Jupiter Research LLC v. VPR Brands LP

1. Case Identification

• Case #: IPR2022-00299
• Patent #: 8,205,622
• Filed: December 20, 2021
• Petitioner(s): Jupiter Research, LLC
• Patent Owner(s): VPR Brands, L.P.
• Challenged Claims: 13-18

2. Patent Overview

• Title: Electronic Cigarette
• Brief Description: The ’622 patent relates to an electronic cigarette comprised of two main detachable tubular parts: an electronic inhaler and an electronic atomizer. The device uses an electric airflow sensor, such as a diaphragm microphone, to detect a user's inhalation and activate a microcontroller that controls the power supplied to the atomizer for vaporizing a liquid solution.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 13-15, 17, and 18 by Hon

• Prior Art Relied Upon: Hon (Patent 8,375,957).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hon, which was not considered during the original examination, discloses every element of the challenged claims. Hon teaches a two-part electronic cigarette with a tubular inhaler (battery assembly) and a detachable tubular atomizer. It includes an electric power source (lithium-ion battery) that provides current to the atomizer. The device features an electric airflow sensor with a flexible “silica gel corrugated membrane” (diaphragm) that detects user suction. This sensor sends a signal to an MCU (“Single Chip Micyoco”) that, in turn, controls the power to the atomizer, including the time period and magnitude of the current. Petitioner asserted that Hon’s disclosure of a sensor with a flexible diaphragm that responds to pressure changes to generate a signal meets the “diaphragm microphone” limitation. Hon also discloses dependent claim features, including an LED indicator controlled by the MCU and the sequential arrangement of components within the atomizer.

Ground 2: Obviousness of Claim 16 over Cox in view of Hon

• Prior Art Relied Upon: Cox (Patent 6,234,167) and Hon (Patent 8,375,957).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Cox teaches a base electronic cigarette with all the components required by claim 16: a tubular inhaler, atomizer, power source, airflow sensor, a circuit board for a microchip (“Single Chip Micyoco”), and an electric connector. However, Cox does not explicitly disclose the components in the specific sequence recited in claim 16. Hon was argued to teach a similar device that includes a cigarette cap and arranges the components in a sequence where the airflow sensor and circuit board are reversed relative to the claim.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine the teachings because Cox explicitly states that the location and sequence of individual components are not material to the device's function and can be arranged as appropriate for a particular application. A POSITA would thus have been motivated to arrange the known components from Cox in the conventional and functional sequence taught by Hon to create a predictable and operative device.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involves the simple rearrangement of known electronic cigarette components from the same field of art, which would result in a predictable functioning device.

Ground 3: Obviousness of Claims 16, 17, and 18 over Cox in view of Zhu

• Prior Art Relied Upon: Cox (Patent 6,234,167) and Zhu (Chinese Patent Application Publication No. CN 201104488Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Cox provides the foundational two-part e-cigarette system with an airflow sensor and controller, while Zhu supplies the specific component arrangements and features to render the claims obvious. For claim 16, Zhu was asserted to teach the specific sequential layout of components in the inhaler, including a cap, LED, power supply, airflow sensor, and circuit board with a microcontroller. For claim 17, while Cox’s device uses pressure to deliver liquid, Zhu teaches an atomizer with a container and media (medicinal cotton fibers) soaked in a solution. For claim 18, Zhu was argued to disclose the recited sequential order of components in the atomizer, including an electric connector, leak-proof piece, supporting piece, and heater.
  • Motivation to Combine: A POSITA would combine Cox's foundational system with Zhu's specific implementations as a matter of routine design choice. For claim 17, it would have been obvious to incorporate Zhu's wicking media into a non-pressurized version of Cox’s device to ensure reliable liquid delivery to the heater. For claims 16 and 18, given Cox’s teaching that component order is not critical, a POSITA would have been motivated to adopt the specific, functional component sequences disclosed in Zhu.
  • Expectation of Success: Combining known features from analogous e-cigarette devices, such as a wicking system or a particular component layout, was a straightforward design modification with predictable results and a high expectation of success.
• Additional Grounds: Petitioner asserted an additional anticipation challenge (Ground 2) against claims 13-15 based on Cox.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §314(a) based on Fintiv factors. It contended that the parallel district court litigation was in its early stages, with no trial date set, no claim construction order issued, and minimal investment by the parties and the court. Petitioner further argued that the IPR raises different issues because the prior art references (Hon, Cox, and Zhu) were not before the Examiner and have not been substantively argued in the court proceeding, thus favoring institution to enhance patent quality and promote judicial efficiency.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 13-18 of the ’622 patent as unpatentable.