Paris Local Division rules on validity of juicer patent, scope of R. 19 RoP
Hurom Co., Ltd v. NUC Electronics Co., Ltd, NUC Electronics Europe GmbH & Warmcook (UPC_CFI_163/2024)
Order of 23 May 2025 (Order no. ORD_69293/2024[1] relating to EP 3 155 936)
The Paris Local Division of the Court of First Instance ruled on an infringement case concerning a patent for a juicer. On validity, unconditional amendments by the Claimant were found not to add matter, but the patent was held invalid for lack of inventive step. Further, the Court held that the Defendant’s objection based on Art. 34 UPCA did not fall within the scope of R. 19 RoP. The Claimant’s request for infringement remedies in Poland, not a participant in the UPC, was admissible, but unsubstantiated.
Background
The Claimant, Hurom Co., Ltd (“Hurom”), lodged an infringement action at the Paris Local Division against the Defendants, NUC Electronics Co. (“NUC”), NUC Electronics Europe GmbH (“NUC”) and Warmcook, in respect of patent EP 3 155 936 (“EP ‘936”). NUC Electronics Co., Ltd, based in South Korea, is the parent company of the NUC Group, a designer, manufacturer and distributer of kitchen appliances (sold under the “Kuvings” name), while NUC Electronics Europe GmbH is a German subsidiary of the NUC group, responsible for the sale of NUC products in Germany. Warmcook is a French company, independent of the NUC Group, and acts as an importer and distributer of kitchen appliances including NUC juicers. The three Defendants were represented by the same attorneys.
No preliminary objection was raised under R. 19 RoP in response to the infringement action. The Defendants filed a statement of defence with a counterclaim for revocation. In its reply to the statement of defence and its defence to the counterclaim, the Claimant rebutted the arguments for revocation of the patent and filed an application to unconditionally amend the patent, as well as an auxiliary request with further amendment.
Patent
The patent relates to a juice squeezing module for a juicer. Specifically, the juice squeezing module improves the structure of a brush rotating means for driving a rotating brush. In use, the rotating brush continuously brushes an inner peripheral surface of a juice squeezing drum and an outer peripheral surface of a screen drum, which helps to clear remnants from the juicer.
Hurom unconditionally amended claim 1 to include subject matter that was contained, at least in part, in claims 1, 2 and 3 of the patent as granted. These features describe the specific gearing arrangement of the brush rotating means.
Validity of the patent (as unconditionally amended)
Added matter
The Defendants objected to the patent as unconditionally amended on the basis that the amended claims contained subject matter which extended beyond the contents of the patent application as filed. Hurom disputed this argument.
The Defendants argued that one of the features of the amended claim 1, directed at the position of the brush rotating means, had the effect of introducing a feature to claim 1 that partially defines an embodiment described in the original application but omits several specific and essential features of the embodiment, therefore resulting in an unallowable intermediate generalisation of the application as filed. However, the Court rejected this attack, determining that the disputed feature in the claim was disclosed in the application as filed, and the missing features of the embodiment were not inextricably linked with that included in the claim. As a consequence, it was held that the amendment did not add matter.
Another dispute hinged on interpretation of the phrase ‘connected to’, which was used in the amended claims. The original wording of claim 3 defined a configuration in which a first shaft gear is ‘interposed between’ the driving shaft and the power connector. This wording is repeated in the detailed description with reference to a first embodiment. A second embodiment used the phrasing ‘engaged’. The Defendants argued that the term “connected to” represented a generalisation of the scope of the application as filed. The Claimant responded that the term ‘interposed’ should be interpreted more broadly, and in fact already covers both embodiments. The Court considered that the skilled person would regard the term ‘connected’ as an appropriate concept that covers both embodiments, justifying this conclusion with, amongst other things, a statement in the description that the structure of the brush rotating means may be freely varied.
Further added matter objections directed at the dependent claims were also rejected by the Court. The Court rejected the Defendants’ apparent argument that, for each amendment, the features should be literally present in the application – the Court held that this would be an unduly strict criterion, and considered that features can be unambiguously derivable from the application as filed without requiring verbatim basis.
Inventive step
Notwithstanding the failed added matter attacks, each of the unconditionally amended claims were held to lack inventive step over CN 202365584 U in view of KR 20130016748 A.
Auxiliary request
The Claimant requested an additional set of amended claims. However, these were a combination of features in the above claims that were already found to lack inventive step, and so no further discussion of the auxiliary request was deemed necessary.
Jurisdiction of the UPC concerning infringement in Poland
Hurom requested that the Court rule on an injunction and remedies concerning infringement in Poland (which is not a participant in the UPC) on the basis of the patent as granted. The Court noted that the Polish part of EP ’936 could not be revoked by the UPC, nor amended. Accordingly, the only possible request concerning the acts of infringement must relate to the patent as granted.
The Defendants argued in its statement of defence that the UPC lacks jurisdiction under Art. 34 UPCA to rule on injunctions and remedies concerning acts of infringement committed in Poland. Hurom responded that the objection should have been raised as a preliminary objection pursuant to R. 19 RoP within one month of the service of the statement of claim, and so the Defendants’ objection is late and should be declared inadmissible. The Court determined that a preliminary objection under R. 19 RoP is limited to three matters: the jurisdiction and competence of the UPC, the competence of a division and the language of the statement of claim. Under R. 19 RoP, the international jurisdiction of the UPC (Art. 31 UPCA), the substantive jurisdiction of the UPC (Art. 32 UPCA and the territorial jurisdiction amongst divisions (Art. 33 UPCA) may be challenged. The Court held that the objection raised by the Defendants related to the territorial scope of a UPC decision (Art. 34 UPCA), rather than the jurisdiction of the UPC, and so R. 19 RoP did not apply. The Defendants’ objection was therefore deemed admissible.
Hurom’s claim concerning alleged infringement in Poland was deemed admissible. However, on the merits, the Court decided that the Claimant did not produce sufficient evidence relating to alleged infringement by the products in question – the Claimant only alleged that the Kuvings and Warmcook websites are accessible throughout Europe, and the turnover figures Hurom provided did not give any indication as to whether they relate to the allegedly infringing products. Consequently, Hurom’s claim for infringement based on the Polish part of the patent was not considered to be well-founded, and so the claim was dismissed.
The infringement action did not concern itself with the UK part of the patent.
Decision
EP ’936 was therefore revoked in the Netherlands, France, Germany and Italy. Hurom was ordered to pay the costs of the proceedings in their entirety.