DCT

2:25-cv-02853

JUUL Labs Inc v. NJOY LLC

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-02853, D. Ariz., 08/08/2025
  • Venue Allegations: Plaintiff alleges venue is proper in the District of Arizona because Defendants conduct business in the state, NJOY is headquartered in Arizona, Altria employs sales personnel in Arizona, and the accused products are sold there.
  • Core Dispute: Plaintiff alleges that Defendants’ NJOY Daily electronic cigarette products infringe a patent related to nicotine salt formulations for vaporizer devices.
  • Technical Context: The lawsuit concerns the chemical formulation of e-liquids used in electronic nicotine delivery systems (ENDS), a technology space focused on providing alternatives to traditional combustible cigarettes.
  • Key Procedural History: The complaint notes extensive prior litigation, including a 2023 International Trade Commission (ITC) investigation initiated by Defendants against Plaintiff, where the ITC found no infringement by Plaintiff. The complaint also alleges that Defendant Altria, as a prior investor in Plaintiff, had full access to Plaintiff’s intellectual property portfolio, a fact that may be relevant to the allegations of willful infringement.

Case Timeline

Date Event
2013-05-06 U.S. Patent No. 12,156,533 Priority Date
2023-06-01 Altria Group, Inc. acquires NJOY, LLC
2024-12-03 U.S. Patent No. 12,156,533 Issues
2025-08-08 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 12,156,533 - "Nicotine Salt Formulations for Aerosol Devices and Methods Thereof"

  • Patent Identification: U.S. Patent No. 12,156,533, "Nicotine Salt Formulations for Aerosol Devices and Methods Thereof," issued December 3, 2024.

The Invention Explained

  • Problem Addressed: Early electronic nicotine delivery systems (ENDS) were often unsatisfying to adult smokers of traditional cigarettes due to shortcomings that included "poor nicotine delivery" (Compl. ¶17). These systems, typically using freebase nicotine, failed to replicate the nicotine absorption profile and user experience of a combustible cigarette (’533 Patent, col. 8:1-12; Compl. ¶17).
  • The Patented Solution: The patent describes a nicotine formulation for use in an electronic cigarette that uses a nicotine salt rather than freebase nicotine. The formulation combines nicotine with a specific organic acid (such as benzoic or lactic acid) in a liquid carrier (such as propylene glycol and vegetable glycerin) ('533 Patent, col. 1:19-25; Claim 1). When heated, this formulation is designed to generate an aerosol that provides a rapid rise of nicotine in the user's blood, thereby delivering a more cigarette-like satisfaction ('533 Patent, col. 8:3-9).
  • Technical Importance: The development of nicotine salt chemistry was described by industry observers as a "Nicotine Salt Breakthrough" that "revolutionized the market for ENDS products" by providing a viable alternative for adult smokers (Compl. ¶¶ 8, 23).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 10, as well as dependent claims 2-8 (Compl. ¶10).
  • Independent Claim 1 requires:
    • An electronic cigarette with a cartridge containing a nicotine salt liquid formulation.
    • The formulation comprises a salt of nicotine and an organic acid, where the acid is either benzoic acid or lactic acid.
    • The salt is present in an amount that yields a nicotine concentration between 0.5% and 20% by weight.
    • The liquid carrier comprises glycerol and propylene glycol.
    • The formulation generates an inhalable aerosol upon heating.
  • The complaint reserves the right to assert additional claims (Compl. ¶10).

III. The Accused Instrumentality

Product Identification

  • The NJOY Daily series of e-cigarette products, including Rich Tobacco, Extra Rich Tobacco, Menthol, and Extra Menthol varieties (Compl. ¶¶ 40-41, 61).

Functionality and Market Context

  • The NJOY Daily is an electronic cigarette that vaporizes a pre-filled e-liquid containing a nicotine salt formulation (Compl. ¶¶ 39, 41). The complaint alleges these products are sold with nicotine concentrations of 4.5% and 6% by weight (Compl. ¶61).
  • The packaging for the NJOY Daily, a photograph of which is included in the complaint, lists "propylene glycol, vegetable glycerin, nicotine, lactic acid, natural and artificial flavors, water" as ingredients (Compl. ¶41; Exhibit 4 at 1-2). This photograph shows the product branding and key ingredients relevant to the infringement allegations.

IV. Analysis of Infringement Allegations

'533 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An electronic cigarette comprising a cartridge, wherein the cartridge comprises a nicotine salt liquid formulation... The NJOY Daily is described as an e-cigarette product that contains an e-liquid formulation. The complaint includes a photograph of the NJOY Daily product packaging. A rendering of the Plaintiff's own product, the JUUL System, is also provided for context. ¶41, ¶30 col. 1:19-25
(a) the nicotine salt liquid formulation comprises a salt of nicotine and an organic acid in a liquid carrier, wherein the organic acid is benzoic acid or lactic acid; The NJOY Daily packaging lists "lactic acid" and "nicotine" as ingredients in the e-liquid. ¶41 col. 29:20-22
(b) the salt is present in an amount that forms a nicotine concentration of 0.5% (w/w) to 20% (w/w) in the nicotine salt liquid formulation; The complaint alleges the NJOY Daily products are offered with nicotine concentrations of 4.5% and 6% by weight, which falls within the claimed range. ¶61 col. 11:2-4
(c) the liquid carrier comprises glycerol and propylene glycol; and The NJOY Daily packaging lists "propylene glycol" and "vegetable glycerin" as ingredients. ¶41 col. 11:51-53
(d) the nicotine salt liquid formulation generates an inhalable aerosol upon heating in the electronic cigarette. The NJOY Daily is a vaporizer device that functions by heating its e-liquid to generate an aerosol for inhalation. ¶49 col. 1:19-25
  • Identified Points of Contention:
    • Scope Questions: The complaint's allegations appear to map directly to the claim language. A potential dispute may arise over the definition of "a salt of nicotine and an organic acid." The court may need to determine whether the mere presence of nicotine and lactic acid as ingredients in a liquid solution is sufficient to meet this limitation, or if a more specific chemical state or bond is required.
    • Technical Questions: A related technical question is how the "nicotine concentration" is measured. The claim requires a concentration between 0.5% and 20%, and the accused products are alleged to have 4.5% and 6%. The question may arise whether this percentage refers to the weight of the nicotine molecule itself or the entire nicotine-lactic acid salt complex, which could affect the infringement analysis.

V. Key Claim Terms for Construction

  • The Term: "a salt of nicotine and an organic acid"
  • Context and Importance: This term is the central feature of the invention. The infringement case hinges on whether the accused product, which contains nicotine and lactic acid as separate ingredients in a solution, constitutes the claimed "salt." Practitioners may focus on this term because its construction will determine whether a simple mixture of acid and base in a solvent meets the limitation.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's examples describe creating the formulations by adding nicotine and the acid to a carrier solution and stirring, which could suggest that the "salt" is formed in-situ and does not need to be a pre-formed, isolated crystal. (e.g., ’533 Patent, col. 17:56-18:14).
    • Evidence for a Narrower Interpretation: The specification discusses mono-protonated and di-protonated nicotine salts, and the effect of the extent of protonation on user satisfaction ('533 Patent, col. 13:1-24). A defendant might use this to argue that "salt" implies a specific, stable ionic bond and protonation state, not merely a liquid mixture of an acid and a base.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induce infringement by encouraging and contracting with "distribution partners, contractors, retailers, and/or customers" to use and sell the accused products (Compl. ¶63). It also alleges contributory infringement, stating the products are specially designed for infringement and have no substantial non-infringing uses (Compl. ¶¶ 67-68).
  • Willful Infringement: Willfulness is alleged based on Defendants' purported knowledge of the '533 patent. The complaint alleges this knowledge arises from at least three sources: (1) JLI’s patent marking on its products and website; (2) the filing of this complaint and a parallel ITC action; and (3) Defendant Altria’s prior role as a major investor in JLI, during which it allegedly had "full access to study JLI's IP portfolio" (Compl. ¶¶ 62, 65, 69).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim construction: does the term "a salt of nicotine and an organic acid," as used in the patent, read on a formulation created by mixing nicotine and lactic acid in a liquid carrier, or does it require a more specific, demonstrable chemical structure? The resolution of this question, along with the method for calculating "nicotine concentration," will be central to the infringement determination.
  • A second key issue will concern willfulness and damages. The complaint makes strong allegations of pre-suit knowledge, particularly citing Altria's previous investment and access to JLI's intellectual property. If infringement is found, the court will need to evaluate whether Defendants' conduct was "egregious" enough to warrant a finding of willfulness and potential enhancement of damages.