Philip Morris Products SA & Anor v Nicoventures Trading Limited & Anor

For a patent claim requiring a heater’s maximum temperature to be “exclusively determined” by a Curie point, there must be a fixed relationship between the Curie point and the maximum temperature. The relationship need not be strict self-regulation, but the maximum temperature cannot depend partly on other factors.

A variant may infringe as an equivalent where it achieves substantially the same result in substantially the same way and strict compliance was not clearly intended. However, where the specification discloses alternative means but the claims consistently select only one, the unclaimed alternative will ordinarily fall outside the claims, including by equivalence.

Arrow relief requires a clearly identified and sufficiently useful commercial purpose. Pending patent applications alone are insufficient.

Philip Morris sought revocation of European Patent (UK) No. 3 367 830, concerning inductive heating of smokable material using a heater whose maximum temperature was related to its Curie point. Nicoventures and British American Tobacco counterclaimed for infringement based on the IQOS ILUMA system and conditionally applied to amend the patent.

The court considered construction, infringement on a normal construction and as an equivalent, novelty, inventive step, added matter and Philip Morris’s application for an Arrow declaration concerning a defined heat-not-burn system.

1. Construction and infringement. “Exclusively determined” required a fixed relationship between the Curie point of the heater material and its maximum temperature. A fixed difference could satisfy the claim, but the maximum temperature could not depend partly on other factors. The IQOS ILUMA system did not satisfy this requirement on a normal construction.
2. Equivalence. Applying the revised Improver questions in Actavis UK Ltd v Eli Lilly & Co, the variant achieved substantially the same result in substantially the same way. However, the specification disclosed an arrangement in which the heater was in the consumable, while every claim required the heater to be in the apparatus. This was a clear indication that the disclosed alternative was outside the scope of the claims, whether by construction or equivalence. The system therefore did not infringe.
3. Validity. Egzoset did not anticipate the claims because it did not give clear and unmistakable directions which would inevitably result in a claimed system. Nevertheless, the idea of selecting a heater material by reference to its Curie point was communicated by Egzoset and would have been obvious when applied to a known tobacco heat-not-burn system. The same conclusion followed from Duffield. All claims therefore lacked inventive step.
4. Amendment and Arrow relief. The conditional amendments would not overcome obviousness and added matter was introduced because the longitudinal-ends feature was disclosed only in an unclaimed consumable-heater embodiment. Permission to amend was refused. The Arrow declaration was also refused. Although the court had a broad discretion, Philip Morris had not clearly identified a significant commercial purpose which the declaration would serve.