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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`NJOY, LLC,
`NJOY HOLDINGS, INC.,
`Petitioners,
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`v.
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`JUUL LABS, INC.,
`Patent Owner
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`___________________
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`Case IPR2024-00223
`Patent No. 10,709,173
`___________________
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`PATENT OWNER’S SUR-REPLY IN SUPPORT OF
`ITS PRELIMINARY RESPONSE
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`The Board should assess secondary considerations at the institution stage.
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`Petitioner cites Umicore AG & Co. KG v. BASF Corp., IPR2015-01124, Paper 8
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`(P.T.A.B. Nov. 2, 2015) as purportedly excluding review of secondary considerations
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`at institution. Reply at 1. However, in Umicore, no reply brief was authorized and as
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`a result, “Petitioner has not had the ability to fully respond to the specific arguments
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`raised by Patent Owner in the Preliminary Response.” Umicore, IPR2015-01124,
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`Paper 8 at 22. Here, Petitioner specifically requested, and was granted, the opportunity
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`to file an entire reply brief addressed to secondary considerations. The concern that
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`animated Umicore does not apply, and therefore the Board may properly rely on JLI’s
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`strong showing of secondary considerations in deciding whether to institute IPR.
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`WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016) (“[W]e have
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`repeatedly stressed that objective considerations of non-obviousness must be
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`considered in every case.”); Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048
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`(Fed. Cir. 2016) (“Objective indicia of nonobviousness must be considered in every
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`case where present.”) (en banc).
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`A presumption of nexus applies in this case because the JUUL System is “the
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`invention disclosed and claimed” in the ’173 patent. WBIP, 829 F.3d at 1329 (“[T]here
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`is a presumption of nexus for objective considerations when the patentee shows that
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`the asserted objective evidence is tied to a specific product and that product is the
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`invention disclosed and claimed in the patent.” (quotation omitted)). The challenged
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`1
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`’173 patent independent claims explicitly cover an entire vaporizer device, including
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`a cartridge portion and a body portion, each comprising several other subcomponents.
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`Ex. 1001 at cl. 1. This claimed vaporizer covers the JUUL System product as sold, as
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`JLI demonstrated in 20 pages of its Preliminary Response. POPR at 28-47. The
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`invention is not a subcomponent of the JUUL System, nor does Petitioner contend that
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`it is. Petitioner also does not dispute that the JUUL System practices every limitation
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`of claim 1 of the ’173 patent. Nor does Petitioner contend that nexus is negated
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`because the JUUL System embodies features of other JLI patents.
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`Instead, Petitioner argues that the JUUL System is not co-extensive with the
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`’173 patent “because JUUL comprises numerous material unclaimed features.” Reply
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`at 1. Petitioner relies exclusively on one case, Fox Factory, Inc. v. SRAM, LLC, 944
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`F.3d 1366, 1378 (Fed. Cir. 2019), and its statement “[T]he X-Sync products are not
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`coextensive . . . because the products include a ‘critical’ unclaimed feature . . . that
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`materially impacts the product’s functionality.”). However, Petitioner significantly
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`mischaracterizes Fox Factory and the governing law.
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`Fox Factory and its cited prior cases primarily concern the mismatch between a
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`narrow patent that covers a subcomponent of a commercial product, and secondary
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`considerations evidence that pertains to aspects of the larger product that are unrelated
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`to the patent. In circumstances like that, a presumption of nexus should not apply. Id.
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`at 1373 (“Conversely, ‘[w]hen the thing that is commercially successful is not
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`2
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`coextensive with the patented invention—for example, if the patented invention is only
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`a component of a commercially successful machine or process,’ the patentee is not
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`entitled to a presumption of nexus.” (quoting Demaco Cor. V. F. Von Langsdorff
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`Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)) (emphasis added)); id. at 1374
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`(“[T]he degree of correspondence between a product and a patent claim falls along a
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`spectrum. At one end of the spectrum lies perfect or near perfect correspondence. At
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`the other end lies no or very little correspondence, such as where the patented invention
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`is only a component of a commercially successful machine or process.” (quotation
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`omitted) (emphasis added)). That is not the case here. The invention of the ’173 patent
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`is not a subcomponent of the JUUL System. The entire vaporizer device is claimed.
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`Even assuming that Fox Factory can be applied here, outside the full context of
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`that decision, Petitioner raises only four purportedly unclaimed features of the JUUL
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`System: 1) “Nicotine salt formulation, flavors, and high nicotine concentration”; 2)
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`“Thumb drive shape”; 3) “Temperature control system”; and 4) “Electronics, including
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`sensors, for automating operation.” Reply at 1-2. Petitioner’s position fails.
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`First, these four features are the entirety of Petitioner’s factual case against the
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`coextensiveness of the patent claims and the JUUL System. But even assuming that
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`the features are unclaimed, and that Petitioner’s characterizations of the cited evidence
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`are correct, they are insufficient to show that the claims are not coextensive with the
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`JUUL System, as Fox Factory itself noted. Fox Factory, 944 F.3d at 1374 (“[W]e
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`3
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`have never held that the existence of one or more unclaimed features, standing alone,
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`means nexus may not be presumed.”). By simply stopping at the existence of
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`purportedly unclaimed features, Petitioner attempts to turn Fox Factory on its head.
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`Second, Petitioner has not shown that the purportedly unclaimed features are
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`“critical” or “material.” The evidence, even if fully credited, simply shows that these
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`were features, but does not address their import. The only cited evidence that even
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`arguably speaks to the value of any of these features is “Ex. 2036.002 (‘The growing
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`popularity of JUUL seems to be driven by flavored offerings . . . .’)” for feature 1.
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`Reply at 1. That statement is a far cry from showing materiality or criticality. It stands
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`in stark contrast to the feature at issue in Fox Factory, where the patent owner itself
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`had acknowledged an unclaimed feature as “critical.” Fox Factory, 944 F.3d at 1375
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`(“[Patent owner] described this gap filling feature as ‘critical’ . . . .”). Indeed, Fox
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`Factory differentiated between simply unclaimed features and features that “materially
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`impact the functionality” of the products. Id. at 1376 (“[W]e agree with both the Board
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`and SRAM that the mere existence of one or more unclaimed features does not
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`necessarily mean presuming nexus is inappropriate.”). Petitioner has not demonstrated
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`any features that “materially impact the functionality” of the vaporizer, and so has not
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`come close to the threshold in Fox Factory.
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`Third, the features cited by Petitioner are not unclaimed. The “nicotine salt
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`formulation” in feature 1 corresponds to the “vaporizable material” specified in claim
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`4
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`1. The “thumb drive” in feature 2 corresponds to the “cartridge” and “body” required
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`by claim 1. The “temperature control system” in feature 3 corresponds to the “resistive
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`heating element” specified in claim 1. And the “electronics” in feature 4 corresponds
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`to the claimed operating configuration “a resistive heating element configured to heat
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`the vaporizable material” in claim 1. To the extent that Petitioner really meant to write
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`“not specifically claimed” rather than “unclaimed,” the relevant caselaw does not
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`support that as a requirement.
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`Petitioner’s remaining arguments about nexus
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`to specific secondary
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`considerations fail to rebut the presumption of nexus, and do not call into question the
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`evidence that JLI marshalled for each consideration in its Preliminary Response.
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`Reply at 2-5; POPR at 48-60. Petitioner mostly rehashes the same four purportedly
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`unclaimed features that it cited at the beginning of its brief. As reviewed above, the
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`features are not unclaimed, and Petitioner has not shown that they were the “critical”
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`drivers of praise, commercial success, or any other factor. Moreover, Petitioner simply
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`ignores features that are indisputably claimed, including the separation of body and
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`cartridge in a manner that did not mimic traditional cigarettes, and an airflow system
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`that produced satisfying vapor. Secondary considerations squarely support non-
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`obviousness of the challenged claims. The Board should deny institution of IPR.
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`5
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`Date: April 3, 2024
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`By: /James M. Glass/
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`James M. Glass (Reg. No. 46,729)
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`Lead Counsel for Patent Owner
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`CERTIFICATE OF COMPLIANCE
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`I hereby certify that this paper complies with the type-volume limitation of 37
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`C.F.R. § 42.24 because it contains 1,242 words, excluding the parts of the paper
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`exempted by 37 C.F.R. § 42.24.
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`Dated: April 3, 2024
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`/James M. Glass/
`James M. Glass (Reg. No. 46,729)
`Lead Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on April 3, 2024,
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`a complete and entire copy of the above document was provided by email to Petitioners
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`by serving correspondence addresses of record as follows:
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`elizabeth.weiswasser@weil.com
`anish.desai@weil.com
`adrian.percer@weil.com
`anne.cappella@weil.com
`sutton.ansley@weil.com
`christopher.pepe@weil.com
`matthew.sieger@weil.com
`taylor.lawrence@weil.com
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`Dated: April 3, 2024
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`/James M. Glass/
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`James M. Glass (Reg. No. 46,729)
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`Lead Counsel for Patent Owner
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