Patents - Nicoventures Trading Ltd v Philip Morris Products
Patents Court (Michael Tappin KC) Nicoventures Trading Ltd v Philip Morris Products SA and another [2023] EWHC 854 (Pat) (18 April 2023
This was a claim by Nicoventures Trading Ltd ("Nicoventures") for the revocation of European patent (UK) 3266323 B1 ("323") and European patent (UK) 3741225 B1 ("225") held by Philip Morris Products SA ("Philip Morris") on grounds of obviousness and added matter and a counterclaim by Philip Morris against Nicoventures and its parent company British American Tobacco (Investments) Ltd ("BAT") for infringement of 323 The parties had agreed that if claim 1 of 323 was obvious then so too would claim 1 of 225. The allegedly infringing products were ‘glo’ tobacco heating devices and their associated consumables. The action and counterclaim came on before Mr Michael Tappin KC sitting as a deputy judge of the High Court on 20, 21, 22 and 27 March 2023. Mr Tappin handed down his judgment on 18 April 2023 (see Nicoventures Trading Ltd v Philip Morris Products SA and another [2023] EWHC 854 (Pat) (18 April 2023)). By para [191] of his judgment, the deputy judge dismissed both the claim and counterclaim.
The Patents
Both patents were for "an electrically heated smoking system with external heater." They were divisionals from PCT application WO 2011/063970 A1 ("the PCT application or "PCT"). The abstract of the PCT summarizes the invention as follows::
The learned deputy judge discussed the patents further between paras [72] and [99] of his judgment.
The Claims
The claims of 323 that were in issue were 1, 5 and 22.
At para [96] of his judgment, Mr Tappin broke claim 1 of 323 into the following integers:
"(a) An electrically heated smoking system and
(b) an aerosol-forming substrate received in the electrically heated smoking system,
(c) wherein the aerosol-forming substrate forms part of a smoking article separate to the electrically heated smoking system,
(d) the system comprising a heater for heating the substrate to form the aerosol,
(e) the heater comprising a first heating element,
(f) 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,
(g) the heater further comprising a second heating element
(h) arranged such that the second heating element extends a distance only partially along the length of the aerosol-forming substrate
(i) and is upstream of the first heating element,
(j) wherein both the first heating element and the second heating element extend partially or fully around a circumference of the aerosol forming substrate and
(k) wherein the electrically heated smoking system comprises only two heating elements."
Claim 5 has the additional feature that “the heating elements are independently controllable”. Claim 22 adds that the system “comprises a temperature sensor and control circuitry and is configured to control a supply of electrical energy to the heating elements so that the heating elements reach a temperature of between approximately 250 C and 440 C”.
Claim 1 of 225 is the same as claim 1 of 323 patent save that integer (k) is replaced with“wherein the heating elements are independently controllable, and wherein the first heating element has a length which is greater than a length of the second heating element”.
The Judgment
After commenting on the witnesses and identifying the skilled addressees and their common general knowledge, the learned deputy judge considered first whether the patents were bad for added matter, next the counterclaim and finally whether the inventions were obvious.
Added Matter
Mr Tappin first outlined the law on added matter. Then he considered the differences between the patents and the PCT application. In each case, he decided whether Nicoventures had made out its claim.
He started his outline of the law by referring to paras [46] to [49] of Lord Justice Kitchin's judgment in Nokia Corp v IPCom GmbH & Co KG [2012] EWCA Civ 567, [2013] RPC 5. Although he described the basic propositions as "too well known to need reproducing" in his judgment at least some readers may be glad to be reminded of them here:
"[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.'
'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.
'[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 refereed to paras [56] to [60] of Lord Justice Kitchin's judgment on 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 quoted para [30] of Lord Justice Floyd's judgment in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40:
“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.”
After citing 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, Lord Justice Floyd said at [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."
"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."
The only distinctions between the PCT and 323 that were brought to his attention were two additional citations of prior art in 323 and the following additional paragraph in the PCT:
“Further heating elements may be provided between the first and second heating elements. For example, the heater may comprise three, four, five, six or more heating elements.”
Nicoventures contended that:
"(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."
The deputy judge accepted the first proposition but not the other two.
He considered first the disclosure of the PCT in respect of a system with only one heating element. He concluded that even in a system with a single heating element, there was no requirement for the heating element to have both features. In particular, there was no requirement for the heating element to be positioned towards the downstream end.
He considered first the disclosure of the PCT in respect of a system with only one heating element. He concluded that even in a system with a single heating element, there was no requirement for the heating element to have both features. In particular, there was no requirement for the heating element to be positioned towards the downstream end.
He then turned to the disclosure in relation to a system with two heating elements:
“In one embodiment of the electrically heated smoking system, in accordance with the invention, the heater further comprises a second heating element arranged, when the aerosol-forming substrate is received in the electrically heated smoking system: to extend a distance y only partially along the length l of the aerosol-forming substrate; and to be upstream of the first heating element. The first heating element, the second heating element or both heating elements may extend substantially partially or fully around the circumference of the aerosol forming substrate.”
Nicoventures had argued that the PCT did not disclose a system with only two heating elements. It said that the system “comprises a second heating element”. In the deputy judge's view, the specification disclosed a system with two heating elements though it also permitted more elements. He pointed to the above-mentioned passage in the PCT stating that the system can have more than six heating elements.
The case with respect to 225 was similar to 323 though there had not been much argument. The only difference between the PCT application and 225 was the following feature of claim 1 of 225:
“wherein the first heating element has a length which is greater than a length of the second heating element”.
“In one embodiment of the electrically heated smoking system, in accordance with the invention, the heater further comprises a second heating element arranged, when the aerosol-forming substrate is received in the electrically heated smoking system: to extend a distance y only partially along the length l of the aerosol-forming substrate; and to be upstream of the first heating element. The first heating element, the second heating element or both heating elements may extend substantially partially or fully around the circumference of the aerosol forming substrate.”
Nicoventures had argued that the PCT did not disclose a system with only two heating elements. It said that the system “comprises a second heating element”. In the deputy judge's view, the specification disclosed a system with two heating elements though it also permitted more elements. He pointed to the above-mentioned passage in the PCT stating that the system can have more than six heating elements.
The case with respect to 225 was similar to 323 though there had not been much argument. The only difference between the PCT application and 225 was the following feature of claim 1 of 225:
“wherein the first heating element has a length which is greater than a length of the second heating element”.
Nicoventures argued that the sentence on which that feature was based taught an alternative way to achieve keeping an unheated zone upstream of the second heating element and that the only teaching of the claim feature was in the context of an unheated upstream zone. The deputy judge disagreed. He pointed to the words:
“This means that substantially equal aerosol yields and time to first puff are provided by the first and second heating elements.”
They showed that the purpose of making the downstream heating element longer than the upstream one was something other than keeping an unheated upstream zone of the aerosol-forming substrate. It followed that 225 had no added matter.
Claim Construction
The deputy judge said at [122] that the only issue of interpretation of the claims of 323 that remained at the end of the trial was the meaning of "heating element" in the context of “'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 his view, the combination of the work coil and the metal object which is heated would be regarded by the skilled team as the “heating element” in an inductive heater.
Infringement
Infringement
Although Philip Morris complained of several "glo" products it was common ground that they all worked in the same way. Mr Tappin therefore took BAT's G4 as representative of the range, He said that the important points to note were that the device employs inductive heating, that there are two work coils which are independently controllable, and that they are coiled around a single steel tube. In his lordship's judgment, it was clear that the work coils and the steel tube did not allow different parts of the aerosol-forming substrate to be heated at different times. For those reasons, the ‘glo’ device did not have a “first heating element” and a “second heating element” within the meaning of the claims of 323 on a normal interpretation.
Philip Morris also presented a case on equivalents, However, it had to concede that if a “thermal isolation” construction were adopted, such that the purpose of having two heating elements was to be able to “switch on one heating element without causing the area under the second heating element to heat up to any extent” then that “would be part of the inventive core and Philip Morris would have to accept that the variant in the ‘glo’ devices had a material effect on the working of the invention, Because of the concession it followed that the variant did not achieve substantially the same result in substantially the same way as the invention.
Philip Morris also presented a case on equivalents, However, it had to concede that if a “thermal isolation” construction were adopted, such that the purpose of having two heating elements was to be able to “switch on one heating element without causing the area under the second heating element to heat up to any extent” then that “would be part of the inventive core and Philip Morris would have to accept that the variant in the ‘glo’ devices had a material effect on the working of the invention, Because of the concession it followed that the variant did not achieve substantially the same result in substantially the same way as the invention.
Philip Morris had successfully sued BAT for infringement of 323 in the Dusseldorf Landgericht. BAT appealed to the Oberlandsgericht which reversed the Landgericht's decision. The deputy judge read both judgments after he had made up his mind on the case before him. He was gratified to see that his finding was substantially similar to the appellate court's decision.
Obviousness
Mr Tappin said at para [154] of his judgment that the approach to the assessment of an allegation of obviousness had been reviewed by the Supreme Court in Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2020] 1 All ER 213, [2019] Bus LR 1318, [2019] RPC 9, (2019) 167 BMLR 1 between paras [52] and [73], that he had regard to its guidance and that he would apply the structured approach to obviousness set out in Pozzoli SpA v BDMO SA [2007] FSR 37, [2007] EWCA Civ 588, [2007] BusLR D117, [2007] Bus LR D117, [2007] 1 Bus LR D117.
The "structured approach" to which Mr Tappin was referring was set out by Lord Hodge at para [60] of his judgment in Actavis:
The "structured approach" to which Mr Tappin was referring was set out by Lord Hodge at para [60] of his judgment in Actavis:
'(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?”
(Pozzoli SPA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37, para 23 per Jacob LJ). The fourth question is the statutory question and the first three questions or tasks, the second and third of which involve knowledge and consideration of the invention, are a means of disciplining the court’s approach to that fourth question: DSM NV’s Patent [2001] RPC 35, para 55 per Neuberger J; Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82; [2010] FSR 18, para 21 per Jacob LJ. ......."
Applying this methodology. the deputy judge held at para [20] that the skilled team "would contain an engineer with both electrical and mechanical engineering skills ('the skilled engineer') and a person with expertise of tobacco selection and processing, consumable manufacturing and smoke (aerosol) chemistry ('the skilled tobacco chemist')." He mentioned the agreed common general knowledge between para [21] and para [55]. The parties had submitted a number of issues relating to the team's common general knowledge in dispute which Mr Tappin listed at para [56]. He set out his findings on those issues between [57] and [71]. He had construed the claims between [121] and [137]. The nearest prior art was a PCT application for a System for supplying an inhalable aerosol numbered WO 00/28843 known as “Pienemann”.
Mr Tappin analysed Pienemann between [155] and [170]. Between [171] and [190] he considered how the skilled team would regard the application, He concluded at [197] that Nicoventures had not shown that it was obvious for a skilled team given Pienemann to arrive at a system within claim 1 of 323.
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