The case concerned Indian Patent No. 384250, titled \u201cHeated Aerosol Generating Article with Thermal Spreading Wrap\u201d. The patent addressed a difficulty associated with tobacco articles intended for electrical heating. Although the substrate was designed to release aerosol when heated, a user could attempt to light the article and smoke it like a conventional cigarette. The specification sought to reduce the propensity for ignition in that situation.<\/p>\n
The proposed solution was incorporated into the wrapper. Claim 1 required an aerosol-forming substrate comprising a gathered sheet of aerosol-forming material, radially encircled by a thermally conductive sheet. This sheet had to act as a thermally conducting flame barrier, spreading heat and mitigating the risk of the substrate igniting when a flame was applied. The disclosed tobacco embodiment used a sheet that was folded, convoluted or compressed substantially transversely to the cylindrical axis of the rod. Dependent claims identified metal foil, certain foil laminates and aluminium foil as alternatives for the conductive material.<\/p>\n
ITC opposed the patent after grant, citing six prior-art publications, D1 to D6. It subsequently submitted D7 to D10. The Opposition Board recommended in favour of the patentee, and the Controller rejected the opposition. ITC challenged that decision in an appeal under Section 117A of the Patents Act, 1970. A connected writ petition questioned the handling of proposed auxiliary claims and further written submissions filed by Philip Morris.<\/p>\n
The Court began with the feature that divided the parties. ITC treated heat spreading as a known property of the wrapper material. Philip Morris relied on the function that the wrapper had to perform within the claimed article.<\/p>\n
The Court accepted that a structural feature linked to a functional requirement is limited to structures capable of performing that function. The flame-barrier language therefore could not be left out when Claim 1 was compared with the prior art. The relevant inquiry was whether the earlier disclosure established the wrapper, in the required arrangement, as capable of spreading heat and mitigating substrate ignition from an applied flame.<\/p>\n
This also required the Court to keep novelty and inventive step distinct. For novelty, all the claim limitations had to be disclosed expressly or implicitly in a single reference. For inventive step, the Court considered whether the skilled person would arrive at the claimed combination from the existing knowledge. Referring to Avery Dennison<\/em> and F. Hoffmann-La Roche<\/em>, it examined the inventive concept, common general knowledge and the differences from the cited art, while excluding hindsight.<\/p>\n D1, US2010200006A1, concerned a tobacco-containing smoking article used with an electrically powered device. Its wrapping material could include a metallic foil and paper laminate. ITC relied on that disclosure, together with references to gathered material, to argue that D1 contained the elements of Claim 1.<\/p>\n The Court examined how those elements appeared in D1. It found that ITC had not established the claimed gathered sheet of aerosol-forming material. Although D1 referred to a gathered web or sheet, the Court considered that language in the context of its tobacco and aerosol-forming arrangements, including separately located materials in fluid communication. It accepted the Controller\u2019s conclusion that the claimed substrate had not been disclosed.<\/p>\n The wrapper raised a further difficulty for ITC. In D1, heat from a heating element passed through the wrapper to the tobacco to generate aerosol. The Court also compared the illustrated embodiments, considering the wrapper\u2019s location near the mouthpiece and its contact with the heating elements. These features supported its finding that the wrapper was arranged to assist heating of the tobacco.<\/p>\n The Court found that ITC had not established the additional capability required by Claim 1: spreading heat from a user-applied flame to mitigate ignition of the substrate. It rejected the suggestion that this could simply be assumed from the presence of metal foil.<\/p>\n The distinction between foil and a foil laminate was also considered. The Court observed that a laminate\u2019s thermal behaviour depended on its constituent layers. The claim set itself permitted certain laminates, so the material\u2019s label did not settle the comparison. The claimed functional limitation still had to be established in the prior-art arrangement.<\/p>\n On these grounds, the Court upheld the finding that D1 did not anticipate Claim 1.<\/p>\n ITC\u2019s inventive-step challenge required the Court to go further. Even if D1 did not disclose the entire claim, ITC argued that the other references supplied teachings that would make the invention obvious.<\/p>\n D2 to D6 all involved combustion of part of the smoking article. The Court examined the role of their wrappers against that operating requirement.<\/p>\n D2, EP2486812A1, disclosed a conductive wrapper that carried heat from a combustible heat-generation segment to an aerosol-generating segment. Some embodiments included a separate lighting-end segment; others used the heat-generation segment as the lighting end. In either arrangement, combustion supplied the heat. The Court found no teaching of the claimed flame barrier and accepted that D2 gave the skilled person no incentive to combine its combustible-source arrangement with D1\u2019s electrical heating system to reach Claim 1.<\/p>\n D3, US5551451A, used a foil-containing barrier tube for another purpose. It helped restrict migration of aerosol-forming material to other components. Its fuel composition also sought to reduce carbon monoxide generation and excessive thermal output. According to the Court, those measures did not disclose a wrapper that mitigated ignition of the substrate when an external flame was applied.<\/p>\n D4, US4955397A, placed metallic foil around a tobacco rod and a carbon-fuel cylinder around the wrapped rod. During use, the fuel cylinder burned and heat passed through the foil to the tobacco. The Court found that this arrangement used foil in the heat-transfer path from burning fuel. It did not teach the conductive flame barrier required by Claim 1.<\/p>\n D5, EP0174645A2, provided ITC with a more direct heat-dissipation argument. Its foil-lined tube transferred heat to an aerosol generator and also helped extinguish the fire cone through heat loss. The Court considered that disclosure but found that it did not establish the claimed function under exposure to a user-applied flame. D5 operated through a deliberately ignited charcoal fuel element and did not teach the tube as mitigating ignition of the aerosol-generating means in the manner claimed.<\/p>\n D6, EP2552246A2, disclosed a heat-resistant outer wrapper and a separate aluminium-foil heat-conducting element. The latter connected portions of the combustible heat source and the aerosol-generating substrate. The Court found that the outer wrapper\u2019s heat resistance did not establish thermal conductivity. The separate foil element could transfer heat to the substrate, but was not taught as reducing its risk of ignition when a flame was applied.<\/p>\n The Court therefore upheld the Controller\u2019s conclusion on D1 to D6. Their disclosures showed several uses of foil and several methods of managing heat. They did not, in the Court\u2019s assessment, supply the claimed combination or a basis for the skilled person to arrive at it through the proposed combinations.<\/p>\n D7 had not been considered by the Controller. It was among the later publications excluded because they were filed after the deadline calculated from the first scheduled hearing.<\/p>\n The Court held that Rule 62(4) did not invariably prohibit consideration of publications after that date. At the same time, an opponent could not introduce publications after an adjournment as a matter of right. The circumstances had to be examined, with due regard to preventing delay. Finding no attempt by ITC to prolong the proceedings on the facts before it, the Court considered D7, the only additional document on which the parties addressed arguments.<\/p>\n D7, US20110192408A1, disclosed a non-combustion flavour inhalation article with a tobacco sheet, a conductive wrapper and a heating device. The Court acknowledged that it was potentially the closest prior art. This reference called for a closer examination because it shared the electrical-heating context of the claimed article.<\/p>\n The Court found that D7 avoided combustion principally by controlling the heater temperature. Its wrapper transferred controlled heat uniformly to the tobacco sheet. Claim 1, however, required the wrapper to respond to a flame applied by the user by spreading heat and mitigating ignition.<\/p>\n ITC relied on aluminium\u2019s high thermal conductivity to connect the two arrangements. The Court held that conductivity did not by itself establish flame-barrier behaviour. Thin aluminium foil could heat rapidly and lose its barrier function under sufficiently intense or prolonged flame exposure. Its ability to conduct heat therefore did not establish that the wrapper was configured to perform the specific function required by Claim 1.<\/p>\n The Court also found no demonstrated reason why D7 would lead the skilled person to use the wrapper to solve the problem of flame-induced ignition. According to the Court, ITC reached that conclusion with the benefit of the patented teaching. It rejected the argument as hindsight reconstruction and held that D7 neither anticipated nor rendered obvious the claimed flame-barrier function.<\/p>\n The Court held ITC\u2019s writ petition maintainable and accepted that the Controller had misunderstood its second interlocutory petition as relating to claim amendments. It then examined the actual grievance concerning Philip Morris\u2019s further written submissions.<\/p>\n The Court found that the disputed explanations about foil, laminates and gathered sheets arose from the existing claims, specification and prior art. It therefore rejected the objection that those explanations justified interference. Since Philip Morris had abandoned its proposed auxiliary amendments, the opposition had proceeded on the granted claims.<\/p>\n The Court dismissed ITC\u2019s appeal and writ petition and declined to interfere with both orders dated 30 January 2025. The rejection of the post-grant opposition remained in place, and pending applications were disposed of.<\/p>\n The following extracts reproduce the judgment\u2019s wording. Bracketed ellipses indicate omissions.<\/p>\n Paragraph 64 \u2014 Novelty<\/strong><\/p>\n [\u2026] The prior art should disclose the invention either in an explicit or implicit manner and mosaicing of prior art documents is not allowed in determination of novelty.<\/p>\n Paragraph 70 \u2014 Structural and functional limitations<\/strong><\/p>\n [\u2026] There is merit in Patentee’s argument that where a structural element is associated with a functional element, the latter limits the claim to structures that are capable of performing that function. In the instant case, the structural aspect is the wrapper with its feature of being thermally-conductive and it limits the scope of Claim 1 by its functionality of acting as a flame barrier. [\u2026]<\/p>\n Paragraph 85 \u2014 Combining D2 with D1<\/strong><\/p>\n [\u2026] It is also rightly found that since the smoking article in D2 uses combustible heat source, a person skilled in the art will not have any incentive to combine the teachings of D2 with D1. [\u2026]<\/p>\n Paragraph 91 \u2014 The finding on D1 to D6<\/strong><\/p>\n [\u2026] In light of the aforesaid teachings of prior arts D1-D6, it cannot be urged by the Appellant that the Controller has erred in concluding that Claim 1 of the subject patent is inventive over the said prior arts. [\u2026]<\/p>\n Paragraph 93 \u2014 Later publications<\/strong><\/p>\n [\u2026] However, it may not be right to hold that as a matter of rule, publication can never be permitted under Rule 62(4) after the first date of hearing. But an important caveat needs to be added that an opponent cannot be granted adjournments and\/or allowed to file publications after the first date of hearing, as a matter of right and each case has to be tested by the Controller on its own facts, keeping in mind the special circumstances brought forth to seek leave to file the publications at that stage, so as to curb any tendency of taking unnecessary adjustments and prolonging the proceedings. [\u2026]<\/p>\n Paragraph 98 \u2014 The finding on D7<\/strong><\/p>\n [\u2026] It is also to be noted that Appellant is unable to establish how the mere fact that aluminium conducts heat is necessarily a motivation to use this feature for specific problem of flame induced ignition. To sum up, D7 does not disclose or render obvious the claimed flame barrier function and Appellant’s reliance on D7 is based on impermissible conflation of thermal-conductivity of aluminium with specific technical function required by Claim 1. [\u2026]<\/p>\n Paragraph 59 \u2014 The abandoned amendments<\/strong><\/p>\n [\u2026] Since patentee did not press the amendment, there was no reason to hear the opposition and IP-I was rightly dismissed. Thus, there is no merit in the writ petition and the same deserves to be dismissed.<\/p>\n Paragraph 99 \u2014 The order<\/strong><\/p>\n For all the aforesaid reasons, this Court is of the view that the impugned orders both dated 30.01.2025 warrant no interference and accordingly, the writ petition and the appeal are both dismissed. Pending applications stand disposed of accordingly.<\/p>\nD1 Disclosed Electrical Heating, but Left Two Features Unestablished<\/h3>\n
The Other References Took the Court to Combustible Smoking Articles<\/h3>\n
D7 Brought a Closer Comparison<\/h3>\n
The Procedural Objections Did Not Change the Result<\/h3>\n
Findings of the Court<\/h2>\n
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Court\u2019s Order<\/h2>\n
Relevant Paragraphs<\/h2>\n
Case Citation<\/h2>\n