Judge rules Reynolds may continue selling Vuse vaping products, but must pay patent fees to PMI
Today’s news, April 11: According to foreign media reports, a federal judge in Virginia has rejected Philip Morris International (PMI)'s request for a permanent injunction to bar RJ Reynolds Vapor Co. from selling vaping devices<\/strong> that a jury found to infringe PMI patents.<\/p> In the order, the judge said banning these devices would harm public health.<\/p> However, RJRV was ordered to pay a modest patent royalty to its competitor PMI.<\/p> Judge Leo<\/em>nie Brinkema of the Eastern District of Virginia said RJRV must pay a 1.8% royalty on net sales for infringement involving patents used in Vuse Alto pods<\/strong>, and a 2.2% royalty for infringement involving patents used in Vuse Solo G2.<\/p> The royalties will be enforced for the remainder of the patents' terms. Royalty payments will be made quarterly, retroactive to June 16. PMI said that if the permanent injunction was not granted, it would seek a 33.5% royalty on Alto pods and a 3.75% royalty on Solo G2 pods. These royalties are in addition to the 2022 jury award, totaling $10.91 million for Alto infringement and $3.16 million for Solo G2 infringement. In a statement, PMI said: As we continue to review the court’s ruling, we again thank the jury for finding that BAT affiliate RJR’s Vuse products infringed two of our patents, confirming BAT’s obligation to pay us damages. It validates our industry-leading investment in smoke-free technologies such as e-vapor. RJRV said in a statement that while it welcomed the decision denying the injunction, it was disappointed with the underlying rulings on patent validity and infringement. “RJ Reynolds Vapor is currently evaluating its next steps, including the possibility of appealing to the U.S. Court of Appeals for the Federal Circuit in an effort to overturn the jury’s findings on patent validity and infringement.” Brinkema determined that PMI had not established that it suffered irreparable harm from the patent infringement. The judge wrote that PMI had no significant market presence in the United States before Reynolds infringed its patents, had not shown that its products had brand recognition in the U.S., and had not provided convincing evidence of lost goodwill in the domestic market. Brinkema also found that, given the undisputed popularity of Reynolds’ Vuse products, the public interest in continued retail sales of the potentially harm-reducing Alto and Solo G2 pods outweighed the interest in issuing a permanent injunction. In the latest Nielsen convenience store tobacco product sales report, market-leading Vuse held a 42.2% share, compared with 26.1% for JUUL<\/strong>.<\/p>
