PTAB

IPR2020-00920

Philip Morris Products SA v. RAI Strategic Holdings Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Charging Case For A Personal Vaporizing Inhaler
  • Brief Description: The ’591 patent discloses a battery-powered charging case for a personal vaporizing unit, such as an electronic cigarette. The case includes a cradle to hold the vaporizer, an internal battery, and electrical contacts that transfer charge from the case’s battery to the vaporizer’s battery.

3. Grounds for Unpatentability

Ground 1: Anticipation by Wang - Claims 1, 3, 4, 6, and 7 are anticipated by Wang.

  • Prior Art Relied Upon: Wang (International Publication No. WO 2008/139411).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Wang, which discloses a portable charging case for a "smokeless smoking device," teaches every element of the challenged claims. Wang's "housing 49" is the claimed case, its "bay 41" is the cradle, its "high capacity accumulator 42" is the battery, and its "charger contacts 43" serve as the first and second contacts. The personal vaporizing unit of claim 1 was disclosed as Wang’s "smoking device 10," which delivers substances like nicotine as a vapor and has dimensions approximating a regular cigarette. Wang also explicitly discloses a USB "interface 45" for data transfer and for recharging the case (anticipating claims 3 and 4), a configuration with "two sets of bays" (anticipating the second cradle of claim 6), and an "electronic circuit 44" to control the charging of the smoking device (anticipating the charge controller of claim 7).

Ground 2: Obviousness over Wang and Voges - Claims 2 and 5 are obvious over Wang in view of Voges.

  • Prior Art Relied Upon: Wang (International Publication No. WO 2008/139411) and Voges (Patent 6,637,430).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that claims 2 and 5 add common indicator light features to the base invention taught by Wang. Claim 2 adds a light source on the case's exterior to indicate the case battery's charge level, and claim 5 requires that a portion of the vaporizer be visible from outside the case to allow its own light source to be seen. While Wang does not explicitly show these features, Voges discloses both a "power indicator 172" on its recharger housing and a "power indicator 90" on its portable inhaler.
    • Motivation to Combine: A POSITA would combine these features for clear utility reasons. Adding Voges's case indicator light to Wang's design would satisfy the recognized need for a user to know when the portable power source itself requires recharging. Likewise, a POSITA would have been motivated to modify Wang's case to leave the vaporizer partially visible so its charging status indicator (as taught in Voges) could be monitored by the user, a common design practice for charging cradles.
    • Expectation of Success: Petitioner argued there was a high expectation of success, as adding an LED indicator to a battery circuit and designing a case with a cutout are simple, predictable, and well-established engineering practices.

Ground 3: Obviousness over Wang, Voges, and Nielsen - Claims 8-14 are obvious over Wang in view of Voges and Nielsen.

  • Prior Art Relied Upon: Wang (International Publication No. WO 2008/139411), Voges (Patent 6,637,430), and Nielsen (Application # 2009/0283103).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed the dependent claims for data transfer. Petitioner argued that claims 8-14 impermissibly claim the addition of various wireless interfaces to Wang's wired (USB) data transfer system. These include a generic wireless interface (claim 8), specific IR, 802.15 (Bluetooth), and 802.11 (WiFi) interfaces (claims 9-11), a cellular interface (claim 12), and associating an identification number with the data (claims 13-14).
    • Motivation to Combine: A POSITA would have been motivated to replace Wang's wired connection with a wireless one for the significant user convenience of avoiding cables, a modification expressly taught by Nielsen, which discloses using Bluetooth and WiFi with its vaporizer docking station. For the cellular interface, Voges teaches connecting its recharger to a cell phone to leverage its communication capabilities for remote monitoring. Finally, Voges teaches using an "identification code" to track individual inhalers, which a POSITA would add to Wang's system to allow for more granular and useful data analysis for the "health, commercial or sociological purposes" mentioned by Wang.
    • Expectation of Success: Success was expected because implementing wireless data transfer by adding common USB-based adapters (WiFi, Bluetooth, cellular) to a device with a USB port like Wang's was a routine and well-understood practice at the time.

  • Additional Grounds: Petitioner asserted additional challenges, primarily relying on Voges as the primary reference. These grounds argued that claims 1-4 are anticipated by Voges (Ground 4); claims 1-6 and 8-14 are obvious over Voges in view of Nielsen (Ground 5); and claim 7 is obvious over Voges in view of Nielsen and Counts (Patent 5,144,962) (Ground 6).

4. Relief Requested

  • Petitioner requests the institution of an inter partes review of claims 1-14 of the ’591 patent and the cancellation of those claims as unpatentable.