Philip Morris and BAT continue heat-not-burn patent saga at UK High Court
The UK High Court has found two Philip Morris patents valid, but rejected an argument that rival multinational tobacco company BAT infringes the patents with its cigarette technology. This follows a similar recent decision handed down by the Higher Regional Court Düsseldorf, which in January invalidated a previously far-reaching injunction against BAT. Despite the recent twists and turns, however, an end to the dispute remains elusive.
24 April 2023 by Amy Sandys
British American Tobacco (BAT) had attempted to revoke two Philip Morris patents, EP 3 266 323 and EP 3 741 225, on the grounds of added matter and obviousness over the prior art. The court only considered the obviousness argument for EP 323, with Philip Morris conceding that EP 225 would also be invalid should the court find claim one of EP 323 invalid for obviousness. The court considered both patents separately regarding added matter.
However, ultimately the High Court confirmed the validity of both patents, while rejecting Philip Morris’ claims of infringement from BAT’s glo products. Philip Morris has not yet confirmed whether it will appeal the decision.
Philip Morris considers options
EP 3 266 323 protects an electrically heated smoking system with external heater. Heat-not-burn cigarette products contain potentially lower toxic emissions than traditional cigarettes, which usually burn nicotine to create the aerosol. BAT initially commenced proceedings to clear the way for the launch of its tobacco-heating glo products in the UK. It also sought to obtain a reasoned decision from the UK High Court, prior to other European courts undertaking parallel litigation.
In a statement provided to JUVE Patent, a spokesperson for Philip Morris says, “We appreciate that the English Patents Court rejected BAT’s attack on the validity of PMI’s valuable intellectual property, joining the European Patent Office Opposition Division in rejecting BAT’s arguments in that respect. We are reviewing the infringement aspect of the decision and considering our appellate options.”
Story so far
Both parties have been involved in multiple proceedings over myriad patents. In January 2022, the Regional Court Düsseldorf effectively banned BAT from selling its first-generation devices. Then, in October, the EPO Technical Boards of Appeal did not grant BAT’s important EP 3 398 460 B1. BAT had already sued over the 460 patent at Munich Regional Court in 2020. The latter lawsuit, together with suits in the US and UK, marked the beginning of the global dispute between the two tobacco giants.
Jin Ooi
At the end of 2022, BAT scored two successes. In the UK, the Court of Appeal confirmed that four Philip Morris patents were invalid for obviousness (case ID: CA-2021-000302). The four patents at issue, EP 3 248 483, EP 3 248 484, EP 3 248 485 and EP 3 248 486, all cover heat-not-burn technology for a new generation of cigarettes where the heated tobacco generates an aerosol containing nicotine.
However, the EPO Opposition Division has also rejected BAT’s allegations of added matter against EP 323. In Germany, parallel proceedings are ongoing regarding the same patent.
In January 2023, the Higher Regional Court Düsseldorf overturned an injunction of the Düsseldorf Regional Court, finding that BAT’s products did not infringe the patent. As such, the judge behind the recent UK decision is aligned with their German colleagues.
BAT leans on Kirkland
Once again, Kirkland & Ellis acted for BAT in the heat-not-burn cigarette proceedings in the UK, led by partners Jin Ooi and Nicola Dagg. In the UK, BAT was a new client for Kirkland at the commencement of proceedings in 2020.
The firm is also helping coordinate the litigation globally, with patent boutique Vossius & Partner running the German case. Vossius and BAT have had good relations for many years. Vossius & Partner partners Thure Schubert and Kai Rüting, as well as patent attorney Elard Schenck zu Schweinsberg, initiated the first claims against Philip Morris in Germany in spring 2020. The team led for BAT in recent proceedings in Düsseldorf.
D Young & Co, Dehns and Venner Shipley handle most of the patent applications and opposition proceedings on behalf of BAT.
Powell for Philip
Alex Wilson
For Philip Morris, Powell Gilbert partners Alex Wilson and Peter Damerell lead proceedings in the UK, with Hoyng ROKH Monegier running the cases over heat-not-burn technology in Germany. Düsseldorf-based partners Kay Kasper and Tobias Hahn are running cases on the claimant as well as on the defendant side.
Furthermore, Dreiss partner and patent attorney Andreas Pfund is handling the technical aspects of the cases. UK patent attorney firm HGF handles most of the EPO work for Philip Morris. German firm Dreiss and UK firm Reddie & Grose are also involved in some of Philip Morris’ patents.
Michael Tappin, currently Kings’ Counsel at acclaimed barristers’ chambers 8 New Square, presided over the hearing in his capacity as deputy judge. Recently, Tappin has represented Nokia in patent litigation against Oppo, where the court found Oppo had infringed a Nokia mobile phone transmitter patent.
For Philip Morris
8 New Square (London): Andrew Lykiardopoulos
11 South Square (London): Tom Alkin
Powell Gilbert (London): Alex Wilson, Peter Damerell (both partners); associates: Alex Borthwick, William Hillson, Jennifer O’Kane
For BAT/Nicoventures
11 South Square (London): Iain Purvis, Kathryn Pickard
Kirkland & Ellis (London): Jin Ooi, Nicola Dagg (both partners); associates: Will Jenson, Andrew Marks
D Young & Co. (London): Darren Lewis
High Court of England and Wales, London
Michael Tappin (deputy judge)