Respond Rationally to the IQOS Patent Litigation in China

Self-reporting Shenzhen Intellectual Property Court4.25 Since the public hearing of the iQOS appearance infringement case, it has attracted great attention from the e-cigarette industry. It is understood that from the end of last year to the beginning of this year, Philip Morris Tobacco filed a number of patent lawsuits in China, which came earlier than expected.

The author also retrieved4.25 The appearance patent that was tried in court was filed for invalidation and was heard in the Patent Reexamination Board on April 19. The patent involved was CN303405619S, named Smoking Auxiliary Accessories. It was applied by Philip Morris Manufacturing Company in China on March 25, 2015 and authorized on October 7, 2015.“” The main protection design is as follows:
 

As you can see, this isThe exterior design of the iQOS heating rod. At present, many domestic HNB smoking equipment heating rods are myopic with this design. According to the main rules for determination of infringement of appearance patents: If a design identical or similar to the authorized design is adopted on a product of the same or similar type as the design product, the accused infringing design shall be deemed to fall within the scope of design protection.

In litigation practice, lawyers representing the accused usually compare six views and patent views one by one to prove that there are differences and do not constitute the same. However, when the product categories and uses are the same, judicial practice adopts the cognitive judgment of ordinary consumers to determine whether they are the same or similar. uses a“Overall observation and comprehensive judgment principles, two factors are more influential:

1、The parts of the product that are easy to be directly observed during normal use are relative to other parts; so it is difficult to adopt the defense of non-infringement with different shapes such as the electrical contact point at the bottom of the heating rod.

2、The most significant feature of the appearance patent that distinguishes it from existing designs has more impact than others. Therefore, at present, there is a risk of infringement in the appearance of many similar heating rods published on the domestic network.

   Days after the case was reported,The FDA approved the application of IQOS on May 1 and was approved to be listed in the United States. HNB has become unstoppable in the global wave of new cigarettes. However, Philip Morris Tobacco's strict patent layout has become an insurmountable obstacle for competitors. Facing domestic litigation in Philip Morris, we need to respond rationally.

I.Patent litigation is the norm in new technology fields

Fighting patent litigation is a protracted battle。Even companies like Apple，He also often faces patent litigation, and Jobs also said“I am willing to fight a nuclear war with Android at all costs, and Cook, who hates litigation, also said that there is no such thing as patents, but I cannot use them. I am also very helpless”。

Philomo Tobacco isThe HNB field was developed early and invested heavily. It was not until IQOS became popular that it was truly recognized by the market. Looking at the current products such as British American Tobacco, Japan Tobacco, and Korean Tobacco, they maintain a sufficient distance from iQOS in terms of form. To a certain extent, this is also the respect and avoidance of several major tobacco companies for their patents.。Whoever competes must rely on independent intellectual property rights。Glo has done a very good job in circumventing Philip's patents and is worth learning from.

domestic isHNB has the potential largest market. In the long run, domestic companies must follow the path of independent innovation. Philip Morris's patent litigation may ultimately lead to weak independent development capabilities.、Enterprises with insufficient R & D investment will be eliminated.

When encountering patent litigation, it is impossible to rush for success. It is necessary to play games repeatedly. We must consider not only the litigation cost and cycle, but also the sustainable development of the enterprise, stabilize shareholders, investors, and core technical personnel, activate alternative solutions, and maintain the company's sustainable profitability.

2.You cannot place too high hopes on the invalidation of a patent

Encountered a patent lawsuit and filed a declaration of invalidity of the patent of the patentee, which has become the defendant's claim.“It is customary to use technical means, and there is also a saying that there is no patent that cannot be invalidated. However, the defendant needs to treat it rationally. In addition to procedural delay strategies, the invalidity of Philip Morris Tobacco's patent needs to be objectively evaluated.。

First of all, you need a lawyer to have a deep understandingHNB has a professional technical background and is familiar with the evolution process of Philip Morris Tobacco HNB patents. On this basis, he has made great efforts to search for comparative documents, mainly English patent documents.。However, most of the patents retrieved were patents filed by Philip Morris Tobacco itself in the early stages, and there is also some useful early patent evidence.，Often in the later stagesThere is no citation in the iQOS patent application, which may be deliberately hidden, making the search more difficult.。In addition, the search needs to look at the patent review history of various countries, which is conducive to finding more useful evidence.

At present, it is possible to retrieve that many domestic patents of Philip Morris Tobacco are invalid. Some patents are invalid more than once, but only2 records of successful patent invalidity. Judging from the patent invalidation data in 2018, the Reexamination Board made more than 5200 invalidation decisions, with more than 1000 defendants, and the court of first instance revoked the invalidation decisions only 97 times, indicating that the decisions made by the Reexamination Board have withstood the test, and naturally the evidence requirements for the petitioner are also very high.。Fimo tobaccoPCT invention patents are highly original, and even if they cover a large scope of protection, they are still difficult to be invalidated.

Therefore, in the process of responding to the Philip Morris patent lawsuit, if possible, it is recommended to unite the front on patent invalidity, pool resources, and have a team familiar with the Philip Morris tobacco patent and successfully invalidated the Philip Morris patent to carry out the invalidity. There are two reasons:

1、If each defendant fails to invalidate, the difficulty of re-invalidate will be greatly increased. The interpretation and determination of the patent to be invalidated in the decision to maintain validity will be difficult to change during re-invalidate;

2、It can reduce the cost of invalidity for each defendant, improve the effectiveness of evidence retrieval, share information, and understand the evidence thoroughly and accurately.

In fact, the patents that Philip Morris may use to sue are probably inWithin 20, if the centralized batch is invalid, there will be a certain effect. In particular, the scope of exclusive protection of some patents is indeed large. As long as the invalid evidence is strong, even if the review is upheld, there is still a chance to pass the two-instance administrative litigation of the Beijing Knowledge Court and the Supreme Court.

3.Do a good job in non-infringement defenses with different (unequal) technical characteristics

How much space for non-infringement defense depends on how much circumvention is made during the product development and design stage。Some of the patents used on iQOS products are difficult to evade. Even if professional evaluations are conducted before development and after product finalization, they still pose equivalent risks.

The patent CN103997922B of the iQOS cigarette extractor is a typical example. It is difficult to evade and invalidate, and the scope of protection is difficult to be invalidated. Fortunately, the patent was ineffectually interfered with, so the first round of defendants e-cigarette manufacturers were exempted from being sued by the patent.

If the defendant's corporate products are based oniQOS products are analyzed and developed by the company, but if the research on their patents is not thorough, there is basically no room for defense of different and unequal technical characteristics. Because iQOS is the best technical solution for patents, the scope of patent protection is much larger than the product solution. As shown below:
 

If the accused company is investigatingIQOS patent research has been designed to circumvent the design, and patent lawyers have explained the scope of protection of their rights claims, and the evasion plan has been designed together. There is still a certain amount of room for non-infringement defense. Even so, the author has participated in several patent infringement analyses and invalidity. In the process of invalidity, different lawyers still have different understandings and interpretations of patents and whether they are infringed.。Therefore, on the basis of a thorough understanding of the patent itself, we can find different defense spaces for certain technical characteristics and patents of the accused product. Give two examples:

1. iQOS nozzle air flow channel patent CN104135881B, the patent drawing is shown in the following figure, which provides an accurate explanation of the characteristics such as the first and second air flow channels and the confluence of the air outlet arranged on the base in the claims.。“How should the air outlet set on the base be explained? According to common understanding, what does the base mean? Is it the base of the heating plate? Or is it the bottom of the extractor? The concept of the pedestal may be unclear, which is helpful for non-infringement defenses, circumvention of designs, or declaration of invalidity.