Patents - Nicoventures Trading Ltd v Philip Morris Products SA

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Head Office of the British American Tobacco Group

Patents Court (Mr Justice Marcus Smith) Nicoventures Trading Ltd v Philip Morris Products SA and another [2021] EWHC 1977 (Pat) (14 July 2021)

This was an action brought by Nicoventures Trading Ltd ("Nicoventures") for the revocation of the following European patents (UK), EP 3 248 483, EP 3 248 484EP 3 248 485 and EP 3 248 486.  The proprietor of those patents, Philip Morris Products SA, counterclaimed against Nicoventures and British American Tobacco (Investments) Ltd. for the infringement of those patents.  As the defendants to the counterclaim are members of the British American Tobacco group, Mr Justice Marcus Smith, the judge who tried the action and counterclaim, referred to them both as "British American". The proceedings came on before his lordship between 18 and 25 May 2021.  He delivered judgment in Nicoventures Trading Ltd v Philip Morris Products SA and another [2021] EWHC 1977 (Pat) on 14 July 2021.  He held at para [147] of his judgment that the patents were invalid for obviousness and that consequentially the action succeeded and the counterclaim failed.  He directed a further hearing to determine the precise form of the order.

The Patents
The learned judge noted at para [47] that the patents in suit were entitled “[a]n electrically heated smoking system with improved heater” and that the specifications were substantially the same   Each of the [atents related to “an electrically heated smoking system including a heater for heating an aerosol-forming substrate”, preferably at a temperature that does not burn the aerosol-forming substrate. They therefore related to a heat, not burn system.  The patents were divisional applications from  EP 2,850,956 A1 which was itself divided out of WO 2011/050964.  Mr Justice discussed the specifications in greater detail between [49] and [53].

The Claims
S.125 (1) of the Patents Act 1977 provides:

"For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."

The claims in issue of each of the patents are set out in a table at para [93]. Although Philip Morris defended the validity of its patents, it applied for their conditional amendment. The proposed amendments are underlined in the table.  They were put forward only if they were needed to save the patents. Nicoventures and British American opposed the amendments on the ground that they would not save the patents,

S.72 of the 1977 Act enables the court or the Intellectual Property Office to revoke patents on a number of grounds.  One of those grounds is that the invention is not a patentable invention. S.1 (1) states that an invention is patentable if it is new, involves an inventive step, is capable of industrial application and is not excluded by s.1 (2) or (3) or s.4A.  An invention lacks an inventive step if it would have been obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art. 

Nicoventures and British American alleged that the patents in suit were invalid because each of the inventions for which those patents had been granted would have been obvious to a skilled addressee having regard to US patent 5,322,075 for a Heater for an electric flavor-generating article ("Deevi") and US patent application US 2007/0283972 for a Method and system for vaporization of a substance (Monsees).  

The claimant also argued that the invention for which the patents had been granted was a collocation, that is to say, a combination of two or more known inventions.   His lordship gave an example of a collocation at para [74] of his judgment:

"A good example of collocation arose in Williams v. Nye & Co. (1890) 7 RPC 62.  In that case, Williams took out a patent for an improved mincing machine which was, in effect, a combination of a mincing machine and a filling machine, both of which were old technology. He brought an action for infringement against Nye & Co, who disputed the validity of the patent on the ground that the alleged invention consisted simply in joining two well-known machines, and was not in itself an invention. Cotton LJ said this [on page 67]:

'Then in Nye's patent, when the cutting operation is entirely completed, there is simply a screw, which does nothing whatever except to force the meat forward, when cut, and is entirely separated from the cutting or mincing operation - for the same purpose as the screw which is used by the Plaintiff in his machine. In my opinion there is no invention in that. There is no difficulty said to have been experienced in continuing the shaft of this screw, and putting on the further side, that is to say, on the side furthest from the knives, that screw which is continued in Nye's patent without any actual break or division or any diaphragm existing, but still continued after the cutting and mincing process had been entirely at an end. If there had been any difficulty overcome by the Plaintiff in putting this continuation of the shaft so as to continue the screw, not for the purpose of being useful towards the cutting, but for the purpose only of being used for forcing the minced meat into the sausage skin, then the matter would stand, to my mind, on an entirely different footing. But here, as there is no difficulty at all said to have been overcome by the Plaintiff in putting the continuation of this shaft with a screw upon it after the cutting process had been performed, and therefore necessarily on the further side of the diaphragm with these holes, in my opinion, although this is a new machine –that is to say, a machine in the sense that it had never been seen in its actual form by the public at the time when the Plaintiff produced it - it is not new in the sense of being a substantial exercise of invention. Therefore, in my opinion, it is not a proper subject matter of a patent. It is difficult to express in words with preciseness what is meant by ingenuity and what is meant by invention; but I express my opinion that in order to maintain a patent there must be a substantial exercise of the inventive power or inventive faculty. Sometimes very slight alterations will produce very important results, and there may be in those very slight alterations of very great ingenuity exercised and shown to be exercised by the Patentee. That is my opinion.'

Lindley LJ was of the same view [at 68]:

'Therefore what has the Plaintiff done? He has simply taken, so far as I can see, Gilbert and Nye's invention, and has substituted Donald's cutter for Gilbert's cutter. That is the whole of what he has done. I do not think a patent can be granted for that considering that the object was perfectly well known; that the utility of the forcing nozzle was known; that the object of it had been attained before, and there is nothing which amounts to what is understood to be an invention.'”

In this case, the claimant alleged that the claimed technical contribution comprised the bringing together of two features into an electrically heated smoking system, namely:
(a)   Feature A:   at least one heater comprising one or more electrically conductive tracks on an electrically insulating substrate; and
(b)   Feature B:  a thermally insulating material for insulating at least one heater wherein the thermally insulating material comprises a metal.
It contended that Feature A was disclosed in Deevi and Feature B in Monsees.

Mr Justice Marcus Smith referred to para [76] of Lord Justice Arnold's judgment in  E Mishan & Sons, Inc v Hozelock Ltd and others [2020] EWCA Civ 871 (8 July 2020):

“There is a good deal of scholarly literature on the justifications for the patent system. In simple terms, however, the patent system aims to incentivise technical innovation and investment in and disclosure of such innovation, by conferring limited monopolies. Monopolies are generally contrary to the public interest, however, because they prevent competition. Patent law contains a number of mechanisms which are designed to strike a balance between these conflicting considerations. Amongst these mechanisms are the requirements of novelty and inventive step (i.e., non-obviousness): in order not to fetter competition unduly, the public is deemed to have the right to do anything which is disclosed by, or obvious in the light of, any item of prior art, no matter how obscure, which was made available to the public anywhere in the world before the relevant date, without infringing a patent. For that reason, when attacking the validity of a patent, the party doing so is allowed to select the prior art used as the foundation for the argument with 20/20 hindsight. To that extent (but only to that extent), hindsight is not merely permitted, but an inherent feature of the current design of the European patent system (and, indeed, of most patent systems worldwide). It inevitably follows that some patents turn out to be invalid because, unbeknownst to the inventor, or indeed other persons skilled in the relevant art, prior art emerges when sufficient searches are carried out which anticipates or renders obvious the claimed invention.”

The Windsurfing/Pozzoli Approach
At para [68] of his judgment, Mr Justice Marcus Smith said:

"A common approach to the question of obviousness is to approach the matter through the Pozzoli stages of inquiry, which may be described as follows: 
(1) Identify the notional “person skilled in the art” and identify the relevant common general knowledge of that person. I have already considered the former question, and my conclusions as to the skilled team are set out in Section C above. I will come to the question of common general knowledge of this team in due course, as I will with the other Pozzoli stages described below.
(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?"

He said he would approach the question of obviousness structured in that way though he would also bear in mind the European Patent Office's problem/solution approach.

EPO's Problem-Solution Approach
According to the judge:

"The problem/solution approach involves:
(1) Determining the closest prior art;
(2) Establishing the objective technical problem to be solved; and
(3) Considering whether the claimed invention would have been obvious starting from the closest prior art and given the objective technical problem."

Other Considerations
Mt Justice Marcus Smith directed himself further at [71]:

"Neither approach can be applied in a literalist or mechanistic way. Obviousness involves a multifactorial assessment. Without in any way seeking to list all of the factors that the court may take into account, or even set out a limited number of particularly relevant factors fully, the following may be relevant to take into consideration:

(1) Whether something was obvious to try, in circumstances where the success of the trial was not guaranteed.
(2) Hindsight and ex post facto analysis is to be avoided when considering what is, and what is not, obvious.  Lord Russell, in Non-Drip Measure Co Ltd v. Strangers Ltd. (1943) 60 RPC 135 at 142.put the point thus:

'Whether there has or has not been an inventive step in constructing a device for giving effect to an idea which when given effect to seems a simple idea which ought to or might have occurred to anyone, is often a matter of dispute. More especially is this the case when many integers of the new device are already known. Nothing is easier than to say, after the event, that the thing was obvious and involved no invention. The words of Moulton LJ in British Westinghouse v. Braulik may well be called to mind in this connection: 'I confess' (he said) 'that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis is unfair to the inventors and, in my opinion, it is not to be countenanced by English patent law.''

(3) The age of the cited art and the question 'why was it not done before?'  As Terrell notes,

'[t]he age of a piece of prior art may have a bearing on the issue of obviousness, though the weight to be attached to such consideration will depend on the circumstances. Where a piece of prior art was only available shortly before the priority date of the invention, then this may of itself explain why it had not already been taken up and modified by others; even obvious developments do not happen overnight. On the other hand, if sufficient opportunity to make a worthwhile invention had been available to others, then this raises the question: 'why was it not done before?''

I shall, of course, be considering obviousness specifically in the context of the Patents’ claims, the common general knowledge and the pleaded prior art in due course. It is, however, worth noting at this stage that this factor was one on which Philip Morris placed particular weight, given the very early date of Deevi (1994). Thus, by way of example, paragraph 11 of Philip Morris’ written closing submissions states:

'This is a case where the secondary indicia of obviousness, (1) 'what was done by others at the time?' and (2) the question of “why was it not done before if it was all in the [common general knowledge] anyway?” are particularly valuable. This is not a field in which an obvious development might be overlooked, for a lack of interest in the technology. The world's largest tobacco companies have been engaged in [heat, not burn] product development for decades. In the present case, the prior art is effectively ignored in the analysis.”'

The learned referred to Lord Hoffmann's speech in Sabaf SPA v. MFI Furniture Centres Ltd [2004] UKHL 45, [2005] RPC 10:

"[24] …there is no law of collocation in the sense of a qualification of, or gloss upon, or exception to, the test for obviousness stated in section 3 of the Act. But before you can apply section 3 and ask whether the invention involves an inventive step, you first have to decide what the invention is. In particular, you have to decide whether you are dealing with one invention or two or more inventions. Two inventions do not become one invention because they are included in the same hardware. A compact motor car may contain many inventions, each operating independently of each other but all designed to contribute to the overall goal of having a compact car. That does not make the car a single invention.
[25] Section 14 (5) (d) of the Act provides (following Article 82 of the EPC) that a claim shall “relate to one invention or to a group of inventions which are so linked as to form a single inventive concept”. Although this is a procedural requirement with which an application must comply, it does suggest that the references in the Act to an "invention" (as in section 3) are to the expression of a single inventive concept and not to a collocation of separate inventions.
[26] The EPO guidelines say that “the invention claimed must normally be considered as a whole". But equally, one must not try to consider as a whole what are in fact two separate inventions. What the Guidelines do is to state the principle upon which you decide whether you are dealing with a single invention or not. If the two integers interact upon each other, if there is synergy between them, they constitute a single invention having a combined effect and one applies section 3 to the idea of combining them. If each integer "performs its own proper function independently of any of the others", then each is for the purposes of section 3 a separate invention and it has to be applied to each one separately. That, in my opinion, is what Laddie J meant by the law of collocation.”

Mr Justice Marcus Smith cautioned at [75] that:

"There can be many permutations: the combination of two non-inventions may be inventive; or an
 invention may be inventively combined with a non-invention; or there may be a single, non-divisible, invention. As Lord Hoffmann said in Sabaf, you have to decide what the invention is. This is reflected in the EPO Guidelines [Part G, Chapter VII, §7]:

'The invention claimed must normally be considered as a whole. When a claim consists of a “combination of features”, it is not correct to argue that the separate features of the combination taken by themselves are known or obvious and that “therefore” the whole subject-matter claimed is obvious. However, where the claim is merely an “aggregation or juxtaposition of features” and not a true combination, it is enough to show that the individual features are obvious to prove that the aggregation of features does not involve an inventive step (see G-VII, 5.2, last paragraph). A set of technical features is regarded as a combination of features if the functional interaction between the features achieves a combined technical effect which is different from, e.g. greater than, the sum of the technical effects of the individual features. In other words, the interactions of the individual features must produce a synergistic effect. If no such synergistic effect exists, there is no more than a mere aggregation of features…”

He concluded at para [76]:

"The success or otherwise of British American’s plea of collocation rather fundamentally affects the question of obviousness. If that plea were to succeed - a point that is considered in Section I below - then Feature A and Feature B would have to be considered separately, and the question of obviousness considered separately in relation to each Feature. In particular - as British American’s pleading makes clear - if this is a case of collocation, then:
(1) Deevi is relevant only to Feature A, and is not relied upon by British American in relation to Feature B.
(2) The converse is the case as regards Monsees, which is relevant only to Feature B and is not relied upon by British American in relation to Feature A.

The Skilled Addressee
The first step of the Windsurfing/Pozzoli analysis is to identify the skilled addressee.  Mr Justice Marcus Smith quoted Lord Justice Jacob's dicta in Technip-Coflexip SA and others v Tube Tech International Ltd [2005] EWCA Civ 1369 (22 Nov 2005):

“The “man skilled in the art” is invoked at many critical points of patent law. The claims of a patent must be understood as if read by that notional man - in the hackneyed but convenient phrase the “court must don the mantle of the skilled man”. Likewise, many questions of validity (obviousness and sufficiency for instance) depend upon trying to view matters as he would see them.”

Mr Justice Marcus Smith also referred to Terrell and Technograph v. Mills & Rockle [1972] RPC 346 at 355.

“…the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of a scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a "mosaic" out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity..”

The judge said at [56]:

"The no-mosaic rule makes him also very forgetful. He reads all the prior art, but unless it forms part of his background technical knowledge, having read (or learnt about) one piece of prior art, he forgets it before reading the next unless it can form an uninventive mosaic or there is a sufficient cross-reference that it is justified to read the documents as one.

He does, on the other hand, have a very good background technical knowledge - the so-called common general knowledge. Our courts have long set a standard for this which is set out in the oft-quoted passage from General Tire v. Firestone Tire & Rubber, which in turn approves what was said by Luxmoore J in British Acoustic Films. For brevity I do not quote this in full - Luxmoore J's happy phrase "common stock of knowledge" conveys the flavour of what this notional man knows. Other countries within the European Patent Convention apply, so far as I understand matters, essentially the same standard.

The man can, in appropriate cases, be a team - an assembly of nerds of different basic skills, all unimaginative. But the skilled man is not a complete android, for it is also settled that he will share the common prejudices or conservatism which prevail in the art concerned.”

After hearing evidence and argument from each side, the judge concluded at [59] that the skilled addressee would be a team including in particular a product engineer. 

Common General Knowledge
The next step of the Windsurfing/Pozzoli approach was to identify the relevant common general knowledge ("CGK") of the skilled team.  The judge discussed electronic cigarette generally technology between paras [17] and [46].  As the claimant had argued that the invention for which the patents had been granted was a collocation, the learned judge considered the common general knowledge CGK of the team in relation to Feature A between para [115] and para [119] and its CGK in relation to Feature B between [107] and [108].

The Inventive Concept
The second stage of the Windsurfing/Pozzoli analysis is to  "identify the inventive concept of the claim in question or, if that cannot readily be done, construe it."   Ar para [96] of his judgment, the judge noted that the questions on obviousness had been distilled in paras 19 to 22 of the defendant's opening statement. He added that in identifying the battle-lines on the question of obviousness, Philip Morris had articulated with helpful clarity the concepts that it says are inventive and that the claimant did not take issue with those:

The Portions Concept

"Was it obvious at the priority date in light of (i) Deevi or (ii) Monsees (read individually but each with the CGK) to include
(a) a heater comprising one or more electrically conductive tracks on an electrically insulating substrate, the electrically conductive tracks comprising a plurality of portions each portion being separately connectable to the power supply; and
(b) wherein one or more electrically conductive tracks are heated for different durations or to different temperatures or both?"

The defendant stated that this feature was included in claim 1 of the 486 patent and claim 1 of the 484 patent (the specific requirement for heating for different durations or temperatures being in claim 2 of the 484 patent). The feature was also in claim 3 of the 483 patent and claims 6 and 7 of the 485 patent.

The Tobacco Plug and Temperature Control Features

"Was it obvious at the priority date in light of (i) Deevi or (ii) Monsees (read individually but each with the CGK) to include the features set out in Question 1 but also to:
(i) include an aerosol-forming substrate wherein the aerosol-forming substrate is solid and is in the form of a cylindrical plug comprising shreds containing reconstituted tobacco; and/or
(ii) control the power supply to the heater in dependence upon the desired temperature."

The defendant said that the Tobacco Plug Feature was (in part) already found in claim 1 of the 485 patent and claim 9 of the 483 patent.

The Metal Insulator Feature

"Was it obvious at the priority date in light of (i) Deevi or (ii) Monsees (read individually but each with the CGK) to include (either alone or in combination with the Portions Concept, Tobacco Plug or Temperature Control features) a thermally insulating material provided as a separate element for insulating the at least one heater, wherein the thermally insulating material comprises a metal?"

The defendant stated that this was a feature of claim 5 of the 486 patent and claim 1 of the other patents.

Whether there was a Collocation

His lordship said at [97] that to his mind the present case was clearly a case of collocation.   There was no synergistic effect between Feature A and Feature B. The heating of the tobacco product was one thing, and the insulation (whether to keep the device efficient or to protect the user) very much another.  He concluded at [101]:

"In short, the combination of Feature A with Feature B involves - in terms of the combination - no kind of inventive step. Indeed, the fact that a component (the Feature A) is intended to heat a material to levels where (i) it could burn the user or (ii) it could be rendered less efficient through heat loss from the device renders Feature B so blindingly obvious that it is quite clear that we are talking about the non-inventive combination of what may be (or what may not be) two inventions, given that there is literally nothing apart from heat linking the two Features."

Differences between the Inventive Concept and the State of the Art
The third stage of the Windsurfing/Pozzoli analysis is to 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.   The last stage is to decide whether those differences constitute steps which would have been obvious to the person skilled in the art or whether they require a degree of invention. Mr Justice Marcus Smith took those steps together.

In view of his finding on collocation, the judge was bound to consider the heater and insulator as separate inventions.   He took Feature B first and then Feature A.

He compared Feature B to Monsees taking account of the CGK between para [105] and [114].   He concluded at [113] that the feature (and hence the claim in which it was contained) was entirely unoriginal:

"(1) A solid insulator is clearly identified in Monsees, which refers to a solid insulator made of “PEI (brand name Ultem), ceramic, or other insulating material”. The only difference between Monsees and the Patents is that an inefficient - conductive - material is suggested. In short, in this construction, metal is being suggested as the “other insulating material” and what we have is an entirely obvious “invention” that obviously does not work, because the material suggested in conductive rather than insulating.
(2) An insulator based upon a vacuum or using air gaps is obviously described in Monsees and, in any event, formed part of the common general knowledge, of which (in this regard) Monsees is merely an articulation. Whilst such insulators do not have to be made out of metal, metal was an obvious and actually used material for such insulators before the Priority Date." 

Turning to Feature A, the judge compared thar feature to Deevi taking account of the CGK between [115] and [143].   He said at [129] that the description of the heater - “one or more electrically conductive tracks on an electrically insulating substrate” - was no more or less than a description of the thin-film resistive heaters that were available as at the priority date and, indeed, were described in Deevi.  In his judgment, deploying a thin-film resistive heater as a means of enveloping an insertable tobacco product would have been obvious to the skilled team for the following reasons:

"(1) The Skilled Team would have known of the existence of such heaters, and in particular their flexibility. Causing the heater to be formed into a tubular shape was disclosed in Deevi.
(2) Using a heater - albeit not a thin-film heater - to envelope, and so heat, an insertable tobacco product was a configuration of heat, not burn devices like Accord and Heatbar. 
(3) Putting the two together - the heater shape and type disclosed by Deevi, and the device configuration revealed by Accord/Heatbar - is entirely obvious. Why, then, was it not done before? Deevi is, after all, dated 1994, Accord and Heatbar were launched in the late 1990s and mid-2000s, yet the Patents (and, to be clear, the Parent and Grandparent Applications) dated around 2010 or later in terms of their filing and have a Priority Date of 29 October 2009. There is, therefore, a significant gap between the date of the (known) state of the art and the Patents and the applications out of which they are divided in which this obvious step was not taken."

His lordship dismissed the applications to amend shortly at paras [145] and [146]:

"[145] ............. An amendment that seeks to narrow the nature of the tobacco product used in the invention (which is the subject of the Tobacco Plug amendment) cannot save the Patents. The fact is that my analysis of obviousness obtains whatever the nature of the tobacco product.
[146]. The same is true of the Temperature Control amendment. It is inherent in my analysis that it would have been obvious to the Skilled Team that the Heating Tube would have to have some kind of temperature control."

Havinng determined that Features A and B were obvious and could not be saved by amendment, it followed that the claims in issue of the patents in suit were invalid.  In the circumstances, it was not necessary to consider whether those claims had been infringed.

Further Information
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