Philip Morris Products S.A. v Nicoventures Trading Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 25 October 2023 |
| Neutral Citation | [2023] EWHC 2616 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2021-000029 |
[2023] EWHC 2616 (Pat)
HIS HONOUR JUDGE Hacon
(Sitting as a High Court Judge)
Case No: HP-2021-000029
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Andrew Lykiardopoulos KC and Tom Alkin (instructed by & Powell Gilbert LLP) for the Claimants
Nicholas Saunders KC and Kathryn Pickard (instructed by Kirkland & Ellis International LLP) for the Defendants
Hearing dates: 21–23 and 27–28 September 2022
Approved Judgment
This judgment was handed down remotely at 10.30am on [date] by circulation to the parties or their representatives by e-mail and by release to the National Archives.
Introduction
The idea of an electronic cigarette in which tobacco compounds are heated, vaporised and inhaled by the user dates back at least to the 1960s. By the 1990s increasing public awareness of the dangers of smoking and the search for alternatives had greatly boosted research into what had become known as vaping.
This litigation is between two large tobacco businesses, the Philip Morris group and the British American Tobacco group. It concerns what are known in the industry as “heat not burn” or “HNB” products. As the name suggests, the tobacco they contain is heated to vaporise nicotine and other compounds without burning the tobacco, the point being that the user does not inhale smoke, only the aerosol containing the nicotine and other compounds. The damaging effect of smoke entering the lungs is avoided.
The patent in suit is EP (UK) No. 3 367 830 B1 (“EP 830”), which has the title “Article for use with apparatus for heating smokable material” and an unchallenged priority date of 30 October 2015.
The first defendant is the proprietor of EP 830; the second defendant is the former owner of the patent. I will refer to the defendants as “BAT”.
The claimants (collectively “PMI”) seek revocation of EP 830. BAT counterclaims for infringement of EP 830 by the sale of an HNB product called the IQOS ILUMA, marketed by PMI.
BAT has conditionally applied to amend EP 830.
PMI has also applied for Arrow declaratory relief in respect of a defined HNB system.
BAT were represented by Nicholas Saunders KC and Kathryn Pickard. Andrew Lykiardopoulos KC and Tom Alkin appeared for PMI.
The witnesses
PMI fielded two experts, BAT one. PMI also relied on three witnesses of fact whose evidence was not challenged.
BAT's expert was Martin Wensley. Mr Wensley is the founder and CEO of Airja, Inc, a medical device company based in San Francisco. Over the last 20 years Mr Wensley has worked in the field of drug delivery systems. Between 2000 and 2009 he was Head of Device Technology at Alexza Pharmaceuticals where his work involved the designing of a device to create pharmaceutical aerosols, later adapted for nicotine delivery. At the priority date Mr Wensley was Director of Engineering at Fontem Ventures where he took the lead in developing nicotine replacement therapy in the UK.
PMI's first expert was David McLaughlin, who is a director of Elucid8 Holdings Limited, which provides consultancy services on e-cigarettes. Dr McLaughlin is a pharmaceutical chemist by training. From 2000 to 2013 he worked at Gallaher Limited, a UK manufacturer of tobacco products. At the priority date he was the Emerging Product Director there, leading their technical evaluation of products such as e-cigarettes.
PMI's second expert was Andrew Bleloch. After completing his PhD at Cambridge University in 1989, Dr Bleloch continued as an academic at Cambridge University until 2007, thereafter becoming Professor of Materials Science at Liverpool University. Since the beginning of 2011 Dr Bleloch has worked in industry in the San Francisco Bay Area. In 2014 he co-founded Loto Labs, Inc to develop a new generation of vaping devices for both nicotine and cannabis. At the priority date he also worked as Chief Scientific Officer at ColdLogix, Inc on the development of superconducting logic for computer processors. Since 2019 Dr Bleloch has worked full time at Loto Labs.
All three experts were excellent witnesses, knowledgeable in their respective fields, who gave clear and helpful answers. Criticisms of them by counsel were largely limited to their over-qualification and the order in which they became aware of documents, neither of which was any reflection on the experts.
The skilled team
By common consent EP 830 is addressed to those in a tobacco company interested in developing HNB products. One member of the team would be a person working in the marketing of tobacco consumables who would know about consumer preferences in that market. There would be another, more technical person, working in the development of new products, a graduate with a degree in engineering or physics.
There was a dispute regarding the extent of the team's knowledge of induction heating. Dr McLaughlin's evidence suggested that the skilled person would refer to a specialist in the field when it came to the “hard sums part”, as he put it. It was not made entirely clear what Dr McLaughlin had in mind when he spoke of hard sums, but I think it is a fair inference that the skilled team would have obtained specialist expertise if they felt that a better understanding of induction heating would help.
Common general knowledge
Common ground
The technical background set out in this section was part of the common general knowledge (“CGK”) of the skilled team at the priority date.
HNB products heat tobacco to a temperature of a few hundred degrees Celsius. Agents are added to the tobacco to assist in the formation of the desired aerosol, such as glycerin and propylene glycol. The goal is to provide the inhaler with an experience as close as possible to that of smoking a conventional cigarette.
In some of the prior art HNB products heat was generated by chemical means, in others an electrical heater was used.
Speaking generally, it was known that electrical heaters were either resistive (sometimes “resistance”) or inductive. In a resistive heater, such as the bar of an electric fire, an electric current passes through a material which generates resistance to the current so some of the energy of the current is converted into thermal energy. The thermal energy is transferred to the object to be heated by conduction, radiation or convection, or a combination of one or more of them. Resistive heating is sometimes called Joule or Ohmic heating after the demonstration by James Joule in 1840 that the relationship between a given current and the amount of heat generated is analogous to Ohm's law.
Inductive heaters rely on the application of an oscillating magnetic field to an electrically conducting material – the “susceptor”. This field is created by applying an alternating electric current to a coil of a conductor placed close to the susceptor. It was known that eddy currents thereby generated in the susceptor cause Joule heating.
A common example of inductive heating in the home is the heating of a saucepan on an induction hob. A characteristic of induction hobs is that the object to be heated is the susceptor itself; there is no need for transference of heat by conduction or other means. This significantly reduces the wastage of heat.
In HNB products the tobacco is heated using a heating element. Where resistive heating is used, a current is passed through the heating element. If inductive heating were to be used, the heating element would be a susceptor to which an oscillating electrical field is applied.
The electric heaters used in prior art HNB products were either external, wrapped around the tobacco, or internal with a heater blade, or probe, penetrating the tobacco. Each had pros and cons.
By the priority date two groups of HNB products had been marketed using chemical heating (carbon or butane), neither of which were a commercial success. Three groups of manufacturers sold resistive heating products which were more successful but they had drawbacks, namely a poor battery life, the need to clean the product and a risk of blade breakage.
The evidence discussed prior art HNB products which would have formed part of the CGK of the skilled team. One example was the first product which used electric resistive heating, the Accord model launched by PMI in 1998. Dr McLaughlin illustrated it in his evidence:
Another example was the PMI IQOS system launched in 2014. It was a rechargeable device into which a consumable containing tobacco was inserted. A blade within the device penetrated the tobacco upon insertion. The blade was resistively heated. This is an illustration:
No HNB product using inductive heating had been marketed by the priority date.
CGK in dispute
I have referred above to the generation of induction heating by eddy currents, Joule heating of the susceptor. In fact, the susceptor is also heated by an important second means which has relevance to the present case. It is called magnetic hysteresis.
The significant points of dispute regarding the CGK fell into three parts:
(1) Whether the skilled person had a preference at the priority date for a resistive heater over an induction heater for HNB products.
(2) Whether the skilled person was aware that induction heating was generated in large part (or at all) by magnetic hysteresis.
(3) Knowledge of certain details of the design of HNB products.
Preference for types of heater
The experts were agreed that at the priority date induction heating required components and control systems that were more sophisticated than those...
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