Patents - Nicoventures Trading Ltd v Philip Morris Products SA

 

Jane Lambert

Patents Court (Michael Tappin KC) Nicoventures Trading Ltd v Philip Morris Products SA and another [2023] EWHC 854 (Pat) (18 April 2023)

This was an action for revocation of European Patents (UK) 3 266 323 (“323”) and 3 741 225 ("225”) and a claim for infringement of 323.  The action and counterclaim came on for trial before Michael Tappin KC sitting as a judge of the High Court between 20 and 22 and 27 March 2023. At para [191 of his judgment in Nicoventures Trading Ltd v Philip Morris Products SA and another [2023] EWHC 854 (Pat)  which he delivered on 18 April 2023, he dismissed both the claim and the counterclaim.

The Invention

The Patents were granted on divisional applications from WO 2011/063970 A1 entitled “An electrically heated smoking system with external heater” as described in the following abstract:

"There is provided an electrically heated smoking system for receiving an aerosol-forming substrate. The system comprises a heater for heating the substrate to form the aerosol, and the heater comprises a heating element. The electrically heated smoking system and the heating element are arranged such that, when the aerosol-forming substrate is received in the electrically heated smoking system, the heating element extends a distance only partially along the length of the aerosol forming-substrate, and the heating element is positioned towards the downstream end of the aerosol-forming substrate."

Both 323 and 225 are for an electrically heated smoking system including a heater for heating an aerosol-forming substrate.

The Parties

The party seeking revocation of the patents in suit was Nicoventures Trading Ltd. which was described in British American Tobacco's press release of 5 April 20111 as a start-up company which it had set up to focus exclusively on the development and commercialisation of innovative regulatory approved nicotine products.  The owner of the patents was Philip Morris SA which is part of another major tobacco company.  The second defendant to the infringement counterclaim was British American Tobacco (Investments) Ltd.  In his judgment, Mr Tappin referred to Nicoventures Trading Ltd and British American Tobacco (Investments) Ltd, collectively as "BAT" and Philip Morris Products SA as "PMI",

The Issues

BAT contended that the patents were invalid for obviousness over WO 00/28843 (“Pienemann”) and added matter. It was common ground that if claim 1 of 323 was invalid for obviousness then so too would 225.  BAT admitted that it had made, imported, kept and/or used ‘glo’ tobacco heating devices and consumables in the course of the design, development and testing of such products in the UK, but denied that the products fell within the claims of 323,  It also admitted that it intended to supply such heating devices and consumables in the UK and that the supply of the heating devices would be an infringement under s.60 (2) Patents Act 1977 if the products once assembled fell within the claims of 323.

The Proceedings

Even though PFI was the defendant, Mr Tappin allowed it to open the trial and call its evidence first.  

In his judgment, however, he addressed added matter between paras [100] and [120], infringement between [138] and [145] and obviousness between [154] and [190].   

Revocation

S.72 (1) of the Patents Act 1977 provides:

"(1) Subject to the following provisions of this Act, the court or the comptroller may by order revoke a patent for an invention on the application of any person (including the proprietor of the patent) on (but only on) any of the following grounds, that is to say -

(a) the invention is not a patentable invention;
.............

(d) the matter disclosed in the specification of the patent extends beyond that disclosed in the application for the patent, as filed, or, if the patent was granted on a new application filed under section 8 (3), 12 or 37(4) above or as mentioned in section 15(9) above, in the earlier application, as filed ......"

Obviousness

One of the conditions for the grant of a patent is that the invention must involve an inventive step (see s.1 (1) (b) of the Patents Act 1977). S.3 provides:

"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) of the Act defines "the state of the art" in the case of an invention as comprising "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."

As Mr Tappin noted at para [154] of his judgment, the Supreme Court had reviewed the approach to the assessment of an allegation of obviousness in  Actavis Group PTC EHF and others v ICOS Corporation and another [2019] Bus LR 1318, [2019] RPC 9, (2019) 167 BMLR 1, [2020] 1 All ER 213, [2019] UKSC 15 between paras [52] and [73].  In the light of such guidance, the deputy judge said that he would apply the structured approach to obviousness set out in Pozzoli SpA v BDMO SA [2007] EWCA Civ 588 at [23]:

"(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?"

The Skilled Addressee

According to para [20] of the judgment, the parties agreed that the skilled addressee would be a team interested in developing heat not burn products consisting of an engineer with both electrical and mechanical engineering skills and a person with expertise in tobacco selection and processing, consumable manufacturing and smoke chemistry.

Common General Knowledge

At Mr Tappin's request, the parties prepared an agreed document setting out the common general knowledge of the skilled team. The deputy judge incorporated that document with some adjustments between para [21] and para [55]. They also recorded their differences in an agreed document which the judge mentioned together with his findings between [56] and [71].

The Construed Claims

Mr Tappin described the patents between [72] and [99].  The claim in dispute was claim 1 of 323 which refers to the following drawing,

"An electrically heated smoking system (203) and an aerosol-forming substrate (205) received in the electrically heated smoking system, wherein the aerosolforming substrate forms part of a smoking article (201) separate to the electrically heated smoking system, the system comprising a heater for heating the substrate to form the aerosol, the heater comprising a first heating element (213), wherein the electrically heated smoking system and the heating element are arranged such that the first heating element extends a distance only partially along the length of the aerosol forming-substrate, the heater further comprising a second heating element (214) arranged such that the second heating element extends a distance only partially along the length of the aerosol-forming substrate and is upstream of the first heating element, wherein both the first heating element and the second heating element extend partially or fully around a circumference of the aerosol forming substrate and wherein the electrically heated smoking system comprises only two heating elements."

In accordance with paras  [55] to [66] of the Court of Appeal's judgment in Icescape Ltd v Ice-World International BV [2018] EWCA Civ 2219, Mr Tappin gave the claim a normal construction.  He observed that by the end of the trial, the only issue that remained was what was meant by "heating element".   He explained the point at [123]:

"The issue is what is meant by 'heating element' in the claims or, more completely, what the claims mean when they say that the heater in the system comprises (only) two heating elements, namely 'a first heating element' and a 'second heating element' upstream of the first heating element, each of which extends a distance only partially along the length of the aerosol-forming substrate. In particular, the question concerns the interpretation of those aspects of the claims in the context of inductive heating elements. The answer to that question must be capable of determining whether two work coils, one upstream of the other, wrapped around a single piece of metal, constitute a 'first heating element' and a 'second heating element'. But it should also be capable of addressing other arrangements mentioned in argument, in particular whether a single work coil wrapped around two separate pieces of metal constitutes a 'first heating element' and a 'second heating element'”.

The Prior Art

Mr Tappin analysed Pienemann between para [155] and para [170],  He noted at [170] that it was common ground that Pienemann did not disclose (a) an apparatus in which the heater was in the “system” (i.e. the device rather than the substrate) or (b) a “system” which comprised only two heating elements.  Instead, it disclosed an embodiment in which there was a single circumferential heating element (which did not extend only partially along the length of the substrate) and an embodiment in which there were 9 circumferential heating elements.

Obviousness to the Skilled Addressee

The deputy judge started by considering the team’s reaction to Pienemann because that would help to determine its response.   He then turned to what the skilled addressees would do in response to the application.   After considering the evidence of the parties' experts he concluded at [187] that BAT had failed to show that it was obvious for a skilled team to arrive at a system within claim 1 of the 323 patent from Peuenmann.   It followed that 323 involved an inventive step.   

At para [3] the deputy judge noted that PMI had if claim 1 of 323 was bad for obviousness then so too would claim 1 of 225.  As BAT did not run a separate case on obviousness for claim 1 of 225 he held that that claim too involved an inventive step.

Added Matter

Mr Tappin referred to paras [46] to [49] of Lord Justice Kitchin's judgment in Nokia Corp v IPCom GmbH & Co KG [2012] EWCA Civ 567:

"Added matter – the law

[46] The objection is founded upon Article 123 (2) EPC:

'A European patent application or a European patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed.'

[47] The test for added matter was stated by Aldous J in Bonzel v Intervention (No 3) [1991] RPC 553 at 574 in these terms:

'The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. 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,
(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.'

[48] In Case G 2/10, 30 August 2011, the Enlarged Board of the EPO explained in similar terms that an amendment can only be made 'within the limits of what the skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the application as filed'.
[49] In Vector Corp v Glatt Air Techniques Ltd [2007] EWCA Civ 805, [2008] RPC 10, Jacob LJ elaborated aspects of the test to be applied and drew together various statements of principle from earlier cases at [4]-[9]:

'[4] In Richardson-Vicks' Patent [1995] RPC 568 at 576 I summarised the rule in a single sentence:

'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.'

I went on to quote Aldous J in Bonzel. His formulation is helpful and has stood the test of time.
[5]  The reason for the rule was explained by the Enlarged Board of Appeal of the EPO in G1/93 ADVANCED SEMICONDUCTOR PRODUCTS/Limiting feature [1995] EPOR 97 at [Reasons 9]:

'With regard to Article 123 (2) EPC, the underlying idea is clearly that an applicant shall 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 upon the content of the original application.'
6. Mr Richard Arnold Q.C. provided a clear articulation as to how the legal security of third parties would be affected if this were not the rule:

'The applicant or patentee could gain an unwarranted advantage in two ways if subject-matter could be added: first, he could circumvent the "first-to-file" rule, namely that the first person to apply to patent an invention is entitled to the resulting patent; and secondly, he could gain a different monopoly to that which the originally filed subject-matter justified.'

[7] Kitchin J has recently helpfully elaborated upon the Bonzel formulation in European Central Bank v Document Security Systems [2007] EWHC 600 (Pat), 26th March 2007:

'[[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: DSM NV's Patent [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 paragraph [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 paragraph [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.'

[8] 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 (see the definition of 'additional matter' in s.76 (l)(b)). It follows that by and large the form of the granted patent itself does not come into the comparison. This case was to some extent overcomplicated by looking at the granted patent, particularly the granted claim 1.
[9] A particular, and sometimes subtle, form of extended subject matter (what our Act calls 'additional matter') is what goes by the jargon term 'intermediate generalisation'. Pumfrey J described this in Palmaz's European Patents [1999] RPC 47, 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.""

Mr Tappin also quoted paras [56] to [60] of the same judgment in relation to intermediate generalization:

“[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 deputy judge also referred to paras [30] and [33] of Lord Justice Floyd's judgment in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40:

“[30] There is no doubt that the claims of the patent form part of the disclosure for the purposes of assessing whether there is added matter. However the claims perform a different function from the disclosure in the body of the specification. The primary function of the claims is to delimit the area of the patentee's monopoly.”

In paras [31] and [32] Lord Justice Floyd had mentioned Texas Iron Works Inc’s Patent [2000] RPC 207, AC Edwards Ltd v Acme Signs & Displays Ltd [1992] RPC 131 and T 65/03 Toyota Jidosha KK.  He continued:

"[33] It is clear from these decisions that the law does not prohibit the addition of claim features which state in more general terms that which is described in the specification. What the law prohibits is the disclosure of new information about the invention. In the Toyota case there was such a disclosure of new information, namely the new information that the invention was suitable for engines other than diesel engines. However in Texas Iron Works and A.C. Edwards the specification and claims when read together did not disclose any new technical information, despite the generalisation involved in the added claim feature."

BAT's case was as follows:

"(1) Claim 1 does not require the two heating elements, together, to occupy a shorter axial distance than the length of the aerosol-forming substrate. That means that there is no requirement for there to be an unheated upstream portion of the aerosol-forming substrate.
(2) However, the only disclosure in the PCT is of a system with a heating element or elements which only partially cover the length of the aerosol-forming substrate and are displaced downstream so as to leave an unheated upstream portion of the aerosol-forming substrate.
(3) Hence there is an intermediate generalisation and added matter."

Mr Tappin accepted the first proposition but not the second and third.  He set out his reasons in the subsequent paragraphs.

Infringement

The products which were alleged to infringe the patents consisted of devices for heating tobacco. They were sold under various brand names all incorporating the word ‘glo’, and tobacco sticks for use with heating devices.   While there were 3 types of ‘glo’ heating devices, it was agreed that there was no material difference between them.   A schematic of the device with a stick inserted is as follows:

The deputy judge noted that the device employed inductive heating, that there were two work coils which were independently controllable. These were shown by the green boxes in the cross-section. They were coiled around a single steel tube shown in red with the tobacco in the stick shown in blue.  BAT gave further details in their products in a product process description served pursuant to para 6.1 of the Part 63 Practice Direction.

From those materials, the learned deputy judge concluded that BAT's product operated in a different way and that there was no infringement under a normal construction of claim 1.   He considered whether a different result would be reached if the three reformulated Improver questions were posed and decided that it would not.

For those reasons, Mr Tappin dismissed the counterclaim.

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