RJ Reynolds Vapor Co v. Altria Client Services LLC

1. Case Identification

• Case #: IPR2021-00652
• Patent #: 10,264,824
• Filed: March 12, 2021
• Petitioner(s): R.J. Reynolds Vapor Company
• Patent Owner(s): Altria Client Services LLC
• Challenged Claims: 1-18

2. Patent Overview

• Title: Electronic Vaping Device
• Brief Description: The ’824 patent discloses an electronic vaping device, or e-cigarette, comprising a battery portion and a cartridge assembly. The core inventive concept asserted during prosecution was the physical relationship between the cartridge and mouthpiece, where an end region of the cartridge portion extends into the mouthpiece such that the mouthpiece surrounds at least part of that end region.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 8, 10-13, and 17 are anticipated by Chen.

• Prior Art Relied Upon: Chen (WO 2015/071703).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Chen, which was not considered during prosecution, discloses every limitation of the challenged claims. Chen describes an electronic cigarette with a battery unit (30) and a cartridge assembly. This assembly includes a cartridge portion (disposable liquid container 110, atomizing head 40) and a mouthpiece (housing 20). Critically, Petitioner asserted that Chen’s figures show an end region of the cartridge portion extending into the hollow mouthpiece, which in turn surrounds that end region, directly teaching the limitation the Examiner previously found distinguished the claims from the prior art of record. Chen also allegedly disclosed all other elements, including a wick, heating coil, airflow tube, and liquid, as well as features of dependent claims like flavorings (mint, strawberry) and a removable mouthpiece.
  • Key Aspects: The argument centered on demonstrating that the single limitation added during prosecution to overcome the Thompson reference was, in fact, explicitly disclosed in Chen.

Ground 2: Claims 1-2, 8-11, and 17-18 are anticipated by Lee.

• Prior Art Relied Upon: Lee (Korean Patent No. 10-2012-0080287).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Lee, also not before the Examiner, anticipates the challenged claims. Lee discloses an e-cigarette with a battery assembly (11) and a cartridge assembly. The cartridge portion (storage housing 13, guide chamber 12) is shown to connect with a mouthpiece (inhalation piece 15). Petitioner argued that Lee’s figures clearly illustrate that when assembled, the end region of the cartridge portion (proximal end of storage housing 13) extends into the mouthpiece, and the mouthpiece surrounds that end region. Lee also allegedly teaches all other claimed elements, including a heating coil wrapped around a wick (heating element 133, fiber assembly F), an airflow tube (air conduit 127a), nicotine liquid, and a detachable mouthpiece.

Ground 3: Claims 3, 4, 7, 12, 13, and 16 are obvious over Lee in view of Sheikh.

• Prior Art Relied Upon: Lee (Korean Patent No. 10-2012-0080287) and Sheikh (Application # 2010/0031968).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that to the extent Lee does not explicitly disclose liquids with specific flavors, Sheikh remedies this deficiency. Sheikh teaches a replaceable liquid cartridge for an e-cigarette that may be filled with various flavors, including tobacco, chocolate, mint, and others, and may also contain menthol. The ’824 patent itself admitted that flavored liquids, including menthol, were known in the art.
  • Motivation to Combine: A POSITA would combine Lee's device with Sheikh's teachings on flavored liquids to improve the user experience and cater to user preferences. Mint and menthol were common and popular flavors for e-cigarettes at the time.
  • Expectation of Success: A POSITA would have a high expectation of success in incorporating known flavors like mint or menthol into the liquid of a standard e-cigarette device like Lee's, as it was a routine and predictable modification.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on Chen or Lee in view of Dubief (for adding glycerin and propylene glycol) and Zheng (for adding tobacco fragrance), relying on similar motivations to combine known elements to achieve predictable results.

4. Key Claim Construction Positions

• Petitioner adopted the claim constructions asserted by the Patent Owner in co-pending litigation for the purposes of the IPR petition. These constructions were central to mapping the prior art onto the claims.
• “Cartridge” / “Cartridge Portion”: Construed as a multi-piece structure comprising a liquid tank, heating coil, wick, airflow tube, and the connecting structures containing them.
• “Housing”: Construed as the outer surface of the “cartridge portion,” which is itself a multi-piece structure.
• “Mouthpiece”: Given its plain and ordinary meaning, which includes not only the fluted end but also the outer shell of the device extending from it.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) and the Fintiv factors. The core arguments were that the petition raised substantial new questions of patentability based on prior art (Chen and Lee) that was never considered by the USPTO. Furthermore, Petitioner asserted that the trial date in the parallel district court litigation was uncertain and not imminent, having been indefinitely postponed due to the COVID-19 pandemic, making an IPR the more efficient path to resolution.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of the ’824 patent as unpatentable.