IP Law Daily, PATENT—Fed. Cir.: Invalidity of Healthier Choices’ electronic smoking patent affirmed on appeal, (Nov 22, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Prior art anticipated patent claims; proposed amendments denied due to lack of explicit or implicit written description support in the original patent specification.

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board's decision in an inter partes review (IPR) invalidating claims of an electronic smoking device patent owned by Healthier Choices Management Corp. and denying its motion to amend claims. The appellate court found that the prior art disclosed every element of the challenged claims and that the proposed amended claims lacked sufficient written description support (Healthier Choices Management Corp. v. Philip Morris Products S.A., No. 23-1529 (Fed. Cir. Nov. 22, 2024)).

Background. The appellant, Healthier Choices Management Corp., and the appellee, Philip Morris Products S.A., are competitors in the market for alternative smoking products. Healthier Choices specializes in developing and marketing electronic smoking devices, including electronic pipes. Philip Morris, a global leader in the tobacco industry famed for its Marlborough cigarettes, has expanded its focus to smoke-free and electronic alternatives to traditional cigarettes.

The patent at issue, U.S. Patent No. 10,561,170 (the ’170 patent), pertains to an electronic smoking device comprising a battery, an electronic module, a combustible material reservoir, and a heating element designed to initiate combustion.

The dispute began when Philip Morris filed petitions for the IPR of the ’170 patent, asserting that the claims were anticipated by U.S. Patent Application Publication No. 2012/0160251 (“Hammel”). The IPR proceedings focused on whether Hammel disclosed each element of the ’170 patent’s claims, particularly a heating element fixed in the combustible material reservoir. Expert testimony from Dr. Seetharama C. Deevi supported Philip Morris’s position, asserting that Hammel described the critical features of the patented electronic smoking device.

Healthier Choices defended the validity of its patent, arguing that Hammel lacked sufficient detail to meet the claim requirements and that the asserted prior art failed to anticipate the patented invention. The PTAB disagreed, finding that Hammel disclosed all the claimed features, including a heating element fixed in the reservoir, supported by a circuit diagram and written descriptions.

Separately, Healthier Choices filed a Revised Contingent Motion to Amend, proposing substitute claims 9–16 to address the alleged deficiencies. These amended claims introduced features such as an “ambient air inlet” that excluded air passage through the first section of the pipe. The PTAB denied this motion, concluding that the proposed amendments lacked written description support in the original patent application. Specifically, the PTAB found no explicit or implicit disclosure of the negative limitation proposed by Healthier Choices.

Following these decisions, Healthier Choices appealed to the Federal Circuit, challenging both the PTAB’s anticipation ruling and its denial of the motion to amend.

Anticipation by prior art. The appellate court upheld the PTAB’s determination that Hammel anticipated the claims. Expert testimony explained that Hammel disclosed all elements of the challenged patent, including a heating element fixed in a combustible material reservoir. The court noted that a single prior art reference suffices for anticipation when it discloses every claim limitation, as established in Allergan, Inc. v. Apotex Inc., 754 F.3d 952 (Fed. Cir. 2014).

The court also found that the PTAB reasonably interpreted Hammel’s diagrams and descriptions, rejecting Healthier Choices’ assertion that the prior art lacked sufficient detail on component interconnection and device operation.

Written description deficiencies. The Federal Circuit agreed with the PTAB that the proposed substitute claims failed the written description requirement under Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010). Healthier Choices proposed an "ambient air inlet" feature that excluded air passage through specific sections of the device, but the original specification provided no explicit or implicit support for this negative limitation. Citing Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022), the appellate court emphasized that omissions in the specification cannot imply the exclusion of an element unless expressly stated.

Additionally, inconsistencies in the specification undermined Healthier Choices' claim that the inventors had possession of the proposed features. The court noted that other sections of the '170 patent's description allowed for air passage through excluded sections, contradicting the proposed amendments.

Conclusion. The Federal Circuit, therefore, affirmed the PTAB's rulings on the invalidity of the ’107 patent as well as Healthier Choices' motion to amend the patent's claims.

The Case is No. 23-1529.

Judge: Stoll, K.

Attorneys: Thomas Fisher (Cozen O'Connor PC) for Healthier Choices Management Corp. Gabriel K. Bell (Latham & Watkins LLP) for Philip Morris Products S.A. Adam Banks (Weil, Gotshal & Manges LLP) for Philip Morris USA, Inc.

Companies: Healthier Choices Management Corp.; Philip Morris Products S.A.; Philip Morris USA, Inc.

Cases: Patent FedCirNews USPTO