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Nicocigs Limited v. Fontem Holdings 1 BV, UK Patents Court, Mr John Baldwin QC, 2 September 2016, 2016 EWHC 2161 (Pat)

In this action Nicocigs sought to revoke European Patent (UK) 2 022 349 and/or a declaration that its products did not infringe the patent.  The patent concerned electronic cigarettes, a market that has expanded rapidly in the UK.  The judgment contains a useful summary of the current leading UK cases in patent law, covering claim construction, novelty, obviousness, added matter and priority.

On added matter, the task for the court was to compare the disclosures of the patent application and the granted patent to determine whether the skilled addressee would learn anything from the granted patent which he would not learn from the patent application. Where subject matter had been deleted the three part test in the EPO Houdaille decision was a useful guide.  In this case the deputy judge held that the device taught by the patent was different to that disclosed by the patent application.  The patent was accordingly invalid for added matter.

The patent was also held to be anticipated by another European patent (EP350) with an earlier priority date.  The patent’s own claim to priority was held not to be good: the breadth of the claims of the patent were not supported by the technical disclosure of the priority document.  Fontem argued that, since the disclosures of EP350 and the patent’s priority document were essentially the same, if EP350 anticipated the patent it followed that the patent must be entitled to its claimed priority.  However, that was to confuse the scope of the granted claims with the technical disclosure of the priority document.  On obviousness, the patent was held to lack inventive step over an item of prior art that disclosed an electronic cigarette with a nicotine reservoir that could only contain enough liquid for a small number of puffs.  Furthermore the patent used fibre as a porous material to store the liquid.  However, the experts agreed there was nothing special about that and it would have been obvious to increase the capacity of the reservoir.  The key claims of the patent were therefore held to be invalid for lack of inventive step.

Had the patent not been invalid, it would have been infringed by Nicocigs’ devices.

A copy of the judgment can be read here.

Head note: Graham Burnett-Hall, Marks & Clerk