Juul Files Dozens of Patent Complaints Against “Illicit Black Market Products”

Although Juul Labs Inc. is frequently involved in lawsuits as a defendant, often regarding health issues allegedly caused by its products, the company switched roles on Friday by filing 49 patent complaints in various courts petitioning against vaping businesses involved with JUUL compatible pods and other products.

In a press release, the company claimed the infringing products are often “illicit black market products.” The complaints continue previous legal action taken by the company, which has already halted importation of over 40 brands of Juul-compatible products.

“With this new action, Juul Labs seeks an even larger impact with a remedy that will not only bar the pod products named in the complaint, but will also bar all other infringing pod products that copy Juul Labs’ patented designs,” the release stated.

Juul Labs Inc. represented by Carter Arnett and Quinn Emanuel Urquhart & Sullivan, alleges that the defendants in the cases infringed U.S. Patent No. D842,536; U.S. Patent No. D858,870; U.S. Patent No. D858,869; and U.S. Patent No. D858,868. The patent applications were filed in July 2016 and August 2018; the patents were reportedly co-invented by Adam Bowen, Steven Christensen, Christopher Nicholas HibmaCronan, James Monsees, and Joshua Morenstein.

The patents involved in the lawsuits relate to vaping equipment, including vaporizer cartridge patents which the companies have allegedly been making, importing, and selling, specifically in ES JUUL Compatible Pods products. In the complaints, Juul Labs asked for the defendants to be restrained from manufacturing and selling the products and for an award of damages based on alleged willful infringement. The defendants include manufacturers, direct sale companies, and distributors.

Juul Labs also filed a complaint with the International Trade Commission (ITC) against the same companies on Friday, which further explains the allegedly infringing technology involved in the patents-in-suit. The ITC complaint claimed new infringing products appear in the United States market almost daily, and look almost identical to JUUL products.

In its press release regarding the ITC complaint, Juul Labs stated, “the action seeks a General Exclusion Order barring the importation of any infringing, unauthorized pod-based product designed to be used with the JUUL System, including compatible flavored pods and refillable pods, effectively eliminating a sector of illicit products that seek to circumvent federal policy, can present additional health and safety risks to adult consumers, and undercut underage-prevention measures.”

The ITC complaint requests an investigation into Tariff Act violations by the defendants and that the Commission issue a permanent general exclusion order stopping the infringing products from entering the United States.