By Timothy S. Donahue
Top Takeaways:
- UPC Court of Appeal upheld the revocation of VMR’s European vape patent, finding no inventive step.
- Judges ruled that adding a cartridge viewing window was an obvious design choice based on prior art.
- The decision leaves EP3456214 fully invalidated across UPC jurisdictions.
An appeals panel at the Unified Patent Court has dealt a final blow to a European vaping patent held by VMR Products LLC, ruling that the claimed design lacked an inventive step over existing prior art.
In a decision dated Dec. 29 and made public this week, the UPC Court of Appeal rejected VMR’s attempt to reinstate patent protection after NJOY Netherlands BV’s successful challenge. The court upheld a 2024 ruling by the UPC Court of First Instance, finding that the patent—EP3456214—lacked inventiveness because it merely added a viewing window to an electronic cigarette’s outer shell, allowing users to see the internal cartridge.
The appellate judges concluded that such a modification would have been obvious to a person skilled in the art. According to the ruling, an earlier U.S. patent already disclosed an e-cigarette incorporating all of the features claimed by VMR, except for the cartridge window. The court said that, when combined with general technical knowledge, that prior art made adding a window an entirely routine design choice.
“The skilled person wishing to provide a vaporizer that facilitates checking the status of the inserted cartomizer, would have considered as a routine adaption the inclusion of a window,” the court wrote, describing the feature as a “well-known general means for everyday appliances and devices,” with a result that was “readily predictable.”
VMR argued that its design allowed users not only to monitor the e-liquid cartridge but also to inspect certain internal electrical components. The court was unpersuaded, noting that the patent itself did not establish any functional relationship between the placement of the window and the device’s internal battery contact points. The judges said there was “no synergy” among the claimed features that could support an inventive step.
The appellate panel further noted that an earlier patent already disclosed an e-cigarette with a cartridge-level check window, reinforcing the conclusion that VMR’s claims did not rise above what was already known. VMR’s attempts to salvage the patent through amendments were also rejected, with the court ruling that none of the proposed changes cured the lack of inventiveness.
VMR, based in San Francisco, appealed after losing at first instance, but the Court of Appeal’s decision now leaves the European patent definitively revoked. A representative for NJOY declined to comment, and VMR did not immediately respond to a request for comment.
The ruling underscores the UPC’s willingness to apply a strict standard when assessing incremental design features in the vaping sector, particularly when courts find that claimed innovations fall within the realm of routine engineering rather than genuine technical advancement.
