Juul Labs now ahead in e-cigarette battle with NJOY after latest ruling

NJOY would like to see nine patents concerning Juul Labs’ vaporizer technology removed from the market by the Unified Patent Court. It therefore filed corresponding revocation actions in September 2023. In the meantime, seven cases have been decided in the first instance. The latest decision was handed down yesterday. As it stands, patent holder Juul Labs and its subsidiary VMR Products are now slightly ahead with four wins to NJOY’s three.

As JUVE Patent has learned, the 2nd panel of the central division, consisting of presiding judge Paolo Catallozzi, Tatyana Zhilova and technically qualified judge Max Tilmann, yesterday rejected NJOY’s revocation claim against EP 3 613 453 and upheld the patent in amended form (case ID: UPC_CFI_310/2023). The court has not yet published the decision.

In contrast, two further decisions of the central division in the dispute are publicly accessible. On 21 January 2025, the 2nd panel ruled that EP 3 626 092 shall be maintained as granted. The panel rejected NJOY’s revocation claim (case ID: UPC_CFI 311/2023).

Just five days earlier on 17 January, the central division’s 1st panel revoked Juul Labs’ EP 3 430 921 (case ID: UPC CFI 316 /2023). The panel comprised presiding judge François Thomas and Maximilian Haedicke as well as Max Tilmann. All patents concern Juul Labs’ vaporizer technology.

Four judgments before Christmas

In winter 2024, the Paris central division already handed down the first four judgments in the nine revocation actions brought by NJOY Netherlands against Juul Labs and VMR Products.

On 5 November, the 1st panel confirmed Juul Labs’ EP 3 504 991 as inventive (case ID: UPC_CFI_315/2023). 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 (case ID: UPC_CFI_309/2023).

On 29 November, the 2nd panel 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. 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 final third

But the battle is far from over. The two companies are also facing each other in US courts. The UPC central division heard all of NJOY’s revocation claims before Christmas. These concerned EP 092, EP 921, EP453, EP 3 504 989, and EP 3 504 990. After the latest rulings, the decisions on the validity of EP 989 and EP 990 are still pending but are expected shortly. The tide could turn again in favour of NJOY.

In any case, the dispute is likely to continue for some time. As JUVE patent has learned, parties have now filed appeals against some of the decisions published before Christmas.

Stable advisory teams

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, as well as European patent attorney Diana Pisani provide support. Patent attorney Mathias Karlhuber of Cohausz & Florack is co-counsel and provides technical expertise.

Bernhard Thum of Munich-basead 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.