Patents - The Appeal in Philip Morris Products v Nicoventures
Court of Appeal (Lord Justices Arnold and Nugee and Sir Christopher Floyd) Philip Morris Products, SA v Nicoventures Trading Ltd and another [2022] EWCA Civ 1638 (16 Dec 2022)
This was an appeal by Philip Morris Products SA ("PMI") against the finding by Mr Justice Marcuas Smith that its European patents (UK), EP 3 248 483, EP 3 248 484. EP 3 248 485 and EP 3 248 486 were invalid for obviousness. I discussed that case in Patents - Nicoventures Trading Ltd v Philip Morris Products SA on 24 Nov 2021.
Grounds of Appeal
PMI appealed on the following grounds:
"i) Ground 1: the judge wrongly construed the 486 patent when he held that both multiple separately connected electrically conductive tracks and a single track with a plurality of portions were covered by claim 1, when only the latter was covered;
ii) Ground 2: the judge asked the wrong question on obviousness because of the error identified in ground 1;
iii) Ground 3: the judge wrongly held that there was no difference between an arrangement in which heating is achieved through a single track with separately connectable portions and an arrangement in which the heating is achieved through multiple tracks;
iv) Ground 4: the judge wrongly held that a track with separately connectable and controllable portions would be obvious to try. The judge wrongly confused techniques taught in the prior art with those taught in the patent.
v) Ground 5: the judge wrongly construed Deevi as disclosing heating the tracks for different durations. Deevi only disclosed automatically controlling when the heater turns on and off in accordance with the heating approach disclosed in Deevi (i.e. for a single burst of heat for less than a second)."
"i) Ground 1: the judge wrongly construed the 486 patent when he held that both multiple separately connected electrically conductive tracks and a single track with a plurality of portions were covered by claim 1, when only the latter was covered;
ii) Ground 2: the judge asked the wrong question on obviousness because of the error identified in ground 1;
iii) Ground 3: the judge wrongly held that there was no difference between an arrangement in which heating is achieved through a single track with separately connectable portions and an arrangement in which the heating is achieved through multiple tracks;
iv) Ground 4: the judge wrongly held that a track with separately connectable and controllable portions would be obvious to try. The judge wrongly confused techniques taught in the prior art with those taught in the patent.
v) Ground 5: the judge wrongly construed Deevi as disclosing heating the tracks for different durations. Deevi only disclosed automatically controlling when the heater turns on and off in accordance with the heating approach disclosed in Deevi (i.e. for a single burst of heat for less than a second)."
The Appeal
The appeal came on before Sir Christopher Floyd and Lord Justices Arnold and Nugee on 30 Nov 2022. Their lordships delivered judgment on 16 Dec 2022 (Philip Morris Products, SA v Nicoventures Trading Ltd and another [2022] EWCA Civ 1638 (16 Dec 2022)). The lead judgment was given by Sir Christopher. He dismissed the appeal in para [65] for the reasons that he stated between paras [44] and [64]. Lords Justices Arnold and Nugee agreed.
Structure of the Judgment
There does not seem to have been any dispute on any point of law. The nearest was a gentle criticism of the trial judge's decision not to make any findings as to whether the patents would have been infringed had he found them to be valid, Sir Christopher said that that omission would have had a regrettable consequence had their lordships allowed the appeal because they would have had to remit the case to Mr Justice Marcus Smith for him to make further findings which would necessarily have increased the costs.
Sir Christopher discussed the technical background to the invention from para [5] to para [8]. He reviewed the trial judge's finding as to the identity of the skilled addressee and the common general knowledge in paras [9[ and [10]. He considered the prior art between [11] and [19]. At para [2] of his judgment, Sir Christopher had observed that it was common ground before the Lords Justices, as it had been before the trial judge, that the issues could be decided by reference to the current specification and claim of European Patent (UK) No 3,248,486 (“the 486 patent”). He, therefore, addressed the specification and claim 1 of the 486 patent between para [20] and para [29]. He analysed Mr Justice Marcus Smith's judgment between [30] and [42]. I mentioned the remainder of Sir Christopher's judgment above.
Sir Christopher discussed the technical background to the invention from para [5] to para [8]. He reviewed the trial judge's finding as to the identity of the skilled addressee and the common general knowledge in paras [9[ and [10]. He considered the prior art between [11] and [19]. At para [2] of his judgment, Sir Christopher had observed that it was common ground before the Lords Justices, as it had been before the trial judge, that the issues could be decided by reference to the current specification and claim of European Patent (UK) No 3,248,486 (“the 486 patent”). He, therefore, addressed the specification and claim 1 of the 486 patent between para [20] and para [29]. He analysed Mr Justice Marcus Smith's judgment between [30] and [42]. I mentioned the remainder of Sir Christopher's judgment above.
Comment
The issues in this appeal were issues of fact and construction. It would not be particularly instructive for me to summarize and analyse them here. It follows that the main takeaways from this case are to be found in Mr Justice Marcus Smith's judgment which I did summarize in my case note on that judgment. The trial judge's judgment is well worth re-reading for its discussion of the law of obviousness. Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact page,
Comments