Bitzer Electronics A/S v Carrier Corporation (UPC_CFI_263/2023)

Decision of 29 July 2024 (ORD_598395/2023) [1]

This decision concerns a revocation action brought at the Paris central division by Bitzer Electronics A/S in respect of patent EP 3414708 owned by Carrier Corporation. The patent relates to cold chain monitoring of perishable goods.

As previously reported [2], the revocation action was, unusually, directed towards only claim 1 of the granted patent, and so the Court held that any amendments to dependent claims could not be admitted. In addition, the Court refused a stay of proceedings pending the outcome of parallel opposition proceedings at the European Patent Office, on the grounds that the EPO decision would not be expected rapidly, and this refusal was upheld by the Court of Appeal. [3]

A further notable procedural aspect of the case is that additional novelty attacks were raised by the claimant in the reply to the defence, and the Court decided that these late-raised additional attacks should not be considered. Conversely, an application requesting admission of a 13th and 14th auxiliary request filed by the patentee after closing of the written procedure was also refused in view of the short time before the oral hearing.

The patentee offered an unconditional amendment to limit claim 1 to a plurality of environmental sensors to monitor temperatures, where the claim as granted had specified “at least one environmental sensor” to monitor “at least one environmental parameter”. Added matter, insufficiency and clarity objections against these claims were rejected. However, the claim was held to lack novelty with regard to a prior patent document WO2016/140969. Auxiliary request 1 was held to involve added matter.

Therefore Auxiliary request 2 was considered. This additionally specified that each environmental sensor comprises a dedicated power source. Added matter objections against the amended claim were rejected. The claim was considered novel with regard to WO2016/140969 and other documents cited by the claimant.

Turning to inventive step, the Court considered that the problem aimed to be solved by the patent is increasing the efficiency of the system of monitoring of environmental parameters. The characterising feature of the claim is that the apparatus is “adapted to adjust the sampling rate depending on at least one of the environmental altering event and the user induced event”. The Court held that the closest prior art documents EP 2029987 and WO 03/052354 did not teach this feature, which has the effect of reducing the energy-intensive process step of transmitting data to the controller and thus increasing the energy efficiency of the system. In addition the Court noted that the claimant had not adequately addressed the distinctive feature of auxiliary request 2 of having a dedicated power source for each environmental sensor, which according to the Court appeared to be able to contribute to solving the technical problem of increasing the energy efficiency of the system. Accordingly, an inventive step was acknowledged. Further inventive step arguments were considered late filed and not to relate to the defence raised by the patentee, and so were not considered.

Accordingly, the Court ordered the patent to be maintained in amended form, according to auxiliary request 2. Since each party was successful in part, it was ordered that the costs of the Court and of the parties should be borne by the claimant in the amount of 60%, and by the defendant in the amount of 40%.

[1] https://www.unified-patent-court.org/en/node/956

[2] https://eipamar.com/en/knowledge-hub/article/unchallenged-claims-of-patent-cannot-be-amended/

[3] https://eipamar.com/en/knowledge-hub/article/upc-court-of-appeal-guidance-on-stay/