British American Tobacco has experienced another first-instance win against Philip Morris over heat-not-burn cigarette technology. Mannheim Regional Court found no patent infringement in the case. Parallel proceedings are ongoing, among others, in the UK and Italy, with EPO proceedings coming up later in December.
7 December 2021 by Christina Schulze
Two tobacco companies, British American Tobacco and Philip Morris, are fighting over various models of heat-not-burn cigarettes. The present case concerns a design for vaporising the liquid, known as heat-not-burn technology. In this case, the taste depends on the type of aeresol formation inside the vaporiser.
Recently, in the dispute over Philip Morris’ patent EP 22 82 649, the parties discussed at length whether the wick protrudes into the liquid reservoir.
After an initial oral hearing, the court scheduled a second hearing to discuss the issues in depth. This is unusual for Mannheim Regional Court. However, the verdict was then clear: British American Tobacco did not infringe the patent.
In parallel, the EPO Boards of Appeal are hearing an appeal. The Court will rule on this on 18 February 2022. Japan Tobacco originally filed the opposition against the Philip Morris patent in 2014, with British American Tobacco joining the case last year.
The numerous lawsuits indicate the economic importance of the heat-not-burn in the next generation of cigarette technology. For example, Parallel proceedings are underway between the opponents in several other countries, including in the UK, the US, Japan, Italy, the Czech Republic, Bulgaria and Poland.
In Germany, further proceedings are pending in Munich and Düsseldorf. The parties expect an initial ruling from Düsseldorf on 21 December 2021.
British American Tobacco has worked with mixed law firm Vossius in Germany for many years. For the UK heat-not-burn proceedings, the company has instructed a Kirkland & Ellis team led by partner Jin Ooi. For the EPO proceedings in December, patent attorney firm D. Young will represent BAT.
Furthermore, in the EPO case, Japan Tobacco has retained counsel from French law firm Bandpay & Greuter. Jan Morf of Abitz & Partners will represent Philip Morris.
In the proceedings before the German regional courts, Philip Morris is working with a team led by Kay Kasper and Tobias Hahn of Hoyng ROKH Monegier, and patent attorneys from Dreiss in Stuttgart.
Meanwhile, Alex Wilson and Peter Damerell of Powell Gilbert are conducting the UK proceedings.
In Italy, mixed firm Bonelli Erede represents Philip Morris in the heat-not-burn dispute, with leading boutique Trevisan & Cuonzo active for BAT.
For British American Tobacco
Vossius & Partner (Munich): Thure Schubert, Elard Schenck zu Schweinsberg (patent attorney), Kai Rüting (Düsseldorf); associates: Matthias Jentsch, Ananda Landwehr, Axel Leins (both patent attorneys).
In-house (London): Tracey Cooke (head of patents), Felix Heyde (Hamburg)
For Philip Morris
Hoyng ROKH Monegier (Düsseldorf): Tobias Hahn, Kay Kasper; associates: Katharina Freudenstein, Thomas Misgaiski
Dreiss (Stuttgart): Thomas Knapp, David Sinz (both patent attorneys)
Abitz & Partner (Munich): Jan Morf
Mannheim Regional Court, 2nd Civil Chamber (2 O 123/20)
Holger Kircher (presiding judge)
Read all about the background to the e-cigarette dispute here.