Precedents Cited

The Judgment references several key precedents and prior art documents that played a critical role in shaping the court’s decision:

• Sabaf SPA v MFI Furniture Centres Ltd [2005] RPC 10: This case was instrumental in determining the approach to assessing inventive concepts, particularly when multiple features are involved in a patent claim.
• Deevi (US Patent No. 5,322,075): As the primary piece of prior art, Deevi disclosed an electrically heated smoking system with thin-film heaters similar to those claimed in the 486 patent. The court scrutinized Deevi's teachings to assess the obviousness of PMI's patented invention.

The court analyzed these precedents to determine how existing technologies and prior disclosures influenced the originality and inventiveness of PMI's patents. The reference to Sabaf SPA underscored the necessity of evaluating whether distinct features of a patent claim contribute to a non-obvious inventive step.

Legal Reasoning

The court's legal reasoning centered on the principle of obviousness as defined under patent law. To establish that a patent was invalid for obviousness, it must be demonstrated that the invention was an evident solution to a skilled person at the priority date, given the prior art and common general knowledge (CGK).

In this case, the judge identified the "skilled person" as a team comprising a product or heating engineer and a tobacco chemist, both possessing relevant expertise in HNB technologies. The primary focus was on whether the specific features of the 486 patent—particularly the electrically conductive tracks that could be separately connected to supply power, allowing for different heating durations and temperatures—were non-obvious enhancements over the existing Deevi patent.

The court meticulously examined the specifications of both Deevi and the 486 patent, determining that the latter's claims did not sufficiently diverge from the prior art to warrant patent protection. The judge considered the flexibility and control afforded by thin-film heaters and concluded that it would have been obvious to a skilled team to implement electronic circuitry to vary heating parameters to enhance user experience, thereby making PMI's claims obvious.

Impact

This Judgment has significant implications for the pharmaceutical and tobacco industries, particularly concerning the patentability of technological advancements in existing products. By affirming the invalidity of PMI's patents due to obviousness, the court reinforced the stringent standards required for patent protection, ensuring that incremental advancements that do not involve a non-obvious inventive step are not granted undue exclusivity.

For future cases, this decision underscores the importance of demonstrating a clear and non-obvious inventive step beyond existing technologies and prior art. Innovators and companies will need to ensure that their patent claims articulate substantial advancements and avoid overreliance on features that may be deemed obvious to professionals in the field.