DCT

2:18-cv-05549

JUUL Labs Inc v. Myle VAPE Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:18-cv-05549, E.D.N.Y., 10/03/2018
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because Defendant Myle Vape Inc. is a corporate citizen and resident of the district.
  • Core Dispute: Plaintiff alleges that Defendants’ electronic vaporizer devices and pods infringe two patents related to the design of vaporizer cartridges and the corresponding apparatus.
  • Technical Context: The technology relates to electronic cigarettes, or vaporizers, specifically non-cylindrical designs with user-friendly features for monitoring the level of consumable liquid.
  • Key Procedural History: The complaint alleges that Plaintiff Juul virtually marks its products with the patent numbers at issue, which could be relevant to the calculation of damages. No prior litigation or post-grant proceedings are mentioned.

Case Timeline

Date Event
2013-12-23 Earliest Priority Date for ’669 and ’139 Patents
2018-09-11 U.S. Patent No. 10070669 Issued
2018-09-18 U.S. Patent No. 10076139 Issued
2018-10-03 Complaint Filing Date

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 early non-circular vaporizers, including instability of electrical contacts between the cartridge and the device, and the difficulty for users to determine the amount of vaporizable material remaining within the cartridge (Compl. ¶10; ’669 Patent, col. 1:11-29).
  • The Patented Solution: The invention is a cartridge for a vaporizer device featuring a specifically designed mouthpiece. This mouthpiece is secured over the end of the cartridge body but includes a "notch" or cutout that leaves a portion of the cartridge's liquid storage compartment visible to the user even when the cartridge is inserted into the vaporizer device, allowing the liquid level to be monitored (’669 Patent, Abstract; col. 2:31-54). Figure 5 of the patent illustrates this concept, showing the cartridge (10) with its mouthpiece (30a) inserted into the vaporizer body (20).
  • Technical Importance: This design approach addresses a key usability issue in the vaporizer market by providing a clear visual indicator for the consumable liquid without compromising the device's compact, non-cylindrical form factor (’669 Patent, col. 1:11-29).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and a number of its dependent claims (Compl. ¶13).
  • Essential elements of independent claim 1 include:
    • A body with a storage compartment for vaporizable material, having a first end, a second end, and a surface between them.
    • A heating element for generating aerosol.
    • A mouthpiece secured over the first end that covers a first portion of the surface, does not cover a second portion configured for insertion into a vaporizer, and does not cover a third portion comprising an area between a notch and the second end, with this third portion being visible when the cartridge is inserted.
  • The complaint reserves the right to assert additional claims (Compl. ¶13).

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

  • Patent Identification: U.S. Patent No. 10,076,139, "Vaporizer Apparatus," issued September 18, 2018.

The Invention Explained

  • Problem Addressed: Like the ’669 patent, this patent addresses challenges in non-circular vaporizers, such as maintaining stable electrical contact and allowing users to see the amount of remaining liquid (’139 Patent, col. 1:11-29).
  • The Patented Solution: This invention claims the entire vaporizer apparatus, which includes both the cartridge and the vaporizer body. The solution is an integrated system where the vaporizer body has a cartridge receptacle with a "notch" that aligns with the cartridge, thereby creating a window that exposes a portion of the cartridge's storage compartment for viewing the liquid level (’139 Patent, Abstract; col. 2:31-46). Figure 13 shows the complete apparatus with the cartridge inserted, illustrating how the notch provides visibility.
  • Technical Importance: The patent claims a complete system that pairs a specific cartridge design with a corresponding vaporizer body, aiming to provide a reliable electrical connection while solving the liquid visibility problem at the system level (’139 Patent, col. 1:11-29).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 19, and 28, along with dependent claims (Compl. ¶20).
  • Essential elements of independent claim 1 include:
    • A cartridge comprising an elongate and flattened storage compartment, a mouthpiece, and a heater.
    • A vaporizer comprising an elongate, flattened, and opaque body with a cartridge receptacle at its proximal end.
    • The cartridge receptacle has a proximal-facing opening and a notch extending from its proximal edge, which exposes a portion of the cartridge's storage compartment when housed inside.
  • The complaint reserves the right to assert additional claims (Compl. ¶20).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are identified as the "Myle devices and pods" (Compl. ¶13, ¶20).

Functionality and Market Context

  • The complaint alleges that Defendants Myle and Electric Tobacconist manufacture, use, import, distribute, and sell these devices and pods in the United States (Compl. ¶13, ¶20). It further alleges that these products are made available for sale through an established distribution chain, including online retailers such as "csvape.com" and "electrictobacconist.com" (Compl. ¶6, ¶7). The complaint does not provide sufficient detail for analysis of the specific technical functionality of the Myle products, instead referencing exhibits that are not included in the provided document.

IV. Analysis of Infringement Allegations

The complaint alleges that exemplary claim charts are attached as Exhibit 8 for the ’669 Patent and Exhibit 10 for the ’139 Patent; however, these exhibits were not provided with the complaint.

’669 Patent Infringement Allegations

The complaint asserts that the "Myle devices and pods infringe claims 1, 2, 4, 5, 7, 8, 10, 12, 13, 16, 17, 20, and 21" of the patent because they "include each and every limitation of these claims either literally or under the doctrine of equivalents" (Compl. ¶13). Without the referenced claim chart, the specific theory of how each claim element reads on the accused product is not detailed in the complaint's narrative.
No probative visual evidence provided in complaint.

’139 Patent Infringement Allegations

The complaint asserts that the "Myle devices and pods infringe claims 1-4, 9-11, 13, 14, 19-21, 24, 28, and 29" of the patent for the same reason: that they allegedly "include each and every limitation of these claims either literally or under the doctrine of equivalents" (Compl. ¶20). The complaint does not provide a detailed element-by-element infringement theory in prose, instead referencing the unprovided claim chart.
No probative visual evidence provided in complaint.

Identified Points of Contention

  • Scope Questions: A central question for both patents may be whether the term "notch," as defined and used in the patents, can be construed to read on the specific mechanism, if any, used by the Myle products to allow for liquid visibility. The patents describe the notch as a cutout extending from an edge of the mouthpiece or receptacle, which raises the question of whether a fully enclosed window or a different structural feature would fall within the scope of the claims.
  • Technical Questions: The complaint's allegations are conclusory and lack specific factual support demonstrating how the Myle products operate. A primary point of contention will be an evidentiary one: What technical evidence can be presented to show that the accused Myle pods and devices meet the specific geometric and structural limitations of the asserted claims, particularly the division of the cartridge surface into distinct "first," "second," and "third" portions as required by claim 1 of the ’669 Patent?

V. Key Claim Terms for Construction

The Term: "notch" (’669 Patent, Claim 1; ’139 Patent, Claim 1)

  • Context and Importance: This term is the central structural feature of the claimed inventions for enabling visibility of the vaporizable material. The scope of this term will be critical to the infringement analysis, as it will determine whether the accused products' corresponding feature, if one exists, is covered by the claims.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification suggests the cutout may take various forms, stating it "may be any appropriate shape (e.g., square, rectangular, oval, semi-circular, or combinations thereof)" (’669 Patent, col. 3:12-14). This language could support a construction that is not limited to a single geometry.
    • Evidence for a Narrower Interpretation: The patent figures consistently depict the "notch" as a cutout that originates from the distal edge of the mouthpiece or the proximal edge of the vaporizer receptacle (’669 Patent, Fig. 5; ’139 Patent, Fig. 13). A defendant may argue that the term requires an indentation from an edge, distinguishing it from a fully enclosed window.

The Term: "a third portion of the surface being visible" (’669 Patent, Claim 1)

  • Context and Importance: Claim 1 of the ’669 patent requires a specific spatial relationship where a mouthpiece covers some parts of the cartridge surface while leaving others uncovered, creating three distinct portions. Proving infringement will require mapping these claimed portions onto the accused pod. Practitioners may focus on this term because its construction will define the precise geometric configuration a product must have to infringe.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent's stated goal is to "permit a user to accurately visually confirm the amount of vaporizable material within the cartridge" (’669 Patent, col. 2:50-52). A plaintiff could argue this functional goal supports a broader reading where any design that achieves visibility by exposing part of the tank satisfies this limitation.
    • Evidence for a Narrower Interpretation: The claim language is structurally precise, defining the third portion as an area "between the notch and the second end" that is distinct from a "first portion" (covered) and a "second portion" (uncovered and for insertion). A defendant could argue this requires three physically distinct, non-overlapping regions defined by the mouthpiece's geometry, a structural configuration their product may not possess.

VI. Other Allegations

Willful Infringement

  • The prayer for relief requests that damages be trebled "by reason of the intentional and willful nature" of the alleged infringement (Compl., p. 6, ¶C). The body of the complaint does not, however, contain specific factual allegations—such as pre-suit knowledge of the patents or egregious conduct—to substantiate this claim for willfulness.

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

  • A central issue will be one of structural correspondence: Do the accused Myle devices and pods embody the specific geometric arrangements required by the asserted claims, particularly the precise location and configuration of the "notch" and the distinct covered and uncovered surface portions of the cartridge, or is there a fundamental mismatch in their design and operation?
  • A key evidentiary question will be what factual proof Plaintiff can adduce to support its conclusory infringement allegations. As the complaint lacks both detailed technical comparisons and the referenced claim charts, the outcome will likely depend on evidence developed during discovery and presented through expert testimony that maps the claim limitations onto the accused products.