`
`
`
`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`
`In the Matter of
`
`CERTAIN VAPORIZER DEVICES,
`CARTRIDGES USED THEREWITH, AND
`COMPONENTS THEREOF
`
`
`
`
`
`
`Inv. No. 337-TA-1372
`
`
`ORDER NO. 36:
`
`
`CONSTRUING DISPUTED CLAIM TERMS
`
`(April 5, 2024)
`
`
`I.
`
`BACKGROUND
`
`The Commission instituted this investigation to determine whether certain vaporizer
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`devices, cartridges used therewith, and components thereof infringe certain claims of U.S. Patent
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`No. 11,497,864 and U.S. Patent No. 10,334,881. 88 Fed. Reg. 66050 (Sept. 26, 2023). The
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`complainant is NJOY, LLC. The respondent is JUUL Labs, Inc. The Commission Investigative
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`Staff is a party to the investigation.
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`The parties filed a joint claim construction chart and claim construction briefs, after which
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`a claim construction hearing was held. Joint Chart (EDIS Doc. ID 810346); NJOY Br. (EDIS Doc.
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`ID 810485); JLI Br. (EDIS Doc. ID 810484); Staff Br. (EDIS Doc. ID 811140); NJOY Reply
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`(EDIS Doc. ID 811511); JLI Reply (EDIS Doc. ID 811375); and Tr. (EDIS Doc. ID 811746). The
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`parties filed a revised joint chart after the hearing. Revised Joint Chart (EDIS Doc. ID 812427).
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`During the claim construction hearing, I requested additional briefing regarding the claim
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`term, “heating element,” which the parties filed. NJOY Supp. (EDIS Doc. ID 812388); JLI Supp.
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`(EDIS Doc. ID 812386); Staff Supp. (EDIS Doc. ID 812827); NJOY Supp. Reply (EDIS Doc.
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`ID 813390); and JLI Supp. Reply (EDIS Doc. ID 813369). This order addresses the claim
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`

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`construction issues raised by the parties.
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`II.
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`RELEVANT LAW
`
`It is a bedrock principle of patent law that the claims of a patent define the invention to
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`which the patentee is entitled the right to exclude. Phillips v. AWH Corp., 415 F.3d 1303, 1312
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`(Fed. Cir. 2005). “[T]here is no magic formula or catechism for conducting claim
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`construction.” Id. at 1324. Instead, weight may be attached to appropriate sources “in light of the
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`statutes and policies that inform patent law.” Id.
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`The terms of a claim are generally given their ordinary and customary meaning which is
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`the meaning that the term would have to one of skill in the art at the time of the invention. Id. at
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`1312–13. The ordinary meaning of a claim term is its meaning to one of skill in the art after reading
`
`the entire patent. Id. at 1321. The patent specification “is always highly relevant to the claim
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`construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a
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`disputed term.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`
`A court “should also consider
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`the patent’s prosecution history,
`
`if
`
`it
`
`is
`
`in
`
`evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995), aff’d, 517
`
`U.S. 370 (1996). The prosecution history, which is intrinsic evidence, is “the complete record of
`
`the proceedings before the PTO and includes the prior art cited during the examination of the
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`patent.” Phillips, 415 F.3d at 1317. “[T]he prosecution history can often inform the meaning of
`
`the claim language by demonstrating how the inventor understood the invention and whether the
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`inventor limited the invention in the course of prosecution, making the claim scope narrower than
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`it would otherwise be.” Id. “[B]ecause the prosecution history represents an ongoing negotiation
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`between the PTO and the applicant, rather than the final product of that negotiation, it often lacks
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`the clarity of the specification and thus is less useful for claim construction purposes.” Id.
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`In some situations, a “court will need to look beyond the patent’s intrinsic evidence and to
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`2
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`

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`consult extrinsic evidence in order to understand, for example, the background science or the
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`meaning of a term in the relevant art during the relevant time period.” Teva Pharmaceuticals USA,
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`Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). Extrinsic evidence is “all evidence external to the
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`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
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`treatises.” Markman, 52 F.3d at 980. While expert testimony can be useful “to ensure that the
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`court’s understanding of the technical aspects of the patent is consistent with that of a person of
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`skill in the art,” such testimony is “generated at the time of and for the purpose of litigation and
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`thus can suffer from bias that is not present in intrinsic evidence.” Phillips, 415 F.3d at 1318–
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`19. Further, while extrinsic evidence may be useful, it is less reliable than intrinsic evidence, and
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`its consideration “is unlikely to result in a reliable interpretation of patent claim scope unless
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`considered in the context of the intrinsic evidence.” Id. Where the intrinsic record unambiguously
`
`describes
`
`the scope of
`
`the patented
`
`invention,
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`reliance on extrinsic evidence
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`is
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`improper. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999),
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`citing Vitronics, 90 F.3d at 1583.
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`III. THE ’881 AND ’864 PATENTS
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`The ’881 and the ’864 patents both claim priority to an application filed on July 27, 2010,
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`and provisional applications filed on July 27, 2009, July 31, 2009, and August 25, 2011. ’881
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`patent, at cover; and ’864 patent, at cover. The ’881 and the ’864 patents share the same
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`specification.
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`Both patents are titled “Electronic Vaporizer” and relate to “electronic vaporizers, and
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`more particularly . . . to cartridges that comprise heating elements configured to vaporize a
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`solution.” ’881 patent at 1:39–41. One embodiment includes a cartridge 200 comprising a heating
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`element 222, as shown below:
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`
`
`3
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`

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`
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`’881 patent at Fig. 2.
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`According to the ’881 patent, a circuit is closed when a user draws a breath by way of
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`airflow passageway 214, thereby providing current to the heating element 222. Id. at 6:51–54. The
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`heating element 222 in turn vaporizes a solution held in absorbent material 204 and the resulting
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`vapor is received by the user. Id. at 6:54–56.
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`IV.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`JLI contends that one of ordinary skill in the art “would have had a B.S. in mechanical
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`engineering, electrical engineering, or an equivalent degree, and either at least two years of
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`experience with relevant electro-mechanical technologies or an advanced degree in mechanical
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`engineering, electrical engineering, or an equivalent field, and at least one year of similar
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`experience.” JLI Br. at 1, n.2. NJOY’s expert, Dr. Vallee, applied this level of skill and NJOY
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`agreed with it. CMX-0003 (Vallee Decl.) at ¶ 9; and Tr. at 75:21–76:5. The Staff agrees with JLI’s
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`proposal. Tr. at 46:23–47:15. For purposes of claim construction, I adopt JLI’s proposed level of
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`skill in the art.
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`V.
`
`AGREED CONSTRUCTIONS
`
`The parties agree on the following constructions:
`
`
`
`4
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`

`

`Claim Term and Asserted Claims
`an airflow passageway that extends centrally
`and axially with respect to the housing
`intermediate of the first aperture on the first
`end of the housing and the second aperture on
`the second end of the housing, wherein the
`airflow passageway is configured to allow an
`airflow through the cartridge from the first
`aperture to the second aperture of the housing
`
`’881 patent, claim 1
`
`an airflow passageway in the interior of the
`housing extending centrally and axially with
`respect to the housing intermediate of the first
`aperture on the first end of the housing and
`the second aperture on the second end of the
`housing, the airflow passageway being
`configured to allow an airflow through the
`cartridge from the first aperture to the second
`aperture of the housing
`
`’881 patent, claim 8
`
`an airflow passageway in the interior of the
`housing, the airflow passageway having a
`length extending centrally and axially with
`respect to the housing intermediate of the first
`aperture on the first end of the housing and
`the second aperture on the second end of the
`housing, the airflow passageway being
`configured to allow an airflow through the
`cartridge from the first aperture to the second
`aperture of the housing
`
`’881 patent, claim 16
`electrically conductive portion
`
`’881 patent, claims 1, 8, 16
`
`Agreed Construction
`The airflow passageway extends in a
`straight path through the center of the
`housing from a first opening on the first end
`to a second opening on the opposite end of
`the housing
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`a portion that is electrically conductive
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` Revised Joint Chart at 8–10.
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`For purposes of this investigation, the agreed constructions are adopted.
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`
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`5
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`

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`VI. CONSTRUCTION OF DISPUTED CLAIM TERMS
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`
`
`The disputed constructions are addressed below.
`
`A.
`
`Proximate
`
`The parties propose:
`
`Claim Term
`and Patent
`Claims
`Proximate
`
`’864 patent,
`claims 1, 5, 9,
`21, 25, 29, 38,
`and 45
`
`NJOY’s Construction
`
`JLI’s
`Construction
`
`Staff’s
`Construction
`
`Indefinite.
`
`Plain meaning, e.g., at
`or close to, and in the
`context of the 864
`patent, proximate is
`used to indicate a
`relative position of the
`apertures, portions of
`the airflow path, and
`the ends, not a precise
`distance.
`
`
`At this time, this
`term appears to the
`Staff to be
`indefinite under 35
`U.S.C. § 112. Any
`forthcoming expert
`discovery may
`provide more
`guidance.
`
`Revised Joint Chart at 1.
`
`JLI argues that “the term ‘proximate’ is indefinite because it is a term of degree for which
`
`the patent provides absolutely no objective standard by which to determine whether something is
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`‘proximate’ enough to meet the claims.” JLI Br. at 7. According to JLI, “‘[p]roximate’ means ‘very
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`close’ or ‘near,’ but [the ’864 patent] provides no objective way to determine the degree to which
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`something must be close or near to qualify as the claimed ‘proximate.’” Id. at 9. The Staff agrees
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`that the term renders the claims indefinite. Staff Br. at 18–21. NJOY contends that the plain
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`meaning of “proximate,” “at, near, or close to” should govern and that the term does not render
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`the claims in which it appears indefinite. NJOY Br. at 7.
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`Patents are presumed valid and a party asserting invalidity must prove invalidity by clear
`
`and convincing evidence. See 35 U.S.C. § 282; Spansion, Inc. v. Int’l Trade Comm’n, 629 F.3d
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`1331, 1344 (Fed. Cir. 2010). “A patent is invalid for indefiniteness if its claims, read in light of
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`6
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`the specification delineating the patent, and the prosecution history, fail to inform, with reasonable
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`certainty, those skilled in the art about the scope of the invention.” Certain Bio-Layer
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`Interferometers and Components Thereof, Inv. No. 337-TA-1344, Comm’n Op. at 11 (Aug. 24,
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`2023) (EDIS Doc. ID 803150), quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898,
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`901 (2014). As the Supreme Court noted in Nautilus, language has “inherent limitations.” 572 U.S.
`
`at 909. The “reasonable certainty” standard exists to strike a “delicate balance,” “afford[ing] clear
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`notice of what is claimed,” while recognizing those inherent limitations. Id., quoting Festo Corp.
`
`v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002). The definiteness requirement
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`thus “mandates clarity, while recognizing that absolute precision is unattainable.” Nautilus, 572
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`U.S. at 910. Thus, “a patentee need not define his invention with mathematical precision in order
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`to comply with the definiteness requirement.” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d
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`1374, 1384 (Fed. Cir. 2005).
`
`Each of independent claims 1, 5, 9, 21, 25, 29, 38, and 45 of the ’864 patent recites the
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`term “proximate.” The term is used in two different contexts. First, each of claims 1, 5, 9, 21, 25,
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`29, 38, and 45 recite a housing adapted to hold a solution, the housing having first and second
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`ends, and “the housing having a first aperture proximate the first end and a second aperture
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`proximate the second end.” Claims 9 and 29 additionally recite that the first and second apertures
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`are in communication with one another to permit an airflow through the housing:
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`wherein the airflow through the housing follows an airflow path, a first portion of
`the airflow path proximate the first aperture being defined substantially centrally
`and axially with respect to the central longitudinal axis of the housing, and a second
`portion of the airflow path proximate to the second aperture being defined
`substantially centrally and axially with respect to the central longitudinal axis of
`the housing.
`
`Each of the independent claims of the ’864 patent thus recite that the first end of the housing
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`is proximate a first aperture and the second end of the housing is proximate a second aperture. In
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`
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`7
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`

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`addition, claims 9 and 29 recite a first portion of airflow path proximate the first aperture and a
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`second portion of airflow path proximate the second aperture. The claims thus use the word
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`“proximate” to identify the location of the first and second apertures relative to the respective first
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`and second ends of the housing and to identify the location of portions of the airflow path relative
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`to those apertures.
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`When the ’864 patent claims use the term “proximate,” they do so with respect to two
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`reference points. Each of claims 1, 5, 9, 21, 25, 29, 38, and 45 recites the phrase: “the housing
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`having a first aperture proximate the first end and a second aperture proximate the second end.” In
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`this context, it is clear that the relative positions of the first and second apertures are recited with
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`respect to the respective first and second ends. This provides significant guidance to one of
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`ordinary skill in the art, because each claim requires certain fixed points, namely the first and
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`second ends of the housing. One of ordinary skill in the art would readily identify the aperture
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`nearer to the first end as the first aperture, and the aperture nearer to the second end as the second
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`aperture. Claims 9 and 29 recite limitations defining first and second portions of the airflow path
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`relative to the first and second apertures. For the same reason, one of ordinary skill in the art would
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`understand “proximate” with respect to the first and second portions of the airflow path.
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`The specification supports this interpretation, disclosing a housing in which the “first end
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`206 comprises a first aperture 210” and “the second end 208 comprises a second aperture 212.”
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`JMX-0002 at 6:12–13. Figure 2, in turn, illustrates that the first aperture 210 is located at the first
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`end 206, while the second aperture 212 is located near (but not at) the second end 208. The
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`specification thus supports the relative positioning of the first and second apertures as respectively
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`proximate the first and second ends of the housing. One of skill in the art would likewise
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`understand the relative positioning of the first portion of the airflow path and the second portion
`
`
`
`8
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`

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`of the airflow path.
`
`The specification uses the term “proximate” in different contexts than used in claims 1, 5,
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`9, 21, 25, 29, 38, and 45 of the ’864 patent. In particular, the specification discloses that “[t]he
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`cartridge also comprises a solution that is positioned proximate to the heating element” and that a
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`“light emitting diode (LED) 116 is positioned proximate to the first end 108 of the housing 106.”
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`’864 patent at 1:51–52 and 3:39–40. The specification also discloses that an “airflow passageway
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`134 extends between the first aperture 130 and the second aperture 132 axially proximate to the
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`center of the housing 120.” Id. at 4:35–37. In addressing the embodiment shown in Fig. 2, the
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`specification states that “it is readily recognized that airflow may pass directly over the heating
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`element, through a chamber that is proximate to the heating element, or other suitable
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`configuration.” Id. at 7:19–21. With respect to the embodiment shown in Fig. 4, the specification
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`states that “[t]he heating element 126 can be positioned proximate to the second end 310 [sic, 410]
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`of the first cartridge 402, and thus proximate to the solution 128 in the second cartridge 404.” Id.
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`at 8:45–48. Though the word “proximate” is used in contexts other than those claimed, the
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`specification uses the word to indicate that items are at, near, or close to each other, as is shown in
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`Fig. 2 with respect to the locations of the apertures with respect to the ends of the housing.
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`Claim language using terms of degree is not indefinite when it provides sufficient certainty
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`to one of skill in the art when read in the context of the invention. See, e.g., Enzo Biochem, Inc. v.
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`Applera Corp., 599 F.3d 1325, 1335 (Fed. Cir. 2010) (holding that the claim phrase “not interfering
`
`substantially” was not indefinite even though the construction “define[d] the term without
`
`reference to a precise numerical measurement”). As the Supreme Court recognized in Nautilus,
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`“absolute precision” in claim language is “unattainable.” 572 U.S. at 910.
`
`I agree with NJOY that the reasoning of the district court in Globus Medical Products, LLC
`
`
`
`9
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`

`

`v. Depuy Synthes Products, LLC, No. 13-cv-854, 2015 WL 4886050 at *10 (D. Del. Aug. 14,
`
`2015) supports that use of the word “proximate” in the ’864 patent claims does not render them
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`indefinite. NJOY Br. at 9. In Globus, the claim recited “[t]he implant of claim 14, wherein the first
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`screw hole is located proximate a first lateral end of the anterior surface of the plate and the second
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`screw hole is located proximate a second lateral end of the anterior surface of the plate.” 2015 WL
`
`4886050 at *9. The court concluded that the term “proximate” was not used to indicate a precise
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`distance but a relative position of the screw holes and the lateral ends. Id. Likewise here, in the
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`context of the ’864 patent, the term “proximate” is not used to indicate a precise distance, but
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`rather, relative positions of the apertures with respect to the ends of the housing and relative
`
`positions of the airflow portions with respect to the apertures.
`
`The court in Globus noted that the patentee had recognized that the relative positioning
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`meant that “each of the screw holes [has] to be located closer to their respective claimed surfaces
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`than the distance in which these screw holes are located from the opposing surfaces recited in each
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`claim.” Id. at *10. Likewise here, the first aperture must be closer to the first end than the second
`
`end and the second aperture must be closer to the second end than the first end. And in claims 9
`
`and 29, the first portion of the airflow path must be closer to the first aperture than the second
`
`aperture and the second portion of the airflow path must be closer to the second aperture then the
`
`first aperture.
`
`JLI cites Geoscope Techs. Pte. Ltd. v. Google LLC, No. 1:22-cv-01331, 2023 WL 4627433
`
`at *11–12 (E.D. Va. July 19, 2023) as supporting “find[ing] ‘proximate’ and similar terms of
`
`degree indefinite because [] the intrinsic evidence does not provide any objective boundary by
`
`which a POSA would understand the term or any specific guidance about what ‘[proximate]’ might
`
`mean.” JLI Reply at 9–10 (internal quotations omitted); see also JLI Br. at 10. The invention in
`
`
`
`10
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`

`

`Geoscope Techs., related to improving calibration data used for mobile device geolocation. Id. at
`
`*12. In finding that use of the term “in proximity” rendered the claim indefinite, the court
`
`distinguished Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275 (Fed. Cir. 2017),
`
`explaining that there the term “near” in the context of the invention in Mentor Graphics was with
`
`respect to a display screen while in the context of the asserted patent “in proximity” “could be
`
`anything from one foot to one mile away from the first geographic location” and “the specification
`
`and prosecution history lack any particularized guidance about what ‘in proximity’ means in the
`
`context of the invention.” As a result, one of skill “would have no way of knowing whether both,
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`only one, or neither of those distances would fall outside the scope of the element.” Id. at *12.
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`Here, there is no issue that “proximate” may mean “one foot” or “one mile.” Instead, in the
`
`context of a vaporizer housing (similar to the context of the invention in Mentor Graphics), one of
`
`skill would understand whether a first aperture was proximate a first housing end and a second
`
`aperture was proximate a second housing end and would understand whether a first airflow portion
`
`was proximate a first aperture and a second airflow portion was proximate a second aperture. Those
`
`distances are relative and within a confined space.1 One of ordinary skill in the art would thus
`
`readily understand whether the first and second apertures are proximate the first and second ends
`
`in the context of a vaporizer device.
`
`JLI also cites In re Neurografix (’360) Patent Litigation as supporting that use of the word
`
`“proximate” renders the claims indefinite. JLI Reply at 10, citing 201 F. Supp. 3d 206, 222–23 (D.
`
`Mass. 2016). In Neurografix, the invention was used in the context of MRI imaging and “near said
`
`
`1 The Staff contends that in arguing that “proximate” means “at or close to” and that indicates
`relative positioning, NJOY has proposed two constructions, supporting that the use of the term
`“proximate” renders the claims indefinite. Staff Br. at 19. I disagree. Use of “proximate” in the
`claims indicates relative positioning and the specification supports that proximate means at, near,
`or close to. There is no inconsistency.
`
`
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`11
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`

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`exciting and output arrangement means” was found indefinite when “nothing in the patent explains
`
`which of the potentially many possible configurations would achieve the stated goals of the
`
`invention (as opposed to taking generic MRI images).” Id. at 223. The court contrasted the claim
`
`from that in Nautilus where the Federal Circuit found “that the scope of the claim term ‘spaced
`
`relationship,’ while not explicitly defined, could be ‘neither infinitesimally small or greater than
`
`the width of a user’s hands,’ and was therefore sufficiently certain as to be definite.” Id. at 222,
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`quoting 783 F.3d 1374, 1378 (Fed. Cir. 2015).
`
`The situation here, in which there first and second apertures are proximate respective first
`
`and second ends (and first and second portions of airflow path are proximate respective first and
`
`second apertures), more closely resembles that of Nautilus because one of ordinary skill in the art
`
`would understand the scope of “proximate” against the backdrop of a vaporizer housing having a
`
`first end and a second end, with an aperture proximate to each of those ends and with a first portion
`
`of airflow path proximate the first aperture and a second portion of airflow path proximate the
`
`second aperture (in claims 9 and 29). While proximate is not explicitly defined by a numerical
`
`measurement, one of skill in the art would understand that “proximate” indicates relative
`
`positioning in the confined context of a vaporizer housing. The other cases JLI cites, Abdou v.
`
`Alphatec Spine, Inc., No. 12-cv-1804, 2014 WL 6611422 (S.D. Cal. Nov. 19, 2014) and Advanced
`
`Aerospace Techs., Inc. v. United States, 124 Fed. Cl. 282, 290–92 (Fed. Cl. 2015), are similarly
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`unpersuasive. See JLI Reply at 10.
`
`Neither JLI nor the Staff has presented clear and convincing evidence that the term
`
`“proximate” in claims 1, 5, 9, 21, 25, 38, or 45 of the ’864 patent renders those claims indefinite.
`
`Based on the parties’ briefs, the arguments at the hearing, and the evidence, the term “proximate”
`
`is construed as meaning at, near, or close to, which in the context of the ’864 patent claims
`
`
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`12
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`

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`identifies relative positioning.
`
`B.
`
`Transversely
`
`The parties propose:
`
`NJOY’s
`Construction
`Plain meaning, e.g.,
`crosswise
`
`Claim Term and
`Patent Claims
`Transversely
`
`’881 patent claims 1,
`8, and 16.
`
`’864 patent,
`claims 1, 5, 9, 21, 25,
`29, 38, and 45.
`
`
`Revised Joint Chart at 1.
`
`JLI’s Construction
`
`Staff’s Construction
`
`Indefinite.
`
`If construction is
`required, then the
`Staff proposes that
`this term should be
`construed consistent
`with its plain and
`ordinary meaning,
`e.g., crosswise. Thus,
`this term does not
`appear to the Staff to
`be indefinite under 35
`U.S.C. § 112.
`
`Claim 1 of the ’881 patent recites that “the housing includes a heating element located in
`
`the interior of the housing, wherein the heating element extends transversely across the airflow
`
`passageway.” Claim 8 is similar, reciting “a heating element located in the interior of the housing,
`
`the heating element being located within and extending transversely across the airflow
`
`passageway.” Claim 16 is also similar, reciting “a heating element located in the interior of the
`
`housing and extending transversely across the airflow passageway.” Though using slightly
`
`different language, each of claims 1, 8, and 16 recites a heating element in the interior of the
`
`housing, which extends “transversely across” the airflow passageway.
`
`Claims 1, 5, 9, 38, and 45 of the ’864 patent claims recite: “a heating element located in
`
`the interior of the housing, the heating element extending transversely to a central longitudinal axis
`
`of the housing and being at least partially exposed to the airflow.” Claims 21, 25, 29 of the ’864
`
`patent recite: “a heating element located in the interior of the housing, the heating element
`
`
`
`13
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`

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`including a coil extending transversely to the central longitudinal axis of the housing and
`
`transversely to a direction of the airflow.” Though using slightly different language, each of claims
`
`1, 5, 9, 21, 25, 29, 38, and 45 recite a heating element in the interior of the housing “extending
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`transversely to the central longitudinal axis of the housing.” Claims 1, 5, 9, 38, and 45 also recite
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`that the “heating element” is at least partially exposed to the airflow. Claims 21, 25, and 29 add
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`that the heating element extends “transversely to a direction of the airflow.”
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`The specification does not use the word “transversely.” Figure 2, however, shows heating
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`element 222 and airflow passageway 214, among other things, in an exemplary embodiment:
`
`
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`’881 patent at Fig. 2. NJOY contends that “Figure 2 clearly illustrates the heating element
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`extending transversely across the airflow passageway such that it need not be described in the
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`text.” NJOY Reply at 4–5, n.3. JLI does not address this argument head-on, instead noting that
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`because the specification states that “[w]hile the heating element 222 is shown as residing solely
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`in the airflow passageway 214, it is to be understood that various other configurations of the
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`heating element 222 with respect to the airflow passageway are contemplated and are intended to
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`fall under the scope of the hereto-appended claims,” and that “the claims are not limited to any
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`
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`14
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`

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`particular orientation of the heating element.” JLI Br. at 13.
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`JLI argues that the term “transversely” renders the identified claims indefinite because
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`none of the ordinary definitions of “transversely” are consistent with the intrinsic evidence, and
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`the specification does not otherwise use or define the term. JLI Br. at 12–13. According to JLI,
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`construing “transversely” as “crosswise” “would be inconsistent with the claims, which already
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`separately require that the heating element be across the passageway, i.e., that it ‘extends
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`transversely across the airflow passageway.’” Id. (emphasis omitted). JLI argues that this is a “fatal
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`defect.” JLI Reply at 11.
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`Because the claims of the ’864 patent do not recite “transversely across,” they do not
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`separately require that the heating element be across the passageway, as JLI argues. The “fatal
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`defect” that JLI identifies is therefore not present in claims 1, 5, 9, 21, 25, 29, 38, and 45 of the
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`’864 patent.
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`As to claims 1, 8, and 16 of the ’881 patent, which do recite “transversely across,” I
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`disagree that this is a “fatal defect.” JLI recognizes that the heating element can be situated in
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`various configurations. JLI Br. at 13. The heating element, therefore, could extend across the
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`airflow passageway in, for example, a V-shape or it could extend across the airflow passageway
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`radially. In neither of those configurations would the heating element be transverse to the airflow
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`passageway because the heating element would not be crosswise to the airflow passageway. As a
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`result, I disagree that “transversely” and “across” are necessarily redundant, as JLI argues.
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`In the embodiment shown in Fig. 2, the heating element extends across the airflow
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`passageway and is transverse to the airflow passageway, which is described as beginning at the
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`first aperture 210 and extending to the second aperture approximately along the central axis of the
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`cartridge 200. ’881 patent at 6:19–22. This is depicted in the annotated version of Fig. 2, below:
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`
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`15
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`

`
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`Staff Br. at 24; and CMX-0003 (Vallee Decl.) at ¶ 25.
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`This configuration is recited in claims 1, 8, and 16 of the ’881 patent in which
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`“transversely” modifies how the heating element extends across the airflow passageway, that is,
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`crosswise to it, as opposed to, for example, in a V-shape or radially.2
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`JLI also objects to NJOY’s second “possible definition” of “at a right angle to,” as
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`inconsistent with the intrinsic evidence because the heating element is not disclosed in this
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`orientation, and the specification explicitly discloses that the heating element is not limited to a
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`particular orientation. Id. at 13.3 While the specification is clear that the heating element can be
`
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`2 To the extent the words “transversely” and “across” are redundant, the law is clear that such
`redundancy, when supported by the intrinsic evidence, is not a fatal claim defect. VLSI Tech. LLC
`v. Intel Corp., 53 F.4th 646, 653 (Fed. Cir. 2022) (intrinsic evidence may make clear that a
`redundant construction is correct); see NJOY Reply at 6.
`3 JLI also argues that NJOY’s expert changed his opinion when he testified that “transversely”
`should be construed as “substantially perpendicular.” JLI Reply at 12–13. JLI does not explain
`how “at a right angle to” and “perpendicular to” are inconsistent. They are not. I disagree that
`NJOY raised a new construction.
`
`
`
`16
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`

`

`situated in various orientations, Fig. 2 and the specification plainly and unambiguously disclose
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`heating 222 element at a right angle to the airflow (which extends from one end to the other of the
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`airflow passageway 214) and at a right angle to a central axis of the cartridge 200. ’881 patent at
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`6:10–47 and Fig. 2.
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`JLI also cites to pending prosecution of a related application in arguing that “transversely”
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`is indefinite. JLI Reply at 13, citing RMX-0009; see also RMDX-68 and 69. The Federal Circuit
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`in Phillips noted that “because the prosecution history represents an ongoing negotiation between
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`the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity
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`of the specification and thus is less useful for claim construction purposes.” 415 F.3d at 1317.
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`Because the pending prosecution JLI relies on is unfinished, the final product of that negotiation
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`is not yet known. In addition, it appears that the claims in the pending application have different
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`language and the Examiner agreed that the “drawings show a heating element generally
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`transversely mounted with respect to the longitudinal axis.” See RMX-0009 and RMDX-68 and
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`69. For these reasons, I conclude that the unfinished prosecution of a related application does not
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`inform the meaning of the claim term “transversely.”
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`Based on the parties’ briefing, the arguments at the hearing, and the evidence, JLI has not
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`presented clear and convincing evidence that use of the term “transversely” in claims 1, 8, and 16
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`of the ’881 patent and claims 1, 5, 9, 21, 25, 29, 38, and 45 of the ’864 patent renders those claims
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`indefinite. The term “transversely” is construed to have its plain and ordinary meaning, that is,
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`crosswise.
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`C.
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`Both Transverse Sides of the [Heating] Element
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`The parties propose:
`
`
`
`17
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`

`

`JLI’s
`Construction
`Indefinite
`
`Claim Term and Patent
`Claims
`both transverse sides of
`the [heating] element
`
`’881 patent claims 1, 8,
`and 16
`
`’864 patent,
`claims 11, 21, 25, 29, 38,
`and 45
`
`NJOY’s
`Construction
`Plain meaning,
`e.g., sides of the
`[heating] element
`that extend
`transversely
`and over which
`airflow passes.
`
`
`Staff’s Constru