Blunt Wrap USA Inc v. Grabba Leaf LLC

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Blunt Wrap U.S.A., Inc. (Louisiana)
  • Defendant: Grabba-Leaf, LLC (Florida)
  • Plaintiff’s Counsel: Carlton Fields Jorden Burt, P.A.; Smith & Fawer, L.L.C.; Garvey, Smith, Nehrbass & North, L.L.C.
• Case Identification: 0:16-cv-62328, S.D. Fla., 11/17/2016
• Venue Allegations: Venue is alleged to be proper under 28 U.S.C. §1391(b), (c), or (d).
• Core Dispute: Plaintiff alleges that Defendant’s cigar tubes/shells infringe seven patents related to pre-formed, unfilled cigar wrappers designed for "roll-your-own" use.
• Technical Context: The technology addresses the market for customizable, "roll-your-own" tobacco products by providing consumers with a pre-formed tobacco leaf shell, simplifying the manual cigar-rolling process.
• Key Procedural History: The complaint alleges that Defendant was served with a complaint in a prior civil action in the Eastern District of Louisiana on August 31, 2015, which asserted infringement of the same patents-in-suit. This prior notice forms the basis of the current complaint's allegations of willful infringement.

Case Timeline

Date	Event
1999-12-07	Earliest Priority Date for all Patents-in-Suit
2009-08-11	U.S. Patent No. 7,571,730 Issues
2010-05-18	U.S. Patent No. 7,717,119 Issues
2011-08-02	U.S. Patent No. 7,987,858 Issues
2011-11-29	U.S. Patent No. 8,066,012 Issues
2013-11-12	U.S. Patent No. 8,578,944 Issues
2014-07-22	U.S. Patent No. 8,783,266 Issues
2015-08-31	Defendant Served with Complaint in Prior Litigation
2015-10-20	U.S. Patent No. 9,161,568 Issues
2016-11-17	First Amended Complaint Filed

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

U.S. Patent No. 7,571,730 - "Cigar Tube", Issued August 11, 2009

The Invention Explained

• Problem Addressed: The patent’s background section describes the difficulty and "finger dexterity" required for consumers to roll their own cigars, noting that "inexperienced people often become frustrated when the finished product collapses" (’730 Patent, col. 1:41-44).
• The Patented Solution: The invention provides a pre-fabricated, hollow cigar "shell" made from tobacco leaves, which is formed by wrapping the leaves around a removable "form casing" (’730 Patent, col. 2:18-24). This allows a consumer to purchase the empty shell and easily fill it with their preferred tobacco blend, eliminating the difficult step of rolling the leaf itself (’730 Patent, Abstract). The complaint reproduces Figure 1 of the patent, which depicts the tobacco shell (10) wrapped around the form casing (16) (Compl. ¶13).
• Technical Importance: The technology aimed to make the customizable "roll-your-own" cigar market more accessible to consumers who lacked the skill for traditional hand-rolling (’730 Patent, col. 3:1-4).

Key Claims at a Glance

• The complaint asserts independent claims 17, 28, and 43, among others (Compl. ¶20).
• Independent Claim 17 requires:
  • A product including a cigar tube for holding a user's tobacco fill material
  • The cigar tube comprising a sheet of material (tobacco leaves or homogenized tobacco paper)
  • The sheet being rolled into a tube and having edges that are not glued together
  • The unglued edges enabling the tube to be unrolled for adding tobacco fill
  • The cigar tube is packaged, and remains rolled inside the packaging
• The complaint reserves the right to assert additional claims (Compl. ¶20).

U.S. Patent No. 7,717,119 - "Tobacco Product", Issued May 18, 2010

The Invention Explained

• Problem Addressed: As with the related patents, the ’119 Patent addresses the skill required to hand-roll cigars and the desire for a simplified method that still allows for consumer customization of the tobacco filler (’119 Patent, col. 1:47-51).
• The Patented Solution: This patent claims a product comprising a cigar tube made from a rolled sheet of material with a "longitudinal opening" for adding tobacco. The product is sold packaged in a wrapper, with the tube remaining in its rolled shape but unfilled, ready for the consumer to use (’119 Patent, col. 4:15-30). The complaint includes annotated figures from related patents to illustrate key features such as the "Longitudinal opening/slit" (Compl. ¶12).
• Technical Importance: This invention provides a ready-to-fill cigar product that maintains its structural integrity via packaging, offering convenience to the end-user (’119 Patent, col. 3:25-28).

Key Claims at a Glance

• The complaint asserts independent claim 1, among others (Compl. ¶20).
• Independent Claim 1 requires:
  • A product including a cigar tube for holding a user's tobacco fill material
  • The tube comprising a sheet of material rolled into a shaped tube
  • The tube has a longitudinal bore, a longitudinal opening for adding tobacco, and edges that can be moved apart
  • The product includes a wrapper in which the cigar tube is packaged
  • The tube remains rolled inside the wrapper and is not filled with tobacco
• The complaint reserves the right to assert additional claims (Compl. ¶20).

U.S. Patent No. 7,987,858 - "Method of Making a Tobacco Product"

• Issued: August 2, 2011
• Technology Synopsis: The ’858 Patent claims methods for manufacturing tobacco products. The claimed process includes steps like rolling a sheet of tobacco material to form a tube, moistening it with a liquid (which may contain flavoring), and packaging the shaped tube without filling it with tobacco.
• Asserted Claims: The complaint asserts at least claims 1, 4-6, 11, 12, 14, and 15 (Compl. ¶23).
• Accused Features: The complaint alleges that the Accused Product is made in the Dominican Republic using the process claimed in the ’858 Patent and is then imported into the United States (Compl. ¶22, ¶25).

U.S. Patent No. 8,066,012 - "Tobacco Product"

• Issued: November 29, 2011
• Technology Synopsis: The ’012 Patent claims a product comprising a rolled sheet of tobacco material packaged with a wrapper. A key aspect is that the product is sold unfilled, ready for a consumer to add their own tobacco filler. It also claims embodiments where a form casing is included to support the rolled sheet.
• Asserted Claims: The complaint asserts at least claims 9-11, 14, and 15 (Compl. ¶20).
• Accused Features: The complaint alleges the Accused Product is an unfilled, rolled tobacco sheet sold in a wrapper, directly corresponding to the product claimed in the ’012 Patent (Compl. ¶8, ¶15-19).

U.S. Patent No. 8,578,944 - "Method of Making a Tobacco Product"

• Issued: November 12, 2013
• Technology Synopsis: The ’944 Patent claims a method of constructing a cigar by using a pre-formed sheet. The claimed steps include obtaining the rolled sheet, moving the edges apart, filling the interior bore with tobacco, and then fabricating the final cigar. This patent covers the end-user's actions.
• Asserted Claims: The complaint asserts at least claims 1, 4, 5, 11, 12, 14, and 15 (Compl. ¶32).
• Accused Features: The complaint alleges that Defendant induces and contributes to infringement of this method patent by selling the Accused Product and instructing or encouraging consumers to perform the claimed steps of filling and rolling it to create a finished cigar (Compl. ¶28, ¶37).

U.S. Patent No. 8,783,266 - "Tobacco Product"

• Issued: July 22, 2014
• Technology Synopsis: The ’266 Patent is similar to other product patents in the family, claiming a rolled sheet of tobacco material with a longitudinal opening, packaged in a wrapper. It specifies that the rolled sheet is not filled with tobacco, making it a component for a "roll-your-own" cigar.
• Asserted Claims: The complaint asserts at least claims 9-11, 14, and 15 (Compl. ¶20).
• Accused Features: The infringement allegations against the ’266 patent target the Accused Product as a physical embodiment of the claimed unfilled, rolled cigar tube (Compl. ¶8).

U.S. Patent No. 9,161,568 - "Tobacco Product"

• Issued: October 20, 2015
• Technology Synopsis: The ’568 Patent claims a product for forming a cigar that includes a rolled sheet of "smokable material" with a longitudinal opening. The product is sold packaged and unfilled, ready for a consumer to add filler. It also includes claims directed to the product including a form casing to maintain its shape.
• Asserted Claims: The complaint asserts at least claims 1-4, 7, 9-11, 14, and 15 (Compl. ¶20).
• Accused Features: The complaint targets the Accused Product's structure as an unfilled, rolled smokable tube sold in packaging (Compl. ¶8, ¶15-19).

III. The Accused Instrumentality

Product Identification

The Accused Product is identified as "cigar tubes/shells" sold by Defendant Grabba-Leaf, LLC (Compl. ¶8).

Functionality and Market Context

The complaint alleges the Accused Product consists of pre-formed cigar wrappers sold to consumers, who then add their own tobacco filler to create a finished cigar (Compl. ¶28). The complaint references photographs in Exhibit H, which allegedly show the Accused Product being removed from its packaging, filled with tobacco, and rolled into a finished cigar (Compl. ¶17-19, ¶29-31). The packaging for the Accused Product is alleged to state "Packed in D.R.," indicating it is packaged in the Dominican Republic (Compl. ¶21). Plaintiff and Defendant are alleged to be direct competitors in the marketplace (Compl. ¶11).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits "I" and "J") that were not provided with the pleading. The infringement theory is therefore summarized below in prose based on the complaint's narrative allegations.

• Direct Infringement Theory (’730, ’119, ’012, ’266, ’568 Patents): The complaint alleges that the Accused Product is a physical embodiment of the product claims of these patents. The theory is that Defendant makes, uses, sells, or imports into the United States a cigar tube/shell made of a rolled sheet of tobacco material, which is packaged while unfilled and has edges that can be moved apart, thereby meeting the core limitations of the asserted product claims (Compl. ¶8, ¶20).
• Infringement under § 271(g) (’858 Patent): The complaint alleges that the Accused Product is manufactured in the Dominican Republic using a process patented in the ’858 Patent. Defendant is then alleged to infringe under 35 U.S.C. § 271(g) by importing this product into the United States (Compl. ¶22, ¶25).
• Indirect Infringement Theory (’944 Patent): The complaint alleges that end-users directly infringe the method claims of the ’944 Patent when they use the Accused Product to make a finished cigar (Compl. ¶28). Defendant is alleged to induce this infringement by advertising the products as "CIGAR WRAPS" and actively encouraging this known infringing use (Compl. ¶36-38). The complaint also alleges contributory infringement, stating the product is not a staple article of commerce suitable for substantial non-infringing use (Compl. ¶39).
• Identified Points of Contention:
  • Evidentiary Questions: A central question for the ’858 Patent will be what evidence Plaintiff can produce to show that the specific patented manufacturing process is being practiced in the Dominican Republic.
  • Scope Questions: For the product patents, a potential point of contention may be whether the Accused Product, as sold, has edges that are "not glued together" (’730 Patent, claim 17) or a "longitudinal opening" (’119 Patent, claim 1) in a manner that falls within the scope of the claims.
  • Intent Questions: For the indirect infringement claim on the ’944 Patent, a key legal question will be whether Plaintiff can prove Defendant possessed the specific intent to encourage consumers to perform the patented method, as required for inducement.

V. Key Claim Terms for Construction

• The Term: "edges that are not glued together" (from '730 Patent, claim 17)

• Context and Importance: This term is central to defining the product's condition at the point of sale. The patent's purpose is to provide a tube that a user can open to fill with tobacco. Whether the Accused Product's edges are "not glued" will be a critical factual and legal question for determining infringement.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification describes a user prying the shell open "along the slit" and later sealing it with moisture, suggesting the edges are initially unattached and separable (’730 Patent, col. 3:5-11). This may support a construction covering any configuration where the edges are not permanently bonded.
  • Evidence for a Narrower Interpretation: The patent describes a manufacturing process where a slit is cut through the wall of the shell after it is formed, which could imply the term requires a distinct, pre-cut separation rather than merely overlapping, unglued edges (’730 Patent, col. 2:54-56).

• The Term: "longitudinal opening" (from '119 Patent, claim 1)

• Context and Importance: This term defines the primary feature that allows a user to fill the cigar tube. Its construction will determine whether the Accused Product's seam or slit meets this claim limitation. Practitioners may focus on whether this requires a visible gap or simply a separable seam.

• Intrinsic Evidence for Interpretation:

  • Evidence for a Broader Interpretation: The specification refers to both a "longitudinal slit" and an "opening," and describes its purpose as allowing the placing of crushed tobacco into the central bore (’119 Patent, col. 2:21-24, claim 1). This functional language may support an interpretation that covers any separable seam that serves this purpose.
  • Evidence for a Narrower Interpretation: Figure 1 of the related ’730 patent, referenced in the complaint, depicts a distinct slit (14), which could be used to argue that "opening" requires a physical separation rather than merely overlapping edges that can be pulled apart (’730 Patent, Fig. 3).

VI. Other Allegations

• Indirect Infringement: The complaint alleges inducement of infringement of the ’944 method patent, asserting Defendant sells the Accused Product with knowledge of the patent and with the intent that consumers will use it to perform the claimed steps of making a cigar (Compl. ¶37-38). It also alleges contributory infringement, stating the product is especially made for this infringing use and is not a staple article suitable for substantial non-infringing use (Compl. ¶39).
• Willful Infringement: The complaint alleges willful infringement of all patents-in-suit. The basis for willfulness is Defendant's alleged knowledge of the patents following service of a complaint in a prior lawsuit on August 31, 2015, and its subsequent continued infringement (Compl. ¶33, ¶53-55).

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

• Proof of Foreign Process: A primary evidentiary hurdle for the Plaintiff will be one of extraterritorial proof: can Plaintiff demonstrate that the Accused Products, allegedly made in the Dominican Republic, are manufactured using the specific steps of the ’858 process patent, as required to sustain a claim for infringement by importation under 35 U.S.C. § 271(g)?
• Intent for Indirect Infringement: A core legal issue for the ’944 method patent will be one of specific intent: does the evidence show that the Defendant, by marketing its product as "CIGAR WRAPS," specifically intended to encourage its customers to perform the patented method of making a cigar, or did it merely sell a multi-use component?
• Claim Scope and Product Configuration: For the various product patents, the case will likely involve a close analysis of the definitional scope of claim terms like "longitudinal opening" and "edges not glued together." The ultimate question will be whether the physical configuration of the Defendant's product, as sold in its packaging, falls within the boundaries of those claim limitations.