Category: Intellectual Property

U.K. High Court Revokes BAT Patents

Photo: Oliver Le Moal
The U.K. high court has revoked two British American Tobacco (BAT) e-cigarette patents, reports World Intellectual Property Review. In doing so, the court dismissed BAT’s claim that Philip Morris International (PMI) infringed on the patents with its IQOS tobacco-heating product line.
Justice Richard Meade on March 9 concluded that the BAT patents lack an “inventive step” over PMI’s patent.
One of the BAT patents, EP 3 398 460 B1, covers an “aerosol-generating device with housing and a cigarette” whereas the other, EP3491944, refers to a cigarette “for use with” an aerosol-generating device.
Meade argued the patents merely covered a method of getting reconstituted tobacco into a cigarette form, and all methods of which—including rolling, gathering a sheet or cutting—were limited and would be obvious to a skilled team.
Both patents were found invalid for added matter and obviousness. However, Meade also concluded that, if the patents were valid, PMI’s IQOS products would have infringed them.
The tobacco giants have been quarreling over intellectual property for several years.
In 2018, PMI filed a complaint against BAT’s heated-tobacco products in Japan. PMI alleged that some technological features of BAT’s Glo device infringed on two of PMI’s Japanese patents.
In May 2020, BAT’s R.J. Reynolds subsidiary filed a lawsuit against PMI in the U.S. and Germany claiming that the IQOS tobacco-heating technology infringed patents for Reynolds’ Vuse vaping system.
In June 2020, PMI filed counterclaims, arguing that R.J. Reynolds’ vapor products infringed multiple patents owned by PMI and its U.S. partners, Altria Client Services and Philip Morris USA.
The patents are also currently in dispute in Munich.
March 11, 2021
VPR Brands Sues for Patent Infringement

Photo: VPR Brands
VPR Brands has filed lawsuits against three more vapor companies for violating its “auto draw” patent. The cases are in addition to suits filed against three other companies in February.
Granted in 2009, the patent covers vaping products containing an electric airflow sensor, including a sensor comprised of a diaphragm microphone. The sensor turns the battery on and off and covers auto-draw, buttonless e-cigarettes, cigalikes, pod devices and vaporizers using an airflow sensor.
“Just this week, we have filed three additional lawsuits, which brings the total to six with many more expected and likely as almost every company in the vape space has at least one product which uses the patented ‘auto draw’ technology.” said Kevin Frija, CEO of VPR Brands, in a statement. “We will be aggressively pursuing every company infringing on our patent no matter how small or how large they may be.”
VPR Brands and SRIPLAW, an intellectual property firm, have started to identify and notify companies they suspect of infringing on the VPR patent. Most recently, VPR Brands and SRIPLAW filed litigation against Mong, B&G Trading and Lightfire Holding. The three previous suits were filed against Jupiter Research, Cool Clouds Distribution and XL Vape.
“We want to make sure VPR Brands’ patent, which is valid until 2030, is enforced and our intellectual property rights are protected,” said Frija. “We intend to send a clear message to the industry that we mean business and of course, as they say, ‘business is business,’ it’s nothing personal; in the end, its just business.”
March 8, 2021
Philip Morris Korea Wins Trademark Fee Battle

Photo: Tobacco Reporter archive
Philip Morris Korea (PMK) has won a legal battle against South Korea’s tax authority over trademark usage fees, reports The Korea Herald, citing legal sources.
The Seoul Administrative Court on March 1 ruled in favor PMK, ordering Seoul Main Customs to cancel a KRW9.82 billion ($8.7 million) tax.
The ruling comes four years after the Korea Customs Service ordered the company to pay KRW3.4 billion in customs duties, KRW3.7 billion in value added tax and KRW2.6 billion in penalty tax over royalties paid to its headquarters.
PMK appealed the decision.
PMK has been producing tobacco products in Korea with raw materials exported from its headquarters since 2012. The tax authorities moved against the firm, believing the Korean unit had been paying royalties to use the company’s trade secrets.
According to Korea’s Customs Act, companies are subject to a levy when importers pay their business partners a low price and make the rest of the payment in royalties to evade taxation.
The March 1 ruling dismissed the argument by the tax authorities, saying that the royalties paid by PMK include trademark fees as well as tobacco leaves and business secrets and that the tax needs to be recalculated.
March 1, 2021
Capna Intellectual Sued Over Bloom Logo

Photo: Capna Intellectual
ITG Brands is suing Capna Intellectual for infringing its Kool trademark, according to Bloomberg Law.
According to ITG, the interlocking “O” letters in Capna’s Bloom cannabis e-cigarette brand logo confusingly resemble ITG’s famous Kool logo.
The suit was filed late January in the U.S. District Court for the Central District of California.
Capna reportedly applied for federal trademarks covering Bloom for e-cigarettes and oral vaporizers. ITG says it sent Capna a cease-and-desist letter in December.
The complaint says the Bloom marks are intended to capitalize on Kool’s well-known branding.
February 1, 2021
New Infringement Suit Against IQOS

Photo: Tobacco Reporter archive
Healthier Choices Management Corp. (HCMC) has filed a patent infringement lawsuit against Philip Morris USA and Philip Morris Products over the IQOS tobacco heating product.
Among other products, HCMC markets vapor products, including the Q-Cup, a small quartz cup that heats cannabis or CBD concentrate.
“We look forward to proving our allegations of infringement in this matter and intend to continue to move forward against any and all companies that infringe upon our intellectual property in both the tobacco and cannabis categories,” said Jeff Holman, CEO of HCMC, in a statement.
IQOS is already the subject of two other patent infringement proceedings filed by R.J. Reynolds Tobacco Co (RJ). One is proceeding before the International Trade Commission and seeks to stop the importation of IQOS into the United States; the other is a patent infringement action currently pending in the Eastern District of Virginia. R.J. Reynolds’ patents are unrelated to and unaffiliated with the patents asserted in the HCMC case.
Philip Morris USA parent Altria Group rejects RJR’s claims and has countersued the company, alleging that RJR’s own electronic nicotine delivery systems products infringe multiple patents owned by Philip Morris International (PMI) and Altria Group.
In April, British American Tobacco (BAT) sued PMI in the United States and Germany for patent infringement. BAT’s claim focuses on IQOS’ heating blade technology, which the company says is an earlier version of the technology used in BAT’s Glo tobacco heating devices.
December 2, 2020
Puff Bar Owner Sues Over Fake Products

Photo: DS Technology Licensing
DS Technology Licensing, the owner of registered trademarks associated with the Puff Bar vapor device, and Puff Inc., an authorized U.S. distributor, has filed a lawsuit in Los Angeles County Superior Court against over 20 Chinese and American companies accused of distributing counterfeit vaping devices.
The defendants include international manufacturer and distributor CACUQ, U.S. distributors, e-commerce companies, and brick-and-mortar retail stores. Plaintiffs are represented by the law firm of Gallinger Law.
The lawsuit addresses both counterfeit Puff Bar vapor devices as well as knockoff products identified as Puff Smart, Puff Mini, Puff Stig and Airis Puff and seeks $50 million in restitutionary damages and $25 million in punitive damages.
“Defendants in the lawsuit have infringed on the famous Puff and Puff Bar marks by introducing competing devices which use the stylized “Puff” associated with Puff Bar Vapor Devices as well as by openly selling fake or counterfeit Puff Bar vapor devices,” DS Technology Licensing wrote in a statement.
“Defendants are believed to be only a small number of the violators, as the anti-counterfeit verification system at puffbar.com has identified thousands of retail stores at which consumers bought devices which failed the check.”
DS Technology Licensing promised award to those with information that leads to the seizure of counterfeit goods.
October 2, 2020
Smoore Secures Judgment Against Counterfeiters

Photo: Shenzhen Smoore Technology
A New York federal judge recently granted Shenzhen Smoore Technology a $5.4 million default judgment and permanent injunction against more than 100 defendants accused of selling Vaporesso and Smoore’s self-branded counterfeit goods.
The default judgment is for $50,000 dollars per defendant and transfers to Smoore the frozen assets of the defaulting defendants. Smoore filed the complaint in October alleging trademark counterfeiting and infringement against defendants located in China but conducting business in the U.S. and other countries by means of their merchant storefronts on some online marketplace platforms. In the same lawsuits, Smoore settled with a significant number of defendant sellers who paid compensation for infringement and cooperated to identify their sources of supply of counterfeit products.
According to Smoore the ruling demonstrates the company’s determination to protect its intellectual property rights in the United States. “It is meaningful for protecting the development of the whole industry toward a healthy direction and providing safe and reliable vaping products for individual customers,” Smoore wrote in a statement.
Smoore has undertaken the lawsuits as part of an overall anti-counterfeiting program in the United States and elsewhere that includes cooperation with customs to seize counterfeit products and local police to arrest owners of and shut down counterfeit operations.
In the United States, Smoore is represented by the law firm Epstein Drangel, which has considerable experience in implementing and overseeing such anti-counterfeiting programs. Smoore says it plans to enforce the default judgment to collect compensation.
September 16, 2020
Taat Seeks Patent Protection

Photo: Taat Lifestyle & Wellness
Taat Lifestyle & Wellness has filed a patent application with the U.S. Patent and Trademark Office for the proprietary refinement process of the base material for Beyond Tobacco cigarettes. This process contributes to the tobacco flavor and aroma of Beyond Tobacco cigarettes, which is the product’s hallmark feature as a tobacco-free and nicotine-free alternative to tobacco cigarettes.
“Patents are of incredible importance in this industry because when you consider that the global market for tobacco is worth more than $800 billion, you’re not just protecting years or decades of research and hard work, you’re also protecting the ability to recover your investment and earn a profit,” said Taat CEO Setti Coscarella.
“The company has been on the path to commercialization for just a matter of months, which followed a lengthy period of research and development for Beyond Tobacco cigarettes. As confident as I may be that the truly ‘magic’ parts of this product would be nearly impossible for anyone to duplicate, anybody who has worked in this industry knows that patents can be extremely cost-effective, given how expensive not having a patent can be in some cases.”
To help smokers quit tobacco, Taat has sought to closely replicate the experience of smoking a tobacco cigarette.
September 8, 2020
PMI Pays Fine in Anti-Competition Case

Photo: Taco Tuinstra
Philip Morris International (PMI) has paid a UAH1.18 billion ($66.07 million) fine imposed by the Antimonopoly Committee of Ukraine (AMCU), reports Interfax-Ukraine.
In October 2019, the AMCU imposed a UAH6.5 billion fine on four international tobacco companies and their local distributor, Tedis Ukraine, for alleged anti-competitive behavior. The agency said the country’s leading tobacco companies and their common distributor, TEDIS, had conspired to keep new businesses from entering the market. However, critics said the AMCU helped bring about the current situation by permitting Tedis Ukraine to acquire several key distribution companies.
The companies appealed the decision at the Economic Court in Kiev but lost. Last week, the American Chamber of Commerce (ACC) in Ukraine expressed concern about the fairness of the trial, saying the defendants had not been given full access to the evidence on which the AMCU based its allegations.
The ACC cautioned that the international publicity associated with the case could negatively impact Ukraine’s image among foreign investors.
Since 1994, PMI has invested more than $370 million in the production and distribution of cigarettes and commercialization of reduced-risk products in Ukraine.
In 2016, Ukraine became the seventh market where PMI launched sales of IQOS tobacco-heating systems. The company employs more than 1,300 people in Ukraine.
August 18, 2020