E-Cigarettes & Patents: Case Update
In March 2015, Fontem, who owned a portfolio of patents relating to e-cigarettes that they purchased from Hon Lik and his companies Ruyan / Dragonite (allegedly the inventor of the modern e-cigarette), issued patent infringements against various companies in the UK. This followed on from various other patent infringement claims in both the US and Europe.
Having been instructed by two of the original parties in the UK proceedings, we have kept a close eye on the claim as it went to trial in May 2016. The proceedings continued to trial with Nicocigs (a subsidiary of Philip Morris International) challenging the validity of patent 349 and Fontem (a subsidiary of Imperial Tobacco) alleging that products of Nicocigs infringed patent 349.
The judgement in this matter was handed down on the 2nd September 2016 in Nicocigs v Fontem Judgement by Mr Justice Baldwin, concluded that patent 349 was invalid.
Mr Justice Baldwin had heard expert evidence on both sides and decided that patent 349 was invalid for reasons including added matter and lack of inventive step and also that even if patent 349 had not been valid that some modern e-cigarettes would not have infringed parts of it in any event.
In a brief and to the point Mr Justice Baldwin finishes with “My conclusion is that the patent does not survive the attacks made upon it. Had it survived, the devices complained of would have infringed claim 1 and the Cartomiser devices would also have infringed claims 12 and 13 but not claim 8. The Clearomiser infringes none of claims 8, 12 or 13.”
Therefore, patent 349 has not survived the revocation proceedings in the UK and there are continued oppositions to it in the European Patent Office.
Whilst we wait to see if there are any appeals in the UK and the outcome of the EPO oppositions the future of patent 349 looks bleak.