RJ Reynolds Vapor Co v. Altria Client Services LLC

1. Case Identification

• Case #: IPR2021-00650
• Patent #: 10,143,242
• Filed: March 12, 2021
• Petitioner(s): R.J. Reynolds Vapor Company
• Patent Owner(s): Altria Client Services LLC
• Challenged Claims: 1-9

2. Patent Overview

• Title: Electronic Vaping Device
• Brief Description: The ’242 patent is directed to an electronic vaping device, or e-cigarette, comprising a battery portion and a cartridge portion. During prosecution, the claims were allowed based on the addition of a limitation requiring an end region of the cartridge to extend into the mouthpiece such that the mouthpiece surrounds that portion of the cartridge.

3. Grounds for Unpatentability

Ground 1: Obviousness over Chen and Qiu - Claims 1-3 and 6-9 are obvious over Chen in view of Qiu.

• Prior Art Relied Upon: Chen (WO 2015/071703) and Qiu (Chinese Patent No. CN 201213951Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen, an e-cigarette reference, disclosed every limitation of independent claim 1 except for an air-flow sensor. Crucially, Chen was asserted to teach the key limitation upon which the ’242 patent was allowed: an e-cigarette configuration where an end region of the cartridge extends into the mouthpiece, and the mouthpiece surrounds at least a portion of that end region. Chen also taught dependent claim limitations related to mint flavors (claims 2, 3), menthol taste (claim 6), a central and cylindrical airflow tube (claims 7, 8), and how the cartridge couples with the battery portion.
  • Motivation to Combine (for §103 grounds): Petitioner asserted that Chen did not disclose a specific mechanism for activating the device. Qiu disclosed a standard air-flow sensor (termed a "gas sensor") located in the battery portion to automatically activate the device upon user inhalation. A POSITA would combine Qiu’s sensor with Chen’s device to incorporate a well-known, convenient, and safe method of activation that avoids inadvertent operation and provides a more realistic user experience compared to a manual button.
  • Expectation of Success (for §103 grounds): A POSITA would have had a reasonable expectation of success, as air-flow sensors were common components routinely integrated into e-cigarettes at the time of the invention.

Ground 2: Obviousness over Lee and Qiu - Claims 1 and 7-9 are obvious over Lee in view of Qiu.

• Prior Art Relied Upon: Lee (Korean Patent No. 10-2012-0080287) and Qiu (Chinese Patent No. CN 201213951Y).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Lee, another e-cigarette reference, also disclosed all limitations of claim 1 except for the air-flow sensor. Like Chen, Lee taught the key "extending into" mouthpiece-cartridge configuration. However, Lee’s device was activated by a manual pressure switch (button) rather than by user inhalation. Lee also disclosed the airflow tube limitations of dependent claims 7 and 8.
  • Motivation to Combine (for §103 grounds): The motivation was analogous to Ground 1. A POSITA would replace Lee’s manual button with Qiu’s air-flow sensor to improve the device’s functionality, convenience, and safety. This modification represented a simple substitution of one known activation method for another known, and often preferred, alternative.
  • Expectation of Success (for §103 grounds): The expectation of success was high for the same reasons as in Ground 1, as this was a predictable and well-understood design choice in the field.

• Additional Grounds: Petitioner asserted additional obviousness challenges to address the remaining dependent claims. These grounds combined the base references of Chen or Lee with Qiu, and further added Dubief (WO 2013/083638) for teaching glycerin and propylene glycol (claim 4), and Sheikh (Application # 2010/0031968) or Zheng (Application # 2013/0008457) for teaching a tobacco fragrance (claim 5).

4. Key Claim Construction Positions

• For the purposes of the IPR, Petitioner adopted the claim constructions proposed by the Patent Owner in co-pending district court litigation. This strategy was employed to demonstrate that the claims were obvious even under the Patent Owner's own interpretations.
• "Air-flow sensor": Petitioner adopted the Patent Owner's proposed construction of "A device that senses either the absolute value or a change in a physical quantity indicating the presence of airflow."
• "the cartridge": Petitioner adopted the Patent Owner's position that the term should be given its plain and ordinary meaning, which the Patent Owner contended was a multi-piece structure including a liquid tank, heating coil, wick, and airflow tube.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise discretionary denial under §314(a) or the Fintiv factors. The petition relied on prior art references (Chen, Lee, Qiu, etc.) that were not before the examiner during original prosecution, thus presenting new and compelling questions of patentability suited for the Board's expertise.
• Petitioner further argued that the co-pending litigation schedule was highly uncertain due to indefinite postponements related to the COVID-19 pandemic. At the time of filing, no trial date was set, and a trial was not anticipated until late 2022 at the earliest, well after the statutory deadline for a Final Written Decision in the IPR.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1-9 of the ’242 patent as unpatentable under 35 U.S.C. §103.