Nicoventures Trading Limited v Philip Morris Products SA

For added matter, an amendment is impermissible only where it presents the skilled person with new technical information not directly and unambiguously apparent from the original disclosure. A claim may state in general terms what the specification discloses; the prohibition concerns new information, not generalisation as such.

For an inductive heater, the work coil and the heated metal object together may constitute a heating element. Two heating elements must, however, be components which permit different parts of the substrate to be heated at different times and allow more straightforward control of the temperature gradient. Whether that capability exists is a matter of fact and degree.

Obviousness requires consideration of the skilled team, common general knowledge and the disclosure of the prior art. A results-dependent design pathway does not establish obviousness without evidence of what the skilled team would actually have achieved.

BAT sought revocation of European Patents (UK) 3 266 323 and 3 741 225, owned by PMI, on grounds of added matter and obviousness over WO 00/28843 (Pienemann). PMI counterclaimed for infringement of the 323 patent by BAT’s ‘glo’ inductive tobacco-heating products.

The patents concerned electrically heated smoking systems with partially extending heating elements. The principal issues were whether the claims added matter, whether the ‘glo’ devices contained two heating elements within the proper construction of the claims, and whether the claimed systems were obvious over Pienemann.

1. Added matter. BAT’s revocation claims failed. The disclosure of the PCT was not limited to systems having an unheated upstream portion. The disclosure of a second heating element in [0027], read with the surrounding teaching, supported a system with two heating elements, each extending only partially along the substrate and with the second upstream of the first. The claims therefore did not disclose new information and were not impermissible intermediate generalisations.
2. Construction. The claims were product claims. In an inductive heater, the skilled team would regard the work coil and the heated metal object together as the heating element. The two claimed heating elements must nevertheless permit different parts of the substrate to be heated at different times and provide more straightforward control of the temperature gradient. This was a matter of fact and degree, not a requirement for complete thermal isolation.
3. Infringement. The ‘glo’ devices had two independently controllable work coils surrounding one steel tube. Activating one coil caused significant heating in the region associated with the other. The construction therefore did not permit different parts of the substrate to be heated at different times, and the devices did not contain a first and second heating element within the claims. PMI’s normal construction infringement claim failed. Its equivalence case also failed because the variant did not achieve substantially the same result in substantially the same way.
4. Obviousness. Applying the structured approach in Pozzoli and the Supreme Court’s guidance in Actavis v ICOS, the skilled team would regard Pienemann’s example as worth replicating closely. It would not obviously begin by substituting a thin-film heater in the device for Pienemann’s conductive sheath. Nor did Pienemann disclose, or make obvious, a supposed middle ground of multiple heaters each used for multiple puffs. The alleged route to two heaters depended on unknown experimental results and was therefore insufficiently established.
5. The patents were not invalid for added matter or obviousness. PMI’s infringement counterclaim failed. The court adjourned consideration of the form of order.