ITC Limited v Philip Morris Products S.A. (2026)

Summary

"This judgment disposes the writ petition and the Appeal filed by the Appellant, challenging two orders, both dated 30.01.2025. In the writ petition filed under Article 226 of the Constitution of India, challenge is laid to the order whereby two Interlocutory Petitions ('IPs') have been dismissed as also order dismissing the post-grant opposition of the Appellant. In the appeal filed under Section 117A of The Patents Act, 1970 ('1970 Act'), order rejecting the post-grant opposition is challenged." (para 1) The patent relates to "an invention titled 'HEATED AEROSOL GENERATING ARTICLE WITH THERMAL SPREADING WRAP', in respect of which patent was granted in favour of the Patentee on 14.12.2021." (para 3) "Therefore, the technical problem being addressed is how to mitigate against the risk of a user igniting the aerosol-forming substrate in a heated aerosol-generating article used in an electrically operated aerosol-generating device" (para 62). The Controller excluded the additional documents D7 to D10 "from consideration as being time barred observing that five days' notice period envisaged in the said rule has to be computed with respect to the first scheduled date of hearing and not the adjourned date" (para 60).

On the writ petition the Court held the petition "to be maintainable" (para 53) but held that "there is no merit in the writ petition and the same deserves to be dismissed" (para 59). On novelty it found "no infirmity in the view of the Controller that the claimed invention in the granted patent is novel over prior art D1" (para 74), and on inventive step it agreed "with the patentee that D1 alone or in combination with D2 to D10 does not make the granted invention obvious" (para 81). Of the late publications it held that "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" (para 93), and of D7 that "the argument of the Appellant is more in the nature of hindsight reconstruction of the opposed patent, which is impermissible in law" (para 98). "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." (para 99)

What the court decided

1. Maintainability of the writ petition. Following Best Agrolife Limited v Deputy Controller of Patents (2022 SCC OnLine Del 1982), in which the Court "rejected the preliminary objection observing that there cannot be a debate that the 1970 Act" ("The Patents Act, 1970") "provides remedy of post-grant opposition and/or revocation to a 'person interested', who is unsuccessful in a pre-grant opposition, however, if Petitioner is able to substantiate violation of principles of natural justice and/or failure in exercising jurisdiction and/or non-consideration of vital grounds/documents, Petitioner cannot be non-suited in a writ petition", the Court held: "Hence, in light of the judgement in Whirlpool Corporation (Supra), where the Supreme Court perspicuously explained the scope and ambit of judicial interference in a writ jurisdiction where an alternative remedy is available to a party as also Best Agrolife (Supra), writ petition is held to be maintainable." (para 53)
2. The second interlocutory petition. "Perusal of the impugned order dated 30.01.2025, whereby the two IPs" ("Interlocutory Petitions") "were dismissed under Rule 58(2) of the Patent Rules, 2016, substantiates the case of the Appellant that Controller has decided IP-II" ("Interlocutory Petition") "under an erroneous impression that it concerned the claim amendments, contrary to the reliefs prayed therein. Appellant is thus entitled to be heard on the grievance raised in IP-II." (para 54)
3. Written submissions within the pleadings. "Firstly, it is elementary knowledge in science that metal foil is a homogeneous single-material system whereas metal-paper laminate is a multilayer system". "Secondly and more importantly, this distinction is embedded in the claim language itself which expressly identifies metal foil and metal foil laminates with paper or re-constituted tobacco as alternative for the thermally-conductive material." (para 57) "In the second written submissions, Patentee has merely explained the scope and technical significance of the gathered sheet in the claim specification as an argument and there is nothing which is outside the claims or beyond pleadings and hence, there is no merit in the objections raised in IP-II." (paras 57–58)
4. An amendment not pressed. "Patentee did not follow the amendment procedure and decided to proceed with the existing claims and filed written submissions on 04.09.2024 on that basis. 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." (para 59)
5. The all-elements rule. "It is settled that a claim is not anticipated unless a single prior art discloses all elements of the questioned claim, which means that all limitations of the claim should be present in the single prior art document and even a minor difference between the two will mean that there is no anticipation and the claim is novel." (para 64)
6. A functional limitation. "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." (para 70)
7. Heat sink and flame barrier. "The wrapper therefore acts as a heat sink (medium) which passes the heat inside to the substrate inside the tobacco rod and is meant to be in contact with the heating element. Contrasted with this, the wrapper in Claim 1 is a heat dissipator and acts as a thermally conducting flame barrier for spreading heat and mitigating against the risk of user igniting the aerosol-forming substrate, in the event the flame is applied inadvertently or accidently to the aerosol-generating article and this is where the novelty resides." (para 73) "Patentee does not claim the known properties of a thermally-conducting wrapper and the novelty resides in limiting the claim such that there is no ignition/combustion in the aerosol-generating substrate when flame is applied to the aerosol-generating article and therefore, the functional element serves as a screening assay." (paras 73–74)
8. Laminate and metal foil. "Laminate is a fusion of layers of different metals and/or metal and paper etc. and will have a different thermal-conductivity than a metal foil, whose displayed properties will be those of the constituent metal." (para 74)
9. The five steps. Of the steps in Cipla v F Hoffmann-La Roche (2015), the Court held that "the Division Bench of this Court in F.Hoffmann (Supra), added another step and cumulatively, the five-steps which are a guiding light for Controllers for determining inventive step" are those it reproduced (para 76), and that "there is also no merit in the contention of the Appellant that the Controller has not followed the guidelines laid down in F.Hoffmann (Supra), for determining the inventive step or lack thereof." (paras 76, 91)
10. Teaching away. Of D1, the Court held that "heat generated by second heating element can heat the metallic foil laminates/wrapping material and hence the tobacco therein, which means that the function of the wrapping material is to conduct heat from the heating element to the tobacco rod and therefore, D1 teaches away from the function of the wrapper in the granted claim." (para 81)
11. Prior art from another field. "Moreover, since the smoking articles rely on combustion, they are not adapted for use within an electrically operated aerosol generating device comprising a heating element and it is thus unlikely that the skilled person would consider D2 when seeking to address the problem at hand and/or arrive at the invention as it does not belong to the field of 'heated aerosol- generating articles'." (para 85) "Therefore, a person skilled in the art would not use D3 as a starting point to arrive at the invention." (paras 85, 87)
12. Late publications under Rule 62(4). "There can be no quarrel on the point that post-grant oppositions must be decided expeditiously and which is why timelines are provided in the 1970 Act and the Rules. 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." (para 93) Of the rule stated in Pharmacyclics LLC v Union of India (W.P.(C) 12105/2019), the Court recorded that "as per this judgement the cut-off date for filing further evidence under Rule 60 is the first scheduled date of hearing" (para 92). It held that "Moreover, these are prior arts in the same field and it is therefore necessary to consider them to determine if the patent was rightly granted." (paras 92–93)
13. Thermal conductivity and flame-barrier behaviour. "Firstly, thermal-conductivity may not be the same as flame barrier behaviour of a wrapper, though they are related." "D7 discloses that aluminium foil is conductive but that does not establish that the foil is configured as a flame barrier or receives heat from an externally applied flame and/or spreads that flame derived heat and prevents a temperature rise in the tobacco substrate, thereby mitigating ignition." (para 97)
14. Hindsight and inference. "In fact, the argument of the Appellant is more in the nature of hindsight reconstruction of the opposed patent, which is impermissible in law. 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." "Appellant's leap from aluminium's thermal-conductivity to the claimed flame barrier function is in fact an inference and not a disclosure and therefore, Appellant is not correct in arguing that D7 anticipates Claim 1 of the granted patent." (para 98)
15. Disposition. "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." (para 99)

What the court did not decide

The Controller had noted "that during the hearing, counsel for the Appellant did not address arguments on objections under Section 3(d), 3(f) and 3(g) of 1970 Act" ("The Patents Act, 1970"), and the Court held: "For this reason, this Court is also not delving into these objections" (para 60). Of the additional documents, "Court has considered D7, which was the only additional document, on which arguments were addressed on behalf of the parties." (para 93)

Subsequent treatment

No later judicial treatment and no further appeal traced as of 5 October 2026.