Category: Intellectual Property

Next Generation Nixes Kaival Patent Deal

Photo: sorapop
Next Generation Labs, which manufactures and markets bulk R-S, R- and S-isomer synthetic nicotine under its TFN brand, has terminated its Sept. 28, 2020, patent contribution agreement with Kaival Brands Innovation Group and Kaival Labs.
The Patent Contribution Agreement related to the acquisition and commercial exploitation by Kaival of Next Generation Labs’ IP portfolio on combinational use of synthetic R- and S-isomer nicotine ratios in tobacco cessation products.
In a press note, Next Generation Labs said Kaival Labs had published inaccurate and misleading statements relating to the use of patented synthetic nicotine for tobacco cessation products on its website. “Next Generation Labs wants to clarify that as a consequence of Kaival’s failure to perform its obligations under the Patent Contribution Agreement, all rights to the R-S synthetic nicotine cessation patent portfolio fully reverted to Next Generation Labs in May 2021,” Next Generation Labs wrote.
Additionally, Kaival executed a confirmatory transfer agreement with Next Generation Labs relinquishing all rights to the Next Generation Labs patent portfolio for the commercialization of combinational TFN R-S nicotine relating to tobacco cessation products. Kaival is not an authorized agent of Next Generation Labs nor is it authorized to use Next Generation Labs’ name, intellectual property or its TFN trademark on its products, in its product marketing or in any financial prospectus to investors, according to Next Generation Labs.
July 26, 2021
Australian Patent for NGL’s Synthetic Nicotine

Image: Zerbor
Next Generation Labs has received an Australian patent for its innovative use of combinational ratios of synthetic R-isomer and S-isomer nicotine in tobacco cessation products.
“This patent gives Next Generation Labs additional IP protection as the company pursues its international effort to encourage the adoption and use of novel synthetic combinational R-S isomer nicotine to assist consumers in their desire to break away from tobacco use and their long-term dependence to the reportedly highly addictive S-isomer nicotine,” the company wrote in a statement.
Next Generation Labs started producing bulk synthetic nicotine in 2014 at a time when there was no commercial availability of isolated R-isomer and S-isomer nicotine. Given that both isomers can be produced in abundance by Next Generation Labs at relatively low cost, industry partners can now access separated isomers for commercialization into products that may aid cessation, enhance quit success rates and moderate overall tobacco use, according to the company.
“Next Generation Labs believes future combinational R-[isomer] and S-isomer nicotine formulations may prove to be less addictive than natural or biosimilar standalone S-isomer nicotine and could potentially help achieve the broader public health goal of providing adult consumers with a satisfying, but nonaddictive form of nicotine to replace current products,” the company wrote. “These new variable isomeric ratios of synthetic nicotine products may ultimately assist adults in quitting or reducing their overall dependence on current tobacco, vape and nicotine products that deliver only the purported highly addictive ‘S’ form of nicotine.”
The granting of the Australian TFN R-S nicotine cessation patent is in addition to existing Next Generation Labs patents that have been issued in China, South Korea, Japan, Canada, Europe and the United States.
July 23, 2021
Patent for ‘Bulb’ Technology Cartridge

Photo: phive2015
Healthier Choices Management Corp. (HCMC) has received a patent for its “bulb” technology vaping cartridge, which avoids a potentially toxic reaction between e-liquid, cannabis or CBD oils and the heated metal components of the cartridge.
“The issuance of this patent is significant in our attempts to make vaping safer,” said Jeff Holman, CEO of HCMC, in a statement. “Studies have shown that liquids and oils can act as solvents when they sit in direct contact with a metal coil, thereby leeching out heavy metals, which can then be ingested during the vaping process. This breakthrough technology has the potential to completely eliminate this problem.”
Holman compared the technology to a light bulb. “A light bulb has a metal filament inside, but you can only touch the outer glass, which gets hot from the heat of the filament,” he said. “Similarly, the metal coil being encased in a quartz ‘bulb’ prevents the liquid or oil from coming in direct contact with or ‘touching’ the metal coil. The metal coil heats the quartz, the substance is in contact with the heated quartz, and the vapor is produced without the substance ever touching the metal coil directly.”
July 22, 2021
Kaival Brands Secures Patents in China

Photo: vegefox.com
Kaival Brands Innovations Group has been granted two copyright protections and two patents by China.
The first patent, China Patent No. 202020067263.5, is a utility model patent and relates to the nozzle components of the Bidi Stick. The nozzle components play an integral role in delivering a consistent user experience. The second patent, China Patent No. 202030052391.8, is a design patent that covers the entire Bidi Stick product. Bidi Vapor has also secured copyrights for both the Bidi Stick and Bidi Cares names.
Kaival believes that the Chinese vapor market presents a considerable business opportunity. Statista data projects the China combustible cigarette market to top $220 billion in 2021. Vape products are quickly gaining market share in China, and if a mere 10 percent of combustible cigarette smokers transition to vape, China would be a $22 billion vape market opportunity. By comparison, Grandview Research anticipates the U.S. vape market to reach $7.4 billion in 2021.
“The copyright and patent protection representations received from China are the first step in our planned journey to introducing the Bidi Stick into one of the world’s largest markets for vape products, China,” said George Chuang, independent director of Kaival Brands, in a statement. “I look forward to advising the company in my role as a board member in interfacing with potential distribution partners in China.”
“Receiving two patents from China, along with copyright protections, should enhance our efforts to more effectively eliminate counterfeit players from the market, and being afforded these protections within a difficult market further validates our best-in-class product lineup,” says Niraj Patel, founder and chief executive officer of Kaival Brands and Bidi Vapor. “Both Bidi Vapor and Kaival Brands are adamant about exceeding compliance standards in every global market, and as such, our products are intended exclusively for adults 21 and over.”
Following the latest patents, Kaival has intellectual property protections in the United States, the European Union, Australia and China. “We believe this puts us in a strong position to pursue new global markets that we have already received regulatory approval to enter,” says Patel.
July 18, 2021
Next Generation Labs Receives Patent

Photo: tashatuvango
Next Generation Labs has received a European Patent (No. 3209653) for its proprietary technology related to the preparation of R-S isomer nicotine.
“This patent grant by the European Patent Office is a significant milestone for Next Generation Labs, as it solidifies our tobacco-free synthetic nicotine intellectual property portfolio across a number of European countries, allowing the company to better enforce its rights against violators and counterfeiters of its industry-leading TFN branded synthetic nicotine,” Next Generation Labs wrote in a statement.
“Alongside our announcement of patent grants in China, Australia and Canada and the enforcement efforts of our strategic partner NextEra in South Korea, we are now even better positioned to take direct action against companies violating our patented nicotine production process in an additional 38 countries.”
Next Generation Labs says it was the first company to successfully scale the bulk manufacture of nontobacco synthetic nicotine for use in novel nontobacco products, such as vape liquids and pens, in heat-not-burn devices and in many modern oral nicotine products as well as in innovative pharmaceutical nicotine cessation products.
“Our company believes that consumers have a right to access nontobacco-derived nicotine as a matter of choice,” Next Generation Labs wrote.
“There are many adult consumers who wish to enjoy nicotine but want to do so without the lingering and potentially detrimental effects of long-term tobacco use. The introduction of TFN branded synthetic nicotine has created a liberating opportunity for consumers, who as a result of Next Generation Labs’ nicotine technology, are now able to achieve a complete break from tobacco as they enjoy many of the leading brands available on the market today that use TFN.”
June 29, 2021
Court: Vuse Infringes on Fuma Patents

Photo: R.J. Reynolds Vapor Co.
R.J. Reynolds (RJR) Vapor Co.’s Vuse Solo and Ciro e-cigarettes infringe patents owned by Fuma International, a federal court in North Carolina ruled, according to Reuters.
Fuma sued RJR in 2019 for infringing two of its patents that outline types of e-cigarettes made of a cartridge and power source.
U.S. District Judge Catherine Eagles found that the products included two of the disputed elements and infringed both patents but that the question of whether they included the third element should go to trial.
The Vuse Solo has one of the patent’s “electrically conductive portion” that couples the cartridge to the power source, and the Vuse Ciro has a type of airflow passageway featured in both patents, Eagles said.
However, the third disputed element—whether the Solo has the “electrically conductive threaded portion” from a Fuma patent—will be decided at trial. RJR provided enough evidence to show that the relevant part of its device may not be “threaded” under the patent’s definition, according to Eagles.
RJR spokesperson Kaelan Hollon told Reuters that the company “looks forward to proving at trial that the Fuma patents are invalid” and that Solo doesn’t infringe the part of the patent still at issue.
Vuse is one of the most popular e-cigarette brands in the United States.
Earlier this month, a judge ruled that Philip Morris International’s IQOS tobacco-heating device infringes two Vuse Vibe and Vuse Solo patents. That case will likely be reviewed by the full International Trade Commission.
May 27, 2021
Poda Patents Closed-Ended HnB Cigarette

Photo: Poda Lifestyle and Wellness
Poda Lifestyle and Wellness expects to receive patent protection for its Poda zero-cleaning heat-not-burn (HnB) technology in Europe and the United States soon.
The Poda system uses proprietary biodegradable single-use pods. The design prevents cross-contamination between the heating devices and the pods, eliminating cleaning requirements and providing users with a convenient and enjoyable potentially reduced-risk smoking experience.
The company says its pods are the first and only cigarettes to have a completely closed end. A closed-ended cigarette utilizing HnB heating technology allows for an ashless experience and provides for consistent quality each time a new pod is inserted into the heating device.
Poda Lifestyle and Wellness’ research and development commenced in January 2015. The Poda zero-cleaning technology was granted a Canadian patent in 2018 with patent entries filed in more than 65 additional countries.
“We have spent years of research and development with regards to our invention and are very pleased to see that our invention has been granted a patent in Canada,” said Poda CEO Ryan Selby in a statement.
“We have filed for patents in 65 other countries and expect USA and European patents to follow in short order now that we have received the Canadian patent.”
We have spent years of R&D and are very pleased to see that our invention has been granted a patent in Canada.
Ryan Selby , CEO, Poda
“This will protect our company for many years ahead as we launch Poda into the global marketplace as the first heat-not-burn system that allows users to experience maintenance-free heating of substrates such as tobacco or dried plant material with zero cross-contamination when switching from one substrate to another.”
May 26, 2021
ITC: IQOS Infringes on Vuse Patents

Photo: JHVEPhoto
Philip Morris International’s IQOS device infringes two patents owned by British American Tobacco subsidiary Reynolds American Inc., reports Bloomberg, citing a note posted by Judge Clark Cheney on the U.S. International Trade Commission’s website.
The next step is a likely review by the full commission, which has the power to halt products at the U.S. border and is scheduled to complete the investigation by Sept. 15.
IQOS is the only heat-not-burn product authorized for sale in the U.S., where it’s sold by Altria. Last year, the U.S. Food and Drug Administration allowed the company to market IQOS as reducing consumers’ exposure to harmful chemicals found in cigarettes.
Reynolds claims PMI and Altria copied patented technology that it had developed for its Vuse Vibe and Vuse Solo vaping products, for which it’s filed for FDA approval. The company complained to the ITC in April 2020.
Altria responded with its own patent infringement claims and a separate suit against Reynolds in May. Altria also lodged petitions with the U.S. Patent and Trademark Office challenging the validity of a half-dozen Reynolds’ patents.

The judge has to make a determination on whether even temporarily removing such products is appropriate for public health and what alternatives there are for consumers.
Andre Calantzopoulos, executive chairman, PMI
Reynolds said it expects the judge will recommend an import ban, adding that the unauthorized use of its inventions “undermines our ability to invest and innovate and thereby reduce the health impact of our business.”
Philip Morris called the judge’s findings “one step in a long process that does not have an immediate effect” and it will present its position to the commission.
“BAT’s litigation in the U.S. is part of a worldwide attempt—which has been entirely unsuccessful to date—that is meant to undermine the heated-tobacco segment, where they lag far behind,” the company said.
PMI has also argued that, even if a patent violation is found, it’s not in the public’s interest to keep IQOS out of the U.S.
“The judge has to make a determination on whether even temporarily removing such products is appropriate for public health and what alternatives there are for consumers,” said PMI Executive Chairman Andre Calantzopoulos. “If we remove a product that exists, and the only alternative that people have are cigarettes, it’s a consideration of public health interest, and that has to be taken into account.”
May 18, 2021
RJR Challenges Philip Morris Vapor Patent

Image: USPTO
R.J. Reynolds Vapor Co. (RJRV) has petitioned the U.S. Patent and Trademark Office for a review of six claims relating to the basic functionality of e-cigarettes in a patent assigned to Philip Morris Products, reports Law Street Media.
RJRV argues that the patent describes an approach that dates from 1990 and has “become accepted in view of its comparatively easy technical realizability in combination with its convincing functionality.”
According to the filing, there are disadvantages in the prior technology that the asserted patent claims to fix, such as the increasing contamination of the vaporizing unit throughout its life, a fluid leak and that due to its design, the e-cigarette’s length cannot be shortened.
RJRV takes issue with the patent’s six claims on the basis that to a person having ordinary skill in the field, it would have been obvious to combine previous inventions to overcome the claimed deficiencies.
RJRV requests the cancellation of the claims as unpatentable.
It’s not the first time that Reynolds and Philip Morris have quarreled about intellectual property. In June 2020, Philip Morris International filed counterclaims against Reynolds for patent infringement in the federal court action that RJR commenced against PMI and Altria, PMI’s IQOS distributor in the U.S., on April 9, 2020 in the Eastern District of Virginia.
April 22, 2021
China OKs Synthetic Nicotine Patent

Photo: Michal Jarmoluk from Pixabay
The China Patent Office has approved Next Generation Labs’ (NGL) patent application covering the process for the preparation of R-S [synthetic] nicotine, issue number 201580069647.2.
The approval will give NGL the ability to better enforce its intellectual property rights. NGL is the world’s largest manufacturer of S-isomer, R-S isomer and R-isomer synthetic nicotine sold under the registered brand name TFN.
According to NGL, the U.S. and Korean markets have been inundated with dozens of fake synthetic nicotine products and brands, and many manufacturers have misleadingly labeled bulk pure nicotine, bulk vape liquid mixtures, and vaping and oral nicotine products as made with TFN. In many instances, the nicotine contained in these products is not synthetic, tobacco-free or nontobacco but is in fact derived from tobacco sources.
For almost a decade, NGL has spent considerable effort establishing a strong global intellectual property portfolio that has become distinctive of the company’s goodwill and of the high quality adult consumers expect of TFN-branded nicotine.
NGL now intends to fully enforce its rights against many of these so-called synthetic nicotine brands.
Next Generation Labs
NGL has been taking direct action in the United States and through its sole South Korean distribution partner NextEra to limit the misleading claims of unscrupulous sellers of pseudo-synthetic nicotine and against manufacturers and brand owners who misrepresent that their product contains TFN-branded synthetic nontobacco nicotine.
“With the assistance of the Chinese authorities, NGL now intends to fully enforce its rights against many of these so-called synthetic nicotine brands at their point of manufacture and will take the lead with national customs agencies to limit the flow of fake synthetic nicotine products at trade exit and entry points in China, the U.S., EU, U.K., South Korea, India, Canada and Australia,” the company wrote in a press release.
March 23, 2021