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., 10/26/2018
  • Venue Allegations: Venue is alleged to be proper in the Eastern District of New York because Defendant Myle Vape Inc. is a resident and corporate citizen of the district and has allegedly committed acts of patent infringement within the district.
  • Core Dispute: Plaintiff alleges that Defendants’ Myle-branded electronic vaporizer devices and pods infringe three U.S. patents related to the design of vaporizer cartridges and the corresponding apparatus.
  • Technical Context: The patents concern the mechanical and aesthetic design of non-cylindrical electronic vaporizer systems, a technology area of significant commercial importance in the consumer nicotine products market.
  • Key Procedural History: The complaint alleges that Plaintiff Juul Labs virtually marks its products with the patent numbers-in-suit, which, if proven, may satisfy the notice requirement for recovering damages under 35 U.S.C. § 287.

Case Timeline

Date Event
2013-12-23 Earliest Priority Date ('669, '139, '915 Patents)
2016-09-06 U.S. Application No. 15/257,760 Filed (leading to '139 Patent)
2017-11-16 U.S. Application No. 15/815,666 Filed (leading to '915 Patent)
2017-11-21 U.S. Application No. 15/820,370 Filed (leading to '669 Patent)
2018-09-11 U.S. Patent No. 10,070,669 Issued
2018-09-18 U.S. Patent No. 10,076,139 Issued
2018-10-23 U.S. Patent No. 10,104,915 Issued
2018-10-26 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's background section describes technical challenges with existing non-cylindrical electronic vaporizers, including instability of electrical contacts, difficulty in determining the amount of remaining vaporizable liquid, and insecure cartridge attachment, particularly when the device is held in a user's mouth ('669 Patent, col. 2:9-28).
  • The Patented Solution: The invention is a vaporizer cartridge with an opaque mouthpiece secured over a transparent body containing the vaporizable material. The mouthpiece is designed with a "notch" or cutout that exposes a portion of the underlying transparent body, allowing a user to visually check the liquid level even when the cartridge is inserted into a vaporizer device ('669 Patent, Abstract; col. 2:31-51).
  • Technical Importance: This design provides a direct visual indicator of the remaining consumable liquid, addressing a key usability issue in compact, non-rolling vaporizer form factors ('669 Patent, col. 1:52-55).

Key Claims at a Glance

  • The complaint asserts independent claim 1 and a number of dependent claims (Compl. ¶15).
  • The essential elements of independent claim 1 include:
    • A body including a storage compartment for a vaporizable material, with a first end and a second end.
    • A heating element for generating an aerosol.
    • A mouthpiece secured over the first end, having a notch extending away from the second end.
    • The mouthpiece covers a first portion of the body's surface, does not cover a second portion configured for insertion into a vaporizer, and does not cover a third portion between the notch and the second end.
    • This third portion of the surface is visible when the second portion is inserted into the vaporizer's cartridge receptacle.
  • The complaint asserts claims 2, 4, 5, 7-9, 12, 13, 16, 17, 20, and 21 in addition to claim 1 (Compl. ¶15).

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: The patent addresses the same technical problems as the ’669 Patent, namely the difficulty of visually determining the liquid level in non-cylindrical vaporizer cartridges that are inserted into a device body (’139 Patent, col. 2:9-26).
  • The Patented Solution: The invention claims a complete "vaporizer apparatus," which is the system comprising both the cartridge and the vaporizer body. The key inventive concept is the vaporizer body itself having a cartridge receptacle with a "notch" or window designed to align with the cartridge's storage compartment, thereby making the vaporizable material visible to the user when the cartridge is installed (’139 Patent, Abstract; col. 2:29-47).
  • Technical Importance: This system-level approach integrates the liquid-level visibility feature into the device body, creating a complete apparatus designed to solve a known usability problem in the field ('139 Patent, col. 1:52-55).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 9, 19, and 28, along with several dependent claims (Compl. ¶22).
  • The essential elements of independent claim 1 include:
    • A cartridge with a storage compartment, heater, and mouthpiece.
    • A vaporizer having an elongate, flattened, and opaque body with a cartridge receptacle at its proximal end.
    • The cartridge receptacle has a proximal-facing opening and comprises a proximal edge around that opening.
    • The proximal edge of the receptacle forms a notch in the front side of the body.
    • A portion of the cartridge's storage compartment is visible through the notch when the cartridge is housed within the receptacle.
  • The complaint asserts claims 2-4, 10, 11, 13, 14, 20, 21, 24, and 29 in addition to the independent claims (Compl. ¶22).

U.S. Patent No. 10,104,915 - Securely Attaching Cartridges for Vaporizer Devices

  • Patent Identification: U.S. Patent No. 10,104,915, "Securely Attaching Cartridges for Vaporizer Devices," issued October 23, 2018.
  • Technology Synopsis: This patent addresses the problem of maintaining a secure mechanical and electrical connection between a cartridge and a vaporizer device, especially when subjected to oral pressure by a user (’915 Patent, col. 2:24-32). The patented solution is a cartridge with "locking gaps" on its lateral surfaces that are configured to engage with corresponding "locking detents" inside the vaporizer's cartridge receptacle, creating a secure attachment (’915 Patent, Abstract).
  • Asserted Claims: Independent claims 1 and 12, as well as a number of dependent claims, are asserted (Compl. ¶29).
  • Accused Features: The complaint alleges that the mechanical interface between the Myle pods and the Myle devices infringes the claims of the ’915 Patent (Compl. ¶29).

III. The Accused Instrumentality

Product Identification

  • The "Myle devices and pods" (Compl. ¶¶ 15, 22, 29).

Functionality and Market Context

  • The complaint does not provide sufficient detail for a technical analysis of the accused products' functionality. The infringement allegations rely on "exemplary claim chart[s]" that were attached as exhibits to the complaint but are not included in the public filing (Compl. ¶¶ 15, 22, 29). The complaint does include a product webpage for the "Myle pod system starter kit," which shows a device with a non-cylindrical, flattened form factor and a removable pod (Compl. ¶7, Ex. 1). The complaint alleges that Defendants manufacture, use, import, distribute, and sell these products in the United States (Compl. ¶15).

IV. Analysis of Infringement Allegations

The complaint alleges that the Myle devices and pods infringe the asserted claims because they "include each and every limitation of these claims either literally or under the doctrine of equivalents" (Compl. ¶¶ 15, 22, 29). However, the complaint does not provide a narrative infringement theory or any specific evidence of infringement in its main body, instead referencing claim chart exhibits that are not available for analysis (Compl., Exs. 8, 10, 14).

  • Identified Points of Contention:
    • ’669 and ’139 Patents - Structural and Functional Equivalence: A central dispute will likely concern whether the accused Myle pods and devices possess a "notch" or an equivalent structure. The analysis will raise the question of whether any cutout or window on the accused products is structurally similar to and functions in the same way as the claimed "notch"—specifically, to make a portion of the liquid storage compartment visible when the pod is inserted into the device.
    • ’915 Patent - Mechanical Attachment: For the ’915 Patent, the key question will be whether the mechanism that secures the Myle pod within the Myle device includes structures that meet the claim limitations of "locking gaps" on the cartridge engaging with "locking detents" in the device receptacle. The evidence presented regarding the precise interaction and function of these components will be critical.

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 element for the claimed liquid visibility feature in both the cartridge-focused and apparatus-focused patents. Its construction will be critical to determining the scope of the claims and whether the design of the Myle products falls within that scope.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification of the ’669 Patent states that the "cut-out region may be any appropriate shape (e.g., square, rectangular, oval, semi-circular, or combinations thereof)" (’669 Patent, col. 3:9-14). This language may support a construction that is not limited to a specific geometric shape.
    • Evidence for a Narrower Interpretation: The patent figures consistently depict a V-shaped or triangular cutout (e.g., ’669 Patent, Fig. 5). The abstract also describes "a notch extending away from the second end towards the first end," which could be argued to imply a specific orientation and origin from an edge of the mouthpiece, potentially limiting the term to shapes that are open on one side.

  • The Term: "a portion of the surface being visible when the second portion of the surface is inserted into the cartridge receptacle" (’669 Patent, Claim 1)

  • Context and Importance: This functional language defines the purpose and outcome of the "notch." Practitioners may focus on this term because the dispute will likely involve not just the presence of a cutout, but whether that cutout actually performs the claimed function of making the liquid level assessable to a user.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The plain language requires only "a portion" to be visible, which could be construed to mean any non-zero amount of the surface is visible.
    • Evidence for a Narrower Interpretation: The specification describes the purpose of the visibility is to allow a user to "visually confirm the amount of vaporizable material" and get a "quick and accurate understanding of the actual level" (’669 Patent, col. 1:52-55, col. 2:48-51). A party could argue that for the portion to be functionally "visible" as claimed, it must be sufficient in size and clarity to achieve this stated purpose.

VI. Other Allegations

  • Willful Infringement: The complaint does not contain a separate count for willful infringement but requests that damages be trebled pursuant to 35 U.S.C. § 284 "by reason of the intentional and willful nature" of the infringement (Compl., Prayer for Relief ¶C). The complaint does not allege facts supporting pre-suit knowledge of the patents by the Defendants; therefore, the willfulness allegation appears to be based on knowledge acquired upon the filing of the lawsuit.

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

  • A core issue will be one of definitional scope: can the term "notch," as defined and illustrated in the patents, be construed to cover the specific window or cutout design of the accused Myle pods and devices? The outcome of the claim construction for this term will likely be a primary driver of the infringement analysis.
  • A key evidentiary question will be one of technical proof: given the complaint's reliance on unfiled exhibits, a central issue for the litigation will be whether Plaintiff can produce sufficient technical evidence to demonstrate that the accused products meet every element of the asserted claims, particularly the specific structural features for visibility (’669, ’139 patents) and secure attachment (’915 patent).
  • A final question relates to commercial significance: does the alleged infringement via the Myle products, which compete in the same market space, represent a basis for damages beyond a reasonable royalty, potentially including lost profits, should infringement and validity be established?