USITC judge says Philip Morris infringes BAT patents
A US International Trade Commission (USITC) judge has issued an initial determination on the British American Tobacco (BAT) lawsuit against Philip Morris (PMI), finding that PMI’s IQOS technology infringes two BAT patents.
Philip Morris and its US marketing company Altria Group violated section 337 of the tariff act of 1930, which covers unfair methods of competition and importation into the US, Judge Clark Cheney ordered on Friday.
This could lead to an import ban of Philip Morris’s IQOS tobacco products into the US.
Commenting on the initial determination, a PMI spokesperson told WIPR: “We are aware that the Administrative Law Judge has issued an initial determination, but we have not yet received anything beyond a one-page notification. This is one step in a long process that does not have an immediate effect, and we look forward to next presenting our position to the Commission itself.”
PMI’s IQOS products are an electric cigarette alternative, where the tobacco is heated instead of burned. BAT has a similar product called Glo.
RJ Reynolds, a subsidiary of BAT, filed a complaint against PMI and Altria with the USITC accusing the IQOS products of infringing three patents covering heated tobacco technology—US patent numbers 9,839,238; 9,901,123; and 9,930,915.
The patents are currently under review at the US Patent and Trademark Office.
BAT asked the USITC for a cease-and-desist order to prevent the import of the IQOS products into the US.
PMI claimed that the lawsuit could have “deleterious effects on the public interest”.
A spokesperson from the BAT Group told WIPR: “We expect the ALJ will recommend that the USITC issue an exclusion order preventing Philip Morris and Altria from importing the infringing IQOS products into the US.”
“Infringement of our IP undermines our ability to invest and innovate and thereby reduce the health impact of our business, which is why we will defend our IP robustly across the globe.”
Sarah Sladic, investigative attorney for the USITC, recommended that PMI and Altia infringed on two of the three patents in January following a six-day trial.
The May 14 ruling by judge Cheney upholds that the IQOS products infringe US patents 9,901,123; and 9,930,915.
International litigation
This is the latest in an intensifying dispute between the two manufacturers. With litigation also taking place in the UK and Germany.
In March, the English High Court revoked two of BAT’s UK patents for obviousness, concluding that they lacked an inventive step over a prior PMI patent.
However, the court did also find that PMI’s IQOS infringed the two UK BAT Patents (UK 3,398,460, B1 and UK 3,491,944, B1) related to aerosol-generating device related to heat-not-burn technology.
Commenting on the judgment, a BAT spokesperson said: “Although BAT is pleased with the decision from the High Court of Justice… BAT is disappointed with the court’s decision that these patents are invalid. We remain confident in the patent protection we have around our innovations and we are considering our avenues for appeal.”
The two patents are also in dispute in Munich with the oral hearing concerning the ‘460 patent taking place in November this year and the infringement hearing for the ‘944 patent taking place in June.
The PMI spokesperson added: “BAT’s litigation in the US is part of a worldwide attempt - which has been entirely unsuccessful to date - that is meant to undermine the heated-tobacco segment, where they lag far behind. The ITC process has no effect outside the US.”
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
