ScentAir Technologies LLC v. Prolitec Inc

1. Case Identification

• Case #: IPR2021-00012
• Patent #: 9,162,004
• Filed: October 1, 2020
• Petitioner(s): Scentair Technologies, LLC
• Patent Owner(s): Prolitec, Inc.
• Challenged Claims: 1-24

2. Patent Overview

• Title: Removable Cartridge for Liquid Diffusion Device and Cartridge Insert Thereof
• Brief Description: The ’004 patent relates to removable cartridges for liquid diffusion devices, such as air fresheners. The invention is directed to an insert within the cartridge that features a specifically configured tortuous passage designed to reduce the average particle size of an aerosolized liquid and create a more homogenous mist before it is discharged.

3. Grounds for Unpatentability

Ground I: Obviousness over Rosener and Knoch - Claims 1, 2, 4-5, 7-11, 14, 16-18, and 22-23 are obvious over Rosener in view of Knoch.

• Prior Art Relied Upon: Rosener (Application # 2011/0089252) and Knoch (Patent 5,309,900).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosener teaches the fundamental components of the claimed cartridge insert. Rosener describes a fragrance nebulizer that uses an insert (cylindrical section 404 and funnel-shaped assembly 235) with an inlet and outlet to separate larger aerosol droplets by forcing them through "tight bends and corners," which Petitioner mapped to the claimed "tortuous passage." However, Petitioner contended that Rosener does not explicitly teach the passage "spirals," as required by independent claim 1. Knoch was argued to cure this deficiency by disclosing an atomizer for inhalation therapy that uses helical "guiding surfaces" to create a "spiral vortex" for the express purpose of homogenizing vaporized liquid.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that a POSITA would combine Rosener and Knoch as they both address the identical problem of creating desirably small and homogenous airborne particles through impaction in a tortuous passage. A POSITA seeking to improve the particle separation in Rosener’s device would have naturally looked to known techniques for homogenization, such as the spiral vortex taught by Knoch, and incorporated it into Rosener’s design.
  • Expectation of Success (for §103 grounds): The proposed combination was presented as the predictable application of a known technique (Knoch's helical guides) to a similar device (Rosener's insert) to achieve an expected result (improved particle homogenization).

Ground II: Obviousness over Rosener, Knoch, and Dautrebande - Claims 3, 6, 13, 15, and 24 are obvious over Rosener in view of Knoch and Dautrebande.

• Prior Art Relied Upon: Rosener (Application # 2011/0089252), Knoch (Patent 5,309,900), and Dautrebande (Patent 2,605,089).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on Ground I, introducing Dautrebande to teach limitations found in certain dependent claims. For claim 3, which requires the insert body to be a "single, unitary piece," Petitioner pointed to Dautrebande's aerosol conduit member 6, an S-shaped tube explicitly described and depicted as a single component. For claims 6 and 15, which require an impaction surface that "diverges in a downward direction," Petitioner argued that Dautrebande's conduit widens in the downward flow direction, inherently creating such a diverging surface to direct condensed liquid.
  • Motivation to Combine (for §103 grounds): Petitioner argued that a POSITA, having already combined Rosener and Knoch, would look to other prior art for simple structural implementations. Dautrebande, being a very early (1952) and basic reference, was presented as teaching a well-understood, elementary design for a unitary tortuous path. A POSITA would have found it obvious to use Dautrebande's simple, unitary construction to implement the tortuous path of the Rosener/Knoch combination.

Ground IV: Obviousness over Rubin - Claims 1-23 are obvious over Rubin in view of the Knowledge of a POSA.

• Prior Art Relied Upon: Rubin (WO 2012/026963).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that the Rubin reference, which is directed to a medical aerosol delivery device, discloses all elements of claims 1-23. Petitioner mapped Rubin's "chimney 121" and its associated "extension guides 122" to the claimed insert. The path around these guides was argued to form the "tortuous passage." The "spiraling" limitation of claim 1 was allegedly met by Rubin’s disclosure that its baffles may be "curved or spiral-shaped to cause cyclonic action." Further, the "indentation" with an impact surface of claim 5 was mapped to the conical shape of Rubin's chimney, which serves to condense and remove larger droplets from the aerosol flow.
  • Motivation to Combine (for §103 grounds): This ground asserted that a POSITA would find it obvious to adapt the teachings of Rubin's medical device for the analogous, and less complex, field of scent diffusion. The underlying aerosolization and particle separation technologies were argued to be virtually identical. The motivation would be to apply Rubin's effective particle-sizing system to a scent diffuser, a simple substitution of one application for another.
  • Expectation of Success (for §103 grounds): Success would be expected because the modification primarily involves simplifying Rubin's device (e.g., removing medical-specific features like an inhalation-activated valve) while retaining the core aerosol-conditioning structures for a known purpose.
• Additional Grounds: Petitioner asserted additional obviousness challenges, including a combination of Rosener, Knoch, and Svoboda (for claims 6 and 24) and a combination of Rubin and Dautrebande (for claim 24). These grounds relied on similar rationales of combining known art to add features like diverging impaction surfaces or convoluted anti-spill flow paths.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under the Fintiv factors by highlighting that a co-pending litigation (Prolitec, Inc. v. ScentAir Technologies, Inc., D. Del.) was in its "very earliest stages." The complaint was filed just over two months before the IPR petition. Petitioner asserted that because the District of Delaware typically grants stays pending IPR, instituting review would simplify issues for trial and conserve judicial and party resources, weighing in favor of institution.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-24 of Patent 9,162,004 as unpatentable.