U.K. Court Nixes Imperial Tobacco Subsidiary's E-Cig Patent

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By Peter Leung

Sept. 6 — The High Court of Justice of England and Wales' Patents Court Sept. 2 threw out an Imperial Tobacco subsidiary's e-cigarette patent for being obvious and lacking novelty ( Nicocigs Ltd. v. Fontem Holdings 1 BV [2016] EWHC 2161 (Pat) (UK)).

The case highlights the high level of competition in the growing e-cigarette market (134 PTD, 7/13/16).

Philip Morris International subsidiary Nicocigs Ltd. sued to revoke Fontem 1 Holdings BV's patent claiming improved aerosol effects and atomizing efficiency or, alternately, for a declaration that its e-cigarettes didn't infringe the patent. The court ruled that the patent claims were anticipated by another Fontem patent and were obvious in light of a patent filed in the U.S.

The challenged Fontem patent, EP (UK) 2 022 349 , is filed by Han Li, sometimes romanized as Hon Lik, the Chinese inventor of the e-cigarette. Fontem acquired Han's company Dragonite International Ltd. in 2013, along with the company's patents.

The device has a battery and atomizer assembly that is connected to a liquid storage unit with a porous component. The liquid nicotine in the storage unit is vaporized by the porous component, and the vapor condenses in the shell of the device into an aerosol, which is inhaled by the user.

Patent Anticipated

On the issue of novelty, the court agreed with Nicocigs that patent EP 2 022 350 A1 anticipated the challenged `349 patent's invention by disclosing several of the claims. Interestingly, the `350 patent was one that Han applied for and claims a priority date from the same document as the `349 patent.

Differences, such as whether there is a separate support device for the porous component, don't make a technical difference and don't save the ‘349 patent from lacking novelty, the court said.

The ‘350 must predate the ‘349 in order to anticipate it. Fontem attempted to argue that the two patents had the same priority date since they stem from the same Chinese patent, but the court rejected that argument. A person skilled in the art, looking at the Chinese patent, would come up with the device in the challenged patent, meaning the challenged patent can't trace its priority back to the Chinese patent, the court said.

The court also found that some claims in the challenged patent lacked an inventive step, a concept U.S. patent attorneys refer to as obviousness. Nicocigs argued that the challenged patent is obvious in light of several pieces of prior art, one of which is European Patent No. EP 0 893 071 describing an air flavor generating device. The court said that, despite a dispute over whether the liquid storage chamber in that patent was refillable or exchangeable, the implementation of a detachable end chamber would be obvious.

John Baldwin, sitting as a deputy judge, decided the case. Iain Purvis, Ben Longstaff and Powell Gilbert LLP represented Nicocigs. Andrew Lykiardopoulos, Tim Austen and Simmons & Simmons LLP represented Fonthem.

To contact the reporter on this story: Peter Leung in Washington at pleung@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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