BITZER Electronics v Carrier (CFI, 29 July 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 29 July 2024 (UPC_CFI_263/2023, ACT_555899/2023), the Paris Central Division dismissed BITZER Electronics’ revocation action against claim 1 of Carrier Corporation’s EP 3 414 708, which concerns cold chain monitoring of perishable goods, and maintained the patent as amended by auxiliary request II. The claim as granted was held to lack novelty over an earlier application falling under Art. 54(3) EPC. The decision clarifies the rules on amendment where the patent is only partly attacked and sanctions late new grounds. Costs are split, 60% to be borne by the claimant.

Facts and procedure

The action, filed on 28 June 2023, targeted claim 1 only. On 20 November 2023, Carrier filed a defence and an application to amend (main request and twelve auxiliary requests). A stay pending the EPO opposition was refused on 8 January 2024, and that refusal was upheld on appeal on 28 May 2024. By order of 30 April 2024, the panel held the application to amend inadmissible for claims other than claim 1 (paragraphs 1 to 16). Auxiliary requests 13 and 14, filed on 10 June 2024, were disregarded as moot (paragraph 22).

The applicable law

The division applies Arts. 54(3), 56, 83 and 123(2) EPC, Art. 76(1) UPCA, which binds it to the subject matter of the dispute, and Rules 105 and 263 RoP.

Question

May the proprietor of a partly attacked patent amend the challenged claim with features from non-attacked claims, and may the claimant raise new grounds of revocation in its reply?

Decision

Amending the patent in the proceedings is a defence: it is available only to the extent needed to answer the challenge, and the UPC may not assess validity beyond the grounds raised (Art. 76(1) UPCA) (paragraphs 17 to 19). An application to amend that also covers non-challenged claims is inadmissible only as regards those claims (paragraph 20), but the proprietor may introduce into the challenged claim features taken from the non-attacked claims (paragraph 21). The new attacks in the reply (novelty over MB5 and MB6, inventive step over MB4 and MB7), which could have been included in the statement for revocation and answer neither the defence nor the amendment, are disregarded, in line with the front-loaded nature of the proceedings (paragraphs 23 to 27).

On the merits, the parts of application MB2 identical to its priority document enjoy priority from 2 March 2015 and are prior art under Art. 54(3) EPC (paragraph 54). MB2 discloses all the features of claim 1 of the main request (paragraph 57), auxiliary request I does not overcome that citation (paragraphs 67 to 69). Auxiliary request II, which requires a plurality of temperature sensors each with a dedicated power source, is novel (paragraphs 70 to 80). It involves an inventive step: the problem is increasing the efficiency of the monitoring system, and the dedicated power source for each sensor contributes to solving it (paragraphs 82 and 89), MB2, published after the priority date, is left out of that assessment (paragraphs 92 and 93). As the action failed only because of the limitation, costs are borne 60% by the claimant and 40% by the defendant, the value of the action having been set at EUR 250,000 (paragraphs 96 and 97).

Key points for practice

• In a partial revocation action, an application to amend is admissible only for the challenged claims, but may borrow features from the non-attacked claims.
• A ground of revocation that could have been raised in the statement for revocation is inadmissible in the reply if it does not answer the defence or the amendment.
• An earlier application published after the priority date may destroy novelty (Art. 54(3) EPC) but plays no part in inventive step.
• Practical point: a proprietor that saves its patent only through a limitation during the proceedings may bear part of the costs.

Provisions applied

Agreement on a Unified Patent Court

Art. 76(1)

Rules of Procedure

Rules 105 and 263

European Patent Convention

Art. 54(3), Art. 56, Art. 83 and Art. 123(2)

Case law cited

10x Genomics v NanoString, Court of Appeal, 26 February 2024, Paris Local Division, 3 July 2024, UPC_CFI_230/2023

Related decisions

• Carrier v BITZER Electronics, 8 January 2024, order refusing a stay.
• Carrier v BITZER Electronics, 30 April 2024, panel order on the admissibility of the application to amend.
• Carrier v BITZER Electronics, 28 May 2024, Court of Appeal order on the stay.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.