Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________
`
`
`GoFire, Inc.,
`Petitioner
`
`v.
`
`Canopy Growth Corporation,
`Patent Owner
`
`______________________________
`Case: PGR2020-00044
`
`U.S. Patent No. 10,327,479 B2
`______________________________
`
`PETITION FOR POST-GRANT REVIEW
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted electronically via the Patent Trial and Appeal Board End to End System
`
`
`
`
`
`
`
`
`51463938.3
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`TABLE OF CONTENTS
`
`
`
`Page
`Introduction ...................................................................................................... 1
`I.
`II. Mandatory Notices (37 C.F.R. § 42.8) ............................................................ 3
`A. Real Parties-In-Interest .......................................................................... 3
`B. Related Matters ...................................................................................... 3
`C. Notice of Lead and Backup Counsel; Service Information ................... 3
`III. Grounds for Standing (37 C.F.R. § 42.204(a)) ................................................ 4
`IV. Payment of Fees (37 C.F.R. § 42.203) ............................................................ 5
`V.
`Identification of Challenged Claims and Specific Statutory Grounds (37
`C.F.R. § 42.204(b)(1)-(2)) ............................................................................... 5
`VI. Effective Filing Date of the Challenged Claims and Eligibility for Post-Grant
`Review ............................................................................................................. 8
`VII. Background and Summary of the ‘479 Patent ................................................. 8
`A. Summary of the ‘479 Patent’s Specification ......................................... 9
`B. Summary of Prosecution History ........................................................ 13
`VIII. Claim Construction and Level of Skill in the Art .......................................... 26
`A. Proposed Claim Constructions ............................................................ 27
`B. Level of Skill in the Art ....................................................................... 28
`IX. Grounds of Unpatentability Regarding 35 U.S.C. § 102 ............................... 29
`A. Ground 1: Claims 1-6 are invalid under 35 U.S.C. § 102 as being
`unpatentable over Woodbine. .............................................................. 29
`B. Ground 2: Claims 7-9, 13, 14, 17, 18, 19, 20, and 21 are invalid under
`35 U.S.C. § 102 as being unpatentable over Woodbine. ..................... 43
`X. Grounds of Unpatentability Regarding 35 U.S.C. § 103 ............................... 57
`A. Ground 3: Claims 1-6 and 7-9, 13, 14, 17, and 19-21 are invalid under
`35 U.S.C. § 103 as being unpatentable over Woodbine in view of
`Hawes. ................................................................................................. 58
`B. Ground 4: Claims 1-6 and 7-9, 13, 14, 17, and 19-21 are invalid under
`35 U.S.C. § 103 as being unpatentable over Woodbine in view of Frija.
` ............................................................................................................. 63
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`Petition for Post-Grant Review of
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`C. Ground 5: Claims 1-6 and 7-9, 13, 14, 17, and 19-21 are invalid under
`35 U.S.C. § 103 as being unpatentable over Woodbine in view of
`Conley. ................................................................................................. 67
`D. Ground 6: Claims 1-6 and 7-21 are invalid under 35 U.S.C. § 103 as
`being unpatentable over Woodbine in view of Bowen. ....................... 69
`E. Ground 7: Claims 8, 10, 11, 12, 13, 15, and 16 are invalid under 35
`U.S.C. § 103 as being unpatentable over Woodbine in the same
`combinations with LaMothe, Duncan, Bleloch, Kimmel, and Frija as
`noted by the Examiner in the Final Office Action of September 4,
`2018. .................................................................................................... 74
`XI. Conclusion ..................................................................................................... 77
`
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`Hewlett-Packard Co. v. MPHJ Tech. Invs., LLC, 2013 WL 8563946
`(P.T.A.B. Nov. 21, 2013) .................................................................................... 38
`Medline Indus., Inc. v. Paul Hartmann AG, 2013 WL 8595518 (P.T.A.B.
`Jun. 20, 2013) ...................................................................................................... 38
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005 ........................ 27, 38, 39, 40
`SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870 (Fed. Cir. 2004) .......... 38
`Zynga, Inc. v. Personalized Media Commc’ns, LLC, 2013 WL 8595512
`(P.T.A.B. Jul. 25, 2013) ...................................................................................... 38
`Statutes
`35 U.S.C. § 102 ................................................................................................ passim
`35 U.S.C. § 103 ................................................................................................ passim
`35 U.S.C. § 282(b) .................................................................................................. 27
`35 U.S.C. § 321 ..................................................................................................... 1, 4
`37 C.F.R. § 42.200 .......................................................................................... 1, 4, 26
`37 C.F.R. § 42.203 .................................................................................................... 4
`37 C.F.R. § 42.6 ........................................................................................................ 5
`C.F.R. § 42.15 ........................................................................................................... 4
`Other Authorities
`AIA § 3(n)(1) ............................................................................................................ 7
`AIA § 6(f)(2)(A) ....................................................................................................... 7
`
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`EXHIBIT LIST
`
`
`
`Ex. 1001 U.S. Patent No. 10,327,479 (“the ‘479 Patent”)
`Ex. 1002
`Prosecution History of the ‘479 Patent
`Ex. 1003 U.S. Patent Pub. 2018/0177231 (“Woodbine”)
`Ex. 1004 U.S. Patent Pub. 2018/0177231 (“Hawes”)
`Ex. 1005 U.S. Patent Pub. 2015/0122252 (“Frija”)
`Ex. 1006 U.S. Patent Pub. 2013/0220315 (“Conley”)
`Ex. 1007 U.S. Patent Pub. 2018/0043114 (“Bowen”)
`Ex. 1008 U.S. Patent Pub. 2015/0320116 (“Bleloch”)
`Ex. 1009 U.S. Patent Pub. 2014/0096782 (“Ampolini”)
`Ex. 1010 U.S. Patent Pub. 2014/0107815 (“LaMothe”)
`Ex. 1011 U.S. Patent Pub. 2016/0114407 (“Duncan”)
`Ex. 1012 U.S. Patent Pub. 2016/0106936 (“Kimmel”)
`Ex. 1013 Claim Chart for Invalidity of the ‘479 Patent
`Ex. 1014 Declaration of Joe Keenan
`Ex. 1015 Declaration of Dr. Vladislav Babinsky
`Ex. 1016 Declaration of James G. Sawtelle Regarding Motion for Admission
`to Practice Pro Hac Vice
`
`
`I.
`
`Introduction
`Pursuant to 35 U.S.C. § 321, § 18 of the Leahy-Smith America Invents Act
`
`(“AIA”),” and 37 C.F.R. § 42.200, Petitioner GoFire, Inc. (“GoFire”), submits this
`
`petition (“Petition”) for post-grant review of claims 1-21 (the “Challenged Claims”)
`
`of U.S. Patent 10,327,479 B2 (“the ‘479 Patent”) (Ex. 1001). The ‘479 Patent is
`
`entitled, “System and Method for an Improved Personal Vapourization Device” and
`
`is owned by Respondent Canopy Growth Corporation (“Canopy” or “Respondent”).
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`The claims of the ‘479 Patent, and most specifically independent claims 1 and
`
`7, exist in the prior art. First, the prior art teaches the precise element that Canopy
`
`asserted in independent claims 1 and 7 to purportedly—and unsuccessfully—
`
`distinguish those claims over the prior art: namely, “a unique payload identifier that
`
`is unique to the payload reservoir.”
`
`The ‘479 Patent was filed as a “Track 1” application with a filing date of
`
`March 14, 2018, which was after the priority date of the principal, and still pending,
`
`anticipating prior art reference of Woodbine (US 2018/0177231), which has a
`
`priority date of December 27, 2016. The ‘479 Patent’s issuance was based on an
`
`erroneous distinction of anticipating claim elements that were, and are still, present
`
`in Woodbine, which is still undergoing prosecution.
`
`Second, in addition to Woodbine, additional references already in the record
`
`present the same element in the ’479 Patent of “a unique payload identifier that is
`
`unique to the payload reservoir.” The existence of this element within the prior art
`
`removes the key foundation that Canopy asserted to distinguish the ‘479 Patent from
`
`prior art and obtain allowance.
`
`Canopy asserts an additional element to distinguish its claims from the prior
`
`art: “the determination of secondary data comprising payload information and user
`
`information.” But that argument is unavailing: whether to allow activation of the
`
`device based on the unique payload identifier and user information are also common
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`elements well understood within the art. As a result, without the erroneously
`
`determined uniqueness of “a unique payload identifier that is unique to the payload
`
`reservoir,” the additional qualifier to confirm authorization for use is insignificant
`
`as a common practice. Moreover, the proffered elements of (a) payload and reservoir
`
`identification and (b) “authorization for use” are not linked in a new and substantive
`
`form; because these elements are commonly present in the prior art, they are not a
`
`basis for allowance. Thus, the Challenged Claims 1-21 are invalid under 35 U.S.C.
`
`§§ 102 and/or 103. As a result, this Petition establishes that it is more likely than not
`
`that at least one of the Challenged Claims of the ‘479 Patent is unpatentable.
`
`II. Mandatory Notices (37 C.F.R. § 42.8)
`A. Real Parties-In-Interest
`The real party in interest for this petition is Petitioner, GoFire, Inc.
`
`B. Related Matters
`Pending Applications:
`
`U.S. Patent Application 16/419,593, filed on May 22, 2019, claims priority as
`
`a Continuation In Part to the ‘479 Patent.
`
`Pending Related Matters:
`
`There are no known infringement actions or other related matters.
`
`C. Notice of Lead and Backup Counsel; Service Information
`Lead Counsel:
`Daniel W. Roberts (Reg. No. 52,172)
`Tel: (720) 304-3026
`Facsimile: (720) 304-3026
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`Backup Counsel:
`
`
`
`
`
`James G. Sawtelle
`(motion for pro hac vice admission pending)
`Sherman & Howard L.L.C.
`633 17th Street, Suite 3000
`Denver, CO 80202
`Tel: (303) 297-2900
`Facsimile: (303) 298-0940
`
`
`Lead Counsel Address: Law Offices of Daniel W. Roberts, LLC
`904 Topaz Street
`Superior, Colorado 80027
`Tel: (720) 304-3026
`Facsimile: (720) 304-3026
`
`
`
`Please address all correspondence to lead counsel at the address shown above.
`
`GoFire also consents to electronic service by email at dan@robertsiplegal.com and
`
`jsawtelle@shermanhoward.com. GoFire has executed and is concurrently filing a
`
`power of attorney appointing the above-named counsel.
`
`III. Grounds for Standing (37 C.F.R. § 42.204(a))
`GoFire certifies that it has standing to request and is not barred from
`
`requesting a post-grant review of the ‘479 Patent pursuant to 35 U.S.C. § 321.
`
`Neither GoFire nor any privy of GoFire has filed any civil action challenging the
`
`validity of any claim of the ‘479 Patent or previously requested a post-grant review
`
`or inter partes review of the ‘479 Patent.
`
`GoFire also certifies that it is filing this petition not later than nine months
`
`after the date the ‘479 Patent was granted (June 25, 2019), in accordance with 35
`
`U.S.C. § 321(c) and 37 C.F.R. § 42.202.
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`IV. Payment of Fees (37 C.F.R. § 42.203)
`The required fee is being paid with the filing of this Petition, through the Patent
`
`and Appeal Board’s End to End System, in accordance with the fees prescribed under
`
`C.F.R. § 42.15(b)(1-4). More specifically, GoFire’s fees paid include the review
`
`request fee under C.F.R. § 42.15(b)(1) of $16,000.00, an extra claim fee of $375.00
`
`for a single claim over 20 claims under C.F.R. § 42.15(b)(3), the post-institution fee
`
`under C.F.R. § 42.15(b)(2) of $22,000, and an extra claim fee under C.F.R. §
`
`42.15(b)(4) of $4,950.00 (6 additional claims x $825.00 for each claim over 15
`
`claims).
`
`V.
`
`Identification of Challenged Claims and Specific Statutory Grounds (37
`C.F.R. § 42.204(b)(1)-(2))
`GoFire requests the cancellation of Claims 1-21 of the ‘479 Patent on the
`
`grounds of unpatentability under 35 U.S.C. §§ 102 and/or 103 in light of the identified
`
`prior art patents and the attached Declarations of Joe Keenan (“Keenan Declaration”
`
`or “Keenan Decl.”) (Ex. 1014 hereto) and Dr. Slava Babinsky (“Babinsky
`
`Declaration” or “Babinsky Decl.”) (Ex. 1015 hereto). A copy of each reference cited
`
`by GoFire in support of its request for an invalidity determination is filed herewith
`
`pursuant to 37 C.F.R. § 42.6(c).
`
`GoFire has attached a chart specifically identifying where in each item of the
`
`prior art each element of each asserted claim is found (Ex. 1013). GoFire has also
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`selected specific instances of the prior art to discuss in this Petition. Below is a list
`
`of the prior art on which GoFire relies:
`
`1.
`
`U.S. Patent Application Publication 2018/0177231 to Woodbine et al., titled
`
`“System and Method for Managing Concentrate Usage of a User”
`
`(“Woodbine”) (Ex. 1003).
`
`2.
`
`U.S. Patent Application Publication 2018/0177231 to Hawes et al., titled
`
`“Personal Carrying Case for Electronic Vaping Device” (“Hawes”) (Ex.
`
`1004).
`
`3.
`
`U.S. Patent Application Publication 2015/0122252 to Frija, titled “Hand-Held
`
`Personal Vaporizer” (“Frija”) (Ex. 1005).
`
`4.
`
`U.S. Patent Application Publication 2013/0220315 to Conley et al., titled
`
`“Electronic Vaporizer” (“Conley”) (Ex. 1006).
`
`5.
`
`U.S. Patent Application Publication 2018/0043114 to Bowen et al., titled
`
`“Control of an Electronic Vaporizer” (“Bowen”) (Ex. 1007) (Final OA).
`
`6.
`
`U.S. Patent Application Publication 2014/0107815 to LaMothe, titled
`
`“Electronically Augmented Container for Storing and Interfacing With Vapor
`
`Delivery Devices” (“LaMothe”) (Ex. 1010) (Final OA).
`
`7.
`
`U.S. Patent Application Publication 2015/0114407 to Duncan et al., titled
`
`“Usage Control of Electronic Cigarette” (“Duncan”) ( Ex. 1011).
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`8.
`
`U.S. Patent Application Publication 2015/0320116 to Bleloch et al., titled
`
`“Vaporizer Device” (“Bleloch”) (Ex. 1008) (Final OA).
`
`9.
`
`U.S. Patent Application Publication 2014/0096782 to Ampolini et al., titled
`
`“Electronic Smoking Article and Associated Method” (“Ampolini”) (Ex.
`
`1009).
`
`10. U.S. Patent Application Publication 2016/0106936 to Kimmel, titled
`
`“Personal Vaporizer Having Controlled Usage” (“Kimmel”) (Ex. 1012).
`
`The statutory grounds of challenge are as follows: Grounds 1 and 2 regarding
`
`35 U.S.C. § 102, and Grounds 3-7 regarding 35 U.S.C. § 103. The claim
`
`construction, reasons for unpatentability, and specific evidence supporting this
`
`request are detailed below:
`
`Ground 1: Claims 1-6 are invalid under 35 U.S.C. § 102 as being
`unpatentable over Woodbine
`Ground 2: Claims 7-9, 13, 14, 17, 18 and 19 are invalid under 35 U.S.C. §
`102 as being unpatentable over Woodbine.
`Ground 3: Claims 1-6 and 7-9, 13, 14, 17, and 19-21 are invalid under 35
`U.S.C. § 103 as being unpatentable over Woodbine in view of Hawes.
`Ground 4: Claims 1-6 and 7-9, 13, 14, 17, and 19-21 are invalid under 35
`U.S.C. § 103 as being unpatentable over Woodbine in view of Frija
`Ground 5: Claims 1-6 and 7-9, 13, 14, 17, and 19-21 are invalid under 35
`U.S.C. § 103 as being unpatentable over Woodbine in view of Conley.
`Grounds 6: Claims 1-6 and 7-21 are invalid under 35 U.S.C. § 103 as being
`unpatentable over Woodbine in view of Bowen.
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`Ground 7: Claims 8, 10, 11, 12, 13, 15 and 16 are invalid under 35 U.S.C. §
`103 as being unpatentable over Woodbine in the same combinations with
`LaMothe, Duncan, Bleloch, Kimmel, and Frija as noted by the Examiner in
`the Final Office Action of September 4, 2018 (Ex. 1002-66 through 1002-
`76).
`VI. Effective Filing Date of the Challenged Claims and Eligibility for Post-
`Grant Review
`The post-grant review provisions of the AIA apply to any patent containing
`
`one or more claims with an effective filing date after March 15, 2013. See AIA
`
`§§ 3(n)(1); 6(f)(2)(A). The ‘479 Patent claims priority to U.S. Provisional
`
`Application No. 62/471,751, filed on March 15, 2017, entitled “Personal Vapourizer
`
`Device.” Thus, this Petition is submitted, and the ‘479 Patent is subject to review
`
`and invalidation, under the provisions of AIA.
`
`VII. Background and Summary of the ‘479 Patent
`The ‘479 Patent is titled “System and Method for an Improved Personal
`
`Vapourization Device.” It was filed on March 14, 2018, under application
`
`15/921,144, and it issued on June 25, 2018. The ‘479 Patent claims priority to U.S.
`
`Provisional Application No. 62/471,751, filed on March 15, 2017. The file wrapper
`
`of Application 15/921,144, which eventually matured into the ‘479 Patent (the “File
`
`Wrapper”) is attached as Ex. 1002, and citations thereto are specified by date, event,
`
`and page number.
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`A.
`Summary of the ‘479 Patent’s Specification
`The ‘479 Patent discloses various embodiments of personal vapourizer or
`
`“vape” devices, and in particular, methods and systems for controlling the operation
`
`of vape devices. (Ex. 1001.) Moreover, the ‘479 Patent presents a vape device. An
`
`embodiment under the ‘479 Patent is summarized as:
`
`an improved vape device system can be provided, the system
`comprising a vape device comprising: an atomizer comprising a heating
`coil, the atomizer further comprising an inlet and an outlet, a
`mouthpiece operatively coupled to the outlet, a payload reservoir
`operatively coupled to the inlet, the payload reservoir comprising an
`identifier (“ID”) tag comprising a unique identifier for the payload
`reservoir, the payload reservoir configured to hold liquid or oil that can
`be drawn into the atomizer to be vapourized when the user draws on the
`mouthpiece, and a radio frequency transceiver and at least one antenna
`operatively coupled to the transceiver, the combination of the
`transceiver and the at least one antenna configured for wirelessly
`transmitting and receiving data; and a personal computing device
`configured for the wireless transmission of the data to and from the
`vape device.
`
`(Ex 1001, Col. 4 ln 66 - Col. 5 ln. 14.)
`
`This description may be further understood with respect to FIG. 1, showing
`
`the vape device 10, including a mouthpiece assembly 12, an atomizer subassembly
`
`19, a payload section 24, and a control subassembly 14. The mouthpiece assembly
`
`12 is operatively coupled to the control sub assembly 14 via connecting means 15.
`
`The heater or atomizer 20 is disposed in the atomizer section 19, with the atomizer
`
`20 further comprising a heating coil 22 disposed therein for heating and vaporizing
`
`liquids or oils. The atomizer 20 has an inlet 21 in communication with a payload
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`reservoir 26 disposed in the payload section, and an outlet 23 in communication with
`
`a user mouthpiece 16 of the mouthpiece assembly 12. The payload reservoir 26
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`contains a liquid or oil for vaporization or atomization.
`
`The ‘479 Patent further provides:
`
`In some embodiments, payload section 24 can comprise an identifier
`(“ID”) tag 28, which can further comprise a unique payload identifier
`that identifies payload reservoir 26, and also optionally, secondary data
`as described below. The unique payload identifier of ID tag 28 may be
`a serial number or tracking number for reservoir 26 as a means to
`identify what liquid or oil is contained in reservoir 26 so as to obtain
`information as to the specific parameters of operation of atomizer 20,
`or operational settings, that are optimal for vapourizing the specific
`liquid or oil contained in reservoir 26. For example, the payload
`identifier may be compared to a database that includes the payload
`identifiers from a plurality of payload reservoirs. The database may
`include specific operational settings and secondary data for each of the
`payload identifiers.
`
`(Ex 1001, Col. 8 lines 30 – 40) (emphasis added).
`
`
`With respect to FIG. 1, ID tag 28 is shown with label “UNIQUE
`(cid:39)(cid:42)(cid:40)(cid:15)(cid:1)(cid:18)
`
`IDENTIFIER” and in FIG. 2,
`
`ID tag 28 is shown with label
`
`“SERIAL ID”. Both have
`
`been shaded green in the
`
`annotated
`
`figures
`
`to
`
`the
`
`right. Indeed, based on the
`
`quoted text note above and
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`(cid:39)(cid:42)(cid:40)(cid:15)(cid:1)(cid:19)
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`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
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`the illustrations presented by FIGs. 1 and 2, it is clear that the ‘479 Patent considers
`
`unique payload identifiers (i.e., Unique Identifiers) and serial IDs to be synonymous
`
`and interchangeable terms. More to the point, it is clear from the ‘479 Patent that a
`
`serial ID or serial number is and should be understood to be a unique value that
`
`identifies the payload.
`
`Moreover, and as is further understood with respect to FIGs. 2-3 (2
`
`superimposed on 3), in operation, the vape device 10 is operationally controlled at
`
`least in part with a computing device 72 running an application 74 thereon. The
`
`microprocessor 31 (first processor) of the vape device 10 reads the unique identifier
`
`28
`
`from
`
`the payload
`
`reservoir 26, and transmits
`
`the unique identifier 28 to
`
`the computing device 28
`
`(remote from
`
`the vape
`
`device 10 and having a
`
`second processor).
`
`(cid:39)(cid:42)(cid:40)(cid:15)(cid:1)(cid:19)
`
`The application 74 uses the payload identifier in ID tag 28 to determine
`
`secondary data, “such as, but not limited to, user information, prescription
`
`information, location information, payload information, historical vape device usage
`
`information, and historical payload reservoir information.” (Ex 1001, Col. 15 lines
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`Petition for Post-Grant Review of
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`16-25). Moreover, “[t]he secondary data may be stored in memory of computing
`
`device 72 that is accessible by application 74, in memory of microcontroller 31,
`
`and/or in memory remote from vape device 10 and computing device 72 that is
`
`accessible via global telecommunications network 92.” Id. In simpler terms, the
`
`secondary data includes a combination of payload information and user information.
`
`This secondary data is used by the application 74 to configure the vape device 10 for
`
`vaporization—e.g., temperature and duration of heating cycle, dosage setting, and
`
`other possible setting elements.
`
`In addition, the ‘479 Patent describes an
`
`application 74 can use the unique payload identifier received from ID
`tag 28 as a means to determine if the person in possession of vape
`device 10 and computing device 72 is a permitted user
`(e.g.,
`application 74 can compare user information associated with the
`payload identifier with application user information that a user provides
`to application 74 to determine whether the user of application 74 is
`permitted to operate vape device 10 and the particular payload
`reservoir 26). Application 74 can use the general security settings of
`computing device 72 to enable or disable operation of vape device 10,
`wherein such security settings can comprise one or more of passwords,
`fingerprint scan (using fingerprint scanner 85 as shown in FIG. 3),
`facial recognition scan, retinal scan and any other security settings for
`computing device 72 as well known to those skilled in the art.
`
`(Id., Col. 14 lines 41-56.)
`
`In addition, for at least one embodiment, an element of the user authorization
`
`may include verifying prescription information for the user:
`
`Prescription information can be retrieved from, for example, pharmacy
`and dispensary databases, as well as from physicians, pharmacists, and
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`51463938.3
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`12
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`

`

`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`others licensed to write and/or manage prescriptions. The prescription
`information preferably includes whether a particular user has a valid,
`unexpired prescription to use the substance within payload reservoir 26.
`
`(Id., Col. 15 lines 51-57.)
`
`B.
`Summary of Prosecution History
`The application that issued as the ‘479 Patent was filed on March 14, 2018, as
`
`U.S. Application 15/921,144. Filed with a request for Track 1 Prioritized
`
`Examination, the original application presented 25 claims, with claims 1, 9 and 18
`
`being independent claims, the independent claims herein shown in bold. The
`
`following summary of the prosecution history emphasizes the ‘479 Patent’s
`
`independent claims.
`
`Very broad in their original presentation, the thrust of these claims is that the
`
`payload reservoir is identified by a payload identifier and that operational settings
`
`are determined at least in part on the payload identifier and secondary data.
`
`Petitioner has annotated key elements to assist in tracking their evolution by
`
`amendment. In annotated form, these original independent claims appear as follows.
`
`1. A vape device system comprising:
`an atomizer comprising an inlet and an outlet;
`a mouthpiece coupled to the outlet;
`an activation mechanism coupled to the atomizer;
`a payload reservoir coupled to the inlet, wherein the payload reservoir is
`identified by a payload identifier, and
`wherein the payload reservoir is configured to hold a substance for
`vapourization; and
`a processor that is configured to determine an operational setting based on at
`least one of the payload identifier and a secondary data.
`
`51463938.3
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`13
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`

`

`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`9. A method of controlling a vape device comprising a payload reservoir that is
`identified by a payload identifier, the method comprising:
`transmitting the payload identifier to a processor;
`determining an operational setting of the vape device with the processor based
`on the payload identifier and a secondary data; and
`controlling the vape device based on the operational setting.
`18. A method of determining an operational setting of a vape device comprising a
`payload reservoir that is identified by a payload identifier, the method
`comprising:
`authenticating a user via a software application on a computing device;
`transmitting the payload identifier from a wireless transceiver of the vape
`device to the computing device;
`determining the operational setting with the computing device based at least
`in part on the payload identifier or a secondary data;
`transmitting the operational setting from the computing device to the vape
`device; and
`controlling the vape device based on the operational setting.
`
`
`(Ex 1002-1936 through 1002-1939, Original App.) (emphasis added).
`
`
`The first non-final office action (“OA”) issued on May 18, 2018 with a
`
`rejection of all claims. Claims 1, 4, and 6-9 were rejected under 35 U.S.C. §
`
`102(a)(1) as being anticipated by Ampolini (US 2014/0096782). The Examiner
`
`stated:
`
`Ampolini teaches . . . [a]n activation mechanism is coupled to the
`atomizer [0070] and a payload reservoir 205 is coupled to the inlet
`[0072], wherein the payload reservoir is configured to hold a substance
`for vaporization. The payload reservoir is identified by a payload
`identifier and a first control component (processor) is configured to
`determine an operational setting based on the payload identifier [0106]
`and remaining amount of payload (payload information) [0103],
`wherein the processor is coupled to the atomizer configured to control
`operation of the atomizer based on the operational setting.
`
`(Ex. 1002-115, First OA.)
`
`51463938.3
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`14
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`

`

`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`
`
`Claims 1, 4-9, 15, and 16 were also rejected as being anticipated by Bleloch
`
`(US 2015/0320116). (See Ex. 1002-116.) In addition to the basic elements of an
`
`atomizer (¶ 45), mouthpiece (¶ 64), activation mechanism (¶ 51), and payload
`
`reservoir (¶ 55) coupled to vaporizer inlet (¶ 46), Bleloch anticipates that:
`
`the cartridge may comprise an identifier that comprises content
`information regarding the contents of the cartridge and the identifier
`may be incorporated into the cartridge such as with a barcode or other
`mechanism that provides a signal regarding a vaporizing substance
`and/or wick element within the cartridge. The processor may be
`coupled to the induction heating element and programmed to read the
`content information of the cartridge so that it is used to set parameters
`and cause the induction heating element to apply a heating profile to
`the vaporizable substance according to the content information of the
`cartridge.
`
`(Ex. 1008, Bleloch ¶ 68.)
`
`
`
`Claims 18, 20, 21, and 25 were rejected under 35 USC § 103 as being
`
`unpatentable over Bleloch in view of LaMothe (2014/01078715). More
`
`specifically, in addition to the reading of the identifier and control of a heating profile
`
`according to the content information provided by the identifier, LaMothe provides
`
`a method for operating a vape device comprising the transmitting of information to
`
`a computing device, determining the operational setting with the computing device
`
`based on the information, and transmitting the operational settings from the
`
`computing device to the vape device, wherein transmission may take place via a
`
`wireless transceiver. (Ex. 1002-122 through 1002-123, citing LaMothe ¶59 and
`
`claims 1 and 10.)
`
`51463938.3
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`15
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`

`

`Petition for Post-Grant Review of
`U.S. Patent No. 10,327,479 B2
`
`All elements of the dependent claims were also found present in the prior art
`
`presented in the first office action. (Ex. 1002-115 through 1002-124.)
`
`In an August 14, 2018 formal response, Canopy cancelled claims 2 and 3, as
`
`those dependent elements were incorporated into independent claim 1 with similar
`
`amendments offered for independent claims 9 and 18. ((Ex 1002-91 through 1002-
`
`95, Response) (with Canopy’s amendments underlined/strikethrough and GoFire’s
`
`emphasis bolded).)
`
`a vape device comprising:
`an atomizer comprising an inlet and an outlet;
`a mouthpiece coupled to the outlet;
`an activation mechanism coupled to the atomizer;
`a payload reservoir coupled to the inlet, wherein the payload reservoir is
`identified by a unique payload identifier, and wherein the payload
`reservoir is configured to hold a substance for vaporization;
`a first processor that is configured to receive the unique payload identifier
`from the payload reservoir; and
`a wireless transceiver that is configured to receive the unique payload
`identifier from the first processor and transmit the unique payload
`identifier; and
`a computing device remote from the vape device comprising a second
`processor that is configured to:
`receive the unique payload identifier from the wireless transceiver;
`determine secondary data comprising payload information based on the
`unique payload identifier, wherein the payload information is stored in
`a memory remote from the vape device and t