Philip Morris v Nicoventures [2023] EWHC 2616 (Pat)

25 October 2023

Andrew Lykiardopoulos KC appeared for the successful claimants (together “PMI”) in a patent validity action brought against the defendants (together “BAT”). PMI sought to revoke BAT’s patent (“the Patent”) on grounds of: (i) anticipation; (ii) obviousness; (iii) added matter (in light of BAT’s conditional amendments), and sought an Arrow declaration. BAT counterclaimed for infringement.

The Patent related to a product for smoking ‘heat not burn’ (“HNB”) tobacco. HNB technology allows the user to inhale a vapour containing nicotine, while avoiding many of the harmful combustion byproducts produced by a conventional cigarette.  BAT’s product was inventive in that it used magnetic induction to heat the tobacco consumable, and relied on a physical phenomenon known as the Curie point to ‘self-regulate’ the heating temperature.

HHJ Hacon found the Patent invalid. Whilst not anticipated by the two pieces of cited prior art (‘Egzoset’ and ‘Duffield’), BAT’s product was obvious in light of either of them. This could not be cured by BAT’s proposed amendment, which would have added matter. In addition, PMI’s HNB product was held not to infringe the Patent, either on a normal construction or as an equivalent.

However, the judge declined to exercise his discretion to grant the claimant’s Arrow declaration. After reviewing the authorities, he concluded that the appropriate test had not been met: a declaration would not serve a useful purpose, as it was not likely to be of significant commercial value to PMI in reality.

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