Sandoz AG & Ors v Biogen MA Inc
[2024] EWHC 2567 (Pat)
Philip Morris Products SA & Anor v Nicoventures Trading Limited & Anor
25 October 2023
[2023] EWHC 2616 (Pat)
High Court
Two big tobacco companies fought over a patent for a new type of cigarette. The judge decided the patent wasn't new or clever enough because similar ideas already existed, so the patent was cancelled. The judge also said one company's new product didn't break the old patent. Finally, the judge refused a request to clarify whether future patents would be a problem; the judge thought that request was unnecessary.
Key Facts
- •Philip Morris Products S.A. and Philip Morris Limited (PMI) sought revocation of EP 830, a patent held by Nicoventures Trading Limited and British American Tobacco (Investments) Limited (BAT), for a heat-not-burn (HNB) tobacco product.
- •BAT counterclaimed for infringement of EP 830 by PMI's IQOS ILUMA product.
- •BAT conditionally applied to amend EP 830.
- •PMI applied for Arrow declaratory relief regarding a defined HNB system.
- •The case centered on the inventive concept of using the Curie point of the heating material to self-regulate the maximum temperature in an HNB device.
Legal Principles
Assessment of inventive step using the Pozzoli steps.
Pozzoli SpA v BDMO SA [2007] Civ 588
Equivalents doctrine following Actavis, considering whether a variant achieves substantially the same result in substantially the same way.
Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48; Regen Lab SA v Estar Medical Ltd [2019] EWHC 63 (Pat)
'Disclosed but not claimed' principle: If the description discloses multiple ways to achieve a technical effect but only one is claimed, using other methods doesn't constitute infringement.
Akebia Therapeutics Inc v Fibrogen, Inc [2020] EWHC 866 (Pat); Facebook Ireland Limited v Voxer IP LLC [2021] EWHC 1377 (Pat); Shenzhen Carku Technology Co., Ltd v The Noco Company [2022] EWHC 2034 (Pat)
Added matter in patent amendments: Amendments must not introduce subject matter not clearly and unambiguously disclosed in the original application.
Conversant Wireless Licensing Sarl v Huawei Technologies Co., Limited [2020] EWCA Civ 1292; AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40
Principles governing Arrow declarations: Discretionary relief granted only if it serves a useful purpose, not merely to pre-empt future litigation; must avoid disguised attacks on granted patents.
Fujifilm Kyowa Kirin Biologics Co., Ltd v Abbvie Biotechnology Ltd [2017] EWCA 1; Glaxo Group Ltd v Vectura Ltd [2018] EWCA Civ 1496; Mexichem UK Ltd v Honeywell International Inc [2020] EWCA Civ 473
Outcomes
PMI's claim for revocation of EP 830 was successful.
EP 830 lacked inventive step over prior art (Egzoset and Duffield).
BAT's counterclaim for infringement was unsuccessful.
The IQOS ILUMA system did not infringe EP 830 on a normal construction or as an equivalent.
BAT's application to amend EP 830 was refused.
The amendments would not have overcome the inventive step objections and introduced added matter.
PMI's application for an Arrow declaration was refused.
PMI failed to demonstrate a sufficient useful purpose for the declaration; the court found that BAT's conduct did not justify this extraordinary remedy and that PMI failed to establish sufficient commercial value.
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