By Eric Schweibenz and Alex Englehart
On October 3, 2018, Juul Labs, Inc. of San Francisco, California (“JLI”) filed a complaint (part 1 and part 2) requesting that the ITC commence an investigation pursuant to Section 337.

The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain electronic nicotine delivery systems and components thereof that infringe one or more claims of U.S. Patent Nos. 10,070,669 (the ’669 patent), 10,076,139 (the ’139 patent), 10,045,568 (the ’568 patent), and 10,058,130 (the ’130 patent) (collectively, the “asserted patents”):

According to the complaint, the asserted patents generally relate to electronic nicotine delivery systems and components thereof, such as liquid nicotine pods. In particular, the ’669 patent relates to a pod with a mouthpiece, where the mouthpiece covers only an upper portion of the pod body. The ’139 patent relates to an apparatus comprising a cartridge having a storage compartment, through which a vaporizable material is visible. The ’568 patent relates to a pod with a mouthpiece enclosing and simultaneously concealing a portion of a storage compartment, as well as a device body with a notched pod receptacle to allow a user to view the liquid level inside the pod when the pod sits inside the device body. Lastly, the ’130 patent relates to a method of manufacturing a pod with a humectant, a heating element, and a pair of heater contact plates, where the heating element sits between the pair of heater contact plates, and the heater contact plates sit on opposite sides of the pod.

In the complaint, JLI states that the Proposed Respondents import and sell products that infringe the asserted patents. The complaint specifically refers to various electronic nicotine delivery systems and components (including pods) associated with the Proposed Respondents as infringing products.

Regarding domestic industry, JLI states that its JUUL system and/or the method of manufacturing such system practice at least one claim of each asserted patent. JLI further states that it employs hundreds of individuals in the U.S. to support JLI’s research and development, manufacturing, clinical research, customer support, sales, marketing, and administrative activities relating to its JUUL system.

As to related litigation, JLI states that, concurrently with the filing of the instant ITC complaint, it also filed various complaints against the Proposed Respondents in the U.S. District Courts for the Eastern District of New York, the District of New Jersey, the Northern District of California, the Southern District of Texas, the Central District of California, and the District of Colorado alleging infringement of the asserted patents or subsets thereof. JLI also refers to related litigations in the United Kingdom and France.

With respect to potential remedy, JLI requests that the Commission issue a limited exclusion order and permanent cease and desist orders directed at the Proposed Respondents and related entities.

Copyright © 2020 Oblon, McClelland, Maier & Neustadt, L.L.P.