British American Tobacco may no longer be allowed to sell its Glo products in Germany, after the Düsseldorf Regional Court found it infringed a Philip Morris patent. The decision, which the court released just before Christmas, follows some recent success for BAT. In 2021, the company had won some patent suits against Philip Morris products.
12 January 2022 by Mathieu Klos
The Düsseldorf Regional Court has found that BAT infringes Philip Morris’ European patent EP 32 66 323. As a result, according to a court spokesperson, the court has prohibited the cigarette manufacturer from marketing its Glo products in Germany (case ID: 4b 105/20).
However, JUVE Patent is not yet aware if Philip Morris will enforce the injunction against BAT.
The Düsseldorf court also ordered BAT to pay damages, provide information and render accounts. However, BAT counteracted by filing an appeal with the Higher Regional Court of Düsseldorf immediately after the judgment (case ID: I 15 U 65/21).
EP 323 was already the subject of proceedings between the two competitors in 2020. But in December of that year, Philip Morris withdrew its application for a preliminary injunction from the Regional Court Munich after the judges expressed doubts over the granting of the patent. However, the Düsseldorf patent judges did not have such doubts.
The European Patent Office did not grant EP 323, which protects an electrically heated smoking system with external heater, until August 2020. BAT subsidiary Nicoventures filed an opposition against the patent at the EPO.
BAT sells its product under the brand Glo, while Philip Morris markets its products under the Iqos brand. Both devices use heat-not-burn technology. However, Glo heats the tobacco sticks using induction technology, while Iqos uses a heating rod. The e-cigarettes business is considered a key driver of industry growth.
Neither company commented on the ruling. A dispute between the two companies over novel cigarette technologies has been raging in Japan, Korea, the US, Germany and the UK, as well as in numerous other European countries.
In the UK, both opponents have sued each other over four patents each. In July 2021, the High Court revoked all four heat-not-burn cigarette technology patents belonging to Philip Morris. Previously, however, in March 2021 Philip Morris had successfully invalidated two of four BAT patents.
In Germany, the two parties have taken each other to court for patent infringement in five lawsuits in Düsseldorf, Hamburg, Mannheim and Munich. The cases concern not only heat-not-burn but also classic e-cigarette technology.
At the beginning of December, Mannheim Regional Court dismissed a lawsuit filed by Philip Morris in favor of BAT. The court found no patent infringement in the case.
The patent firms that advised both companies in the Düsseldorf case were previously active in the other proceedings. However, the teams have changed their composition.
For the proceedings in Germany, Philip Morris is working with a team led by Kay Kasper and Tobias Hahn of Hoyng ROKH Monegier. The company also worked with patent attorneys from Dreiss.
Furthermore, Dreiss partner Andreas Pfund is handling the patent-in-suit from the Düsseldorf proceedings at the EPO. Powell Gilbert is conducting the UK proceedings for Philip Morris.
British American Tobacco and mixed law firm Vossius have worked together in Germany for many years. For heat-not-burn proceedings in the UK, BAT has instructed Kirkland & Ellis.
London patent attorney firm D.Young & Co is conducting the opposition to EP 323 at the EPO on behalf of BAT.
For British American Tobacco
Vossius & Partner (Munich): Thure Schubert, Elard Schenck zu Schweinsberg (patent attorneys), Kai Rüting (Düsseldorf); associates: Matthias Jentsch, Ananda Landwehr (patent attorneys)
In-house (London/Hamburg): Tracey Cooke (head of patents), Felix Heyde
Düsseldorf Regional Court, 4b Civil Chamber
Daniel Voß (presiding judge)