Philip Morris Productions, SA v Nicoventures Trading Limited & Anor.

A patent claim should ordinarily be construed, where its language reasonably permits, to include matter described in the specification as an embodiment of the invention. Clear language will normally be required to exclude such an embodiment.

For obviousness, it is insufficient that the skilled person could implement the claimed feature. The evidence must establish a reason why the skilled person would do so without invention. A flexible prior-art technology, combined with known technical objectives and practical motivations to exploit that flexibility, may make the claimed arrangement obvious. The passage of time and intervening commercial failures are relevant considerations, but need not outweigh a technically compelling case of obviousness.

The appellant owned four European patents designating the United Kingdom concerning electrically heated “heat, not burn” tobacco systems. The first respondent sought declarations that the patents were invalid, and the appellant counterclaimed against both respondents for infringement.

Marcus Smith J held the patents invalid for obviousness in [2021] EWHC 3032 (Pat). The appeal concerned the construction of claim 1 of one representative patent and whether its heating arrangement was obvious over the Deevi patent when read with the skilled team’s common general knowledge. The principal questions were whether the claim covered both single-track and multiple-track embodiments, and whether the skilled team would have configured different heater portions to operate for different durations or at different temperatures.

1. Appeal dismissed. Sir Christopher Floyd delivered the judgment, with which Nugee and Arnold LJJ agreed. The judge had correctly concluded that claim 1 of the representative patent was invalid for obviousness.

2. The claim covered both a single electrically conductive track divided into separately connectable portions and multiple tracks which themselves constituted separately connectable portions. The specification described both arrangements as embodiments of the invention and attributed the same advantages to each. Where claim language is reasonably capable of including a stated embodiment, the skilled person is likely to adopt that construction. Language said to exclude the embodiment would normally need to be clear. The figures also contained no single track with separately connectable portions. Grounds 1 and 2 therefore failed, and the factual challenge under ground 3 was immaterial.

3. Deevi did not disclose heating different portions for different durations or at different temperatures. Its automatic circuitry merely controlled the duration of heating for each flavour charge. The judge had slightly overstated Deevi’s disclosure, but had not materially misdirected himself because he did not treat Deevi as disclosing the whole claimed control feature.

4. The obviousness conclusion did not rest merely on what the skilled team could do. The evidence supplied practical reasons why it would use the flexibility of a thin-film heater and electronic controls to apply different heating profiles. Those reasons included avoiding combustion or inadequate aerosol generation, maintaining consistent aerosol and flavour across successive puffs, pre-heating, accommodating different starting temperatures, puff actuation and energy efficiency. The skilled team would therefore have devised circuitry within claim 1 without invention.

5. The judge’s reasoning was not affected by hindsight. He was entitled to conclude that the interval between the prior art and the priority date, together with the commercial failure of intervening products, carried insufficient weight to alter the obviousness assessment. Grounds 4 and 5 failed. As invalidity was upheld, no remittal for determination of infringement was required.

1. Court of Appeal (Civil Division): In [2022] EWCA Civ 1638, the court unanimously dismissed the patent proprietor’s appeal and upheld the finding that claim 1 was invalid for obviousness.
2. High Court, Patents Court: Marcus Smith J held the four patents invalid for obviousness in [2021] EWHC 3032 (Pat). Having found invalidity, he did not determine infringement.