Patents: Philip Morris v RAI

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Patents Court (Mr Justice Meade) Philip Morris Products, SA and another v RAI Strategic Holdings, Inc and another [2021] EWHC 537 (Pat) (9 March 2021)

This was an action for revocation of European Patent (UK) 3 398 460 B1 ("460") and European Patent (UK) 3 491 944 B1("944") and a counterclaim for infringement by the products shown above. The action and counterclaim came on for trial before Mr Jutrice Meade between 5 and 12 Feb 2021. At para [223] of his judgment in Philip Morris Products, SA and another r v RAI Strategic Holdings, Inc and another [2021] EWHC 537 (which he handed down on 9 March 2021, the learned judge held that the patents were invalid for added matter and obviousness but had the patents been valid they would have been infringed.

The Inventions

Both patents are divisionals from PCT Application WO 2008/108889 for a tobacco-containing smoking article.  The judge referred to that application as "the Grandparent Application" in his judgment.  Patent 460 is for an aerosol-generating device with a housing and a cigarette and 944 is for a cigarette “for use with” an aerosol-generating device.  Mr Justice Meade discussed the patents for those inventions and their claims between para [50] and para [77] of his judgment.

The Issues

At para [10] of his judgment, Mr Justice Meade identified the issues in dispute as follows:

"i) The nature of the skilled addressee (a very modest dispute, at most).
ii) The scope of the common general knowledge (this is mainly relevant to obviousness).
iii) Added matter. There are three main attacks against all the relevant claims of both Patents and two subsidiary attacks against EP944 only.
iv) Obviousness over prior art referred to as Morgan.
v) An allegation by PMI in support of obviousness that a key claim feature was arbitrary or reflected no technical contribution.
vi) Whether the IQOS products infringes. This depends purely on claim construction, there being no dispute of fact.
vii) Whether the Third Party is an exclusive licensee. PMI made no admission as to this so I have to decide it."

His lordship considered the issue of the validity of the patents first starting with added matter and moving on to obviousness.   He then discussed whether they had been infringed,    

Added Matter

The Law

Mr Justice Meade referred to para [55] of Lord Justice Floyd's judgment in Conversant Wireless Licensing SARL v Huawei Technologies Co. Ltd. [2020] EWCA 1292 for the applicable legal principles:

“Relevant legal principles
[55] In AP Racing Ltd v Alcon Components Ltd [2014] RPC 27 I summarised the law on added matter in this way:

'7. Section 72 (1) of the Patents Act 1977 provides:

'(1) Subject to the following provisions of this Act, the court or the comptroller may on the application of any person by order revoke a patent for an invention on (but only on) any of the following grounds, that is to say –
.. .
(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, . . .'

This provision is based on art.138 (1) (c) of the European Patent Convention, which provides so far as material:

'(1) Subject to Article 139, a European patent may be revoked with effect for a Contracting State only on the grounds that:
...
(c) the subject matter of the European patent extends beyond the content of the application as filed. ..;”

8. The issue of added matter falls to be determined by reference to a comparison of the application for the patent as filed and the granted patent. As Aldous L.J. said in Bonzel v Intervention Ltd (No 3) [1991] R.P.C. 553 at p.574:

'The task of the Court is threefold:

(1) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.
(2) To do the same in respect of the patent as granted.
(3) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.'

9. In the end the question is the simple one posed by Jacob J. (as he then was) in Richardson-Vick Inc’s Patent [1995] R.P.C. 568 at p.576 (approved by him as Jacob L.J. in Vector Corp v Glatt Air Techniques Ltd [2007] EWCA Civ 805, [2008] RPC 10 at [4]):

'I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.'

10. The policy behind the rule against adding matter was also examined in Vector v Glatt at [5] to [6]. One of the reasons for the rule which was identified is that third parties should be able to look at the application and draw a conclusion as to the subject matter which is available for supporting a claimed monopoly. If subject matter is added subsequently the patentee could obtain a different monopoly to that which the application originally justified.'

[56] The Bonzel formulation was expanded on by Kitchin J (as he then was) in European Central Bank v Document Security Systems [2007] EWHC 600 (Pat) (in a passage subsequently approved by this court in Nokia Corporation v IpCom GmbH & Co KG (No. 3) [2013] RPC 5 at [7]):

'97. A number of points emerge from this formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure (s.130 (3) of the Act), though clearly not everything which falls within the scope of the claims is necessarily disclosed.
98. Second, it is the court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge.
99. Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed.
100. Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: i [2001] RPC 25 at [195]–[202]. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application.
101. Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at para. [9] of its reasons) that the idea underlying Art.123(2) is that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At para.[16] it explained that whether an added feature which limits the scope of protection is contrary to Art.123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties.
102. Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification.”

[57]. When amendment of a granted patent is being considered, the comparison to be made is between the application for the patent, as opposed to the granted patent, and the proposed amendment. The form of the granted patent before amendment does not come into the comparison: see Nokia v IpCom at [8]. The parties argued the present case by reference to the disclosure of the granted patent, which I have summarised above because they were agreed that it was in all material respects identical to the disclosure of the application.
[58]. A particular type of added subject matter is “intermediate generalisation”. In Palmaz’s European Patents [1999] RPC 47, Pumfrey J described this at p.71 as follows:

'If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called “intermediate generalisation'
'113. I also found helpful the discussion by Kitchin LJ (as he then was) in Nokia v. IPCom [2012] EWCA Civ 567:

'53 Then, in decision T 0331/87, Houdaille/Removal of n  feature [1991] E.P.O.R. 194, the TBA laid down a three part test at [3]–[6]:

'3. For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art in what has been expressly mentioned (Guidelines, Part C, Chapter VI, No. 5.4). In other words, it is to examine whether the claim as amended is supported by the description as filed.
4. In the decision T 260/85 (“Coaxial connector/AMP, OJ EPO, 1989, 105) the Board of Appeal 3.5.1 came to the conclusion that “it is not permissible to delete from a claim a feature which the application as originally filed consistently presents as being an essential feature of the invention, since this would constitute a violation of Art.123(2) EPC” (cf. Point 12 and Headnote). In that case the application as originally filed contained no express or implied disclosure that a certain feature (“air space”) could be omitted. On the contrary, the reasons for its presence were repeatedly emphasised in the specification. It would not have been possible to recognise the possibility of omitting the feature in question from the application (Point 8). It could be recognised from the facts that the necessity for the feature was associated with a web of statements and explanations in the specification, and that its removal would have required amendments to adjust the disclosure and some of the other features in the case.
5. Nevertheless it is also apparent that in other, perhaps less complicated technical situations, the omission of a feature and thereby the broadening of the scope of the claim may be permissible provided the skilled person could recognise that the problem solving effect could still be obtained without it (e.g. T 151/84 - 3.4.1 of 28 August 1987, unreported). As to the critical question of essentiality in this respect, this is a matter of given feasibility of removal or replacement, as well as the manner of disclosure by the applicant.
6. It is the view of the Board that the replacement or removal of a feature from a claim may not violate Art.123(2) EPC provided the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and (3) the replacement or removal requires no real modification of other features to compensate for the change (following the decision in Case T 260/85, OJ EPO 1989, 105). The feature in question may be inessential even if it was incidentally but consistently presented in combination with other features of the invention. Any replacement by another feature must, of course, be examined for support in the usual manner (cf. Guidelines, Part C, Chapter VI, No. 5.4) with regard to added matter.'

54. Thus the skilled person must be able to recognise directly and unambiguously that (1) the feature is not explained as essential in the original disclosure, (2) it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and (3) the replacement or removal requires no real modification of other features to compensate for the change.
55. This test provides a convenient structured approach to the fundamental question whether, following amendment, the skilled person is presented with information about the invention which is not derivable directly and unambiguously from the original disclosure.
56. Turning to intermediate generalisation, this occurs when a feature is taken from a specific embodiment, stripped of its context and then introduced into the claim in circumstances where it would not be apparent to the skilled person that it has any general applicability to the invention.
57. Particular care must be taken when a claim is restricted to some but not all of the features of a preferred embodiment, as the TBA explained in decision T 0025/03 at point 3.3:

According to the established case law of the boards of appeal, if a claim is restricted to a preferred embodiment, it is normally not admissible under Article 123(2) EPC to extract isolated features from a set of features which have originally been disclosed in combination for that embodiment. Such kind of amendment would only be justified in the absence of any clearly recognisable functional or structural relationship among said features (see e.g. T 1067/97, point 2.1.3).'

[58]. So also, in decision T 0284/94 the TBA explained at points 2.1.3–2.1.5 that a careful examination is necessary to establish whether the incorporation into a claim of isolated technical features, having a literal basis of disclosure but in a specific technical context, results in a combination of technical features which is clearly derivable from the application as filed, and the technical function of which contributes to the solution of a recognisable problem. Moreover, it must be clear beyond doubt that the subject matter of the amended claim provides a complete solution to a technical problem unambiguously recognisable from the application.
[59]. It follows that it is not permissible to introduce into a claim a feature taken from a specific embodiment unless the skilled person would understand that the other features of the embodiment are not necessary to carry out the claimed invention. Put another way, it must be apparent to the skilled person that the selected feature is generally applicable to the claimed invention absent the other features of that embodiment.
[60]. Ultimately the key question is once again whether the amendment presents the skilled person with new information about the invention which is not directly and unambiguously apparent from the original disclosure. If it does then the amendment is not permissible.”

The Allegations

The judge set out the claimants' added matter objections to both patents at para [123] of his judgment:

"i) It was added matter to combine gathered sheet reconstituted tobacco as the substrate for the aerosol forming material with the elongated heating element, since there was no disclosure of that combination in the Grandparent Application.
ii) It was added matter to remove the “puff-actuated controller” feature from claim 1 of the Grandparent Application, contrary to the Houdaille principle.
iii) It was added matter by way of intermediate generalisation to take the elongated heating element feature from Figure 3 without taking other features, and in particular:

a) The puff actuated controller (in the sense of a controller powering the heater during draw and not at other times). This is a squeeze on infringement since PMI’s case is that on its proper interpretation claim 1 still requires a puff actuated controller in that sense (but I have rejected PMI’s argument on claim interpretation).
b) A distal end with air passageways through which air is drawn past the internal components, including both heaters and the air flow sensing region.
c) Mandatory air heater (70).
d) The air flow sensing region (60) for enabling flash heating of the second element in response to draw.

iv) It was added matter to include integer [g] in claim 1 of EP460 because the teaching from which it was taken in the Grandparent Application also included the requirement that the elongated heater element was “hence … in close contact with a significant amount of substrate and aerosol forming agent within the tobacco” (a similar point would apply to EP944 claim 1 integer [f], but the argument was by reference to EP460). This was a sub-point of the intermediate generalisation argument, but I identify it separately because it is the one which I think was not adequately pleaded and whose introduction now would unfairly prejudice BAT. I explain further below."

There were 2 further objections to 944:

v) integer [k] of EP944 requires the tobacco sheet to be gathered “so as to possess a plurality of longitudinally extending passageways that acts as substrate for the aerosol forming-material”; and
vi) an interger in claim 6 is directed to a cigarette according to the preceding claims having certain specified lengths

The judge had directed the defendants to produce a document setting out from where in the Grandparent Application it said that the basis for the claims came.  His lordship complained that the document they had produced was unnecessarily long and repetitive.  Carrying out his own analysis,he upheld 3 of the objections to 460 and 944 and both of the objections to 944 alone.   It followed that both patents were invalid because the matter disclosed in their specifications extended beyond that disclosed in the Grandparent Application for the patent.   Accordingly, the patents were liable to be revoked under s.72 (1) (d) of the Patents Act 1977 and art 138  (1) (c) of the EPC.

Obviousness

The Law

It will be recalled that a patent may be granted for an invention only if a number of conditions are satisfied.  One of those conditions is that the invention involves an inventive step within the meaning of s.1 (1) (b) of the Patents Act 1977.  S.3 provides that an "invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2 (2) above (and disregarding section 2 (3) above)."

S.2 (2) defines the "state of the art" as "all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."

In Actavis Group PTC EHF and others v ICOS Corporation and another [2019] UKSC 15, [2019] Bus LR 1318, the Supreme Court approved the following principles that had been devised by the Court of Appeal in Windsurfing International Inc v Tabur Marine (Great Britain) Limited 1985] RPC 59, [1985] FSR 59 and Pozzoli Spa v BDMO SA and another [2007] EWCA Civ 588, [2007] Bus LR D117, [2007] BusLR D117, [2007] FSR 37:

“(1) (a) Identify the notional ‘person skilled in the art’;
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?”

Skilled Addressee

The judge noted at para [20] of his judgment that It was common ground that the skilled addressee would have skill and experience in the areas of technology as the expert witnesses, that is to say, development of new tobacco products, and electronic heating control. Whether that would mean one person or a team was immaterial. I refer below to skilled team and skilled addressee interchangeable

Common General Knowledge

His lordship noted at para [23] that the "relevant common general knowledge" must be information generally known in the art, and regarded as a good basis for future action.  The information that was agreed appears between para [24] and [42].  Other information was disputed.  The disputed matter and the learned judge's findings on the dispute are discussed between paras [43] and [49].

Construing the Claim

He said at [171] that this was a case where it was not helpful to try to restate the inventive concept and that he should just use the claim features. The claims in dispute were claims 1 and 8 of 460 and 1 and 6 of 944.  Claim 1 of 460 is broken down into integers at [55]. claim 8 of 460 at [56], claim 1 of 944 at [57] and claim 6 of 944 at [58]. He considered the teaching of the specification between para [59] and [77]. he addressed the issues of claim construction between [78] and [109].

The Third and Fourth Windsurfing/Pozzoli Questions

The only prior art that the claimants cited was their own patent application from 1993 known as "Morgan".   Mr Justice Meade described it between para [165] and para [170].  The invention had 3 embodiments which the judge described at [168]. For the purpose of question 3 of the Windsurfing/Pozzoki analysis, the only difference between the third embodiment and the construed claim was using a gathered sheet of reconstituted tobacco instead of the extruded form.  As for whether the difference between the third embodiment and the invention would constitute a step that would have been obvious to the skilled addressee, the judge thought that it probably would for the reasons set out between para [199] and [203]:

"[199] First, this is really just a question of how to get a type of tobacco (reconstituted) which the skilled team had decided to use, into cigarette form. Having rejected the extruded form, the other option would be sheet form.
[200] Second, I agree with PMI that the ways of getting the sheet into cigarette form were very limited: rolling or gathering a sheet, or cutting it and using the result.
[201]. Third, the experts agreed that rolling, while usable for products such as luxury cigars, was not appropriate for mass manufacture of cigarettes.
[202] Fourth, the skilled team would know of gathering as a technique from the CGK of using paper for filters in burn down cigarette filters. I consider that without any invention that would suggest the use of gathering for an improved cigarette to use with Morgan’s third embodiment.
[203] Fifth, the skilled team would know as a matter of CGK that gathered tobacco paper had been used in the filter of the HNB Premier. They would therefore appreciate that tobacco sheet could be gathered, and for that reason I reject BAT’s argument that they would be deterred by uncertainties or difficulties associated with making tobacco sheet of the necessary tensile strength for gathering (in addition, I bear in mind the aptitude of the skilled team assumed by the Patents, addressed above by reference to Horne v. Reliance). I do not think there would be any insight or invention in the appreciation that the way that the tobacco paper was handled in the Premier could be applied in the context of Morgan.

Mr Justice Meade concluded that the invention would have been obvious.

Problem and Solution Approach

At para [61] of its judgment in Actavis, the Supreme Court considered the European Patent Office's problem and approach to determining whether an invention was obvious as set out in the EPO’s Guidelines for Examination in the EPO (November 2017) (Part G - Chapter VII) para 5::

“Problem-and-solution approach
In order to assess inventive step in an objective and predictable manner, the so-called ‘problem-and-solution approach’ should be applied. Thus deviation from this approach should be exceptional.
In the problem-and-solution approach there are three main stages:
(i) determining the ‘closest prior art’,
(ii) establishing the ‘objective technical problem’ to be solved, and
(iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.”

The learned judge thought that his reasoning would work just as well in the EPO framework at [208]:

"Assuming Morgan as the closest prior art (since it was the only one argued before me), the problem would be that the extruded reconstituted tobacco in the third embodiment was unsatisfactory because it was difficult to form into a cigarette consistently. The solution would be to use a gathered sheet form instead, and that would be obvious from the common general knowledge."

Arbitrary Choice and Lack of Technical Contribution

To bolster their obviousness and added matter arguments, Philip Morris argued that the choice of gathered sheet reconstituted tobacco was merely an arbitrary one, so that the corresponding claim feature was merely an arbitrary one, and that there was no technical contribution to the claims of the patents.  Having decided that the patents were invalid for added matter and obviousness it was unnecessary for Mr Justice Meade to consider the point.   Nevertheless, he observed at [209] that the claimed product has the tangible (but minor and obvious) advantage over Morgan in that it is easier to handle the tobacco for the cigarette. Overall, this argument added nothing to the claimants' case.

Whether the Patents would have been infringed had they been valid

The items alleged to have infringed the patents were Philip Morris's IQOS devices at the top of this page.  They were described in a product and process description ("PPD") served by Philip Morris pursuant to para 6.1 (1) of the Part 63 Practice Direction. It will be recalled that claims 1 and 8 of 460 and 1 and 6 of 944 had been construed for the purpose of determining whether the claims were obvious.  The only issue believed to infringe was the way that power to the single, blade-shaped heater was controlled.  After considering the claims and the PPD the judge held that the IQOS devices would have fallen within the claims if the patents had been valid.

 Nicoventures Trading Limited

There was a dispute as to whether  Nicoventures Trading Limited was the defendant's exclusive licensee under the patents.  The claimants put the defendant to strict proof which the judge regarded as unhelpful.

Comment

This case applies the principles on added matter formulated by Lord Justice Floyd in Conversant Wireless.   Anyone wishing to discuss this article or any of the issues contained in it should call me on 020 7494 5252 during office hours or send me a message through my contact form.

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