Nicoventures Trading Ltd v Philip Morris Products SA & Anor [2021] EWHC 1977 (Pat) (14 July 2021)

Nicoventures Trading Ltd v Philip Morris Products SA & Anor [2021] EWHC 1977 (Pat) (14 July 2021)

The patents in suit are invalid for lack of inventive step. The claimed combination of an electrically conductive track heater on an insulating substrate (Feature A, disclosed in Deevi) and a thermally insulating material comprising a metal (Feature B, disclosed in Monsees) is a collocation of known features, producing no synergistic effect. The differences between the prior art and the claimed inventions would have been obvious to the skilled team at the priority date. Proposed amendments do not cure the lack of inventive step. Accordingly, the patents are revoked and the infringement counterclaim fails.

Citation
[2021] EWHC 1977 (Pat)
Parties
Claimant and First Part 20 Defendant: Nicoventures Trading Limited; Defendant/part 20 Claimant: Philip Morris Products SA; Second Part 20 Defendant: British American Tobacco (Investments) Limited
Jurisdiction
England and Wales
Judgment Date
14 July 2021
Procedural Posture
Patent Revocation and Infringement / High Court Trial Judgment
Outcome
Patents revoked for lack of inventive step; counterclaim for infringement dismissed.
Legal Topics
Patent Validity, Obviousness, Inventive Step, Patent Infringement, Divisionals, Heat Not Burn Tobacco Technology
Intellectual Property Patents Patent Validity Obviousness Inventive Step Patent Infringement Divisionals Heat Not Burn Tobacco Technology

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Parties

Nicoventures Trading Limited

Claimant and First Part 20 Defendant

Philip Morris Products SA

Defendant/part 20 Claimant

British American Tobacco (Investments) Limited

Second Part 20 Defendant

Procedural Posture

Patent Revocation and Infringement / High Court Trial Judgment

Legal Issues

  1. 1 Whether the patents in suit (EP (UK) 3,248,483; 3,248,484; 3,248,485; 3,248,486) are invalid for lack of inventive step (obviousness) over the prior art; Whether the patents are infringed by the 'glo' device if valid; Whether proposed amendments to the patents should be allowed

Ratio Decidendi

The patents in suit are invalid for lack of inventive step. The claimed combination of an electrically conductive track heater on an insulating substrate (Feature A, disclosed in Deevi) and a thermally insulating material comprising a metal (Feature B, disclosed in Monsees) is a collocation of known features, producing no synergistic effect. The differences between the prior art and the claimed inventions would have been obvious to the skilled team at the priority date. Proposed amendments do not cure the lack of inventive step. Accordingly, the patents are revoked and the infringement counterclaim fails.

Court Disposition

Patents revoked for lack of inventive step; counterclaim for infringement dismissed.

Orders

  • Declarations of invalidity for EP (UK) 3,248,483; 3,248,484; 3,248,485; 3,248,486
  • Orders for revocation of the patents