Court says patent for thermal spreading wrap is novel and inventive; writ petition on natural justice grounds was maintainable but failed on merits
The Delhi High Court has dismissed both a writ petition and a statutory appeal filed by ITC Limited challenging the grant of a patent to Philip Morris Products S.A. for a “heated aerosol-generating article with thermal spreading wrap.” Justice Jyoti Singh held that the patent was both novel and inventive, and found no reason to interfere with the Controller of Patents’ orders dated 30 January 2025 rejecting ITC’s post-grant opposition.
The dispute concerned Indian Patent No. 384250, granted on 14 December 2021, covering a heated aerosol-generating article designed for use with an electrically operated device. ITC had opposed the patent under Section 25(2) of the Patents Act, 1970, alleging lack of novelty, prior use, lack of inventive step, insufficiency of disclosure, and that the subject matter was not an invention. It argued that the claimed wrapper made of thermally conductive material was already disclosed in prior art and that the patent merely claimed an inherent property of foil.
A key procedural issue before the Court was ITC’s allegation that the Controller violated principles of natural justice by entertaining fresh written submissions filed by the patentee after the hearing had concluded, and by dealing with auxiliary claim sets without following the proper amendment procedure. The Court held that the writ petition was maintainable despite the availability of an appeal because allegations of natural justice violations can justify writ jurisdiction. However, on merits, the Court found no procedural illegality. It held that the patentee had not pursued the auxiliary amendments and had proceeded on the granted claims, making ITC’s objection infructuous. The Court also found that the additional written submissions did not travel beyond the pleadings or cause prejudice.
On the substantive patent issues, the Court upheld the Controller’s finding that prior art D1 did not anticipate the claimed invention. The Court emphasized that the patent’s novelty lay not merely in the use of thermally conductive material, but in a specific structural-functional arrangement: an aerosol-forming substrate comprising a gathered sheet circumscribed by a wrapper that acts as a thermally conducting flame barrier, spreading heat and reducing the risk of ignition if a user applies a flame. The Court found that D1 taught a different function—heat transfer from a heating element to tobacco—and did not disclose the claimed flame-barrier role.
The Court also rejected ITC’s inventive-step challenge. It noted that prior arts D2 to D6 related largely to combustible smoking articles, whereas the patented article was intended for electrically heated, non-combustible use. According to the Court, a person skilled in the art would not be motivated to combine those references with D1 to arrive at the claimed invention. The Court agreed with the patentee that the prior art taught heat transfer for combustion, not a flame barrier to prevent ignition.
The Court further considered additional prior art D7, which ITC had filed under Rule 62(4) of the Patents Rules. While the Controller had excluded D7 to D10 as time-barred, the High Court still examined D7 in appeal and held that it too did not anticipate the invention. The Court said D7 taught controlled heating and uniform heat transfer using aluminium foil, but not a wrapper configured as a flame barrier against externally applied flame.
Concluding that the impugned orders did not suffer from any legal infirmity, the High Court dismissed both the writ petition and the appeal, leaving the patent intact.
Bottom Line :
Patents - Post-grant opposition - Heated aerosol-generating article with thermal spreading wrap - Writ petition alleging violation of natural justice held maintainable despite alternate remedy - However, dismissal of interlocutory petitions upheld - Patent held novel and inventive - Prior art D1 did not disclose gathered sheet of aerosol-forming material nor thermally-conductive wrapper acting as flame barrier to spread heat and mitigate ignition on application of flame - Prior arts D2 to D6 related to combustible smoking articles and did not render invention obvious - Additional prior art D7 also did not anticipate or make claim obvious as it taught controlled heating, not flame-barrier function.
Statutory provision(s): Section 25(2), Section 25(4), Section 57, Section 62(4), Section 64, Section 117A, Section 2(1)(ja), Article 226 of the Constitution of India, Rule 55A, Rule 57, Rule 58, Rule 59, Rule 60, Rule 62 of the Patents Rules, 2003
ITC Limited v. Philip Morris Products S.A., (Delhi) : Law Finder Doc id # 2984454
