throbber
Trials@uspto.gov
`571-272-7822
`
`Paper 15
`Entered: June 12, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`NJOY, LLC and NJOY HOLDINGS, INC.,
`Petitioner,
`v.
`JUUL LABS, INC.,
`Patent Owner.
`
`IPR2024-00231
`Patent 10,130,123 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, KIMBERLY McGRAW, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2024-00231
`Patent 10,130,123 B2
`
`
`INTRODUCTION
`I.
`NJOY, LLC and NJOY Holdings, Inc. (collectively, “Petitioner”)
`filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of
`claims 14–16, 18, 27–29, 31, and 32 of U.S. Patent No. 10,130,123 B2
`(Ex. 1001, “the ’123 patent”). JUUL Labs, Inc. (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 7 (confidential); Paper 8
`(redacted) (“Prelim. Resp.”)1. With Board authorization (Ex. 3001),
`Petitioner filed a Reply2 (Paper 11 (confidential); Paper 13 (redacted)), and
`Patent Owner filed a Sur-reply (Paper 12).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless the
`Director determines . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least [one] of the claims challenged in the
`petition.”
`For the reasons set forth below, upon considering the Petition,
`Preliminary Response, Reply, Sur-reply, and evidence of record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing with respect to at least one challenged claim. Accordingly, we
`grant the Petition and institute an inter partes review.
`
`
`1 In this Decision, we refer to the redacted versions of the Patent Owner
`Preliminary Response.
`2 In this Decision, we refer to the redacted version of Petitioner’s Reply.
`
`2
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`IPR2024-00231
`Patent 10,130,123 B2
`
`
`Real Parties-in-Interest
`A.
`Petitioner identifies NJOY, LLC, NJOY Holdings, Inc., Altria Group,
`Inc., Altria Group Distribution Company, Altria Client Services LLC, and
`Shenzhen Smoore Technology Limited as real parties-in-interest. Pet. 1.
`Patent Owner identifies itself as the real party-in-interest. Paper 6, 2.
`
`Related Proceedings
`B.
`The parties identify Certain Vaporizer Devices, Cartridges Used
`Therewith, and Components Thereof, 337-TA-1368 (ITC) and JUUL Labs,
`Inc. v. NJOY, LLC, 23-cv-01204 (D. Ariz.) as related proceedings. Pet. 1;
`Paper 6, 2.
`Patent Owner further identifies IPR2024-00223 (U.S. Patent No.
`10,709,173), IPR2024-00267 (U.S. Patent No. 11,134,722), IPR2024-00268
`(U.S. Patent No. 11,606,981), IPR2024-00536 (U.S. Patent No. 11,606,981
`and IPR2024-00567 (U.S. Patent No. RE49,114) as related matters. Paper 6,
`2.
`
`The ’123 patent
`C.
`The ’123 patent, titled “Vaporizer Devices with Blow
`Discrimination,” issued on November 20, 2018. Ex. 1001, codes (45), (54).
`The ’123 patent describes electronic cigarettes (“e-cigarettes”) or vaping
`devices as “battery-powered vaporizers that simulate the feeling of smoking,
`but without tobacco.” Id. at 2:23–25. The ’123 patent describes vaping
`devices that “can accurately differentiate between blowing and drawing
`(sucking) through the mouthpiece and adjust the control of the vaporizer
`accordingly.” Id. at 2:15–19. The ’123 patent explains that e-cigarettes can
`be activated by a user pressing a button or via a pressure sensor that detects a
`user drawing (sucking) on the e-cigarette to determine whether a heating
`
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`IPR2024-00231
`Patent 10,130,123 B2
`
`element should be in use or not. Id. at 2:28–40. An issue with the latter
`arrangement is that such pressure sensors may detect a draw following a user
`blowing or exhaling through the device. Id. at 2:41–46. This causes the
`heating element to be activated without the user drawing on the e-cigarette,
`which provides a non-ideal user experience, wastes battery life and
`vaporizable material, and may cause overheating of vaporizable material.
`Id. at 2:58–65.
`Figures 11–13 are illustrative of a vaporizer according to the ’123
`patent and are reproduced below.
`
`
`
`4
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`IPR2024-00231
`Patent 10,130,123 B2
`
`Figures 11–13 “represent an illustrative assembly sequence for assembling
`the main components” of the ’123 patent’s device. Id. at 13:42–43. Figures
`11–13 show a device body 20 having a cartridge receptacle 21 to receive a
`cartridge (not shown in Figure 12) or a pod 30a. Id. at 28:10–18.
`The ’123 patent depicts further details of the device’s components in
`Figure 25, which is reproduced below.
`
`
`Figure 25 shows a sectional view to illustrate an air path through a vaporizer
`device. Id. at 14:10–12. The ’123 patent describes the use of a pressure
`sensor “that can distinguish positive and negative pressure.” Id. at 42:8–9.
`The ’123 patent describes that pressure sensor 2509 can be a capacitive
`pressure sensor and include a diaphragm. Id. at 42:14–16. The ’123 patent
`also describes other types of pressure sensors that may be used, such as
`microelectromechanical systems (MEMS) pressure sensors. Id. at 41:56–58.
`The ’123 patent further describes that pressure sensor 2509 may be
`included in sealed air path 2520 and that gasket 2502 may form an airtight
`seal so that sensor 2509 sees gauge pressures in air path 2530 when a user
`draws from or blows into the device. Id. at 42:25–32. For instance, an air
`
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`Patent 10,130,123 B2
`
`flow restriction between nominal air inlet 2505 and sensor 2509 creates a
`pressure that the static plate side of the sensor registers. Id. at 42:32–35.
`Conversely, PCB (printed circuit board) side 2511 of sensor 2509 remains at
`an external reference pressure during a draw or blow because PCB side 2511
`is not part of sealed air path 2520. Id. at 42:35–39. As a result, a negative
`pressure in sealed air path 2520 due to a draw pulls the diaphragm toward
`the static plate, which increases the capacitance of the sensor. Id. at 42:39–
`43. A positive pressure in sealed air path 2520 due to a blow pushes the
`diaphragm away from the static plate, which decreases capacitance. Id. at
`42:43–46. These capacitance values may then be read and compared to an
`ambient pressure. Id. at 42:50–52.
`
`Illustrative Claim
`D.
`Petitioner challenges claims 14–16, 18, 27–29, 31, and 32 of the ’123
`patent. Independent claim 14 is representative of the challenged claims and
`is reproduced below with Petitioner’s annotations3:
`[14.A] A vaporizer device body comprising:
`[14.B] a cartridge receptacle configured to insertably
`receive a cartridge containing a vaporizable material;
`[14.C] a pressure sensor configure to output sensor
`readings,
`[14.D] wherein a first side of the pressure sensor is
`exposed to a sealed air flow path and a second side of the pressure
`sensor is exposed to a device air path open to ambient pressure,
`[14.E] the sealed air flow path comprising a channel
`formed between an interior surface of the cartridge receptacle
`and an exterior surface of the cartridge,
`
`
`3 For convenience, we adopt Petitioner’s annotated claim format.
`
`6
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`IPR2024-00231
`Patent 10,130,123 B2
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`
`14, 27, 32
`
`14, 27, 32
`
`14, 27, 32
`
`[14.F] the sealed air flow path passing from an air inlet,
`through the channel and to a heater and an outlet of a mouthpiece
`within the cartridge; and
`[14.G] a gasket around the pressure sensor, the gasket
`configured to seal the device air path from the sealed air flow
`path.
`Ex. 1001, 48:46–60.
`The Asserted Unpatentability Challenges
`E.
`Petitioner asserts that claims 14–16, 18, 27–29, 31, and 32 would have
`been unpatentable based on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`14, 27, 32
`102
`Worm 4
`Worm, knowledge of a person
`of ordinary skill in the art
`Worm, Levitz5
`Thorens,6 Weigensberg,7
`knowledge of a person of
`ordinary skill in the art
`
`103
`
`103
`
`103
`
`
`4 Worm et al., U.S. Patent Pub. No. 2015/0245658 A1, published Sept. 3,
`2015 (Ex. 1004, “Worm”).
`5 Levitz et al., WO 2012/142293 A2, published Oct. 18, 2012 (Ex. 1010,
`“Levitz”).
`6 Thorens et al., U.S. Patent Pub. No. 2014/0318559 A1, published Oct. 30,
`2014 (Ex. 1016, “Thorens”).
`7 Weigensberg et al., U.S. Patent Pub. No. 2015/0020831 A1, published
`Jan. 22, 2015 (Ex. 1006, “Weigensberg”).
`
`7
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`

`IPR2024-00231
`Patent 10,130,123 B2
`
`
`Claim(s) Challenged
`14–16, 18, 27–29, 31, 328
`
`35 U.S.C. §
`103
`
`14–16, 18, 27–29, 31, 32
`
`14–16, 18, 27–29, 31, 32
`14–16, 18, 27–29, 31, 32
`
`103
`
`103
`103
`
`Reference(s)/Basis
`Worm, Lamb9
`Worm, knowledge of a person
`of ordinary skill in the art,
`Lamb
`Worm, Levitz, Lamb
`Thorens, Weigensberg, Lamb
`
`Pet. 5–7. Petitioner also relies on declaration testimony of Joseph C.
`McAlexander III (Ex. 1003). Patent Owner relies on declaration testimony
`of John Collins, Ph.D. (Ex. 2001).
`
`II. ANALYSIS
`
`Principles of Law
`A.
`In an inter partes review, “the petitioner has the burden from the onset
`to show with particularity why the patent it challenges is unpatentable.”
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
`(citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions
`to identify “with particularity . . . the evidence that supports the grounds for
`the challenge to each claim”)). This burden of persuasion never shifts to the
`patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`
`
`8 Petitioner’s summary of grounds omits claim 32 for the final four grounds
`incorporating Lamb. Pet. 5. We understand this omission to be
`unintentional because the substantive discussion of these grounds includes
`claim 32. See id. at 87, 99.
`9 Lamb et al., U.S. Patent Pub. No. 2016/0128389 A1, published May 12,
`2016 (Ex. 1005, “Lamb”).
`
`8
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`
`F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter
`partes review).
`To anticipate, a reference must “show all of the limitations of the
`claims arranged or combined in the same way as recited in the claims.” Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008);
`accord In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`Obviousness is a question of law based on underlying determinations
`of fact. Graham v. John Deere Co., 383 U.S. 1, 17 (1966); Richardson-
`Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 1479 (Fed. Cir. 1997). A claim is
`unpatentable as obvious, under 35 U.S.C. § 103, if the differences between
`the claimed subject matter and the prior art are such that the subject matter,
`as a whole, would have been obvious at the time of the invention to a person
`having ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`406 (2007). The question of obviousness is resolved on the basis of
`underlying factual determinations including (1) the scope and content of the
`prior art; (2) any differences between the claimed subject matter and the
`prior art; (3) the level of ordinary skill in the art; and (4) objective evidence
`of nonobviousness. Graham, 383 U.S. at 17–18. Consideration of the
`Graham factors “helps inform the ultimate obviousness determination.”
`Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1048 (Fed. Cir. 2016) (en
`banc), cert. denied, 138 S. Ct. 420 (2017). Subsumed within the Graham
`factors are the requirements that all claim limitations be found in the prior
`art references and that the skilled artisan would have had a reasonable
`expectation of success in combining the prior art references to achieve the
`claimed invention. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.
`Cir. 2007). “Obviousness does not require absolute predictability of success
`
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`
`. . . all that is required is a reasonable expectation of success.” In re
`O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (citations omitted). But, a
`petitioner cannot satisfy its burden of proving obviousness by employing
`“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`
`Level of Ordinary Skill in the Art
`B.
`We review the grounds of unpatentability in view of the
`understanding of a person of ordinary skill in the art at the time of the
`invention. Graham, 383 U.S. at 17.
`Petitioner contends that a person of ordinary skill in the art “would
`have at least a B.S. degree in Mechanical Engineering, Electrical
`Engineering, Industrial Design, Product Design, or similar field, with at least
`two years of industry experience in one of these fields” and that a person of
`ordinary skill in the art “would have been familiar with electrically powered
`vaporizing articles, their components or the underlying technologies.”
`Pet. 7.
`Patent Owner argues that a person of ordinary skill in the art “at the
`time of the ’123 patent would have had a B.S. in mechanical engineering,
`electrical engineering, or an equivalent degree, and either at least two years
`of experience designing electro-mechanical consumer products or an
`advanced degree in mechanical engineering, electrical engineering, or an
`equivalent field.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 19). Patent Owner also
`states that “Patent Owner’s arguments herein apply regardless of which
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`Patent 10,130,123 B2
`
`definition of a [person of ordinary skill in the art] is adopted.” Id. (citing
`Ex. 2001 ¶¶ 20–21).
`In light of the record before us, and for purposes of this Decision, we
`adopt Petitioner’s proposal regarding the level of ordinary skill in the art.
`Based on our review of the ’123 patent and the prior art of record, we
`determine that the definition offered by Petitioner comports with the
`qualifications a person would have needed to understand the ’123 patent and
`the prior art. We will make any final determination pertaining to the level of
`ordinary skill in the art, however, on the full trial record.
`
`C. Claim Construction
`We construe claim terms according to the standard set forth in Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc);
`37 C.F.R. § 42.100(b). Under Phillips, we give claim terms “their ordinary
`and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and
`customary meaning of a claim term is the meaning that the term would have
`to a person of ordinary skill in the art in question at the time of the
`invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art
`is deemed to read the claim term not only in the context of the particular
`claim in which the disputed term appears, but in the context of the entire
`patent, including the specification.” Id.
`Petitioner contends that the parties proposed a construction for
`“pressure valve,” a limitation appearing in claims 18 and 31, during the ITC
`investigation, but Patent Owner contends that the parties agreed that the term
`is no longer in dispute. Pet. 7 (citing Ex. 1001, 41:58–65); Prelim. Resp. 5.
`Patent Owner contends that the terms of the ’123 patent should be given
`their plain and ordinary meaning. Prelim. Resp. 4–5.
`
`11
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`IPR2024-00231
`Patent 10,130,123 B2
`
`
`For purposes of this Decision, we need not expressly construe any
`claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (holding that “only those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean
`Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the
`context of an inter partes review).
`
`D. Challenge Based on Worm Alone
`Petitioner alleges that claims 14, 27, and 32 of the ’123 patent are
`anticipated by Worm. Pet. 28–49.
`
`1. Overview of Worm (Ex. 1004)
`Worm is titled “Control Body for an Electronic Smoking Article” and
`describes aerosol delivery devices, such as smoking articles and e-cigarettes.
`Ex. 1004, code (54), ¶¶ 1, 24. An example of a sectional view of Worm’s
`smoking article is depicted in Figure 2, reproduced below:
`
`Figure 2 is a sectional view of an electronic smoking article. Id. ¶ 14..
`Figure 2 above depicts smoking article 200, which includes control
`body 202 having control body shell 201, control component 206, and flow
`
`
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`IPR2024-00231
`Patent 10,130,123 B2
`
`sensor 208. Id. ¶ 53. Smoking article 200 further includes cartridge 204
`having cartridge shell 203 with opening 228. Id. Worm describes shell 203
`as enclosing reservoir housing 244 in fluid communication with liquid
`transport element 236 that is “adapted to wick or otherwise transport an
`aerosol precursor composition” to heater 234. Id. Control body 202 may
`further include coupler 224 to engage with base 240 of cartridge 204 and
`facilitate fluid engagement between control body 202 and cartridge 204. Id.
`¶ 56.
`Figure 5 of Worm is reproduced below.
`
`
`
`Figure 5 is a sectional view of the proximal end of a control body. Id. ¶ 17..
`Worm explains that first end 308a of pressure sensor 308 may be in fluid
`communication with pressure reduction space 383 and second end 308b of
`pressure sensor 308 may be in fluid communication with normal pressure
`space 373. Ex. 1004 ¶ 64. As shown in Figure 5, the device may include
`sealing member 380 that “can substantially surround the perimeter of the
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`IPR2024-00231
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`
`pressure sensor 308 and be in a sealing contact therewith” so that second
`end 308b is positioned within normal pressure space 373. Id.
`Worm’s Figure 7 is reproduced below.
`
`
`
`Figure 7 depicts the spatial relationship of an air inlet channel and first end
`of a pressure channel. Id. ¶ 74. Worm states that control body 702 may
`engage with cartridge 704 via coupler 724. Id ¶ 74. Coupler 724 includes
`cavity 725 to receive projection 741 on base 740 of cartridge 704. Id.
`Projection 741 includes air flow entry 741a that seat in cavity 725 proximate
`to air inlet channel 788. Id. Worm describes coupler 724 as further
`including pressure channel 785 having first end 785a that opens within
`cavity 725 and second end 785b opening with control body 702, particularly
`within pressure reduction space 783. Id.
`Worm explains that when air is drawn on the mouthend of
`cartridge 704, the air enters air inlet channel 788 via one or more air inlet
`apertures 789, then flows into air flow entry 741a, and then passes through
`the interior of base 740 and into cartridge 704 toward its mouthend.
`Ex. 1004 ¶ 75. Worm further states that a draw on the device causing air to
`
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`IPR2024-00231
`Patent 10,130,123 B2
`
`enter inlet channel 788 via air inlet aperture 789 also causes a pressure drop
`to be communicated to the cavity 725. Id. ¶ 76. Worm further states that
`“[t]he matched configuration of the cavity 725 and the projection 741
`preferably does not substantially form an air tight connection therebetween”
`and, thus, the pressure drop is communicated to the pressure channel 785
`from the first end 785a to the second end 785b and thus to pressure
`reduction space 783. Id. In turn, the pressure drop is communicated to the
`pressure sensor, which experiences a pressure differential between its first
`end in pressure reduction space 783 and its second end in normal pressure
`space within the shell 701 of the control body 702. Id. ¶¶ 74, 77.
`
`Analysis of Claim 14
`2.
`Petitioner alleges that Worm anticipates claim 14 of the ’123 patent.
`Pet. 28–46. Petitioner contends that Worm’s smoking article 200 including
`control body 202 discloses a “vaporizer device body” as recited in claim 14.
`Pet. 28–29 (citing Ex. 1004, code (54), ¶¶ 5, 10, 26, 56, Fig. 2, claim 1;
`Ex. 1003 ¶¶ 99–102). Petitioner contends that Worm’s control body 202
`having cavity 225 for receiving cartridge 204 discloses “a cartridge
`receptacle configured to insertably receive a cartridge containing a
`vaporizable material” as recited in claim 14. Id. at 30–31 (citing Ex. 1004
`¶¶ 53, 56, 57, 77, 104, 105, Fig. 2; Ex. 1003 ¶¶ 103–106).
`Petitioner argues that Worm’s sensor 208/308 discloses “a pressure
`sensor configured to output sensor readings” as disclosed in claim 14.
`Pet. 31–34 (citing Ex. 1004 ¶¶ 8, 46, 53, 54, 60, Figs. 2, 5; Ex. 1003 ¶¶ 107–
`116; Ex. 1026). Petitioner contends that Worm’s sensor 308 being exposed
`to a normal pressure space 373 (“device air path open to ambient pressure”)
`and a pressure reduction space 383 (“sealed air flow path”) discloses
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`“wherein a first side of the pressure sensor is exposed to a sealed air flow
`path and a second side of the pressure sensor is exposed to a device air path
`open to ambient pressure” as recited in claim 14. Id. at 34–39 (citing
`Ex. 1004 ¶¶ 7, 63, 64, 69, 75–77, Figs. 5, 6B, 7; Ex. 1003 ¶¶ 117–127;
`Ex. 1001, 4:38–42).
`Petitioner asserts that Worm’s pressure reduction space 783 extends
`into a channel formed by the non-airtight connection between cavity 725
`(“interior surface of the cartridge receptacle”) and cartridge projection 741
`(“exterior surface of the cartridge”), which discloses “the sealed air flow
`path comprising a channel formed between an interior surface of the
`cartridge receptacle and an exterior surface of the cartridge” as recited in
`claim 14. Pet. 40–42 (citing Ex. 1004 ¶ 76, Fig. 7; Ex. 1003 ¶¶ 128–132).
`Petitioner alleges that this channel forms an air inlet that extends to
`the heater 234 and opening 228, which discloses “the sealed air flow path
`passing from an air inlet, through the channel and to a heater and an outlet of
`a mouthpiece within the cartridge.” Pet. 42–45 (citing Ex. 1004 ¶¶ 44, 53,
`Figs. 1, 2, 7; Ex. 1003 ¶¶ 133–136; Ex. 1019).
`Petitioner contends that Worm’s sealing member 380 surrounding
`sensor 308 to seal normal pressure space 373 from pressure reduction
`space 383 discloses “a gasket around the pressure sensor, the gasket
`configured to seal the device air path from the sealed air flow path” as
`recited in claim 14. Pet. 45–46 (citing Ex. 1004 ¶¶ 7, 63, 64, Fig. 5;
`Ex. 1003 ¶¶ 137–139).
`Patent Owner, at this time, does not challenge many of Petitioner’s
`allegations regarding the teachings of Worm. See generally Prelim. Resp.
`Instead, Patent Owner first argues that Petitioner has put forth an
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`anticipation ground that improperly relies on a combination of different
`embodiments in Worm. Prelim. Resp. 5–6; Ex. 1004 ¶ 54; compare Pet. 28–
`29 with Pet. 34–35. Second, Patent Owner argues that Worm does not
`disclose the claimed “sealed air flow path passing from an air inlet, through
`the channel and to a heater and an outlet of a mouthpiece” where the channel
`is “formed between an interior surface of the cartridge receptacle and an
`exterior surface of the cartridge.” Id. at 6–7 (citing Ex. 2001 ¶¶ 38–39). We
`address Patent Owner’s arguments below.
`
`whether Petitioner’s allegations support a
`a)
`challenge based on anticipation
`Patent Owner argues that “Petitioner’s Worm-based grounds fail
`because Petitioners rely on a combination of multiple, disparate
`embodiments within Worm without any assertion that such embodiments
`would be obvious to combine.” Prelim. Resp. 5. Specifically, Patent Owner
`asserts that Petitioner relies on different embodiments depicted in different
`figures as its basis that Worm anticipates claim 14. Id. at 5–6.
`To anticipate a claim, a reference “must not only disclose all elements
`of the claim within the four corners of the document, but must also disclose
`those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369.
`The prior art reference “must clearly and unequivocally disclose the claimed
`[invention] or direct those skilled in the art to the [invention] without any
`need for picking, choosing, and combining various disclosures not directly
`related to each other by the teachings of the cited reference.” Id. at 1371
`(citation omitted). “[D]ifferences between the prior art reference and the
`claimed invention, however slight, invoke the question of obviousness, not
`anticipation.” Id.
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`
`
`Although the various embodiments of Worm contain similar features,
`we are not persuaded that Petitioner sufficiently demonstrates that the
`various embodiments disclose a single vaporizer device that anticipates the
`challenged claims. As Patent Owner notes, “for limitations [14.A] and
`[14.B], Petitioners rely on the embodiment of Figure 2 (Pet. 28–29), whereas
`for limitation [14.C], which requires a pressure sensor, Petitioners rely on
`Figure 5” (id. at 32), and “for limitations [14.D], [14.E], and [14.F],
`Petitioners rely on the different embodiment of Figure 7” (id. at 34–45).
`Worm’s description of the figures suggests each of Figures 2, 5, and 7 relate
`to different embodiments of Worm. See Ex. 1004 ¶¶ 14 (“FIG. 2 is a
`sectional view through an electronic smoking article comprising a cartridge
`and a control body according to an example embodiment of the present
`disclosure”), 17 (“FIG. 5 is a detailed view of the proximal end of the
`control body illustrated in FIG. 3 that also illustrates a sealing member”
`(emphasis added)), 20 (FIG. 7 is a partial sectional view of an electronic
`smoking article according a further example embodiment of the present
`disclosure showing a control body connected to a cartridge via the control
`body coupler and the cartridge base” (emphasis added)). Based on Worm’s
`descriptions, it appears that Figure 2 relates to one embodiment, Figures 3–5
`relate to another embodiment, and Figure 7 relates to yet another
`embodiment. See id. ¶¶ 13–20, 53, 59. In addition, Petitioner does not
`argue that a single embodiment of Worm discloses all limitations of
`challenged claim 14. See generally Pet. Nor does Petitioner direct our
`attention to any disclosure in Worm that show how Figures 2, 5, and 7
`interrelate as a single embodiment or present any argument that a person
`skilled in the art “would ‘at once envisage’ the claimed arrangement or
`
`18
`
`

`

`IPR2024-00231
`Patent 10,130,123 B2
`
`combination.” Id.; Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d
`1376, 1381 (Fed. Cir. 2015). Thus, Petitioner fails to show that the cited
`material in Worm discloses the limitations of claim 14 arranged in the same
`way as claimed without resorting to the need to pick and choose from
`disparate disclosures. Net MoneyIN, 545 F.3d 1371 (“[I]t is not enough that
`the prior art reference . . . includes multiple, distinct teachings that the prior
`art might somehow combine to achieve the claimed invention.”).
`Therefore, because the teachings of Worm are found in different,
`disparate embodiments—and Petitioner does not show otherwise—we find
`that the ordinarily skilled artisan would not have viewed Figures 2, 5, and 7
`as the same embodiment. For at least this reason, and based on the
`information set forth in the Petition, Petitioner fails to show a reasonable
`likelihood that claim 14 is anticipated by Worm.
`
`whether Worm teaches an air flow path passing
`b)
`from an air inlet, through the channel and to a heater
`and an outlet of a mouthpiece
`Patent Owner argues that even if Petitioner can combine the teachings
`of Worm, “Worm does not expressly or inherently disclose a ‘sealed air flow
`path passing from an air inlet, through the channel and to a heater and an
`outlet of a mouthpiece’ where the channel is ‘formed between an interior
`surface of the cartridge receptacle and an exterior surface of the cartridge.’”
`Prelim. Resp. 6. As noted above, Petitioner asserts Worm discloses that “the
`sealed air flow path includes the channel formed by the gap between cavity
`725 and cartridge projection 741.” Pet. 40 (citing Ex. 1004, 76, Fig. 5;
`Ex. 1003 ¶¶ 129–130; id. at 41–42 (citing Ex. 1003 ¶¶ 131–132). Patent
`Owner argues that “Worm does not disclose any such ‘air flow path’” and
`instead
`
`19
`
`

`

`IPR2024-00231
`Patent 10,130,123 B2
`
`
`discloses that when air is drawn from the mouthpiece, it “causes
`air to enter the air inlet channel 788 . . . through one or more air
`inlet apertures 789 and flow into the air flow entry 741a . . . from
`which the drawn air passes through the interior of the base 740
`[which is in cartridge 704] and into the cartridge 704,” after
`which the airflow “proceed[s] . . . toward the mouthend of the
`cartridge.”
`Id. at 7 (citing Ex. 1004 ¶ 75, Fig. 6B; Ex. 2001 ¶¶ 40–43).
`Patent Owner illustrates the airflow path in Worm in Patent Owner’s
`annotated version of Figure 7 reproduced below.
`
`
`
`Patent Owner’s Annotated Figure 7 labels air inlet aperture 789 in red and
`adds a teal-colored arrow through the center of cartridge 704 to illustrate the
`air flow path. Id. at 8 (citing Ex. 1004 ¶¶ 74–75, Fig.7; Ex. 2001 ¶¶ 41–43).
`Patent Owner argues that there would not be a uniform gap for airflow
`between body 702 and cartridge 704, as asserted by Petitioner, because “this
`space is where the electrical contacts in the cartomizer and body must touch
`each other.” Id. at 9–10 (citing Ex. 1004 ¶ 58, Fig. 6B; Ex. 2001 ¶¶ 44–45).
`Patent Owner argues that no additional air inlets beyond one or more air
`
`20
`
`

`

`IPR2024-00231
`Patent 10,130,123 B2
`
`inlet apertures 789 are disclosed in Worm. Id. at 10. Patent Owner further
`argues that a person of ordinary skill in the art would understand that airflow
`travels through the inlets and passages as already described in Worm
`(namely, air inlet aperture 789) and would not understand the structures
`identified by Petitioner are for airflow. Id. at 13. Patent Owner’s declarant,
`Dr. Collins, explains that
`Worm does not disclose anywhere that such additional air inlets
`or passage exist, and the fluid mechanics of such a passageway,
`winding up and down along the protrusions forming the ‘cavity’
`in Worm, would cause a reduction in airflow at every turn, such
`that the primary air inlet passageway, already taught in Worm,
`would control.
`Ex. 2001 ¶ 47.
`On this record, Patent Owner’s arguments have merit. Patent Owner’s
`argument that airflow through Worm’s device would flow through the
`primary air inlet passageway and not through the channel identified by
`Petitioner appear persuasive on this record. As such, we have doubt that
`Petitioner would ultimately prevail on its assertion that Worm anticipates
`claim 14.
`
`Remaining Claims 27 and 32
`3.
`Petitioner also asserts that Worm anticipates claims 27 and 32.
`Pet. 46–49. Claim 32 depends on independent claim 27, which recites
`limitations substantially similar those discussed above for claim 14 (see
`Ex. 1001, 49:62–67), and Petitioner relies on the same analysis to support its
`contentions regarding claim 27 (see Pet. 46–48). Petitioner does not present
`any arguments or evidence with respect to claims 27 and 32 that would
`remedy the defects detailed above with respect to independent claim 14.
`
`21
`
`

`

`IPR2024-00231
`Patent 10,130,123 B2
`
`Accordingly, we similarly have doubt that Petitioner would ultimately
`prevail on its assertion Worm anticipates claims 27 and 32.
`
`Challenge Based on Worm and Knowledge of a Person of
`E.
`Ordinary Skill in the Art
`Petitioner alleges that claims 14, 27, and 32 of the ’123 patent are
`rendered obvious by Worm and the knowledge of a person of ordinary skill
`in the art. Pet. 5, 50. Petitioner relies, generally, on the same analysis and
`evidence presented above in connection with its anticipation challenge based
`on Worm in Ground 1 to support its contentions here. Id. at 50. However,
`Petitioner alleges that even if Worm does not disclose limitations [14.E],
`[14.F], [27.G], and [27.H], the combination of Worm in view of the
`knowledge of a person of ordinary skill in the art would have rendered
`obvious those limitations. Pet. 50–52.
`
`Analysis of Claim 14
`1.
`Petitioner argues that it would have been obvious to a person of
`ordinary skill in the art “that the channel formed between the cartridge
`receptable and cartridge of Worm permits air to enter the cavity.” Pet. 50
`(citing Ex. 1003 ¶ 156). Petitioner argues that because Worm disclo

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