn. 7 SfR and undisputed by Defendant, the Patent in suit was filed on 15 February 2019 as European patent application No.19157439.1 Exhibit MWE 3, as a divisional application of European patent application No.18000692.6 (published as EP 3 430 921 A1) Exhibit MWE 4, the parent application. EP 18000692.6 was a divisional application based on EP 14873186.2 (the grandfather application). EP 14873186.2 was originally filed as International Patent Application No. PCT/US2014/072230, published as WO 2015/100361 A1 Exhibit MWE 5, and claimed priority from US Provisional Patent Applications Nos. 61/920,225 Exhibit MWE 6 (filed on 23 December 2013), 61/936,593 Exhibit MWE 7 (filed on 6 February 2014) and 61/937,755 Exhibit MWE 8 (filed on 10 February 2014). 2.3 The publication of the mention of the grant of the Patent was made on 24 November 2021. Registered owner of the Patent is Defendant. 2.4 According to Claimant’s Statement for Revocation (SfR; mn. 6) and undisputed by Defendant, EP990 at the time of filing the SfR was valid in the following member states of the UPCA: Belgium, France, Germany, Italy, Luxembourg, Netherlands, Portugal and Sweden and, in addition, in Czechia, Greece, Ireland, Poland, Romania, Spain, Switzerland/Liechtenstein and the United Kingdom. 2.5 Oppositions against the grant of the Patent at the European Patent Office (“EPO”) were pending at the time of filing the StR; Claimant is not party to the opposition proceedings. 2.6 Claim 1 of the Patent, as granted, reads: A device for generating an inhalable aerosol comprising: a detachable cartridge (30), comprising: a fluid storage compartment , a heater affixed to a first end of the fluid storage compartment; and a mouthpiece affixed to a second end of the fluid storage compartment, 5 wherein the heater comprises a first condensation chamber and the mouthpiece comprises a second condensation chamber, and a device body (20) comprising: a cartridge receptacle (21) with an open end configured for insertion of the cartridge (30) and a notched body, wherein the device is configured to leave exposed a channel air inlet (50) when the cartridge (30) is inserted into the notched body of the cartridge receptacle (21); and a pressure sensor (27) configured for sensing a user’s puffing action, wherein upon insertion of the cartridge (30) into the cartridge receptacle (21), first heater contact tips (33a) on first heater contacts (33) of the cartridge contact second heater contacts (22) of the device body; and wherein the cartridge receptacle and the detachable cartridge form a separable coupling. 3 Requests 3.1 Claimant requests: I. European patent n° EP 3 504 990 be revoked with effect for the territories of Belgium, France, Germany, Italy, Luxembourg, the Netherlands, Portugal and Sweden. II. To dismiss Defendant’s alternative requests to maintain the Patent in suit based on any of Defendant’s proposed amendments of the claims of the Patent in suit, including all of Defendant’s Auxiliary Requests, and Defendant’s alternative requests (2)c. and (2) d. as worded in the Statement of Defence. III. To dismiss Defendant’s request (3) as worded in the Rejoinder and, in case that the Court deems it necessary, to admit Exhibits MWE 27 to 61 to the proceedings. IV. The Defendant be ordered to bear the legal costs of the proceedings. 3.2 Defendant requests: (1) the revocation action be dismissed; (2) the patent in suit be maintained: a. as granted; 6 b. in the alternative, based on one of the amendments of the claims of the patent in suit as submitted on 22 July 2024 and the Auxiliary Requests according to the subsequent application to amend the patent that shall be discussed in the order of Auxiliary Requests I, II, III, IV, V, VI, VII, VIIA, VIII, VIIIA, IX, IXA, X, XA, XI, XIA; c. Further in the alternative, based on one of the proposed amendments of the claims of the patent in suit as submitted on 22 July 2024 (Auxiliary Requests I, II, III, IV, V, VI, VII, VIII, IX, X, XI); d. further in the alternative in parts based on the independent validity of one or more of its dependent claims in combination with independent claim 1 as granted; ((2)c. as set forth in the Statement of Defence): and e. yet further in the alternative in parts based on the independent validity of one or more of its dependent claims as granted in combination with claim 1 the proposed amendments of the claims of the patent in suit (Auxiliary Requests 1 to 36) ((2)d. as set forth in the Statement of Defence) (3) documents MWE 27 to MWE 54 not be admitted into the proceedings. (4) Claimant to bear the costs of the proceedings. 3.3 Regarding the submission of 19 April 2024, Claimant further requests to admit this submission also insofar as the submission is not limited to commenting on Defendant’s Application to amend the Patent. 3.4 Regarding the submission of 31 May 2024, Defendant further requests admission of this response. 3.5 Defendant further requests admission of the submission of 3 December 2024 and the subsequent application to amend the patent set forth therein. 4 The arguments 4.1 Claimant states that the invention claimed therein is not valid for several reasons. Claimant argues that the following reasons for revocation apply: o added matter (Article 138(1)(c) EPC, with reference to Articles 76(1) and 123(2) EPC), 7 o lack of inventive step (Article 138(1)(a) EPC, with reference to Articles 52(1) and 56 EPC). 4.2 Regarding the issue of “added matter”, Claimant in particular argues that Claim 1 of the Patent contains subject matter extending beyond the disclosures of the grandparent application PCT/US2014/072330, the parent application EP 18000692.6, and the application itself as originally filed,: • Feature 1.2.2 – the heater is affixed to a first end of the fluid storage compartment, and • Feature 1.2.3 – the mouthpiece is affixed to a second end of the fluid storage compartment. Both Features 1.2.2 and 1.2.3 were added to claim 1 during examination, in the amended claims filed on 27 January 2021. 4.3 Claimant argues that the affixing of the heater to a first end of the fluid storage compartment (feature 1.2.2) is not disclosed by, or derivable directly and unambiguously from, statements that the heater is attached to the first end of the cartridge or statements that the heater encloses a first end of the fluid storage compartment. 4.4 To substantiate this, Claimant first refers to the reference in MWE 3, MWE 4 and MWE 5 to the attachment of the heater to the first end of the cartridge. Claimant considers that the affixation of the heater to a first end of the fluid storage compartment is neither disclosed by nor directly and unambiguously derivable from statements that the heater is attached to the first end of the cartridge. 4.5 Claimant further refers to the reference in MWE 3, MWE 4 and MWE 5 to the heater enclosing a first end of the fluid storage compartment. Claimant considers that affixing the heater to a first end of the fluid storage compartment is not disclosed by, or derivable directly and unambiguously from statements that the heater encloses a first end of the fluid storage compartment. 4.6 Claimant refers to statements regarding the attachment of the heater to a “first end”. Claimant considers it unclear whether the “first end” mentioned in these statements is the first end of the cartridge or the first end of the fluid storage compartment. Claimant states that a person skilled in the art would interpret the “first end” mentioned in the statements to be references to the first end of the cartridge, and not a first end of the fluid storage compartment. 4.7 Claimant argues that the attachment of the mouthpiece to a second end of the fluid storage compartment is not disclosed either by, or derivable directly 8 and unambiguously from, statements that the mouthpiece is attached to the second end of the cartridge (which Claimant cites from MWE 3, MWE 4 and MWE 5) or statements that the mouthpiece encloses a second end of the fluid storage compartment (which Claimant cites from MWE 3, MWE 4 and MWE 5). 4.8 Claimant refers to statements regarding the fixation of the mouthpiece to a “second end”. Claimant considers it unclear whether the “second end” mentioned in these statements is the second end of the cartridge or the second end of the fluid storage compartment. In view of the numerous references to the affixing of the mouthpiece to a second end of the cartridge a person skilled in the art would interpret “the second end” to be references to the second end of the cartridge, and not an end of the fluid storage compartment. 4.9 Defendant initially argues that claims 149 and 158 of MWE-5 provide a generic disclosure basis for the features 1.2.2 and 1.2.3. and further supplements this with reference to [0042] to [0046] of MWE 5 (and comparable paragraphs of MWE 3 and MWE 4) and yet further reference to [00179] of MWE 5 (and comparable paragraphs of MWE 3 and MWE 4) in relation to Fig. 9. 4.10 Defendant states in DtR mn. 38 that according to claims 149 and 158 “the heater is affixed to a first end, without specifying to which component the first end belongs. The same applies for the mouthpiece, which is according to the claims 149 and 158, affixed to the second end, however, again without specifying to which component the second end belongs. Claims 149 and 158 leave it undefined to which component the heater and the mouthpiece are affixed.” In mn. 40 Defendant states that the “structure of original claims 149 and 158 indicates that the heater and the mouthpiece are affixed to respective ends of the fluid storage compartment, since first the fluid storage compartment is already introduced into the claim and the features of the heater and the mouthpiece affixed to the first and second ends, respectively, are introduced into the claims thereafter.” 4.11 Defendant further claims that claims 149, 158 and the corresponding paragraphs [0042] and [0046] establish a relationship of the respective components to the first end and the second end of the fluid storage compartment which to the Defendant’s view also forms the first end and the second end of the cartridge. 4.12 Regarding the affixation of the heater and the mouthpiece to the first and second ends of the fluid storage compartment, Defendant further states that 9 this is described step-by-step in [00179] with reference to Fig. 9 (mn. 43). In detail, Defendant, by reference to Fig. 9A, argues that it is directly and unambiguously derivable for a person skilled in the art from Fig. 9A that the fluid storage compartment 32a has a first end and a second end. Defendant argues that the Figs. 9B to 9L show how different components like the heater and the mouthpiece are affixed to the first end and the second end of the fluid storage compartment (mn. 45). 4.13 Defendant claims that original Fig. 9I clearly shows affixing the mouthpiece 31 to the second end of the fluid storage compartment. In Fig. 9J, the mouthpiece 31 is shown affixed to the fluid storage compartment. 4.14 In the hearing on 9. December 2024 Defendant questioned, if the term “first end” in the wording of claim 158 of MWE 5 contained any ambiguity and if there were any ambiguity in claim 158 as to the meaning of the first end, this could be overcome by looking at [0179] and Fig. 9F and 9I that showed the provision of a fluid storage compartment and as next method-step the placement of the heater on the fluid storage compartment. 4.15 Claimant additionally points to a disclosure that states that “first heater contact plates 33 that are fixed to the sides of the first end of the tank and straddle the open‐sided end 53 of the tank”. Claimant argues that it is not unambiguously clear that the “tank” and “fluid storage compartment” are synonymous. 4.16 With regard to amendment A3, Claimant argues that the Patent does not explain how the heater can enclose the first end of cartridge when that cartridge comprises the heater. It is also unclear how the heater can enclose the first end of the cartridge when it is affixed to the first end of the fluid storage compartment (Reply to Defence to Revocation mn. 298). 4.17 With regard to amendment A4, Claimant argues that the Patent does not explain how the mouthpiece can enclose the second end of cartridge when that cartridge comprises the mouthpiece. It is also unclear how the mouthpiece can enclose the second end of the cartridge when it is affixed to the second end of the fluid storage compartment (Reply to Defence to Revocation mn. 316). GROUNDS FOR THE DECISION 5 Late-filed facts and evidence 10 5.1 Defendant requests documents MWE 27 to MWE 54 not be admitted into the proceedings; Claimant requests to dismiss Defendant’s request and, in case that the Court deems it necessary, to admit Exhibits MWE 27 to 61 to the proceedings. 5.2 Due to the front-loaded approach of the UPC system, Rule 44 RoP requires the Statement for revocation to contain an indication of the facts relied on (Rule 44 (f) RoP) and the evidence relied on, where available and an indication of any further evidence which will be offered in support (Rule 44 (g) RoP). Similarly, the RoP contain provisions which define the admissible content of the further submissions. The parties are under an obligation to set out their full case as early as possible (Preamble RoP 7, last sentence) and to provide all their legal and factual arguments, and any evidence supporting it in a timely manner. 5.3 Whenever possible, Claimant is obliged to submit its arguments, facts and attachments in its Statement for Revocation, which it has plenty of time to prepare. However, when submitting the Statement for Revocation, Claimant cannot anticipate which points Defendant will dispute or the means by which it will do so. Therefore, in its Reply to the Statement of Defence, Claimant is allowed to present arguments in response to arguments raised by Defendant in its Statement of Defence. 5.4 A clear distinction between newly introduced arguments and arguments raised as a mere reaction to previously filed arguments cannot always be drawn. In order to secure fairness and equity of the proceedings (Preamble RoP 5), especially to safeguard the fundamental right to be heard, a generous standard is to be applied. An argument which may be considered a further reaching response to the other party’s previously raised argument is to be admitted. Reply to the Statement of Defence and Hajaligol Declaration 5.5 In its Reply to the Statement of Defence dated 19 February 2024, Claimant filed 29 new documents (MWE 27 to MWE 54 with MWE 33a). Defendant requests not to admit any of the newly filed documents into the proceedings. This request especially pertains to the preclusion of the Hajaligol Declaration (MWE 27) and all enclosures. 5.6 The Hajaligol report is admissible as far as it is a reaction to arguments submitted in the Statement of Defence. Therefore, the report is admissible as far as it contains arguments regarding the common general knowledge (‘State of the art before the critical filing date of the Patents‘, mn. 21-33). These arguments are raised in response to arguments raised by Defendant in its Statement of Defence to Revocation mn 16 et seq. Their submission is therefore admissible. 11 5.7 The “Hajaligol Declaration” is also admissible as far as it can be considered a response to Dr. Collins proposed construction of the claim features of the patent in suit. The report takes issue with the Collins declaration and focuses on alleged contradictions. A clear distinction between newly added arguments and arguments which are used as a response to Dr. Collins‘ report cannot be drawn. In order to secure Claimant‘s right to be heard, the entire Hajaligol report is admitted into the proceedings, including its attachments. Rejoinder to the Reply to the Defence to Revocation / Reply to the Defence to the Application to amend the patent 5.8 Rule 52 RoP delineates the scope of the Rejoinder to the Reply to the Defence to Revocation. According to Rule 52 RoP ‘the defendant may lodge a Rejoinder to the Reply to the Defence to Revocation together with any Reply to the Defence to an Application to amend the patent pursuant to Rule 43.3 and 55 (...). The Rejoinder shall be limited to a response to the matters raised in the Reply.’ 5.9 Therefore, as far as the Rejoinder to the Reply to the Defence to Revocation (19 March 2024) is concerned, the arguments regarding the admissibility of the Hajaligol Declaration are admitted. Page 1-20 of the Rejoinder are therefore admissible. 5.10 P. 21-37 of the Rejoinder are a response to Claimant’s Reply to the Defence to Revocation and to the arguments contained in the Hajaligol Declaration. As the content of the Hajaligol Declaration is admitted, the response thereto should also be admitted. P. 21-35 are therefore admitted. 5.11 P. 38-87 of the Rejoinder are admitted. They focus on general issues concerning patentability, but at the same time, they constitute a response to the Hajaligol Declaration and to the Reply to the Defence to Revocation. As previously mentioned, in order to safeguard the fundamental right to be heard, a generous standard is to be applied. 5.12 Similarly, the expert report of Ramon Alacon (Exhibit TP-10) is admissible, as it can be considered a reaction to the Hajaligol Declaration, which is admitted to the proceedings, too. 5.13 According to Rule 55, 32.3 RoP, the ‘proprietor may lodge a Reply to the Defence to the Application to amend the patent within one month of service of the Defence (…)’. Applying this rule, the submission of 19 March 2024 is also admissible as far as it is commenting on the Defence to the Application to amend the patent. Therefore, p. 102 et seq. are admitted. Reply to the Rejoinder and Reply to Defendant’s Application to amend the Patent in suit 12 5.14 On 19 April 2024, Claimant filed a ‘Reply to the Rejoinder and Reply to Defendant’s Application to amend the Patent in suit’. 5.15 According to Rules 55, 43.3, 32.3 RoP, Claimant may lodge a Rejoinder to the Defendant’s Reply to the Defence to the Application to amend the Patent in suit. P. 16-60 deal with Defendant’s Reply to the Defence to the Application to amend the Patent in suit and are therefore admissible, including MWE 57 to MWE 61 that form part of this Rejoinder. 5.16 According to Rule 32.3 second sentence RoP, ‘the Rejoinder shall be limited to the matters raised in the Reply’. Claimant requests under Rules 58, 36, 9.1 RoP admission of its submission also insofar as the submission is not limited to ‘the matters raised in the Reply.’ This request is to be denied, including not allowing MWE 56 (“Second Hajaligol Declaration”) into the proceedings. There is no good reason why an exception should be made to the general rule in Rule 32.3 second sentence RoP. Claimant had the opportunity to present its case. In the interest of efficient proceedings, no further arguments can be introduced at this stage of the proceedings. Their admission would not be in line with the UPC’s front-loaded approach. P. 4 to 15 of Claimant’s submission of 19 April 2024 are therefore inadmissible. Submission of 31 May 2024 5.17 Defendant’s submission of 31 May 2024 is inadmissible, as there is no legal basis for it in the RoP. The submission stands in contrast to the front-loaded approach of the UPC system. There are no good reasons why, as an exception, the submission should be admitted in this case. Submission of 3 December 2024 and Auxiliary Requests IIA, VIIA, VIIIA, IXA and XIIA 5.18 As will be explained below, Defendant’s submission of additional Auxiliary Requests IIA, VIIA, VIIIA, IXA and XIIA submitted with the subsequent Application to amend the patent in suit of 3 December 2024 is inadmissible. 6 Technical introduction 6.1 EP990 pertains to vaporization device systems. According to [0002] EP990 it pertains to improvements in electronic inhalable aerosol devices, or electronic vaping devices, particularly to electronic aerosol devices which utilize a vaporizable material that is vaporized to create an aerosol vapor capable of delivering an active ingredient to a user. 6.2 EP990 describes DE 10 2006 004 484 A1 to disclose a smoke‐free cigarette comprising a battery, a filter sensor, an air flow sensor, a glow wire, a time control, air holes and charging contacts, wherein upon inserting a filter, the 13 glow wire is pre‐heated and upon drawing on the device, the glow wire is brought to operating temperature. 7 The claimed subject matter 7.1 Claim 1 of the Patent can be divided into the following features: 1.1 A device for generating an inhalable aerosol comprising: 1.2 a detachable cartridge (30) comprising: 1.2.1 a fluid storage compartment, 1.2.2 a heater affixed to a first end of the fluid storage compartment; and 1.2.3 a mouthpiece affixed to a second end of the fluid storage compartment, 1.2.4 wherein the heater comprises a first condensation chamber 1.2.5 and the mouthpiece comprises a second condensation chamber, 1.3 and a device body (20) comprising: 1.3.1 a cartridge receptacle (21) with an open end configured for insertion of the cartridge (30) 1.3.2 and a notched body, 1.3.3 wherein the device is configured to leave exposed a channel air inlet (50) when the cartridge (30) is inserted into the notched body of the cartridge receptable (21); and 1.3.4 a pressure sensor (27) configured for sensing a user’s puffing action, 1.4 wherein upon insertion of the cartridge (30) into the cartridge receptable (21), first heater contact tips (33a) on first heater contacts (33) of the cartridge contact second heater contacts (22) of the device body; 1.5 and wherein the cartridge receptacle and the detachable cartridge form a separable coupling. 7.2 Some features of claim 1 of the Patent require interpretation. Legal framework 14 7.3 The Court of Appeal of the UPC has laid down the following legal framework for the interpretation of patent claims (Order dated 26 February 2024 in UPC CoA 335/2023, NanoString/10x Genomics, p. 26-27 of the original German language version, also see CoA UPC 13 May 2024, VusionGroup/Hanshow). 7.4 In accordance with Art. 69 EPC and the Protocol on its interpretation, a patent claim is not only the starting point, but the decisive basis for determining the scope of protection of a European patent. The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. However, this does not mean that the patent claim merely serves as a guideline and that its subject-matter also extends to what, after examination of the description and drawings, appears to be the subject-matter for which the patent proprietor seeks protection. 7.5 The patent claim is to be interpreted from the point of view of a person skilled in the art. 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. A feature in a patent claim is always to be interpreted in light of the claim as a whole (CoA UPC 13 May 2024, VusionGroup/Hanshow, point 29). From the function of the individual features in the context of the patent claim as a whole, it must be deduced which technical function these features actually have both individually and as a whole. The description and the drawings may show that the patent specification defines terms independently and, in this respect, may represent a patent´s own lexicon. Even if terms used in the patent deviate from general usage, it may therefore be that ultimately the meaning of the terms resulting from the patent specification is authoritative. 7.6 In applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties. 7.7 The relevant point in time for interpreting a patent claim for the assessment of validity is the filing (or priority) date of the application that led to the Patent. 7.8 The patent claim must be interpreted from the point of view of a person skilled in the art. The person skilled in the art (skilled person) is a legal fiction which, in the interests of legal certainty, forms a standardized basis for the assessment of the legal concepts of "prior art", "novelty", "inventive step" 15 and "enablement". 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. The skilled person (person skilled in the art) 7.9 The person skilled in the art 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. 7.10 Electronic inhalable aerosol devices or electronic vaping devices are consumer products. General tasks in designing electronic inhalable aerosol devices or electronic vaping devices relate to the outer physical shape and mechanical properties of the device; the materials to be used for the device; the inner physical shape of the device, also as regards fluid dynamics and thermodynamics. These tasks typically fall into the competence of a mechanical engineer and not so much into the competence of an electrical engineer, a chemist or a physicist (as suggested by Claimant (SfR, mn 9)). 7.11 A further task in designing electronic inhalable aerosol devices or electronic vaping devices relates to the electrical circuitry implemented in these devices. This additional design task can either be performed by a mechanical engineer with some years of experience in the technical field of vaporizers or by way of forming a team between the mechanical engineer and an electrical engineer. 7.12 Claimant states that, alternatively to a mechanical engineer, the skilled person could possess a Bachelor’s or Master’s degree in chemistry or physics or a related field or someone from a related field (mn 10 SfR). This does not convince, as it would render the selection of the skilled person too unspecific. Claimant does not provide any substantive reasons for suggesting these alternatives and hence does not provide any convincing arguments as to why Claimant’s suggestion should prevail. Likewise, the statement by Mr. Hajaligol in mn 19 of MWE 20 also provides no further reasoning as to why Mr. Hajaligol is of the opinion that the person skilled in the art ought to be defined differently, hence – apart from a singular opinion - not providing any convincing arguments as to why Claimant’s suggestion should prevail. 16 Claim interpretation from the point of view of the skilled person Feature 1.2.2: “a heater affixed to a first end of the fluid storage compartment” 7.13 Feature 1.2.2 describes the heater to be affixed to a first end of the fluid storage compartment (abbreviated as “FSC” in the following). In doing so, feature 1.2.2 (1) defines the manufacturing step of affixing to be the one to be used to provide the FSC with the heater and (2) defines the location of at least the majority of the parts that make up the heater to be at a first end of the FSC. 7.14 To the skilled person, the term “affixed” indicates an affixation of one object (the heater) to another, already existing object. In contrast to other manufacturing methods, for example where an object is created as part of an object by way of machining or where an object is cast, “affixed” means the affixing of one existing object to another existing object to the skilled person. 7.15 This view is supported by the description of the Patent. For ease of reference, Fig. 7A, 7B and 9 are included below. 7.16 Fig. 7A is an isometric view of an assembled cartridge. Fig. 7B is an illustrative exploded isometric view of a cartridge assembly. 7.17 FIG. 9 provides an example of a method of assembling such a device. FIG. 9 is a sequence of the assembly method for the cartridge. 17 7.18 From [0140] the skilled person learns that it is intended that the cartridge may be configured for ease of manufacture and assembly. From this, the skilled person understands that the intention of the reference in feature 1.2.2 to the heater being affixed to a first end of the FSC (and the intention of feature 1.2.3. requiring a mouthpiece affixed to a second end of the FSC) is to be seen as means to achieve an ease of manufacture and assembly of the cartridge in contrast to other, more difficult manufacturing ways of providing a cartridge with a heater and a mouthpiece. 7.19 Claim 1 leaves it open, if the heater is a unitary element that is affixed to the end of the FSC in one unitary piece or if the heater is made up of several elements that are individually affixed to other parts of the FSC. The embodiment shown in Fig. 7B and assembled according to Fig. 9 is a heater made up of several parts and shows the individual parts of the heater to be affixed to pieces of the FSC in successive steps. From this the skilled person learns that the affixation of the heater to the elements of the FSC must not necessarily be done in one step. But the embodiment shown in Fig. 7B and assembled according to Fig. 9 shows that even if the heater is affixed to elements of the FSC, each element of the heater is affixed to other elements (in contrast to an element that forms part of the heater being formed by other ways on the FSC). 7.20 As regards the means of affixation, [0155] suggests the one or more free ends of the heater to be soldered in place (which is a means of permanent affixation), rested in a groove or snapped into a fitted location. 18 7.21 When taken literally, the term “affixed to a first end of the fluid storage compartment” could be understood to define the “a first end of the fluid storage compartment” to be an existing (part of an) object to which the heater is affixed, namely the FSC. Such an understanding of the term “first end of the FSC” is, however, in contradiction to the description. [0152] describes a small male snap feature 39b located at the end of the channel cover (of the heater) to be configured to fall into a female snap feature 39a, located mid-body on the side of the tank and creating a snap-fit assembly. To the skilled person this means that the actual point of affixation of the heater to the FSC takes place mid-body on the side of the tank; the term “tank” at least in [0152] being understood by the skilled person to be synonymous to the term “fluid storage compartment”. 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 first end of the FSC” in the term “affixed to a first end of the FSC” defines the location where the heater is after having being affixed rather than being a reference to an existing (part of an) object to which the heater is affixed. 7.22 From the embodiment described in [0152] the skilled person understands that feature 1.2.2 does not necessitate the complete heater to be located at the first end of the FSC. While in the embodiment described in [0152] the majority of the parts that make up the heater is located at a first end of the FSC, the channel covers protrude from the end of the FSC and hence are not completely located at the first end of the FSC. From this the skilled person understands that feature 1.2.2 relates to at least the majority of the parts that make up the heater to be at a first end of the FSC. Feature 1.2.3: “a mouthpiece affixed to a second end of the fluid storage compartment” 7.23 Feature 1.2.3 describes the mouthpiece to be affixed to a second end of the FSC. In doing so, feature 1.2.3 (1) defines the manufacturing step of affixation to be the one to be used to provide the FSC with the mouthpiece and (2) defines the location of the free end of the mouthpiece that is intended to be inserted into the user’s mouth at a second end of the FSC. 7.24 As indicated above, the term “affixed” to the skilled person indicates an affixation of one object (the mouthpiece) to another, already existing object. As indicated above, this method is seen by the skilled person as the one to achieve an ease of manufacture and assembly of the cartridge in contrast to 19 other, more difficult manufacturing ways of providing a cartridge with a heater and a mouthpiece. 7.25 As indicated above, when taken literally, the term “affixed to a second end of the fluid storage compartment” could be understood to define the “a second end of the FSC” to be an existing (part of an) object to which the mouthpiece is affixed, namely the FSC. Such an understanding of the term “second end of the FSC” is, however, in contradiction to the description. 7.26 [0176] describes a snap-fit coupling 39c, 39d of the mouthpiece to be similar to the snap-fit coupling 39a, 39b. Fig. 9I and 9J show that the mouthpiece 31 is to be slid onto the FSC 32a in a manner similar to the heater 36 being slid onto the FSC 32 in Fig. 9F, 9G. Further, Fig. 9I and 9J show the mouthpiece to have lateral extensions (aerosol outlet channel covers 46a) similar to the lateral extensions of the heater (primary condensation channel covers 45a). Starting from this, the skilled person understands the reference in [0176] for the snap-fit coupling 39c, 39d to be similar to the snap-fit coupling 39a, 39b to include the possibility that describes a small male snap feature 39d located at the end of the aerosol outlet channel covers 46a to be configured to fall into a female snap feature 39c, located mid-body on the side of the tank and creating a snap-fit assembly. 7.27 To the skilled person, this means that the actual point of affixation of the mouthpiece to the FSC in this embodiment takes place mid-body on the side of the tank. On the other hand, the skilled person realizes especially from Fig. 7A, 9I and 9J that the mouthpiece is affixed in a particular orientation, namely in such a way that the free end of the mouthpiece that is intended to be inserted into the user’s mouth is located at a second end of the FSC. 7.28 Similar to feature 1.2.2, 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 “affixed 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 rather than being a reference to an existing (part of an) object to which the mouthpiece is affixed. 7.29 Taking the description and the drawings as explanatory aids for the interpretation of the patent claim, in the features 1.2.2 and 1.2.3 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 20 features in the same way reinforces the interpretation for the respective one of the two features. 8 Validity 8.1 The Patent is not valid. It extends beyond the content of the grandparent application PCT/US2014/072330 =WO 2015/100361 A1, MWE 5, the parent application EP 18000692.6, EP 3 430 921 A1, MWE 4, and the application itself (EP19157439.1) as originally filed, MWE 3. They do not specify that the heater is affixed to a first end of the FSC (feature 1.2.2) in the way as this term needs to be understood by way of claim interpretation and do not specify that the mouthpiece is affixed to a second end of the FSC (feature 1.2.3) in the way as this term needs to be understood by way of claim interpretation. Legal framework 8.2 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 directly and unambiguously derive, 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 (LD The Hague, UPC CFI 131/2024 ACT 14945/2024; order of 19 June 2024; page 12, mn 3.4). 8.3 Given that the Patent is a divisional application, the Patent is to be revoked if any one of the following conditions applies: 1. the Patent extends beyond the content of the European application as filed No.19157439.1 (MWE 3); 2. the Patent extends beyond the content of the parent application EP 18000692.6 (MWE 4); 3. the Patent extends beyond the content of the grandfather application EP 14873186.2 (MWE 5). Granted claim 1 is not disclosed verbatim in the applications 21 8.4 The precise wording used for granted claim 1 in its combination and flow of words (claim 1 “verbatim”) can as such not be found in the European application as filed No.19157439.1 (MWE 3) nor in the parent application EP 18000692.6 (MWE 4) nor the grandfather application EP 14873186.2 (MWE 5). 8.5 Claimant argues that claim 1 differs from claim 1 of the application as filed (MWE 3) in the following manner: 22 8.6 Claimant points out that claim 1 specifies that “the heater is affixed to a first end of the fluid storage compartment” while the application as originally filed and the parent application and the grandfather application describe the heater as being attached to, or enclosing, a “first end of the cartridge”. According to Claimant, the affixation of the heater to a first end of the FSC is neither disclosed by, nor directly and unambiguously from, statements that the heater is attached to the first end of the cartridge or statements that the heater encloses a first end of the fluid storage compartment. 8.7 Claimant argues that claim 1 specifies that “the mouthpiece is affixed to a second end of the fluid storage compartment” while the application as originally filed and the parent application and the grandfather application describe the mouthpiece as being attached to, or enclosing, a “second end of the cartridge”. According to Claimant, the affixation of the mouthpiece to a second end of the FSC is not disclosed by, or derivable directly and unambiguously from, statements that the mouthpiece is attached to the second end of the cartridge or statements that the mouthpiece encloses a second end of the fluid storage compartment. 8.8 Claimant has shown that there are differences between the originally filed claim 1 and the granted claim 1 that are to be considered for the patent to contain subject matter that extends beyond the content of the application as filed. As a consequence, it is Defendant’s burden of proof to show, that all the changes made to what he considers as a generic disclosure basis for granted claim 1 (the changes made to claim 149 or claim 158) do not result 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. Starting from starting point used by Defendant within the grandfather application (MWE 5) 8.9 In mn. 37 of the DtR, Defendant refers to the original claims 149 and 158 of WO 2015/100361 A1 (MWE 5) as a generic disclosure basis. 8.10 Claim 149 of MWE 5 reads: 23 8.11 Granted claim 1 differs as far as relevant here, from the disclosure of claim 149 in that granted claim 1 specifies that • the first end mentioned in claim 1 is the first end of the fluid storage compartment, while claim 149 of MWE 5 does not literally specify to which object the first end belongs; • the second end mentioned in claim 1 is the second end of the fluid storage compartment, while claim 149 of MWE 5 does not literally specify to which object the second end belongs. 8.12 Claim 158 of MWE 5 reads 8.13 Granted claim 1 differs as far as relevant here, from the disclosure of claim 158 in that granted claim 1 specifies • the first end mentioned in claim 1 is the first end of the fluid storage compartment, while claim 158 of MWE 5 does not literally specify to which object the first end belongs; • the second end mentioned in claim 1 is the second end of the fluid storage compartment, while claim 158 of MWE 5 does not literally specify to which object the second end belongs. 8.14 The question arises whether Defendant has shown that MWE 5 – while it does not disclose literally in claim 149 and 158 for the heater to be affixed at the first end of the FSC and the mouthpiece to be affixed to the second end of the FSC – in another way discloses the “first end” mentioned in claim 149 and 158 to be the first end of the FSC and the “second end” mentioned in claim 149 and 158 to be the second end of the fluid storage compartment. 8.15 The wording of both claim 149 and 158 of MWE 4 leave it undefined to the (respective end of) which component the heater and the mouthpiece are affixed to. This view has also been put forward by Defendant. Defendant states in DtR mn. 38 that according to claims 149 and 158 “the heater is affixed to a first end, without specifying to which component the first end belongs. The same applies for the mouthpiece, which is according to the claims 149 and 158, affixed to the second end, however, again without specifying to which component the second end belongs. Claims 149 and 158 24 leave it undefined to which component the heater and the mouthpiece are affixed.” 8.16 Nothing can be gained from the mere structure of claim 149 and 158, which places the term “fluid storage compartment” before the terms “first end” and “second end”. This sequence does not define that the first end must be the first end of the FSC and the second end must be the second end of the FSC. Like the “fluid storage compartment”, also the term “cartridge” is introduced into the respective claim prior to the features concerning the affixation of the heater and the mouthpiece to certain ends. Hence, from a structural perspective, both terms have been introduced into the claim prior to the mention of “a first end” or “a second end”, leaving it ambiguous if the terms “first end” or “second end” introduced further down in the claim refer back to either of the terms “cartridge” or “fluid storage compartment” (at all), and if so, to which one of the two terms. For similar reasons, Claimant’s argument that it must be the first/second end of the cartridge that is being referenced in claim 149 and claim 158 does also not convince. It is true – as Claimant points out in the statement for revocation (mn. 28) - that at several places of the grandfather application MWE 5 the heater is stated to be attached to or to enclose the first end of the cartridge. Similarly, in the statement for revocation (mn. 41) the Claimant quotes several examples of the parent application in which the mouthpiece may be attached to or may enclose the second end of the cartridge. However, the mere fact that the claims 149 and 158 mention the cartridge does not necessitate the terms “first end”/ “second end” to refer to the cartridge; as indicated above, claims 149 and 158 also mention the term “fluid storage compartment”. Claims 149 and 158 simply leave it open, if the terms “first end” and “second end” actually are intended to describe ends of an object that has been introduced into the claim language at an earlier stage and even if they were considered to describe an end of an object that has been introduced into the claim language at an earlier stage, which of the two objects it is. 8.17 The same ambiguity is present in [0042] and [0046] of MWE 5, to which Defendant also refers. Like the “fluid storage compartment”, the term “cartridge” is also introduced into the respective paragraph prior to the features concerning the affixation of the heater and the mouthpiece to certain ends. [0042] and [0046] of MWE 5 are hence ambiguous as to which object the ends belong, to which the heater and the mouthpiece are affixed; it could be the cartridge or it could be the FSC or it could even be something else. [0042] and [0046] of MWE 5 leave this open. 25 8.18 Defendant also refers to [00179] and Fig. 9. 8.19 In the context of [00179] Defendant initially states this paragraph to specify in relation to Fig. 9 a FSC having the heater and the mouthpiece affixed thereto (mn 42 DtR). Additionally, Defendant claims that [00179] with reference to Fig. 9 describes step-by-step how the heater and the mouthpiece are affixed to the first and second ends of the FSC (mn 43 DtR) and that Figs. 9B to 9L show, how different components like the heater and the mouthpiece are affixed to the first end and the second end of the FSC (mn 45 DtR). The reasons provided by Defendant do, however, not support these statements. 8.20 Defendant’s reference to the statement that “heater 35 may be placed on the FSC” (mn 46 DfR) does not support the above statement, because a placement of an object on a different object says nothing about an affixation of the one object to the object on which it is placed. Fig. 9E (to which the cited sentence in [00179] refers by reference to “step E”) shows elements of the heater (for example the heater coil for which the refence sign 35 is used together with a wick 34) placed on the FSC, without giving any guidance for the arrangement of the complete heater, let alone any affixation that would go beyond a mere placement. 8.21 Defendant’s reference to the statement that “the heater enclosure 36 is in place on the FSC” and to Fig. 9F and 9G (mn 47, 48, 49 DfR) does not support the above statement, because for an object to be in place on a different object says nothing about an affixation of the one object to the object on which it is in place. Fig. 9F and 9G (to which the cited sentence in [00179] refers by reference to “step G”) shows a heater enclosure 36 to enclose an end of the FSC, with elements reaching along the side of the FSC, but not providing any disclosure for an affixation to a first end of the FSC. 8.22 Defendant’s reference to the statement that “the heater enclosure 36 may be fitted on the FSC” and to the statement that “the mouthpiece 31 can be fitted on the FSC” (mn 50 DfR) does not support the above statement, because fitting one object on a different object relates to the geometric adaptation of the shape of the one element to the geometric shape of a different element it is being fitted on, but apart from indicating a geometric adaptation is silent and especially is silent about the presence of and particular realization of an affixation. Furthermore, the cited sentences do not relate to a fitting to an end of the FSC and hence already for this reason provide not guidance on an affixation to an end of the FSC. 26 8.23 Defendant’s reference to Fig. 9I in the context of the mouthpiece (mn 53) does not support the above statement, because Fig. 9I shows a cap-like mouthpiece 31 above an end of the FSC; Fig. 9I by itself is not providing any information on how the mouthpiece is affixed to the FSC. Defendant’s reference to Fig. 9J in the context of the mouthpiece (mn 53) does not support the above statement, because Fig. 9J shows the cap-like mouthpiece 31 being placed over an end of the FSC in a manner that it encloses about half of the FSC; Fig. 9J by itself is not providing any information on how the mouthpiece is affixed to the FSC. Similarly, Defendant’s reference to the statement “Step J shows the mouthpiece 31 in place on the FSC” does not support the above statement, because – as stated above - for an object to be in place on a different object says nothing about the particularities of an affixation of the one object to the different object, on which it is placed. 8.24 Fig. 9 shows a particular embodiment, wherein the heater enclosure 36 encloses the first end of the FSC and wherein the mouthpiece encloses the second end of the FSC. Any disclosure of [00179] takes place in conjunction with this particular embodiment. 8.25 The claim feature 1.2.2 concerning the affixation of the heater to a first end of the FSC is neither disclosed by, nor directly and unambiguously derivable from [00179], which, by way of reference to Fig. 9, relates to a heater that encloses a first end of the FSC. 8.26 Similarly, claim feature 1.2.3 concerning the affixation of the mouthpiece to a second end of the FSC is not disclosed by, or derivable directly and unambiguously from [00179], which by way of reference to Fig. 9 relates to a mouthpiece that encloses a second end of the FSC 8.27 For a cartridge that has a heater being affixed to the first end of the FSC and a mouthpiece being affixed to the second end of the FSC, the embodiment of Fig. 7B, 9A-L described in [00179] of MWE 5 (and the same is true for the embodiment of Fig. 7B, 9A-L described in [00179] of MWE 3 and for the embodiment of Fig. 7B, 9A-L described in [0155] of MWE 4 that are the identical Fig. and text passages in the application as filed and the parent application) only presents to the skilled person the information to have the heater enclose the first end of the FSC and mouthpiece enclose the second end of the FSC. 8.28 As a consequence, any claim that refers to the heater being affixed to a first end of the fluid storage compartment and the mouthpiece being affixed to a second end of the FSC while not defining, that the heater encloses the first end of the FSC and the mouthpiece encloses the second end of the FSC results 27 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 and which is not directly and unambiguously derivable from the grandparent application MWE 5. This is even more true, if one considers that claim 1 by way of feature 1.2.4 requires the heater to comprise a first condensation chamber, which in the embodiment of Fig. 9 particularly referred to by Defendant is one part of the heater that makes the heater enclose the first end of the FSC. Likewise, this is even more true since claim 1 by way of feature 1.2.5 requires the mouthpiece to comprise a second condensation chamber, which in the embodiment of Fig. 9 particularly referred to by Defendant is a part of the mouthpiece that makes the mouthpiece enclose the second end of the FSC. 8.29 Claim 1 of the Patent hence extends beyond the content of the European application as filed No.19157439.1 (MWE 3) and beyond the parent application EP 3430921 A1 (MWE 4) and the grandfather application WO 2015/100361 A1 (MWE 5). 8.30 For the reasons given above, the Patent cannot be maintained as granted in its entirety; as regards claim 1 it is to be revoked. 9 Defendant’s Auxiliary Requests Request (1)/ Request (2) a. 9.1 The Patent cannot be maintained as granted in its entirety. Defendant's request (1), according to which the revocation action is to be dismissed, is rejected. Similarly, request (2) a., according to which the patent be maintained as granted, is to be rejected. Request (2) b. in the numbering of this decision 9.2 With request (2) b. of the numbering in this decision, Defendant requests admission of the subsequent Application to amend the patent in suit (to include Auxiliary Requests VIIA, VIIIA, IXA, XA, XIA). The Court does not give permission for the subsequent Application to amend as lodged by the Defendant on 3 December 2024 comprising new auxiliary requests. 9.3 The reason for filing the subsequent Application to amend that was provided by Defendant was the decision issued on 5 November 2024 (in the following “EP 115 decision”) by the same Panel of the UPC in the parallel revocation action regarding the Defendant’s patent EP 3 498 115 (UPC CFI 309/2023 - 28 ACT 571669/2023). The explanation provided by Defendant as to why it was not possible to set out their full case (by filing the particular auxiliary request as presented on 3 December 2024) was that it was a reaction to the EP 115 decision issued on 5 November 2024 by the same Panel. Defendant states that the conclusion that the auxiliary request “the mouthpiece (31) encloses the second end of the cartridge (30, 30a) and the second end of the FSC (32)” lacks clarity was surprising, because such clarity objections were not raised by Claimant in the EP 115 revocation proceedings. Further, Defendant states that the circumstances of the case must be taken into account. There was no case law from the UPC on clarity at the time of filing the Application to amend the patent. 9.4 Under the front-loaded system of UPC proceedings, parties are under an obligation to set out their full case as early as possible (Preamble RoP 7, last sentence). The subsequent Application to amend was filed late in the proceedings, after closure of the written proceedings and after the interim conference, less than one week before the oral hearing. The reasoning adopted in the EP 115 decision does not justify allowing the new auxiliary request into these proceedings at this stage of the proceedings. Although Defendant indeed acted swiftly , 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 FSC (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 298, 316. Defendant in the present case has even replied to the clarity objections in mn. 540 to 542 and mn.556 to 558 of R. 9.5 Furthermore, a possible “surprise” in the EP115 proceedings, as regards the mouthpiece, does not justify any amendment to claims regarding the heater, yet in Auxiliary Requests VIIA, VIIIA, IXA, XA, XIA Defendant makes amendments both to the feature concerning the mouthpiece and the feature concerning the heater. Request (2) c. in the numbering of this decision 9.6 With request (2) c. in the numbering of this decision, Defendant requests to amend the patent based on the Auxiliary Requests I to XI as submitted on 22 July 2024. 29 9.7 The Court uses the discretion given within Rule 9.2 RoP and – contrary to Claimant’s request - will not disregard the auxiliary requests I to XI filed by Defendant on 22 July 2024. The order of 05. July 2025 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 XI as expedient for an efficient procedure and hence beneficial to Claimant, too. Without the motion to file the auxiliary requests I to XI, the originally filed auxiliary requests 1 to 36 (filed with DtR) would have remained on file to be dealt with in a manner that would yet have to be decided. 9.8 None of the claims of auxiliary requests I, II, III, IV, V specify the heater to enclose the first end of the FSC and the mouthpiece to enclose the second end of the FSC. Hence none of the claims of these auxiliary requests introduce limitations that would lead to their subject matter being considered to not extend beyond the application as filed European application No.19157439.1 (MWE 3), and parent application 18000692.6 (MWE 4), and grandfather application WO2015/100631 (MWE 5). 9.9 None of the requests VI, VII, VIII, IX, X, XI explains how the heater/mouthpiece can enclose the first/second end of the FSC, be part of the cartridge and at the same time enclose the first/second end of the cartridge. Therefore, they have to be considered to be unclear. Auxiliary request I 9.10 By adding the feature “wherein the heater further comprises a heater chamber (37), the first pair of heater contacts (33), a fluid wick (34), and a resistive heating element (35) in contact with the wick”, the statements “a heater affixed to a first end of the FSC ” and “the mouthpiece is affixed to a second end of the FSC (32)” are maintained. 9.11 As indicated above, Defendant has not shown a basis for the general wording: “the heater affixed to a first end of the FSC” and “the mouthpiece affixed to a second end of the FSC”. The lack of basis of these statements remains. Claim 1 of the auxiliary request I does not introduce limitations that would lead to its subject matter being considered to not extend beyond the European application as filed No.19157439.1 (MWE 3), parent application 18000692.6 (MWE 4), and grandfather application WO2015/100631 (MWE 5). Auxiliary request II, III, IV 30 9.12 The additional features added by the respective auxiliary requests II, III, IV do not alter the statements “a heater affixed to a first end of the FSC ” and “the mouthpiece is affixed to a second end of the FSC (32)” and do not add any further specification as to how the respective affixation of the heater and the mouthpiece claimed in these statements is to be made. 9.13 As indicated above, Defendant has not shown a basis for the general wording: “the heater affixed to a first end of the FSC” and “the mouthpiece affixed to a second end of the FSC”. The lack of basis of these statements remains. Claim 1 of each of the auxiliary requests II, III, IV does not introduce limitations that would lead to its subject matter being considered to not extend beyond the European application as filed No.19157439.1 (MWE 3), parent application 18000692.6 (MWE 4), and grandfather application WO2015/100631 (MWE 5). Auxiliary request V 9.14 Claim 1 of auxiliary request V contains the limitation “wherein the heater is attached to a first end of the cartridge (30)”. It also contains the limitation “wherein the mouthpiece is attached to a second end of the cartridge (30)”. 9.15 As basis for this amendment, defendant in mn 350 DtR states that it can be found for instance in the original application documents original paragraphs [00179] and [00200] as well as in Fig. 9 showing the process of assembling the cartridge device. 9.16 As indicated above in the context of feature 1.2.2, Fig. 9, shows a particular embodiment, wherein the heater enclosure 36 encloses the first end of the FSC and wherein the mouthpiece encloses the second end of the FSC. Any disclosure of [00179] takes place in conjunction with this particular embodiment. For a cartridge that has a heater being affixed to the first end of the FSC and a mouthpiece being affixed to the second end of the FSC, the embodiment of Fig. 7B, 9A-L described in [00179] of MWE 5 (and the same is true for the embodiment of Fig. 7B, 9A-L described in [00179] of MWE 3 and for the embodiment of Fig. 7B, 9A-L described in [0155] of MWE 4 that are the identical Fig. and text passages in the application as filed and the parent application) only presents to the skilled person the information to have the heater enclose the first end of the FSC and mouthpiece enclose the second end of the FSC. As a consequence, any claim that refers to the heater being affixed to a first end of the fluid storage department and the mouthpiece being affixed to a second end of the FSC while not defining, that the heater encloses the first end of the FSC and the mouthpiece encloses the second end 31 of the FSC 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 and which is not directly and unambiguously derivable from the grandparent application MWE 5. 9.17 The addition made to claim 1 of auxiliary request V, according to which “wherein the heater is attached to a first end of the cartridge (30)” adds no definition to this claim that would identify the heater to enclose the first end of the FSC and the mouthpiece encloses the second end of the FSC. Hence even with this addition the skilled person is 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 and which is not directly and unambiguously derivable from the grandparent application MWE 5. Auxiliary request VI, VII, VIII, IX, X, XI 9.18 Claim 1 of auxiliary request VI contains the limitation “a heater affixed to a first end of the FSC, wherein the heater encloses a first end of the cartridge (30) and the first end of the fluid storage compartment”. It also contains the limitation “a mouthpiece affixed to a second end of the FSC, wherein the mouthpiece encloses a second end of the cartridge (30) and the second end of the FSC”. Claim 1 of auxiliary request VII, VIII, IX, X, XI each contains the limitation “a heater affixed to a first end of the FSC, wherein the heater is attached to a first end of the cartridge (30), wherein the heater encloses the first end of the cartridge (30) and the first end of the fluid storage compartment”. It also contains the limitation “a mouthpiece affixed to a second end of the FSC, wherein the mouthpiece is attached to a second end of the cartridge (30), wherein the mouthpiece encloses the second end of the cartridge (30) and the second end of the FSC”. 9.19 This wording is unclear. It is unclear, how the heater/mouthpiece can enclose the first/second end of the FSC, be part of the cartridge and at the same time enclose the first/second end of the cartridge. 9.20 Regarding the heater, Defendant in the DtR states that the amendment A3 (that contains language " wherein the heater encloses a first end of the cartridge (30) and the first end of the fluid storage compartment.”) clarifies that the heater encloses a first end of the cartridge and the first end of the fluid storage compartment. Providing such a statement does not fulfil the 32 requirement to explain as to why the amendments satisfy the requirements of Article 84 EPC. 9.21 In mn 367 DtR, Defendant refers to paragraphs [0022], [0039], [00173], [00178], [00181], [00235], claims 95 and 140 in the original application documents as literal disclosure for this amendment (whereby the Court considers the reference to “claims 95 and 140” to be a reference to “aspects” 95 and 140 in MWE 3, as the “original application documents” to which Defendant refers to (MWE 3) have no claim 95 and no claim 140). Paragraphs [0022], [0039], [00173], [00178], [00181], [00235], and “aspects” 95 and 140 of MWE 3 in essence are verbatim repetitions of the phrase “wherein the heater encloses a first end of the cartridge and the first end of the fluid storage compartment”. However, a mere repetition of an unclear phrase does not make it clear. Defendant does not argue that the context, in which the phrase is placed in paragraphs [0022], [0039], [00173], [00178], [00181], [00235], and “aspects” 95 and 140 would render it clear – and indeed paragraphs [0022], [0039], [00173], [00178], [00181], [00235], and “aspects” 95 and 140 do not make the phrase any clearer. 9.22 Regarding the mouthpiece and the amendment A4 (that contains language "wherein the mouthpiece encloses a second end of the cartridge (30) and the second end of the fluid storage compartment.”) Defendant in the DtR merely states that no unclarity is introduced by amendment A4 and that the claim language is clear. Merely providing such a statement does not fulfil the requirement to explain as to why the amendments satisfy the requirements of Article 84 EPC. 9.23 In mn 376 DtR, Defendant refers to paragraphs [0023], [0041], [00183], [00187], [00241], claims 109 and 145 in the original application documents as literal disclosure for this amendment (whereby the Court considers the reference to “claims 109 and 145” to be a reference to “aspects” 105 and 144 in MWE 3, as the “original application documents” to which Defendant refers to (MWE 3) have no claim 109 and no claim 145). Paragraphs [0023], [0041], [00183], [00187], [00241], and “aspects” 109 and 145.of MWE 3 in essence are verbatim repetitions of the phrase “wherein the mouthpiece encloses a second end of the cartridge and the second end of the fluid storage compartment”. However, a mere repetition of an unclear phrase does not make it clear. Defendant does not argue that the context, in which the phrase is placed in paragraphs [0023], [0041], [00183], [00187], [00241], and “aspects” 109 and 145 would render it clear – and indeed paragraphs [0023], 33 [0041], [00183], [00187], [00241], and “aspects” 109 and 145 do not make the phrase any clearer. 9.24 In mn 541 of R, Defendant states that it is clear that a component which is on one end of a device can enclose said end of the device. Defendant states that is exactly what is illustrated in original FIGs. 8B and 9J, which correspond to FIGs. 8B and 9J of the patent: the heater, a component of the cartridge, is on one end of the cartridge and encloses it. 9.25 This argument does not convince. From the outset, Defendant’s statement that Fig. 8B and 9J illustrate the heater as component of the cartridge to be on one end of the cartridge is unsupported by any reference to the description. The original Figs. 8B and 9J (reproduced below in the annotated version presented by Defendant in mn 536 and 538 R) do not illustrate the heater to be on the first end of the cartridge and the mouthpiece to be on the second end of the cartridge. Fig. 8B and 9J show the heater to enclose the first end of the FSC and the mouthpiece to enclose a second end of the FSC. If at all, the heater (or parts of the heater) could be considered to be the first end of the cartridge. But if it were considered to be the first end of the cartridge, it is then unclear, how it could enclose the first end of the cartridge that is formed by it; this would necessitate the heater to enclose itself. Likewise, if at all, the mouthpiece (or parts of the mouthpiece) could be considered to be the second end of the cartridge. But if it were considered to be the second end of the cartridge, it is then unclear, how it could enclose the second end of the cartridge that is formed by it; this would necessitate the mouthpiece to enclose itself. 9.26 Furthermore, Defendant leaves it unexplained, what indeed is meant by the double condition that the heater (1) encloses the first end of the cartridge and (2) encloses the first end of the fluid storage compartment. Defendant also leaves it unexplained, what indeed is meant by the double condition that the mouthpiece (1) encloses the second end of the cartridge and (2) encloses the second end of the fluid storage compartment. The Application to amend the patent according to auxiliary request VI, VII, VIII, IX, X, XI hence needs to be rejected also for this reason. 34 9.27 For both clarity objections, Defendant claims the claim language to be fully consistent with what is shown in the specification (mn 542 of R; mn 558 of R). For an amended claim proposed in the context of an application to amend a patent this statement addresses the issue of the consistency between the claim language of such an amended claim and the specification and in particularly in how far such a consistency would be relevant when evaluating the requirements of Art. 84. 9.28 As indicated above the claim of the granted patent (referred to as “patent claim” below) is subject to an interpretation. The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, for the interpretation of the patent claim the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. 9.29 In particular cases deviations from the strict, literal meaning of the patent claim are necessary and the present case serves as an example for this. Regarding feature 1.2.2. of the patent claim it was shown above that when taken strictly literal, the term “affixed to a first end of the fluid storage compartment” could be understood to define the “a first end of the fluid storage compartment” to be an existing (part of an) object to which the heater is affixed, namely the FSC. However, it was shown that 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 first end of the FSC” in the term “affixed to a first end of the FSC” defines the location where the heater is after having being affixed rather than being a reference to an existing (part of an) object to which the heater is affixed. Similar considerations were made as regards feature 1.2.3 concerning the mouthpiece. 9.30 Should the Defendant by way of claiming the claim language to be fully consistent with what is shown in the specification (mn 542 of R; mn 558 of R) have intended to argue that the amended claims proposed by him should be interpreted by using the description and the drawings as explanatory aids similar to the interpretation of the patent claim, the Court notes that for the present case the lack of clarity follows directly from the particular, newly chosen wording of the amendments chosen by the Defendant for the particular auxiliary request for which the Defendant did not present a convincing supporting disclosure in the application as filed (MWE 3) or any reasons why the wording of the application as filed (MWE 3) would 35 necessitate the use of the particular new wording chosen for the amendment. 9.31 Defendant did not show the application as filed (MWE 3) to contain the wording “a heater affixed to a first end of the FSC, wherein the heater encloses a first end of the cartridge (30) and the first end of the fluid storage compartment” or the wording “a mouthpiece affixed to a second end of the FSC, wherein the mouthpiece encloses a second end of the cartridge (30) and the second end of the FSC”. 9.32 In those text-portions of MWE 3 that the Defendant cited as relating to the wording “the heater encloses a first end of the cartridge and the first end of the fluid storage compartment” (paragraphs [0022], [0039], [00173], [00178], [00181], [00235], and “aspects” 95 and 140) an affixation of the heater to a first end of the FSC is not disclosed. In those text-portions of MWE 3 that the Defendant cited as relating to the wording "wherein the mouthpiece encloses a second end of the cartridge (30) and the second end of the fluid storage compartment.” (paragraphs [0023], [0041], [00183], [00187], [00241], and “aspects” 109 and 145) an affixation of the mouthpiece to a second end of the FSC is not disclosed. 9.33 The Defendant hence has not shown to the Court, how the lack of clarity that follows directly from the particular, newly chosen wording of the amendments chosen by the Defendant for the particular auxiliary request could be overcome. Defendant’s request (2) d. in the numbering of this decision 9.34 Defendant’s request (2) d. in the numbering of this decision, which is request (2) c. of DtR is to be rejected. With this request, Defendant requests a review of the subclaims. The grounds for revocation affect the Patent in its entirety. None of the further claims 2 to 10, which each build on claim 1 as granted, specify the heater to enclose the first end of the FSC and the mouthpiece to enclose the second end of the FSC . 9.35 Hence none of the further claims introduce limitations that would lead to their subject matter – in combination with claim 1, on which they build - being considered to not extend beyond the European application as filed No.19157439.1 (MWE 3), parent application 18000692.6 (MWE 4), and grandfather application WO2015/100631 (MWE 5). Defendant’s request (2) e. in the numbering of this decision 36 9.36 Defendant’s request (2) e. in the numbering of this decision, which is request (2) d. of DtR needs to be rejected. 9.37 From the outset, Defendant’s request (2) d. of DtR is unclear and already for this reason unallowable. 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. of DtR in which order. 9.38 The wording “one or more of its dependent claims as granted in combination with claim 1” leaves it undefined, which combination of claims Defendant would like the court to start with. Defendant’s request (2) d. of DtR could – as an example - be understood to mean for the Court to start with granted claim 2 in combination with claim 1 of auxiliary request 1 as much as it could mean – as an example – granted claim 6 in combination with claim 1 of the auxiliary request 1. For an orderly procedure, the requests of a party need to be precise and without ambiguity. This criterion is not met by request (2) d. of DtR. 9.39 In addition, according to Rule 50.2 RoP with Rule 30.1 (c) RoP proposed amendments, if they are conditional like in the present case, must be reasonable in number in the circumstances of the case. In the particular case, the proposed eleven conditional amendments that form the eleven auxiliary requests of request (2) c. in the numbering of this decision are considered to be the upper limit of what can be considered reasonable. The conditional amendments that are further proposed by request (2) d. of DtR are considered not reasonable in number and hence not allowed. 9.40 In addition, the auxiliary request (2) d. of DtR is not supported by any arguments from Defendant. Defendant does not argue that any of the proposed amendments that are contained in the auxiliary request (2) d. of DtR would provide particular reason to uphold the patent in the thus amended form. 10 Costs 10.1 In accordance with Article 69 UPCA and Rule 118.5 RoP, Defendant, as the unsuccessful party, the Patent being revoked entirely, has to bear the legal costs of Claimant. 37 DECISION Having heard the parties on all relevant aspects of the case, the Central Division: 1. Revokes European patent n° EP 3 504 990 with effect for the territories of Belgium, France, Germany, Italy, Luxembourg, Netherlands, Portugal and Sweden. 2. Admits documents MWE 27 to 54 into the proceedings. 3. Does not admit pages 4 -15 of Claimant’s submission of 22 April 2024, including MWE 56. 4. Admits p. 16-60 of Claimant’s submission of 22 April 2024, including MWE 57 to MWE 61. 5. Does not admit Defendant’s submission of 31 May 2024. 6. Does not admit Defendant’s Auxiliary Requests VIIA, VIIIA, IXA, XA, XIA of the submission of 3. December 2024. 7. Orders that the Registry shall send a copy of this decision to the European Patent Office and to the national patent office of any Contracting Member States concerned, after the deadline for appeal has passed. 8. Orders Defendant to bear the costs of the proceedings. NAMES AND SIGNATURES Judges Presiding judge and judge-rapporteur: Legally qualified judge : Technically qualified judge: For the Deputy-Registrar 38 Information about appeal An appeal against the present Decision may be lodged at the Court of Appeal, by any party which has been unsuccessful, in whole or in part, in its submissions, within two months of the date of its notification (Art. 73(1) UPCA, Rule 220.1(a), 224.1(a) RoP). Information about enforcement Art. 82 UPCA, Art. 37(2) UPCA, Rule 118.8, 158.2, 354, 355.4 RoP. An authentic copy of the enforceable decision will be issued by the Deputy-Registrar upon request of the enforcing party, Rule 69 RegR. ORDER DETAILS Order no. ORD 598572/2023 in ACTION NUMBER: ACT 571795/2023 UPC number: UPC CFI 314/2023 Action type: Revocation Action Related proceeding no. Not provided Not provided Not provided Not provided

Key Holdings

• European patent EP 3 504 990 is revoked in its entirety due to added matter, as claim 1 extends beyond the content of the original applications.
• The Court emphasizes the 'front-loaded approach' of UPC proceedings, requiring parties to present their full case as early as possible, leading to the inadmissibility of late-filed auxiliary requests without strong justification.
• A generous standard is applied for admitting arguments that respond to previously filed arguments, to safeguard the fundamental right to be heard.
• Claims in auxiliary requests were deemed unclear where they ambiguously stated that a component (heater/mouthpiece) encloses both the cartridge end and the fluid storage compartment end, and this ambiguity was not resolved by the specification.
• Patent claims are interpreted from the perspective of a person skilled in the art, using the description and drawings as explanatory aids, in accordance with Art. 69 EPC and its Protocol.

Tags

• Added Matter
• Auxiliary Requests
• Claim Construction
• Clarity
• Revocation

Related Rules

• Rule 4 – Lodging of documents
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 9 – Powers of the Court
• Rule 5 – Lodging of an Application to opt out and withdrawal of an opt-out
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Article 6 – Defendants Domiciled Outside Member States
• Rule 1 – Application of the Rules and general principles of interpretation
• Article 7 – Standard Terms and Languages
• Rule 2 – Supplementary protection certificate
• Rule 2 – Supplementary protection certificate
• Article 8 – Multiple Defendants and Third Parties
• Article 3 – Composition of panels
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 1 – Application of the Rules and general principles of interpretation
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 3 – Power of staff of the Registry and a sub-registry to perform functions of the Registry
• Rule 6 – Service and supply of orders, decisions, written pleadings and other documents

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