By Tiffany Hu
Law360 (October 4, 2018, 3:54 PM EDT) -- E-cigarette company Juul on Wednesday hit several competitors with a complaint at the U.S. International Trade Commission, accusing them of selling and importing copycats that infringe on its patents and use inappropriate flavors targeted toward children.
Following the U.S. Food and Drug Administration’s order last month for manufacturers to come up with plans to keep their products out of children’s hands, Juul Labs Inc. has urged the ITC to investigate several companies located in the U.S., China, Uruguay and France that sold e-cigarettes that allegedly infringed on four patents for vaping technology.
In a press release, Juul claimed that while it has taken great pains to market the e-cigarettes to adults only, these competitors were using "inappropriate flavors," such as “Bubble Bubble,” “Apple Juice” and "Sour Gummy,” as a way to entice children.
“The rapid proliferation of products infringing on our intellectual property continues to increase as our market share grows,” Juul CEO Kevin Burns said in the release. “Protecting consumers and preventing underage use are critical priorities, and we will take decisive action where available to restrict illegal copycat products that undermine our efforts.”
The patents at issue relate to electronic nicotine delivery systems, or ENDS, containing liquid nicotine pods, which purport to be a safer alternative to regular cigarettes, according to filings.
Juul alleged that its competitors — naming J Well France SAS, Eonsmoke LLC, ZLab SA, XFire Inc., among others — were selling look-alike e-cigarettes at cheaper prices, without maintaining the same quality control. These companies own liquid nicotine manufacturing and pod filling operations in China that likely do not comply with FDA regulations, according to the complaint.
More alarming, Juul said, its rivals seemed to be making only “half-hearted attempts” to stop children from using the products. While Juul claimed that it has set aside at least $30 million for research and education efforts on limiting youth use as well as teamed up with an age verification service to ensure that its products are sold online to individuals 21 and over, its competitors made their products easily purchasable online.
“And in contrast to [Juul’s] simple, adult-oriented flavors such as Mango and Virginia Tobacco, many of the respondents sell pods in a variety of flavors having obvious, if not deliberate, youth appeal, such as 'Bubble Bubble,' 'Apple Juice,' 'Pineapple Crush,' 'Citrus Burst,' 'Sour Gummy,' and 'Strawberry Milk,' to name a few,” the complaint reads.
Juul asked the ITC to block the companies from illegally importing the e-cigarettes into the U.S., noting that the “immediate need for corporate responsibility,” especially towards children, require only “high-quality” ENDS to be available in the market.
The patents-in-suit are U.S. Patent Numbers 10,070,669, 10,076,139, 10,045,568 and 10,058,130.
Juul is represented by Daniel E. Yonan, Michael E. Joffre, Nirav N. Desai, Paul A. Ainsworth, Uma N. Everett and Jonathan Tuminaro of Sterne Kessler Goldstein & Fox PLLC.
Counsel information for the respondents was not immediately available.
The investigation is In the Matter of Certain Electronic Nicotine Delivery Systems and Components Thereof, investigation number unavailable, before the U.S. International Trade Commission.
--Additional reporting by Mike Curley. Editing by John Campbell.