Nicoventures Trading Limited v Philip Morris Products SA & Anor

Permission to appeal on obviousness is approached with caution because appellate courts should be slow to interfere with the first-instance judge’s evaluative assessment. An appeal must identify an error of law which materially affected the analysis, rather than merely challenge the assessment of obviousness. An allegedly over-inclusive construction of patent claims will not justify permission where the judge recognised that construction and accounted for it in the subsequent obviousness assessment. A complaint about an issue not determined below is not itself a ground of appeal where the issue remains open for determination if the obviousness conclusion is overturned.

This was a consequential hearing following the court’s judgment handed down on 14 July 2021. Philip Morris sought permission to appeal, principally concerning whether the patent claims were obvious over prior art, including the Deevi patent. It did not seek to appeal substantial parts of the earlier judgment, including issues concerning Monsees and collocation.

The proposed appeal alleged that the court had adopted an over-inclusive construction of the claims, thereby addressing the wrong target in its obviousness analysis. A further proposed ground concerned infringement, which the court had not determined because its earlier conclusions made that unnecessary.

1. Permission refused. The application for permission to appeal on Grounds 1 to 5 was refused. Philip Morris could renew the application before the Court of Appeal.
2. Obviousness contains a substantial evaluative or jury element. An appellate court should therefore be slow to intervene in a first-instance decision on obviousness. A distinction must be maintained between a pure challenge to the obviousness assessment and an alleged error of law which causes the assessment to be misdirected.
3. The proposed argument that the claims had been construed too broadly was, at most, arguable. The judge did not accept that the construction was erroneous. In any event, the obviousness analysis expressly took account of the broad construction adopted. The proposed ground therefore presented principally an evaluative challenge, rather than a sufficiently arguable legal error warranting permission.
4. Ground 6 was not a ground of appeal. The court had deliberately left infringement undetermined because it was unnecessary to decide and required careful factual analysis. If the obviousness decision were overturned, infringement would remain open for proper determination, either by the Court of Appeal or on remission to the trial judge.

The judgment followed the High Court’s earlier judgment handed down on 14 July 2021. Permission to appeal was refused, with renewal available before the Court of Appeal.