UPC_CoA_71/2025

Decisions and documents (1)

• 2025-12-29order on merits

  Appellant:

  VMR Products LLC

  Respondent:

  NJOY Netherlands B.V.

  dismissed

  - If an Application to amend the patent is lodged, the claimant shall lodge a Defence to the Application to amend the patent (R. 43.3 RoP). Where appropriate in view of the proposed amendments, the Defence to the Application to amend the patent may contain submissions in accordance with R. 44(d) to (h) RoP and alternative non-infringement submissions (R. 32.2 RoP). - The Defence to the Application to amend the patent does not provide the claimant with an opportunity to introduce new grounds of invalidity in relation to the patent as granted, such as new prior art considered either novelty destroying or convincing starting points for the assessment of lack of inventive step, unless leave to amend the case is granted (R. 263 RoP). This means that a distinction must be made between the grounds, facts and evidence relied on in relation to the patent as granted and those relied on in relation to the proposed amendments. - Under the front-loaded procedural system of the UPC, the parties are required to set out their full case as early as possible (RoP, preamble at 7). Nevertheless, specific new arguments may be admitted into the proceedings in consideration of specific circumstances of the case (CoA 21 November 2024, UPC_CoA_456/2024, OrthoApnea). The provisions must also be interpreted in the light of the principle of proportionality (RoP, preamble at 3). R. 44 RoP requires an “indication” of the facts relied on which contradicts an overly strict application. - Furthermore, fairness (RoP, preamble at 5) in the application of the adversarial principle may require that the claimant in an action for revocation be allowed to introduce new facts and evidence in response to the Statement of defence. This may include evidence to prove a point already made by the claimant on the common general knowledge of the skilled person, or to rebut evidence brought forward by the defendant on this point.

  Judge: Rian Kalden • Panel: Ingeborg Simonsson, Wiem Samoud, Andrea Scilletta, Patricia Rombach, Rian Kalden🔒 Unlock Official PDF