Recently in Nicocigs Limited v Fontem Holdings 1 BV 2016 EWHC 2161 (2 September 2016), Fontem’s patent in the UK for an aerosol electronic cigarette EP (UK) No. 2022 349 B1 (the “Patent”) did not survive an attack brought against it launched by Nicocigs upon several grounds. As such, the judgment by the High Court provides a useful reminder of the rules in revocation actions relating to priority, added matter, novelty, inventive step and amendment.
This is the latest episode in a series of litigation in the UK, the USA and across Europe concerning Fontem’s invention and other players in the highly lucrative e-cigarette market. Fontem v Ten Motives & Nicocigs  EWHC 2752. Fontem has also commenced proceedings in Germany against other manufacturers and suppliers of e-cigarettes and in those proceedings obtained preliminary injunctions which in some cases has 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 USA, based upon the equivalent US to the Patent.
According to the Patent and its application filed on 15 May 2007 (the “Application”), the problem with existing electronic cigarettes is that they are complicated in their structure with their bodies having to be divided into three sections which had to be connected through via plugging on thread coupling before use. Also, it was asserted that existing products required frequent changes of batteries and did not provide ideal aerosol effects and had low atomizer efficiency.
Shown below are some of the drawings contained the patent in dispute which describe the technical solution of the invention.
The patent – figure 1
The above diagram describes three main components: the battery assembly (3), the atomiser assembly (8) and the liquid storage component (9) in a shell a, b. Within the atomiser assembly there is a porous component (see figures 17 and 18 below) which is in liquid communication with the liquid (usually nicotine) storage component. The liquid storage component is located in one end of the shell and is detachable.
When a person sucks on the device (end b1), the pressure change causes the battery assembly to activate and provide power to the heating component (figures 17 and 18 below) in the atomiser assembly. The pressure change also causes air to flow into the device through the inlets (a1) and towards the atomiser assembly where by forced convection vaporisation of the liquid in the porous component, will occur. Liquid lost by evaporation from the porous component is replaced by further liquid supplied by capillary flow from the liquid storage component. The vapour condenses within the shell to form an aerosol which is inhaled by the user so as to simulate the smoke of a cigarette.
The patent – figures 17 & 18
In the Patent, the atomiser assembly (8) as shown above in Figures 17 and 18 includes a support member (82), the porous component (81) set on the frame (82) with the heating wire wound on the porous component. The frame has a run through hole (821) on it. The porous component is wound with heating wire in the part that is on the side in the axial direction of the run through hole.
The added matter complaint
In the Application, the shell was described as both hollow and “..integrally formed…” whereas in Claim 1 of the Patent it was just described as hollow. As such, Counsel for Nicocigs argued that in the Patent the patentee had relegated the essential teaching of the Application that there has to be an integrally formed shell housing the battery and atomiser assembly which shell is detachably fitted to the cigarette bottle assembly, into a mere embodiment of a wider invention in which it did not matter which part of the overall assembly was detachable from which, so long as at least the liquid storage component part was detachable.
The governing principle is that an applicant should not be allowed to improve its position by adding matter not disclosed in the filed application. Otherwise, the applicant could (i) circumvent the first to file rule and (ii) could gain a different monopoly to that to which it is justified.
In Houdaille T-0331/87 (cited by the Court of Appeal in Nokia v IP Com  RPC 5), the Technical Board of Appeal of the European Patent Office (“TBA”) applying Article 123(2) of the European Patent Convention (“EPC”), had laid down a three part test for whether an amendment of a claim does or does not extend beyond the subject matter of the application as filed. The TBA held that the replacement or removal of a feature was permissible, provided the skilled person would directly and unambiguously recognise that:
- the feature was not explained as essential in the application.
- the feature is not, as such indispensable for the function of the invention in light of the technical problem it serves to solve.
- the replacement or removal requires no real modification of other features to compensate for the change.
Lord Justice Jacob in Richardson-Vicks Patent  RPC 568 had described the test as “…whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification…”.
The Application was clearly describing only a two part device, echoing the stated aim of the invention being to have a less complicated structure than devices then in the market place. The Court agreed with Counsel for Nicocigs that the skilled person would not have learned from the Application that the invention would work without the battery assembly and atomiser being in an integrally formed shell to which was detachably attached a cigarette bottle assembly.
This successful added matter attack that, whereas as in the Application there was an integrally formed piece containing the battery and atomiser, there is in the Patent just a shell for all three components, further bolstered by the consequence of such, meant that in the Patent the inlet holes could be located anywhere on the device.
The second added matter attack by Nicocigs was based on what is known as intermediate generalisation which occurs when a feature is taken from a specific embodiment, then stripped of its context and introduced into the claim in circumstances where it would not be apparent to the skilled person that it has any general applicability to the invention.
Paragraph 25 and Claim 18 of the Application described how “…The said cigarette bottle assembly includes a hollow cigarette holder shell, and a perforated component for liquid storage inside the said cigarette holder shell…”.
Elsewhere, in paragraph 27 and Claim 20, the Application refers to how “…One end of the said porous component lies against one end surface of the said perforated component for liquid storage and contacts the said perforated component for liquid storage…”.
Paragraph 55 of the Application stated in the preferred embodiment of the invention “…One end of the porous component [Figures 17 and 18 above] fits with the cigarette bottle assembly…”.
The Court held that the Application would teach the skilled addressee that it was the liquid storage component of the cigarette bottle assembly which fitted with the porous component of the atomiser and that the arrangement provided for physical contact such as to cause the liquid to flow by capillary action from the storage component to the heated part of the atomiser for vaporisation. As such, the skilled addressee was being taught that the liquid storage component of the invention (being part of the cigarette bottle assembly) was a porous component and that it was its porosity which enabled the invention to work.
However, Claim 1 of the Patent replaced the references to “cigarette bottle assembly” with “liquid storage component” but without the component being described as having the characteristic of porosity. Counsel argued that this represented a “…heinous example of an intermediate generalisation; a blatant case…” since the consequence was that the Patent teaches, contrary to the Application, that the liquid storage component need not be porous.
Validity – novelty
The genesis for the Patent was a Chinese utility model filed on 16 May 2006 (the “PD”). The patentee’s predecessor had filed on 15 May 2007 in China, two international PCT applications which took effect as two different European patent applications, each claiming priority from the PD – (a) the Patent and (b) its sister, No. EP 2022350, (“’EP 350”).
EP 350 is identical to the PD whereas there are some differences with the Patent.
As set out in Lundbeck A/S v Generics  RPC, in order for it to anticipate a patent, prior art must disclose the claimed invention and together with common general knowledge, enable the skilled addressee to perform it. The disclosure of the claimed invention had to be direct and unambiguous.
By reference to Figures 17 and 18 above, Fontem argued that EP 350 did not anticipate Claim 1 of the Patent because its porous member (see below – Figures 8 and 9) did not contain a support member.
EP 350 – figures 8 and 9
The Court commented that patents and prior art are addressed to “…engineers – not language pedants…” and looking at the functionality of the porous component and the atomiser, since it is conceivable that the support member and porous member in the Patent could be made from the same material, “…a skilled person who read Claim 1 of the Patent and made the atomiser all out of the same porous material and used a single piece for both the support member and the porous member instead of two pieces which he had to fit together, would consider that he was working the invention…”.
Accordingly, the Court held that the disclosure of EP 350 anticipated Claim 1 of the Patent and also Claims 8, 12 and 13.
In the event that the Court did hold that the novelty of the main Claim 1 was destroyed by reference to EP 350 (as turned out to be the case), Fontem had applied to overcome the attack by way of disclaimers that amended the Patent by stating that (i) the atomiser would not be one that used capillary impregnation but would be comprised of a porous and support member as “…parts of a single integrated body made of micro-porous ceramics …” and (ii) the porous members not being made of micro-porous ceramics, but with a support member made of foamed ceramics or certain other materials.
The Court refused the amendments as the disclaimers went beyond simply excluding from protection subject matter contained in the Patent but rather it taught the skilled addressee some technical knowledge that could not be gleaned from the Application, namely, that the porous and support members could be a single integrated body and that micro-porous ceramics were suitable materials for such (see Napp v Ratiopharm  EWCA Civ 252).
Faced with these adverse rulings on added matter, novelty and amendment, Fontem was compelled to argue that the Patent was entitled to rely upon the PD for priority.
Under section 5(2) of the UK’s Patent Act 1977, which is to be interpreted as having the same effect as Article 87(1) of the EPC, priority may be derived from an earlier application in respect of “the same invention”, see the Court of Appeal in Medimmune v Novartis  EWCA Civ 1234 .
Although it is possible to preserve priority where a generalisation can be derived directly and unambiguously from the language of the PD e.g. the use of “fixing means” in a patent when the term used in the priority document is “nail”, see Samsung v Apple  EWCA 467 . Unfortunately, for Fontem, the PD disclosed only a three part device when one of the said advantages of the invention under the Patent, was that it was a two part device.
Claim 1 of the PD reads as follows:
“An emulation aerosol sucker, characterised in that it includes a battery assembly, an atomiser assembly and a cigarette bottle assembly, wherein the cigarette bottle assembly, includes a cigarette liquid bottle and the atomiser assembly includes an atomiser, and wherein the cigarette bottle assembly is inserted into one end of the atomiser assembly, thus forming one cigarette type or cigar type body.”
Thus the PD’s three part assembly had the cigarette bottle assembly separate from the atomiser assembly with the former being inserted into one end of the latter in a detachable manner, so that it could be replaced or recharged. In order to prove infringement, Fontem had to argue that Claim 1 included a configuration where the liquid storage component (i) is in permanent contact with the atomiser assembly such that liquid would flow to the porous component of the atomiser; and (ii) is not pushed into end to end contact with the atomiser assembly but is integrally formed with it. In addition, because the teaching of the PD does not include the atomiser assembly and battery assembly being contained in a single integral shell, in the PD the through-air inlets could only be in the atomiser assembly, whereas under the Patent the air inlets could be anywhere provided that they deliver air to the porous component around which the heating wire was wound so that evaporation (convection) could occur.
Fontem had argued, since the EP 350 and the PD were essentially the same, then in light of the ruling that EP 350 anticipated the Patent, it should follow that the Patent must be entitled to claim priority from the PD. However, the Court rejected this argument because the line of reasoning confused an investigation into the breadth of the Patent’s claims with an analysis as to whether the PD disclosed the same invention.
In light of these differences between the PD and the Patent, the Court held that the Patent was not entitled to rely on the PD for its priority.
Validity – lack of inventive step
The Court acknowledged that when analysing inventive step, it was important to be aware of the dangers of hindsight when postulating the steps by which from the prior art one can arrive at the invention. Applying, the test in Pozzoli v BDMO  EWCA Civ 588, the Court:
- identified the notional ‘person skilled in the art’
- identified the relevant common general knowledge of that person
- construed and/or identified the inventive concept of the claim in question
- identified what, if any, differences existed between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed
- enquired whether, when viewed without any knowledge of the alleged invention as claimed, those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
With regard to the first piece of prior art, US Patent No 4947874 (“Brooks”), which was an e-cigarette allowing just six to ten puffs, the Court held it would have been obvious to the skilled addressee to increase the capacity of reservoir storing the liquid nicotine:
“…there was nothing clever about increasing the volume/capacity of the porous component in Brooks to make sure it held enough liquid for purpose and he accepted that an obvious way to do it was to wrap more of the component around the ends to provide a reservoir…” [paragraph 148].
Moreover, the experts agreed that there was nothing inventive in the use of fibre as a porous material for storing liquid and fibrous carbon was one of Brooks’ preferred materials.
With regard to the second piece of prior art, EP 0893071 (“Takeuchi”), the Court concluded that the skilled addressee would understand that the liquid storage component of Takeuchi could either be refillable or exchangeable and that, for the purpose of the invention, it did not matter which disclosure was implemented.
Claim 1 of the Patent was found to lack inventive step on the basis of Brooks and Takeuchi.
The Patent was revoked for the reasons given above but, bar this, the Court held that if the ruling had upheld the validity of the Court, the Nicocigs’ devices would have infringed that Patent.