Juul Labs ahead in battle with NJOY but fight continues at Court of Appeal

NJOY wants the Unified Patent Court to remove nine patents protecting Juul Labs’ vaporizer technology from the market. For this reason, the company filed revocation actions in September 2023 at the Paris central division. In the meantime, the first instance court has ruled on all nine cases. As things stand, five decisions have favoured the patent holders Juul Labs and its subsidiary VMR Products, while four have favoured NJOY.

The court handed down its latest decision at the end of February, but it was only published last week. The central divison’s 1st panel upheld EP 3 504 989 in amended form for the territories of Belgium, France, Germany, Italy, the Netherlands, Portugal, and Sweden (case ID: UPC CFI 312 /2023).

Previously, the 1st panel of the same court invalidated Juul Labs’ EP 3 504 990 due to added matter (case ID: UPC CFI 314 /2023). The court has not yet published the judgment.

In January, the central division’s 2nd panel dismissed NJOY’s revocation claim against EP 3 613 453 and upheld the patent in amended form (case ID: UPC_CFI_310/2023). Also in January, the 2nd panel ruled that EP 3 626 092 shall be maintained as granted, thus rejecting NJOY’s revocation claim (case ID: UPC_CFI 311/2023). Only a few days earlier, the central division’s 1st panel revoked Juul Labs’ EP 3 430 921 (case ID: UPC CFI 316 /2023).

Four judgments before Christmas

In winter 2024, the Paris central division handed down the first four judgments in the nine revocation actions brought by NJOY Netherlands against Juul Labs and VMR Products.

In early November 2024, the 1st panel confirmed Juul Labs’ EP 3 504 991 as inventive (case ID: UPC_CFI_315/2023). At the same time, UPC judges declared Juul Labs’ EP 3 498 115 invalid (case ID: UPC_CFI_309/2023).

In late November, the 2nd panel rejected NJOY’s revocation claim against VMR Products’ EP 2 875 740 (case ID: UPC_CFI_307/2023). The same panel also declared VMR’s EP 3 456 214 invalid in its entirety (case ID: UPC_CFI_308/2023).

The central division’s 1st panel comprised presiding judge François Thomas and Maximilian Haedicke. The 2nd panel consisted of presiding judge Paolo Catallozzi, Tatyana Zhilova. In addition, German patent attorney Max Tilmann was involved in all nine cases as technically qualified judge.

Court of Appeal to have final word

The dispute is likely to continue for some time. As JUVE Patent has learned, both parties have filed appeals against some of the decisions. This applies to at least three of the rulings. The deadline for lodging an appeal in the 2025 proceedings has not yet lapsed. Should the opponents fail to reach a settlement, they will face each other at the Court of Appeal later this year.

The same counsel represented the companies at the first instance. Henrik Holzapfel, partner at McDermott Will & Emery, filed nine revocation actions for NJOY Netherlands against the two competitors. McDermott lawyers Laura Woll and Lisa Nassi, as well as European patent attorney Diana Pisani provided support. Patent attorney Mathias Karlhuber of Cohausz & Florack was co-counsel and provided technical expertise.

Bernhard Thum of Munich-based patent attorney firm Thum IP represents the two defendants. In most cases, patent attorneys Jonas Weickert and Andreas Mötsch provided support. Since the dispute broke out, Tobias Wuttke and Tilmann Müller of Bardehle Pagenberg have provided legal support to the patent attorney team.