RJ Reynolds Vapor Co v. Philip Morris USA Inc

1. Case Identification

• Case #: IPR2021-00725
• Patent #: 6,803,545
• Filed: March 26, 2021
• Petitioner(s): R.J. Reynolds Vapor Company
• Patent Owner(s): Philip Morris USA, Inc.
• Challenged Claims: 1-4 and 7

2. Patent Overview

• Title: Electrically Heated Smoking System and Methods for Supplying Electrical Power from a Lithium Ion Power Source
• Brief Description: The ’545 patent discloses an electrically heated smoking system (e-cigarette) that uses a lithium-ion power source. The patent’s asserted novelty lies in using a controller to supply power in short, high-current pulses (under two seconds), which allegedly allows for the safe use of lithium-ion batteries in an application that would otherwise damage them.

3. Grounds for Unpatentability

Ground 1: Obviousness over Fleischhauer and Takeuchi - Claims 1-3 are obvious over Fleischhauer in view of Takeuchi.

• Prior Art Relied Upon: Fleischhauer (Patent 6,040,560) and Takeuchi (Patent 6,641,953).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Fleischhauer, a prior art patent from the same assignee, disclosed all elements of the claimed smoking system except for the use of a lithium-ion battery. Fleischhauer taught an e-cigarette with a controller that delivers modulated power pulses to a heating element for a total duration of 1.6 seconds to prevent battery damage. Petitioner asserted that Takeuchi, which was not before the examiner, explicitly taught a rechargeable lithium-ion battery cell specifically designed for high-rate pulse discharge applications (up to 64C for up to 5 seconds), directly contradicting the ’545 patent’s premise that such use was non-obvious or unsafe. The combination of Fleischhauer’s system with Takeuchi’s high-pulse battery allegedly rendered the claims obvious.
  • Motivation to Combine: A POSITA would combine Takeuchi with Fleischhauer to gain the well-known benefits of lithium-ion batteries (e.g., higher power density, no memory effect) over the older nickel-cadmium batteries used in systems like Fleischhauer's. Takeuchi’s disclosure of a battery suitable for high power pulses made it a fitting and predictable substitute for the power source in Fleischhauer’s high-pulse heating system.
  • Expectation of Success: A POSITA would have a high expectation of success because it was a simple substitution of one known power source for another. Takeuchi’s battery was shown to be capable of handling high discharge pulses for periods longer than required by Fleischhauer’s controller, ensuring the combination would be functional and safe.

Ground 2: Obviousness over Fleischhauer and Counts - Claims 1-3 are obvious over Fleischhauer in view of Counts ’962.

• Prior Art Relied Upon: Fleischhauer (Patent 6,040,560) and Counts ’962 (Patent 5,144,962).

• Core Argument for this Ground:

  • Prior Art Mapping: As in Ground 1, Fleischhauer provided the foundational e-cigarette system and controller. Petitioner argued that Counts ’962, another patent from the same assignee, explicitly taught that the power source for such a smoking article "may be any rechargeable or disposable battery, such as a rechargeable lithium manganese dioxide battery," which a POSITA would understand to be a type of lithium-ion battery.
  • Motivation to Combine: The motivation was exceptionally strong because Fleischhauer expressly incorporated Counts ’962 by reference, stating it "describes several types of power sources useful in connection with the smoking system of the present invention." This direct instruction from the primary reference to look to Counts ’962 for alternative power sources, combined with Counts ’962’s disclosure of lithium-ion batteries, provided a clear roadmap for a POSITA to make the combination.
  • Expectation of Success: Success would be expected and predictable. The combination amounted to following the explicit suggestion in Fleischhauer to use a power source taught in Counts ’962. Since Fleischhauer’s controller already limited the battery discharge to short, safe pulses, using the lithium-ion battery from Counts ’962 would predictably result in a functional system without damaging the battery.

• Additional Grounds: Petitioner asserted that claims 4 and 7 were obvious over the combinations of Fleischhauer/Takeuchi and Fleischhauer/Counts ’962 when considered in further view of the Panasonic Lithium Ion Batteries Technical Handbook ’00/01. The Panasonic Handbook was used to teach specific dependent claim limitations, including a battery discharge capacity of 250 to 2000 mAh (claim 4) and safety circuitry to stop current flow during a short circuit (claim 7).

4. Key Claim Construction Positions

• Petitioner stated it proposed no terms for construction at the time of filing.
• However, if Patent Owner were to assert a construction for "to prevent damage to the lithium ion power source," Petitioner argued for its plain and ordinary meaning. This would mean the controller prevents some type of damage (e.g., from overheating) by limiting the duration of power supply, not that it must prevent all possible types of damage.

5. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §325(d) and Fintiv.
• §325(d) (Same or Substantially the Same Art): Institution was warranted because Takeuchi was new prior art never considered by the examiner. Furthermore, while Fleischhauer and Counts ’962 were before the examiner in an IDS, the prosecution history was "very brief and limited," and the examiner never cited them in a rejection or provided any analysis of their teachings. Petitioner argued this lack of substantive evaluation meant the core arguments were not previously considered.
• Fintiv (Co-pending Litigation): Petitioner contended that institution was favored because the co-pending district court litigation trial was unlikely to occur until late 2022 at the earliest due to court backlogs. This timeline would ensure that a Final Written Decision in the IPR would issue well before any potential trial, promoting efficiency and avoiding conflicting outcomes.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-4 and 7 of the ’545 patent as unpatentable.