Battle for the Next-Gen Cigarette: How Philip Morris Defended its Thermal Wrap Patent Against ITC

In the rapidly evolving world of reduced risk nicotine products, a major intellectual property clash has erupted between two tobacco titans: Indian conglomerate ITC Limited and Swiss-based global giant Philip Morris Products. This legal showdown ,formally titled ITC Limited v. Philip Morris Products S.A. & Ors.¹ centers on a high-profile challenge regarding next-generation cigarette alternatives specifically heated tobacco products engineered to deliver nicotine without combustion.

ITC Limited has mounted a double-barreled legal challenge against Swiss tobacco giant over Philip Morris products titled “ HEATED AEROSOL GENERATING ARTICLE WITH THERMAL SPREADING WRAP” the contested patent covers heat-not-burn technology utilizing a thermally-conductive foil wrapper designed to distribute heat and prevent accidental direct ignition. Granted on December 14, 2021 and valid through December 4, 2034  the patent became a subject of a post-grant opposition filed by ITC under Section 25(2) of the Patents Act, 1970.² ITC sought full revocation of the patent, alleging lack of novelty, missing inventive step, prior public knowledge, insufficiency of disclosure and non-patentable subject matter while citing ten prior art references.

The administrative conflict reached a flashpoint over procedural maneuvers before the Controller of Patents & Designs. Following a primary hearing on June 6, 2024. Philip Morris introduced two unannounced auxiliary claim sets alongside written submissions, prompting formal objections and an Interlocutory Petition from ITC. Although Philip Morris eventually withdrew the amended claims and submitted revised arguments on September 4, 2024  ITC filed a second IP asserting that these new filings improperly exceeded the scope of earlier pleadings. On January 30, 2025  the controller issued twin orders dismissing both of ITC’s interlocutory petitions and rejecting its post grant opposition outright. In response, ITC escalated the matter to court, consolidating a Writ Petition under Article 226 of the Constitution³ and an appeal under Section 117A of the Patents Act to challenge both administrative rulings and demand the complete revocation of the granted patent. The Court dismissed both the Appeal and the Writ Petition upholding the orders dated 30.01.2025.

Adversarial Contentions and Statutory Arguments 

ITC Limited challenged the patent on both procedural and substantive grounds, alleging that Philip Morris surreptitiously introduced two auxiliary claim sets alongside post hearing submissions without filing a formal amendment. ITC argued that the re-hearing and subsequent dismissal of its interlocutory petitions without proper consideration violated natural justice, maintaining that writ jurisdiction under Article 226 was available despite statutory appeal options under Section 117A of the Patents Act⁴ based on precedent in Whirlpool Corporation v. Registrar of Trade Marks, Mumbai and Others and Best Agrolife Limited v. Deputy Controller of Patents and Another . On the merits ITC challenged the patent using ten prior art documents D1-D10, arguing that primary reference D1 anticipated Claim 1 and that combining it with D2-D6 rendered the invention obvious. ITC asserted that the wrappers “flame barrier” function was merely an inherent property of known metallic foils, and argued that the controller wrongly excluded documents D7-D10 as time barred. 

Philip Morris defended the patent by contending that the controller rightly excluded the prior art documents D7-D10 under Rule 62(4) of the 2003 Rules as time barred, clarifying that the 5-day notice rule applies to the first scheduled hearing date rather than adjourned dates as in the case Pharmacyclics LLC v. Union of India and Ors.⁵ established that no distinction between an initial scheduled hearing date and an adjourned date, with Rule 62(4) using only the term “hearing.” Furthermore, Philip Morris argued that a document failed to disclose a gathered sheet in a tri-dimensional convoluted sense and lacked the distal wrapper arrangement acting as a flame barrier, while other prior arts belonged to non-analogous combustible smoking articles that taught away from electronically heated devices. They  argued that D1 merely utilizes its wrapper as an internal heat sink to pass heat into the tobacco rod through direct contact with an electrical heating element. The Controller of Patents supported the timing restrictions, arguing that Rule 62(4) of 2003⁶ Rules notice deadlines for publications relate to the first scheduled hearing date to prevent undue delays.

Key Judicial Precedents Cited

The Court evaluated several landmark decisions to address jurisdictional and procedural aspects of the case. Relying on Whirlpool Corporation v. Registrar of Trade Marks, Mumbai and Others,⁷ the Court acknowledged that the existence of an alternative statutory remedy does not operate as an absolute bar to writ jurisdiction when principles of natural justice are violated. Additionally, F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd.⁸ was cited regarding the mandatory step-by-step process required for determining obviousness and defining the person skilled in the art.

To evaluate the objection regarding lack of inventive step under Section 2(1)(ja) of the Patents Act, 1970,⁹ the Delhi High Court reiterated the four-step Windsurfing/Pozzoli test reaffirmed in Avery Dennison Corporation v. Controller of Patents and Designs.¹⁰ The Court outlined that determining obviousness requires: (1) identifying the patent’s core inventive concept; (2) imputing common general knowledge at the priority date to a Person Skilled in the Art (POSITA); (3) identifying differences between the prior art and the claimed invention; and (4) assessing without impermissible hindsight whether those differences would have been obvious to a POSITA or required inventive ingenuity.

Synthesis of Judicial Opinions and Precedents 

Justice Jyoti Singh delivered a crucial ruling balancing procedural discipline, affirming that Rule 62(4) of the Patents Rules, 2003, strictly requires additional prior art publications to be filed at least 5 days prior to the first scheduled hearing date to prevent dilatory tactics. Regarding technical features, the court highlighted that metal foil is a homogeneous single-material system whereas a paper-metal laminate is a multilayer system, a distinction explicitly embedded in the claim language. The Court also identified spatial differences, noting that prior art placed heating wrappers internally and proximally,whereas the subject patent positioned the thermally conductive sheet at the distal end around an aerosol-forming substrate. 

The Court further clarified the construction of key claim terms and functional limitations. The term “gathered sheet” was found to have a well-defined meaning in the tobacco industry, referring to a sheet folded and convoluted to occupy a tri-dimensional space, which was absent in prior art. Furthermore, the Court affirmed that functional limitations tied to specific structural configurations, such as functioning as a thermally conductive flame barrier to dissipate heat upon inadvertent lighting, constitute valid claim limitations that cannot be disregarded when applying the All-Elements Rule.

Conclusion 

The High Court of Delhi dismissed both the writ petition and the statutory appeal filed by ITC Limited. The court determined that no procedural errors warranted writ interference and concluded that the subject patent possessed both patentable novelty and an inventive step over all cited prior art references. This ruling reinforces high standards for challenging inventive steps clarifying that disclosures from conventional combustible systems cannot be routinely mosaicked to invalidate patents in distinct, electrically operated aerosol domains.

Citations

1. TC Limited v. Philip Morris Products S.A. & Ors., C.A. (COMM. IPD-PAT) 24/2025 ↩︎
2. The Patents Act, 1970, s. 25(2), No. 39, Acts of Parliament, 1970 (India) ↩︎
3. The Constitution of India, art. 226 ↩︎
4. The Patents Act, 1970, s. 117A, No. 39, Acts of Parliament, 1970 (India) ↩︎
5. Pharmacyclics LLC v. Union of India and Ors. W.P.(C) 12105/2019 ↩︎
6. The Patents Rules, 2003, r. 62(4) ↩︎
7. Whirlpool Corporation v. Registrar of Trade Marks, Mumbai and Others, (1998) 8 SCC 1 ↩︎
8. F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd. 2015 SCC OnLine Del 13619 ↩︎
9. The Patents Act, 1970 (Act 39 of 1970), s. 2(1)(ja) ↩︎
10. Avery Dennison Corporation v. Controller of Patents and Designs, 2022 SCC OnLine Del 3659. ↩︎

Expositor(s): Adv. Gaurangi Tandon