ScentAir Technologies LLC v. Prolitec Inc

1. Case Identification

• Case #: IPR2021-00014
• Patent #: 9,745,976
• Filed: October 1, 2020
• Petitioner(s): ScentAir Technologies, LLC
• Patent Owner(s): Prolitec, Inc.
• Challenged Claims: 1-25

2. Patent Overview

• Title: Removable Cartridge for Liquid Diffusion Device and Cartridge Insert Thereof
• Brief Description: The ’976 patent discloses a removable cartridge for a liquid diffusion device, such as a room scenter. The system uses a venturi to create an aerosol, which then passes through a cartridge insert with a tortuous passage designed to reduce and homogenize the aerosol particle size via impaction before discharge.

3. Grounds for Unpatentability

Ground I: Obviousness of Claims 1, 4, 6-10, 13, 15-17, 21-22, and 24-25 over Rosener

• Prior Art Relied Upon: Rosener (Application # 2011/0089252).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Rosener, in view of a POSA's knowledge, discloses all limitations of the challenged claims. Rosener teaches a fragrance nebulizer with a reservoir assembly (cartridge housing), a venturi atomizer, and a downstream insert. This insert is composed of a cylindrical section and a funnel-shaped assembly that forces the aerosolized mist through a tortuous path. Petitioner asserted this structure, which forces the airstream around "tight bends and corners," directly corresponds to the claimed tortuous passage for reducing particle size via impaction. The petition further contended that Rosener’s described airflow path, which moves upward through holes and exits through a nozzle, meets the independent claim limitation of a tortuous passage being "open in an upward direction."
  • Motivation to Combine (for §103 grounds): As this ground is based on a single reference plus the knowledge of a POSA, the motivation was inherent in Rosener’s stated goal of separating particles of a desirable size from those too large for output. A POSA would recognize that the structures in Rosener are intended to perform the exact function claimed in the ’976 patent.
  • Expectation of Success (for §103 grounds): A POSA would have a high expectation of success because Rosener explicitly teaches using physical impaction to separate particles, a well-understood principle in aerosol science, and describes a complete, functional device for doing so.

Ground II: Obviousness of Claims 2 and 11 over Rosener in view of King

• Prior Art Relied Upon: Rosener (Application # 2011/0089252), King (Patent 7,493,898).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground I to address dependent claims 2 and 11, which further require the tortuous passage to be spiral. While Rosener taught the base device, Petitioner asserted that King supplied the missing spiral element. King, directed to a medicinal inhalation apparatus, explicitly discloses a baffle with a "generally spiral-shaped wall" to create a circuitous fluid flow path for particle sizing. Petitioner argued a POSA would integrate King’s spiral baffle into the cylindrical section of Rosener’s insert to create the claimed spiraling passage.
  • Motivation to Combine (for §103 grounds): A POSA would combine Rosener and King as both references address the identical problem of creating small airborne particles via impaction in a tortuous passage. A POSA seeking to improve Rosener's particle separation would have looked to known techniques for creating circuitous paths, such as the spiral baffle taught by King.
  • Expectation of Success (for §103 grounds): The combination was argued to be a predictable application of a known design element (a spiral path) to improve a known device (an aerosolizer), yielding the expected result of more efficient particle separation without any undue experimentation.

Ground V: Obviousness of Claims 1-22 and 24-25 over Rubin

• Prior Art Relied Upon: Rubin (WO 2012/026963).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner presented Rubin as an alternative primary reference that, with the knowledge of a POSA, renders the claims obvious. Rubin discloses an aerosol delivery device with a liquid reservoir (cartridge), a jet nozzle (venturi), and a downstream interior chamber containing a chimney with extension guides. Petitioner argued these elements inherently create a "more tortuous flow path" to reduce particle size and prevent larger droplets from exiting. The petition mapped Rubin's chimney and guides to the claimed "insert," the space around them to the "tortuous passage," and the top of the device to the "outlet zone." It was argued that configuring the outlet for upward discharge, as shown in some of Rubin's own figures, would be an obvious design choice for a scent diffuser to achieve better room dispersion.
  • Motivation to Combine (for §103 grounds): The motivation was based on implementing Rubin's teachings for their stated purpose. Rubin explicitly aimed to reduce particle size by using a tortuous path. A POSA applying Rubin's device to a scenting application would be motivated to orient the discharge upward, a common and preferable configuration for such devices.
  • Expectation of Success (for §103 grounds): A POSA would have a high expectation of success as Rubin describes a complete and functional system for aerosol particle size control using the same principles and similar structures as those claimed in the ’976 patent.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combining Rosener with Dautrebande (Patent 2,605,089) or Svoboda (Patent 4,746,067), and combining Rubin with Dautrebande. These combinations were used to teach further limitations found in dependent claims, such as a unitary insert body and specific impact surface configurations.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) based on the Becton Dickinson factors would be inappropriate because its grounds were not the same or substantially the same as arguments previously presented to the USPTO.
• The petition stressed that its primary references, Rosener and Rubin, were never considered during the original prosecution. Although Dautrebande was cited as an anticipatory reference during examination and King was part of an IDS, Petitioner argued they were being used in a new context here—as secondary references combined with new primary art—which fundamentally changed the unpatentability argument. Petitioner contended the Examiner did not err in analyzing Dautrebande itself, but rather failed to appreciate that other overlooked prior art (Rosener and Rubin) taught the very features the Patent Owner added to the claims to overcome the Dautrebande rejection.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-25 of Patent 9,745,976 as unpatentable.