The final decision in Bitzer v. Carrier has been issued, in which the Court rejects the revocation action filed by Bitzer Electronics A/S.  Dehns acted for the defendant, and reports on the decision.

Following the oral hearing on 21 June 2024, the final decision of the Paris Central Division issued yesterday for Bitzer v. Carrier (UPC_CFI_ 263/2023).  In this matter, the Defendant, Carrier Corporation, was represented by Dehns.  A parallel opposition before the EPO is on-going.

The Court has rejected the revocation action, upholding the patent in amended form.  This is a win for Carrier and for their representatives at Dehns.

This decision reinforces a previous decision by the panel in this matter regarding the admissibility of amendments when not all of the claims have been attacked, as well as bolstering a growing body of case law on the Court’s approach to late-filed arguments and assessment of inventive step.

The decision is, of course, open to appeal by either party.

Key elements of the decision are highlighted below.

Amendments

In its Statement for Revocation, the Claimant had only sought revocation of the patent to the extent of claim 1.  In response, the Defendant requested amendment of the patent, filing several auxiliary requests.  Some of the auxiliary requests contained amendments to claim 1 based on non-attacked claims, as well as amendments to non-attacked claims for consistency with amended claim 1.

In their Defence to the Application to Amend, the Claimant asserted that amending non-attacked claims and amending on the basis of non-attacked claims contravened an approach taken in German national courts.  The Defendant argued that the German approach is unique to Germany and that the Court should instead follow the EPO’s approach in opposition proceedings.

In this decision, the Court has taken a blended approach.  The headnotes are as follows:

• The request to amend the patent which concerns both claims challenged by the revocation action, and claims not challenged by it, is inadmissible (only) with regard to these latter claims.
• In a situation in which the patent is not entirely attacked, the patent proprietor is entitled to propose amendments to the challenged claims also by inserting features, omitted in the original [attacked] claims, mentioned in the non-attacked claims.

This approach is in line with the panel’s order of 30 April 2024, in which the Court declared that request to amend the patent was inadmissible with regard to claims other than claim 1.

However, the admissibility of amendments to an attacked claim based on subject-matter from non-attacked claims is a new development in this decision.  How this might affect the approach of future revocation actions remains to be seen.

Admissibility of late-filed grounds

It isn’t new that the Court has been emphasising its front-loaded nature, but this decision emphasises just how strict the Court intends to be on this.

The Court’s headnote is as follows:

• Grounds for revocation that could have been included in the initial statement to revocation are inadmissible if they do not relate to the content of the defence raised by the opposing party or to the application to amend the patent and, therefore, do not constitute a legitimate response to them.

In points 23 to 27, it is clear that several lines of attack by the Claimant were not admitted for being late-filed.  This included attacks directed at the amended form of the patent where those attacks could have been filed from the outset.

It is clear to would-be participants in the Court that arguments cannot be held in reserve; use them or lose them!

Added matter

EPO practitioners will be well aware of the high degree of scrutiny the EPO exerts on any amendments.  In this respect, the UPC may prove to be a friendlier forum for patentees.

At point 41, for example, the Court reasons that an amendment to claim 1 does not violate Article 123(2) EPC based on the skilled person’s implicit understanding of the feature.  This is in contrast to the EPO’s Opposition Division which, in its preliminary opinion of 28 May 2024, deems the same amendment to be an unallowable intermediate generalisation.

It may be the case that the EPO changes its view (perhaps influenced by this UPC decision), but for now, it would seem that the EPO is applying a stricter approach to added matter than the UPC.

Novelty and Inventive Step

The Court’s terminology for inventive step is similar to other recent validity decisions.  Whilst not formally referencing the EPO’s problem and solution approach, the reasons identify “the specific problem encountered by the person skilled in the art” and “whether, given the state of the art, a person skilled in the art would have arrived at the technical solution claimed by the patent using their technical knowledge and carrying out simple operations”.  The conclusion was that “The teachings contained in these prior art documents do not provide any motivation to solve the technical problem” and “[the claimed invention] would not be an evident solution”.  This terminology is common in EPO validity decisions.

Perhaps the main contrast between UPC and EPO proceedings is highlighted by the judge’s reasoning (at point 80) in relation to an alleged anticipation that was not deemed to be substantiated:

“In the ‘UPC’ framework, where proceedings have an adversarial character, each party must provide adequate reasoning and evidence to support its allegations. The judge cannot compensate for insufficient illustration and evidence by seeking arguments or evidence of his or her own motion.”

Accordingly, it is confirmed that the approach of the UPC relies heavily on upfront arguments and the Court will not examine validity of its own motion, unlike the EPO.  In other words, a party has to prove each premise it relies on, unless admitted by the other side.  This was asserted by the Defendant in the Oral Hearing, and is consistent with the common law approach in various jurisdictions (including, in case of interest, the UK).