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AT T ORNEYS AT LAW
ORANGE COUNT Y
OC\1704069.1 1
FENNEMORE CRAIG, P.C. Andrew M. Federhar (Bar No. 6567) Ray K. Harris (Bar No. 7408)
[email protected] [email protected] 2394 East Camelback Road, Suite 600 Phoenix, AZ 85016 (602) 916-5301 / (602) 916-5972 (Fax) LATHAM & WATKINS LLP
Perry J. Viscounty* Ryan R. Owens*
perry.viscounty @lw.com [email protected] 650 Town Center Drive, 20th Floor Costa Mesa, CA 92626-1925 (714) 540-1235 / (714) 755-8290 (Fax) *Pro hac vice applications pending Attorneys for Plaintiff NJOY, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF ARIZONA NJOY, INC., a Delaware corporation, Plaintiff, v. VICTORY ELECTRONIC CIGARETTES CORPORATION, a Nevada corporation; VICTORY ELECTRONIC CIGARETTES INC., a Nevada corporation, Defendants.
Civil Action No. Complaint For: (1) Patent Infringement
(35 U.S.C. § 271) (2) Trade Dress Infringement
(15 U.S.C. § 1125) Demand For Jury Trial
Plaintiff NJOY, Inc. (“NJOY”), for its Complaint against Victory Electronic
Cigarettes Corporation and Victory Electronic Cigarettes, Inc. (collectively,
“Defendants”), alleges as follows:
THE PARTIES
1. NJOY is a Delaware corporation with its principal place of business at
15211 North Kierland Blvd., Suite 200 Scottsdale, AZ 85254.
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2. On information and belief, Victory Electronic Cigarettes Corporation is a
Nevada corporation with its principal place of business at 1880 Airport Drive, Ball
Ground, GA 30107.
3. On information and belief, Victory Electronic Cigarettes, Inc. is a Nevada
corporation with its principal place of business at 1880 Airport Drive, Ball Ground, GA
30107 and it is a wholly owned subsidiary of Victory Electronic Cigarettes Corporation.
4. On information and belief, Defendants were the agents of each other and, at
all times mentioned, acted within the course and scope of such agency.
JURISDICTION AND VENUE
5. This Court has subject matter jurisdiction over NJOY’s claims for patent
and trademark infringement pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331 and
1338(a).
6. On information and belief, this Court has general and specific personal
jurisdiction over Defendants because (1) Defendants have (a) conducted substantial
business in the State of Arizona; (b) derived financial benefits from residents of the State
of Arizona, including by marketing and selling infringing products to residents of the
State of Arizona and otherwise placing infringing products into the stream of commerce,
with the knowledge or understanding that such products are sold in the State of Arizona,
including within this district; (c) purposely availed themselves of the privilege of
conducting business within the State of Arizona; and (d) sought protection and benefits
from the laws of the State of Arizona; and (2) the causes of action arise directly from the
Defendants’ business contacts and other activities in the State of Arizona.
7. Venue is proper in this judicial district under 28 U.S.C. §§ 1391 and 1400
because Defendants have, among other things, committed infringing acts in this district
and generally conduct business in this district.
NATURE OF ACTION
8. Electronic cigarettes, which allow users to inhale a mixture of nicotine,
carriers, and flavorings and exhale vapor, are rapidly gaining popularity in the United
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States. Industry analysts anticipate electronic cigarette sales will reach $2 billion this
year within the United States, up from $500 million in 2012.
9. NJOY, the leading independent electronic cigarette company in the United
States, has remained on the forefront of the industry with its best-in-class and patented
electronic cigarettes and unique product packaging and branding.
10. NJOY's leading product is its NJOY King Cigarette (“NJOY Cigarette”),
which embodies various forms of intellectual property that NJOY has developed and
vigorously protected. For example, NJOY has (1) obtained a patent for the technology
used to simulate the natural burn of a traditional cigarette (U.S. Patent No. 8,539,959
(“the ’959 Patent”)); and (2) developed substantial common law trade dress rights in the
NJOY Cigarette’s product packaging (the “NJOY Case”), which consumers immediately
recognize as indicating the source of the products contained therein as originating from
NJOY.
11. Beyond developing the innovative NJOY Cigarette and NJOY Case, NJOY
has garnered widespread media acclaim and developed a deep connection with its loyal
consumer base. For example, NJOY has received numerous industry awards and
countless reviewers have raved about NJOY’s high quality and paradigm-shifting NJOY
Cigarette and NJOY Case. Further increasing NJOY's sterling reputation and brand
recognition, numerous famous investors, such as Sean Parker (of Facebook fame) and
Bruno Mars (a Grammy Award winning Pop star), as well as market luminary Douglas
Teitelbaum, have joined NJOY in its mission to render traditional cigarettes obsolete.
12. Capitalizing on its strong reputation, NJOY has experienced tremendous
sales of its NJOY Cigarette since its launch in December 2012 with millions of units
being sold across the nation and in all 50 states. NJOY has also heavily advertised the
NJOY Cigarette and NJOY Case, including during the Super Bowl and Academy
Awards, one of which sparked significant publicity for showing a man “smoking” an
NJOY Cigarette, an activity banned from television with traditional cigarettes for several
decades.
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13. Defendants, on the other hand, have unfairly attempted to gain an
advantage in the electronic cigarette market by infringing NJOY’s rights and attempting
to trade off NJOY’s reputation for high quality electronic cigarettes.
14. Rather than develop their own technology and branding identity,
Defendants have blatantly copied NJOY’s (1) lighting technology in their disposable
electronic cigarette (the “Victory Cigarette”), thereby infringing the ’959 Patent; and
(2) NJOY Case in their product case (the “Victory Case”), thereby infringing NJOY’s
trade dress rights in the NJOY Case.
15. Accordingly, to stop Defendants’ unlawful conduct and obtain
compensation for the violations that have already occurred, NJOY brings this Complaint
against Defendants for patent infringement in violation of 35 U.S.C. § 271, et seq., and
federal trade dress infringement in violation of 15 U.S.C. § 1125, et seq.
FACTS COMMON TO ALL CLAIMS FOR RELIEF
The NJOY Cigarette
16. NJOY is a market leader in the electronic cigarette industry because, among
other things, it offers consumers a product that is both familiar to, yet vastly different
than, a traditional cigarette. Specifically, the NJOY Cigarette resembles a traditional
cigarette in look, size, feel (including a paper wrapping and soft tip in place of a fibrous
filter), and taste. Indeed, NJOY’s leading advertisement for its NJOY Cigarette, which
aired during the Super Bowl and Academy Awards, features a man enjoying what
appears to be a traditional cigarette (but is an NJOY Cigarette) with the announcer stating
that: “You know what the most amazing thing about this cigarette is? It isn’t one.
Introducing the NJOY King, the first electronic cigarette with the look, feel, and flavor of
the real thing. . . . Cigarettes, you’ve met your match.” A key frame from the
commercial is as follows:1
1 See www.njoy.com/how-it-works (Last visited Nov. 14, 2013)
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17. At the heart of the NJOY Cigarette’s similarity to cigarettes is its lighted tip
that radiates a familiar red glow from the tip and surrounding sides of the cigarette and
simulates the familiar burn of a traditional cigarette when the user inhales. The NJOY
Cigarette so closely resembles a traditional cigarette that people often mistake it for a
traditional cigarette. For example, consumers enjoying it in bars and clubs (where
traditional cigarettes are largely banned) have developed a unique social ritual to alert
security guards that their “cigarette” is an NJOY Cigarette. Specifically, consumers will
inhale from the NJOY Cigarette, thereby activating the red tip, and then quickly press it
to their forehead to clearly indicate that it is not actually burning and is therefore
electronic and not prohibited.
18. Not only have consumers recognized the value of the NJOY Cigarette’s
similarity to cigarettes, including the lighted tip technology, by purchasing millions of
NJOY Cigarettes since their launch, but the United States Patent and Trademark Office
(“USPTO”) issued NJOY a patent for this technology. On September 24, 2013, the
USPTO duly and legally issued the ’959 Patent, entitled “Electronic Cigarette Configured
to Simulate the Natural Burn of a Traditional Cigarette.” NJOY is the sole owner of the
‘959 Patent. A true and correct copy of the ’959 Patent is attached hereto as Exhibit A.
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The NJOY Case
19. To further deepen consumer loyalty and goodwill, distinguish its products
from competitors, and allow consumers to quickly identify NJOY’s products on crowded
store shelves, NJOY developed a distinctive product case. The NJOY Case is a highly
unique product packaging that appears as follows:
20. NJOY designed its highly stylish and unique NJOY Case to serve as a
source identifier of its products. As revealed by numerous studies, cigarette packaging
functions as a “badge product” because users consistently carry it with them throughout
the day and often publicly display it while smoking. As explained by a cigarette package
designer, “[a] cigarette package is unique because the consumer carries it around with
him all day . . . it’s a part of a smoker’s clothing, and when he saunters into a bar and
plunks it down, he makes a statement about himself.”2
21. Badge products allow users to associate themselves with a particular brand
and that brand’s identity and personality, as well as quickly identify the source of the
product. As one study succinctly stated, “when a cigarette pack is displayed in a store, it
2 See, e.g., M. Wakefield, et al, The Cigarette Pack as Image: New Evidence from Tobacco Industry Documents, Tobacco Control (March 2002, Volume 11, suppl. 1). (Last visited Nov. 14, 2013)
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is the sum of its contents, the pack, and its associated imagery, that is purchased by the
consumer.”3
22. Accordingly, NJOY developed its uniquely proportioned NJOY Case to
allow users to easily identify NJOY as the source of the products contained therein and
proudly affiliate themselves with the NJOY brand. As intended, consumers have become
attached to the NJOY Case and recognize it as a source identifier uniquely tied to NJOY.
For example, numerous reviewers of electronic cigarettes post videos to YouTube
discussing and describing their experiences with the NJOY Cigarette and NJOY Case. In
many of these videos, the reviewers rave about the unique nature of the NJOY Case and
spend a significant amount of time discussing the case, rather than the NJOY Cigarette
(the actual target of the review).4
23. NJOY has also heavily advertised its NJOY Case and it routinely features it
as the focal point of advertisements, which also tout its “unique” nature:5
3 Id. 4 See, e.g., hwww.youtube.com/watch?v=h1AjbJvcz4o (Last visited Nov. 14, 2013) 5 See, e.g., www.njoy.com/how-it-works (Last visited Nov. 14, 2013)
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24. As a result of the NJOY Case’s unique design, extensive advertising, and
extraordinary sales, the trade and consuming public have come to recognize the
distinctive styling and look and feel of the NJOY Case as representing products
originating solely from NJOY. Accordingly, the NJOY Case is entitled to trade dress
protection.
Defendants’ Infringing Activities
25. Rather than innovate and develop its own distinctive technology, style, and
brand, Defendants have improperly piggybacked on NJOY’s success and reputation by
blatantly copying NJOY’s patented technology and protectable trade dress to sell its
Victory Cigarette and Victory Case throughout the nation (including Arizona) through
their online storefront (victoryecigs.com) and various convenience stores.
26. The Victory Case’s overall appearance strongly shows Defendants’
wrongful and willful intent to confuse consumers into believing that there is an
affiliation, connection, or relationship between Victory and NJOY when there is not. A
simple comparison of the cases confirms Defendants’ intentional copying:
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27. Moving beyond the products’ overall appearances, Defendants copied the
exact dimensions and proportions of the NJOY Case, as well as the white hinge on the
flip-top lid:
(Width: 1.5 inches) (Height: 3.5 inches) (Depth: 0.406 inches)
28. Further, Defendants copied various other features of the NJOY Case and
NJOY’s marketing practices to confuse consumers into thinking that the Victory label is
an NJOY sub-brand. For example, Defendants copied many of the smaller features of the
NJOY Case, such as the inclusion of a stylized crown on the flip top lid:
29. Even the name of Defendants’ brand – Victory – heightens the potential for
consumer confusion as it may be understood to be a sub-brand offered by NJOY in
connection with its widely publicized mission to render traditional cigarettes obsolete.6
6 See, e.g., www.forbes.com/sites/marcbabej/2013/07/18/njoy-the-e-cigarette-that-aims-to-snuff-out-smoking/; mobile.nytimes.com/2013/10/27/business/the-e-cigarette-industry-waiting-to-exhale.html
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30. Defendants also copied NJOY’s practice of providing an informational
insert in the NJOY Case that provides information about the NJOY Cigarette and
NJOY’s recycling program. Not only did they copy these practices, Defendants slavishly
copied the actual text of NJOY’s informational insert, such as the following sentences:
1) “From its size, feel and look to its amazing taste, the
[NJOY/Victory] King gives you everything you love about the
smoking experience. So, go ahead, give it a try.”
2) “To begin take one long slow puff on the cigarette – no lighting or
charging required. The tip will light up reach each time you puff”
3) “[NJOY/Victory] . Send [NJOY/Victory] eight used
[NJOY/Victory] King’s electronic cigarettes and we’ll send you one
FREE [NJOY/Victory] King!”7
31. Consumers’ understanding and expectations of the electronic cigarette
industry further increases the likelihood that consumers will view the Victory Cigarette as
an NJOY sub-brand. As a preliminary matter, the relative youth and innovative nature of
the electronic cigarette industry heightens the potential for consumer confusion between
two products sold in identical cases. As one commentator noted, “[p]eople are easily
confused when it comes to electronic cigarette brands. They have been launched on the
market so quickly and so many tobacco brands have already embraced the movement that
for many smokers making the difference between the brands is a true challenge.”8
32. Consumers have also grown to expect that a cigarette company will offer
several sub-brands at different price points to capture different segments of the market.
For example, Reynolds America (the second largest tobacco company in the United
States) offers a wide variety of brands at various price points, such as Camel ($4.61),
7 Attached as Exhibit B is a copy of both parties’ informational inserts. Defendants copied other sections of the product insert as well and the above are just a few examples. 8 www.esontechnologies.com/blog/2013/electronic-cigarette-marketing-by-tobacco-companies (Last visited Nov. 14, 2013)
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L&M ($4.14), and Pall Mall ($4.09). Similarly, the Lorillard Tobacco Company offers
the Newport ($4.19) and Maverick ($4.09) brands, while Altria (the parent company of
Philip Morris USA (amongst others)) offers Marlboro cigarettes at various price points
with slightly different product packaging, such as traditional ($5.32) and Special Blend,
72’s, and Edge ($4.42). Given this and the other numerous similarities between the
NJOY and Victory Cases, consumers will likely be misled into believing that the Victory
Cigarette ($6.99) is a sub-brand of the more expensive NJOY Cigarette ($7.99).
33. Shortly after learning about the Victory Case, NJOY sent a cease and desist
letter (“Cease and Desist Letter”) to Defendants. Attached as Exhibit C is a true and
correct copy of NJOY’s Cease and Desist Letter. However, Defendants never responded
to NJOY’s Cease and Desist Letter and continue to willfully infringe NJOY’s intellectual
property rights.
NJOY Is Suffering Harm from Defendants’
Continuing Infringement and Unlawful Conduct
34. Due to NJOY’s renown and consumers’ recognition of its NJOY Case,
consumers will likely suffer confusion and mistakenly believe that Defendants and their
goods are endorsed, approved, or sponsored by, or affiliated, connected, or associated
with NJOY. Defendants will thus enjoy the benefits of NJOY’s reputation and goodwill
based on this consumer confusion, to NJOY’s detriment.
35. Defendants’ continued use of the Victory Case in commerce violates
NJOY’s valuable intellectual property rights in the NJOY Case, and Defendants’
knowing, intentional, and willful use of NJOY’s trade dress is damaging NJOY.
36. Because of Defendants’ continuing willful infringement and unlawful
conduct, NJOY is now forced to bring this Complaint to protect its valuable intellectual
property rights. NJOY has had to retain counsel and incur attorneys’ fees and costs (and
it continues to incur those fees and costs) to prosecute this lawsuit and pursue its claims.
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37. NJOY’s interest in protecting its intellectual property rights and its products
from consumer confusion outweigh any harm to Defendants. The public interest is best
served by granting NJOY’s requested relief against Defendants.
38. Defendants are direct competitors of NJOY and they are infringing NJOY’s
intellectual property in an emerging and new market to improperly erode and interfere
with NJOY’s sales.
FIRST CLAIM FOR RELIEF
Patent Infringement – 35 U.S.C. § 271
39. NJOY incorporates by reference the factual allegations set forth above.
40. On September 24, 2013, the USPTO duly and legally issued the ’959 Patent
for an invention entitled “Electronic Cigarette Configured to Simulate the Natural Burn
of a Traditional Cigarette.” NJOY is the owner of the ’959 Patent and holds all rights and
interests in the patent.
41. On information and belief, Defendants have been and currently are
infringing the ’959 Patent by, among other things, making, using, selling, and/or offering
to sell, within the territorial boundaries of the United States, products that are covered by
one or more claims of the ’959 Patent, including without limitation an electronic cigarette
with a lighted tip as described and claimed in the ’959 Patent. Such products include,
without limitation, the Victory Cigarette.
42. As a direct and proximate result of Defendants’ infringement of the ’959
Patent, NJOY has been and will continue to be irreparably damaged and deprived of its
rights in the ’959 Patent. Thus, NJOY is entitled to its actual damages and a permanent
injunction against further infringement pursuant to 35 U.S.C. §§ 283 and 284.
43. Defendants’ acts make this an exceptional case under 35 U.S.C. § 285, and
NJOY is thus entitled to an award of attorneys’ fees and costs.
SECOND CLAIM FOR RELIEF
Trade Dress Infringement – 15 U.S.C. § 1125(a)
44. NJOY incorporates by reference the factual allegations set forth above.
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45. NJOY has established a unique, protectable, and recognizable trade dress
for the NJOY Case, such that the trade and the general public recognize the NJOY Case
as originating from NJOY.
46. On information and belief, Defendants intended to, and did in fact, confuse
and mislead consumers into falsely believing that Defendants’ products originated from,
were licensed, sponsored, or approved by, or were somehow affiliated, connected, or
associated with NJOY.
47. In fact, there is no connection, association, or licensing relationship
between NJOY and Defendants, nor has NJOY ever authorized, licensed, or provided
permission to Defendants to use the NJOY Case trade dress in any manner whatsoever.
48. Defendants’ actions constitute trade dress infringement in violation of 15
U.S.C. § 1125(a).
49. As a direct and proximate result of Defendants’ wrongful conduct, NJOY
has been damaged and, unless Defendants are enjoined, will continue to be damaged.
50. On information and belief, Defendants’ activities have caused, and will
cause, irreparable harm to NJOY for which it has no adequate remedy at law, in that
(1) NJOY’s trade dress rights comprise unique and valuable property rights that have no
readily determinable market value; (2) Defendants’ infringement constitutes an
interference with NJOY’s goodwill and customer relationships and will substantially
harm NJOY’s reputation as a source of high quality goods and services; and
(3) Defendants’ wrongful conduct, and the damages resulting to NJOY, are continuing.
Accordingly, NJOY is entitled to injunctive relief pursuant to 15 U.S.C. § 1116(a).
51. Pursuant to 15 U.S.C. § 1117(a), NJOY is entitled to an order: (1) requiring
Defendants to account to NJOY for any and all profits derived by Defendants from their
actions, to be increased in accordance with the applicable provisions of law; and
(2) awarding all damages sustained by NJOY caused by Defendants’ conduct.
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52. Defendants’ conduct was intentional and without foundation in law, and
thus, pursuant to 15 U.S.C. § 1117(a), NJOY is entitled to an award of treble damages
against Defendants.
53. Defendants’ acts make this an exceptional case under 15 U.S.C. § 1117(a),
and NJOY is thus entitled to an award of attorneys’ fees and costs.
PRAYER
WHEREFORE, NJOY prays for a judgment that:
A. Defendants have infringed the ’959 Patent in violation of 35 U.S.C. § 271.
B. Defendants have willfully infringed NJOY’s trade dress in violation of
15 U.S.C. § 1125(a).
C. Defendants, their officers, agents, servants, employees, successors, and
assigns, their subsidiary and related entities, attorneys, and all other persons, firms,
associations, and entities who are in active concert or participation with them, be
permanently enjoined from:
1. infringing the ’959 Patent; and
2. infringing NJOY’s trade dress.
D. Within thirty (30) days after the entry and service on Defendants of an
injunction, Defendants must, pursuant to 15 U.S.C. § 1116(a), file with this Court and
serve upon NJOY’s counsel, a report in writing and under oath setting forth in detail the
manner and form in which Defendants have complied with the injunction.
E. NJOY be awarded damages as follows:
1. pursuant to 35 U.S.C. § 284, all damages adequate to compensate
NJOY for Defendants’ infringement of the ’959 Patent, and in no
event less than a reasonable royalty for Defendants’ acts of
infringement;
2. pursuant to 15 U.S.C. § 1117(a), NJOY’s actual damages, as well as
all of Defendants’ profits or gains of any kind from their acts of
trade dress infringement, including a trebling of those damages;
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F. This case be adjudged an exceptional case under 35 U.S.C. § 285, and
NJOY be awarded attorneys’ fees, expert witness fees, costs, and expenses incurred in
this action.
G. This case be adjudged an exceptional case under 15 U.S.C. § 1117(a), and
NJOY be awarded its reasonable attorneys’ fees.
H. NJOY be awarded pursuant to 35 U.S.C. § 284 and 15 U.S.C. § 1117(a) all
of its costs, disbursements, and other expenses incurred due to Defendants’ unlawful
conduct.
I. NJOY be awarded interest.
J. NJOY be awarded any other relief as the Court may deem just and
appropriate.
JURY DEMAND
Pursuant to Rule 38 of the Federal Rules of Civil Procedure, NJOY hereby
demands a trial by jury.
Dated: November 20, 2013 Respectfully submitted,
FENNEMORE CRAIG, P.C. Andrew M. Federhar Ray K. Harris
LATHAM & WATKINS LLP Perry J. Viscounty* Ryan R. Owens*
By /s/ Andrew M. Federhar
Andrew M. Federhar *Pro hac vice applications pending Attorneys for Plaintiff NJOY, Inc.
EXHIBIT A
US008539959B1
(12) United States Patent (10) Patent N0.: US 8,539,959 B1 Scatterday (45) Date of Patent: Sep. 24, 2013
(54) ELECTRONIC CIGARETTE CONFIGURED (58) Field of Classi?cation Search
(71)
(72)
(73)
(21)
(22)
(63)
(60)
(51)
(52)
TO SIMULATE THE NATURAL BURN OF A TRADITIONAL CIGARETTE
Applicant: NJOY, Inc., Scottsdale, AZ (US)
Inventor: Mark Scatterday, Scottsdale, AZ (US)
Assignee: NJOY, Inc., Scottsdale, AZ (US)
Notice: Subject to any disclaimer, the term of this patent is extended or adjusted under 35 U.S.C. 154(b) by 0 days.
Appl. No.: 13/729,396
Filed: Dec. 28, 2012
Related US. Application Data
Continuation of application No. 13/ 627,715, ?led on Sep. 26, 2012.
Provisional application No. 61/614,973, ?led on Mar. 23, 2012, provisional application No. 61/674,712, ?led on Jul. 23, 2012.
Int. Cl. A24B 1/04 (2006.01) US. Cl. USPC .......... .. 131/361; 131/194; 131/360; 131/329
USPC ................................ .. 131/329, 194, 360, 361 See application ?le for complete search history.
(56) References Cited
U.S. PATENT DOCUMENTS
4,771,796 A * 9/1988 Myer .......................... .. 131/273 2006/0150991 A1 7/2006 Lee 2010/0242974 A1 9/2010 Pan 2011/0232654 A1 9/2011 Mass 2012/0204889 A1* 8/2012 Xiu ............................. .. 131/273
* cited by examiner
Primary Examiner * Richard Crispino Assistant Examiner * Dionne Walls Mayes
(74) Attorney, Agent, or Firm * Bookoff McAndreWs, PLLC
(57) ABSTRACT
The present disclosure generally relates to electronic ciga rette components. As Will be disclosed, an electronic cigarette may have a translucent conduit and light chamber Which, together, alloW light from the light source to be diffused therethrough in such a Way that the light emitted during inhalation simulates the natural burn of a traditional tobacco cigarette during inhalation. The electronic cigarette may also have a translucent ash simulator to further simulate the natu ral burn of a traditional tobacco cigarette during inhalation.
6 Claims, 4 Drawing Sheets
US. Patent Sep. 24, 2013 Sheet 1 of4 US 8,539,959 B1
FIG. 2
US. Patent Sep. 24, 2013 Sheet 2 of4 US 8,539,959 B1
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US. Patent Sep. 24, 2013 Sheet 3 of4 US 8,539,959 B1
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FIG. 7
U S. Patent Sep. 24, 2013 Sheet 4 of4 US 8,539,959 B1
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US 8,539,959 B1 1
ELECTRONIC CIGARETTE CONFIGURED TO SIMULATE THE NATURAL BURN OF A
TRADITIONAL CIGARETTE
CROSS-REFERENCE TO RELATED APPLICATIONS
This application is a continuation of US. application Ser. No. 13/627,715 titled ELECTRONIC CIGARETTE CON FIGURED TO SIMULATE THE NATURAL BURN OF A TRADITIONAL CIGARETTE that Was ?led on Sep. 26, 2012 in the name of Mark Scatterday and claims priority thereto. This application also claims priority to US. Provi sional Application Ser. No. 61/614,973, titled ELECTRONIC CIGARETTE ATTACHMENTS, COMPONENTS AND HOLDERS to Craig Weiss and Mark Scatterday that Was ?led on Mar. 23, 2012 and to US. Provisional Application Ser. No. 61/674,712 titled ELECTRONIC CIGARETTE CONFIG URED TO SIMULATE THE NATURAL BURN OF A TRA DITIONAL CIGARETTE to Mark Scatterday that Was ?led on Jul. 23, 2012.
TECHNICAL FIELD
This disclosure generally relates to alternative smoking devices, and more particularly, to an electronic cigarette con ?gured to simulate the natural burn of a traditional cigarette.
SUMMARY
This summary is provided to introduce a selection of con cepts in a simpli?ed form that are further described below in the DESCRIPTION OF THE DISCLOSURE. This summary is not intended to identify key features of the claimed subject matter, nor is it intended to be used as an aid in determining the scope of the claimed subject matter.
In accordance With aspects of the present disclosure, elec tronic cigarette components are presented. The disclosure presents an electronic cigarette con?gured to simulate the natural burn of a traditional cigarette.
In accordance With one embodiment of the present inven tion, an electronic cigarette is disclosed. The electronic ciga rette comprises a conduit adapted to contain internal compo nents of an electronic cigarette device and a light chamber at a distal end of the conduit.
In accordance With another embodiment of the present invention, an electronic cigarette is disclosed. The electronic cigarette comprises a translucent conduit; internal compo nents housed Within the conduit, the internal components comprising: a unit containing liquid; a vaporiZing unit for vaporiZing the liquid Within the unit containing liquid; a poWer source; an integrated circuit positioned Within a distal end of the conduit; a light source coupled to the integrated circuit; an end piece coupled to the distal end of the conduit; and a light chamber Within the conduit, the light chamber de?ned by the internal components at one end and by the end piece at another end; Wherein the light chamber is illuminated When the electronic cigarette is inhaled and the light source is activated.
In accordance With another embodiment of the present invention, an electronic cigarette is disclosed. The electronic cigarette comprises: translucent conduit; internal compo nents housed Within the conduit, the internal components comprising: a unit containing liquid; a vaporiZing unit for vaporiZing the liquid Within the unit containing liquid; a poWer source; an integrated circuit positioned Within a distal end of the conduit; a light source coupled to the integrated
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2 circuit; a translucent ash simulator coupled to the distal end of the conduit; a light chamber Within the conduit, the light chamber de?ned by the internal components at one end and by the end piece at another end; and a translucent housing comprising: a shaft portion inserted into the distal end of the conduit, the shaft portion for receiving the integrated circuit; and an annular ?ange that abuts a distal edge of the conduit; Wherein the light chamber is illuminated When the electronic cigarette is inhaled and the light source is activated.
BRIEF DESCRIPTION OF THE DRAWINGS
The novel features believed to be characteristic of the application are set forth in the appended claims. The novel features believed to be characteristic of the application are set forth in the appended claims. In the descriptions that folloW, like parts are marked throughout the speci?cation and draW ings With the same numerals, respectively. The draWing ?g ures are not necessarily draWn to scale and certain ?gures can be shoWn in exaggerated or generaliZed form in the interest of clarity and conciseness. The application itself, hoWever, as Well as a preferred mode of use, further objectives and advan tages thereof, Will be best understood by reference to the folloWing detailed description of illustrative embodiments When read in conjunction With the accompanying draWings, Wherein:
FIG. 1 is a cross-sectional side vieW of an electronic ciga rette in accordance With one or more embodiments of the present invention.
FIG. 2 is a side vieW of Wrapper being coupled to a conduit of an electronic cigarette in accordance With one or more embodiments of the present invention.
FIG. 3 is a side vieW of an electronic cigarette in accor dance With one or more embodiments of the present inven tion.
FIG. 4 is an exploded perspective vieW of a conduit, inte grated circuit, and housing of an electronic cigarette in accor dance With one or more embodiments of the present inven tion.
FIG. 5 is a perspective vieW of a housing used With an electronic cigarette in accordance With one or more embodi ments of the present invention.
FIG. 6 perspective vieW of a distal end of an electronic cigarette in accordance With one or more embodiments of the present invention, shoWing the light chamber simulating the burn of a traditional cigarette When inhaled.
FIG. 7 is a perspective vieW of an ash simulator coupled to a distal end of an electronic cigarette in accordance With one or more embodiments of the present invention.
FIG. 8 is a side vieW of an electronic cigarette in accor dance With one or more embodiments of the present inven tion, shoWing the light chamber simulating the burn of a traditional cigarette When inhaled.
FIG. 9 a porous membrane ?lter of an electronic cigarette in accordance With one or more embodiments of the present invention.
DESCRIPTION OF THE DISCLOSURE
The description set forth beloW is intended as a description of presently preferred embodiments of the disclosure and is not intended to represent the only forms in Which the present disclosure can be constructed and/or utiliZed. The description sets forth the functions and the sequence of steps for con structing and operating the disclosure. It is to be understood, hoWever, that the same or equivalent functions and sequences
US 8,539,959 B1 3
can be accomplished by different embodiments that are also intended to be encompassed Within the spirit and scope of this disclosure.
The present disclosure generally relates to electronic ciga rettes. As Will be disclosed, an electronic cigarette can have a translucent conduit for protecting its internal components and light chamber for diffusing light during inhalation of the electronic cigarette. A number of advantages can be provided by the electronic cigarette components described herein. The translucent conduit and the light chamber of the electronic cigarette may simulate the diffused light of the natural burn of a traditional cigarette. A number of additional advantages Will become apparent from the description provided beloW.
Prior art alternative smoking devices can include a number of components consisting of a poWer source such as a battery, vaporizing unit, and a unit containing liquid that contains nicotine. The battery can be a pre-charged, disposable type of device that is not rechargeable or, alternatively, a recharge able battery. In one embodiment the unit containing liquid may be cotton or some other suitable absorptive ?ber that is saturated With liquid, Wherein the unit containing liquid sur rounds the vaporizing unit Within the conduit. The vaporizing unit may then comprise a heating element Wrapped about a Wick, Wherein the Wick absorbs liquid from the surrounding unit containing liquid. Upon inhalation, negative pressure causes a sensor to turn on the heating element, Which then causes the liquid absorbed by the Wick to vaporize and exit the electronic cigarette through an air tube. When used, the tip of the device can light up simulating the effects of a traditional cigarette. It should be clearly understood that substantial ben e?t may be derived from the use of alternative con?gurations of the internal components.
The body of traditional electronic cigarette embodiments can have a conduit that is made of metal. The metal in the device alloWs for sturdiness as Well as protects the interior components. The metal of the device, hoWever, can lead to drawbacks. These draWbacks can include a completely opaque conduit that does not alloW any light to pass through it, resulting in an unrealistic simulation of the burn of a traditional cigarette When it is inhaled.
FIGS. 1 through 9, shoW an electronic cigarette 10 in accordance With one or more embodiments of the present invention. In the present invention, the metal conduit is replaced With one that is, at least in part, translucent. It should also be clearly understood that substantial bene?t may be derived from the entire conduit 14 being translucent. The conduit 14 may be made of plastic, polyvinyl chloride (PVC), polyethylene, polypropylene, polycarbonate, or other suit able material that is more translucent than the metal used Within the prior art alternative smoking devices. As shoWn in FIG. 2, the conduit 14 can extend the entire length of the electronic cigarette 10 and the conduit 14 may be covered With a Wrapper 46 constructed of paper or another suitable material. As shoWn in FIG. 1, the conduit 14 can cover the components of the electronic cigarette 10 Which may include: a vaporizing unit 22, battery 24, unit containing liquid 26, integrated circuit 32, light source 34 (see FIG. 4), light cham ber 36, and end piece 28. The conduit 14 can also cover a portion or the entirety of the ?lter 12 (see FIG. 9). With this embodiment, light from the light source 34 may be diffused through at least a portion of the length of the conduit 14 moving from the tip of the electronic cigarette 10 toWard a user’s mouth, in such a Way that the light emitted during inhalation simulates the natural burning doWn of a traditional tobacco cigarette during inhalation.
In one embodiment, the internal components of the elec tronic cigarette 10 (e. g. the vaporizing unit 22, battery 24, unit
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4 containing liquid 26, integrated circuit 32, and light source 34) are positioned Within the conduit 14 to leave a space Within the conduit 14 at the distal end 18, thereby creating a light chamber 36. In one embodiment, the light source 34, Which may be an LED or other suitable light source, is coupled to the integrated circuit 32, either directly or With Wires 48 (see FIG. 4) and faces outWardly toWard the distal end 18 of the electronic cigarette 10. The light source 34 may be positioned a suitable distance from the end piece 28 of the electronic cigarette 10, thereby creating the light chamber 36 Within the conduit 14 at the distal end 18 of the electronic cigarette 10. It should be clearly understood that the light source 34 may also be positioned in an alternative con?gura tion Within the conduit 14, as long as a space is left Within the conduit 14 for creation of the light chamber 36. It should also be clearly understood that the light chamber 16 may extend any desired distance from the distal end 18 of the electronic cigarette 10 toWard the proximal end 16 of the electronic cigarette 10. When the user inhales the electronic cigarette 10, the light
source 34 illuminates and the emitted light shines Within the light chamber 36 and is diffused through the translucent con duit 14 at the distal end 18 of the electronic cigarette 10. The light Will have little or no diffusion through the portions of the translucent conduit 14 that contain the other internal compo nents, such as the vaporizing unit 22, battery 24, and unit containing liquid 26. Much like the natural burn of a tradi tional cigarette during inhalation, the emitted light is there fore visible through the end piece 28 as Well as through the light chamber 36 Within the conduit 14 at the distal end 18 of the electronic cigarette 10. The light source 34 may emit light at different levels of intensity, Which may vary depending upon the speed and/or force at Which the user inhales the electronic cigarette 10. The light emitted from the light source 34 may also gradually brighten While the electronic cigarette 1 0 is being inhaled and may then also fade to dim or dark after the electronic cigarette 10 is inhaled. The light source 34 may also emit a continuous gloW When the electronic cigarette 10 is not being inhaled, so as to simulate the continuous gloW of a lit traditional cigarette When it is not being inhaled. Through this embodiment, the user Will be able to see the light emitted from the distal end 18 of the electronic cigarette 10 during inhalation and, as Well, Will experience the sensation that the electronic cigarette 10 is burning doWn in the manner of a traditional cigarette.
Referring to FIGS. 3-5, in another embodiment, the elec tronic cigarette 10 further comprises a housing 38 that may be inserted into the distal end 18 of the conduit 14. The housing 38 may be cylindrical and have an outside diameter smaller than the inside diameter of the conduit 14 so that a proximal end (or shaft 40) of the housing 38 may be inserted into and frictionally engage the inside surface of the conduit 14 at the distal end 18 of the electronic cigarette 10. The shaft 40 of the housing 38 may have an inside diameter larger than the out side diameter of the integrated circuit 32 so that the integrated circuit 32 may be held securely Within the shaft 40 of the housing 38 and so that light may be diffused around the integrated circuit 32 and through the portion of the shaft 40 of the housing 38 that surrounds the integrated circuit 32. The shaft 40 of the housing 38 may also de?ne a notch 50 to accommodate for any Wires 48 coupling the integrated circuit 32 to the battery 24. By positioning the Wires 48 Within the notch 50, the housing 38 and the Wires 48 may rest ?ush against the inner surface of the conduit 14 at the distal end 18 of the electronic cigarette 10 When the shaft 40 of the housing 38 is inserted into the conduit 14. The end piece 28 of the electronic cigarette 10 may also be coupled to a distal end 18
US 8,539,959 B1 5
of the housing 38. The housing 38 may also have an annular ?ange 42 that has the same outside diameter as the outside diameter of the conduit 14, so that When the shaft 40 of the housing 38 is inserted into the conduit 14, the annular ?ange 42 abuts the distal edge 20 of the conduit 14, alloWing for a smooth continuous surface from the ?lter 12, through the length of the conduit 14, and the housing 38, and ?nally to the end piece 28. At least a portion of the housing 38 may be made of clear plastic or of some other suitable translucent material so that the light may diffuse through it as Well as through the conduit 14. It should be clearly understood that substantial bene?t may be derived from the entire housing 38 being translucent.
In one embodiment, the degree of translucency may be uniform throughout the conduit 14. In another embodiment, the light chamber 36 may have multiple areas of varying degrees of translucency. When the electronic cigarette 10 is inhaled, the light illuminates the light chamber 36 and these areas of varying degrees of translucency Will help to simulate the uneven burn area that occurs in the tobacco of a traditional cigarette. A ?lter 12 replicating that used in traditional cigarettes
may be used With the present electronic cigarette 10. In pre vious con?gurations, the ?lter 12 has alWays had a hole for alloWing smoke/vapor to pass therethrough. The ?lter 12 of the present invention may be fully enclosed. A porous mem brane 52, porous molded disc, acidic ?ber, or the like may be used to alloW enough of the vapor to pass through simulating the amount of sucking required by the user to mimic a tradi tional cigarette ?lter.
The end piece 28 of the electronic cigarette 10 of the present invention may be an ash simulator 30. Typically, the ash simulators 30 may replicate burnt tobacco or other mate rial used in smoking implements. The ash simulators 30 may be translucent so that light may diffuse through the ash simu lator 30 When the electronic cigarette 10 is inhaled. When the electronic cigarette 10 is inhaled, light from the light source 34 Will diffuse through the light chamber 36 of the conduit 14 and the ash simulator 30 (and the shaft 40 and annular ?ange 42 of the housing 38 if one is present) to simulate the natural burn of a traditional cigarette When inhaled.
The foregoing description is provided to enable any person skilled in the relevant art to practice the various embodiments described herein. Various modi?cations to these embodi ments Will be readily apparent to those skilled in the relevant art, and generic principles de?ned herein can be applied to other embodiments. Thus, the claims are not intended to be limited to the embodiments shoWn and described herein, but are to be accorded the full scope consistent With the language of the claims, Wherein reference to an element in the singular is not intended to mean “one and only one” unless speci?cally stated, but rather “one or more.” All structural and functional equivalents to the elements of the various embodiments described throughout this disclosure that are knoWn or later come to be knoWn to those of ordinary skill in the relevant art are expressly incorporated herein by reference and intended to be encompassed by the claims. Moreover, nothing dis closed herein is intended to be dedicated to the public.
I claim: 1. An electronic cigarette comprising: a conduit adapted to contain internal components of an
electronic cigarette device; a light chamber at a distal end of the conduit, Wherein at
least a portion of the distal end of the conduit is translu cent and Wherein the light chamber is a space Within the distal end of the conduit de?ned by the internal compo
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6 nents Within the conduit at one end and by an end piece coupled to a distal edge of the conduit at another end;
an integrated circuit positioned Within the distal end of the conduit;
a light source coupled to the integrated circuit; and a housing for securing the integrated circuit Within the
distal end of the conduit, Wherein at least a portion of the housing is translucent and Wherein the housing com prises: a shaft portion for insertion into the distal end of the
conduit; an annular ?ange that abuts the distal edge of the con
duit; and a notch de?ned by the shaft of the housing, the notch
adapted to receive Wires connected to the integrated circuit;
Wherein the light chamber is illuminated When the elec tronic cigarette is inhaled and the light source is acti vated.
2. An electronic cigarette comprising; a translucent conduit; internal components housed Within the conduit, the inter
nal components comprising: a unit containing liquid; a vaporiZing unit for vaporiZing the liquid Within the unit
containing liquid; a poWer source; an integrated circuit positioned Within a distal end of the
conduit; a light source coupled to the integrated circuit;
an end piece coupled to the distal end of the conduit; a light chamber Within the conduit, the light chamber
de?ned by the internal components at one end and by the end piece at another end; and
a translucent housing for receiving the integrated circuit and securing the integrated circuit Within the distal end of the conduit Wherein the housing comprises: a shaft portion for insertion into the distal end of the
conduit; an annular ?ange that abuts a distal edge of the conduit;
and a notch de?ned by the shaft of the housing, the notch
adapted to receive Wires connecting the integrated circuit to the poWer source;
Wherein the light chamber is illuminated When the elec tronic cigarette is inhaled and the light source is acti vated.
3. The electronic cigarette of claim 2 further comprising a porous membrane ?lter coupled to a proximal end of the conduit.
4. The electronic cigarette of claim 2 further comprising a translucent ash simulator coupled to the end piece.
5. The electronic cigarette of claim 2 Wherein a translu cency of the light chamber is uneven.
6. An electronic cigarette comprising: a translucent conduit; internal components housed Within the conduit, the inter
nal components comprising: a unit containing liquid; a vaporiZing unit for vaporiZing the liquid Within the unit
containing liquid; a poWer source; an integrated circuit positioned Within a distal end of the
conduit; a light source coupled to the integrated circuit;
a translucent ash simulator coupled to the distal end of the conduit;
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a light chamber Within the conduit, the light chamber de?ned by the internal components at one end and by the end piece at another end; and
a translucent housing comprising: a shaft portion inserted into the distal end of the conduit,
the shaft portion for receiving the integrated circuit; an annular ?ange that abuts a distal edge of the conduit;
and a notch de?ned by the shaft of the housing, the notch
adapted to receive Wires connected to the integrated circuit;
Wherein the light chamber is illuminated When the elec tronic cigarette is inhaled and the light source is acti Vated.
EXHIBIT B
EXHIBIT C
Perry J. Viscounty Direct Dial: +1.714.755.8288 [email protected]
OC\1686464.2
650 Town Center Drive, 20th Floor Costa Mesa, California 92626-1925 Tel: +1.714.540.1235 Fax: +1.714.755.8290 www.lw.com
FIRM / AFFILIATE OFFICES Abu Dhabi Milan Barcelona Moscow Beijing Munich Boston New Jersey Brussels New York Chicago Orange County Doha Paris Dubai Riyadh Düsseldorf Rome Frankfurt San Diego Hamburg San Francisco Hong Kong Shanghai Houston Silicon Valley London Singapore Los Angeles Tokyo Madrid Washington, D.C. 046741-0021
October 14, 2013 VIA FEDEX & EMAIL Victory Electronic Cigarettes, LLC 11335 Apple Drive Nunica, Michigan 49448 [email protected] [email protected]
Re: Infringement of NJOY's Intellectual Property
To whom it may concern:
This firm represents NJOY, Inc. in connection with its intellectual property matters. Often referred to as the industry’s “Gold Standard,” NJOY is the leading electronic cigarette company in the United States because of its best-in-class products, patented technology, commitment to science, superior branding, responsible business practices (such as not selling flavored nicotine products, which could be appealing to children), and outstanding reputation among consumers. For example, NJOY has received wide-spread acclaim and accolades for its various electronic cigarette products, including numerous industry awards. Similarly, countless newspaper articles and reviews have raved about NJOY's quality and paradigm-shifting products. Further increasing NJOY's sterling reputation in the electronic cigarette industry, it has just completed a recent round of widely publicized investment involving Sean Parker (of Napster and Facebook fame) and market luminary Douglas Teitelbaum.
Based on its strong reputation, NJOY has experienced explosive growth as a company and is the top-selling electronic cigarette company in the United States. For example, NJOY distributes its products throughout the nation via approximately 70,000 retail stores, including 24 of the nation's top 25 convenience store chains and Walmart, 7-Eleven, Circle K, Walgreens, various brand-name gas stations (e.g., Chevron, Shell, etc.), and other well-known retailers. As you can see from Attachment 1, NJOY is widely distributed throughout the Los Angeles area, where your company is located. Through these distributors and its online sales, NJOY has sold countless electronic cigarettes and developed a loyal customer base that recognizes and seeks out its products for their consistently high quality electronic cigarette smoking experience.
More specifically, one of NJOY's leading products is the King Cigarette, which is sold with a unique and protectable product packaging (the “King Case”) that consumers immediately recognize as indicating the source of the products contained therein as originating with NJOY. Beyond this strong consumer recognition of the King Case, NJOY has also secured a copyright registration, No. VA0001854810, to further protect its “Product Packages,” such as:
Perry J. Viscounty October 14, 2013 Page 2
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We recently learned that Victory Electronic Cigarettes, LLC (“Victory”) sells a disposable electronic cigarette with the below product packaging (the “Infringing Product”). More specifically, we note that the overall appearance and design of the Infringing Product is nearly identical to NJOY's King Case and copies its unique, identifying features, as well as the product’s source identifying and protectable name - King.
As your actions violate NJOY's trade dress and copyrights in the King Case under Federal and state law, NJOY demands that you immediately:
• cease and desist manufacturing, promoting, advertising, distributing and selling your Infringing Product and any other product that infringes NJOY’s intellectual property rights;
• remove all images and references to your Infringing Product from your victoryecigs.com website;
• recall all Infringing Products;
• retain all advertising materials, emails, invoices, sales records, and other documents arising out of or related to your Infringing Product, as well as the actual Infringing Products and any other relevant evidence;
Perry J. Viscounty October 14, 2013 Page 3
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• provide detailed documentary evidence regarding the source of and distributors for your Infringing Product, including but not limited to the name and contact information, as well as any pertinent contracts, for each entity; and
• provide detailed financial information regarding the sales and profits you have made from your Infringing Product.
Please send immediate written acknowledgment that you have complied, and will permanently comply, with these reasonable demands. If you fail to comply, NJOY will be forced to protect its intellectual property rights through litigation and will seek all available remedies, including but not limited to injunctive relief, damages, enhanced damages, and attorneys’ fees and costs. Moreover, if you continue to infringe NJOY’s rights after receipt of this letter, such continuing use would unquestionably constitute willful conduct, thereby entitling NJOY to additional remedies, including heightened damages.
Nothing contained in this letter constitutes an express or implied waiver of NJOY’s rights or remedies, all of which are expressly reserved.
Best regards,
Perry J. Viscounty of LATHAM & WATKINS LLP
