NJOY Netherlands v Juul Labs International (CFI, 28 February 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 28 February 2025, the Paris Central Division, ruling on NJOY Netherlands’ revocation action against Juul Labs International’s EP 3 504 989 (“Vaporization device systems”), holds that claim 1 as granted contains added matter, but maintains the patent as amended by Auxiliary Request I filed on 22 July 2024, for Belgium, France, Germany, Italy, the Netherlands, Portugal and Sweden. Each party bears its own costs. The decision shows a strict application of the bar on intermediate generalisation: a feature taken from an embodiment cannot be isolated where it is intrinsically linked to another element, but the proprietor may cure the defect by reintroducing only the functionally linked element, without importing the whole figure.

Facts and procedure

The revocation action was filed on 15 September 2023. Juul’s preliminary objection was rejected, and that rejection was upheld by the Court of Appeal. The patent derives from a divisional application filed on 15 February 2019 from the international application published as WO 2015/100361, oppositions were pending at the EPO when the action was filed, NJOY not being a party to them. Juul reduced its 55 auxiliary requests to eight, which the division admitted (paragraph 9.3). NJOY relied on added matter, lack of novelty and lack of inventive step, in particular over Chen (CN 101843368 A) and Cohen (US 2011/0036346 A1).

The applicable law

The grounds for revocation fall under Art. 138(1)(a) and (c) EPC, read with Arts. 52, 54, 56, 76(1) and 123(2) EPC. Claims are construed under Art. 69 EPC and its Protocol (paragraphs 7.2 to 7.6). Added matter is assessed by asking what is directly and unambiguously derivable from the application as filed (paragraph 8.2). The procedure is front-loaded: the claimant must present its case in the statement for revocation, although a generous standard applies to replies to the other side’s arguments (paragraphs 5.3 and 5.4).

Question

Does claim 1, which requires a channel air inlet to be left exposed, have a basis in the application as filed without the feature of the notch in the device body, and is Auxiliary Request I allowable, novel and inventive?

Decision

The division holds that the basis relied on by Juul, claim 159 and paragraph [00170] of WO 2015/100361, is insufficient: claim 159 contains no notch, and paragraph [00170] and Figure 14 intrinsically link the exposure of the air inlet to the notch, whereas granted claim 1 separates them (paragraphs 8.5 to 8.13). The argument that the notch may be varied is rejected and the patent cannot be maintained as granted (paragraphs 8.15 and 8.16). Auxiliary Request I, which specifies that the size of the air inlet is defined by the configuration of the notch, is allowable: the other elements of Figure 14 (battery, circuit board, sensor) are not linked to the air inlet, and “configuration” covers size and shape without requiring any particular notch (paragraphs 9.4 to 9.16). It is novel over Chen, whose semicircular holes are not a notch exposing a separate inlet, and over Cohen (paragraphs 9.17 to 9.37), and NJOY fails to establish obviousness (paragraphs 9.38 to 9.41). On procedure, the division admits the Hajaligol expert declaration and the rejoinder, but excludes pages 4 to 14 of NJOY’s submission of 22 April 2024 and Juul’s submission of 31 May 2024 (paragraphs 5.6 to 5.17). Each party bears its own costs under Art. 69(2) UPCA and Rule 118.5 (paragraph 11.1).

Key points for practice

• A feature taken from an embodiment cannot be claimed in isolation where the description intrinsically links it to another element. Only the functionally linked element needs to be reintroduced, however (paragraphs 8.11 to 8.13 and 9.7 to 9.9).
• Cutting a large number of auxiliary requests down to a short set during the proceedings is accepted under Rule 9.2 (paragraph 9.3).
• Front-loading does not prevent a party from answering the other side’s arguments, but submissions going beyond that scope may be excluded in whole or in part (paragraphs 5.4 and 5.15 to 5.17).
• Practical point: proprietors should prepare auxiliary requests that reintroduce the structural element inseparable from the challenged feature, without importing the entire embodiment.

Provisions applied

Agreement on a Unified Patent Court

Arts. 69(2), 73(1) and 82

Rules of Procedure

Rules 9.1, 9.2, 19.1(a), 32.3, 36, 43.3, 44, 48, 52, 55, 58, 118.5, 220.1(a) and 224.1(a)

European Patent Convention

Arts. 52, 54, 56, 69, 76, 84, 123 and 138

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, VusionGroup v Hanshow, Court of Appeal, 13 May 2024, Umedwings v Abbott Diabetes Care, The Hague Local Division, 19 June 2024

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.