`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`———————
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`———————
`NJOY, LLC, NJOY HOLDINGS, INC.,
`Petitioners,
`
`v.
`JUUL LABS, INC.,
`Patent Owner
`———————
`
`Case No. IPR2024-00223
`U.S. Patent No. 10,709,173
`
`———————
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`PETITIONERS’ REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`Page
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`JUUL IS NOT CO-EXTENSIVE WITH THE 173 PATENT CLAIMS ........ 1
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`
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`I.
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`II.
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`THE 173 PATENT DID NOT SATISFY A LONG-FELT NEED ................. 2
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`III. ANY UNEXPECTED RESULTS HAVE NO NEXUS TO THE 173
`PATENT CLAIMS .......................................................................................... 3
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`IV. ANY INDUSTRY PRAISE HAS NO NEXUS TO THE 173 PATENT
`CLAIMS .......................................................................................................... 4
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`V. ANY COMMERCIAL SUCCESS HAS NO NEXUS TO THE 173
`PATENT .......................................................................................................... 4
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`VI.
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`JLI’S EVIDENCE OF COPYING HAS NO NEXUS TO THE 173
`PATENT .......................................................................................................... 5
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`i
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`PETITIONERS’ EXHIBIT LIST
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`U.S. Patent No. 10,709,173 to Monseesetal. (“the ’173 patent”)
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`File History for U.S. Patent 10,709,173
`
`Declaration of William Singhose in Support of Petition for Inter
`Partes Review of U.S. Patent 10,709,173
`
`Curriculum Vitae of William Singhose
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`U.S. Patent Publication No. 2015/0128971 (“Verleur”)
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`U:S. Provisional Application No. 61/903,344 (“Verleur-Prov’”)
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`U.S. Patent Publication No. 2009/0272379 (“Thorens379”’)
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`U.S. Patent Publication No. 2016/0021933 (“Thorens 933”)
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`JUUL Labs, Inc. v. NJOY, LLC, No. 23-cv-01204 (D. Ariz.) Docket
`(retrieved Nov. 13, 2023)
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`U.S. Patent No. 8,205,622 (“Pan 622”)
`
`Reserved
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`U.S. Patent No. 3,200,819 (“Gilbert”)
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`U.S. Patent Publication No. 2013/0228191 (“Newton 191”)
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`U.S. Patent No. 5,388,594 (“Counts 594”)
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`U.S. Patent Publication No. 2012/0199663 (“Qiu 663”)
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`International Application No. WO 2013/076098A2 (“Plojoux”)
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`U.S. Patent No. 8,499,766 (“Newton”)
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`U.S. Patent No. 9,332,787 (“Liu 787”)
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`KR200457694 (“Youm’”)
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`Certified Translation of KR200457694 (“Youm’”)
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`KR200453424 (“Yeom’”)
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`Certified Translation of KR200453424 (“Yeom’”)
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`U.S. Patent No. 11,606,981 (“Verleur 981”)
`
`i
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`Exhibit No.
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`Description
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`U.S. Patent No. 11,134,722 (“Verleur 722”)
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`U.S. Patent Publication No. 2011/0094523 (“Thorens 523”)
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`Investigation No.
`U.S.LT.C.
`Construction Chart
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`337-TA-1368,
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`Joint Claim
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`1024
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`1025
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`1026
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`1027
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`1028
`U.S. Patent Publication No. 2014/0174458 (“Katz”)
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`Aug. 22, 2006 Tariff Classification Ruling M85579, available at
`https://rulings.cbp.gov/search?term=m85579
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`
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`U.S. Patent No. 5,144,962 (“Counts 962”)
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`U.S. Patent Publication No. 2013/0037041 (“Worm”)
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`U.S. Patent No. 9,516,899 (“Plojoux 899”)
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`Transcript from Deposition ofJames Monseesin Inv. 337-TA-1368
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`Transcript from Deposition of Adam Bowenin Inv. 337-TA-1368
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`JLI-NJOY-ITC1368-01326346
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`JLI-NJOY-ITC1368-01935328
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`JLI-NJOY-ITC1368-01935331
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`ill
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`The Board should assess secondary considerations after institution on a full
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`evidentiary record. Umicore AG & Co. KG v. BASF Corp., IPR2015-01124, Paper
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`8, p. 22 (P.T.A.B. Nov. 2, 2015). Nonetheless, JLI’s arguments at this stage fail to
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`overcome the compelling case of obviousness set forth in the Petition.
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`I.
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`JUUL is Not Co-Extensive with the 173 Patent Claims
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`For nexus to be presumed, JLI must demonstrate that a specific product: (1)
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`embodies the claimed features; and (2) is co-extensive with the claims. Polaris
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`Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018). Even if
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`JUUL practices the 173 Patent claims, JLI cannot satisfy the co-extensiveness
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`requirement because JUUL comprises numerous material unclaimed features:
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` Nicotine salt formulation, flavors, and high nicotine concentration. Ex.
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`2027.005 (“[T]he high level of nicotine in Juul’s pods [is]…almost double the
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`concentration in some rival e-liquids….”); Ex.2031.002 (“Juulpods…contain a
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`concentrated juice cocktail of salts and organic acids … [that] more closely
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`resembles the experience of smoking a cigarette….”); Ex. 2036.002 (“The
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`growing popularity of JUUL seems to be driven by flavored offerings….”).
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` Thumb drive shape. Ex. 2027.002 (“Juul says its signature brushed-aluminum,
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`thumb-drive-shaped vape is intended to help adult smokers switch….”).
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` Temperature control system. Ex. 2003.011 (“
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`”).
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`1
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` Electronics, including pressure sensors, for automating operation. Ex. 2003.011
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`
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`(“
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`”).
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`See also Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1378 (Fed. Cir. 2019)
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`(“[T]he X-Sync products are not coextensive…because the products include a
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`‘critical’ unclaimed feature…that materially impacts the product's functionality.”).
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`
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`Because JUUL is not coextensive and a presumption of nexus does not
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`apply, JLI must demonstrate that secondary considerations evidence is the “direct
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`result of the unique characteristics of the claimed invention.” In re Huang, 100
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`F.3d 135, 140 (Fed. Cir. 1996). JLI has not and cannot make any such showing.
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`II. The 173 Patent Did Not Satisfy a Long-Felt Need
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`JLI contends that JUUL met the “long-felt need for a satisfying nicotine
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`delivery product that did not have the…adverse health effects of smoking
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`combustible cigarettes.” POPR at 48. Even if true, JLI has not demonstrated that
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`the 173 Patent satisfied such a need. First, prior art already met the need for a
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`nicotine delivery product that did not have the unhealthy effects of combustible
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`cigarettes. Ex. 1010 at 2:16-22 (“…a green alternative to harmful, polluting
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`conventional cigarettes….”). Second, to the extent JUUL provided satisfying
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`nicotine delivery, it was due to JUUL’s unclaimed nicotine chemistry. Ex.
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`1036.014 (“
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`”). Third, the other purported needs
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`2
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`referenced by JLI—a non-cylindrical shape, flame-simulating LED, and a cartridge
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`that does not screw in—are largely unclaimed in the 173 Patent.1 POPR at 50.
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`Thus, there is no nexus between long-felt need and the 173 Patent.
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`III. Any Unexpected Results Have No Nexus to the 173 Patent Claims
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`
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`The purported “unexpected results” identified by JLI– reliability,
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`satisfaction, vapor production and nicotine delivery, small form factor, and
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`viewing the liquid level – have no nexus to the 173 Patent or were otherwise
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`already known in the art (and thus not unexpected). POPR at 52-53.
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`First, the 173 Patent claims do not require a small form factor or reliable
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`device. In any event, internal JLI communications indicate that JUUL was not
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`reliable. Ex. 1034.001 (
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`
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`). Second, to the extent JUUL achieved unexpected results related
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`to satisfaction, vapor production, and nicotine delivery, those results are
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`attributable to unclaimed features such as temperature control and nicotine salt
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`chemistry. Ex. 2003.011
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`); Ex. 1036.014 (“
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`1 Only dependent claims 18 and 28 require a non-cyclindrical shape, which was
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`already known in the art (i.e., the need was already met). Ex. 1003, ¶¶ 179-180.
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`3
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`”). Third, prior art devices already included liquid viewing
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`windows, so that result was expected. Ex. 1013.010, [0032] (“The liquid reservoir
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`includes a clear or translucent window…for visually determining the liquid
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`level….”). Unexpected results do not support non-obviousness.
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`IV. Any Industry Praise Has No Nexus to the 173 Patent Claims
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`
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`JLI relies primarily on a brief submitted jointly by JLI and Altria in an FTC
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`proceeding (the “FTC Brief”) to support its industry praise argument. However,
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`the specific features referenced therein – form-factor, liquid viewing window,
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`reversible pod with locking gaps, fresh airflow, and simple user operation—are
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`unclaimed in the 173 Patent and/or were otherwise known in the art. POPR at 55.
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`Moreover, the FTC Brief credits JUUL’s powerful battery and proprietary e-liquid
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`formulation for delivering “superior nicotine satisfaction,” both of which are
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`unclaimed. Ex. 2024.058, ¶ 224. The other publications cited by JLI likewise fail
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`to praise any features claimed in the 173 Patent. See Ex. 2029; Ex. 2031; Ex.
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`2032. Thus, any industry praise is not attributable to the 173 Patent.
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`V. Any Commercial Success Has No Nexus to the 173 Patent
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`JLI cites no evidence that sales of JUUL were attributable to features
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`
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`claimed in the 173 Patent. To the contrary, any commercial success JUUL
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`experienced was clearly due to unclaimed features, such as its nicotine salt
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`formulation and e-liquid flavors. See Ex. 2036.002 (“The growing popularity of
`4
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`JUUL seems to be driven by flavored offerings2….”); Ex. 2032.001 (“A huge part
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`of JUUL’s cachet appears to be its pleasing aesthetics, ease of use & nicotine salt
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`e-liquid technology.”).
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` Ex. 1034.001 (
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`); Ex. 1036.014 (
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`).3
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`VI.
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`JLI’s Evidence of Copying Has No Nexus to the 173 Patent
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`JLI cites several publications that describe that others in the industry
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`purportedly made JUUL-compatible pods or pod-based products, but no evidence
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`that others specifically copied the features claimed in the 173 Patent. For example,
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`the 173 Patent was not at issue in the ITC proceeding referenced by JLI. POPR at
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`57. Similarly, there is no evidence that Altria’s pod-based products practiced the
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`173 Patent. POPR at 57-60. Finally, JLI has not identified any evidence that
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`Altria’s investment in JLI was attributable to the 173 Patent. Id. As such, alleged
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`copying does not support the non-obviousness of the 173 Patent.
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`2 Emphasis added unless stated otherwise.
`3 Even if Altria did make a license offer for JLI’s IP (POPR at 56-57), it is
`irrelevant because there is no evidence of nexus to the 173 Patent.
`5
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`Dated: March 27, 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 Petitioners
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`6
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`CERTIFICATE OF COMPLIANCE
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`The undersigned hereby certifies that this brief complies with the type-
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`volume limitations of 37 C.F.R. § 42.24 (c)(1). This brief contains 1,138 words as
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`calculated by the “Word Count” feature of Microsoft Word 2016, the word
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`processing program used to create it.
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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,
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`
`/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 Petitioners
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`Dated: March 27, 2024
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that on March 27, 2024, the foregoing
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`PETITIONERS’ REPLY TO PATENT OWNER’S PRELIMINARY
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`RESPONSE was served via electronic mail, upon the following:
`
`James M. Glass
`John T. McKee
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave, 22nd Floor
`New York, New York 10010
`jimglass@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`Quincy Lu
`Quinn Emanuel Urquhart & Sullivan LLP
`1109 First Avenue, Suite 210
`Seattle, WA 98101
`quincylu@quinnemanuel.com
`
`qe-juul-njoy-iprs@quinnemanuel.com
`
`/Lauren McDuffie/
`Lauren McDuffie
`Senior IP Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street, NW, Suite 600
`Washington, D.C. 20036
`lauren.mcduffie@weil.com
`202-682-7000
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