DCT
1:18-cv-03774
Lightwire LLC v. W3 Markets LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lightwire, LLC (California)
- Defendant: W3 Markets LLC d/b/a Prosmoke (Illinois)
- Plaintiff’s Counsel: Rabicoff Law LLC
- Case Identification: 1:18-cv-03774, N.D. Ill., 05/30/2018
- Venue Allegations: Venue is alleged to be proper in the Northern District of Illinois because the Defendant is an Illinois corporation with a principal place of business within the district.
- Core Dispute: Plaintiff alleges that Defendant’s disposable electronic cigarette infringes a patent related to a non-electronic, simulated cigarette designed as a smoking cessation aid.
- Technical Context: The technology concerns devices that mimic the physical experience of smoking to address oral fixation, releasing flavor upon the application of pressure rather than through combustion or electronic vaporization.
- Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history related to the patent-in-suit.
Case Timeline
| Date | Event |
|---|---|
| 2005-03-04 | ’402 Patent Priority Date |
| 2009-11-10 | ’402 Patent Issue Date |
| 2018-05-30 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,614,402 - “Simulated Cigarette,” issued November 10, 2009
The Invention Explained
- Problem Addressed: The patent identifies a gap in smoking cessation aids, noting that while products like nicotine patches address chemical addiction, they fail to address the "oral fixation" or the physical habit of holding and drawing on a cigarette (’402 Patent, col. 1:18-24). Existing alternatives were described as either replicating the unpleasant taste of tobacco or requiring actual combustion, posing a fire hazard and emitting fumes (’402 Patent, col. 1:28-40).
- The Patented Solution: The invention is a non-combustible, non-electronic device that simulates a real cigarette in size and feel. It comprises a filter member containing a "flavoring means" within a hollow portion, which is specifically described as a plastic tube (’402 Patent, col. 2:42-49, col. 3:10-14). When a user applies pressure to the filter, either by squeezing or inhaling, the flavoring is dispersed into the user's mouth, satisfying the behavioral urge without smoke or nicotine (’402 Patent, col. 2:49-52).
- Technical Importance: The described invention offers a method to satisfy the behavioral component of smoking addiction that is smoke-free, does not require combustion, and can provide a pleasant taste (’402 Patent, col. 1:40-43).
Key Claims at a Glance
- The complaint asserts independent Claim 1 (’402 Patent, Compl. ¶10).
- The essential elements of Claim 1 are:
- a cylindrical member having a first and second portion;
- a filter member formed at an end of said first portion... capable of being comfortably held between a user's lips;
- an opening within an end of said filter member;
- a hollow portion formed within said filter member;
- a flavoring means placed within said hollow portion... capable of dispersing flavoring... upon the application of pressure to said filter member;
- wherein said hollow portion comprises a plastic tube which extends through said filter member for containing said flavoring means therein.
- The prayer for relief seeks judgment on "one or more claims," while the body of the complaint focuses exclusively on Claim 1 (Compl. ¶11, Prayer for Relief ¶A).
III. The Accused Instrumentality
Product Identification
The accused product is the "Prosmoke Menthol Flavored Disposable Electronic Cigarette" (Compl. ¶12).
Functionality and Market Context
The complaint identifies the accused instrumentality as an "electronic cigarette" and a "cigarette-like device" (Compl. ¶¶11-12). No specific details regarding the product's internal components, structure, or method of operation are provided. The complaint alleges that the product is manufactured, imported, offered for sale, and/or sold by the Defendant (Compl. ¶11). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint references a claim chart in an exhibit that was not provided (Compl. ¶13). The infringement theory is based on a general allegation that the Accused Product meets all limitations of Claim 1.
’402 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a simulated cigarette for use as a smoking cessation aid, said simulated cigarette comprising a (a) cylindrical member having a predetermined size and shape, said cylindrical member having a first and second portion; | The complaint alleges the Accused Product is a "cigarette-like device" that infringes the claim, but provides no specific details on its structure corresponding to this element. | ¶¶10-12 | col. 4:26-29 |
| (b) a filter member formed at an end of said first portion of said cylindrical member, said filter member having a predetermined size and shape capable of being comfortably held between a user's lips; | The complaint does not describe the specific structure of the Accused Product's filter or mouthpiece. | ¶¶10-12 | col. 4:30-34 |
| (c) an opening within an end of said filter member; | The complaint does not describe an opening in the Accused Product. | ¶¶10-12 | col. 4:35 |
| (d) a hollow portion formed within said filter member; | The complaint does not describe a hollow portion within the Accused Product's filter. | ¶¶10-12 | col. 4:36-37 |
| (e) a flavoring means placed within said hollow portion, said flavoring means capable of dispersing flavoring through said opening of said filter member and into a user's mouth upon the application of pressure to said filter member... | The complaint identifies the product as a "Menthol Flavored" device but does not specify how flavor is dispersed or that it occurs via "application of pressure." | ¶¶10-12 | col. 4:38-44 |
| wherein said hollow portion comprises a plastic tube which extends through said filter member for containing said flavoring means therein. | The complaint makes a blanket infringement allegation without identifying a "plastic tube" structure within the Accused Product. | ¶¶10-12 | col. 4:45-47 |
- Identified Points of Contention:
- Scope Questions: A primary question for the court will be whether the claims, which describe a purely mechanical device, can be construed to read on an "Electronic Cigarette" (Compl. ¶12). The infringement analysis raises the question of whether the components of an electronic cigarette (e.g., cartridge, atomizer, battery, sensor) can meet the structurally specific limitations of the patent, such as a "plastic tube" containing a "flavoring means."
- Technical Questions: What evidence does the complaint provide that the accused "Electronic Cigarette" operates via "application of pressure" to disperse flavor, as required by the claim? This suggests a potential mismatch with the typical operation of electronic cigarettes, which use a sensor to detect airflow to trigger a heating element that vaporizes a liquid.
V. Key Claim Terms for Construction
The Term: "application of pressure"
Context and Importance: This term is critical because it defines the mechanism of action. The infringement case may depend on whether this term is broad enough to cover the operation of an electronic cigarette. Practitioners may focus on this term because the patent describes direct physical force or inhalation causing flavor release from a passive structure (’402 Patent, col. 3:15-23), whereas the accused "Electronic Cigarette" likely uses a pressure-differential sensor to activate an electronic vaporization circuit.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification discloses that one method for applying pressure is "the application of a vacuum, or inhalation, from the user" (’402 Patent, col. 3:20-22). A party might argue this language covers the suction that activates an electronic cigarette's airflow sensor.
- Evidence for a Narrower Interpretation: The specification’s primary examples describe direct external force ("via the user's lips or hands") on the filter member itself to release the flavoring (’402 Patent, col. 3:18-20). The overall context of the patent is mechanical, without any mention of electronic components, sensors, or heating elements, which may suggest the term is limited to non-electronic, physical actuation.
The Term: "a plastic tube which extends through said filter member for containing said flavoring means therein"
Context and Importance: This "wherein" clause recites a specific structure for the "hollow portion" and "flavoring means." The viability of the infringement claim against an electronic cigarette may depend on whether its components (e.g., an e-liquid cartridge, wick, and atomizer assembly) can be characterized as meeting this structural limitation.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that "plastic tube" should be given a broad, functional meaning and that any plastic-containing reservoir in an e-cigarette that holds liquid qualifies.
- Evidence for a Narrower Interpretation: The claim language recites a specific arrangement: a tube that "extends through said filter member" and "contain[s]" the flavoring. This is illustrated as a simple, passive reservoir (’402 Patent, Fig. 2). A party could argue this structure is distinct from the multi-component vaporization system of a typical electronic cigarette, which actively delivers liquid to a separate heating element.
VI. Other Allegations
- Indirect Infringement: The complaint alleges only direct infringement under 35 U.S.C. § 271(a) (Compl. ¶9). No facts are alleged that would support a claim for induced or contributory infringement.
- Willful Infringement: The complaint does not allege willful infringement or plead any facts related to Defendant’s pre-suit knowledge of the ’402 Patent.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of technological mismatch: can the claims of the ’402 Patent, which are directed to a simple mechanical device that releases flavor under direct physical pressure, be construed to cover an "Electronic Cigarette" that uses an air-pressure sensor to activate a heating element and vaporize a liquid?
- A key evidentiary question will be one of structural equivalence: what evidence will Plaintiff present to demonstrate that the accused electronic cigarette contains the specific structure of "a plastic tube which extends through said filter member for containing said flavoring means," as explicitly required by the final limitation of Claim 1, or that its components are legally equivalent? The complaint's lack of technical detail on this point makes it a central issue for discovery.