RJ Reynolds Vapor Co v. Philip Morris Products SA

1. Case Identification

• Case #: IPR2021-00585
• Patent #: 10,555,556
• Filed: February 27, 2021
• Petitioner(s): R.J. Reynolds Vapor Company
• Patent Owner(s): Philip Morris Products S.A.
• Challenged Claims: 1, 3-9, 15, 18, 20-21, and 25-26

2. Patent Overview

• Title: Cartridge for an Aerosol-Generating System
• Brief Description: The ’556 patent discloses a cartridge for an aerosol-generating system, such as an electronic cigarette. The invention centers on a liquid storage portion with two capillary materials arranged to transfer a liquid aerosol-forming substrate from a container to a heater assembly.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3-9, 15, 18, 20-21, and 25-26 are obvious over Hearn alone or in view of Rabin.

• Prior Art Relied Upon: Hearn (Application # 2013/0056012) and Rabin (Patent 7,920,777).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hearn, a simulated cigarette device, discloses all limitations of the challenged claims. Hearn’s replaceable reservoir contains a single capillary plug with regions of varying pore sizes, created by compressing the plug near the outlet valve. Petitioner asserted this compressed portion constitutes the claimed "first capillary material" provided near the housing's opening, while the non-compressed portion constitutes the "second capillary material" spaced from the opening by the first. Alternatively, if distinct materials are required, Rabin discloses a vaporizer with a stacked arrangement of two different capillary materials (a porous member and a thermal insulator) that perform the same function.
  • Motivation to Combine (for §103 grounds): A POSITA starting with Hearn’s design, which uses compression to alter pore size, would combine it with Rabin to explore alternative methods of enhancing wicking. Rabin taught using distinct materials with inherently different pore sizes to achieve improved capillary action, representing a known and obvious design choice to achieve the same goal of efficient liquid transport without requiring a compression step.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as combining known wicking technologies from Rabin with the vaporizer cartridge of Hearn involved applying predictable principles of capillary flow.

Ground 2: Claims 1, 4-8, 15, 18, 21, and 25 are obvious over Terry in view of Thorens.

• Prior Art Relied Upon: Terry (Patent 8,314,591) and Thorens (Patent 8,794,231).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Terry’s personal vaporizer discloses a cartridge with two distinct wicks that meet the limitations for the first and second capillary materials. Terry’s proximal wick is near the opening of the atomizer housing, and the distal wick is in fluid contact with it, spaced from the opening. To the extent Terry is viewed as having separate housings for the liquid cartridge and the atomizer, Thorens taught a single, removable cartridge that encloses the liquid tank, wick, and heater together.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Terry and Thorens to solve the known problems of leakage and heater clogging in electronic cigarettes. Thorens provided an explicit reason for its single-cartridge design: it allows all elements in contact with the liquid to be replaced at once, reducing the chance of clogging. Modifying Terry’s device to incorporate this known advantageous design from Thorens would have been a straightforward improvement.
  • Expectation of Success (for §103 grounds): Success would be expected because the combination merely involved integrating the atomizer and wicks of Terry into a single removable cartridge housing as taught by Thorens, a simple mechanical integration of components from the same technical field.

Ground 3: Claims 3, 9, and 26 are obvious over Terry in view of Thorens and Rabin.

• Prior Art Relied Upon: Terry (Patent 8,314,591), Thorens (Patent 8,794,231), and Rabin (Patent 7,920,777).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground adds Rabin to the Terry and Thorens combination to teach limitations recited in dependent claims. For claim 3, Rabin explicitly disclosed using a first capillary material (porous member) with a smaller average pore size than the second capillary material (insulator component) to better control liquid flow and prevent oversaturation of the heater. For claims 9 and 26, Rabin taught applying compressive mechanical forces to its stacked capillary materials to prevent vapor and liquid leakage, thereby teaching the compression limitation.
  • Motivation to Combine (for §103 grounds): After creating the improved single-cartridge device from Terry and Thorens, a POSITA seeking to further optimize performance would combine it with Rabin. Rabin provided known solutions for improving liquid delivery and preventing leakage in vaporizers—using differential pore sizes and compression—which were directly applicable to the problems faced in designing electronic cigarettes.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in applying Rabin’s established principles of capillary flow control and mechanical sealing to the Terry/Thorens combination, as these were well-understood engineering optimizations in the art.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that institution is warranted and discretionary denial under §325(d) is inappropriate because the primary references relied upon (Rabin, Terry, Thorens) were never considered during the original prosecution. Although a counterpart to Hearn was cited in an IDS, Petitioner contended it was not substantively reviewed by the Examiner, and the combination with Rabin presents new arguments and evidence of unpatentability.
• Regarding potential denial under §314(a), Petitioner argued that the parallel district court litigation trial was unlikely to occur until late 2022 due to court backlogs, making IPR a more efficient and timely forum for resolving the patentability of the challenged claims.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1, 3-9, 15, 18, 20-21, and 25-26 of the ’556 patent as unpatentable.