On January 12th at 2 PM, 2FIRSTS held an online live broadcast of a patent litigation sharing session on the "PMI--HNB Resistance Heater". 2FIRSTS invited Beijing Zhonglun Wende (Kunming) Law Firm, experts in the tobacco and new tobacco fields, and Tang Shunliang, a leading talent in intellectual property rights in Yunnan Province, to provide in-depth legal and patent knowledge. The event attracted over 200 electronic cigarette industry professionals to participate.
Lawyer Tang provided professional expertise on five aspects related to this patent lawsuit, including heater technology, PMI heater design patent, impact on BAT products, the UK court upholding the original judgment, and inspiration for Chinese companies. Additionally, he answered questions from the audience regarding the differences between central heating and circumferential heating methods.
Lawyer Tang Shunliang introduces the image source: 2FIRSTS.
Technology Insight: Heater plays a vital role in HNB.
As is well known, IQOS is PMI's most well-known heat-not-burn (HNB) brand, and the heating method used in the product is the main development trend of PMI's HNB products.
The success of the 2014 launch of IQOS was due to PMI's resistance heating technology. This quickly opened up the market and for several years, PMI continued to hold over 90% of the HNB market share.
Over the past 15 years, their heating technology has evolved from fragmented heating simulations to prevent overcooking, to segmented heating on a single piece, and then to program-controlled temperature changes. The remaining structures are auxiliary designs to serve the heating method.
Heat-up technology patent application status worldwide, according to 2FIRSTS.
Lawyer Tang mentioned that the core issue that needs to be addressed for HNB products is segmented heating temperature control. The power source can also be connected to one or multiple central segments of a single track to provide multiple sections, each of which can be individually connected to the power source. In another embodiment of the invention, the conductive track or multiple conductive tracks include multiple tracks of conductive materials, and each track can be individually connected to the power source.
The electric insulation substrate is rigid and is arranged to be inserted into the floating substrate. If the electric insulation substrate is of appropriate size and rigid, it can be directly inserted into the floating substrate. The electric insulation substrate can be reinforced in a certain way to provide sufficient rigidity. In this case, if insulation material is provided, the insulation material can be set to surround the floating substrate.
Competitive pressure: PMI's heater technology is protected by patents, but the public disclosure of information on aerosols and material technology has disrupted the patent strategy of its competitors.
PMI began laying out the groundwork for their resistor heating device patent as early as 2009. Applications for the patent have been submitted and maintained under the PCT system across multiple countries until 2017.
During the live broadcast, Lawyer Tang provided an in-depth analysis of the technical limitations regarding aerosol in PMI's heating device patent, which also raised significant concerns for other tobacco companies applying for similar patents in the future.
Schematic diagram of disassembling PMI heating product, image source: 2FIRSTS.
There are four technical limitations on aerosol.
Firstly, optimal substrates for the formation of the floating material include materials containing tobacco, or alternatively, substrates containing non-tobacco materials can also be used. Examples of suitable materials for the formation of the floating material include propylene glycol and glycerol.
Secondly, the formation of a floating substrate includes a tubular substrate that has a cavity for receiving at least one heater. A solid substrate can include one or more of the following forms: powder, granule, ball, fragment, solid core, strip, or piece of herbal leaves, tobacco leaves, tobacco strips, reconstituted tobacco, homogenized tobacco, extruded tobacco, or expanded tobacco. The solid substrate can be in loose form or can be placed in an appropriate container or box. The solid floating substrate can contain additional volatile flavor compounds of tobacco or non-tobacco that are released when the substrate is heated.
In this invention, there are two possible options for the formation of a solid floating material substrate: it can be set on top of or embedded within a thermally stable carrier. In preferred embodiments, the carrier is a tube-shaped structure with a thin layer of solid substrate on either its inner or outer surface, or on both. The carrier can take the form of powder, granules, spheres, fragments, rods, strips, or pieces.
In this invention, there are two possible alternatives for forming a floating substance as a substrate, one of which is a liquid substrate. If a liquid substrate is used to form the floating substance, an electrically heated smoking system preferably includes a device for maintaining the liquid. For example, the liquid substrate that forms the floating substance can be kept in a container. Alternatively or additionally, the liquid substrate that forms the floating substance can be absorbed into a porous carrier material. The porous carrier material can be made of any suitable absorbent material or body, such as foam metal or plastic, polypropylene, polyester, nylon, or ceramics. The liquid substrate that forms the floating substance can be kept in the porous carrier material before being used in the electrically heated smoking system.
PMI vs. BAT: Following PMI's lawsuit against Glo's product in Japan, Glo has launched a counterattack.
In 2018, Phytochemical Corporation filed a lawsuit against British American Tobacco and Philip Morris International for allegedly infringing on its patent rights for heated tobacco products.
Europe is a larger market than the United States, Japan, and South Korea. Patent lawsuits in Japan have sparked a prolonged patent war between two major tobacco companies, continuing in both Europe and the United States. In many subsequent cases, BAT has been the initiating party, indicating their challenge to PMI's market expansion and patent threat pressure.
In 2020, British American Tobacco (BAT) launched a counter-attack against Philip Morris International (PMI) in response to a lawsuit filed by PMI. BAT filed lawsuits against PMI for patent infringement and sought compensation from both the International Trade Commission and the Federal Court in Virginia. Additionally, BAT's subsidiary, Nicoventures Trading, also filed a lawsuit against PMI in the UK.
This case involves four separate cases in Europe, where the plaintiff is seeking the right to directly adjust the design of their competitor's products. The case gained attention in June 2018, following the launch of Glo in Japan, when PMI filed a patent lawsuit against the heating device. PMI continued to assert its power in China, where it initiated several lawsuits.
Comparison chart between Glo product and IQOS product (source: 2FIRSTS)
What patents has the BAT product Glo sidestepped compared to IQOS?
According to materials provided by lawyer Tang, the JP6210611B2 patent claim describes an electrically heated smoking system used to receive floating substances on a substrate. Its defining characteristic is:
Firstly, the system includes at least one component which consists of the following parts.
Secondly, there is at least one heater which is used to heat the substrate that forms the floating matter. The heater includes one or multiple conductive tracks on an electrically insulated substrate, which is tubular in shape.
Thirdly, the power supply provides electricity to at least one heater.
Fourthly, the thermal insulation element, which is intended to insulate the heater, is configured around the heater and includes metal as part of the thermal insulation element.
PMI's appeal fails: divisional patents will protect the technology solution with four sets of rights claims.
In March 2021, UK courts revoked two patent licenses granted to British American Tobacco and dismissed their allegations of infringement against Philip Morris International. The court found that the patent licenses granted to British American Tobacco were revoked due to their obviousness and lack of creativity.
In July 2021, a UK court ruled that four of Philip Morris International's (PMI) heated tobacco technology patents were invalid, giving British American Tobacco (BAT) a victory. PMI then appealed to the UK Court of Appeals with five reasons, but on December 16, 2022, the appeal was rejected and the patents remained invalid.
The European battlefield for PMI's resistance heating technology has opened in the England and Wales Intellectual Property Court. In this lawsuit, four of PMI's patents were found invalid, which has directly threatened PMI's patent ambitions in Europe.
Against this backdrop, lawyer Tang interpreted the technical solutions protected by PMI's four group patent claims.
Firstly, the cylindrical insulation material of power protection is arranged to heat the circumference of the product being heated in order to protect it.
Secondly, the heating trajectory protected by the first power is separately linked to the power source and controlled to start heating individually, but it still heats in a circular manner, specifically aimed at Glo.
Thirdly, the choice lies between the protection of the power supply or the heating method used by Zhou Xiang. The heating path is further restricted to be arranged on the outer circumference of the tubular insulation material.
Fourthly, the conductive path and power supply that are protected by Patent 1 are connected, and can be heated at different temperatures and time periods through control. All four patents protect both heating and temperature measurement, with the aim of addressing the significant deformation of glo products.
Conclusion
The iteration from carbon heating to resistance heating, and now to electromagnetic heating, has resulted in the core patent of IQOS resistance heating device being invalidated in the UK, which holds significant implications for Chinese e-cigarette companies looking to expand overseas.
For Chinese businesses, the supplementary materials, patents, litigation strategies, arguments and legal techniques used in the lawsuits of the two major tobacco giants, as well as the logic of technology and law and overseas litigation procedures, provide valuable resources for electronic cigarette companies to analyze and learn from. These companies can engage in in-depth learning and continuous tracking.
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