Paris Central Division of the UPC has provided guidance on what constitutes common general knowledge (“CGK”)

Netherlands B.V. v VMR Products LLC [UPC_CFI_307/2023] –Paris Central Division (Catalozzi, Zhilova, Tillmann) – 29 November 2024

The Paris Central Division of the UPC has provided guidance on what constitutes common general knowledge (“CGK”) in Njoy v VMR [UPC_CFI_307/2023]. Despite the claimant, Njoy, accepting that some of the defendant’s VMR’s evidence constituted CGK, the court came to a different view. The court saw CGK as information that was commonly known to the skilled person from written sources or practical experience in the relevant technical field at the priority date. However, the court warned that CGK should not be confused with publicly available knowledge, which may not be general and common. The court also considered prior art from a different technical field and assessed the extent to which this document could be relied upon to demonstrate obviousness. Finally, in what now appears to be an emerging trend, the court warned against an overly strict application of the UPC’s “front-loaded” system and allowed the claimant to allege new facts insofar as they supported facts that had been timely filed yet disputed by the defendant.

Background

This is the fourth of a series of nine revocation actions filed by Njoy against Juul and its subsidiary, VMR. This judgement brings the scores level between the parties, with VMR’s patent in this case being maintained as granted.

Njoy filed a revocation action against VMR’s European patent, EP 2875740B1, before the Paris Central Division. The patent had granted in October 2018 and was in force in France and Germany, with no EPO oppositions or UPC opt-outs filed. Njoy challenged the validity of the patent on the grounds of inventive step, with both parties presenting their views as to why a known product, and some utility model and patent applications constituted CGK in the technical field in question. Although VMR appeared to accept the utility models as constituting CGK, the court disagreed, instead concluding that utility models did not demonstrate design solutions that were generally applicable.

Njoy also referred to a secondary reference, “Di Fonzo”, which they alleged pointed towards one of the distinguishing features of the claimed invention, albeit in a neighbouring technical field. However, the court held that, because Di Fonzo related to laptops, it related to a technical field that was too remote for it to be considered by the skilled person in the assessment of inventive step.

The Judgment

Since the UPC Court of Appeal (UPC_CoA_335/2023) overturned 10x Genomics’ preliminary injunction against Nanostring in early 2024, we have had a clearer indication of the approach that the UPC will take on inventive step. In fact, in Nanostring v President and Fellows of Harvard College (UPC 252/2023), the Munich Central Division provided a step-by-step summary of the legal framework for inventive step. A summary of this approach can be found in our earlier article here.

The present judgment builds on this framework by highlighting the importance of the qualifications and experience of the skilled person(s) and their common general knowledge. In this connection, the court emphasised that both claim interpretation and inventive step should be assessed from the point of view of the skilled person. While earlier UPC decisions, including Sanofi v Amgen (UPC 1/2023) and Nanostring v President and Fellows of Harvard College, defined the skilled person, the court in this decision examined the qualifications and experience of the skilled persons in greater detail because of conflicting submissions made by the parties on this point.

While noting that fundamental scientific laws, such as thermodynamics and fluid dynamics, influenced the way in which the invention worked, the court discounted qualifications in the field of chemistry and physics from the definition of the skilled person. Instead, the court held that the skilled person was a mechanical engineer, who might be assisted by an electrical engineer for specific features of the device that they could not handle. The court also assessed the nature of the skilled person and their common general knowledge in the same part of the decision, highlighting that the former may have an impact on the latter and vice-versa.

In relation to CGK, the court indicated that this was information that was commonly known to a skilled person from written sources or from practical experience in the relevant technical filed. The CGK included knowledge directly available from familiar sources relating to the specific technical field at the priority date but was not to be confused with publicly available knowledge that may not be general and common. Familiar sources of information typically included sources to which a skilled person might regularly turn for guidance of standard design solutions, such as standard textbooks, encyclopaedia, manuals, handbooks, dictionaries and databases. A familiar source of information, however, should not be confused with all publicly available prior art documents.

In the present instance, VMR attempted to establish CGK by submitting a declaration that referred to three Chinese utility models. These utility models described the use of magnetic connectors for coupling an e-cigarette cartomizer to a corresponding vaporizer. In their reply to the defence to revocation, Njoy appeared to accept these as part of the CGK. However, the court held that the three utility models could not be considered as familiar sources of information. From the skilled person’s standpoint, a singular patent or utility model may suggest a particular solution, but not standard design solutions that were generally applicable. Accordingly, while publicly known, the utility models were not considered by the court to be part of the CGK as they did not provide information that was common or general in nature.

The same was deemed to be true with regards to the individual product and patent application that Njoy alleged was CGK. Even if these references disclosed the claimed solution, neither of the sources could be considered as familiar in the sense that a skilled person would turn to them as guidance for general design solutions. Njoy also argued that magnetic connectors where commonly used to couple components to everyday electromechanical devices. However, Njoy did not provide evidence that such design solutions had found their way to the CGK of the skilled person in the present technical field. Again, therefore, while this information was known, it was not common or general.

Because of the technical features that distinguished the claimed subject matter from the starting document could not be demonstrated to be part of the CGK, Njoy’s lack of inventive step attacks based on CGK failed.

As an alternative line of attack, Njoy also tried to argue that the technical features that distinguished the claimed subject matter from the starting document were known from a neighbouring field evidenced by the secondary reference, DiFonzo. DiFonzo, however, was concerned with laptop accessories and therefore in a different technical field from the invention, namely e-cigarettes. In rejecting Njoy’s arguments, the court did not rule out the possibility of combining documents from different fields. However, the court considered this to be inappropriate in this instance because “reflections on the applicability of DiFonzo to technical fields other than that of laptops [did] not form part of the disclosure of DiFonzo”. The court also noted that nothing in the starting document would have motivated the skilled person to look in the technical field of laptop accessories. Accordingly, Njoy’s suggestion that a skilled person would turn to DiFonzo was considered to be based on hindsight.

Conclusions

This decision is interesting because it links the qualifications and experience of the skilled person and their CGK. The court also confirmed that CGK included knowledge directly available from familiar sources of information that a skilled person would regularly turn to for guidance on standard design solutions. Accordingly, what might be deemed to be a familiar source may vary depending on the qualifications and experience of the skilled person.

The court did not consider individual products, utility model and patent applications as CGK. Although such sources were publicly known and suggested specific solutions, they did not describe standard design solutions that were generally applicable. EPO practitioners will not be surprised by this finding, as the EPO takes a similar approach where patent documents are not generally considered as evidence of CGK, except in limited circumstances in new fields where information may not yet have made its way into textbooks or monographs1.

Another point of note is that the e.g., utility models and patent applications relied upon by the parties were referred to as part of a declaration and expert opinion filed by the parties. Yet, the contents of the declaration and opinion were not discussed in the decision. It is difficult to say why this was the case; the reasons may have been fact specific. However, by way of contrast, in Alexion v Samsung Bioepis (ORD_38059/2024), the Hamburg LD relied on expert opinion to determine the CGK of the skilled person at the priority date.

While this judgment provides better clarity on the documents that may be considered CGK, there is still some variability as to how expert opinion is assessed. Although the UPC will take expert evidence into account, the courts have not consistently heard from experts at hearings, preferring sometimes to rely on written evidence or the experience of the technically qualified judges. It will be interesting to see if guidance emerges as to when expert witnesses might be heard to establish e.g., CGK.

This article was prepared by Partner & Patent Attorney Hsu Min Chung.