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.
`
`IPR2024-00267
`Patent 11,134,722 B2
`
`
`
`
`
`
`
`
`
`Before KRISTINA M. KALAN, KIMBERLY MCGRAW, and
`AVELYN M. ROSS, Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
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`IPR2024-00267
`Patent 11,134,722 B2
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`
`INTRODUCTION
`I.
`NJOY, LLC and NJOY Holdings, Inc. (collectively, “Petitioner”)
`filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of claims
`1, 5, 7, and 9–21 of U.S. Patent No. 11,134,722 B2 (Ex. 1001, “the ’722
`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 Reply (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; 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 not established a reasonable likelihood of
`prevailing with respect to at least one challenged claim. Accordingly, we
`deny the Petition and do not institute an inter partes review.
`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.
`
`
`1 In this Decision, we refer to the redacted versions of documents and
`exhibits.
`
`2
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`IPR2024-00267
`Patent 11,134,722 B2
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`
`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) (“the Section 337
`Investigation”) 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 B2), IPR2024-00231 (U.S. Patent No. 10,130,123 B2),
`IPR2024-00268 (U.S. Patent No. 11,606,981 B2), IPR2024-00536 (U.S.
`Patent No. 11,606,981 B2), and IPR2024-00567 (U.S. Patent No. RE49,114
`E) as related matters. Paper 6, 2.
`The ’722 patent
`C.
`The ’722 patent, titled “Vaporizer,” issued on October 5, 2021.
`Ex. 1001, codes (45), (54). The ’722 patent describes vaporizers, which may
`also be referred to as electronic cigarettes. Id. at 1:16–17.
`Figure 1 is illustrative and reproduced below.
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`Patent 11,134,722 B2
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`
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`Figure 1 is a front sectional view of an electronic cigarette. Id. at 2:15–22.
`Figure 1 shows electronic cigarette 10 having a cartomizer 200 to hold
`varporizable substance 300. Id. at 4:46–50. Electronic cigarette 10 includes
`battery housing segment 102 and second cartomizer receiving segment 104
`that may commonly share outer shell 106. Id. at 4:50–57, 4:62–63. The
`’722 patent further describes cartomizer 200 that may be insertable into
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`cartomizer chamber 108. Id. at 4:65–66. Battery 110 may provide electrical
`power and may be a disposable type or a rechargeable type. Id. at 5:4–10.
`The ’722 patent includes printed circuit board (PCB) 112 to control
`one or more functions of electronic cigarette 10. Id. at 5:15–17. According
`to the ’722 patent, electrical connector 120 may provide an electrical
`connection between PCB 112 and cartomizer 200, such as via a plurality of
`pogo pins 120. Id. at 6:38–41. The ’722 patent states that “[e]ach pogo
`pin 122 may be connected to PCB 112, which may control current outputted
`to pogo pins 122,” such as by intermittently activating current flow to
`connector 120, which regulates the activation of a heating element in
`cartomizer 200. Id. at 6:49–54. In addition, chamber 108 may include at
`least one magnet 124 to secure and align cartomizer 200 within cartomizer
`chamber 108. Id. at 7:26–30. Cartomizer 200 may in turn include
`magnet 202 of opposing polarity. Id. at 7:30–34.
`Electronic cigarette 10 further includes heating element 214 and
`wicking element 216 to vaporize fluid 300A. Id. at 8:47–48. Once fluid
`300A has been vaporized, it may be inhaled through mouthpiece 220
`provided in body 208 at mouthpiece end 212. Id. at 8:53–56. For instance,
`the vaporized fluid may travel through inhalation tube 222. Id. at 8:56–58.
`Figure 8 of the ’722 patent is reproduced below.
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`
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`Figure 8 depicts a front sectional view of an electronic cigarette. Id. at 2:60–
`65. Figure 8 shows an embodiment of electronic cigarette 10 having battery
`portion 100A to receive cartomizer 200. Id. at 13:1–3. Electronic cigarette
`10 may include magnets 124/202 to retain cartomizer 200. Id. at 13:10–11.
`Figure 9, which is reproduced below, depicts electronic cigarette 10
`with battery charger 400A. Id. at 13:15–18.
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`
`
`Figure 9 shows an electronic cigarette with a charger attached. Id. at 2:66–
`67. Battery charger 400A has charging contacts 402 that may be attached or
`connected to charging contacts 160 on outer shell 106. Id. at 13:15–17.
`The ’722 patent states that “[i]n one embodiment, charging contacts 160 are
`positioned at or proximate to battery end 102A.” Id. at 13:18–19.
`According to the ’722 patent, one or more magnets 162 may be provided to
`secure charging contacts 160, 402 together. Id. at 13:21–24.
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`
`Illustrative Claim
`D.
`Petitioner challenges claims 1, 5, 7, and 9–21 of the ’722 patent.
`Independent claims 1, 10, and 15 are the independent claims challenged.
`Claim 1 is reproduced below as the illustrative claim.2
`[1.A] A vaporizer comprising:
`[1.B] a battery portion comprising a battery housing
`segment and a cartomizer receiving segment,
`[1.C] the cartomizer receiving segment defining a
`chamber having an insertion end distal from the battery housing
`segment and a base end proximate to the battery housing
`segment,
`[1.D] the battery portion further comprising a plurality of
`charger electrical contacts to provide electrical charge to a
`battery housed in the battery housing segment, the charger
`electrical contacts disposed at a first end of the battery portion
`opposite the insertion end of the chamber of the cartomizer
`receiving segment,
`[1.E] wherein an outer shell is commonly shared by the
`battery housing segment and the cartomizer receiving segment;
`and
`
`[1.F] a cartomizer insertable into the chamber at the
`insertion end, the cartomizer comprising:
`[1.G] a body including a structure configured to
`hold a vaporizable liquid;
`[1.H] a wicking element provided within the body
`and at least partially in contact with the vaporizable liquid;
`and
`
`[1.I] a heating element provided within the body in
`contact with the wicking element and operable to heat the
`vaporizable liquid,
`
`
`2 For convenience, we adopt Petitioner’s annotated claim format.
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`
`References/Basis
`
`103
`
`Pan, 4 Levin5
`
`[1.J] wherein the wicking element is configured to
`deliver the vaporizable liquid to the heating element, and
`[1.K] wherein the entire heating element is disposed
`between the insertion end of the chamber and the base end
`of the chamber when the cartomizer is inserted into the
`chamber such that the outer shell protects the heating
`element.
`Ex. 1001, 18:33–61.
`The Asserted Unpatentability Challenges
`E.
`Petitioner asserts that claims 1, 5, 7, and 9–21 would have been
`unpatentable based on the following grounds:
`Claims Challenged
`35 U.S.C. §3
`1, 5, 7, 9–13, 15, 16,
`18–21
`14, 17
`1, 5, 7, 9–13, 15, 16,
`18–21
`
`103
`
`103
`
`Pan, Levin, Tucker6
`Thorens788,7 Thorens231,8
`Levin
`
`14, 17
`
`103
`
`Thorens788, Thorens231,
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013.
`Because applications from which the ’722 patent claims priority were filed
`after this date, the AIA version of § 103 applies.
`4 Pan, U.S. Patent No. 8,205,622 B2, issued June 26, 2012 (Ex. 1024,
`“Pan”).
`5 Levin et al., U.S. Patent No. 9,427,022 B2, issued Aug. 30, 2016 (Ex. 1003
`“Levin”).
`6 Tucker et al., U.S. Patent Pub. No. 2013/0192623 A1, published Aug. 1,
`2013 (Ex. 1034, “Tucker”).
`7 Thorens et al., WO 2011/160788 A1, published Dec. 29, 2011 (Ex. 1004,
`“Thorens788”).
`8 Thorens et al., U.S. Patent No. 8,794,231 B2, issued Aug. 5, 2014
`(Ex. 1002, “Thorens231”).
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`Patent 11,134,722 B2
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`
`Claims Challenged
`
`35 U.S.C. §3
`
`References/Basis
`Levin, Tucker
`
`
`Pet. 3. Petitioner also relies on declaration testimony of Dr. Jason Janet
`(Ex. 1005). Patent Owner relies on declaration testimony of Dr. John
`Collins (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
`F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter
`partes review).
`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 invention and the prior art are such that the subject matter, as a
`whole, would have been obvious before the effective filing date of the
`invention to a person having ordinary skill in the art to which the claimed
`invention pertains. 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
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`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). 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 . . . 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
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`vaporizing articles, their components or the underlying technologies.”
`Pet. 8.
`Patent Owner argues that a person of ordinary skill in the art “at the
`time of the invention 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. 12 (citing Ex. 2001 ¶¶ 12–22). Patent
`Owner also states that “no issue relevant to this Preliminary Response turns
`on the level of ordinary skill in the art.” Id. at 13 (citing Ex. 2001 ¶ 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 ’722 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 ’722 patent and
`the prior art. However, our decision would not change if we applied Patent
`Owner’s definition.
`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
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`claim in which the disputed term appears, but in the context of the entire
`patent, including the specification.” Id.
`Petitioner proposes construction of three terms: “wicking element,”
`“heating element,” and “window.” Pet. 8–10. Petitioner states that “[s]olely
`for purposes of this Petition, Petitioner has adopted Patent Owner’s
`construction[s]” for the above terms in the related Section 337 Investigation.
`Id. (citing Ex. 1049). Specifically, Petitioner proposes that “wicking
`element” “means ‘any material through which liquid may be drawn via
`capillary action’” Pet. 8 (citing Ex. 1049, 3). Petitioner also contends that
`“heating element” means a “conductive material shaped into a wire, coil, or
`flat ribbon that generates heat in response to current.” Pet. 9 (citing
`Ex. 1049, 3). 9 And lastly, Petitioner asserts that “the term ‘window’ should
`be construed as an ‘opening or slit on or proximate to the shell through
`which the cartomizer is viewed.’” Pet. 10 (citing Ex. 1049, 4).
`Patent Owner states that it agrees with Petitioner’s proposed
`constructions. Prelim. Resp. 13 (citing Ex. 2001 ¶¶ 72–75).
`None of the constructions proffered by Petitioner is dispositive of the
`issue of whether to institute inter partes review. We determine that it is not
`necessary to provide an express construction for any term. 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. Matal, 868 F.3d 1013, 1017
`
`
`9 Petitioner asserts that in the Section 337 Investigation, “wicking element”
`and “heating element” are subject to 35 U.S.C. § 112, sixth paragraph. Id.
`But, “Petitioner has not adopted this construction for this Petition.” Id. at 9.
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`(Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes
`review).
`D. Challenges Based on Pan and Levin (and Tucker)
`Petitioner alleges that the combination of Pan and Levin, would have
`rendered obvious claims 1, 5, 7, 9–13, 15–16, and 18–21 of the ’722 patent.
`Pet. 20–56. Petitioner also alleges that the combination of Pan, Levin, and
`Tucker would have rendered claims 14 and 17 obvious. Id. at 56–62.
`Petitioner relies on the testimony of Dr. Janet to support its arguments. See
`id.
`
`1. Overview of the Prior Art
`Pan (Ex. 1024)
`a)
`Pan is titled “Electronic Cigarette.” Ex. 1024, code (54). Pan’s
`Figure 3 is reproduced below.
`
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`Figure 3 is a sectional view of an integrated electronic atomizer. Id.
`at 3:60– 61. Figure 3 depicts an integrated electronic atomizer having
`atomizer tube 263 and a second electric connector of a plug-socket type that
`includes DC plug 21 located on plug seat 71. Id. at 4:63–5:1. The atomizer
`further includes leak-proof piece 23, seal washer 251, supporting piece 268,
`heat equalizer twined with electric heating wire 265, liquid container 261
`with liquid-storing media 264, and an air-puffing hole at one end of atomizer
`tube 263. Id. at 5:1–5.
`Pan’s Figure 5 is reproduced below.
`
`
`Figure 5 is a sectional view of an electronic inhaler. Id. at 3:64–65.
`Figure 5 shows an electronic inhaler that includes first electric connector 17
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`of a DC plug-socket type located on DC socket seat 28. Id. at 5:29–30,
`5:35–36. The inhaler further includes inhaler tube 10, cigarette cap 13
`having small holes for air inflow, electric power source 5, airflow sensor 6,
`seal piece 25, and integrated circuit board with a CPU processor 14. Id.
`at 5:30–34. Pan states that electric power source 5 connects to circuit
`board 14, which in turn connects to first electric connector 17 and airflow
`sensor 6. Id. at 5:37–39.
`Pan’s Figure 7 is reproduced below.
`
`
`
`
`Figure 7 depicts an electronic cigarette. Id. at 4:1–2. Pan’s Figure 7 shows
`an electronic cigarette when its electronic inhaler (e.g., the embodiment
`shown in Figure 5) and an electronic atomizer (e.g., the embodiment shown
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`in Figure 3) are connected via their respective electric connectors of the DC
`plug-socket type. Id. at 6:1–3. Pan states that such a connection is made via
`first electronic socket 28 of the inhaler and second electric connector plug 21
`of the atomizer. Id. at 6:6–9.
`Levin (Ex. 1003)
`b)
`Levin is titled “Electronic Vaporizing Device and Methods for Use.”
`Ex. 1003, code (54). Levin’s Figure 2A is reproduced below.
`
`
`
`Levin’s Figure 2A illustrates a cross-sectional view of an electronic
`vaporizing device. Id. at 4:48–50. Levin’s electronic vaporizing device
`includes distal portion 2 having distal end cap 38 covering distal light
`source 36. Id. at 23:16–22. The device further includes power source 30,
`light source 36, and heater 50. Id. at 23:22–23.
`Levin states that such a device may include a power source that uses
`one or more batteries, such as rechargeable and/or replaceable batteries. Id.
`at 8:66–9:1. According to Levin, the rechargeable batteries may “be
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`recharged by attaching the device to a power source with a power cord, such
`as a connector pin or USB device.” Id. at 9:2–6. Levin’s Figure 6A depicts
`such an embodiment and is reproduced below.
`
`
`
`Figure 6A shows a perspective view of a vaporizing device. Id. at 5:7–11.
`According to Levin, the distal end of the device may include “recharging
`port 31, such as in a USB connector 31 or a pin receptacle” to facilitate
`recharging of power source 30. Id. at 23:58–62.
`Analysis of Claim 1
`2.
`Petitioner asserts that claim 1 would have been obvious over the
`combination of Pan and Levin. Pet. 20. Petitioner asserts that Pan’s
`electronic vapor cigarette including an electronic inhaler and an electronic
`atomizer discloses a “vaporizer” as recited in claim 1. Id. at 30–31 (citing
`Ex. 1005 ¶¶ 113–114; Ex. 1024, 2:25–28, 2:30–35, Fig. 7). Petitioner
`contends that Pan’s electronic inhaler including a portion for a battery and a
`portion for receiving an electronic atomizer discloses “a battery portion
`comprising a battery housing segment and a cartomizer receiving segment”
`as recited in claim 1. Id. at 31–33 (citing Ex. 1005 ¶ 117; Ex. 1024, 2:30–
`35, 3:6–9, 4:63–5:7, 5:20–49, 6:1–28, Figs. 3, 5, 7). Petitioner argues that
`Pan’s portion for receiving the electronic atomizer discloses “the cartomizer
`receiving segment defining a chamber having an insertion end distal from
`the battery housing segment and a base end proximate to the battery housing
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`segment” as recited in claim 1. Id. at 34 (citing Ex. 1005 ¶¶ 118–119;
`Ex. 1024, Figs. 5, 7).
`According to Petitioner, Pan “does not disclose charger electrical
`contacts” but “Levin discloses an electronic vaporizer device with a micro-
`USB charging port that has a plurality of electrical contacts to provide
`electrical charge to a battery in a housing, and which is disposed at a distal
`end of the device.” Id. at 35. Petitioner asserts that incorporating Levin’s
`charging port into the bottom of Pan’s electronic inhaler teaches “the battery
`portion further comprising a plurality of charger electrical contacts to
`provide electrical charge to a battery housed in the battery housing segment,
`the charger electrical contacts disposed at a first end of the battery portion
`opposite the insertion end of the chamber of the cartomizer receiving
`segment” as recited in claim 1. Id.. at 35–36 (citing Ex. 1005 ¶¶ 120–122;
`Ex. 1024, 2:30–35, 5:29–49, Fig. 5). Petitioner asserts that Pan discloses
`rechargeable batteries, Levin discloses a battery charging port, and the
`skilled artisan would have had reason to combine the teachings of Pan and
`Levin to enable a user to recharge the battery without having to remove the
`battery from the device and provide benefits such as the convenience of
`being able to recharge the batteries at any location. Id. at 20–25 (citing
`Ex. 1003, 1:14–15, 8:66–9:6, 14:11–26, 23:58–62, Fig. 14A; Ex. 1005
`¶¶ 97–105; Ex. 1011, 10, 26–27; Ex. 1024, 2:32–35, 5:29–49; Ex. 1026,
`6:26–32; Ex. 1027, 6:51–55, Fig. 1; Ex. 1028, Fig. 2; Ex. 1041, 6:23–32;
`Ex. 1042, 5:57–60).
`Petitioner argues that Pan’s electronic inhaler tube and cigarette cap
`form a shell that contains the portion for the battery and the portion for
`receiving the electronic atomizer, which discloses “wherein an outer shell is
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`commonly shared by the battery housing segment and the cartomizer
`receiving segment” as recited in claim 1. Id. at 36–37 (citing Ex. 1005
`¶¶ 123–124; Ex. 1024, 5:21–24, Figs. 5, 7).
`Petitioner alleges that Pan’s cartomizer being insertable into the
`electronic inhaler’s portion for receiving the electronic atomizer discloses “a
`cartomizer insertable into the chamber at the insertion end” as recited in
`claim 1. Pet. 37–39 (citing Ex. 1005 ¶¶ 125–126; Ex. 1024, 2:48–50, 6:4–9,
`Figs. 3, 5, 7). Petitioner contends that Pan’s cartomizer including an
`electronic atomizer housing that includes a liquid container for being filled
`with liquid discloses “a body including a structure configured to hold a
`vaporizable liquid” as recited in claim 1. Id. at 39–40 (citing Ex. 1005
`¶¶ 127–128; Ex. 1024, 2:32–35, 4:15–18, 4:40–42, Fig. 3).
`Petitioner argues that Pan’s electronic atomizer including a heat
`equalizer made of fiber that absorbs and transports liquid by capillary action
`discloses “a wicking element provided within the body and at least partially
`in contact with the vaporizable liquid” as recited in claim 1. Pet. 40–41
`(citing Ex. 1005 ¶¶ 129–132; Ex. 1024, 2:57–60, 4:53–55, 5:2–3, 8:43–45,
`Fig. 3). Petitioner contends that Pan’s electronic atomizer including an
`electric heating wire that is twined with the heat equalizer and produces heat
`for the liquid discloses “a heating element provided within the body in
`contact with the wicking element and operable to heat the vaporizable
`liquid” as recited in claim 1. Id. at 41–42 (citing Ex. 1005 ¶¶ 133–135;
`Ex. 1024, 4:55–62, 5:2–3, 5:62–67, Fig. 3). Petitioner also contends that
`Pan’s heat equalizer absorbing the liquid to allow the heating wire to heat
`the liquid discloses “wherein the wicking element is configured to deliver
`the vaporizable liquid to the heating element” as recited in claim 1. Id. at 42
`
`20
`
`

`

`IPR2024-00267
`Patent 11,134,722 B2
`
`(citing Ex. 1005 ¶¶ 136–137; Ex. 1024, 2:57–60, 8:43–45, Fig. 3).
`Petitioner argues that Pan’s heating wire is disposed in the electronic inhaler
`and protected by the inhaler tube, which discloses “wherein the entire
`heating element is disposed between the insertion end of the chamber and
`the base end of the chamber when the cartomizer is inserted into the
`chamber such that the outer shell protects the heating element” as recited in
`claim 1. Id. at 43–44 (citing Ex. 1005 ¶¶ 138–139; Ex. 1024, Fig. 7).
`Patent Owner, at this time, does not challenge many of Petitioner’s
`allegations regarding the teachings of Pan and Levin. See generally Prelim.
`Resp. Patent Owner argues, however, that Petitioner has not shown (1) that
`Pan discloses a “wicking element” (id. at 14), (2) that Pan’s “wicking
`element is configured to deliver the vaporizable liquid to the heating
`element” (id. at 16), and (3) that a motivation to combine or a reasonable
`expectation of success exists in the combination of Pan and Levin (id. at 18).
`Because we agree that Petitioner has failed to show sufficiently that the
`references teach or suggest a “wicking element . . . configured to deliver the
`vaporizable liquid to the heating element” and has failed to establish that a
`reason to combine with a reasonable expectation of success exists, our
`discussion below focuses on those issues.
`whether Pan discloses that the wicking element is
`a)
`configured to deliver the vaporizable liquid to the
`heating element
`Patent Owner explains that “Petitioner identifies Pan’s heat equalizer
`269 as the claimed ‘wicking element’ and Pan’s heating wire 265 as the
`claimed ‘heating element.’” Prelim. Resp. 16 (citing Pet. 40–42). Patent
`Owner asserts that “there is no disclosure that Pan’s heating wire 265
`vaporizes any liquid, and consequently also no disclosure that Pan’s heat
`
`21
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`

`

`IPR2024-00267
`Patent 11,134,722 B2
`
`equalizer 269 ‘deliver[s] the vaporizable liquid to the heating element
`[i.e., heating wire 265]’ for vaporization.” Id. Patent Owner argues that
`“[t]o the contrary, Pan states that heating wire 265 provides heat to heat
`equalizer 269, and in turn, the heat equalizer ‘ensures that the heat generated
`by the electric wire is uniform.’” Id. at 16–17 (citing Ex. 1024, 6:55–56).
`According to Patent Owner, “Pan explicitly states that it is heat equalizer
`269, not heating wire 269, that vaporizes any liquid.” Id. at 17 (citing
`Ex. 1024, 2:57–62; Ex. 2001 ¶¶ 84–87). Thus, Patent Owner asserts that
`vaporizable liquid is not delivered to heating wire 265 (i.e., the claimed
`“heating element”).
`On this record, we agree with Patent Owner. Although Pan’s heat
`equalizer absorbs liquid and the heat equalizer is coupled to the electric wire
`(Ex. 1024, 2:57–60, 5:2–3, 8:43–45), we question whether the absorption of
`liquid by the heat equalizer discloses the delivery of the liquid to the heating
`wire, i.e., the heating element. Pan clearly describes the relationship
`between the heat equalizer and the heating wire as follows:
`This electric current preferably flows through the electric heat
`wire inside the atomizer tube, which then heats up the heat
`equalizer with absorbed liquid from the liquid-container. The
`heated equalizer converts the liquid into a form of vapor mist,
`which is finally drawn into the mouth of the user.
`Ex. 1024, 2:57–62 (emphasis added). We acknowledge Petitioner’s
`position, and Dr. Janet’s testimony, that Pan discloses that “[t]he heat
`equalizer 269 absorbs liquid from the liquid container and is twined with the
`heating wire 265 to allow the heating wire to vaporize the liquid.” Pet. 42
`(citing Ex. 1024, 2:57–60, 8:43–45); Ex. 1005 ¶¶ 136–137. However,
`column 2 of Pan states that the heating wire heats the heat equalizer that
`contains the absorbed liquid. Ex. 1024, 2:57–60. In short, nowhere does
`
`22
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`

`

`IPR2024-00267
`Patent 11,134,722 B2
`
`Pan teach that heat equalizer 269 delivers the vaporizable material to heating
`wire 265 for vaporization.
`Thus, Petitioner has not demonstrated that Pan teaches or suggests
`“wicking element . . . configured to deliver the vaporizable liquid to the
`heating element.” Accordingly, we determine that Petitioner has not
`demonstrated a reasonable likelihood that claim 1 would have been obvious
`over the combination of Pan and Levin.
`whether the combination of Pan and Levin renders
`b)
`obvious the electrical contacts at the end of the battery
`portion opposite the insertion end of the chamber of the
`cartomizer
`Patent Owner submits that neither Pan nor the combination of Pan and
`Levin render obvious “the battery portion further comprising a plurality of
`charger electrical contacts to provide electrical charge to a battery housed in
`the battery housing segment, the charger electrical contacts disposed at a
`first end of the battery portion opposite the insertion end of the chamber of
`the cartomizer receiving segment,” as recited in claim 1. Prelim. Resp. 18.
`Specifically, Patent Owner argues that the skilled artisan would not have had
`reason to combine Pan and Levin (id. at 19) and further that the skilled
`artisan would not have had a reasonable expectation of success in the
`combination (id. at 26).
`Patent Owner argues that Petitioner’s reasons to modify Pan’s device
`to include Levin’s charging port are “conclusory and do not withstand
`scrutiny.” Id. at 19. According to Patent Owner, Petitioner’s reasons to
`combine are not discussed in Pan or Levin as purported advantages. Id.
`at 20, 22. In addition, Patent Owner argues a modification to include a
`charging port is unnecessary because (1) existing batteries can simply be
`
`23
`
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`

`IPR2024-00267
`Patent 11,134,722 B2
`
`swapped for new batteries, (2) the additional charging port would disturb
`airflow and render the device unusable while charging, (3) a charging port
`would increase the cost and manufacturing difficulty, and (4) a charging port
`would add complexities to an otherwise simple device. Id. at 19–24 (citing
`Ex. 1024, 1:55–57, 2:4–7, 2:16–18, 5:29–36; Ex. 2001 ¶¶ 95–102). Patent
`Owner also argues that “Pan already teaches a connection for a DC circuit
`located at the middle of its assembled device” and a person of ordinary skill
`in the art would be motivated to “use the existing contacts” as opposed to
`adding contacts at one end of the device. Id. at 23 (citing Ex. 1024, 5:29–36;
`Ex. 2001 ¶¶ 99–101).
`Patent Owner also argues that Petitioner has not established that an
`ordinarily skilled artisan would have had a reasonable expectation of success
`in making the combination because incorporating Levin’s charging port into
`the bottom of Pan’s device requires modifying Pan’s cigarette cap that is
`designed for air intake rather than battery recharging. Prelim. Resp. 24–25
`(citing Ex. 1024, 5:31–32; Ex. 2001 ¶ 103). According to Patent Owner,
`Petitioner’s declarant does not remedy the deficiencies in the Petition. Id.
`at 25–26 (citing Ex. 2001 ¶ 101). Patent Owner argues that an ordinarily
`skilled artisan would not have had a reasonable expectation of success in
`modifying Pan’s device because the modifica

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