By Eric Schweibenz and Michael West
On November 19, 2018, Juul Labs, Inc. (“Juul”) of San Francisco, California filed a complaint (part 1, part 2, part 3, and part 4) requesting that the U.S. International Trade Commission (“Commission”) 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 cartridges for electronic nicotine delivery systems that infringe one or more claims of U.S. Patent No. 10,058,129 (“the ’129 patent”); U.S. Patent No. 10,104,915 (“the ’915 patent”); U.S. Patent No. 10,111,470 (“the ’470 patent”); U.S. Patent No. 10,117,465 (“the ’465 patent”); and U.S. Patent No. 10,117,466 (“the ’466 patent”) (collectively, “the asserted patents”):

  • DripTip Vapes LLC of Plantation, Florida
  • The Electric Tobacconist, LLC of Boulder, Colorado
  • Fuma Vapor, Inc. of Des Plaines, Illinois
  • Lan & Mike International Trading, Inc. of Torrance, California
  • Lizard Juice, LLC of Largo, Florida
  • Maduro Distributors, Inc. of Maplewood, Minnesota
  • MistHub, LLC, Buffalo Grove of Illinois
  • Noah Dovberg, Daytona Beach of Florida
  • ParallelDirect LLC, Lincolnshire of Illinois
  • Saddam Aburoumi, Manchester of Connecticut
  • Sarvasva, LLC d/b/a One Stop Food Mart of Maple Shade, New Jersey
  • Shenzhen Haka Flavor Technology Co., Ltd. of China
  • Shenzhen OCIGA Technology Co., Ltd. of China
  • Shenzhen OVNS Technology Co., Ltd. of China
  • Shenzhen Yibo Technology Co., Ltd. of China
  • Twist Vapor Franchising, LLC of Tampa, Florida
  • United Wholesale LLC of Glastonbury, Connecticut
  • Vape4U LLC of Montclair, California
  • Vaperz LLC of Frankfort, Illinois
  • Vaportronix, LLC of Avenutura, Florida
  • Vapor 4 Life Holdings, Inc. of Northbrook, Illinois
  • The ZFO of Spencerport, New York
  • Ziip Lab Co., Ltd. of China
  • Ziip Lab S.A. of Uruguay

According to the complaint, the asserted patents generally relate to cartridges or “pods” for use in vaporizer devices. In particular, the ’129 and ’915 patents are directed generally to an apparatus comprising a cartridge with a mouthpiece for use with a vaporizer device. The ’470 patent is directed generally to a cartridge for use with a vaporizer device that includes a mouthpiece enclosing and simultaneously concealing a portion of the storage compartment, but that also contains a notch exposing a portion of the storage compartment to allow a user to view the liquid level inside the cartridge when the cartridge sits inside a vaporizer device body. The ’465 patent is directed generally to a cartridge for use with a vaporizer device that includes folded contact tabs that have fixation sites for a resistive heating element. The ’466 patent is directed generally to a cartridge for use with a vaporizer device that includes a storage compartment and a heating chamber that includes a heating element.

In the complaint, Juul states that the Proposed Respondents import and sell products that infringe the asserted patents. The complaint specifically refers to cartridges sold for use with a nicotine vaporizer (also known as an ENDS device), such as “X Pods,” “Loon Pods,” “Iced Pods,” “Atom Pods,” “ViV Pods,” “Airbender ZPods,” “JC01 Pods,” “VQ Pods,” “Fuma Pods,” “Zalt Pods,” “Magic Mist Pods,” “J Pods,” “Blankz Pods,” “Edge pods,” “5-Star Universal Pods,” and “Sea100 Pods” as the infringing products.

As to related litigation, Juul states that in October 2018 it previously filed against J Well France S.A.S., Bo Vaping, MMS Distribution LLC, The Electric Tobacconist, LLC, Vapor4Life, Eonsmoke, LLC, Ziip Labs, Ziip China, Shenzhen Yibo Technology Co., Ltd., XFire, Inc., ALO Group Limited, Flair Vapor LLC, Shenzhen Joecig Technology Co., Ltd., Myle Vape Inc., Vapor Hub International, Inc., Limitless Mod Co., Asher Dynamics, Inc., Ply Rock, Infinite-N Technology Limited, King Distribution LLC, and Keep Vapor Elec. Tech. Co., Ltd. in the ITC for infringement of certain patents, including the ’915 Patent. In October 2018, Juul also filed suit against various subsets of the aforementioned respondents in the United States District Courts for the District of New Jersey, Northern District of California, Southern District of Texas, Eastern District of New York, Central District of California, District of Colorado, and Northern District of Illinois asserting the ’915 patent. Juul also states, concurrently with the filing of the instant ITC complaint, it has also filed various complaints against the Proposed Respondents in the United States District Courts for the District of Connecticut, Middle District of Florida, Central District of California, District of Delaware, Southern District of Florida, Northern District of Illinois, District of Minnesota, District of New Jersey, and Western District of New York asserting the asserted patents or a subset thereof.

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