UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`JUUL LABS, INC.,
`Petitioner,
`
`v.
`
`NJOY, LLC,
`Patent Owner.
`
`
`
`Case No. IPR2024-00160
`
`U.S. Patent No. 11,497,864 B2
`
`Title: Electronic Vaporizer
`
`Filing Date: June 25, 2019
`
`Issue Date: November 15, 2022
`
`
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`JUUL LABS, INC.,
`Petitioner,
`
`v.
`
`NJOY, LLC,
`Patent Owner.
`
`
`
`Case No. IPR2024-00160
`
`U.S. Patent No. 11,497,864 B2
`
`Title: Electronic Vaporizer
`
`Filing Date: June 25, 2019
`
`Issue Date: November 15, 2022
`
`
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
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`Petitioner Does Not Dispute That The Prior Art Fails To Disclose A
`“Housing Having A [First/Second] Aperture” ................................................ 1
`
`Petitioner Does Not Dispute Xia (Ground 1) Is Nearly Identical To
`Han Or Rebut Arguments Made With Respect To Ground 2 ......................... 4
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`III.
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`Petitioner Exceeded the Word Count .............................................................. 5
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`
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`i
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`U.S. Patent No. 11,497,864 B2
`Patent Owner’s Sur-reply to Petitioner’s Reply to Patent Owner’s POPR
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`
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`Petitioner’s reply is without merit. Petitioner does not contest that its prior art
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`references fail to disclose a housing having a first aperture. Instead, Petitioner argues
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`that, despite the clear language of the claims, the aperture need not be in the housing;
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`or, alternatively, it would have been obvious to include an aperture in the housing.
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`For the former, Petitioner argues that Patent Owner took positions in the ITC
`
`investigation concerning the Vuse Ciro device that purportedly confirm that the
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`aperture need not be in the housing. Patent Owner, however, is no longer relying on
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`the Vuse Ciro in the ITC investigation. Regardless, the Vuse Ciro practices this
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`limitation. For the latter, Petitioner argues it would have been obvious to move the
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`existing apertures closer to the housing end. But that only puts the aperture closer to
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`the housing, not in the housing as required.
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`
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`With regards to § 325(d), Petitioner does not dispute that Xia and Han are
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`nearly identical. Nor does Petitioner provide a rebuttal to Patent Owner’s arguments
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`concerning Wang and Fang.
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`
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`Finally, concerning the word count issue, Petitioner does not dispute that the
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`short-hand characterization would take the word count over the statutory limit. Nor
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`do any of the cases relied on by Petitioner have the same fact pattern as here.
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`I.
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`
`
`Petitioner Does Not Dispute That The Prior Art Fails To Disclose A
`“Housing Having A [First/Second] Aperture”
`The claims recite a “housing having a [first/second] aperture.” Yet, as seen
`
`below, the Petitioner uniformly failed to identify this requirement in any of its prior
`
`
`
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`1
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`
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`U.S. Patent No. 11,497,864 B2
`Patent Owner’s Sur-reply to Petitioner’s Reply to Patent Owner’s POPR
`
`art references:
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`
`
` Xia (Pet. at 19) Fang (Pet. at 27 (annotated)) Wang (Pet. at 25)
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`
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`
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`Petitioner nonetheless argues that the aperture need not be in the housing
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`because Patent Owner purportedly takes that position in the ITC investigation
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`concerning the Vuse Ciro. Reply at 1-3. Patent Owner, however, dropped its reliance
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`on the Vuse Ciro in the ITC investigation.
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`
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`Regardless, the Vuse Ciro includes a housing (i.e., the outer structure of the
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`device) having an aperture, which can be clearly seen from outside the device. POPR
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`at 28. Petitioner draws a distinction between the housing and the threaded connector
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`(Reply at 1); but the threaded connector is part of the housing (i.e., the outer structure
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`of the device). And even if the threaded connector was not considered part of the
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`housing, the housing has an aperture to accommodate the threaded connector.
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`
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`Petitioner also misstates the Middle District of North Carolina judge’s
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`holding, which Petitioner suggests permits an internal aperture. Reply at 2. There,
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`the judge determined that, “[a]ir enters through an opening at the base of the positive
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`
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`2
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`
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`U.S. Patent No. 11,497,864 B2
`Patent Owner’s Sur-reply to Petitioner’s Reply to Patent Owner’s POPR
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`pin.” Ex. 1015 at 16. The “opening at the base of the positive pin” is the housing’s
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`hole, which can be seen when viewing the exterior of the cartridge, identified by
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`Patent Owner as the aperture, not some internal gathering point. POPR at 28.
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`
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`Petitioner’s Reply then resorts to rearguing its obviousness case – suggesting
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`that it would have been obvious to modify Xia and Wang to have this feature. Reply
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`at 3. As to Xia, Petitioner cites for support the Pet. at 38-39. But Pet. at 38-39 recites
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`that Xia’s aperture could be replaced by Wang’s apertures. See Pet. at 39 (“it was
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`obvious to modify Xia’s cartridge to include the known airflow passageway of
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`Wang.” (emphasis added). As the figures above demonstrate, Wang’s purported
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`apertures are not in the housing, but are instead in the liquid storage medium. Pet. at
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`38-39 also suggests it would have been obvious to “require extension of the
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`passageway to the very edge of the housing, with a central aperture (already present
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`in Wang, and in Fang)” (emphasis added). But extending the structures having the
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`apertures to be closer to the housing ends is not the same as moving the aperture
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`from these structures to the housing, which is required under the claims.
`
`
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`As to Wang, Petitioner cites Pet. at 102 to argue that the Petition argues
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`obviousness for an aperture in Wang’s housing. The Pet. at 102, however, recites
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`extending “the solution-holding medium and passageway [to] reach[] the air inlet
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`106” (emphasis added). Again, the Petition does not suggest moving the aperture to
`
`the housing, but instead, keeping the aperture in the solution-holding medium and
`
`
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`3
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`
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`U.S. Patent No. 11,497,864 B2
`Patent Owner’s Sur-reply to Petitioner’s Reply to Patent Owner’s POPR
`
`extending the solution-holding medium so that the aperture is closer to the housing
`
`end.
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`
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`Petitioner also criticizes Patent Owner for mischaracterizing the Petition.
`
`Reply at 3. Specifically, that certain elements Patent Owner argued would be
`
`removed, would not actually be removed. Tellingly, Petitioner does not, and cannot,
`
`point to the Petition to support this contention. The Petition simply has no discussion
`
`of this and the only figures provided by the Petitioner omit these features. See, e.g.,
`
`Pet. at 57. Petitioner’s resort to its expert declaration to make this point is endemic
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`of Petitioner’s improper incorporation by reference to support its obviousness
`
`arguments. POPR at 34.
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`
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`To be clear, Petitioner failed to identify a first aperture in the housing in any
`
`of its prior art references. Petitioner seemingly overlooked this limitation. The only
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`apertures identified by the Petitioner are apertures internal to the housing. Petitioner
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`is using its Reply to repurpose its obviousness arguments that were directed to
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`bringing its internal apertures closer to the housing end to now include moving the
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`aperture to the housing end. This is a post facto argument not included in the Petition.
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`II.
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`
`
`Petitioner Does Not Dispute Xia (Ground 1) Is Nearly Identical To Han
`Or Rebut Arguments Made With Respect To Ground 2
`Petitioner makes no argument that Xia is not nearly identical to Han. Nor does
`
`Petitioner dispute that the same arguments made to the Examiner are now the same
`
`arguments Petitioner makes in its Petition. Instead, Petitioner pursues a strawman.
`
`
`
`4
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`
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`U.S. Patent No. 11,497,864 B2
`Patent Owner’s Sur-reply to Petitioner’s Reply to Patent Owner’s POPR
`
`Petitioner again argues that Patent Owner is being inconsistent in its arguments with
`
`respect to the Vuse Ciro (not related to either Han or Xia); but Patent Owner has
`
`dropped its reliance on the Vuse Ciro in the ITC Investigation. Petitioner also once
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`again misstates the findings in the M.D.N.C. litigation. The judge there specifically
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`held that small items that “do not alter the direction of the Ciro’s airflow passageway
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`any more than the heating element” are obstructions. Ex. 1015 at 16. Xia’s liquid
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`storage does not fall within this description.
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`
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`The only remaining issue is Ground 2. Petitioner provides no rebuttal to Patent
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`Owner’s arguments that the Examiner considered Wang and Fang. See POPR at 47-
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`48. Petitioner’s only argument is that Wang and Fang are not similar to Han (an
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`argument Patent Owner did not make).
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`III. Petitioner Exceeded the Word Count
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`37 CFR § 42.24 permits an “appendix of exhibits or claim listing.” Petitioner
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`provided more than a claim listing, it included a short-hand characterization of each
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`claim limitation. Petitioner relies on Attends Healthcare Prods., Inc. v. Hartmann,
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`IPR2020-01480, Paper 6 at 5-22 (Nov. 25, 2020); id. Paper 13 at 36 (Feb. 24, 2021);
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`Tesla, Inc. v. Unicorn Energy GMBH, IPR2022-00110, Paper 19 (Feb. 17, 2022);
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`and Graco, Inc. v. Daniel Dumitru Dorneanu, IPR2022-00942, Paper 6 at 9 (Oct.
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`21, 2022). None of these cases includes a short-hand description of the claim
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`limitations. And in the case of Tesla, the Board required the Petitioner to refile.
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`5
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`U.S. Patent No. 11,497,864 B2
`Patent Owner’s Sur-reply to Petitioner’s Reply to Patent Owner’s POPR
`
`Dated: March 29, 2024
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`
`
`Respectfully submitted,
`
`
`/s/ Anish R. Desai
`Anish R. Desai
`(Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`Phone: 212-310-8000
`Fax: 212-310-8007
`anish.desai@weil.com
`
`
`Lead Counsel for Patent Owner
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`
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`6
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`U.S. Patent No. 11,497,864 B2
`Patent Owner’s Sur-reply to Petitioner’s Reply to Patent Owner’s POPR
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`CERTIFICATE OF COMPLIANCE
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`
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`The undersigned hereby certifies that this brief complies with the type-volume
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`limitations of 37 C.F.R. § 42.24 (c)(1). This brief contains 1,205 words as calculated
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`by the “Word Count” feature of Microsoft Word 2016, the word processing program
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`used to create it.
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`
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`The undersigned further certifies that this brief complies with the typeface
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`requirements of 37 CFR § 42.6(a)(2)(ii) and typestyle requirements of 37 CFR §
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`42.6(a)(2)(iii). This brief has been prepared in a proportionally spaced typeface
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`using Microsoft Word 2010 in Times New Roman 14 point font.
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`Respectfully submitted,
`
`
`/s/ Anish R. Desai
`Anish R. Desai
`(Reg. No. 73,760)
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`Phone: 212-310-8000
`Fax: 212-310-8007
`anish.desai@weil.com
`
`
`Lead Counsel for Patent Owner
`
`Dated: March 29, 2024
`
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`
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`U.S. Patent No. 11,497,864 B2
`Patent Owner’s Sur-reply to Petitioner’s Reply to Patent Owner’s POPR
`
`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that on March 29, 2024, the foregoing
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`PATENT OWNER’S PRELIMINARY SUR-REPLY was served via electronic
`
`mail, upon the following:
`
`William A. Meunier
`Michael T. Renaud
`Adam S. Rizk
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`One Financial Center
`Boston, MA 02111
`WAMeunier@mintz.com
`MTRenaud@mintz.com
`ARizk@mintz.com
`
`Reza Dokhanchy
`Michael D Van Loy
`MINTZ, LEVIN, COHN, FERRIS,
`GLOVSKY AND POPEO, P.C.
`3580 Carmel Mountain Road, Suite 300
`San Diego, CA 92130
`RDokhanchy@mintz.com
`MDVanLoy@mintz.com
`
`
`
`/Lauren McDuffie/
`Lauren McDuffie
`Senior IP Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, DC 20036
`lauren.mcduffie@weil.com
`T: 202-682-7000
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