Pmi v Bat
| Jurisdiction | England & Wales |
| Judge | Michael Tappin |
| Judgment Date | 18 April 2023 |
| Neutral Citation | [2023] EWHC 854 (Pat) |
| Docket Number | Case No: HP-2022-000002 |
| Court | Chancery Division (Patents Court) |
and
[2023] EWHC 854 (Pat)
Michael Tappin KC
(sitting as a Deputy Judge of the High Court)
Case No: HP-2022-000002
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD) PATENTS COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
Iain Purvis KC and Tom Alkin (instructed by Powell Gilbert LLP) for the Defendant/Part 20 Claimant
Adrian Speck KC and Kathryn Pickard (instructed by Kirkland & Ellis International LLP) for the Claimant/Part 20 Defendants
Hearing dates: 20–22 & 27 March 2023
Approved Judgment
I direct that no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.
This judgment was handed down remotely at 10.30 am on 18 April 2023 by circulation to the parties' representatives by email and release to The National Archives.
| INTRODUCTION | 3 |
| THE WITNESSES | 4 |
| THE SKILLED TEAM AND THE COMMON GENERAL KNOWLEDGE | 7 |
| The skilled team | 7 |
| The agreed CGK | 8 |
| The disputes about the CGK | 13 |
| THE PATENTS | 18 |
| ADDED MATTER | 24 |
| CLAIM INTERPRETATION AND INFRINGEMENT | 29 |
| Claim interpretation | 29 |
| Infringement | 34 |
| The Düsseldorf court decisions | 35 |
| OBVIOUSNESS | 37 |
| The disclosure of Pienemann | 37 |
| Obviousness over Pienemann | 41 |
| CONCLUSION | 49 |
The Deputy Judge:
INTRODUCTION
In these proceedings the Claimant seeks revocation of European Patents (UK) 3 266 323 (“the 323 patent”) and 3 741 225 (“the 225 patent”) (collectively “the Patents”) registered in the name of the Defendant. The Patents were granted on divisional applications stemming from the same original application, WO 2011/063970 A1 (“the PCT”). Each is entitled “An electrically heated smoking system with external heater” and claims a priority date (which is not challenged) of 27 November 2009.
Revocation is sought on two bases:
i) obviousness over WO 00/28843 (“Pienemann”); 1 and
ii) added matter compared to the disclosure of the PCT.
The Defendant accepted that the 225 patent was invalid for obviousness if claim 1 of the 323 patent was obvious (but not vice versa). The Claimant did not run a distinct case of obviousness of the 225 patent, and so it is only necessary to consider the case of obviousness of the 323 patent. The cases of added matter against the two Patents do, however, require separate consideration.
The Defendant counterclaims for infringement of the 323 patent (its claim for infringement of the 225 patent was abandoned before trial) and of its rights under s.69 Patents Act 1977 which arose on publication of the application for the 323 patent. The allegations of infringement relate to ‘glo’ tobacco heating devices (that use inductive heating) and their associated consumables. The Second Part 20 Defendant admits that it made, imported, kept and/or used such heating devices and consumables in the course of the design, development and testing of such products in the UK, but denies that the products fall within the claims of the 323 patent (though it accepts that if they do, they also fall within the claims of the application for the 323 patent). It also admits that it intends to supply such heating devices and consumables in the UK, and that the supply of the heating devices would be an infringement under s.60(2) Patents Act 1977 if the products once assembled fall within the claims of the 323 patent. 2 The Claimant admits joint liability for the acts and intended acts of the Second Part 20 Defendant.
There is therefore no need to distinguish between the Claimant and the Second Part 20 Defendant and I shall refer to them collectively as BAT. I shall refer to the Defendant as PMI. At trial, PMI took the part of claimant, opened the case and called its evidence first.
This is not the first case between the parties relating to so-called “heat not burn” or “HNB” technology to be tried in this court. First, Meade J heard the trial of a case in which BAT asserted two related patents against PMI's IQOS HNB system. He held both patents to be invalid for added matter and obviousness over a document called Morgan: [2021] EWHC 537 (Pat). Next, Marcus Smith J heard the trial of a case in which PMI asserted four related patents against an earlier version of BAT's ‘glo’ system. He held those patents to be invalid for obviousness over a document called Deevi: [2021] EWHC 1977 (Pat); and his decision was upheld on appeal: [2022] EWCA Civ 1638. Most recently, HHJ Hacon heard the trial of a case in which BAT asserted a single patent against PMI's IQOS system.
While recognising that I had to decide this case on the evidence before me, in opening submissions Mr Speck KC, for BAT, urged me to have regard to certain findings by Marcus Smith J in his judgment to which I have referred above. Mr Speck pointed out that the priority date of the patents considered in that case was very similar to the priority date of the Patents, and that Marcus Smith J had dealt with a number of issues relating to the nature of the skilled team and their common general knowledge (“CGK”) which Mr Speck said were similar to ones which arose in this case; his submission was that “we have had this fight already”.
I did not find this helpful. I have to make findings based on the evidence and submissions which I have heard rather than those which were heard by Marcus Smith J. It seems to me that to have regard to findings which were made by Marcus Smith J is either unnecessary (if I would have come to the same conclusion on the material before me) or dangerous (if I would not). Therefore I have not had any regard to findings made by Marcus Smith J when writing this judgment.
THE WITNESSES
PMI called Mr Grier Fleischhauer as its sole expert witness. From 1979 until his retirement in 2004 he was employed by Philip Morris USA Inc, which at the time was part of the same group of companies as PMI. Until 1991 he worked in the engineering department (at various levels) focussing on the development of combustible cigarette manufacturing processes and machinery. In 1991 he moved to the research and development department and focussed on HNB products rather than combustible cigarettes. In that role, he worked on the design and development of the Accord HNB product. In particular, he was personally involved in and directly managed the team that designed and developed the heater for the Accord. When he was promoted to Director of New Business Development in 1998, he oversaw the whole design and development of the Accord. In 2001 he moved into another role and ceased to be involved with work on the Accord but kept up to speed with key developments relating to that product until his retirement in 2004.
BAT did not suggest that Mr Fleischhauer was partisan as a result of his lengthy employment by Philip Morris USA; rightly so, as he was clearly taking his duties to the court seriously. Nor did it suggest that he was hindered in his task of assisting the court by the fact that he had left the industry five years before the priority date. However, BAT did submit that Mr Fleischhauer's evidence was coloured by his extensive and intimate involvement with the development of the Accord. I agree that Mr Fleischhauer, entirely understandably, did tend to view things from the perspective of those at Philip Morris USA who had been involved with the Accord, and I have had to take that into account in assessing his evidence about the knowledge and approach of the skilled team. I would add that he accepted that, as an engineer, he was less well qualified than Dr McAdam to speak about the knowledge and attitudes of tobacco chemists.
Mr Martin Wensley was BAT's expert witness on engineering matters. From 2000 to 2009 he was Head of Device Technology at Alexza, developing respiratory drug delivery technology and leading research into methods to aerosolize pharmaceuticals. During that time, he worked on a variety of heaters for pharmaceuticals, including designing both resistive and inductive electrical heaters. One of the heaters that Alexza designed was later adapted for nicotine delivery through the respiratory tract, and in that context Mr Wensley undertook teardowns of the Accord and Eclipse HNB products to better understand their designs and how they worked. Since 2009 Mr Wensley has continued to work on nicotine delivery through the respiratory tract, aerosol generation technology for respiratory drug delivery and the development of drug delivery devices to treat cigarette addiction. He is currently the Chief Executive Officer of Airja, a company which he founded specialising in respiratory drug delivery products.
PMI accepted that Mr Wensley was trying to assist the court to the best of his ability. However, it pointed out that Mr Wensley had never been involved in designing a HNB product and did not appear to have done any research into the field other than studying the products which had been marketed. PMI submitted that his evidence was therefore to be given less weight than that of Mr Fleischhauer. However, it was ultimately common ground that a skilled team could include, as the engineer, a person who had no experience in developing a HNB product. I do not see why Mr Wensley is to be regarded as less qualified to speak about engineering components and principles than Mr Fleischhauer. Further, PMI did not identify any aspect of the skilled engineer's knowledge which it said Mr Wensley had overlooked as a result of a lack of research. It is true that he was unable to speak about...
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