Philip Morris Products, SA & Anor v RAI Strategic Holdings, Inc & Anor

Added matter is assessed by comparing the disclosure of the application as filed with the patent as granted, through the eyes of the skilled person. The comparison is strict: subject matter is added unless it is clearly and unambiguously disclosed, expressly or implicitly. Features taken from a preferred embodiment cannot generally be separated from their context without such disclosure.

For inventive step, an obvious route is not made less obvious because other routes exist. A small number of obvious choices may still lead to an obvious claim. An arbitrary limitation cannot itself support inventive step, but the claim must still be obvious over the state of the art or common general knowledge.

The claimants sought relief concerning two European patents relating to heat-not-burn tobacco products and aerosol-generating devices. The defendants counterclaimed for infringement and alleged that the patents were invalid for added matter and obviousness over Morgan.

The court considered claim construction, added matter, inventive step, infringement, and whether the third party was an exclusive licensee. The central issues included whether gathered sheet reconstituted tobacco could be combined with an elongated heating element and whether the relevant controller claim covered power variation responding to sensor measurements during draw.

1. Claim construction. The controller integer required the controller to alter power in response to the sensor during periods of draw. It did not require on/off operation, perfect puff detection, or that the heater be unpowered outside periods of draw. The sensor could detect airflow indirectly through resistance changes. The court accepted, pragmatically, that the EP944 claim required an actual device with the specified features, but left the precise intent or system construction open.
2. Added matter. Applying the principles drawn from Conversant v Huawei [2020] EWCA Civ 1292, the combination of gathered sheet reconstituted tobacco with the elongated heating element was not clearly and unambiguously disclosed in the Grandparent Application. The combination conveyed new technical information, including an interaction between the sheet passages and the heater. The removal of a puff-actuated controller was not objectionable because the earlier claim relied upon did not provide the relevant basis. Several omissions from the Figure 3 embodiment, including the puff-actuated controller and upstream heater, also constituted impermissible intermediate generalisation.
3. The specific objection concerning omission of close contact between the heater, substrate and aerosol-forming material was refused because it had not been properly pleaded and its late introduction would have prejudiced the patentee.
4. Inventive step. Applying the Pozzoli analysis, the skilled team would consider Morgan’s third embodiment and would replace its unattractive extruded tobacco form with gathered sheet reconstituted tobacco. Gathering was known from cigarette filters and the Premier HNB product. The change produced only the predictable advantage of making the tobacco easier to form into a cigarette and was obvious.
5. The claims were therefore invalid for added matter and obviousness. Had they been valid, the IQOS products would have infringed because their controller varied power during draw in response to resistance measurements. NTL was an exclusive licensee within Patents Act 1977 s 130(1).

First-instance decision of the High Court (Patents Court). The judgment states that permission-to-appeal time would not run until the hearing on the form of order.