Category: Intellectual Property

Poda Receives Patent for Closed Bottom Pod

Photo: Poda Holdings
Poda Holdings has received a U.S. patent for its closed bottom vaporizer pod. The patent was granted on Dec. 28, 2021.
“Receiving this Notice of Issuance is the culmination of a substantial amount of work by Poda and our intellectual property team,” said Ryan Selby, CEO of Poda, in a statement. “The application for this invention was initially filed on March 17, 2017. After almost five years of dedicated work and substantial financial investments, I am extremely proud to have this valuable patent granted by the U.S. Patent and Trademark Office.
“With the granting of this U.S. patent, Poda will effectively be the only company that can market a closed-ended heat-not-burn cigarette in the United States. We have already received a granted Canadian patent for this invention, and we now look forward to receiving granted patents for this application in the over 60 additional countries where this application has been filed. We believe this patent has incredible applicability in the global heat-not-burn market, and we look forward to marketing our patented products on a global scale.”
January 13, 2022
VPR Brands Settles IP Dispute

Illustration: VPR Brands
PHD Marketing has agreed to pay VPR Brands $85,000 to settle an intellectual property dispute. As part of the deal, VPR Brands has granted PHD a nonexclusive, non-assignable license to practice the invention set forth in the patent.
This U.S. patent includes claims covering electronic cigarette products containing an electric airflow sensor, including a sensor comprised of a diaphragm microphone. The sensor turns the battery on and off, and covers most auto-draw, e-cigarettes, cigalikes, pod devices and vaporizers using an airflow sensor rather than a button.
VPR previously filed a lawsuit in the U.S. District Court for the Central District of California alleging patent infringement of U.S. Patent by PHD.
“I want to once again thank our legal team at SRIPLAW for their hard work and diligence in settling this matter,” said VPR CEO Brands Kevin Frija in a statement. “It is a Win-Win for All parties when a dispute can be settled ahead of trial.”
Previously, HQDTECH USA and Nepa 2 Wholesale agreed to pay more than $275,000 to VPR Brands for infringing on the same patent.
January 7, 2022
VPR Brands Settles Airflow Patent Case

Photo: Vitalii Vodolazskyi
HQDTECH USA and Nepa 2 Wholesale have agreed to pay more than $275,000 to VPR Brands to settle an intellectual property dispute. VPR will now license the IP to Nepa.
VPR Brand’s U.S. patent No. 8205,622 dates to 2009 and includes independent claims covering electronic cigarette products containing an electric airflow sensor, including a sensor comprised of a diaphragm microphone.
The sensor turns the battery on and off and covers most auto-draw, buttonless e-cigarettes, cigalikes, pod devices and vaporizers using an airflow sensor rather than a button.
“I want to thank our legal team at SRIPLAW for their hard work and diligence in settling this matter. They have been preparing to go to court and litigate on our behalf for the better of two years now, and preparation is key in negotiating and settling any dispute,” said Kevin Frija, CEO of VPR Brands, in a statement.
“Ultimately, it is a win-win for all parties when a dispute can be settled ahead of trial, but you must be prepared to take it all the way, and the litigation team at SRIPLAW is ready, willing and able to go the distance if needed, and that is what counts when protecting intellectual property.”
The case was filed on May 3, 2021, in the Florida Southern District Court.
December 8, 2021
Spanner in the Works

Photo: Mariakray
A patent dispute derails the U.S. rollout of IQOS.
TR Staff Report
The deadline of Tobacco Reporter’s December print edition coincided with one for the U.S. Trade Representative to overturn a ruling preventing Altria Group subsidiary Philip Morris USA from importing Philip Morris International’s IQOS tobacco-heating device following a patent dispute.
On Sept. 30, the International Trade Commission upheld an initial determination that PMI’s IQOS device infringes patents owned by BAT. As a result of the ITC ruling, Philip Morris USA has been barred from importing PMI’s IQOS 2.4, IQOS 3 and IQOS 3 Duo heat-not-burn traditional cigarette products. It was also ordered to halt future sales of those products—marketed as Marlboro HeatSticks—already in the U.S.
Altria Group asked trade representative Katherine Tai to overturn the ban. Tai had 60 days to do so. By Nov. 30, however, the U.S. Trade Representative’s office confirmed to Bloomberg that no action had been taken by Tai, meaning the IQOS import ban stands.
BAT welcomed the development. “Today’s announcement provides a measure of success for our enforcement of intellectual property rights to ensure we can continue to innovate, as is common practice among innovation-based industries,” Gareth Cooper, BAT’s assistant general counsel, said in a statement. “As we have strenuously noted, there was no reason to overturn the policy.”
Altria expressed disappointment with the decision. “We continue to believe that the plaintiff’s patents are invalid and that IQOS does not infringe on those patents,” the company said in a statement.
“The ITC’s importation ban makes the product unavailable for all consumers who have switched to IQOS, reduces the options for the over 20 million smokers looking for alternatives to cigarettes and ultimately is detrimental to the public health.”
This sentiment was echoed by Gregory Conley, president of the American Vaping Association, at the time of the ITC’s Sept. 30 decision.
“By potentially denying them the opportunity to switch to a harm reduction production IQOS, the real losers of this protracted court battle could end up being American adult smokers,” Conley said.
“While some may use vaping, snus or pouches in the absence of IQOS, far too many American adults will choose to just smoke cigarettes instead.”
The U.S. Food and Drug Administration authorized IQOS for sale in April 2019. The products debuted in test markets in Atlanta in October 2019 and Richmond, Virginia, in November 2019. During the second quarter, Philip Morris USA expanded retail distribution of Marlboro HeatSticks into the Triad and other metro areas of North Carolina as well as northern Virginia and Georgia.
In immediate financial terms, the import ban has limited impact on PMI and Altria. IQOS in the U.S. is currently not a meaningful contributor to the companies’ earnings, according to Morgan Stanley. Nonetheless, IQOS is a key element in Altria’s shift away from traditional tobacco products, which have seen falling demand. To achieve its mission “to responsibly lead the transition of smokers to a smoke-free future,” Altria will need a viable alternative to combustible cigarettes in its portfolio.
Altria will likely appeal to the U.S. Court of Appeals for the Federal Circuit, which handles patent lawsuits. That process could take up to a year to reach a decision, with the likelihood of a successful appeal not favorable, according to industry analysts.
In the worst-case scenario for Altria and Philip Morris, the two companies would have to go back to the drawing board, moving production to the U.S. or changing up the design enough to avoid patent infringement claims.

Advertisement
December 1, 2021
Altria Banned From Importing IQOS Into U.S.

Photo: Kuznietsov Dmitriy
The U.S. Trade Representative has upheld the International Trade Commission’s (ITC) finding that Philip Morris International’s IQOS tobacco heating device infringes on patents held by British American Tobacco, reports The Winston-Salem Journal.
As a result of the ITC ruling, Philip Morris USA is barred from importing PMI’s IQOS 2.4, IQOS 3, IQOS 3 Duo heat-not-burn traditional cigarette products. It also was ordered to halt future sales of those products—marketed as Marlboro HeatSticks—already in the U.S.
Some retailers of the Marlboro HeatSticks, including convenience stores, already had displayed notifications to customers that those products could no longer be sold as of Monday.
“Today’s announcement provides a measure of success for our enforcement of intellectual property rights to ensure we can continue to innovate, as is common practice among innovation-based industries,” Gareth Cooper, BAT’s assistant general counsel, said in a statement. “As we have strenuously noted, there was no reason to overturn the policy.”
Altria said expressed disappointment with the decision. “We continue to believe that the plaintiff’s patents are invalid and that IQOS does not infringe on those patents,” the company said in a statement.
“The ITC’s importation ban makes the product unavailable for all consumers who have switched to IQOS, reduces the options for the over 20 million smokers looking for alternatives to cigarettes, and ultimately is detrimental to the public health.”
This sentiment was echoed by Gregory Conley, president of American Vaping Association, at the time of the ITC’s Sept. 30 decision.
“By potentially denying them the opportunity to switch to a harm reduction production IQOS, the real losers of this protracted court battle could end up being American adult smokers,” Conley said.
“While some may use vaping, snus, or pouches in the absence of IQOS, far too many American adults will choose to just smoke cigarettes instead.”
The U.S. Food and Drug Administration authorized IQOS for sale in April 2019. The products debuted in test markets in Atlanta in October 2019 and Richmond, Virginia, in November 2019. During the second quarter, PM USA expanded retail distribution of Marlboro HeatSticks into the Triad and other metro areas of North Carolina, as well as northern Virginia and Georgia.
Altria will likely appeal to the U.S. Court of Appeals for the Federal Circuit, which handles patent lawsuits. That process could take up to a year to reach a decision, with the likelihood of a successful appeal not favorable, according to industry analysts.
In the worst-case scenario for Altria and Philip Morris, the two companies would have to go back to the drawing board, moving production to the U.S. or changing up the design enough to avoid patent infringement claims.
PMI has successfully defended similar cases in the U.K. and elsewhere. BAT has already pursued litigation over IQOS in Poland, the Czech Republic, Bulgaria, Romania and Greece and through the European Patent Office.
November 30, 2021
Reynolds Settles Vuse Patent Suit Before Trial

Photo: RAI
R.J. Reynolds (RJR) has settled Fuma International’s claims that Reynold’s Vuse products infringed on the manufacturer’s e-cigarette patents, reports Reuters. RJR settled the suit just four days before the trial was slated to begin, according to a Thursday filing in North Carolina federal court.
U.S. District Judge Catherine Eagles found in May that RJR’s products infringed parts of two Fuma patents. A jury in Greensboro, North Carolina, USA, was set to consider on Nov. 15 whether RJR infringed additional parts of one of the patents, whether the patents were valid, and what damages RJR owed, among other things.
Fuma sued in 2019 for infringing patents related to an e-cigarette design with a cartridge and power source. The complaint said RJR copied Fuma’s design after meeting with Fuma about its e-cigarette technology in 2010.
Fuma asked for up to $135 million in damages, according to court filings.
Vuse is one of the most popular e-cigarette brands in the U.S. RJR introduced the Vuse Solo in 2013 and the Vuse Ciro in 2017. The U.S. Food and Drug Administration gave RJR permission to market Solo in October, its first-ever authorization for a vaping product.
The tobacco giant argued the relevant parts of the patents were invalid based on prior art that disclosed the same design, according to Reuters. Details of the settlement weren’t immediately available.
November 14, 2021
PMI Makes Case for IQOS at FDA

Photo: Lightfield Studios
Philip Morris International met with the U.S. Food and Drug Administration on Nov. 5 to present its argument for why the multinational and Altria Group should be allowed to import and sell the IQOS tobacco-heating device in the U.S., reports CNBC.
According to a CNBC source, PMI told the FDA that IQOS is unique in its ability to transition smokers away from combustible cigarettes, which the company says are more harmful to health than tobacco-heating devices.
In late September, the International Trade Commission ruled that IQOS infringed on two of Reynolds’ patents. The Biden administration is conducting an administrative review until Nov. 29 to decide if the sale and import of the cigarette alternative will be banned.
During the FDA meeting, PMI reportedly argued that the ITC overstepped its bounds, given that the FDA is in charge of regulating which tobacco products can be sold.
The U.S. Trade Representative will make a recommendation to President Joe Biden after listening to input from a number of agencies, including the FDA, which regulates tobacco products.
If the administration sides with R.J. Reynolds in the dispute, IQOS could be off of U.S. shelves for months as it waits for a decision on a separate claim from Reynolds with the U.S. Patent and Trademark Office.
PMI has successfully defended similar cases in the U.K. and elsewhere. BAT has already pursued litigation over IQOS in Poland, the Czech Republic, Bulgaria, Romania and Greece and through the European Patent Office.
In the worst-case scenario for Altria and Philip Morris, the two companies would have to go back to the drawing board, moving production to the U.S. or changing up the design enough to avoid patent infringement claims.
November 10, 2021
Litigation Spikes With Rise of New Products

Image: inimalGraphic
Litigation over intellectual property relating to nicotine products has risen more than 10-fold since 2015, reports The Wall Street Journal, citing data from Maxval and Lexis Nexis.
The increase in patent litigation appears to be related to tobacco companies’ intensified search for smoking alternatives.
In September, the U.S. International Trade Commission ruled that Philip Morris International and Altria must stop imports of IQOS heated-tobacco sticks due to a patent dispute with R.J. Reynolds Tobacco, which is owned by British American Tobacco. The case is now in review and can be appealed. But in the worst-case scenario, IQOS will be banned from the lucrative American tobacco market.
PMI and BAT are furthest ahead in their shift to smoke-free technologies with respective targets to derive more than half and one-fifth of net revenue from less harmful products by the middle of the decade. They are also among the most active litigants.
The two have a patent dispute pending in Japan, another key market for smokeless products. And although September’s U.S. ruling went in BAT’s favor, the British firm recently lost disputes against its rival in the United Kingdom and Poland.
October 15, 2021
U.S. IQOS Imports Halted

Photo: theaphotography
The International Trade Commission (ITC) has upheld an initial determination from May 2021 that Philip Morris International’s IQOS device infringes on two patents owned by BAT subsidiary Reynolds American Inc. (RAI).
The agency has instituted an import ban and a cease-and-desist order preventing IQOS consumables and devices from being sold in the U.S. in 60 days. PMI’s U.S. partner, Altria Group, plans to continue to sell IQOS through the 60-day period in its existing markets.
BAT welcomed the ruling. “Infringement of our intellectual property undermines our ability to invest and innovate and thereby reduce the health impact of our business,” the company wrote in a statement. “We will therefore defend our IP robustly across the globe.”
The patents relate to an electronically powered device with a heater to generate an aerosol and expire in October 2026 and November 2031. BAT has filed similar cases globally, including in Germany, the U.K., Japan and Italy.
Morgan Stanley said the ruling would have limited financial impact on PMI and Altria, as IQOS in the U.S. is not a meaningful contributor to the companies’ earnings. The outcome of similar cases brought by BAT against PMI internationally, however, could have a greater impact. But so far, PMI has been successful defending cases in the U.K. and Greece.
The investment bank also noted that the IQOS ban applies to imported product, suggesting it may be overcome by shifting production to the U.S.
The ITC decision will now be reviewed by the U.S. Trade Representative. If the decision is not vetoed within 60 days (only a handful have ever been vetoed), it can be appealed to the U.S. Court of Appeals, but the import ban would still be in effect throughout an appeals process.
September 30, 2021
IQOS Pauses Expansion After Patent Ruling

Photo: Kuznietsov Dmitriy
Philip Morris USA has paused U.S. expansion of its IQOS heat-not-burn (HnB) cigarettes following an unfavorable U.S. International Trade Commission (ITC) ruling, reports The Winston-Salem Journal, citing the company’s second-quarter report.
In April 2020, British American Tobacco subsidiaries R.J. Reynolds Tobacco Co., RAI Strategic Holdings and R.J. Reynolds Vapor Co. filed a patent infringement lawsuit against Philip Morris USA.
The complaint focuses on three HnB technology patents held by the company. An additional two patents are involved in a separate legal proceeding before the patent and trademark office.
In May, an ITC administrative law judge found that the IQOS system infringes two of the plaintiff’s patents and recommended imposition of a ban on the importation of the IQOS system.
On July 27, the ITC accepted review of the administrative law judge’s findings and recommendations on certain issues, including issues relating to the patent infringement claims and potential remedies, including a ban on the importation of the IQOS electronic device, Marlboro HeatSticks and component parts into the United States and on the sale of any such products previously imported into the United States.
The ITC’s ultimate order is subject to review by the U.S. Trade Representative and federal court. Due to this uncertainty, PM USA has delayed further expansion of IQOS and Marlboro HeatSticks.
IQOS is the only HnB product authorized for sale in the U.S., where it is sold by Altria. Last year, the U.S. Food and Drug Administration allowed the company to market IQOS as reducing consumers’ exposure to harmful chemicals found in cigarettes.
The IQOS products debuted in test markets in Atlanta, Georgia, in October 2019 and Richmond, Virginia, in November 2019.
During the second quarter, PM USA expanded retail distribution of Marlboro HeatSticks into the Triad and other metro areas of North Carolina as well as northern Virginia and Georgia.
The expansion contributed to Marlboro HeatSticks’ retail sales volume jumping by nearly 40 percent, including reaching a 0.8 percent market share for overall cigarettes in Atlanta as well as 0.5 percent in Charlotte.
July 30, 2021