DCT

2:18-cv-05548

JUUL Labs Inc v. J Well France SAS

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-05548, E.D.N.Y., 10/03/2018
  • Venue Allegations: Venue is alleged to be proper as to Defendant J Well because it is a foreign corporation with no residence in any U.S. judicial district. Venue is alleged to be proper as to Defendants Bo Vaping and MMS because they have regular and established places of business within the Eastern District of New York.
  • Core Dispute: Plaintiff alleges that Defendants’ Bo One and Bo+ electronic vaporizer devices and pods infringe four U.S. patents related to vaporizer apparatuses, systems, and cartridges.
  • Technical Context: The technology relates to the design and manufacture of electronic vaporizer devices, specifically those using non-cylindrical, disposable or refillable cartridges containing a vaporizable liquid.
  • Key Procedural History: The complaint does not allege any significant procedural events such as prior litigation or post-grant proceedings involving the patents-in-suit.

Case Timeline

Date Event
2013-12-23 Priority Date for '669, '130, '568, '139 Patents
2018-08-14 '568 Patent Issued
2018-08-28 '130 Patent Issued
2018-09-11 '669 Patent Issued
2018-09-18 '139 Patent Issued
2018-10-03 Complaint Filed

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

U.S. Patent No. 10,070,669 - "Cartridge for Use with a Vaporizer Device"

  • Patent Identification: U.S. Patent No. 10,070,669, "Cartridge for Use with a Vaporizer Device," issued September 11, 2018.

The Invention Explained

  • Problem Addressed: The patent describes issues with non-cylindrical vaporizer cartridges, which, while offering design advantages, can suffer from instability in their electrical connections to the vaporizer body, particularly when the device is held in a user's mouth ('669 Patent, col. 1:15-25).
  • The Patented Solution: The invention is a cartridge for a vaporizer that includes an opaque mouthpiece secured over a transparent storage compartment. The mouthpiece has a notch or cutout that creates a window, allowing the user to see the liquid level inside the transparent compartment even when the cartridge is inserted into the vaporizer body ('669 Patent, col. 2:45-56, FIGs. 32-33E). This design aims to improve user experience by making the remaining liquid visible while maintaining a specific aesthetic.
  • Technical Importance: The design provides a functional solution to the problem of monitoring fluid levels in aesthetically driven, non-cylindrical vaporizers without disassembling the device (Compl. ¶ 14).

Key Claims at a Glance

  • The complaint asserts independent claims 12 and 21 ('669 Patent, cl. 12, 21; Compl. ¶17).
  • Claim 12, an independent claim, includes the following essential elements for a cartridge:
    • A body with a storage compartment for vaporizable material.
    • A heating element to generate the aerosol.
    • A mouthpiece secured over a first end of the body, featuring a notch.
    • The mouthpiece does not cover a second portion of the body's surface, which is configured for insertion into a vaporizer.
    • The mouthpiece does not cover a third portion of the surface (an area between the notch and the second end), which remains visible when the second portion is inserted.
  • The complaint reserves the right to assert additional claims (Compl. ¶17).

U.S. Patent No. 10,058,130 - "Cartridge for Use with a Vaporizer Device"

  • Patent Identification: U.S. Patent No. 10,058,130, "Cartridge for Use with a Vaporizer Device," issued August 28, 2018.

The Invention Explained

  • Problem Addressed: The patent addresses the manufacturing challenges associated with producing reliable, non-cylindrical vaporizer cartridges that solve the user-experience issues of fluid visibility and stable connectivity ('130 Patent, col. 1:8-32).
  • The Patented Solution: The patent claims a method for fabricating a vaporizer cartridge. The method involves forming a storage compartment, attaching a mouthpiece to one end, and attaching a heater to the other. The heater's construction is specified to include a first and second plate that define a volume between them, with at least a portion of the heating element disposed within that volume ('130 Patent, Abstract; col. 35:9-47). This structure is illustrated in the assembly sequence shown in FIG. 7B of the patent.
  • Technical Importance: The claimed method provides a structured manufacturing process for producing vaporizer cartridges with a specific heater assembly designed for consistent performance (Compl. ¶21).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 8, and 21 ('130 Patent, cl. 1, 8, 21; Compl. ¶24).
  • Claim 1, an independent method claim, includes the following essential steps for fabricating a cartridge:
    • Forming a storage compartment with first and second ends.
    • Attaching a mouthpiece to the second end.
    • Attaching a heater to the first end, where the heater comprises:
      • A heating element.
      • A first plate positioned proximate to a first side of the storage compartment.
      • A second plate positioned proximate to a second side, which, with the first plate, defines a volume containing at least a portion of the heating element.
  • The complaint reserves the right to assert additional claims, including dependent claims (Compl. ¶24).

U.S. Patent No. 10,045,568 - "Vaporization Device Systems and Methods"

  • Patent Identification: U.S. Patent No. 10,045,568, "Vaporization Device Systems and Methods," issued August 14, 2018.
  • Technology Synopsis: This patent addresses the problem of unstable electrical and physical connections in non-cylindrical vaporizers ('568 Patent, col. 1:52-59). The solution is a cartridge device with a base specifically configured to fit a rectangular opening, featuring "a first locking gap on a first lateral surface of the base, and a second locking gap on a second lateral surface of the base that is opposite the first lateral surface" to ensure a secure coupling ('568 Patent, cl. 1).
  • Asserted Claims: Claims 1-3, 5-9, 12, and 17-20 are asserted, including independent claims 1 and 17 (Compl. ¶31).
  • Accused Features: The complaint alleges that the Bo One and Bo+ devices and pods possess the specific base configuration with opposing locking gaps as claimed in the patent (Compl. ¶31).

U.S. Patent No. 10,076,139 - "Vaporizer Apparatus"

  • Patent Identification: U.S. Patent No. 10,076,139, "Vaporizer Apparatus," issued September 18, 2018.
  • Technology Synopsis: This patent claims the entire vaporizer apparatus, not just the cartridge. The invention focuses on an apparatus with a cartridge receptacle at its proximal end that includes a "notch extending from the proximal end towards the distal end," which allows a portion of the inserted cartridge's storage compartment to remain visible to the user ('139 Patent, Abstract; cl. 20).
  • Asserted Claims: Claims 20, 21, 24, 28, and 29 are asserted, including independent claims 20 and 29 (Compl. ¶38).
  • Accused Features: The complaint alleges that the Bo One devices, when used with the Bo pods, constitute the claimed vaporizer apparatus that provides a window for viewing the liquid level (Compl. ¶38).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are the "Bo One" and "Bo+" electronic vaporizer devices and their corresponding "pods" (cartridges) (Compl. ¶¶17, 24, 31, 38).

Functionality and Market Context

  • The complaint describes the accused products as a vaporizer system consisting of a device and compatible pods containing a vaporizable liquid (Compl. ¶¶8-11). It alleges that Defendants manufacture, use, import, distribute, offer to sell, and/or sell these products in the United States through an established distribution chain, which includes online retailers (Compl. ¶¶8, 17, 24).
  • No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint references exemplary claim chart exhibits for each asserted patent but does not attach or include them in the provided filing (Compl. ¶¶17, 24, 31, 38). The infringement allegations are therefore summarized below in prose based on the narrative assertions in the complaint.

  • '669 Patent Infringement Allegations Summary:
    The complaint alleges that the Bo One devices and pods infringe claims of the '669 Patent because the pods allegedly constitute a cartridge that includes every element of the asserted claims, either literally or under the doctrine of equivalents (Compl. ¶17). The theory suggests that the physical structure of the Bo pod—including its body, mouthpiece, heater, and its configuration that allows fluid visibility when inserted into the device—maps onto the elements of the asserted claims (Compl. ¶17).

  • '130 Patent Infringement Allegations Summary:
    The complaint alleges that Defendants directly infringe the method claims of the '130 Patent under 35 U.S.C. § 271(a) by manufacturing, using, importing, or selling the Bo One and Bo+ pods (Compl. ¶24). The infringement theory is that the process used to manufacture the accused pods includes each and every step of the asserted method claims, such as the specific steps of forming the storage compartment and attaching the heater assembly with its claimed two-plate structure (Compl. ¶24).

  • Identified Points of Contention:

    • Scope Questions: For the '669 Patent, a central dispute may arise over the construction of the term "notch." The litigation will likely focus on whether the design of the Bo pod's mouthpiece creates a feature that meets the definition of a "notch" that leaves a "third portion" of the cartridge surface visible, as required by claim 12.
    • Technical Questions: For the method claims of the '130 Patent, a key question will be evidentiary. What evidence does the complaint provide that the actual manufacturing process for the Bo pods practices the specific sequence of forming a storage compartment and attaching a heater with a "first plate" and "second plate" that "define a volume therebetween"? This analysis will depend on discovery into Defendants' manufacturing processes.

V. Key Claim Terms for Construction

  • The Term: "notch" (from '669 Patent, claim 12)

  • Context and Importance: The "notch" is a critical limitation that provides the window for fluid visibility, a key feature of the invention. The scope of this term will be central to determining whether the shape and cutouts of the accused Bo pod's mouthpiece infringe.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification discloses numerous embodiments of the notch, describing it as a feature that "exposes a region of the storage compartment" ('669 Patent, col. 4:10-15). The patent also provides a wide variety of shapes for the notch, including semi-circular, triangular, semi-octagonal, and others, suggesting the term is not limited to a single geometry ('669 Patent, FIGs. 31A-31L).
    • Evidence for a Narrower Interpretation: The primary illustrated embodiment shows a distinct, triangular-shaped cutout (e.g., '669 Patent, FIG. 7A, element 88). An argument could be made that the term should be construed more narrowly in light of the prominent embodiment, or that it requires a distinct cutout rather than a gradual tapering of the mouthpiece cover.

  • The Term: "a pair of plates... defining a volume therebetween" (from '130 Patent, claim 1)

  • Context and Importance: This phrase describes the structural configuration of the heater assembly created by the claimed manufacturing method. Infringement will depend on whether the heater in the accused Bo pod is constructed from two distinct "plates" that form a "volume" containing the heating element.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification describes the plates as being "affixed about the sides of the heater chamber" ('130 Patent, col. 35:36-39), which could be read broadly to cover any two opposing structures that create a space for the wick and coil.
    • Evidence for a Narrower Interpretation: FIG. 7B of the patent shows two distinct, stamped metal components (33) that are attached to the tank (32) to sandwich the wick (34) and coil (35). An argument could be made that "plates" requires separate components assembled as shown, and that "defining a volume" requires a substantially enclosed space, not merely an open region between two surfaces.

VI. Other Allegations

  • Indirect Infringement: The complaint does not plead separate counts for indirect infringement and does not allege specific facts, such as the provision of instructional materials, that would typically support such a claim.
  • Willful Infringement: The prayer for relief requests treble damages based on an "intentional and willful" infringement (Compl. p. 9, ¶C). However, the body of the complaint does not contain specific factual allegations to support a claim of willfulness, such as pre-suit knowledge of the patents-in-suit.

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

  • A core issue will be one of definitional scope: can the term "notch," as described and variously depicted in the '669 Patent, be construed to read on the specific shape and configuration of the accused Bo pod's mouthpiece and its interface with the vaporizer body?
  • A key evidentiary question will be one of process mapping: for the method claims of the '130 Patent, what evidence will emerge from discovery to demonstrate whether the actual, step-by-step process used to manufacture the accused Bo pods aligns with the specific assembly steps recited in the claims?
  • A central question of fact for the '568 Patent will be one of dimensional compliance: does the physical base of the accused Bo pod contain locking gaps that fall within the specific dimensional and positional limitations required by the claims, such as being located "between 3-4 mm above the bottom surface"?