JUUL Labs Inc v. NJOY LLC

1. Case Identification

• Case #: IPR2023-00160
• Patent #: 11,497,864
• Filed: November 8, 2023
• Petitioner(s): JUUL Labs, Inc.
• Patent Owner(s): NJOY, LLC
• Challenged Claims: 1-48

2. Patent Overview

• Title: Electronic Vaporizer
• Brief Description: The ’864 patent discloses electronic cigarette devices, specifically relating to a two-part design comprising a power source and a separable cartridge. The cartridge contains a housing, a solution holding medium, a heating element, and an airflow passageway to vaporize a solution for inhalation.

3. Grounds for Unpatentability

Ground 1: Claims 1-48 are obvious over Xia in view of Wang and/or Fang.

• Prior Art Relied Upon: Xia (Chinese Patent No. 201238610), Wang (Chinese Application # CN 101366554A), and Fang (Chinese Patent No. CN 201085044Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Xia, the primary reference, discloses all major elements of the challenged claims, including a two-part electronic vaporizer with a separable power source and cartridge. Petitioner asserted that Xia teaches a cartridge with a housing, solution holding medium, heating element, and a central airflow passageway. Citing a district court's broad construction of similar terms in a parent patent's litigation, Petitioner contended that Xia's internal aperture meets the "first aperture" limitation and its obstructed passageway still qualifies as "centrally and axially" located. To the extent Xia is found deficient, Wang and Fang explicitly teach a central airflow passageway surrounded by a solution holding medium, making the combination obvious. For instance, Wang discloses an absorbent organic fiber that "surrounds a complete central air passageway."
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine the teachings of these references because they all address the same predictable technology: handheld, cigarette-like electronic vaporizers. Modifying Xia’s cartridge with the known central airflow passageway design from Wang would be an obvious substitution of known elements. This modification would yield predictable benefits like improved and smoother airflow, better temperature control, increased liquid storage capacity, and simpler, cheaper manufacturing.
  • Expectation of Success: A POSITA would have a high expectation of success, as the combination involves integrating known components from very similar devices to achieve their established functions. For example, replacing Xia’s airflow path with Wang’s more defined central channel is a straightforward design choice with predictable, beneficial results.

Ground 2: Claims 1-48 are obvious over Wang in view of Fang.

• Prior Art Relied Upon: Wang (Chinese Application # CN 101366554A) and Fang (Chinese Patent No. CN 201085044Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wang alone renders the claims obvious, as it discloses a two-part e-cigarette with a cartridge containing a central airflow passageway surrounded by a solution holding medium (absorbent organic fiber). The heating element in Wang is positioned within this central passageway. To the extent Wang’s heating element orientation is deemed non-transverse, Fang explicitly teaches a transverse heating element that is at least partially exposed to the airflow. The combination of Wang's overall design with Fang's heating element configuration renders the claims obvious.
  • Motivation to Combine: A POSITA would be motivated to modify Wang's design with elements from Fang to improve performance. For example, incorporating Fang’s transverse heating element into Wang’s cartridge would increase the heating element's surface area contact with both the airflow and the nicotine solution. This would provide more efficient vaporization and a wider airflow passageway, improving the user experience. The combination is a simple design choice aimed at achieving predictable functional improvements in a well-known field.
  • Expectation of Success: Success would be highly probable, as it involves incorporating a known heating element configuration (from Fang) into a similar, compatible device (Wang). This modification would not result in unpredictable outcomes.

4. Key Claim Construction Positions

• Petitioner relied on claim constructions adopted by the U.S. District Court for the Middle District of North Carolina in litigation over a parent patent. These constructions are central to Petitioner's obviousness arguments.
  • "first aperture on the first end": Petitioner argued that based on the court's prior ruling, this limitation is met by an aperture that is internal to the device housing, not necessarily on the exterior edge. This interpretation allows Petitioner to argue that the internal air inlets in Xia and Wang satisfy the claim limitation.
  • "airflow passageway [that] extends centrally and axially": Petitioner asserted that, consistent with the court's prior summary judgment of infringement, a passageway meets this limitation even if it contains obstructions (like a positive pin or silicone base) that alter the actual path of the air. The court previously distinguished the structural "passageway" from the "airflow's path," a distinction Petitioner leverages to argue that the obstructed passageways in the prior art are analogous to the previously adjudicated infringing products and thus meet the claim limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) would be improper. Although the Xia, Wang, and Fang references were disclosed to the USPTO during prosecution of the ’864 patent, Petitioner contended the examiner did not substantively review them. The prosecution history is silent on their teachings, and no rejections were made based on these references or the combinations now asserted. Petitioner argued that when the Office's record of consideration is "not well developed or silent," the Board should not deny institution, as the examiner likely erred by overlooking persuasive invalidity arguments.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-48 of Patent 11,497,864 as unpatentable under 35 U.S.C. §103.