Fontem Holdings 1BV and Another v Ten Motives Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Norris |
| Judgment Date | 02 October 2015 |
| Neutral Citation | [2015] EWHC 2752 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case Nos: HP-2015-000011 |
| Date | 02 October 2015 |
[2015] EWHC 2752 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
The Rolls Building
Fetter Lane
EC4A 1NL
Mr Justice Norris
Case Nos: HP-2015-000011
HP-2015-000027
Andrew Lykiardopoulos QC and Geoffrey Pritchard (instructed by Simmons & Simmons LLP) for the Fontem Parties
Alastair Wilson QC and Matthew Kime (instructed by Beeston Shenton Solicitors Limited) for the Ten Motive Parties
James Abrahams (instructed by Powell Gilbert LLP) for Nicocigs
Hearing dates: 20 and 21 July 2015
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
It is in this case unnecessary to distinguish between individual parties on one side of the record. I will simply refer to them as "Fontem", "10 Motives" and "Nicocigs" respectively. On 21 st July 2015 I dismissed applications by 10 Motives (a) for defendants' summary judgment and (b) in the alternative, for a stay of Fontem's claim, and I dealt with an application for consequential directions by Nicocigs in their action. I said I would give full reasons in writing: that is the purpose of this judgment.
The patent in suit is European Patent (UK) No. 2 022 349 B1 ("the Patent"). It concerns the increasingly fashionable electronic cigarette. Such a device uses an atomiser to produce a vapour for inhalation as a substitute for the real smoke produced by a tobacco cigarette. The Patent teaches (amongst other things) an atomiser structure which improves its aerosol effects and atomising efficiency. Since the date of grant on 30 July 2014 Fontem has been the registered proprietor of the Patent. Fontem sells electronic cigarettes in the UK under the name PURITANE (and latterly also blu).
In Claim No. HP 2050 000011 Fontem seeks declaratory relief that 10 Motives' rival products called "Cirro clearomisers" (there are four versions) and "V2 Rechargeables" (which together have about 35% of the UK market) infringe the Patent, an injunction to restrain further infringement and an enquiry as to damages in respect of each act of infringement (or in the alternative an account of profits). In its Defence 10 Motives alleges that the Patent is invalid, and further denies that the Cirro and V2 products infringe the Patent because there are material and distinguishing features differentiating them from any product described or claimed in any claim in the Patent.
Fontem has also commenced similar proceedings in England against two smaller market players (JT International SA and Zandera Limited, who together have about a 12% market share) in which substantially the same issues arise. Nicocigs (which also has about a 12% market share) has commenced its own proceedings (Claim No HP 2015 000027) for revocation of the Patent (relying on different grounds of invalidity) and for a declaration of non-infringement in relation to its own products, which go under the name of "Nicolites" and "Vivid E-Liquid". Fontem has counterclaimed for infringement. Under existing case management directions, this action and those other two actions will be heard together at a single trial fixed to commence in early May 2016. The trial will be limited to questions of validity and infringement.
Fontem has also commenced proceedings in Germany against other manufacturers and suppliers of e-cigarettes, and in those proceedings obtained preliminary injunctions: these have in some cases led to settlement of the proceedings and the grant of licences by Fontem. Fontem has also commenced infringement proceedings in California against ten defendants, including the three largest e-cigarette businesses in the US, based on the equivalent US patent.
To complete the background, 10 Motives was one of those who filed a Notice of Opposition to the grant of the Patent at the EPO. Those Opposition proceedings are unlikely to conclude before 2019 and may take very much longer. In the meantime the e-cigarette market is expanding rapidly (the UK market grew by 340% in 2013, and year-on-year sales growth in the supermarket sector was 49.5% in 2014); and e-cigarette manufacturers and suppliers are being acquired by international tobacco companies. Already Fontem is ultimately owned by Imperial Tobacco Group plc, and Nicocigs by Philip Morris International Inc.
It is common ground that for the purposes of these applications I need look only at Claim 1 in the Patent (because all other claims are dependent upon it).
The introductory part of the Patent explains (in paragraph [0006]) that electronic cigarettes then available did not provide the ideal aerosol effects, and their atomising efficiency was not high, and (at paragraph [0008]) that to overcome these and other disadvantages the invention had been designed to provide an aerosol electronic cigarette that substituted for cigarettes. The consistory clause (at paragraph [0009]) states:-
"The purpose of this invention is fulfilled with an aerosol electronic cigarette comprising a battery assembly, an atomiser assembly, a liquid storage component and a hollow shell having one or more through-air-inlets. The battery assembly connects electrically with the atomiser assembly, and both are located in the shell. The atomiser assembly includes a porous component and a heating body in the form of a heating wire. The atomiser assembly includes a support member having a run-through hole. The porous component is mounted on the support member and is wound with the heating wire in a part that is on the side in the axial direction of the run-through hole. The liquid storage component fits with the porous component of the atomiser assembly and is located in one end of the shell which is detachable"
In the pre-characterising part of the Patent it is explained (at paragraph [0032]) that
"This invention will bring the following benefits…..(2) For this invention, the battery assembly and atomiser assembly are directly installed inside the shell, and then connected with the cigarette bottle assembly. That is, there is just one connection between two parts, resulting in a very simple structure. For use or change, you just need to plug the cigarette holder into the shell, providing great convenience. When the nicotine liquid in the cigarette bottle assembly is used up or the cigarette bottle assembly is damaged and needs to be changed, the operation will be extremely easy."
In the specific embodiment described in the Patent at paragraph [0035] it is said that
"…this patent provides an aerosol electronic cigarette, which includes a battery assembly, an atomiser assembly and a cigarette bottle assembly, and also includes a shell (a) which is hollow and integrally formed. The battery assembly connects with the atomiser assembly and both are located in the shell. The cigarette bottle assembly is located in one end of the shell, which is detachable. The cigarette bottle assembly fits with the atomiser assembly. The shell has through-air-inlets."
Claim 1 is then expressed in these terms (with agreed integers inserted):-
"[1] An aerosol electronic cigarette comprising
1.1 a battery assembly,
1.2 an atomizer assembly,
1.3 a liquid storage component (9) and
1.4 a hollow shell (a,b) having one or more through-air-inlets (a,1);
[2] wherein the battery assembly connects electrically with the atomizer assembly, and both are located in the shell (a,b);
[3] the atomizer assembly includes a porous component (81) and a heating body in the form of heating wire (83);
characterised in that:
[4] the atomizer assembly includes a support member (82) having a run-through hole (821);
[5] the porous component (81) is mounted on the support member (82) and is wound with the heating wire (83) in a part that is on the side in the axial direction of the run-through hole (821); and
[6] the liquid storage component
6.1 fits with the porous component of the atomiser assembly and
6.2 is located in one end of the shell (b) which is detachable."
The designations in Claim 1 appear on the figures below:-
In its summary judgment application 10 Motives argues that on a comparison of its products with the Patent properly construed the Court can be satisfied that Fontem has no real prospect of succeeding in its infringement claim.
The principles upon which the jurisdiction conferred by CPR 24 is applied are settled, and it may be taken that I have them (and particularly the summary of them by Lewison J in Easy Air Limited v Opal Telecom Ltd [2009] EWHC 339 at para. [15]) well in mind. As Lewison J said:-
" ..it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it."
The application of these principles in the context of patent claims was examined in Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWCA Civ 1293. Noting that (as explained by Lewison J) the existence of an issue of construction of a patent did not automatically render it unsuitable for summary judgment, Floyd LJ said (at para. [9] following):-
"However it is necessary to proceed with caution given that the court is not being called upon, when construing a patent, to decide what the words of the patent mean to it, but what they would have been understood to mean by the person skilled in the art. Such...
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