A patent battle in the UK between British American Tobacco (BAT) and Philip Morris International (PMI) currently stands at 1:1 after the UK High Court revoked four heat-not-burn cigarette technology patents belonging to PMI, scoring a win for BAT after PMI’s win this March when the court revoked two BAT patents.
The BAT patents were revoked for obviousness, with the court concluding they lack an “inventive step” over an existing PMI patent. The latest four PMI revoked patents have a metal insulator feature as the inventive concept, which the court also invalidated for obviousness. The UK Court of Appeal refused BAT permission to appeal the March 2021 decision. PMI says it is “evaluating the decision and assessing our options” in regard to the latest ruling.
In its case against PMI with the United States International Trade Commission (USITC) last year, BAT received a preliminary victory as the administrative law judge there issued an initial determination that PMI’s IQOS products infringe on BAT patents and recommended a ban on the importation of IQOS devices, Marlboro HeatSticks, and component parts as well as banning the sale of such products. However, last week the full commission chose to review the judge’s findings and recommendations and not approve it at this time. The final order is subject to review by the US Trade Representative and federal courts this September.
PM USA announced that due to this uncertainty, it has delayed further expansion of IQOS and Marlboro HeatSticks.
This latest battle of patents between the two tobacco giants in the UK and US are two of many globally, all started in 2018 when PMI sued BAT for patent infringement in Japan against the latter’s HNB products. Last year, BAT filed with USITC, and BAT subsidiary Nicoventures Trading sued PMI in Munich and the UK. PMI responded by suing BAT, which saw a successful outcome this March with the two BAT patents revocation. Cases in Munich over the same two patents are still ongoing. PMI also filed cases against the two patents with the European Patent Office, resulting in one getting invalidated while the case for the other one is still ongoing.