DCT
3:23-cv-00348
Fuma International LLC v. Altria Group, Inc.
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Fuma Intl LLC (Ohio)
- Defendant: Altria Group, Inc.; Nu Mark LLC; Altria Group Distribution Co; and Altria Client Services LLC (Virginia)
- Plaintiff’s Counsel: The Law Firm of Brandon M. Jordan PLLC
- Case Identification: 3:23-cv-00348, E.D. Va., 05/26/2023
- Venue Allegations: Venue is asserted on the basis that Defendants are incorporated in, reside in, and have committed acts of infringement in the Eastern District of Virginia.
- Core Dispute: Plaintiff alleges that Defendant’s MarkTen XL, Green Smoke, and MarkTen Elite electronic cigarette products infringe a patent related to the fundamental design of electronic vaporizers.
- Technical Context: The technology concerns the mechanical and electrical architecture of "cig-a-like" electronic vaporizers, a product category that became a significant alternative to combustible cigarettes.
- Key Procedural History: The complaint alleges that Plaintiff Fuma previously sued R.J. Reynolds Tobacco Company over the same patent family, resulting in a November 2021 settlement in which R.J. Reynolds purchased a license. It also alleges that Fuma directly notified Altria of the patent-in-suit in March 2017 and later offered a license in May 2022, which Altria did not accept.
Case Timeline
| Date | Event |
|---|---|
| 2009-07-27 | Earliest Priority Date for U.S. Patent No. 9,532,604 |
| 2009-08-12 | Fuma introduces its new e-cigarette device to the market |
| 2009-09-17 | Fuma receives commercial versions of its e-cigarette |
| 2012-01-01 | Nu Mark established as an operating company of Altria |
| 2013-01-01 | Nu Mark introduces its first e-vapor product, MarkTen King Size |
| 2014-04-01 | Nu Mark acquires the Green Smoke e-vapor business |
| 2015-01-01 | MarkTen XL launched (inferred) |
| 2017-01-03 | U.S. Patent No. 9,532,604 issues |
| 2017-03-03 | Fuma allegedly informs Altria of the newly issued '604 Patent |
| 2018-02-01 | Defendants introduce the MarkTen Elite product |
| 2021-11-01 | Fuma and R.J. Reynolds settle litigation involving the '604 patent family |
| 2022-05-20 | Fuma sends a letter to Altria offering to license the Fuma patents |
| 2023-05-26 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,532,604 - "Electronic Vaporizer"
- Patent Identification: U.S. Patent No. 9,532,604, "Electronic Vaporizer," issued January 3, 2017.
The Invention Explained
- Problem Addressed: The complaint suggests that early-generation e-cigarettes were "deficient in numerous ways" (Compl. ¶10). The patent describes the basic components of existing electronic cigarettes, implying a need for improved structural arrangements that are efficient to manufacture and provide a consistent user experience ('604 Patent, col. 1:16-28).
- The Patented Solution: The invention is a two-part electronic vaporizer, comprising a reusable power source and a disposable cartridge. The patent describes a specific cartridge architecture where a "solution holding medium" (e.g., an absorbent material) surrounds a central "airflow passageway," with a heating element positioned to vaporize liquid drawn from the medium into the user's airflow ('604 Patent, Fig. 2; col. 6:1-19). This design separates the vapor path from the bulk liquid storage, and it relies on an electrically conductive coupling (e.g., threads) to connect the cartridge to the power source ('604 Patent, col. 3:1-8).
- Technical Importance: This cartridge-based design, which more closely mimicked the experience of using a traditional cigarette, was alleged to be a significant improvement over prior e-cigarette designs and was met with commercial success (Compl. ¶¶22-23).
Key Claims at a Glance
- The complaint asserts infringement of claims 4, 6, 12, 13, 14, 15, 16, and 18. The primary independent claims from which these depend are Claim 1 and Claim 12.
- Independent Claim 1: An apparatus comprising:
- a power source with a battery and an electrically conductive threaded portion; and
- a cartridge with a housing, a first end with a first aperture, and an opposite second end with a second aperture;
- an airflow passageway extending centrally and axially between the apertures;
- a solution holding medium that "surrounds the airflow passageway";
- a heating element configured to vaporize the solution;
- wherein the cartridge's first end has an electrically conductive threaded portion adapted to couple with the power source's threaded portion.
- Independent Claim 12: An apparatus comprising:
- an "electronic cigarette cartridge" with a housing "constructed of a non-metallic material";
- the cartridge includes an interior, two ends, a heating element, and a central/axial airflow passageway;
- a solution holding medium "in surrounding relation of the heating element and the airflow passageway";
- an electrically conductive threaded portion on one end for coupling to a power source.
- The complaint reserves the right to assert other claims (Compl. ¶57, implicit).
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-part electronic cigarettes consisting of a rechargeable power unit and a disposable cartridge (referred to as a "cartomizer" or "pod") containing a nicotine solution, absorbent material, and a heating element (Compl. ¶¶58-70). A side-by-side, cutaway comparison of the Altria Green Smoke and Fuma E-Cigarette is provided to show their alleged structural similarity (Compl. ¶47, Image). The complaint alleges that when a user draws on the device, the power unit is activated, heating the element to create an inhalable vapor (Compl. ¶70).
- The complaint asserts these products were part of Altria's multi-billion dollar effort to enter the e-vapor market after its internal development projects failed (Compl. ¶¶30, 36). The MarkTen XL was launched in 2015, and the MarkTen Elite was introduced in February 2018 (Compl. ¶¶37, 43).
IV. Analysis of Infringement Allegations
'604 Patent Infringement Allegations (Claim 1, based on MarkTen XL)
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a power source, wherein the power source includes a battery | The accused MarkTen XL includes a power source component containing a battery. Figure 1.a from the complaint shows the power source [A] and its internal battery [B]. | ¶60 | col. 4:5-6 |
| wherein the power source includes an electrically conductive threaded portion | The MarkTen XL power source has an electrically conductive threaded portion [C] for connecting to the cartridge. This is depicted in Figure 1.b. | ¶61 | col. 2:63-67 |
| a cartridge having a housing that comprises an interior | The MarkTen XL includes a disposable cartridge [D] with a housing [E] and an interior. Figure 1.c shows a cutaway view of the cartridge interior. | ¶62 | col. 4:9-10 |
| wherein the housing includes an airflow passageway that extends centrally and axially | The housing contains an airflow passageway [J] that runs centrally along the device's axis. Figure 1.e provides a cutaway view illustrating this passageway. | ¶64 | col. 4:33-37 |
| wherein the solution holding medium surrounds the airflow passageway in the interior of the housing | An absorbent "batting" material [L] allegedly acts as the solution holding medium and surrounds the central airflow passageway [J]. This arrangement is shown in Figure 1.i. | ¶68 | col. 4:18-22 |
| 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 cartridge's first end [F] has threads [K] that are conductive and designed to screw into the power source's corresponding threads [C]. Figure 1.g illustrates this connection. | ¶66 | col. 3:1-8 |
| wherein the housing includes a heating element located in the interior of the housing | A heating element [N] is located inside the cartridge housing. Figure 1.j shows the heating element within a cutaway view of the cartridge. | ¶69 | col. 4:55-56 |
Identified Points of Contention
- Doctrine of Equivalents: For the MarkTen Elite product, the complaint explicitly alleges that its magnetic connection with electrical contacts infringes the "electrically conductive threaded portion" limitation under the doctrine of equivalents (Compl. ¶¶155, 160, 183). The complaint argues the magnetic connection is "insubstantially different" and performs the same function (mechanical and electrical coupling) in the same way to achieve the same result (vapor generation) (Compl. ¶155). This presents a classic question of factual and legal equivalence for the court.
- Scope Questions: Claim 12 requires a housing "constructed of a non-metallic material." The complaint alleges the MarkTen XL's "polymer label and endcap" satisfy this (Compl. ¶84). This raises the question of whether a product with a structural metal chassis covered by a polymer label is "constructed of" a non-metallic material as required by the claim.
- Technical Questions: Claim 16, asserted against the Green Smoke product, includes the negative limitation "wherein no portion of the solution holding medium intersects the central longitudinal axis" (Compl. ¶145). The complaint provides Figure 16.d, a top-down view, to show that the medium does not intersect the axis (Compl. ¶150). The factual accuracy of this depiction and whether it meets the claim limitation will be a key technical question.
V. Key Claim Terms for Construction
The Term: "electrically conductive threaded portion"
- Context and Importance: This term's construction is central to the infringement analysis for the MarkTen Elite product, which uses a magnetic connection instead of threads. Practitioners may focus on this term because the Plaintiff's case for the MarkTen Elite hinges on the doctrine of equivalents, making the precise scope of the literal claim language paramount.
- Intrinsic Evidence for a Broader Interpretation: Plaintiff may argue the specification's focus is on the function of providing a secure "mechanically and electrically" coupled connection, not just the threading structure itself (e.g., ’604 Patent, col. 2:63-3:2).
- Intrinsic Evidence for a Narrower Interpretation: Defendant may argue the term is unambiguous and that the specification repeatedly describes the preferred embodiment using a "threaded fastener" and "threaded receiver," limiting the scope to screw-type connections ('604 Patent, col. 2:63-67).
The Term: "housing is constructed of a non-metallic material" (from Claim 12)
- Context and Importance: This term is a key limitation of independent claim 12. Its construction will determine whether products like the MarkTen XL, which the complaint alleges has a "polymer label and endcap" over a potentially metallic body, infringe this claim (Compl. ¶84).
- Intrinsic Evidence for a Broader Interpretation: Plaintiff might argue that if the exterior and key components are non-metallic, it meets the spirit of the claim, and that "constructed of" does not mean "exclusively constructed of." The specification lists "polymer, wood, ceramic or any combination thereof" as examples ('604 Patent, col. 1:41-44).
- Intrinsic Evidence for a Narrower Interpretation: Defendant could argue that "constructed of" refers to the primary structural material of the housing, and a mere label or endcap does not change the fundamental construction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges contributory infringement under 35 U.S.C. § 271(c), asserting that the accused cartridges and power units are material components of the patented invention that have no substantial non-infringing use because they can only be used with each other (Compl. ¶¶198-199, 205-206). It further alleges inducement based on Defendant's user guides, which allegedly instruct customers on how to assemble and use the products in an infringing manner (Compl. ¶202).
- Willful Infringement: The willfulness claim is based on alleged pre-suit knowledge of the '604 Patent. The complaint alleges that Fuma's founder directly informed an Altria director about the patent in March 2017, that Altria cited Fuma's patent family during its own patent prosecution, and that Fuma sent a formal notice letter with claim charts in May 2022 (Compl. ¶¶200, 212).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of equivalence versus literal scope: Can the MarkTen Elite's magnetic connection be proven "insubstantially different" from the "electrically conductive threaded portion" recited in the claims, or did the patentee limit the invention to a screw-on design? The outcome of this DOE analysis will determine liability for an entire product line.
- A key question for claim construction will be definitional: Does a housing with a "polymer label and endcap" over a potentially metallic body meet the "constructed of a non-metallic material" limitation of Claim 12, or is this limited to housings whose primary structure is non-metallic?
- Finally, a critical evidentiary question will be one of scienter: Given the detailed allegations of direct communication, patent prosecution citations, and formal notice letters, the court will have to determine whether Altria's alleged infringement, if any, was willful, which could significantly impact the scope of damages.