R.J. Reynolds settles e-cigarette patent dispute shortly before trial

An R.J. Reynolds sign is seen outside the 1-million-square-foot cigarette manufacturing facility in Tobaccoville, North Carolina May 23, 2014. R.J. Reynolds Tobacco Company announced that a subsidiary, R.J. Reynolds Vapor Co., will start of production of the VUSE digital vapor cigarette and create at least 200 new jobs in Tobaccoville. REUTERS/Chris Keane (UNITED STATES – Tags: BUSINESS COMMODITIES)

  • Fuma International sued RJR for copying vape tech
  • Judge found infringement in May
  • Settlement comes four days before scheduled jury trial

(Reuters) – R.J. Reynolds has settled an e-cigarette maker’s claims that RJR’s Vuse line copied its technology four days before a trial was slated to begin, according to a Thursday filing in North Carolina federal court.

U.S. District Judge Catherine Eagles found in May that RJR’s products infringed parts of two Fuma patents. A jury in Greensboro, N.C., was set to consider on Monday whether RJR infringed additional parts of one of the patents, whether the patents were valid, and what damages RJR owed, among other things.

Fuma sued Winston-Salem, N.C.-based RJR in 2019 for infringing patents related to an e-cigarette design with a cartridge and power source. The complaint said RJR copied Medina, Ohio-based Fuma’s design after meeting with Fuma about its e-cigarette technology in 2010.

Fuma was asking for up to $135 million in damages, according to court filings.

Vuse is one of the most popular e-cigarette brands in the country. RJR introduced the Vuse Solo in 2013 and the Vuse Ciro in 2017. The U.S. Food and Drug Administration gave RJR permission to market Solo in October, its first-ever authorization for a vaping product.

The tobacco giant argued the relevant parts of the patents were invalid based on prior art that disclosed the same design.

Details of the settlement weren’t immediately available. RJR declined to comment.

Fuma and its attorneys Christopher Sullivan of Robins Kaplan and Brandon Jordan of the Law Firm of Brandon M. Jordan didn’t immediately respond to a request for comment, nor did RJR’s attorneys Ralph Gabric of Haynes & Boone and John Morrow of Womble Bond Dickinson.

The court said a stipulation of dismissal is due by Nov. 30.

The case is Fuma International LLC v. R.J. Reynolds Vapor Co, U.S. District Court for the Middle District of North Carolina, No. 1:19-cv-00260.

For Fuma: Christopher Sullivan of Robins Kaplan, Brandon Jordan of the Law Firm of Brandon M. Jordan, Dirk Thomas of Dirk D. Thomas, William Davis of Bell Davis & Pitt, Robert Auchter of Auchter.

For RJR: Ralph Gabric of Haynes & Boone, John Morrow of Womble Bond Dickinson

Read more:

R.J. Reynolds e-cigarettes infringe patents, N.C. court rules

U.S. FDA gives marketing nod to an e-cigarette for the first time

Blake Brittain

Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com

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