throbber
IN THE UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
`
`
`ALTRIA CLIENT SERVICES LLC and
`U.S. SMOKELESS TOBACCO COMPANY LLC,
`
` Plaintiffs,
`
`v.
`
`R.J. REYNOLDS VAPOR COMPANY,
`
` Defendant.
`
`
`
`
`
`
`Civil Action No: 20-CV-472
`
`DEMAND FOR JURY
`TRIAL
`
`COMPLAINT FOR PATENT INFRINGEMENT
`
`Robert C. Van Arnam
`N.C. Bar No. 28838
`Andrew R. Shores
`N.C. Bar. No. 46600
`WILLIAMS MULLEN
`301 Fayetteville Street
`Suite 1700
`Raleigh, NC 27601
`Tel: (919) 981-4000
`
`Elizabeth S. Weiswasser *
`Anish R. Desai *
`WEIL, GOTSHAL & MANGES LLP
`767 5th Avenue
`New York, NY 10153
`Tel: (212) 310-8000
`
`Counsel for Plaintiffs Altria Client
`Services LLC and U.S. Smokeless Tobacco
`Company LLC.
`
` *
`
` Special Appearance Under Local Rule
`83.1(d) in process
`
`Brian E. Ferguson *
`Robert T. Vlasis III *
`W. Sutton Ansley *
`Stephen P. Bosco *
`Stephanie Adamakos *
`WEIL, GOTSHAL & MANGES LLP
`2001 M Street, NW, Suite 600
`Washington, DC 20036
`Tel: (202) 682-7000
`
`Adrian C. Percer *
`Robert S. Magee *
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Tel: (650) 802-3000
`
`
`
`
`
`
`
`
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 1 of 136
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`

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`
`
`For their Complaint against Defendant R.J. Reynolds Vapor Company (“Reynolds
`
`Vapor” or “Defendant”), Plaintiffs Altria Client Services LLC and U.S. Smokeless
`
`Tobacco Company LLC (collectively, “Altria” or “Plaintiffs”) allege as follows:
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for infringement of United States Patent Nos. 7,798,319;
`
`8,458,996; 8,556,070; 10,143,242; 10,264,824; 10,299,517; 10,485,269; 10,492,541; and
`
`10,588,357 (collectively, “the Asserted Patents”) under the United States Patent Laws, 35
`
`U.S.C. § 100 et seq.
`
`2.
`
`Altria brings this action against Reynolds Vapor because of its systematic
`
`infringement of Altria’s valuable patent rights. As explained herein, Reynolds Vapor
`
`products, including its “VUSE” e-vapor line and its “VELO” smokeless pouches, infringe
`
`claims in one or more of the Asserted Patents. Reynolds Vapor is aware of Altria’s
`
`valuable patents and nonetheless has infringed and continues to infringe them. As such,
`
`Reynolds Vapor is liable to Altria for monetary damages as a result of its infringement.
`
`THE PARTIES
`
`3.
`
`Plaintiff Altria Client Services LLC is a Virginia corporation with its
`
`principal place of business located at 6601 West Broad Street, Richmond, Virginia
`
`23230.
`
`4.
`
`Plaintiff U.S. Smokeless Tobacco Company LLC is a Virginia corporation
`
`with its principal place of business located at 6601 West Broad Street, Richmond,
`
`Virginia 23230.
`
`
`
`1
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`5.
`
`Defendant Reynolds Vapor is a North Carolina corporation with its
`
`principal place of business located at 401 North Main Street, Winston-Salem, North
`
`Carolina 27101.
`
`6.
`
`Upon information and belief, Reynolds Vapor is a wholly-owned subsidiary
`
`of Reynolds American Inc., which in turn is a wholly-owned subsidiary of British
`
`American Tobacco plc, a publicly-traded company on the London Stock Exchange
`
`headquartered in London, England.
`
`JURISDICTION AND VENUE
`
`7.
`
`This action arises under the patent laws of the United States, Title 35 of the
`
`United States Code. This Court has subject matter jurisdiction of this action pursuant to
`
`28 U.S.C. §§ 1331 and 1338(a).
`
`8.
`
`This Court has personal jurisdiction over Reynolds Vapor because it is
`
`incorporated in North Carolina and has its principal place of business located in this
`
`District. Personal jurisdiction is also proper because Reynolds Vapor has committed
`
`infringing acts within this District.
`
`9.
`
`Venue is proper in this District under 28 U.S.C. § 1400(b) because
`
`Reynolds Vapor resides in this District and has its principal place of business in this
`
`District, and because Reynolds Vapor has a regular and established place of business in
`
`this District and has committed infringing acts within this District.
`
`
`
`
`
`
`
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`THE ASSERTED PATENTS
`
`10. On September 21, 2010, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. 7,798,319, entitled “Container Device for
`
`Tobacco Articles” (“the 319 Patent”). A true and accurate copy of the 319 Patent is
`
`attached as Exhibit A.
`
`11. U.S. Smokeless Tobacco Company LLC is the owner by assignment of all
`
`right, title, and interest in and to the 319 Patent, including the right to sue for and collect
`
`past damages.
`
`12.
`
`The 319 Patent is valid and enforceable.
`
`13. On June 11, 2013, the United States Patent and Trademark Office duly and
`
`legally issued U.S. Patent No. 8,458,996, entitled “Container Device for Tobacco
`
`Articles” (“the 996 Patent”). A true and accurate copy of the 996 Patent is attached as
`
`Exhibit B.
`
`14. U.S. Smokeless Tobacco Company LLC is the owner by assignment of all
`
`right, title, and interest in and to the 996 Patent, including the right to sue for and collect
`
`past damages.
`
`15.
`
`The 996 Patent is valid and enforceable.
`
`16. On October 15, 2013, the United States Patent and Trademark Office duly
`
`and legally issued U.S. Patent No. 8,556,070, entitled “Container Device for Tobacco
`
`Articles” (“the 070 Patent”). A true and accurate copy of the 070 Patent is attached as
`
`Exhibit C.
`
`
`
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`17. U.S. Smokeless Tobacco Company LLC is the owner by assignment of all
`
`right, title, and interest in and to the 070 Patent, including the right to sue for and collect
`
`past damages.
`
`18.
`
`The 070 Patent is valid and enforceable.
`
`19. On December 4, 2018, the United States Patent and Trademark Office duly
`
`and legally issued U.S. Patent No. 10,143,242, entitled “Cartomizer Flavor
`
`Enhancement” (“the 242 Patent”). A true and accurate copy of the 242 Patent is attached
`
`as Exhibit D.
`
`20. Altria Client Services LLC is the owner by assignment of all right, title, and
`
`interest in and to the 242 Patent, including the right to sue for and collect past damages.
`
`21.
`
`The 242 Patent is valid and enforceable.
`
`22. On April 23, 2019, the United States Patent and Trademark Office duly and
`
`legally issued U.S. Patent No. 10,264,824, entitled “Cartridge Assembly for an Electronic
`
`Vaping Device” (“the 824 Patent”). A true and accurate copy of the 824 Patent is
`
`attached as Exhibit E.
`
`23. Altria Client Services LLC is the owner by assignment of all right, title, and
`
`interest in and to the 824 Patent, including the right to sue for and collect past damages.
`
`24.
`
`The 824 Patent is valid and enforceable.
`
`25. On May 28, 2019, the United States Patent and Trademark Office duly and
`
`legally issued U.S. Patent No. 10,299,517, entitled “Pod Assembly, Dispensing Body,
`
`
`
`4
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`and E-Vapor Apparatus Including the Same” (“the 517 Patent”). A true and accurate copy
`
`of the 517 Patent is attached as Exhibit F.
`
`26. Altria Client Services LLC is the owner by assignment of all right, title, and
`
`interest in and to the 517 Patent, including the right to sue for and collect past damages.
`
`27.
`
`The 517 Patent is valid and enforceable.
`
`28. On November 26, 2019, the United States Patent and Trademark Office
`
`duly and legally issued U.S. Patent No. 10,485,269, entitled “Pod Assembly, Dispensing
`
`Body, and E-Vapor Apparatus Including the Same” (“the 269 Patent”). A true and
`
`accurate copy of the 269 Patent is attached as Exhibit G.
`
`29. Altria Client Services LLC is the owner by assignment of all right, title, and
`
`interest in and to the 269 Patent, including the right to sue for and collect past damages.
`
`30.
`
`The 269 Patent is valid and enforceable.
`
`31. On December 3, 2019, the United States Patent and Trademark Office duly
`
`and legally issued U.S. Patent No. 10,492,541, entitled “Pod Assembly, Dispensing
`
`Body, and E-Vapor Apparatus Including the Same” (“the 541 Patent”). A true and
`
`accurate copy of the 541 Patent is attached as Exhibit H.
`
`32. Altria Client Services LLC is the owner by assignment of all right, title, and
`
`interest in and to the 541 Patent, including the right to sue for and collect past damages.
`
`33.
`
`The 541 Patent is valid and enforceable.
`
`34. On March 17, 2020, the United States Patent and Trademark Office duly
`
`and legally issued U.S. Patent No. 10,588,357, entitled “Pod Assembly, Dispensing
`
`
`
`5
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`Body, and E-Vapor Apparatus Including the Same” (“the 357 Patent”). A true and
`
`accurate copy of the 357 Patent is attached as Exhibit I.
`
`35. Altria Client Services LLC is the owner by assignment of all right, title, and
`
`interest in and to the 357 Patent, including the right to sue for and collect past damages.
`
`36.
`
`The 357 Patent is valid and enforceable.
`
`REYNOLDS VAPOR’S INFRINGING VUSE E-VAPOR PRODUCTS
`
`37. Upon information and belief, Reynolds Vapor designs, manufactures,
`
`imports, offers for sale, and sells battery-powered e-vapor devices and associated liquid-
`
`filled inserts marketed under the name “VUSE” (collectively, “the Accused VUSE Vapor
`
`Products”) in the U.S. See https://vusevapor.com. The acts of making, using, selling,
`
`and offering for sale the Accused VUSE Vapor Products in the U.S., and the act of
`
`importing the same into the U.S., constitute infringement of some of the Asserted Patents
`
`as detailed in the Counts below.
`
`38.
`
`There are at least two models of the Accused VUSE Vapor Products that
`
`infringe one or more of the Asserted Patents, as described in detail in the below Counts.
`
`The two models and associated “Flavor Packs” (which Reynolds Vapor also refers to as
`
`“cartridges,” “tanks,” and “pods”) are the following: (a) the VUSE ALTO Power Unit
`
`and associated liquid-filled “Flavor Pack” pods (“the Accused VUSE ALTO Products”);
`
`and (b) the VUSE VIBE Power Unit and associated liquid-filled “Flavor Pack” tanks
`
`(“the Accused VUSE VIBE Products”). The Accused VUSE Vapor Products are
`
`described in more detail in the following paragraphs.
`
`
`
`6
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`39.
`
`The Accused VUSE ALTO Products are shown below:
`
`
`
`
`
`Accused VUSE ALTO Power Unit, Flavor Pack Pods, and Packaging
`
`
`
`40.
`
`The VUSE ALTO Power Unit is charged through a USB connector that is
`
`provided in the Power Unit kit. Reynolds Vapor markets and sells the VUSE ALTO in a
`
`“Complete Kit” containing a “Power Unit,” USB charger, and one or more “Flavor Pack”
`
`pods. Reynolds Vapor also markets and sells the VUSE ALTO Power Unit and USB
`
`charger without any Flavor Pack pods. The Flavor Pack pods are also sold separately, for
`
`
`
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`example, in packages containing two Flavor Pack pods. The Flavor Pack pods currently
`
`available for purchase and use with the VUSE ALTO Power Unit include “Menthol,”
`
`“Golden Tobacco,” and “Rich Tobacco” flavors. The Flavor Pack pods are also sold with
`
`different levels of nicotine (e.g., 1.8%, 2.4%, or 5%).
`
`41.
`
`The Accused VUSE VIBE Products are shown below:
`
`
`
`
`
`Accused VUSE VIBE Power Unit, Flavor Pack Tanks, and Packaging
`
`The VUSE VIBE Power Unit is charged through a USB connector that is
`
`42.
`
`provided in the power unit kit. Reynolds Vapor markets and sells the VUSE VIBE in a
`
`“Complete Kit” containing a ”Power Unit,” USB charger, and one or more “Flavor Pack”
`
`
`
`8
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`tanks. Reynolds Vapor also markets and sells the VUSE VIBE Power Unit and USB
`
`charger without any Flavor Pack tanks. The Flavor Pack tanks are also sold separately,
`
`for example, in packages containing two Flavor Pack tanks. The Flavor Pack tanks
`
`currently available for purchase and use with the VUSE VIBE Power Unit include
`
`“Menthol” and “Original” flavors.
`
`43.
`
`The Accused VUSE Vapor Products are strategically and economically
`
`important to Reynolds Vapor and its parent companies, Reynolds American Inc. (“RAI”)
`
`and British American Tobacco plc (“BAT”). When it announced the launch of the first
`
`VUSE Vapor Product, the President of Reynolds Vapor called VUSE a “game-changing
`
`product in the e-cigarette category.” Reynolds Vapor has promoted the Accused VUSE
`
`Vapor Products through advertisements in magazines and newspapers, on television, via
`
`direct-mail marketing, and on the Internet. A Reynolds Vapor executive described the
`
`opportunity to sell the VUSE Vapor Products to U.S. consumers as a “marketer’s dream.”
`
`44.
`
`The Accused VUSE Vapor Products achieved early success; by 2015
`
`VUSE Vapor Products were the best-selling product in the e-vapor category in the United
`
`States. Following that success, VUSE’s share of the e-vapor category in the United States
`
`by 2018 fell below 10 percent, as a result of the success of Juul Lab’s “Juul” vaping
`
`device.
`
`45. Reynolds Vapor responded by introducing the Accused VUSE ALTO
`
`Product in July 2018, which it described as a “pod mod” e-vapor device similar to the
`
`
`
`9
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`Juul vaping delivery mechanism. BAT told investors that the VUSE ALTO was a key
`
`element of its “vapor reimagined” promotional campaign.
`
`46.
`
`The Accused VUSE ALTO Product achieved wide success. BAT told
`
`investors in November 2019 that the Accused VUSE ALTO Product was growing
`
`volume in the U.S. even when the e-vapor market was declining. BAT’s Finance
`
`Director stated that he was “very, very happy with the performance” of the VUSE Vapor
`
`Products in the U.S., noting specifically that the Accused VUSE ALTO Product had
`
`doubled Reynolds Vapor’s market share in just three months.
`
`47. BAT reiterated the “success” of the Accused VUSE ALTO Product in its
`
`February 2020 earnings call with investors. During its March 2020 “Capital Markets
`
`Day,” BAT executives continued to laud the success of the Accused VUSE Vapor
`
`Products. Describing the U.S. as the “most important market,” a BAT executive stated
`
`that during the last reporting period “65% of all new device kits that were sold were from
`
`Vuse and as a result we have been consistently growing share in the last six months,
`
`tripling our Alto share and doubling our Vuse share over that six months period.”
`
`48.
`
`The success of the Accused VUSE Vapor Products is attributable to those
`
`products embodying the inventions described and claimed in some of the Asserted
`
`Patents.
`
`REYNOLDS VAPOR’S PMTA SUBMISSIONS
`
`49.
`
`In July 2017, the Food and Drug Administration (“FDA”) announced a
`
`“Comprehensive Plan for Tobacco and Nicotine Regulation” (“FDA Plan”) that endorsed
`
`
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`the concept of a “continuum of risk” among tobacco products, with combustible products
`
`(such as conventional cigarettes) at one end as most harmful, and nicotine replacement
`
`therapies on the other end as least harmful. See www.fda.gov/tobacco-products/ctp-
`
`newsroom/fdas-comprehensive-plan-tobacco-and-nicotine-regulation.
`
`50.
`
`The FDA Plan recognized that combustion, not nicotine, is the most
`
`significant harm associated with tobacco use and acknowledged the important role for
`
`nicotine-containing, non-combustible products. The FDA sought to “strik[e] an
`
`appropriate balance between regulation and encouraging development of innovative
`
`tobacco products that may be less dangerous than cigarettes.” See
`
`https://wayback.archive-
`
`it.org/7993/20190423050614/https://www.fda.gov/NewsEvents/Newsroom/PressAnnoun
`
`cements/ucm568923.htm. The FDA Commissioner at the time stated that the goal was to
`
`“move addicted smokers down that continuum of risk to these less harmful products.”
`
`June 28, 2017 Remarks by FDA Commissioner Scott Gottlieb; see www.fda.gov/news-
`
`events/speeches-fda-officials/protecting-american-families-comprehensive-approach-
`
`nicotine-and-tobacco-06282017.
`
`51.
`
`In conjunction with the FDA Plan and in response to growing concern over
`
`the unregulated marketing and sale of e-vapor products, on June 19, 2019 the FDA issued
`
`final guidance for the submission of premarket tobacco product applications (“PMTAs”)
`
`for “electronic nicotine delivery systems” (“ENDS”), which includes e-cigarettes and
`
`vaping devices. The acting FDA Commissioner at the time stated that the FDA’s
`
`
`
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`“ongoing oversight of e-cigarettes and other ENDS products is critical to our public
`
`health mission,” and that the FDA was “committed to providing a solid, science-based
`
`regulatory foundation to ensure that ENDS products authorized for marketing are
`
`appropriate for the protection of public health.” See www.fda.gov/news-events/press-
`
`announcements/fda-finalizes-guidance-premarket-tobacco-product-applications-
`
`electronic-nicotine-delivery-systems.
`
`52. At the time the FDA issued its final guidance, the acting FDA
`
`Commissioner noted that there were “no authorized e-cigarettes currently on the market
`
`and [the FDA] encourage[s] companies to use this valuable document now as a guide to
`
`submit applications.” Id. Thereafter, the United States District Court of the District of
`
`Maryland issued an order requiring makers and importers of e-cigarettes and other ENDS
`
`to submit PMTAs to the FDA by May 11, 2020. See American Academy of Pediatrics v.
`
`Food and Drug Admin., Case No. PWG-18-883, Memorandum Op. and Order (July 12,
`
`2019) (D. Md.) (“Order”); see also www.fda.gov/news-events/press-
`
`announcements/statement-agencys-actions-tackle-epidemic-youth-vaping-and-court-
`
`ruling-application-submission. On April 22, 2020, in response to the FDA’s request, the
`
`Maryland Court extended the deadline to submit PMTAs to September 9, 2020. See
`
`www.fda.gov/news-events/press-announcements/coronavirus-covid-19-update-court-
`
`grants-fdas-request-extension-premarket-review-submission-deadline.
`
`53.
`
` The PMTA pathway provides demanding requirements for authorization
`
`of a new tobacco product for harm reduction, requiring the submission of extensive data
`
`
`
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`and information demonstrating that the proposed new product protects the public health.
`
`This showing must be made “with respect to the risks and benefits to the population as a
`
`whole,” taking into account “the increased or decreased likelihood that existing users of
`
`tobacco products will stop using such products… [and] that those who do not use tobacco
`
`products will start using such products.” See Federal Food, Drug, and Cosmetic Act §
`
`910(c)(4).
`
`54.
`
`In response to the Order, Reynolds Vapor did not withdraw the Accused
`
`VUSE Vapor Products from the U.S. market, but instead submitted PMTAs requesting
`
`the ability to continue to sell the products in the United States. During a February 27,
`
`2020 earnings call, BAT’s Chief Executive stated that its “first priority” was to submit
`
`PMTAs for its e-vapor products, including the Accused VUSE Vapor Products. Upon
`
`information and belief, a PMTA has been submitted for at least the VUSE VIBE. The
`
`BAT investor report characterized BAT/Reynolds Vapor as being in a “very strong
`
`position” as a result of the PMTA submissions. Indeed, during the February 27, 2020
`
`earnings call, BAT’s Chief Executive reiterated that Reynolds Vapor was “well-
`
`positioned” and “in a very strong position” in the U.S. market by the end of the PMTA
`
`submission deadline, estimating potentially £1.5 billion (~$1.85 billion) of revenue to
`
`“materialize in 2021.” Reynolds Vapor planned to achieve such sales in part through
`
`“direct-to-consumer” and “e-commerce” efforts.
`
`55. Reynolds Vapor’s commitment to continue to make, use, sell, offer for sale,
`
`and/or import the Accused VUSE Vapor Products in the U.S. demonstrates that Reynolds
`
`
`
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`Vapor intends to continue to infringe the Asserted Patents, as set forth in the Counts
`
`below.
`
`REYNOLDS VAPOR’S INFRINGING VELO PRODUCTS
`
`56. Upon information and belief, Reynolds Vapor designs, manufactures and/or
`
`has manufactured for it, imports, offers for sale, and sells packaged smokeless nicotine
`
`pouches marketed under the name “VELO” (collectively, “the Accused VELO
`
`Products”) in the U.S. See https://www.velo.com. The acts of making, using, selling, and
`
`offering for sale the Accused VELO Products in the U.S., and the act of importing the
`
`same into the U.S., constitute infringement of some of the Asserted Patents as detailed in
`
`the Counts below.
`
`57.
`
`There are at least two varieties of Accused VELO Products that infringe
`
`one or more of the Asserted Patents, as described in detail in the below Counts: VELO
`
`Citrus and VELO Mint. Each variety is available in either 2 or 4 mg nicotine dosages.
`
`Upon information and belief, the Accused VELO Products comprise one or more
`
`pouches of nicotine extracted from tobacco plants and mixed with, inter alia, artificial
`
`flavors. The pouches are held in a container having a non-hermetic seal that keeps the
`
`pouches fresh for consumer use.
`
`58.
`
`The Accused VELO Products are depicted below:
`
`
`
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`Accused VELO Products in Citrus and Mint Flavors
`
`59. Upon information and belief, the Accused VELO Products are strategically
`
`
`
`and economically important to Defendant and its parent companies, RAI and BAT.
`
`During its Investor Day on March 14, 2019, BAT noted to investors that the Accused
`
`VELO Products offered “new opportunities for growth, expansion, and innovation,” and
`
`pointed out that such oral tobacco products were a “high margin business” “contributing
`
`strong profit.” With respect to the Accused VELO Products, BAT was planning a
`
`summer 2019 rollout with a “disruptive campaign, digital activation, and ATC
`
`engagement platforms to build awareness.”
`
`60. At its February 27, 2020 earnings call, BAT’s Chief Executive stated that
`
`there had been “very good performance with the Velo brand” and he was “very pleased
`
`with the results” of the summer 2019 rollout.
`
`
`
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`61. During its Capital Markets day on March 18, 2020, a BAT executive stated
`
`that oral products such as the Accused VELO Products had a “large global potential,” and
`
`that the Accused VELO Products were “the fastest growing brand in the United States”
`
`since their launch in July 2019. The BAT executive further states that all of BAT’s
`
`“modern oral” products would be migrating to a “single global brand in Velo” and BAT
`
`was “very confident in the future of Velo.”
`
`62.
`
`The success of the Accused VELO Products is attributable to those
`
`products embodying the inventions described and claimed in some of the Asserted
`
`Patents.
`
`REYNOLDS VAPOR KNOWS OF THE ASSERTED PATENTS, KNOWS AND
`SPECIFICALLY INTENDS THAT THE ACCUSED VUSE VAPOR PRODUCTS
`AND ACCUSED VELO PRODUCTS INFRINGE THE ASSERTED PATENTS,
`AND KNOWS THAT THOSE PRODUCTS ARE ESPECIALLY MADE OR
`ESPECIALLY ADAPTED FOR USE IN INFRINGING THE ASSERTED
`PATENTS
`
`63. Upon information and belief, Defendant knows of the Asserted Patents.
`
`First, upon information and belief, Defendant regularly surveys the patent literature—and
`
`especially that of competitors—for relevant patents and has encountered the Asserted
`
`Patents. Second, this complaint informs Defendant about the Asserted Patents. Third,
`
`upon information and belief, all of the Asserted Patents and/or their family members have
`
`been cited during prosecution of Defendant’s own patents.
`
`64. Upon information and belief, Defendant knows and specifically intends that
`
`its actions—including providing instructions with its products—induce actual
`
`infringement of the Asserted Patents. First, upon information and belief, Defendant
`
`
`
`17
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 18 of 136
`
`

`

`analyzes whether it has freedom to operate and therefore has considered whether its
`
`actions induce others to infringe the Asserted Patents. Second, this complaint informs
`
`Defendant that its actions induce infringement.
`
`65. Upon information and belief, Defendant knows that each of the elements in
`
`the Accused Products are especially made or especially adapted for use in an
`
`infringement of the Asserted Patents and is not a staple article or commodity of
`
`commerce suitable for substantial noninfringing use. First, upon information and belief,
`
`Defendant analyzes whether it has freedom to operate and therefore has considered
`
`whether its actions contribute to others infringing the Asserted Patents. Second, this
`
`complaint informs Defendant of its infringement.
`
`COUNT I
`INFRINGEMENT OF U.S. PATENT NO. 10,143,242
`
`66.
`
`Plaintiffs re-allege and incorporate by reference the allegations of the
`
`
`
`preceding paragraphs of this Complaint as if fully set forth herein.
`
`67.
`
`The Accused VUSE VIBE Products directly infringe under 35 U.S.C. §
`
`271, literally or under the doctrine of equivalents, one or more claims of the 242 Patent
`
`(including at least claims 1-6 and 8-9). Reynolds Vapor makes, uses, sells, offers to sell,
`
`and/or imports the Accused VUSE VIBE Products in the United States, including in this
`
`Judicial District and elsewhere. See, e.g., https://vusevapor.com/vibe-complete-kit (Vibe
`
`Complete Kit (Power Unit + Flavor Pack), https://vusevapor.com/devices/vibe/flavors
`
`(Vibe Flavor Pack Tanks), https://vusevapor.com/vibe-power-unit (Vibe Power Unit).
`
`
`
`18
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 19 of 136
`
`

`

`68.
`
`Set forth below is a non-limiting description of the direct infringement of
`
`claim 1 of the 242 Patent by Defendant in connection with the Accused VUSE VIBE
`
`Products. The description is based on publicly available information. Plaintiffs reserve
`
`the right to modify the description, including, for example, on the basis of information
`
`about the Accused VUSE VIBE Products that it obtains during discovery.
`
`Claim 1
`
`An electronic vaping device comprising:
`
`69.
`
`The Accused VUSE VIBE Products comprise an electronic vaping device.
`
`
`
`19
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 20 of 136
`
`

`

`
`
`
`
`https://vusevapor.com/vibe-complete-kit (annotated in yellow).
`
`https://vusevapor.com/faqs (annotated in yellow).
`
`
`
`20
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 21 of 136
`
`

`

`a battery portion, the battery portion including a battery configured to provide power to
`the electronic vaping device,
`
`
`70.
`
`The Accused VUSE VIBE Products include a “Power Unit,” which
`
`comprises a battery portion having a battery configured to provide power to the electronic
`
`vaping device.
`
`https://vusevapor.com/vibe-complete-kit (annotated in yellow).
`
`https://vusevapor.com/faqs (annotated in yellow).
`
`
`
`
`
`The Accused VUSE VIBE Products (Battery Shown)
`
`
`
`the battery portion including an air-flow sensor,
`
`71.
`
`The Accused VUSE VIBE Products comprise a battery portion including an
`
`air-flow sensor.
`
`
`
`21
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 22 of 136
`
`

`

`
`
`The Accused VUSE VIBE Products (Airflow Sensor Shown)
`
`the battery portion including circuitry linked to the air-flow sensor,
`
`72.
`
`The Accused VUSE VIBE Products comprise a battery portion including
`
`circuitry linked to an air-flow sensor.
`
`
`
`The Accused VUSE VIBE Products (Airflow Sensor Linked to Circuitry)
`
`the battery portion including one or more electronic chips;
`
`73.
`
`The Accused VUSE VIBE Products comprise a battery portion including
`
`one or more electronic chips.
`
`
`
`22
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 23 of 136
`
`

`

`
`
`The Accused VUSE VIBE Products (Electronic Chips Shown)
`
`a cartridge configured to be coupled with the battery portion,
`
`74.
`
`The Accused VUSE VIBE Products comprise a cartridge configured to be
`
`coupled with the battery portion.
`
`The Accused VUSE VIBE Products (Original Cartridge (Mouthpiece Removed))
`
`
`
`
`
`The Accused VUSE VIBE Products (Cartridge End (Left) and Battery Portion End
`(Right))
`
`
`The Accused VUSE VIBE Products (Cartridge Coupled to Battery Portion)
`
`
`
`
`
`23
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 24 of 136
`
`

`

`the cartridge configured to generate a dispersion that is added to air flow through the
`cartridge,
`
`
`The Accused VUSE VIBE Products comprise a cartridge configured to
`
`75.
`
`generate a dispersion that is added to air flow through the cartridge.
`
`The Accused VUSE VIBE Products (Air Flow Through Cartridge)
`
`
`
`https://vusevapor.com/faqs (annotated in yellow).
`
`the cartridge including a heating coil wrapped around a wick,
`
`76.
`
`The Accused VUSE VIBE Products comprise a cartridge including a
`
`heating coil wrapped around a wick.
`
`
`
`
`
`24
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 25 of 136
`
`

`

`The Accused VUSE VIBE Products (Wick and Heating Coil Shown)
`
`the cartridge including an airflow tube and an outer housing,
`
`77.
`
`The Accused VUSE VIBE Products comprise a cartridge with an airflow
`
`
`
`tube.
`
`The Accused VUSE VIBE Products (Cartridge Airflow Tube Shown)
`
`
`
`
`
`25
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 26 of 136
`
`

`

`78.
`
`The Accused VUSE VIBE Products include a cartridge with an outer
`
`housing.
`
`The Accused VUSE VIBE Products (Cartridge with Outer Housing)
`
`
`
`The Accused VUSE VIBE Products (Cartridge– Exploded View) (Liquid Removed)
`
` the cartridge being filled with liquid; and
`
`79.
`
`The Accused VUSE VIBE Products comprise a cartridge filled with liquid.
`
`
`
`The Accused VUSE VIBE Products (Cartridge Containing Liquid)
`
`
`
`
`
`
`
`26
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 27 of 136
`
`

`

`https://vusevapor.com/vibe-complete-kit (annotated in yellow).
`
`a mouthpiece connected to the cartridge,
`
`80.
`
`The Accused VUSE VIBE Products comprise a mouthpiece connected to a
`
`cartridge.
`
`The Accused VUSE VIBE Products (Mouthpiece)
`
`
`
`
`
`The Accused VUSE VIBE Products (Mouthpiece Connected to Cartridge)
`
`the mouthpiece being attached to an outer surface of the cartridge, and
`
`81.
`
`The Accused VUSE VIBE Products comprise a mouthpiece attached to the
`
`outer surface of a cartridge.
`
`
`
`27
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 28 of 136
`
`

`

`The Accused Vibe Device (Mouthpiece Attached to Cartridge Exterior)
`
`
`
`an end region of the cartridge extending into the mouthpiece such that the mouthpiece
`surrounds at least a portion of the end region of the cartridge.
`
`
`The Accused VUSE VIBE Products comprise a mouthpiece surrounding at
`
`82.
`
`least a portion of the end region of a cartridge.
`
`The Accused Vibe Device (Mouthpiece Surrounding Cartridge)
`
`83. Reynolds Vapor has also indirectly and is indirectly infringing at least
`
`claims 1-6, 8, and 9 of the 242 Patent.
`
`
`
`
`
`28
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 29 of 136
`
`

`

`84. Reynolds Vapor induces infringement of the 242 Patent by its customers
`
`under 35 U.S.C. § 271(b) by encouraging those customers to use the Accused VUSE
`
`VIBE Products, which Reynolds Vapor knows infringes the 242 Patent. Reynolds Vapor
`
`has had knowledge of the 242 Patent since at least the filing of this lawsuit and knew or
`
`should have known that the use of the Accused VUSE VIBE Products by its customers
`
`directly infringes. The Accused VUSE VIBE Products infringe as shown above.
`
`Reynolds Vapor on its website and in the Accused VUSE VIBE Products’ packaging,
`
`direct, instruct, and encourage customers of the Accused VUSE VIBE Products to use the
`
`Accused VUSE VIBE Products.
`
`
`
`The Accused VUSE VIBE Products (Instructions for Use)
`
`
`
`
`
`29
`Case 1:20-cv-00472-NCT-JLW Document 1 Filed 05/28/20 Page 30 of 136
`
`

`

`See also https://vusevapor.com/faqs (“Vuse Vib

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