DCT

2:23-cv-00231

Fuma International LLC v. Altria Group, Inc.

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:23-cv-00348, E.D. Va., 05/26/2023
  • Venue Allegations: Venue is alleged to be proper as Defendants are incorporated in, reside in, and conduct business within the Eastern District of Virginia.
  • Core Dispute: Plaintiff alleges that Defendant’s e-cigarette products, including the MarkTen XL, Green Smoke, and MarkTen Elite lines, infringe a patent related to the mechanical and electrical structure of electronic vaporizers.
  • Technical Context: The lawsuit concerns the design of "cig-a-like" and pod-based electronic cigarettes, focusing on the interface between the disposable liquid-holding cartridge and the reusable power source.
  • Key Procedural History: The complaint alleges that Defendant had knowledge of the patent-in-suit as early as March 2017 through direct communications. It also notes a prior successful enforcement of the patent family against R.J. Reynolds Tobacco Company, which resulted in a settlement and license agreement in November 2021.

Case Timeline

Date Event
2009-07-27 Earliest Priority Date for U.S. Patent No. 9,532,604
2009-08-12 Plaintiff Fuma introduces its e-cigarette device to the market
2013-01-01 Defendant Nu Mark introduces its MarkTen King Size product (approx. date)
2015-01-01 Defendant Altria launches the MarkTen XL product (approx. date)
2017-01-03 U.S. Patent No. 9,532,604 Issues
2017-03-03 Plaintiff allegedly informs Defendant Altria of the issued '604 Patent
2018-02-01 Defendant introduces the MarkTen Elite product (approx. date)
2021-11-01 Plaintiff settles prior litigation against R.J. Reynolds (approx. date)
2022-05-20 Plaintiff sends letter to Defendant offering to license the patent
2023-05-26 Complaint Filed

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

U.S. Patent No. 9,532,604 - "Electronic Vaporizer" (Issued Jan. 3, 2017)

The Invention Explained

  • Problem Addressed: The patent notes that electronic cigarette manufacturers often use proprietary connections, preventing a power source from one brand from working with a cartridge from another brand. This can lock consumers into a single manufacturer's ecosystem ('604 Patent, col. 1:57-col. 2:2).
  • The Patented Solution: The patent describes an electronic vaporizer apparatus consisting of two main components: a power source and a cartridge. The invention focuses on the structure that allows these two parts to connect both mechanically and electrically. The core of this connection is an "electrically conductive threaded portion" on both the power source and the cartridge, allowing them to be screwed together to form a functional device ('604 Patent, col. 1:60-67; Fig. 1). The cartridge itself contains the vaporizable solution, an internal airflow passageway, and a heating element that is powered by the battery when the components are connected.
  • Technical Importance: This design provides a specific, standardized method for detachably connecting the power and cartridge components of an electronic cigarette, which was a fundamental design choice in the rapidly developing e-cigarette market ('604 Patent, col. 1:15-23).

Key Claims at a Glance

  • Independent Claim 1: An apparatus claim covering the combination of the power source and the cartridge. Its essential elements include:
    • A power source with a battery and an electrically conductive threaded portion.
    • A cartridge with a housing, first and second ends with apertures, a central airflow passageway, and a solution holding medium surrounding the passageway.
    • The cartridge housing has its own electrically conductive threaded portion adapted to couple with the power source's threaded portion.
    • A heating element inside the cartridge is configured to vaporize the solution when it receives power through the coupled threaded portions.
  • Independent Claim 12: An apparatus claim directed to the electronic cigarette cartridge itself. Its essential elements include:
    • A housing constructed of a non-metallic material.
    • An interior, first and second ends, a heating element, and an axial airflow passageway.
    • A solution holding medium surrounding the heating element and airflow passageway.
    • An electrically conductive threaded portion on the first end, configured to couple with a power source to receive current.
  • The complaint also asserts dependent claims 4, 6, 13, 14, 15, 16, and 18, and reserves the right to assert others (Compl. ¶57).

III. The Accused Instrumentality

Product Identification

  • The MarkTen XL, Green Smoke, and MarkTen Elite electronic vaporizer products (Compl. ¶54).

Functionality and Market Context

  • The accused products are two-piece electronic cigarettes. The MarkTen XL and Green Smoke products are "cig-a-like" devices that feature a disposable cartridge that screws onto a rechargeable battery unit (Compl. ¶¶61, 109). The MarkTen Elite is a pod-based system where the disposable cartridge connects to the power unit via magnets and electrical contacts rather than threads (Compl. ¶¶155, 160).
  • The complaint alleges these products were substantial copies of the Plaintiff's original Fuma E-Cigarette and were commercially significant for the Defendants (Compl. ¶47). For example, the complaint alleges that by 2017, the MarkTen brand had expanded to 72,000 stores (Compl. ¶40). A side-by-side, cutaway comparison of the Altria Green Smoke and Fuma E-Cigarette products is provided to illustrate their alleged structural similarity (Compl. ¶47).

IV. Analysis of Infringement Allegations

U.S. Patent No. 9,532,604 - Infringement Allegations (Claim 1)

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An apparatus comprising: a power source, wherein the power source includes a battery The accused products include a power source unit containing a battery. A graphic shows the MarkTen XL power source [A] and its internal battery [B] (MarkTen XL Figure 1.a). ¶60 col. 4:5-6
wherein the power source includes an electrically conductive threaded portion The MarkTen XL and Green Smoke power sources have an electrically conductive threaded portion for connection. A graphic shows the threads and electrical contacts on the MarkTen XL power source [C] (MarkTen XL Figure 1.b). ¶61 col. 1:60-67
a cartridge having a housing that comprises an interior The accused products include a disposable cartridge with a housing and an interior space. A graphic shows the MarkTen XL cartridge [D] and a cutaway view of its housing [E] and interior (MarkTen XL Figure 1.c). ¶62 col. 3:42-43
wherein the housing includes an airflow passageway that extends centrally and axially The accused cartridges contain a central, axial airflow passageway. A cutaway graphic shows this passageway [J] running through the MarkTen XL housing [E] (MarkTen XL Figure 1.e). ¶64 col. 4:33-36
wherein the housing includes a solution holding medium...located in the interior of the housing The accused cartridges contain a solution holding medium, such as absorbent batting. A graphic shows this medium [L] inside the MarkTen XL housing [E] (MarkTen XL Figure 1.h). ¶67 col. 3:5-9
wherein the solution holding medium surrounds the airflow passageway in the interior of the housing The absorbent batting material [L] in the accused cartridges surrounds the central airflow passageway [J]. A graphic illustrates this with a top-down view and an "unfurled" view of the batting (MarkTen XL Figure 1.i). ¶68 col. 5:58-62
wherein the first end of the housing includes an electrically conductive threaded portion that is adapted to mechanically and electrically couple to the electrically conductive threaded portion of the power source The accused MarkTen XL and Green Smoke cartridges have a threaded metal portion that screws into the power source for both mechanical and electrical connection. A graphic shows the threads [K] on the cartridge end [F] (MarkTen XL Figure 1.g). ¶66 col. 1:63-67
wherein the heating element is electrically configured to vaporize...responsive to electrical power received...through the electrically conductive threaded portions The heating element in the accused cartridges vaporizes the solution when power is supplied from the battery via the coupled threaded portions. A graphic traces the electrical path from the battery [B] through the threaded contacts [C, K] to the heating element [N] (MarkTen XL Figure 1.k). ¶70 col. 4:45-53

Identified Points of Contention

  • Scope Question (Literal vs. DOE): For the MarkTen Elite product, which uses a magnetic connection, the complaint alleges infringement of the "electrically conductive threaded portion" limitation under the doctrine of equivalents (Compl. ¶¶155, 160). A central dispute will be whether a connection system using magnets and pressure-fit contacts (MarkTen Elite Figure 1.b, ¶155) is legally equivalent to the claimed threaded portion. The analysis will question whether it performs substantially the same function (mechanical and electrical coupling) in substantially the same way (magnetic attraction and direct contact vs. helical interlock) to achieve substantially the same result (a powered vaporizer).
  • Technical Question (Claim 16): The complaint alleges that the Green Smoke product meets the limitation of claim 16, which requires that "no portion of the solution holding medium intersects the central longitudinal axis" (Compl. ¶145). The complaint provides a top-down cutaway view purporting to show that the solution medium [L] does not cross the central axis [Q] (Green Smoke Figure 16.d, ¶150). The factual accuracy of this depiction and the precise location of the components in the actual product may become a point of technical dispute.

V. Key Claim Terms for Construction

  • The Term: "electrically conductive threaded portion"
  • Context and Importance: This term is the lynchpin of the infringement case. Its definition will determine whether the MarkTen XL and Green Smoke products infringe literally. Crucially, its scope will define the battleground for the doctrine of equivalents analysis regarding the MarkTen Elite product. Practitioners may focus on this term because a narrow construction requiring a helical screw-type interface would foreclose literal infringement by the MarkTen Elite, forcing the plaintiff to rely entirely on the more difficult-to-prove doctrine of equivalents.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party might argue that the specification's disclosure of alternative connection mechanisms—including "magnetic connection mechanisms, snaps, twist caps, push on connections" ('604 Patent, col. 3:5-8)—demonstrates that the inventors contemplated a variety of coupling structures, suggesting the "threaded portion" should not be interpreted as the only possible embodiment of the invention's core principle.
    • Evidence for a Narrower Interpretation: A party will argue that the plain language of the claim explicitly recites "threaded." The abstract, the primary embodiment shown in Figure 1, and the detailed description all refer specifically to a "threaded fastener" and "threaded receiver" ('604 Patent, Abstract; col. 1:63-67). This suggests the patentee deliberately chose the word "threaded" to distinguish the claimed invention from other connection types, and should be held to that specific language.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges contributory infringement, stating that Defendants sell the cartridges and power units separately (Compl. ¶198). It alleges these components are a material part of the invention, are not staple articles of commerce with substantial non-infringing uses, and are known by Defendants to be especially made for use in an infringing combination (Compl. ¶¶199, 205, 207). The complaint cites user guides that allegedly instruct customers on how to combine the components in an infringing manner (Compl. ¶¶202-204).
  • Willful Infringement: The complaint alleges that Defendants' infringement was willful and deliberate. The basis for this allegation is multi-faceted, including alleged actual notice of the '604 patent via direct communications in March 2017 and a formal license offer in May 2022 (Compl. ¶¶212, 41, 45). It further alleges Defendants knew or should have known of the patent through their own patent prosecution activities, where the '604 patent family was cited (Compl. ¶¶212, 200).

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

  • A core issue will be one of claim scope and equivalence: Can the term "electrically conductive threaded portion," which describes a screw-type connection, be found to read on the magnetic and electrical contact-based coupling mechanism of the MarkTen Elite product? The outcome for that product line will likely depend on the court's application of the doctrine of equivalents.
  • A second critical issue will be willfulness and damages: Given the strong allegations of pre-suit knowledge dating back to 2017, a key question for the court will be whether Defendants' continued sales constituted willful infringement, which could expose them to the risk of treble damages if infringement is found.
  • A third question will be factual and technical: For products accused of infringing dependent claims with specific geometric limitations, such as claim 16's requirement that the solution medium not intersect the central axis, the case may turn on a detailed factual analysis of the products' internal construction.