BAT’s Vuse vapes infringe Fuma e-cig patents
British American Tobacco’s (BAT) Vuse e-cigarettes infringe patents owned by rival tobacco company Fuma International, a US court has ruled, with one remaining infringement issue to be decided at trial.
The US District Court for the Middle District of North Carolina ruled on Monday, May 24 that the Vuse Solo and Ciro products infringe parts of two Fuma electronic vape technology patents.
The two infringed Fuma patents (US numbers 9,532,604 and 10,334,881) both cover a modular cartridge and power source e-cigarette design. Ohio-based Fuma claimed the BAT products were “substantially the same in specification” to the patented designs.
The court ruled that the Ciro infringed the ‘604 patent, while both the Ciro and Solo products infringe the ‘881 patent. The court left the issue of whether the Solo also infringes the ‘604 patent to be decided at trial.
BAT subsidiary RJ Reynolds contends, meanwhile, that the Fuma patents are invalid. A spokesperson from RJ Reynolds told WIPR: "From the outset of this litigation, Reynolds has denied infringement of the Fuma patents. Reynolds disagrees with the court’s infringement rulings, which are appealable. These rulings do not address the invalidity of the Fuma patents. Reynolds looks forward to proving at trial that the Fuma patents are invalid and demonstrating non-infringement of the ’604 patent by the Vuse Solo."
Fuma first filed the complaint in June 2019, alleging that RJ Reynolds had copied its patented designs after a short meeting with the company in 2010, in which a Reynolds employee had asked Fuma’s founder to detail the design and principles of one of its e-cigarette devices. Reynolds subsequently released its Vuse Solo devices in 2012, having declined to enter into a business partnership with Fuma.
“The Vuse Solo and Vuse Ciro are substantial copies of the structure of the Fuma e-cigarette samples that were provided to Reynolds in 2010,” Fuma said in the original complaint.
Prior to the judgment, both parties agreed that the Solo and Ciro “met the elements of the patents” with three disputed exceptions—whether the Solo’s coupling features infringed on the ‘881 patent, whether the direction of Ciro’s airflow infringed on both patents, and whether Solo contained an “electrically conductive thread”. Both parties moved for summary judgment on the first two exceptions whilst Reynolds alone moved for summary judgment for the third.
Judge Eagles ruled on two of the exceptions, finding that the Reynolds products had infringed, but denied summary judgment on the “electrically conductive thread” issue. This will be left for trial at a later date.
E-cig litigation
BAT is currently involved in a global patent dispute with Philip Morris International (PMI) over PMI's IQOS tobacco-heating devices, intended as an alternative to e-cigarettes.
This March, the English High Court invalidated two BAT patents for lacking an inventive step, clearing PMI of infringing the IP. The dispute also encompasses litigation at the European Patent Office and US International Trade Commission (ITC).
On May 15, an ITC judge issued an initial determination on the lawsuit, finding that Philip Morris infringed BAT patents and violated section 337 of the Tariff Act. This could lead to an import ban of Philip Morris’s IQOS tobacco products into the US.
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