NJOY Netherlands v VMR Products (CFI, 29 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 29 November 2024 (UPC_CFI_307/2023), the Paris Central Division dismissed NJOY Netherlands’ revocation action against VMR Products’ EP 2 875 740 (a vaporizer whose cartomizer is held by two magnets of opposite polarity), which was maintained as granted for France and Germany. The decision defines the skilled person’s common general knowledge as limited to familiar sources of information in the field, such as textbooks and reference works, and holds that an isolated patent application or utility model is not part of it. It also sets out when exhibits filed with the reply are admissible and accepts that inventive step may be assessed from several starting points, the problem-solution approach not being mandatory.

Facts and procedure

NJOY Netherlands, part of the Altria group, and VMR Products, a subsidiary of Juul Labs, are competitors in the market for vapour products (paragraph 2). The patent, filed on 14 March 2014 claiming US priorities of 12 November 2013 and 10 February 2014, has effect in France and Germany, with no opposition and no opt-out (paragraph 3). The action, brought on 15 September 2023, relied solely on lack of inventive step. VMR reduced its auxiliary requests from 41 to 6 (paragraphs 1 and 4). On 9 September 2024 the value of the proceedings was set between EUR 250,000 and EUR 500,001 for the scale of ceilings for recoverable costs, and the oral hearing took place on 15 October 2024 (paragraphs 9 and 10).

The applicable law

Rules 13 and 44 RoP require the facts and evidence relied on to be indicated in the initial pleading, Rule 263 RoP governs amendments of the case and Rules 32.3, 51 and 52 RoP set the sequence of pleadings (paragraphs 14, 15, 21 and 27). Claims are construed under Article 69 EPC and its Protocol, following the Court of Appeal’s case law (paragraphs 28 to 32). Inventive step falls under Article 56 EPC (paragraph 55), and the burden of proving common general knowledge lies on the party relying on it under Article 54 UPCA (paragraph 39).

Question

Are new exhibits filed with the reply admissible, what does the skilled person’s common general knowledge cover, and was securing the cartomizer with two magnets of opposite polarity obvious over Cross or Pan, combined with that knowledge or with DiFonzo?

Decision

A revocation claimant must set out in its statement for revocation the grounds of invalidity and the prior art relied on. New grounds or new prior art amount to an amendment of the case under Rule 263 RoP. It may, however, file new facts and evidence in its reply to answer the defence, so the expert declaration and exhibits MWE 11 to MWE 28 were admissible, including for arguments closely related to the defendant’s (paragraphs 13 to 26). The part of the submission of 8 April 2024 answering the application to amend was admissible, but the « reply to the rejoinder » was not, the reply being the claimant’s last pleading (paragraph 27).

The skilled person is a mechanical engineer experienced in electronic aerosol devices, assisted where needed by an electrical engineer (paragraph 37). Common general knowledge is what comes from familiar sources such as textbooks, encyclopaedias and reference databases, and is not to be confused with all published prior art (paragraph 38). The technical problem is to provide a secure connection between the cartomizer and the chamber, VMR’s broader formulation being rejected (paragraph 46).

The problem-solution approach is only one possible method, and an assessment from several starting points, Cross and Pan, was considered more complete (paragraph 56). Cross, which places the two segments side by side, is a realistic starting point but discloses neither feature 1.2.1 nor the magnetic securing (paragraphs 57 to 66). Three Chinese applications, an individual product and a US application do not show that magnetic connectors formed part of the common general knowledge (paragraphs 67 to 74). DiFonzo, on the electromagnetic connector of a laptop power adapter, belongs to another field and would add a power requirement unsuited to a vaporizer (paragraphs 75 to 80). The same reasons apply starting from Pan, which uses screw-thread or socket connections (paragraphs 81 to 91). The action was dismissed, the patent maintained as granted without examining the auxiliary requests, and NJOY bears the costs up to the ceiling of EUR 500,001 (paragraphs 92 to 95).

Key points for practice

• Exhibits filed with the reply are admissible where they answer, or are closely related to, the defence, but new prior art used as a starting point is an amendment under Rule 263 RoP (paragraphs 21 and 26).
• An isolated patent application or utility model does not establish common general knowledge, which requires a familiar source of information (paragraphs 38 and 71).
• The Central Division accepts an inventive step assessment from several realistic starting points (paragraph 56).
• Practical point: a party relying on common general knowledge must prove it through the field’s reference sources, not through isolated patent documents (paragraphs 39 and 71 to 73).

Provisions applied

Agreement on a Unified Patent Court

Arts. 54 and 69

Rules of Procedure

Rules 13, 32.3, 44, 51, 52 and 263

European Patent Convention

Art. 56 and 69 and its Protocol on Interpretation

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024 (UPC_CoA_335/2023), VusionGroup v Hanshow, Court of Appeal, 13 May 2024 (UPC_CoA_1/2024), Court of Appeal, 21 November 2024 (UPC_CoA_456/2024), Paris Local Division, 3 July 2024 (UPC_CFI_230/2023), NanoString v President and Fellows of Harvard College, Munich Central Division, 17 October 2024 (UPC_CFI_252/2023), Seoul Viosys v Expert, Düsseldorf Local Division, 10 October 2024 (UPC_CFI_363/2023)

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.