The saga of plaintiff Timothy Sheridan, named inventor of U.S. Patent No. 7,415,982 for a “Smokeless Pipe,” continues.  In the latest chapter, Sheridan filed a pro se complaint for patent infringement against the United States government in the Court of Federal Claims on August 4, 2014, alleging that the government somehow prevented Sheridan from enforcing the ‘982 patent.  Underlying that allegation is Sheridan’s contention that all currently marketed e-cigarettes and vaporizers infringe the ‘982 patent.

The complaint contends that the Court of Federal Claims has jurisdiction over Sheridan’s claim under 22 U.S.C. § 2356. That rarely-invoked section, within the chapter on the U.S. government’s provision of foreign assistance, states (emphasis added):

Whenever, in connection with the furnishing of assistance under this chapter

(1) an invention or discovery covered by a patent issued by the United States Government is practiced within the United States without the authorization of the owner, …

the exclusive remedy of the owner, except as provided in subsection (b) of this section, is to sue the United States Government for reasonable and entire compensation for such practice or disclosure in the district court of the United States for the district in which such owner is a resident, or in the United States Court of Federal Claims, within six years after the cause of action arises. … In any such suit, the United States Government may plead any defense that may be pleaded by a private person in such an action. The last paragraph of section 1498(a) of title 28 shall apply to inventions and information covered by this section.

Notably, however, the complaint does not identify any foreign assistance furnished by the U.S. government that is connected to the alleged infringement of the ‘982 patent by e-cigarette or vaporizer companies.

The latest suit follows Sheridan’s 2013 related suit in the Eastern District of Pennsylvania seeking to enjoin the IRS from further auditing Sheridan’s tax filings and collecting back-taxes arising from Sheridan’s claim of a $1,000,000 loss on his tax returns for 2009, 2010, and 2011 due to theft or patent infringement. The IRS noted that no judicial determination of patent infringement or related damages had been entered to establish that Sheridan had sustained an actual loss for tax purposes. The Pennsylvania suit was dismissed by the district court on June 4, 2013 and the dismissal was affirmed by the U.S. Court of Appeals for the Third Circuit in a January 3, 2014 decision.

If, as is likely, Sheridan’s latest suit in the Court of Federal Claims is also dismissed, it is unclear whether he would seek to re-assert his claims in another forum.  At least on their face, the patent claims require an infringing device to include structural elements relevant to the vaporization of solid tobacco (as opposed to an e-liquid).  Nevertheless, the publicly available prosecution history for the ‘982 patent suggests Sheridan went to great lengths to revive the patent application after more than five-year period of abandonment. Taken together with the two suits Sheridan has already filed and the complaint’s allegation that hundreds of millions of dollars in damages are owed, it should come as no surprise if Sheridan touches off another round of patent litigation in the e-cigarette industry.

You can review a copy of the Complaint here:  Sheridan v US (e-cigs patent suit) – complaint (8-5-2014)

For questions and/or comments, please contact Bryan Haynes, Troutman Sanders tobacco practice partner, at 804.697.1420 or by email, or Charan Brahma, at 202.274.2816.