Category: Intellectual Property

  • Poda’s Patent Approved for Innovative Closed-Bottom Pod

    Poda’s Patent Approved for Innovative Closed-Bottom Pod

    Photo: Poda Holdings

    Poda Holdings has received a U.S. patent for its closed bottom vaporizer pod. The patent was granted on Dec. 28, 2021.

    “Receiving this Notice of Issuance is the culmination of a substantial amount of work by Poda and our intellectual property team,” said Ryan Selby, CEO of Poda, in a statement. “The application for this invention was initially filed on March 17, 2017. After almost five years of dedicated work and substantial financial investments, I am extremely proud to have this valuable patent granted by the U.S. Patent and Trademark Office.

    “With the granting of this U.S. patent, Poda will effectively be the only company that can market a closed-ended heat-not-burn cigarette in the United States. We have already received a granted Canadian patent for this invention, and we now look forward to receiving granted patents for this application in the over 60 additional countries where this application has been filed. We believe this patent has incredible applicability in the global heat-not-burn market, and we look forward to marketing our patented products on a global scale.”

  • PHD Marketing Settles VPR Brands IP Dispute for $85,000

    PHD Marketing Settles VPR Brands IP Dispute for $85,000

    Illustration: VPR Brands

    PHD Marketing has agreed to pay VPR Brands $85,000 to settle an intellectual property dispute. As part of the deal, VPR Brands has granted PHD a nonexclusive, non-assignable license to practice the invention set forth in the patent.

    This U.S. patent includes 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, e-cigarettes, cigalikes, pod devices and vaporizers using an airflow sensor rather than a button.

    VPR previously filed a lawsuit in the U.S. District Court for the Central District of California alleging patent infringement of U.S. Patent by PHD.

    “I want to once again thank our legal team at SRIPLAW for their hard work and diligence in settling this matter,” said VPR CEO Brands Kevin Frija in a statement. “It is a Win-Win for All parties when a dispute can be settled ahead of trial.”

    Previously, HQDTECH USA and Nepa 2 Wholesale agreed to pay more than $275,000 to VPR Brands for infringing on the same patent.

  • Kanabo CBD-Based Cessation Aid Close to Patent Award

    Kanabo CBD-Based Cessation Aid Close to Patent Award

    Kanabo today announced that its unique CBD and nicotine formula for help in quitting both e-cigarettes and traditional cigarettes has moved from the Patent Cooperation Treaty (PCT) phase to National Phase in the U.S., U.K., and E.U. countries. It’s the last phase before becoming an internationally approved patent.

    Credit: Kanabo

    One of Europe’s fastest-growing medical cannabis and R&D companies that focuses on the distribution of cannabis-derived products for medical patients, and wellness CBD consumers, Kanabo’s says the smoking cessation market is expected to reach £50 million within a few years. “Kanabo’s unique, high potency CBD and nicotine and standalone CBD formulas, delivered by their proprietary cartridges and VapePod, can be used to treat nicotine and tobacco addiction, with evidence so far suggesting the program significantly reduces physical and psychological nicotine withdrawal effects,” a press release states.

    Covered under the Kanabo patent application is a new formula development of specific naturally derived terpenes to allow the application of a “very consistent and reproducible, high concentration of CBD throughout the life of the Kanabo cartridge.” Initially, CBD is combined with nicotine, which is then reduced over several weeks until there is zero Nicotine presence. Tests with a small group of volunteers cigarette smokers that participated in Kanabo’s trial showed an “average reduction of 70 percent in their cigarette consumption” and did not experience physical or psychological withdrawal effects

    “Our unique patent pending CBD formulations and controlled and consistent delivery device, the VapePod, represents an excellent opportunity for governments to quickly end the reliance on tobacco for millions of citizens worldwide,” said Avihu Tamir, CEO for Kanabo. “Our tests show a dramatic reduction in nicotine consumption, whether in cigarettes or e-cigarettes, which can only be good news for health services around the world.”

  • VPR Brands Settles E-Cigarette Airflow Patent Lawsuit

    VPR Brands Settles E-Cigarette Airflow Patent Lawsuit

    VPR Brands has settled a patent lawsuit that applies to technology used by numerous e-cigarette manufacturers. The 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, button less e-cigarettes, cigalikes, pod devices and vaporizers using an airflow sensor rather than a button.

    The technology is covered under electronic cigarette utility patent US 8205622. The lawsuit, filed on May 3, 2021 in the Florida Southern District Court, VPR Brands, LP v. HQDTech USA LLC and NEPA 2 Wholesale, LLC was settled with both defendants for a total sum greater than $275,000 to be paid to VPR Brands. In addition, pursuant to the terms of the settlement agreement, VPR Brands agreed to license the patent and related patents and applications to NEPA and some of its affiliates.

    “I want to thank our legal team at SRIPL Law for their hard work and diligence in settling this matter, they have been preparing to go to court and litigate on our behalf for the better of 2 years now and preparation is key in negotiating and settling any dispute,” stated Kevin Frija, CEO of VPR Brands in a press release. “Ultimately it is a win-win for all parties when a dispute can be settled ahead of trial, but you must be prepared to take it all the way and the litigation team at SRIP Law is ready, willing and able to go the distance if needed and that is what counts when protecting intellectual property.”

    Florida-based VPR Brands VPR Brands is a manufacturer of electronic cigarettes and vaporizers for nicotine, cannabis and cannabidiol (CBD). Its assets include issuing U.S. and Chinese patents for atomization-related products including technology for medical marijuana, hemp, and electronic cigarette products and components as well as lighters. The company is also engaged in product development, according to the release.

  • Altria Banned From Importing IQOS Into U.S.

    Altria Banned From Importing IQOS Into U.S.

    Photo: Kuznietsov Dmitriy

    The U.S. Trade Representative has upheld the International Trade Commission’s (ITC) finding that Philip Morris International’s IQOS tobacco heating device infringes on patents held by British American Tobacco, reports The Winston-Salem Journal.

    As a result of the ITC ruling, Philip Morris USA is barred from importing PMI’s IQOS 2.4, IQOS 3, IQOS 3 Duo heat-not-burn traditional cigarette products. It also was ordered to halt future sales of those products—marketed as Marlboro HeatSticks—already in the U.S.

    Some retailers of the Marlboro HeatSticks, including convenience stores, already had displayed notifications to customers that those products could no longer be sold as of Monday.

    “Today’s announcement provides a measure of success for our enforcement of intellectual property rights to ensure we can continue to innovate, as is common practice among innovation-based industries,” Gareth Cooper, BAT’s assistant general counsel, said in a statement. “As we have strenuously noted, there was no reason to overturn the policy.”

    Altria said expressed disappointment with the decision. “We continue to believe that the plaintiff’s patents are invalid and that IQOS does not infringe on those patents,” the company said in a statement.

    “The ITC’s importation ban makes the product unavailable for all consumers who have switched to IQOS, reduces the options for the over 20 million smokers looking for alternatives to cigarettes, and ultimately is detrimental to the public health.”

    This sentiment was echoed by Gregory Conley, president of American Vaping Association, at the time of the ITC’s Sept. 30 decision.

    “By potentially denying them the opportunity to switch to a harm reduction production IQOS, the real losers of this protracted court battle could end up being American adult smokers,” Conley said.

    “While some may use vaping, snus, or pouches in the absence of IQOS, far too many American adults will choose to just smoke cigarettes instead.”

    The U.S. Food and Drug Administration authorized IQOS for sale in April 2019. The products debuted in test markets in Atlanta in October 2019 and Richmond, Virginia, in November 2019. During the second quarter, PM USA expanded retail distribution of Marlboro HeatSticks into the Triad and other metro areas of North Carolina, as well as northern Virginia and Georgia.

    Altria will likely appeal to the U.S. Court of Appeals for the Federal Circuit, which handles patent lawsuits. That process could take up to a year to reach a decision, with the likelihood of a successful appeal not favorable, according to industry analysts.

    In the worst-case scenario for Altria and Philip Morris, the two companies would have to go back to the drawing board, moving production to the U.S. or changing up the design enough to avoid patent infringement claims.

    PMI has successfully defended similar cases in the U.K. and elsewhere. BAT has already pursued litigation over IQOS in Poland, the Czech Republic, Bulgaria, Romania and Greece and through the European Patent Office.

  • PMI Makes Case for U.S. Sales of IQOS at FDA

    PMI Makes Case for U.S. Sales of IQOS at FDA

    Credit: Aidman

    Philip Morris International met with the U.S. Food and Drug Administration on Nov. 5 to present its argument for why the multinational and Altria Group should be allowed to import and sell the IQOS tobacco-heating device in the U.S., reports CNBC.

    According to a CNBC source, PMI told the FDA that IQOS is unique in its ability to transition smokers away from combustible cigarettes, which the company says are more harmful to health than tobacco-heating devices.

    In late September, the International Trade Commission ruled that IQOS infringed on two of Reynolds’ patents. The Biden administration is conducting an administrative review until Nov. 29 to decide if the sale and import of the cigarette alternative will be banned.

    During the FDA meeting, PMI reportedly argued that the ITC overstepped its bounds, given that the FDA is in charge of regulating which tobacco products can be sold.

    The U.S. Trade Representative will make a recommendation to President Joe Biden after listening to input from a number of agencies, including the FDA, which regulates tobacco products.

    If the administration sides with R.J. Reynolds in the dispute, IQOS could be off of U.S. shelves for months as it waits for a decision on a separate claim from Reynolds with the U.S. Patent and Trademark Office.

    PMI has successfully defended similar cases in the U.K. and elsewhere. BAT has already pursued litigation over IQOS in Poland, the Czech Republic, Bulgaria, Romania and Greece and through the European Patent Office.

    In the worst-case scenario for Altria and Philip Morris, the two companies would have to go back to the drawing board, moving production to the U.S. or changing up the design enough to avoid patent infringement claims.

  • ITC: IQOS Infringes on BAT Patents, U.S. Sales to End

    ITC: IQOS Infringes on BAT Patents, U.S. Sales to End

    Photo: theaphotography

    The International Trade Commission (ITC) has upheld an initial determination from May 2021 that Philip Morris International’s IQOS device infringes on two patents owned by BAT subsidiary Reynolds American Inc. (RAI).

    The agency has instituted an import ban and a cease-and-desist order preventing IQOS consumables and devices from being sold in the U.S. in 60 days. PMI’s U.S. partner, Altria Group, plans to continue to sell IQOS through the 60-day period in its existing markets.

    BAT welcomed the ruling. “Infringement of our intellectual property undermines our ability to invest and innovate and thereby reduce the health impact of our business,” the company wrote in a statement. “We will therefore defend our IP robustly across the globe.”

    The patents relate to an electronically powered device with a heater to generate an aerosol and expire in October 2026 and November 2031. BAT has filed similar cases globally, including in Germany, the U.K., Japan and Italy.

    Morgan Stanley said the ruling would have limited financial impact on PMI and Altria, as IQOS in the U.S. is not a meaningful contributor to the companies’ earnings. The outcome of similar cases brought by BAT against PMI internationally, however, could have a greater impact. But so far, PMI has been successful defending cases in the U.K. and Greece.

    The investment bank also noted that the IQOS ban applies to imported product, suggesting it may be overcome by shifting production to the U.S.

    The ITC decision will now be reviewed by the U.S. Trade Representative. If the decision is not vetoed within 60 days (only a handful have ever been vetoed), it can be appealed to the U.S. Court of Appeals, but the import ban would still be in effect throughout an appeals process.

  • IQOS Pauses Expansion After Patent Ruling

    IQOS Pauses Expansion After Patent Ruling

    Photo: Kuznietsov Dmitriy

    Philip Morris USA has paused U.S. expansion of its IQOS heat-not-burn (HnB) cigarettes following an unfavorable U.S. International Trade Commission (ITC) ruling, reports The Winston-Salem Journal, citing the company’s second-quarter report.

    In April 2020, British American Tobacco subsidiaries R.J. Reynolds Tobacco Co., RAI Strategic Holdings and R.J. Reynolds Vapor Co. filed a patent infringement lawsuit against Philip Morris USA.

    The complaint focuses on three HnB technology patents held by the company. An additional two patents are involved in a separate legal proceeding before the patent and trademark office.

    In May, an ITC administrative law judge found that the IQOS system infringes two of the plaintiff’s patents and recommended imposition of a ban on the importation of the IQOS system.

    On July 27, the ITC accepted review of the administrative law judge’s findings and recommendations on certain issues, including issues relating to the patent infringement claims and potential remedies, including a ban on the importation of the IQOS electronic device, Marlboro HeatSticks and component parts into the United States and on the sale of any such products previously imported into the United States.

    The ITC’s ultimate order is subject to review by the U.S. Trade Representative and federal court. Due to this uncertainty, PM USA has delayed further expansion of IQOS and Marlboro HeatSticks.

    IQOS is the only HnB product authorized for sale in the U.S., where it is 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.

    The IQOS products debuted in test markets in Atlanta, Georgia, in October 2019 and Richmond, Virginia, in November 2019.

    During the second quarter, PM USA expanded retail distribution of Marlboro HeatSticks into the Triad and other metro areas of North Carolina as well as northern Virginia and Georgia.

    The expansion contributed to Marlboro HeatSticks’ retail sales volume jumping by nearly 40 percent, including reaching a 0.8 percent market share for overall cigarettes in Atlanta as well as 0.5 percent in Charlotte.

  • Next Generation Labs Nixes Patent Agreement with Kaival

    Next Generation Labs Nixes Patent Agreement with Kaival

    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.

  • Australian Patent for Next Generation’s Synthetic Nicotine

    Australian Patent for Next Generation’s Synthetic Nicotine

    Image: Zerbor

    Next Generation Labs has received an Australian patent for its innovative use of combinational ratios of synthetic R- 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- 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- 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 non-addictive 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.