Category: Intellectual Property

  • Trial Board Upholds Validity VPR Patent

    Trial Board Upholds Validity VPR Patent

    Illustration: VPR Brands

    The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) upheld the validity of a VPR Brands patent that is considered one of the first patents for modern electronic nicotine-delivery system (ENDS) products.

    The PTAB denied an appeal by Jupiter Research to invalidate VPR’s U.S. Patent 8,205,622 B2. The decision of the PTAB final.

    The VPR patent dates to 2009 and includes independent claims covering electronic cigarette products containing an electric airflow sensor, including a sensor comprised of a diaphragm microphone.

    The sensor turns the battery on and off, and covers most auto-draw, buttonless e-cigarettes, cigalikes, pod devices and vaporizers using an airflow sensor rather than a button.

    According to VPR, the PTAB’s decision clears the way for infringement litigation against Jupiter pending in the District of Arizona.

    VPR Brands and its legal representative, SRIPLAW, have started to identify and notify more than 50 of the leading companies using the auto-draw technology. VPR Brands says it intends to vigorously enforce its patent.

    “These companies were prioritized, based on sales volume and popularity,” VPR wrote in a press release. “Most recently VPR Brands LP and its legal team, headed by Joel B Rothman of SRIPLAW, have filed litigation against nine of the companies. Additional lawsuits will continue to be filed as necessary to protect the company’s intellectual property rights.”

    A majority of the vaping devices sold in the U.S. now utilize an auto-draw/button-less technology. The company is investigating all buttonless vape devices within the nicotine, CBD and cannabis space that initiate vaporization from the user’s airflow inhalation as those types of products would be suspect of infringement.

    The company may also seek a buyer for this patent in the future. In August 2013, Imperial Tobacco Group (now ITG Brands) purchased the intellectual property behind the Ruyan e-cigarette, often considered the first modern ENDS product, for $75 million.

  • RJR Vaping Technology Claims Invalidated

    RJR Vaping Technology Claims Invalidated

    Photo: utah51

    A U.S. administrative tribunal has invalidated two claims in a R.J. Reynolds vaping patent, reports Law360.

    The Patent Trial and Appeal Board said on June 30 that two claims in U.S. Patent No. 9,814,268, which covers “a tobacco-containing, electrically-powered smoking article” designed to burn a minimal amount of tobacco, can’t stand because they are obvious in light of previous e-cigarette patents.

    The ruling represents a second win for Philip Morris Products after a Virginia federal jury awarded it more than $10 million last month in drawn-out clash between the tobacco giants.

  • Jury Awards PMI $10.7 Million in Patent Case

    Jury Awards PMI $10.7 Million in Patent Case

    Photo: md3d

    A U.S. jury awarded Philip Morris International $10.7 million on June 15 after finding that R.J. Reynolds Vapor Co.’s Vuse e-cigarettes violate its patent rights, reports Reuters.

    The federal court jury in Alexandria, Virginia, said RJR’s Vuse Solo and Alto devices infringe two PMI patents covering parts of a vaping device for heating substances and preventing leaks. At the same time, the jury cleared Vuse Alto of infringing one of the patents.

    A Philip Morris spokesperson told Reuters the company was “grateful” for the verdict, which “rejects an attempt by BAT to free-ride on our hard work and investment.”

    A spokesman for RJR indicated it may appeal the June 14 verdict.

    The case is part of a multi-front patent dispute between PMI and RJR parent company British American Tobacco.

    The recent verdict concerned counterclaims in RJR’s ongoing patent lawsuit over PMI’s IQOS heated-tobacco device. RJR won an order blocking IQOS imports at the U.S. International Trade Commission last November.

    PMI succeeded earlier this year in invalidating parts of some patents RJR accused it of infringing at a U.S. Patent Office tribunal.

    BAT has also sued PMI over IQOS in the United Kingdom, Germany and elsewhere. A PMI filing with the U.S. Securities and Exchange Commission earlier this year said IQOS patent lawsuits and challenges outside of the U.S. have “repeatedly and universally failed.”

    Altria has separately sued RJR for patent infringement in North Carolina over the Vuse line, in another case that is still pending.

  • Out of the Box

    Out of the Box

    Photo: 3dsculpto

    Roya Ghafele believes the industry should think more creatively about intellectual property.

    By George Gay

    Having spoken with Roya Ghafele, I cannot imagine her giving a PowerPoint presentation, though I could imagine her giving two or three separate presentations simultaneously on the same subject with each delivering different, cogent arguments and plausible conclusions. This is not to say she is uncommitted. When it comes to the big picture, she is almost unbending. She believes in the efficacy of, among other things, capitalism, markets and private property, including intellectual property (IP), on all of which she is fully qualified to comment. But, encouragingly to my way of thinking, she is not afraid of embracing contradictions. She clearly understands that the devil is in the details and that people and companies have to make choices when considering questions about, for example, IP management strategies.

    The good news is that Ghafele has an encouraging message for the tobacco industry. Because the industry, at least the product manufacturing sector of the industry, is relatively new to patents, it has, she says, an opportunity, indeed, a responsibility, to use them to advantage—to the advantage of the companies involved and the public at large. But there’s a snag. Ghafele believes that realizing this opportunity and fulfilling this responsibility won’t be easy. It will involve avoiding pitfalls set by some deeply ingrained but unhelpful thinking around patents—thinking that could slow the industry’s transition at a time when progress toward less risky products, the main subject of patents within the tobacco and nicotine manufacturing sector, needs to be fast.

    Ghafele’s academic and professional credentials are too numerous to list here but suffice to say her doctorate was awarded the Theodor Koerner Research Prize by the president of Austria, and she previously worked for both the Organization for Economic Co-operation and Development and the U.N.’s World Intellectual Property Organization. She is the founder and managing director of the law and economics consultancy OxFirst, which has won a number of prestigious awards for its work on IP.

    Roya Ghafele believes the nicotine industry should move away from the current disputative approach to patents and toward a collaborative approach, citing the example of Austria’s Empress Maria Theresa. Instead of indulging in the sorts of wars beloved of most people obsessed with empire building, Maria Theresa in the 18th century created strategic marriages for her children, thus ensuring the prosperity and expansion of Austria within a relatively peaceable Europe.

    One of the first points Ghafele made during a telephone chat in April was that, particularly in the tobacco industry, there needed to be a change in how those involved in such matters thought about IP. Not that current thinking was necessarily wrong, it was just that it wasn’t out of the box. She wants people to be creative about their IP and innovative in the way they think about patents. But what they had largely done so far, she said, was to follow the precise wording of the IP and patent rules set in stone since time immemorial. Companies had hired top law firms, and, given that litigating over patents was a lucrative business for lawyers, the result had been inevitable.

    This was not the place the industry needed to be, according to Ghafele. Tobacco companies currently sold toxic combustible cigarettes, a business model without a future, so the only chance these companies had to survive largely in their present form rested on changing the business model by using innovation to produce better, less risky products and innovation required, or at least was greatly assisted by, the creative use of patents. Litigation over patents would merely slow the transition to better products, which was not in the best interests of either the companies concerned or consumers.

    It is important to note, though, that this is not some pipe dream where companies turn into charitable trusts and markets turn into love-ins. Patents could be used as building blocks and instruments of change in order to grow businesses and make them better, Ghafele said. They could be used constructively to gain market share and trust and to fulfil the public health responsibilities companies have by providing as many consumers as possible with technologically better, less risky products and in the fastest time possible.

    If some of this sounds lacking in specifics, it’s not surprising, I think. The opportunities on offer are wide ranging, and they could be applied only in accordance with a number of variables that would apply uniquely to the business model of the company concerned, the products in question, the potential for technological development of those products, the company’s consumer profile and the public interest, to name just a few.

    But one problem with much of the above is that it seems difficult to understand how a company could use patents without at times litigating against those who infringe them, and Ghafele is well aware of this, admitting that what she was advocating sounded like the peaceful use of weapons—a contradiction. It was true that patents provided exclusivity in the market and a 20-year monopoly, but there were other ways of looking at things, especially if the field were opened up to the thinking of people from outside the usual IP establishment, even people with crazy ideas.

    Ghafele, an Austrian, made the point that she thought we needed to move away from the current disputative approach to patents and toward a collaborative approach. And she gave as an example of what she meant the case of Empress Maria Theresa of Austria, who, in the 18th century, instead of indulging in the sorts of wars beloved of most people obsessed with empire building, created strategic marriages for her children, thus ensuring the prosperity and expansion of Austria within a relatively peaceable Europe.

    At a fundamental level, Ghafele is concerned about the way businesses approach the whole process of patent management. To her way of thinking, business cases need to be aggressively thought out before new technologies and patents are devised and sought, whereas, too often, patents are created before it is figured out whether the underlying technology would ever be needed by the company. This could be done way better by, from day one, expending energy on examining the business proposition. How is this technology and how are these patents going to help us gain market share; how are they going to help us expand into new markets; how are they going to help us gain more friends …?

    You can see this idea coming through in her wider thinking about IP, a term she prefers to intellectual property rights because the former puts the business center-stage while the latter tends to put the spotlight on the law. Ghafele sees IP and patents not mainly as rights but as assets, as presenting an “amazing economic opportunity” because private property, including knowledge, could be handled in many different ways. It could be used in trade, she said; it could be taken to another country; it could be used to better communicate a company’s value and thereby to attract investors; it could be used to communicate a public health interest and how it is doing good; it could even be used as a donation. To use such assets only as rights and to litigate was to undervalue them massively.

    Although Ghafele is committed to considering new ways of looking at patents, she is not in the business of doubting whether patents should have a place within a free market. Concepts around private property were essentially down to political choices, she said, and it was her take that having in place private property rights was a way of structuring markets. She made the point that research had shown that, in the absence of private property rights, markets, in developing countries for instance, didn’t work. And she added that she tended to the opinion that, historically, positive economic growth rates had shown a direct relationship with the presence of property rights, something that held for IP rights. This was the area of Ghafele’s ideas that I found the least convincing, partly because I fail to see how research into the economic benefits of the patents system could produce valid outcomes, and I did manage to extract something of a concession here. “On the other hand, does an economy have to grow?” she mused out loud. “Would we all not be more happy and less stressed out without chasing growth rates all the time?”

    But this was a short interruption to her flow, and she went on to say that innovation drove growth, so it was important to examine the whole spectrum of how to innovate, which included the management of patents but went beyond patents into areas such as open access innovation, a subject too vast to look at here. But again, she doubled back by saying that while growth was important, it had to comprise equitable economic growth. And that was why public interest considerations had to be built into patents management. There was nothing inherently good or bad in patents. It was how people managed patents that counted. And, inevitably, there was a lot of debate currently about where the consumer stood in all of this.

    Finally, Ghafele said it should be remembered above all that IP was an asset, an economic opportunity, and it needed to be traded in a way that this economic opportunity could help people. Behind all the jargon, the message, to the tobacco industry at least, was very simple: If you have property rights over your technology, you should use them in a responsible way—to save lives.

    George Gay is Tobacco Reporter’s European editor, but his territory spans the globe. Based in London, George has covered the tobacco industry since 1982, initially for a U.K.-based publication and since 2004 for Tobacco Reporter. George’s understanding of industry issues, combined with his keen sense of observation and dry wit, have earned him a loyal following among Tobacco Reporter’s readers.
  • Blinc Secures Patent for Branding Technology

    Blinc Secures Patent for Branding Technology

    Photo: The Blinc Group

    The Blinc Group has secured a patent for its RingSystem hardware branding and labeling technology.

    “Cannabis businesses have been struggling to maintain the proper amount of inventory in the vape space while also keeping their customers informed of what’s in their product,” said Sasha Aksenov, co-founder and chief innovation officer of The Blinc Group, in a statement.

    “Companies shell out thousands of dollars for packaging and fill their cartridges with a specific cultivar to shortly find out that it’s not selling as expected. They are left with huge losses in branded hardware, but our Ring System allows the brands and licensed producers to label their products on demand during production, and, if they have to—pivot and relabel for pennies, not dollars.”

    The Ring System consists of two bands one at the base of the mouthpiece or “top” and the other at the base of the cartridge—Top Ring and Base Ring. Before capping a compatible cartridge or disposable, operators can snap the Top Ring onto the mouthpiece of the cartridge with the strain name. The ring is also easily removed if the strain is not being sold or brands decide to pivot on the formulation or experience.

    “At the Blinc Group we strive every day to promote innovation, quality, safety, and integrity in every one of our products, the Ring System is no different. It is imperative that the entire industry take those goals to heart,” said Arnaud Dumas de Rauly, co-founder & CEO of The Blinc Group. “Consumers need to know what’s in their cartridges at all times and for this industry to thrive companies need to be able to increase their productivity and flexibility, without spending huge amounts of working capital on an unsold inventory. There are enough hurdles in the cannabis space, what’s in your vape cartridge shouldn’t be one of them.”

  • Report: Counterfeiting Poses Serious Risk

    Report: Counterfeiting Poses Serious Risk

    Photo: Andrii Yalanskyi

    The Intellectual Property Crime Threat Assessment 2022 report by the EU Intellectual Property Office and Europol shows that piracy and counterfeiting pose a serious threat to the European economy as well as people’s health and well-being.

    Imports of fake and illicit goods reached €119 billion ($129.61 billion) in 2019, which represented 5.8 percent of all goods entering the EU zone.

    More than 66 million counterfeit items were seized by EU authorities in 2022 as pharmaceuticals, food items, cosmetics and toys, among other goods, were targeted by criminals and counterfeiters who took advantage of the pandemic.

    Tobacco products, too, feature prominently among counterfeited products.

  • VPR Settles Auto-Draw Technology Case

    VPR Settles Auto-Draw Technology Case

    Illustration: VPR Brands

    XL Vape, VGOD and Saltnic have agreed to pay VPR brands $155,000 to settle patent-infringement litigation related to VPR’s auto-draw technology, according to a press release. As part of the deal, VPR brands has granted each of the companies a non-exclusive license to practice the invention set forth in the disputed intellectual property.

    Dating from 2009, U.S. patent 8,205,622 covers electronic cigarette products containing an electric airflow sensor, including a sensor comprised of a diaphragm microphone. The sensor turns the battery on and off, and covers most auto-draw, button less e-cigarettes, cig-a-likes, pod devices and vaporizers using an airflow sensor rather than a button. The technology is covered under electronic cigarette utility patent

    VPR Brands has started to identify and notify over 50 of the leading companies using its auto-draw technology. XL Vape, VGOD and Saltnic were prioritized based on their sales volumes and popularity.

    According to VPR Brands, most nicotine vaping devices sold in the U.S. today utilize an auto-draw/button-less technology. The company is investigating all button-less vape devices within the nicotine, CBD, and cannabis space that initiate vaporization from the user’s airflow inhalation as they would be suspect of infringement.

    The company says it may also seek a buyer for its patent in the future, citing the example of Ruyan, which in August 2013 sold its e-cigarette patent to Imperial Tobacco group for $75 million.

    VPR’s settlement with XL Vape, VGOD and Saltnic follows earlier settlements with Nepa 2 Wholesale and PHD Marketing.

  • Hangsen Sued Over Synthetic Nicotine

    Hangsen Sued Over Synthetic Nicotine

    Photo: Tobacco Reporter archive

    Zanoprima Lifesciences filed a complaint for patent infringement against Hangsen International Group in the U.S. District Court in the Western District of Texas. In its complaint, Zanoprima Lifesciences alleges that Hangsen has violated its patent titled “Process for Making (S)-Nicotine” through Hangsen’s manufacture and importation into the U.S. market of products containing synthetic nicotine that are manufactured using Zanoprima Lifesciences’ process, according to a press release.

    “Over many years, Zanoprima has invested substantial time, resources, intellectual capital and scientific expertise into developing Zanoprima’s groundbreaking enzymatic patented process for synthesizing an (S)-nicotine that is devoid of tobacco-specific nitrosamines and other impurities,” said Ashok Narasimhan, CEO of Zanoprima. “Zanoprima’s legal action reflects our company’s dedication to vigorously protecting our intellectual property in the U.S. and around the world.”

    Zanoprima’s complaint alleges that, after publication of Zanoprima’s patent, Hangsen filed a Chinese patent application describing a process that copied the process invented by Zanoprima. But, as alleged in the complaint, Hangsen’s patent application was rejected by the Chinese Patent Office in June 2021, citing Zanoprima’s patent as prior art. The complaint also alleges Hangsen imports into the U.S. from China and sells products containing “alleged high-purity synthetic (S)-nicotine and nicotine products that are marketed and sold under various names, including as MOTiVO Synthetic S-Nicotine,” and that such imported products “are manufactured by a process that practices every step of claim 1” of the Zanoprima patent.

    In addition to seeking damages for infringement, Zanoprima’s complaint seeks preliminary and permanent injunctive relief to prevent Hangsen from continuing its infringing actions.

  • Smoore and Relx Among Top Patent Applicants

    Smoore and Relx Among Top Patent Applicants

    Photo: Smoore

    Smoore and RELX were among the vaping business’ most prolific patent applicants in 2021, according to the Chinese Enterprise PCT International Patent Application Ranking. Smoore topped the list with 84 international patent applications under the Patent Cooperation Treaty (PCT), the company announced in a press release. RELX filed 74 international patent applications during the year.

    Based on the number of PCT international patent applications in 2021, the ranking is published by IPRdaily, an intellectual property publication, and incoPat, a global patent database.

    By Dec. 31, 2021, Smoore had more than 3,408 patent applications cumulatively, including 1,674 authorized patent applications. The company’s patent applications relate to atomization and other technologies. In January, the company launched the world’s thinnest ceramic coil vape pod solution. Equipped with a new generation of the Ultra-slim Bionic Film Ceramic Coil, FEELM Air features seven breakthroughs, including in reliability, flavor and interactive experience, according to Smoore.

    To date, the company has hired 1,500 R&D experts from different scientific backgrounds and established 10 centers for cross-disciplinary research. Five additional centers are under construction.

    The company says it’s committed to protecting its intellectual property. In October 2021, Smoore filed a complaint to the United States International Trade Commission against 38 American and Canadian enterprises and individuals for copying certain features of its oil-vaping cartridges and components technologies.

  • Fired Up

    Fired Up

    Nina Ritter-Reischl, in front of Glatz LIP paper machine
    (Photo: Julius Glatz)

    Having prevailed in an intellectual property dispute, Julius Glatz prepares to reenter the market for lower ignition propensity cigarette papers.

    By George Gay

    Julius Glatz is to reenter the market for lower ignition propensity (LIP) cigarette papers.

    This follows a four-year hiatus during which it was forced out of that market as a result of a patents dispute it eventually won in September last year, after a legal battle that, in total, lasted six years.

    Nina Ritter-Reischl, a managing partner at Glatz, told Tobacco Reporter during an exchange in January that, having overcome the difficulties of those four years, the company, which produces a large range of papers, mainly for the tobacco industry but also for other industries, was keen to return to the LIP market and, indeed, had already started work on doing so.

    And this won’t be a case of starting from scratch, of course. “As we were able to retain at least some of our core personnel, we can build upon their know-how and knowledge to produce LIP papers with the high standard our customers know us for,” said Ritter-Reischl. “Our customers will still find their former contacts in our technical, R&D and sales teams.”

    Meanwhile, the machine that Glatz used in the past to produce its LIP papers has been geared up at the production site where those papers were manufactured previously, in Neustadt, Germany, about 10 km from the company’s base in Neidenfels. “Our LIP machine has been maintained during the down period, some parts have been renewed, and our control technology has been upgraded within the last months,” said Ritter-Reischl. “Those investments were made to ensure production of all kinds of LIP papers.

    “As our application system is very flexible,” she added, “our production range and products are as well. We can therefore produce LIP papers to the specifications our customers were used to, or we can develop papers with new specifications according to our customers’ needs.”

    Of course, during the period when it wasn’t possible for Glatz to manufacture LIP papers, the company didn’t just sit on its hands; it used the time to concentrate on another type of demanding tobacco industry paper. “We were able during those four years to focus on another part of our core competences—our tipping base paper production,” Ritter-Reischl said. “Those papers also are very complex and demanding papers in the industry, and our quality and service for those is a benchmark.”

    That’s not to say, however, that the renewed opportunities that LIP paper production now offer isn’t massively important. In corresponding with Ritter-Reischl, I got the impression that Glatz was not only taking a huge amount of pleasure in being able to restart its LIP papers operation but also relishing the fact that this meant it could once again offer a complete range of tobacco industry papers. “Entering back into the LIP market, we at Glatz can offer our customers not only additional papers, [but] we can again provide them with the full-service range of all papers for the industry, from plug-wrap papers and tipping base papers to cigarette papers, including LIP papers,” she said. “We are able to offer all these papers manufactured to the highest qualities and within the most demanding specifications. And we can offer a flexible service delivered through short lines of communication by a dedicated team of traditional paper makers.”

    Currently, Glatz’s LIP papers production unit is making trial runs to produce papers of various specifications for a number of interested customers, but it expects to have to ramp up its production level to full manufacturing mode during the next few months.

    Ritter-Reischl, who is a lawyer, seemed frustrated that discussions and legal disputes over one LIP patent had taken so long but pleased that that period was now behind the company. “As the patent was held to be invalid, this pulled the rug from under all the accusations made against Glatz,” she said. “But, needless to say, this dispute and the interim consequences were a burden for us over the past four years, and only a company like ours with a very resilient financial, social and competitive structure would have been able to endure such a phase.”

    Julius Glatz is a family-owned medium-sized company with more than 135 years of experience in producing paper in Neidenfels, Germany. “We are a traditional and sustainable asset in the region, being ourselves aware of the responsibility we have toward our employees, our environment, our suppliers and, most important[ly], our customers,” said Ritter-Reischl.

    The company was started in 1885 by Wilhelm Adolph Glatz, Franz Julius Glatz and Hans Haehnle when, between them, they founded the Glatz papermill at Neidenfels in the Palatinate Forest. Almost 100 years later, in 1990, Glatz became the first fine paper manufacturer to offer thin printing papers and cigarette papers of TCF (totally chlorine-free) quality. And, in 1994, Glatz became part of the first Sino-German joint venture in the field of tobacco industry papers with the founding in Yunnan province of Yunnan Hongta Blue Eagle, which quickly went on to produce premium cigarette paper of international quality standards.

    Now, as it navigates 2022, Glatz can look forward to the boost that being able once again to participate in the LIP papers market will bring. But the question arises as to what the future holds for Glatz beyond LIP papers, and Ritter-Reischl started answering this question by admitting that, overall, the outlook for the traditional tobacco industry was not exactly rosy. Everyone knew, she said, that the tobacco market in general was difficult, as regulations and tobacco product taxes were increasing while the number of smokers was decreasing. Nevertheless, she indicated, Glatz was optimistic about the future, and part of that optimism seems to be coming from what is perhaps an unexpected source. “Due to the coronavirus pandemic, customers have come to realize how important local sourcing, flexible service and short communication tracks are,” said Ritter-Reischl. “And those are all services and assets that we can offer firsthand.”

    Another reason for optimism at Glatz was that the idea of sustainability was becoming more and more important and into focus, said Ritter-Reischl. “As a family-owned business with a history of 135 years in paper making, [we] are sustainable by our very nature,” she said. “We value our employees and suppliers, we take care of our environment, and our customers are always in focus as we conduct every aspect of our business.”

    Of course, individual businesses can expand even when the markets they serve are not expanding by, in one way or another, increasing their market shares or by diversifying. And in this regard, Glatz sees opportunities arising in the future as paper products come to replace other materials, such as plastic. “Our thin papers with their special haptic properties can be used in other industries to substitute for foil or other wrappers,” she said. “Therefore, alongside our tobacco papers specialization, we have the opportunity of diversifying into other aspects of fine papers. And this will be one of the options we will focus on in the future and that will help keep us optimistic in the face of the challenges to come.”

    George Gay is Tobacco Reporter’s European editor, but his territory spans the globe. Based in London, George has covered the tobacco industry since 1982, initially for a U.K.-based publication and since 2004 for Tobacco Reporter. George’s understanding of industry issues, combined with his keen sense of observation and dry wit, have earned him a loyal following among Tobacco Reporter’s readers.