USITC backs BAT in patent dispute with Philip Morris
The US International Trade Commission (ITC) has ruled that Philip Morris International (PMI) will no longer be permitted to import its IQOS heated tobacco sticks into the US, in a decision that “puzzled and concerned” the company.
The decision, delivered on Wednesday, September 29, is the latest development in the ongoing patent dispute between US multinational tobacco company PMI and British tobacco manufacturer British American Tobacco (BAT).
In May 2020, the ITC instigated its investigation into PMI and its partner Altria Group following a complaint made by BAT-owned R.J. Reynolds Tobacco Company.
BAT accused PMI of violating section 337 of the Tariff Act by importing tobacco heating articles and components which infringed US patent numbers 9,839,238, 9,930,915), and 9,901,123.
At the centre of the patent row is PMI’s IQOS product line. IQOS products feature heat-not-burn technology, and they are the only heat-not-burn product currently authorised for sale in the US. Heat-not-burn is a method of heating tobacco that supposedly generates lower toxic emissions compared to that of a typical cigarette.
In May 2021, an administrative judge at the ITC issued an initial determination in the matter, finding that the ‘915 patent and ‘123 patent had been infringed but the ‘238 patent had not.
The ITC opted to review this determination in July and, following the submission of written responses by all parties as well as public interest submissions, the administrative judge’s initial determination has now been upheld.
The Commission’s decision comprises an import ban, preventing PMI from bringing the infringing products into the US, and an order that PMI ceases to sell any infringing products that have already been imported. It will take effect 60 days after the decision was made.
In a statement shared with WIPR, PMI said it was puzzled and concerned by the ITC’s decision and that continued access to IQOS products is in the interests of American public health. The tobacco company said it would be approaching the US trade representative as a next step, as well as issuing an appeal at the appropriate time.
“Two patents at issue have claims which are currently under review at the US Patent and Trademark Office and lawsuits based on the same patent families have been repeatedly and universally rejected in European courts and the European Patent Office,” PMI added.
Meanwhile, a statement issued by BAT stated: “Infringement of our IP undermines our ability to invest and innovate and thereby reduce the health impact of our business. We will therefore defend our IP robustly across the globe.”
According to BAT, the infringing products are the IQOS 2.4, IQOS 3, IQOS 3 Duo and their accompanying heat sticks.
This is the latest development in the global dispute between BAT and PMI. In March 2021 the UK High Court revoked two of BAT’s e-cigarette patents for obviousness after finding that they lacked “inventive step” over an existing PMI patent.
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