PTAB

IPR2020-00919

Philip Morris Products SA v. RAI Strategic Holdings Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Tobacco-Containing Smoking Article
  • Brief Description: The ’123 patent relates to an electrically-powered, aerosol-generating smoking article, commonly known as a "heat-not-burn" device. The technology involves heating a tobacco-containing material with an electrical resistance heater to produce a visible aerosol for inhalation without combustion.

3. Grounds for Unpatentability

Ground 1: Obviousness over Morgan in view of Adams and Brooks - Claims 27-30 are obvious over Morgan, alone or in combination with Adams and Brooks.

  • Prior Art Relied Upon: Morgan (Patent 5,249,586), Adams (Application # 2007/0102013), and Brooks (Patent 4,947,874).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Morgan, an electrical smoking article, disclosed every element of the challenged claims. Morgan taught a device with a power source, resistance heaters, a controller, and a removably engaged, cigarette-type disposable portion containing tobacco and an aerosol precursor. To the extent Morgan’s heaters were not considered "proximal to the center," Adams taught this specific configuration. For the "controller" limitation, Brooks was cited as disclosing a more sophisticated puff-actuated controller that the ’123 patent itself identified as suitable prior art.
    • Motivation to Combine: A POSITA would combine Morgan with Adams to implement a centrally located heater, which was a known design choice with established benefits, including better thermal efficiency, reduced off-tastes from wrapping paper, and lower power consumption. A POSITA would incorporate Brooks’s controller into Morgan’s system to achieve the "accurate and sophisticated current actuation and regulation" described by Brooks, improving device performance.
    • Expectation of Success: Combining these known elements for their intended purposes—a superior heating element configuration from Adams and an improved controller from Brooks into a base system like Morgan—involved predictable design choices with a high expectation of success.

Ground 2: Obviousness over Adams in view of Morgan and Brooks - Claims 27-30 are obvious over Adams in view of Morgan and Brooks.

  • Prior Art Relied Upon: Adams (Application # 2007/0102013), Morgan (Patent 5,249,586), and Brooks (Patent 4,947,874).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Adams served as the primary reference, teaching an electrical smoking system that generates an aerosol via combustionless heating. Adams disclosed the key claimed feature: an elongated resistance heater ("projection 72") positioned proximal to the center of the housing that extends into a tobacco plug. Petitioner argued that while Adams showed the core components schematically, a POSITA would look to a reference like Morgan for implementing details such as placing the battery and controller within the tubular outer housing. Brooks was again relied upon for its disclosure of a suitable controller structure.
    • Motivation to Combine: A POSITA would be motivated to place Adams’s battery and controller inside the housing, as taught by Morgan, to achieve a more compact, durable, and cosmetically conventional cigarette-like appearance. This was a simple and predictable design choice among a finite number of options. The motivation to incorporate Brooks's controller was the same as in Ground 1: to improve the functionality of the base device with a known, sophisticated control system.
    • Expectation of Success: The proposed modifications were characterized as the routine integration of well-known components from the same field, leading to a predictable and successful combination.

Ground 3: Obviousness over Counts-962 in view of Brooks - Claims 27-30 are obvious over Counts-962, alone or in combination with Brooks.

  • Prior Art Relied Upon: Counts-962 (Patent 5,144,962) and Brooks (Patent 4,947,874).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner contended that Counts-962, which describes an electrically powered smoking article that produces flavor and aerosol without burning tobacco, disclosed all limitations of the challenged claims. Specifically, Counts-962 taught an elongated heating element proximal to the center of the housing, a power source within the housing, a controller, and a removable cigarette-type device containing a tobacco segment. The controller in Counts-962 was described as regulating the temperature of the flavor-generating medium. Brooks was presented as an alternative for the controller element, particularly if the Board were to find that the term invoked 35 U.S.C. §112, ¶6.
    • Motivation to Combine: The primary argument was that Counts-962 rendered the claims obvious on its own. The motivation to combine with Brooks was conditional: if Counts-962’s controller was deemed insufficient, a POSITA would have been motivated to incorporate the well-known, sophisticated controller from Brooks for the same reasons of improved performance and reliability stated in previous grounds.
    • Expectation of Success: Petitioner argued that since Counts-962 taught all elements, success was inherent. The alternative combination with Brooks was a predictable substitution of one known controller type for another to achieve a desired performance characteristic.

4. Key Claim Construction Positions

  • "controller": Petitioner argued that this term should be given its plain meaning: a device that controls the electric power delivered to the apparatus. Petitioner contended this term does not invoke §112, ¶6. However, in the alternative, if it is found to be a means-plus-function term, Petitioner argued that the corresponding structure disclosed in the ’123 patent includes prior art controllers, specifically the puff-actuated controller described in Brooks. This construction is central to all grounds, as it allows Brooks to be readily substituted to meet the claim limitation.
  • "removably engaged": The Petitioner noted this term is used only in the claims. For the purposes of the IPR, Petitioner adopted the Patent Owner's apparent infringement position that a cigarette-type device is "removably engaged" when it is inserted into the mouth-end of the outer housing and may be removed later. This construction allows prior art devices with disposable, insertable tobacco portions (like in Morgan and Counts-962) to meet the limitation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 27-30 of Patent 9,901,123 as unpatentable.