Nicocigs Ltd v Fontem Holdings 1 BV

Patent claims must be construed purposively in the context of the specification, but deliberate claim limitations cannot be ignored. The scope of a claim does not itself establish disclosure for added-matter or priority purposes. An amendment is impermissible where it gives the skilled person new technical information which is not directly and unambiguously derivable from the application as filed. Novelty requires direct and unambiguous disclosure of an enabling embodiment. Obviousness is assessed by identifying the skilled person, common general knowledge, the inventive concept and the differences from the prior art, while avoiding hindsight. A claim may cover a technically equivalent arrangement where the claim language and purpose support that construction.

Nicocigs Limited sought revocation of European patent EP(UK) 2 022 349, concerning an aerosol electronic cigarette, and declarations of non-infringement. Fontem Holdings 1 BV, the patentee, counterclaimed for infringement; Fontem Ventures BV was the exclusive licensee. The issues included added matter, novelty, amendment, priority, inventive step and infringement of claims 1, 8, 12 and 13.

The court had to determine whether the patent disclosed subject matter extending beyond the application as filed, whether earlier disclosures anticipated the claims, whether the claims were entitled to priority, whether the claims were obvious, and whether the claimant’s Cartomiser and Clearomiser products infringed.

1. Added matter. The patent’s disclosure was broader than that of the application as filed. It taught a shell configuration and potentially non-porous liquid storage component which the application did not directly and unambiguously disclose. The objection therefore succeeded under Article 123(2) EPC. The proposed disclaimer amendments were also impermissible because they conveyed new technical information rather than merely excluding subject matter from protection.
2. Novelty. EP 2 022 350 A1 disclosed an enabling device falling within claims 1, 8, 12 and 13. A skilled addressee would understand that an integrally formed porous member could perform the functions of both support member and porous component. The claims were therefore anticipated.
3. Priority. The priority document disclosed a three-part device and did not directly and unambiguously support the breadth of claim 1 concerning the detachable liquid-storage arrangement, integral shell and air-inlet location. It did, however, support the generalisations concerning the liquid-storage component and support member. The patent was entitled to priority for only part of the claimed subject matter.
4. Inventive step. Applying the Pozzoli approach, claim 1 was obvious over Brooks and Takeuchi. Increasing the liquid capacity of Brooks, providing a replenishing reservoir, using a wound heating wire and adopting the claimed arrangement were obvious measures. Claim 12 also lacked an inventive step.
5. Infringement. The Cartomiser products fell within claim 1 and infringed claims 12 and 13, but not claim 8. The Clearomiser fell within claim 1, but not claim 8. Section 60(2) infringement succeeded to the same extent as section 60(1) infringement. Since the patent failed the validity attacks, the claim for revocation succeeded and the conditional amendment applications were not required, save that deletion of claim 14 was allowed.