ECITA warns electronic cigarette industry of looming patent infringement threat.

[freakindahouse]

We are sending the following alert to our industry colleagues:

8th October 2010

To whom it may concern:

ECITA, the Electronic Cigarette Industry Trade Association, has been approached this week by a law firm, Davis-Law Associates in conjunction with IPB Brand Ltd concerning the patent rights for electronic cigarettes. They telephoned our offices and copied us in to a letter they have sent to a UK electronic cigarette retailer.

In the letter, Davis-Law claim that one of their partners, John Law is in partnership with IPB Brand Ltd, and that they have just signed an exclusive distribution deal with SBT Ruyan Technology and Development Co Limited to distribute electronic cigarettes. They claim that Ruyan own the patents for all electronic cigarette products, and that therefore, they are the only ones who should be allowed to sell these products throughout Europe. They have told us that it is their intention to enforce these patents against every ecig vendor and importer throughout the EU and Norway.

At ECITA, we are focussed on the EU Public Consultation, and will be meeting with our colleagues in France and Belgium in the coming weeks to ensure that this situation is addressed correctly, as we did with the MHRA recently. We are also pursuing our contacts at the UN level in the World Health Organisation to ensure that electronic cigarettes are classified and regulated correctly and appropriately around the world. We believe that by uniting to form ECITA, we are better able to demonstrate that we are a force to be reckoned with, and can make considerable political progress in the current climate.

We are dealing with this patents issue on behalf of our members, but wanted to raise it with the wider industry in case anyone receives a letter from these firms in the coming weeks. They are engaging in a very aggressive marketing campaign, and we would urge anyone who is approached by these firms to seek advice from their lawyers, or via ECITA.

If anyone is interested in finding out more about ECITA, our website is at Welcome to ECITA, the Electronic Cigarette Industry Trade Association.

The redacted letter is linked from our website if anyone wants to read it.

 

[Vocalek]

This is very strange, since Ruyan America was one of the 5 companies that received an FDA warning letter. In the U.S., Ruyan had fallen back on a position of not distributing nicotine with their e-cigarettes, thinking the FDA would leave them alone. Instead, they substituted an herbal ingredient, lobelia, which is supposed to have some of the same beneficial effects as nicotine. Ruyan's strategy did not work. Here is an extract from their warning letter:

“[T]he Ruyan E-Mystick . . . contain the recognized herbal remedy and dietary supplement lobelia and [is] marketed exclusively to smoking adults as a tonic. The product provides smokers quick and effective relief for a number of conditions commonly attributed to tobacco use.”


The above statements demonstrate that the electronic cigarette and cigar products marketed by your firm are intended both to affect the structure or function of the body and to mitigate, treat, or prevent disease. See 21 C.F.R. § 201.128 (describing the meaning of “intended use”). In particular, these statements suggest that these products are intended for use as smoking deterrents or to reduce dependence on traditional tobacco products, and are also capable pharmacological agent,2 that nicotine addiction is a disease,3 and that nicotine withdrawal is itself a recognized medical condition.4

Ruyan America, Inc. 9/8/10

None of the three Ruyan web sites specified in the FDA letter are active at this time: www.ruyanamerica.com, www.getruyanusa.com, and RUYAN Electronic Cigarette Offical International Website

I have no idea how patent law works. I would think that if you hold patent on a product you would need to go after the companies manufacturing a similar product, not those selling the products.

 

[Vocalek]

BTW, IMHO the Joye design is superior to the Ruyan design.

 

[freakindahouse]

I couldn't possibly comment, Elaine!

 

[bassnut]

"BTW, IMHO the Joye design is superior to the Ruyan design."

+1

 

[Vocalek]

By way of explanation: With the NJOY NPRO (a Ruyan 4081 model), I had difficulty telling whether I was getting anything out of it. Even with a fresh cartridge and freshly charged batteries, I often couldn't see any visible vapor. Also, to refill the cartridges, I had to unfold a paperclip to push the plastic insert up to the eduge of the cartridge. When I tried to just drop liquid straight into the cartridge, I would end up with liquid outside of the plastic insert, which resulted in my getting liquid in my mouth. In fact, I sometimes got liquid in my mouth even when using a factory-filled cartridge.

With the Joye 510 I can tell when my vapor volume is decreasing, which means that I either need to add some liquid to the cartridge or switch to a fresh battery. Are the batteries on the 510 more robust or something? Refilling the carts is easy.

If Ruyan is reading this, perhaps they could work on improving their product design.

 

[Bill Godshall]

Ever since I began communicating with folks at Ruyan America in 2007, they repeatedly claimed that Ruyan owned the patent rights to all e-cigarettes marketed in the US (and in many/most/all other countries).

It should be noted that Ruyan America contracted with Ruyan Group in China (which was recently renamed) to have exclusive marketing rights to Ruyan e-cigarettes in the US.

Ruyan America lawyers sent letters to several other e-cigarette companies in the US claiming patent infringement, and one or two of the companies agreed to and paid Ruyan a relatively small amount of up front money and continued doing business as usual (selling the supposedly counterfeit or patent infringed upon products).

But I'm not aware that Ruyan ever actually filed a lawsuit in court against any companies.
Just because Ruyan applied for patents doesn't mean they'd win in court.

Then Ruyan America abrubtly stopped selling e-cigarettes in the US in Oct 2009 to avoid conflict with FDA. It appears to me that Ruyan America's business strategy has been to intimidate and shake down other e-cigarette companies (by alleging patent infringement).

Seems like if Ruyan truly believed it would win in court, it wouldn't have settled for a relatively small amount of money.

 

[freakindahouse]

An excellent point well made, Bill. We await the patent numbers....

 

[DC2]

This is a really big deal, and could have a very large impact on the future of electronic cigarettes.
It seems to me that Ruyan is going to be bought out as soon as (if) the FDA loses the current court case.

And the buyer will be American Big Tobacco, most likely.

Thoughts?

 

[freakindahouse]

I imagine they will want to secure those all important patents then (or 'parents', as they were described in an email from this law firm!)....

 

[Vocalek]

Yes. The U.S. Parent Office is a very important agency here.

 

[Xanax]

Rofl well hopefully the good, smart people of ECF will stop buying from ruyan after learning this information. Greedy effin company. Terrible products.

 

[xg4bx]

China? Respecting patents? HA!

 

[freakindahouse]

Ah, but does China respect parents? That's the key question in all of this! ROFL

 

[Bill Godshall]

Please note that I made several corrections in my previous posting on this thread
http://www.e-cigarette-forum.com/fo...g-patent-infringement-threat.html#post2001563

 

[MoonRose]

Then Ruyan America abrubtly stopped selling e-cigarettes in the US in Oct 2009 to avoid conflict with FDA. It appears to me that Ruyan America's business strategy has been to intimidate and shake down other e-cigarette companies (by alleging patent infringement).

Seems like if Ruyan truly believed it would win in court, it wouldn't have settled for a relatively small amount of money.

Which makes me wonder if they aren't doing the same thing in the EU market.

 

[Vocalek]

Hmm... I thought I would check out the IPB Brands LTD web site to see exactly what products they carry. Near as I can figure out, they have no web site. They do have an office address in the UK, according to this report. IPB BRANDS LTD of SL9 9HE in CHALFONT ST PETER BUCKS

Something else that seems strange to me is the name "John Law." In the U.S., this is a generic term for a law enforcement officer, just as "John Hancock" means your signature.

Pehaps an investigation needs to be conducted to verify whether the information provided by John Law is truthful, or whether this is some type of shakedown.

Also: The Ruyan web site is no longer operational. There was a company name change to Dragonite International Limited. Cannot locate a web site under the new name.

Stock price as of 9/30/2010 was $0.07 / share. http://www.corporateinformation.com/Company-Snapshot.aspx?cusip=C34412210

 

[MamaFox]

A force to be reckoned with? What a bunch of bossy a-holes.

I'm not really surprised. E-cigs threaten to cripple a multi-billion dollar industry. Something was bound to happen.

 

[PowerofParanoia]

BTW, IMHO the Joye design is superior to the Ruyan design.

I second that.

 

[freakindahouse]

A force to be reckoned with? What a bunch of bossy a-holes.

I hope you mean the wombats and not ECITA?!