Half-time in the e-cigarette battle between NJOY and Juul Labs

The parties in the battle over vaporizer patents have reached a tie after four rulings by the Paris central division. Today, the court upheld a key Juul Labs patent and dismissed NJOY's revocation action. But the dispute will continue next week.

 

It is one of the largest sets of proceedings at the UPC. This November, the Paris central division has handed down the first four judgments in the nine revocation actions brought by NJOY Netherlands against Juul Labs and its subsidiary VMR Products. The patents concern Juul Labs’ vaporizer technology. The parties are now at a draw.

 

Today, the central division announced the fourth judgment, which rejected NJOY’s revocation claim against EP 2 875 740 (case ID: UPC_CFI_307/2023). The patent belongs to VRM Products. The 2nd panel, consisting of presiding judge Paolo Catallozzi, Tatyana Zhilova and technically qualified judge Max Tilmann, assessed the innovation protected by the patent as novel and inventive and confirmed the patent in its entirety. The judgment has not yet been published on the UPC website, but was made available to JUVE Patent.

 

 

Two days earlier, the same panel had declared EP 3 456 214, which also belongs to VRM, invalid in its entirety (case ID: UPC_CFI_308/2023). The judges consider the invention to be novel but not inventive.

 

The judgments in the first two actions handed down by the Paris central division’s 1st panel were similarly mixed. The panel included presiding judge François Thomas and Maximilian Haedicke as well as technically qualified judge Max Tilmann. Tilman is a former partner of Düsseldorf based IP firm König Szynka Tilmann von Renesse, who is now the only judge involved in all nine proceedings between NJOY and Jull Labs.

 

On 5 November, the 1st panel confirmed EP 3 504 991 as inventive (case ID: UPC_CFI_315/2023), although the EPO Opposition Division had revoked it in November 2023 due to an added matter problem. Juul Labs has already filed an appeal against the decision with the EPO Boards of Appeal.

 

On the same day, the Paris central division decided on NJOY’s revocation action against EP 3 498 115, which also belongs to Juul Labs. The UPC judges declared the patent invalid for lack of clarity (case ID: UPC_CFI_309/2023).

 

 

The losing companies can still appeal against all judgments, which is likely given the scope of the dispute. In any case, the UPC is more of a sideshow. The real dispute is currently playing out in US courts.

 

In June 2023, Juul Labs filed several patent infringement proceedings against NJOY in the US, with NJOY later launching its counterclaims. According to press reports, both companies launched several infringement, revocation and ITC actions against each other.

 

The dispute is particularly interesting because Marlboro maker Altria Group bought Juul for $12.8 billion in 2018. However, after the US Food and Drug Administration expressed concerns about its Juul products, Altria acquired a stake in NJOY in March 2023.The patent dispute between the two companies began shortly afterwards.

 

 

In Europe, the central division has scheduled three more hearings over the next two weeks on NJOY’s revocation claims against EP 3 626 092, EP 3 613 453 and EP 3 504 989. Last week, the court already heard NJOY’s revocation claims against EP 3 430 921 and EP 3 504 989. The next rulings are expected in January at the earliest.