E-cigarette company succeeds with patent revocation against rival

British e-cigarette supplier Nicocigs has succeeded in its patent revocation suit against Fontem Ventures, an e-cigarette developer based in the Netherlands.

The judgment, issued on September 2 from the English High Court, found that the patent, which concerns an aerosol electronic cigarette that contains nicotine but not tar, was invalid.

Mr Justice Baldwin also ruled that if the patent was valid, some of Nicocigs’ devices would have infringed certain claims.

Fontem Ventures had counterclaimed that four of Nicocigs’ products infringed the patent. These were  Nicolites Rechargeable Electronic Cigarette, Vivid Rechargeable Electronic Cigarette, Nicocig Rechargeable Electronic Cigarette (the Cartomiser device) and the Vivid E-Liquid Electronic Cigarette (the Clearomiser device).

Baldwin had heard expert evidence from John Shrimpton, professor at the University of Southampton, on behalf of Fontem, and Stewart Fox, director at Maddison Consulting, on behalf of Nicocigs.

Nicocigs had complained that Fontem attempted to broaden and manipulate the scope of the patent’s claims in the course of its prosecution in order to catch the alleged infringements, a process called added matter.

Baldwin invalidated the patent for reasons including added matter and lack of inventive step.

“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.”