Trials@uspto.gov
`571-272-7822
`
`Paper 8
`
` Entered: October 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOFIRE, INC.,
`Petitioner,
`
`v.
`
`CANOPY GROWTH CORPORATION,
`Patent Owner.
`____________
`
`PGR2020-00044
`Patent 10,327,479 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
`MONTÉ T. SQUIRE, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 8
`
` Entered: October 9, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOFIRE, INC.,
`Petitioner,
`
`v.
`
`CANOPY GROWTH CORPORATION,
`Patent Owner.
`____________
`
`PGR2020-00044
`Patent 10,327,479 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
`MONTÉ T. SQUIRE, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`35 U.S.C. § 324(a)
`
`
`
`
`
`
`
`
`
`PGR2020-00044
`Patent 10,327,479 B2
`
`
`INTRODUCTION
`I.
`GoFire, Inc. (“Petitioner”) filed a Petition requesting post-grant
`review of claims 1–21 of US Patent No. 10,327,479 B2 (“the ’479 patent,”
`Ex. 1001). Paper 1 (“Pet.”). Canopy Growth Corporation (“Patent Owner”)
`filed a Patent Owner Preliminary Response to the Petition. Paper 7
`(“Prelim. Resp.”).
`Based on the particular circumstances of this case, we exercise our
`discretion under 35 U.S.C. § 325(d) and do not institute post-grant review of
`the challenged claims.
`
`BACKGROUND
`II.
`A. Related Matters
`The parties identify US Patent Application No. 16/419,593, filed on
`May 22, 2019, as a continuation-in-part of the ’479 patent, as a related
`matter. Pet. 3; Paper 4, 2.
`
`B. The ’479 Patent
`The ’479 patent, titled “System and Method for an Improved Personal
`Vapourization Device,” issued on June 25, 2019, from US Patent
`Application No. 15/921,144 (“the ’144 application”), filed March 14, 2018.
`Ex. 1001, at code (54), (45), (21), (22). The ’479 patent claims priority to
`US Provisional Application No. 62/471,751, filed on March 15, 2017. Ex.
`1001, at code (60).
`The ’479 patent is directed to an improved “vape device system” that
`includes a rechargeable vape device that can communicate with personal
`computing devices such as laptop computers, smart phones, smart watches,
`and other wearable devices. Ex. 1001, at code (57), 1:55–2:9. The ’479
`patent indicates that its device “appeals instantly to the ‘cannabis-naive’
`
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`customer, whether medicinal or recreational,” and can comprise security
`settings “to prevent unauthorized use of the vape device by anyone other
`than the owner of the vape device, who has a prescription for medical
`marijuana,” and “prevent the use of the vape device in regions or
`jurisdictions, even by the rightful owner of the vape device, where the
`consumption of medical marijuana is not authorized or legal.” Ex. 1001,
`1:56–58, 2:10–18. Additionally, “[t]hese security settings can be
`implemented to appease government or law enforcement for unauthorized
`use of the vape device in the consumption of cannabis products, for medical
`purposes or otherwise.” Ex. 1001, 2:18–22.
`One embodiment of the vape device of the ’479 patent is shown in
`Figure 1, reproduced below.
`
`
`
`Figure 1 “is a block diagram depicting one embodiment of an improved vape
`device” having mouthpiece assembly 12, atomizer subassembly 19, payload
`section 24, and control subassembly 14. Ex. 1001, 7:31–32, 7:57–60.
`Heater/atomizer 20 is disposed in atomizer subassembly 19, and comprises
`inlet 21 and outlet 23. Ex. 1001, 8:20–14. Inlet 21 is in communication
`with payload reservoir 26 in payload section 24 via fluid connector 46. Ex.
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`Patent 10,327,479 B2
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`1001, 8:24–26. Outlet 23 is in communication with user mouthpiece 16.
`Ex. 1001, 8:28–29. Payload reservoir 26 may contain liquid or oil for
`vaporization. Ex. 1001, 8:26–28. According to the ’479 patent:
`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, 8:30–44 (emphasis omitted). The ’479 patent states that
`“secondary data” may include “user information, prescription information,
`location information, payload information, historical vape device usage
`information, and historical payload reservoir information.” Ex. 1001,
`15:16–20. The ’479 patent also indicates that the secondary data may be
`stored in memory remote from the vape device and the computing device,
`which is accessible via a global communications network. Ex. 1001, 15:20–
`25. Further, the “operational settings” referenced above may include “a duty
`cycle setting, a temperature setting, an operation time duration, a dosage
`setting, and a security setting.” Ex. 1001, 11:3–9.
`
`The ’479 patent explains that control subassembly 14 contains circuit
`board 30 that “can further comprise a microcontroller 31 configured for
`carrying out one or more electronic functions in respect of the operation of
`
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`Patent 10,327,479 B2
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`vape device 10.” Ex. 1001, 9:44–48. Circuit board 30 can also comprise
`radio frequency transceiver circuit 36 to provide means for wireless
`communication of data between vape device 10 and a personal computing
`device. Ex. 1001, 10:23–26. The personal computing device may include
`an application or “app” that:
`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).
`Ex. 1001, 14:41–49 (emphasis omitted).
`C. Challenged Claims
`Petitioner challenges claims 1–21 of the ’479 patent. Claims 1 and 7
`are the only independent claims. Independent claim 1 is illustrative, and is
`reproduced below:
`1. A vape device system comprising:
`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 that
`is unique to the payload reservoir, and wherein the
`payload reservoir is configured to hold a substance for
`vapourization;
`a first processor that is configured to receive the unique
`payload identifier from the payload reservoir; and
`
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`Patent 10,327,479 B2
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`
`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
`and user information based on the unique payload
`identifier, wherein the payload information and user
`information is stored in a memory remote from the vape
`device and the computing device, wherein the payload
`information comprises an identification of the particular
`substance located within the payload reservoir, and
`wherein the user information is associated with a user
`and with the unique payload identifier;
`authenticate the user via a software application on the
`computing device;
`compare the user information associated with the unique
`payload identifier with application user information that
`the user provides to the software application to determine
`whether the user is permitted to use the payload
`reservoir; and
`determine an operational setting for the vape device based
`on the payload information, and
`wherein the wireless transceiver is further configured to receive
`the operational setting from the second processor and
`transmit the operational setting to the first processor of the
`vape device.
`Ex. 1001, 19:64–20:38.
`
`D. Asserted Challenges
`Petitioner asserts that claims 1–21 would have been unpatentable
`based on the following challenges:
`
`
`
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`6
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`
`Claims Challenged
`1–9, 13, 14, 17–21
`1–9, 13, 14, 17,
`19–21
`1–9, 13, 14, 17,
`19–21
`1–9, 13, 14, 17,
`19–21
`1–21
`8, 10–12, 13, 15, 16
`
`35 U.S.C. §
`§102
`§103
`
`§103
`
`§103
`§103
`
`§103
`
`Reference(s)/Basis
`Woodbine1
`Woodbine, Hawes2
`
`Woodbine, Frija3
`
`Woodbine, Conley4
`
`Woodbine, Bowen5
`Woodbine, LaMothe,6
`Duncan,7 Bleloch,8
`Kimmel,9 Frija
`
`
`Petitioner also relies on the declaration of Joseph F. Keenan (“the
`Keenan Declaration,” Ex. 1014) and the declaration of Vladislav Babinsky,
`Ph.D. (“the Babinsky Declaration,” Ex. 1015).
` ANALYSIS
`III.
`A. Discretionary Denial under 35 U.S.C. § 325(d)
`Patent Owner argues that we should exercise our discretion to deny
`the Petition under 35 U.S.C. § 325(d) because Petitioner presents
`substantially the same prior art and arguments the Office previously
`considered during the prosecution of the ’479 patent, and fails to identify a
`material error in the Office’s analysis. Prelim. Resp. 19–36.
`
`
`1 US 2018/0177231 A1, published June 28, 2018 (Ex. 1003).
`2 US 2017/0258136 A1, published Sept. 14, 2017 (Ex. 1004).
`3 US 2015/0122252 A1, published May 7, 2015 (Ex. 1005).
`4 US 2013/0220315 A1, published Aug. 29, 2013 (Ex. 1006).
`5 US 2018/0043114 A1, published Feb. 15, 2018 (Ex. 1007).
`6 US 2014/0107815 A1, published Apr. 17, 2014 (Ex. 1010).
`7 US 2015/0114407 A1, published Apr. 30, 2015 (Ex. 1011).
`8 US 2015/0320116 A1, published Nov. 12, 2015 (Ex. 1008).
`9 US 2016/0106936 A1, published Apr. 21, 2016 (Ex. 1012).
`
`
`
`
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`
`Section 325(d) provides that in determining whether to institute an
`inter partes review, “the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.” We use a two-part
`framework in determining whether to exercise discretion under § 325(d),
`specifically:
`(1) whether the same or substantially the same art previously
`was presented to the Office or whether the same or substantially
`the same arguments previously were presented to the Office;
`and (2) if either condition of the first part of the framework is
`satisfied, whether the petitioner has demonstrated that the
`Office erred in a manner material to the patentability of
`challenged claims.
`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH,
`IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential)
`(“Advanced Bionics”). In applying the two-part framework, we consider
`several non-exclusive factors, including: (a) the similarities and material
`differences between the asserted art and the prior art involved during
`examination; (b) the cumulative nature of the asserted art and the prior art
`evaluated during examination; (c) the extent to which the asserted art was
`evaluated during examination, including whether the prior art was the basis
`for rejection; (d) the extent of the overlap between the arguments made
`during examination and the manner in which Petitioner relies on the prior art
`or Patent Owner distinguishes the prior art; (e) whether Petitioner has
`pointed out sufficiently how the Examiner erred in its evaluation of the
`asserted prior art; and (f) the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the prior art or
`arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-
`
`
`
`8
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`01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5,
`first paragraph). If, after review of factors (a), (b), and (d), we determine
`that the same or substantially the same art or arguments previously were
`presented to the Office, then factors (c), (e), and (f) relate to whether the
`petitioner demonstrates that the Office erred in a manner material to the
`patentability of the challenged claims. Advanced Bionics, 10. “At bottom,
`this framework reflects a commitment to defer to previous Office
`evaluations of the evidence or record unless material error is shown.” Id.
`at 9.
`
`For the reasons set forth below, under the facts and circumstances of
`this case, we exercise our discretion under § 325(d) to deny institution of a
`trial.
`
`1. Whether the same or substantially same prior art or arguments
`previously were presented to the Office
`In the Petition, Petitioner asserts Woodbine, Hawes, Frija, Conley,
`Bowen, LaMothe, Duncan, Bleloch, and Kimmel against the challenged
`claims of the ’479 patent. Pet. 6–8. Petitioner admits that the Examiner
`cited each of these references during prosecution of the application that led
`to the ’479 patent:
`• “[T]he Examiner raised the rejection of claim 1 based on
`Woodbine under 35 U.S.C. § 102 in the Final Office Action dated
`September 4, 2018.” Pet. 30;
`• “Hawes was cited by the Examiner in both the May 18, 2018 first
`office action (Ex. 1002-124, First OA) and the September 4, 2018
`Final Office Action (id. at 1002-73, Final OA) . . . .” Pet. 59;
`• “Frija was cited by the Examiner in the September 4, 2018 final
`Office Action.” Pet. 63;
`• “Conley was also cited by the Examiner in the May 18, 2018 first
`office action . . . .” Pet. 67;
`
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`• “Bowen was cited by the Examiner in both the May 7, 2018 first
`office action (Ex. 1002-120 through 1002-122) and the September
`4, 2018 Final Office Action (id. at 1002-70 through 1002-73) . . . .”
`Pet. 70;
`• “[Patent Owner’s] dependent claims stand as obvious in light of
`the Examiner’s cited combinations between Woodbine, Frija,
`LaMothe, Duncan, Bleloch and Kimmel.” Pet. 75.
`Patent Owner presents a chart in its Preliminary Response further
`detailing “the portions of the prosecution history where the Examiner
`substantively considered each reference used in the Petition.” Prelim. Resp.
`23–25.
`In view of the foregoing, we determine the Petition presents the same
`prior art previously presented to the Office during prosecution of the
`application that led to the ’479 patent.
`2. Error material to patentability
`Because we find that the “same or substantially the same prior art or
`arguments previously were presented to the Office,” we turn to whether
`Petitioner demonstrates that the Office erred in a manner material to the
`patentability of the challenged claims. Advanced Bionics, 8, 10; see Becton,
`Dickinson, 24. We conclude that Petitioner does not demonstrate an error
`material to patentability.
`Independent claim 1 is directed to a vape device system comprising,
`inter alia, a payload reservoir, “a unique payload identifier that is unique to
`the payload reservoir,” and “a computing device remote from the vape
`device comprising a second processor that is configured to . . . authenticate
`the user via a software application on the computing device” and “compare
`the user information associated with the unique payload identifier with
`application user information that the user provides to the software
`
`
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`10
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`application to determine whether the user is permitted to use the payload
`reservoir.” Ex. 1001, 19:64–20:38 (emphasis added). Claim 7 is directed to
`“[a] method of determining an operational setting of a vape device
`comprising a payload reservoir that is identified by a unique payload
`identifier that is unique to the payload reservoir,” comprising, inter alia,
`“authenticating the user via a software application on a computing device,”
`and “comparing the user information associated with the unique payload
`identifier with application user information that the user provides to the
`software application to determine whether the user is permitted to use the
`payload reservoir.” Ex. 1001, 20:59–21:16 (emphasis added).
`The claims as originally filed in the application leading to the ’479
`patent did not include the “authentication” or “comparing” limitations. Ex.
`1002, 1936–39. Patent Owner added these limitations by amendment after
`several attempts to overcome rejections from the Examiner based on several
`prior art references, including Woodbine and the other art cited in the
`Petition. See, e.g., Ex. 1002, 24–28 (Supplemental Amendment), 115–125
`(First Office Action), 66–74 (Final Office Action), 59–60 (Examiner
`Interview).
`In the Notice of Allowance, the Examiner provided the following
`reason for allowance:
`The prior art does not teach or reasonably suggest modifying
`the device of [Woodbine], the closest prior art as applied in the
`9/4/2018 Office action, such that the computing device is
`configured to compare user information associated with a user
`and the unique payload identifier with application user
`information that the user provides to a software application on
`the computing device to determine whether the user is
`permitted to use the payload reservoir.
`Ex. 1002, 13.
`
`
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`
`Thus, the Examiner, having considered all of the same art relied upon
`in the Petition, determined that none of the references teach or suggest the
`“comparing” limitation recited in the claims of the ’479 patent.
`Petitioner does not specifically allege Examiner error in connection
`with the “comparing” limitation. Rather, Petitioner states that “[t]he ‘479
`Patent’s issuance was based on an erroneous distinction of anticipating claim
`elements that were, and are still, present in Woodbine” (Pet. 2), and allocates
`most of its Petition toward Patent Owner’s alleged “erroneous distinction” of
`the unique payload identifier that is unique to the payload reservoir. See,
`e.g., Pet. 22 (stating that “the erroneous distinguishing feature of a unique
`payload identifier that is unique to the payload reservoir was the key
`amendment presented against all of the prior art references”).
`Woodbine is directed to a system for managing the concentrate usage
`of a vaporizer user, and includes a vaporizing device and a central server.
`Ex. 1004 ¶ 4. The vaporizing device has a housing and cartridge received
`within the housing that includes a defined quantity of a concentrate and “an
`identification code associated with the concentrate.” Ex. 1004 ¶ 4. The
`vaporizing device includes a control unit within the housing and a
`communication unit coupled to the control unit. Ex. 1004 ¶ 4. The control
`unit is configured to read the identification code and the communication unit
`is configured to transmit the identification code to a computing device of a
`user. Ex. 1004 ¶ 4. The computing device communicates with the central
`server, which receives the information code, retrieves concentrate
`information corresponding to the concentrate from a database, and transmits
`the concentrate information to the computing device for display to the user.
`Ex. 1004 ¶ 4.
`
`
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`
`In support of its argument that Woodbine anticipates claim 1 and 7,
`Petitioner contends that Woodbine discloses the “comparing” limitation
`because Woodbine teaches a user may install an application associated with
`a vape device on a computing device such as a smart phone, “and establish
`an account based on user information transmitted to the central server.” Pet.
`35. According to Petitioner, the “user information” can include a user’s
`name, age, height, weight, sex, and medical history. Pet. 35. Petitioner
`further contends that “[o]nce the user has established his or her account, they
`are not required to register for subsequent vaping sessions.” Pet. 35. Based
`on this, Petitioner argues:
`As the central server stores concentrate information and user
`profile data that is clearly cross indexed to associate the users
`with their respective cartridges; it is a natural presumption, and
`an inherent characteristic of the system, that authentication of
`the user can be performed by comparing user input data
`provided to the application with user profile data upon the
`central server (e.g., medical history) to determine if the user is
`permitted to use the payload reservoir.
`Pet. 35–36; see also Pet. 46–47 (relying on similar evidence and arguments
`regarding the “comparing” limitation in independent claim 7).
`First, we note that Petitioner conflates the “authentication” and
`“comparing” limitations of the challenged claims, arguing that Woodbine
`discloses authentication of the user by comparing input data with user profile
`data. Pet. 35–36. The claims, however, clearly recite separate limitations of
`authenticating a user via a software application, and comparing user
`information associated with a payload identifier with application user
`information “to determine whether the user is permitted to use the payload
`reservoir.” Ex. 1001, 20:26–32, 20:66–21:15. This distinction between
`authenticating a user and comparing data to determine permitted use is
`
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`exemplified by the ’479 patent’s discussion of preventing the use of the vape
`device “even by the rightful owner of the vape device,” i.e., an authenticated
`user. Ex. 1001, 2:14–18. Whereas the claims recite two separate and
`distinct limitations, Petitioner improperly attempts to collapse them into a
`single requirement.
`Further, Petitioner does not direct us to any explicit disclosure of the
`“comparing” limitation in Woodbine or any other reference. In view of this,
`we agree with Patent Owner that Petitioner has not provided an example of
`the Examiner overlooking or misapprehending specific teachings in
`Woodbine regarding this limitation. Prelim. Resp. 27–30.
`Instead, Petitioner asserts the claimed limitation derives from a
`“natural presumption, and an inherent characteristic of the system.” Pet. 35.
`Other than attorney argument, however, Petitioner offers no support for this
`statement. Pet. 35–36. As Patent Owner points out, neither of Petitioner’s
`declarants address this claim limitation. Prelim. Resp. 30 (noting that
`Petitioner’s “experts’ testimony is silent when it comes to discussing the
`‘compare’ claim element highlighted by the Examiner in the notice of
`allowance”). Accordingly, Petitioner’s contention amounts to a
`disagreement with the Examiner’s finding that the art does not teach or
`suggest the “comparing” limitation. Moreover, it is a disagreement based
`not on teachings of the prior art that the Examiner may have
`misapprehended or overlooked, but rather on mere attorney argument as to
`what “natural presumption” the Examiner allegedly should have drawn from
`the reference. This is not sufficient to demonstrate that the Examiner’s prior
`evaluation of the art was in error.
`
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`For all of the foregoing reasons, we are not persuaded that the Office
`erred in a manner material to patentability.
`B. Conclusion
`After reviewing the parties’ arguments and evidence of record, we
`determine that the “same or substantially the same art previously were
`presented to the Office” and Petitioner has not demonstrated that the
`Examiner erred when considering the prior art or arguments. We, therefore,
`exercise our discretion to deny institution of inter partes review under 35
`U.S.C. § 325(d).
`
`IV. ORDER
`After due consideration of the record before us, and for the foregoing
`reasons, it is:
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted.
`
`
`
`
`
`
`
`
`
`
`
`
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`For PETITIONER:
`
`Daniel Roberts
`THE LAW OFFICE OF DANIEL W. ROBERTS, LLC
`dan@robertsiplegal.com
`
`For PATENT OWNER:
`
`Kurt Pankratz
`Chad Walters
`Bryan Parrish
`BAKER BOTTS LLP
`kurt.pankratz@bakerbotts.com
`chad.walters@bakerbotts.com
`bryan.parrish@bakerbotts.com
`
`
`
`
`
`
`
`
`
`
`16
`
`
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