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

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 VMR 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.

Parties tied

Two days earlier, the same panel had declared EP 3 456 214, which also belongs to VMR, 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).

Active in the US

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.

Peak before Christmas

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.

In September 2023, NJOY launched one of the most extensive litigation campaigns in Europe’s e-cigarette industry. Henrik Holzapfel, partner at McDermott Will & Emery, filed ten revocation actions for NJOY Netherlands against the two competitors, Juul Labs and VMR Products, at the Paris central division. McDermott lawyers Laura Woll, and Lisa Nassi and European patent attorney Diana Pisani provide support. Patent attorney Mathias Karlhuber of Cohausz & Florack is co-counsel and providing technical expertise.

Since then, the wave of lawsuits has been one of the largest UPC actions in terms of the number of lawsuits filed. But compared to other big UPC battles, it is the only one to revolve exclusively around revocation actions.

Bernhard Thum of Munich-based patent attorney firm Thum IP represents the two defendants. In the current case, patent attorneys Jonas Weickert and Andreas Mötsch provided support. Thum IP already represents Juul in the opposition proceedings at the EPO, although there are no parallel national proceedings pending in Europe.

Since the dispute broke out, Tobias Wuttke of Bardehle Pagenberg. has provided legal support to the patent attorney team.