On June 30, 2023, JUUL Labs, Inc. and VMR Products LLC (collectively referred to as “JLI”) filed a complaint with the United States International Trade Commission (ITC), alleging that NJOY and its affiliated companies’ products, including the NJOY ACE, infringed four JUUL Labs patents: US11134722B2, US11606981B2, US10130123B2, and US10709173B2.
After multiple rounds of proceedings, the ITC issued a final ruling on January 29, 2025, determining that NJOY’s products infringed several claims of the asserted patents. NJOY’s attempt to invalidate the patents through an inter partes review (IPR) proceeding was unsuccessful, disproving the claim by some Chinese vaping companies that JUUL’s patents constitute “industry common knowledge.”
The 173 Patent Provides Broad Protection for Pod-Based Systems
JUUL Labs Inc. filed for this patent on July 10, 2018, with the earliest priority date being February 6, 2014 (US201461936593P, a time when the Chinese e-cigarette industry had not yet truly exploded). The patent was published on July 14, 2020 (with prior publication data: US2018317557A1, November 8, 2018).
What is claimed is:
1. An apparatus comprising:
a cartridge comprising a mouthpiece, a storage compartment configured to hold a vaporizable material, and a heater chamber comprising a resistive heating element configured to heat the vaporizable material, wherein the heating of the vaporizable material generates an aerosol comprising the vaporizable material and air passing along an airflow path; and
a body comprising a receptacle configured to insertably receive and couple to the cartridge, wherein the heater chamber is disposed within the receptacle when the receptacle insertably receives and couples to the cartridge,
wherein the airflow path comprises:
an air inlet passage having a first side formed by an exterior surface of the cartridge and a second side formed by an internal surface of the receptacle when the receptacle insertably receives and couples to the cartridge, wherein the air inlet passage is configured to deliver the air to the heater chamber; and a fluid connection in the cartridge, the fluid connection connecting the heater chamber and the mouthpiece.
Source: Figure 10B from the US10709173 Patent Description
From the perspective of professionals in the e-cigarette industry, the first two features of Claim 1 can be considered essential common features for most e-cigarettes, covering a wide range of devices.
As seen from Claim 1, the patent primarily protects the technical features of "an intake passage formed by the outer surface of the cartridge and the inner surface of the receiving seat, which delivers air to the heating chamber when the cartridge is inserted" and "the fluid connection inside the cartridge that links the heating chamber and the mouthpiece," specifically safeguarding the technical characteristics of the intake passage. As shown in Figures 10A, 10B, 10C, and 14, the device consists of a dual-channel intake path and a dual-channel exhaust path.
Explanation of the Scope of Protection in Patent US10709173
Regarding the intake passage formed by the gap between the cartridge and the receiving seat, JUUL Labs' patent provides relevant explanations and clarifications in the following sections:
（1）[0219] Provided herein is a device for generating an inhalable aerosol comprising: a device body comprising a cartridge receptacle; a cartridge comprising: a storage compartment, and a channel integral to an exterior surface of the cartridge, and an air inlet passage formed by the channel and an internal surface of the cartridge receptacle when the cartridge is inserted into the cartridge receptacle. ”
（2）[0256] Provided herein is a cartridge 30 for a device for generating an inhalable aerosol 10 comprising: a fluid storage compartment 32 ; a channel integral 40 to an exterior surface, wherein the channel forms a first side of an air inlet passage 51 ; and wherein an internal surface of a cartridge receptacle 21 in the device forms a second side of the air inlet passage 51 when the cartridge is inserted into the cartridge receptacle.”
（3）[0258] In some embodiments, the cartridge further comprises a second air passage 41 in fluid communication with the channel 40 , wherein the second air passage 41 is formed through the material of the cartridge 32 from an exterior surface of the cartridge to the internal fluid storage compartment 32 a.”
（4）[0259] In some embodiments of the device body cartridge receptacle 21 or the cartridge 30 , the integral channel 40 comprises at least one of: a groove; a trough; a depression; a dent; a furrow; a trench; a crease; and a gutter.”
（5）[0260] In some embodiments of the device body cartridge receptacle 21 or the cartridge 30 , the integral channel 40 comprises walls that are either recessed into the surface or protrude from the surface where it is formed.”
Analysis of NJOY ACE Product Infringement
From the analysis of claim 1, it is quite clear that the patent risk assessment (FTO) for the NJOY ACE product should not overlook this patent.
In the 337 investigation petition submitted by Juul to the ITC, it clearly describes how the NJOY ACE device and NJOY ACE Pods, collectively referred to as the "NJOY ACE system," infringe independent claim 1 of patent US10709173.
1[h] wherein the airflow path comprises:
The NJOY ACE System comprises an airflow path.
1[i] an air inlet passage having a first side formed by an exterior surface of the cartridge and a second side formed by an internal surface of the receptacle when the receptacle insertably receives and couples to the cartridge,
The NJOY ACE System comprises an airflow path comprising an air inlet passage having a first side formed by an exterior surface of the cartridge and a second side formed by an internal surface of the receptacle when the receptacle insertably receives and couples to the cartridge.
A comparison reveals that this is a very standard technical approach in the e-cigarette industry, as it is essential for air to enter the atomizer during inhalation; otherwise, the device would not work. Once the air enters and merges with the "aerosol," it then flows into the mouthpiece, reducing suction resistance, aerosol concentration, and temperature. The reference documents cited in this patent show that air enters from the bottom; however, regardless of where the air enters, its function seems to be self-evident.
NJOY’s Failed Attempt to Invalidate the 173 Patent
During the investigation, NJOY challenged the 173 patent’s validity, asserting it was obvious over prior art Verleur (US2015/0128971A1).
Verleur disclosed:
● Paragraph [0037]: windows 130 in the outer shell for viewing internal components, possibly slits but primarily intended for observation.
“[0037] One or more windows 130 may be provided in outer shell 106 (see FIG. 1). Windows 130 may be made of a translucent material, such as glass or substantially clear plastic, in order to view internal components of battery portion 100 . Window 130 may also be a slit cut into shell 106 . For instance, in one embodiment, window 130 may be provided on or proximate to cartomizer receiving segment 104 and, more particularly, cartomizer chamber 108 so as to permit a user of electronic cigarette 10 to view the cartomizer 200 when it is inserted into cartomizer chamber 108 .”
Source: Figure 1, US2015128971A1 Patent Description.
Based on the description in paragraph 0037, NJOY asserts that “even if the window 130 is not a slit, but is constructed of glass or plastic, holes are still required elsewhere in the housing to allow air to enter the gap between the atomizer 200/200A and the housing 106.”
The NJOY Parties map the passageway (“passage”) that the JUUL lab Parties seek to protect to the “gap that exists between the atomizer 200/200A and the housing 106” disclosed in D1. It is further asserted that because the gap extends along the entire length of the interface between the atomizer 200/200A and the housing 106, one of skill in the art would recognize that one or more holes or ducts could be provided anywhere along the entire length of the housing.
“[0039] The vaporized fluid may travel through an inhalation tube 222 in fluid connection with heating element 214 and wick 216 . Inhalation tube 222 may also be in fluid communication with one or more holes or ducts provided, for instance, in sides of outer shell 106 in order to permit air flow through cartomizer body 208 . ”
JUUL pointed out that NJOY modified FIG.1 in the Verleur patent (D1), referring to Window 130 as "slit 130" and removing its original window feature (Pet. 34). The modified version of NJOY's FIG. 1 also adds an air flow passage (light blue), located between the outer shell 106 (green) and the atomizer body 208 (orange). The passage flows downward from the inner side of the outer shell 106, bypasses the bottom of the atomizer body 208, then moves upward into the inhalation pipe 222, and finally exits through the mouthpiece 220 (bright orange).
JUUL claims that NJOY made three erroneous interpretations (or assumptions) about the comparison document D1, which prevent it from reasonably proving that the Verleur patent description has disclosed the features of claim 1 of the '173 patent.
The first erroneous assumption: NJOY believes that air enters the device through "slit 130," whereas Verleur actually describes this structure as "window 130" (window), and its function in the original text was for observation, not air intake.
In the enlarged Verleur FIG.1, window 130 is shown as "covered," rather than an open air intake passage. Moreover, the length of this "window" is not as long as described by the Petitioner.
The second erroneous assumption: NJOY assumes that there is a gap between Verleur's outer shell 106 and the atomizer 200, but JUUL argues that this assumption lacks support. Although a gap is indeed depicted in FIG. 1, Verleur never states that this gap is for air flow—in fact, Verleur does not describe it at all. As shown in the figure below, in the modified Verleur FIG. 1 by NJOY, the gap (light blue section in the right image) is drawn wider than in the original FIG. 1 (light blue section in the left image), thereby exaggerating this structure.
NJOY believes there is an airflow opening at the bottom center of the detachable atomizer, which allows air to enter the atomizer 200 (i.e., the heating chamber) through the so-called gap. However, JUUL argues that Verleur does not disclose the presence of such an air path. Verleur does not describe or show any such opening, and in fact, what is disclosed at that position is an electrical contact point. NJOY modified FIG. 1 to depict such an opening. But as highlighted in the red box in the figure below, the original FIG. 1 does not depict such an opening.
The PTAB found NJOY’s arguments unconvincing and ruled that Verleur did not disclose features rendering JUUL’s claims obvious.
Accordingly, the PTAB denied institution of an inter partes review.
（1）Verleur（D1）：“The shell may include a window provided at the cartomizer receiving segment so that a portion of the chamber is visible from outside the shell.”
（2）Verleur（D1）：“[0037] One or more windows 130 may be provided in outer shell 106 (see FIG. 1). Windows 130 may be made of a translucent material, such as glass or substantially clear plastic, in order to view internal components of battery portion 100 .”
（3）Verleur（D1）“At least a portion of body 208 may be composed of translucent or substantially translucent material, such as glass or plastic, so that a user may see fluid 300 A held within. The portion of body 208 composed of translucent material may be alignable with window 130 and may be proximate to LED lights or fiber optics so as to illuminate cartomizer 200 A as it is inserted into chamber 108 . ”
Based on the above reasons, the PTAB determined that NJOY failed to demonstrate a reasonable likelihood of prevailing on at least one challenged claim in its petition for inter partes review. Therefore, the PTAB denied the petition and decided not to institute a review of the ’173 patent.
Continuing Patent Risks for Chinese Exporters
On January 30, 2024, PAX Labs launched another Section 337 complaint against ALD, demonstrating that JUUL’s patent portfolio remains aggressively enforced.
In the case against NJOY, Juul's victory over its former major shareholder, Altria Group, Inc., undoubtedly boosts its confidence in compliant pod-based products. Amid the momentum of U.S. trade sanctions on China and the crackdown on illegal e-cigarette trade, we predict that Juul may seize this opportunity to "become a hero again" in these chaotic times. The PAX Labs + JUUL Labs "8-piece" patents could potentially target more Chinese companies, which warrants caution.
It is advisable for e-cigarette (including CBD) manufacturers, especially those exporting pod-based or disposable closed-system products to the U.S., to proactively redesign their products to avoid infringement or prepare to challenge Juul’s patents with invalidation tools.
This patent battle between JUUL Labs and NJOY not only underscores fierce competition in technical innovation and intellectual property enforcement within the vaping sector but also serves as a wake-up call for companies worldwide.
