Fontem see their patent “vaporised” – the dangers of added matter

This Kat is delighted to welcome the blogging debut of his EIP colleague Gareth Holliday, reporting the judgment in Nicocigs v Fontem Holdings & Fontem Ventures [2015] EWHC 2752 (Pat).

Back in May of this year, Nicocigs initiated proceedings to revoke Fontem’s patent (EP(UK)2022349) and also sought a declaration of non-infringement of the patent in relation to their products, to which Fontem filed a counterclaim for infringement.

The case was fuelled by the familial relationship of the ‘349 patent, which claims priority from a Chinese Utility Model (CN2006290805U) filed on 16 May 2006. On 15 May 2007, two separate PCT applications (WO07131449; WO07131450) claiming priority from the utility model were filed, and entered the European phase, becoming EP2022349 and EP2022350 respectively. However, only ‘349 was granted.

It was common ground between all parties that the ‘350 application was identical in all material respects to the priority document, whilst the sibling ‘349 application contained a number of differences, with further amendments introduced during prosecution.

The divergence of the granted ‘349 patent from the application as filed, and the priority document, provided Nicocigs with the ammunition they needed to seek invalidation for added matter, lack of novelty and obviousness. The judge, Mr John Baldwin QC, ultimately found the ‘349 patent to be invalid on all counts. However, in the interests of brevity and focus, we shall be looking at the added matter objections in more detail, and summarising the other findings.

The ‘349 patent related to an electronic cigarette, one which vaporises a liquid containing nicotine to simulate cigarette smoke. The patented product comprised three main components: a battery (3); an atomiser (8); and a liquid storage component (9), all within a shell (a, b).

The user inhales through the mouthpiece (b1, far right hand side), causing air to flow into air inlets (a1), past the atomiser (8) towards the mouthpiece (b1). The pressure change activates the battery (3) which heats the atomiser (8) and vaporises liquid stored in a porous component of the atomiser (8). The user inhales the condensed liquid vapour, and any evaporated liquid is subsequently replenished in the porous component by liquid from the storage component (9).

i) Added Matter

Nicocigs submitted that Fontem had broadened the scope of the ‘349 application during prosecution in order to ensnare existing devices. The key question when addressing added matter was summarised in Richardson-Vicks by R.Jacobs in a single sentence:

"I think the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the un-amended specification".

To assist matters, a three part test for added matter was formulated in T0331/87 Houdaill. The skilled person must be able to recognise directly and unambiguously that:

1. the (removed or replaced) feature is not explained as essential in the original disclosure; 
2. it (the said feature) is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve; and 
3. the replacement or removal requires no real modification of other features to compensate for the change. 

The problem identified by both the ‘349 application and granted patent was the same, that current electronic cigarettes are “complicated in structure with bodies that can be roughly divided into three sections, which have to be connected through via plugging or thread coupling before use”. However, the solutions provided by each were different, and Nicocigs argued that this led to a dramatic change in the nature of the inventions.

The solution taught by the application involves an integrally formed shell housing the connected battery and atomiser assemblies together. A detachable “cigarette bottle assembly” (comprising a hollow shell and a porous/perforated liquid storage component) is mounted in one end of the shell and fits with the atomiser assembly.

The solution disclosed by the granted patent used the word 'shell' to describe a hollow body (which may or may not be integrally formed) with a detachable end. The battery assembly, atomiser assembly and liquid storage component all sit within this shell, with at least the liquid storage component being at the detachable end. However, the patent refers to the cigarette bottle assembly as a 'liquid storage component'; changing its character from a porous component of the cigarette bottle assembly, to a standalone component for storing liquid and enabling the flow of liquid to the porous component of the atomiser.

Mr Baldwin agreed that the granted device differed from that of the application, and that matter had been added to teach the skilled addressee about the new device. The use of the adjective 'porous' to describe the component of the atomiser - and omission of that adjective to describe the liquid storage component - would teach the skilled addressee that the latter component need not be porous where the application taught that it is essential. The skilled person would therefore learn something about the invention which he would not have learned from the application. Therefore, the patent was found to contain added matter, and in breach of A.123(2) EPC.

ii) Novelty and Inventive Step

The ensuing novelty attack argued that the ‘349 patent was anticipated by the ‘350 application, but in order to succeed Nicocigs needed to show that:

a) ‘350 disclosed a product falling within the scope of the ‘349 claims;
b) that ‘350 is eligible to claim priority; and
c) that ‘349 is not entitled to claim priority.

Mr Baldwin found the ‘350 application to disclose a product falling within the scope of claims 1, 8, 12 and 13 of ‘349, the ‘350 application to be entitled to priority, and ‘349 not to be entitled to priority.

In their defence, Fontem argued that if ‘349 was anticipated by ‘350 (condition ‘a’), then all the claimed integers were clearly and unambiguously disclosed and enabled by the priority document (being materially the same as the ‘350 application). Therefore, the granted ‘349 patent must surely be entitled to claim priority. However, Fontem had muddied the concepts of anticipation (does the prior document disclose something which falls within the claim) with priority (does the prior document support the claims across their whole width), and Mr Baldwin agreed that the priority document did not support the full breadth of the granted ‘349 claims, and therefore not entitled to claim priority.

Having met all three conditions, the ‘349 patent was considered anticipated by ‘350.

In addition, Mr Baldwin also found claims 1 and 12 of the ‘349 patent to be obvious in light of both US4947874 (Brooks) and EP0893071 (Takeuchi) separately.

iii) Infringement

In considering infringement, Mr John Baldwin QC found in Fontem’s favour that Nicocigs products infringed claims 1, 12 and 13 of the ‘349 patent, but by then it was too late, and the patent did not survive the barrage of invalidity attacks submitted by the claimant.

Summary

The case serves as a stark warning on the dangers of the added-matter, the monster patent attorneys tell children about at night. Alas added-matter is not an imaginary foe, but a real one, and should be respected (and feared) accordingly. Seemingly innocuous amendments during prosecution can mount up, causing problems, or ultimately invalidation of the patent, later on.

Post-script

In the meantime, we learned yesterday of the EPO Enlarged Board of Appeal decision in G1/15. The priority analysis in Nicocigs v Fontem may no longer be in accordance with the EPO approach to partial priority, but we probably need to see the reasoned decision of the EBA.