DCT
1:25-cv-01171
NJOY LLC v. JUUL Labs Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: NJOY, LLC (Delaware)
- Defendant: JUUL Labs, Inc. (Delaware)
- Plaintiff’s Counsel: Fish & Richardson P.C.
- Case Identification: 1:25-cv-01171, D. Del., 09/19/2025
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because the Defendant is a Delaware corporation and therefore resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s JUUL electronic vaporizer system infringes two patents related to the design and construction of vaporizer cartridges.
- Technical Context: The technology concerns pod-based electronic nicotine delivery systems (ENDS), a significant segment of the market for alternatives to traditional combustible cigarettes.
- Key Procedural History: The complaint alleges that Defendant has been aware of Plaintiff’s patent rights since at least August 22, 2023, the filing date of a related patent infringement lawsuit between the same parties. It further alleges that the patents-in-suit are cited as references on at least twenty patents assigned to the Defendant, a fact which may be material to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2009-07-27 | Earliest Priority Date for ’303 and ’227 Patents |
| 2018-01-01 | Plaintiff NJOY launches ACE 1.0 pod-based vapor product |
| 2023-08-22 | Plaintiff NJOY files a related patent infringement complaint against Defendant JLI |
| 2024-05-17 | Plaintiff NJOY files Premarket Tobacco Product Application (PMTA) for ACE 2.0 |
| 2024-06-21 | FDA authorizes menthol pods for Plaintiff's ACE product line |
| 2024-10-15 | U.S. Patent No. 12,115,303 Issues |
| 2025-01-14 | U.S. Patent No. 12,194,227 Issues |
| 2025-09-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,115,303 - "Electronic Vaporizer"
The Invention Explained
- Problem Addressed: The patent describes the structure of electronic cigarettes, which were gaining popularity as an alternative to traditional tobacco products, indicating a need for improved designs for the components that hold and vaporize the nicotine solution (’303 Patent, col. 1:21-34).
- The Patented Solution: The invention is a disposable cartridge for an electronic vaporizer containing a liquid solution, a wicking material, and a heating element within a non-metallic housing. The cartridge is designed with a specific internal geometry, including a central airflow passageway and conductive elements, to reliably couple with a power source and efficiently vaporize the solution for inhalation when a user draws on the device (’303 Patent, FIG. 2; col. 6:1-67).
- Technical Importance: The patent discloses a self-contained cartridge architecture that was foundational to the development of convenient and mass-producible pod-based vaping systems (Compl. ¶¶8, 10).
Key Claims at a Glance
- The complaint asserts claims 1–7 of the ’303 patent (Compl. ¶29).
- Independent Claim 1 includes the following essential elements:
- A cartridge configured to mechanically and electrically couple to a power source.
- A housing with an interior, a solution holding reservoir, two ends with corresponding apertures, and two conductive elements for coupling to the power source.
- An airflow passageway extending through a center of the housing.
- A resistive heating element located in the interior of the housing, extending substantially perpendicular to a central longitudinal axis of the housing, and positioned in an airflow path to permit airflow directly over it.
- A wicking material configured to draw the liquid solution toward the resistive heating element, which is configured to vaporize the solution responsive to electrical power.
- The complaint does not explicitly reserve the right to assert dependent claims but lists claims 1-7 in its infringement count (Compl. ¶29).
U.S. Patent No. 12,194,227 - "Electronic Vaporizer"
The Invention Explained
- Problem Addressed: As a continuation of the same patent family, the ’227 patent addresses the same technical challenge of designing a reliable and effective cartridge for an electronic vaporizer (’227 Patent, col. 1:20-33).
- The Patented Solution: The solution is structurally similar to that of the ’303 patent, disclosing a disposable cartridge with a housing, solution reservoir, wicking material, and a heating element (’227 Patent, FIG. 2). A key distinction in the asserted claim is the specific functional requirement that the airflow is configured to pass "on both transverse sides of the resistive heating element," which defines the fluid dynamics within the cartridge in more detail than the corresponding claim in the ’303 patent (’227 Patent, col. 18:11-14).
- Technical Importance: This patent provides a more specific definition of the airflow path relative to the heating element, a refinement potentially important for controlling aerosol generation and consistency in pod-based systems (Compl. ¶¶8, 10).
Key Claims at a Glance
- The complaint asserts claims 1–6 of the ’227 patent (Compl. ¶43).
- Independent Claim 1 includes the following essential elements:
- A cartridge configured to mechanically and electrically couple to a power source.
- A housing with an interior, a solution holding reservoir, two ends with corresponding apertures, and two conductive elements for coupling to the power source.
- An airflow passageway extending at least partially through a center of the housing.
- A resistive heating element located in the interior of the housing, extending substantially perpendicular to a central longitudinal axis, and located in an airflow path such that the airflow passes on both transverse sides of the element.
- A wicking material configured to draw the liquid solution toward the resistive heating element, which is configured to vaporize the solution responsive to electrical power.
- The complaint does not explicitly reserve the right to assert dependent claims but lists claims 1-6 in its infringement count (Compl. ¶43).
III. The Accused Instrumentality
Product Identification
The accused products are Defendant’s vaporizer devices, specifically the "JUUL system," which is comprised of the "JUUL device" (the power source and body) and the "JUULpod" (the disposable cartridge) (Compl. ¶¶23-24).
Functionality and Market Context
The complaint describes the JUUL system as an electronic nicotine delivery system where a disposable JUULpod, containing a liquid nicotine solution and vaporizing components, is inserted into a reusable JUUL device that contains a battery and control circuitry (Compl. ¶¶23-24). The complaint presents the NJOY ACE product as a market competitor, launched in 2018 (Compl. ¶10).
IV. Analysis of Infringement Allegations
The complaint does not include the referenced claim chart exhibits. The following tables summarize the infringement theory based on the narrative allegations in the complaint.
12,115,303 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A cartridge configured to mechanically and electrically couple to a power source of an electronic vaporizer... | The JUULpod is a disposable cartridge that is inserted into the JUUL device, which contains a battery and circuitry to power the components in the cartridge. | ¶24, ¶29 | col. 3:1-9 |
| a housing having an interior and a solution holding reservoir configured to hold a liquid solution... | The JUULpod comprises a disposable cartridge with a mouthpiece, a housing, and a liquid nicotine solution. | ¶24 | col. 6:1-12 |
| a resistive heating element located in the interior of the housing, the resistive heating element extending substantially perpendicular to a central longitudinal axis of the housing... | The JUULpod contains components to vaporize the liquid in order to generate an aerosol for inhalation. | ¶23 | col. 6:45-50 |
| a wicking material configured to draw the liquid solution held by the solution holding reservoir toward the resistive heating element... | The JUULpod contains components to vaporize the liquid solution. | ¶23 | col. 6:47-50 |
12,194,227 Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A cartridge configured to mechanically and electrically couple to a power source of an electronic vaporizer... | The JUULpod is a disposable cartridge that is inserted into the JUUL device, which contains a battery and circuitry to power the components in the cartridge. | ¶24, ¶43 | col. 3:1-9 |
| a housing having an interior and a solution holding reservoir configured to hold a liquid solution... | The JUULpod comprises a disposable cartridge with a mouthpiece, a housing, and a liquid nicotine solution. | ¶24 | col. 6:1-12 |
| a resistive heating element located in the interior of the housing... such that the airflow passes on both transverse sides of the resistive heating element... | The JUULpod contains components to vaporize the liquid, generating an aerosol for inhalation by a consumer. | ¶23 | col. 7:8-14 |
| a wicking material configured to draw the liquid solution held by the solution holding reservoir toward the resistive heating element... | The JUULpod contains components to vaporize the liquid solution. | ¶23 | col. 6:47-50 |
Identified Points of Contention
- Scope Questions: A central question may be whether the internal geometry of the JUULpod meets the specific claim limitations. For the ’303 Patent, this includes whether the heating element is "substantially perpendicular to a central longitudinal axis." For the ’227 Patent, this includes the more specific functional requirement that the airflow "passes on both transverse sides of the resistive heating element."
- Technical Questions: The complaint does not provide technical evidence (such as from a product teardown) demonstrating how the JUULpod's internal components are arranged or how airflow interacts with its heating element. A key factual dispute will likely concern whether the accused product's structure and operation map onto these specific claim requirements.
V. Key Claim Terms for Construction
Term: "extending substantially perpendicular to a central longitudinal axis of the housing" (from Claim 1 of the ’303 Patent)
- Context and Importance: This geometric limitation is a core structural element of the claimed invention. The infringement analysis will depend heavily on whether the orientation of the heating element in the accused JUULpod falls within the scope of this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The use of the word "substantially" suggests the orientation does not need to be a perfect 90-degree angle and allows for some deviation, consistent with manufacturing tolerances.
- Evidence for a Narrower Interpretation: The patent's figures, particularly FIG. 2, depict a heating element (222) that appears to be oriented in a precisely perpendicular manner relative to the central axis of the airflow passageway (214). A party could argue that this embodiment limits the scope of "substantially" to minor deviations from the depicted structure (’303 Patent, FIG. 2).
Term: "the airflow passes on both transverse sides of the resistive heating element" (from Claim 1 of the ’227 Patent)
- Context and Importance: This term defines the functional relationship between the airflow and the heating element. Its construction will be critical for determining whether the JUULpod's internal airflow design infringes.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: This phrase could be interpreted to mean that some amount of air must pass on two opposite sides of the heating element, without requiring symmetrical or uniform flow.
- Evidence for a Narrower Interpretation: The specification describes a heating element positioned within the airflow passageway, which may imply that the intended design involves air flowing around the element's circumference. A party might argue that "both transverse sides" should be construed in light of embodiments like FIG. 2, where the heating coil (222) is suspended in the airflow passageway (214), suggesting a more encompassing airflow pattern is required (’227 Patent, FIG. 2).
VI. Other Allegations
Indirect Infringement
The complaint alleges induced infringement under 35 U.S.C. § 271(b). It asserts that Defendant knowingly encourages infringement by providing marketing materials, technical specifications, and user instructions on how to use the JUUL device with JUULpods (Compl. ¶¶34-35, 48-49). The complaint provides a screenshot of instructional videos from Defendant’s website titled "How to set up your JUUL Device" and "How to use JUUL" as evidence of these active steps (Compl. p. 9).
Willful Infringement
Willfulness is alleged based on both pre-suit and post-suit knowledge. The complaint alleges pre-suit knowledge based on a prior patent infringement lawsuit filed on August 22, 2023, and, notably, on the fact that the asserted patents were allegedly cited as prior art references during the prosecution of at least twenty of Defendant's own patents (Compl. ¶¶21, 33, 47). Post-suit knowledge is based on the filing of this complaint (Compl. ¶¶37, 51).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of structural and functional infringement: Can Plaintiff produce technical evidence, likely from product teardowns and expert analysis, to prove that the precise internal configuration of the accused JUULpod meets the specific geometric and airflow limitations recited in the asserted claims, such as the "substantially perpendicular" heater orientation and the "airflow passes on both transverse sides" requirement?
- A second central issue will be willfulness and pre-suit knowledge: The allegation that Defendant cited the patents-in-suit during the prosecution of its own patent applications presents a significant question for the willfulness analysis. The case may turn on whether this evidence demonstrates that Defendant had actual knowledge of the patents and proceeded with infringing conduct in reckless disregard of Plaintiff’s patent rights.