JUUL LABS, INC. v. NJOY, LLC

1. Case Identification

• Case #: IPR2023-00160
• Patent #: 11,497,864
• Filed: June 25, 2019
• 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 relates to electronic cigarettes, specifically to a device comprising a power source and a separable cartridge. The cartridge contains a heating element, a solution holding medium, and an airflow passageway for vaporizing a nicotine 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 Patent Application Publication No. CN101366554), and Fang (Chinese Patent No. CN 201085044Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Xia, the primary reference, discloses the core claimed invention: a two-part electronic cigarette with a power source and a separable cartridge. Xia’s cartridge includes a housing, a solution holding medium, a heating element, and an airflow passageway with first and second apertures. Petitioner asserted that Xia’s design, which features an internal first aperture and a central airflow passageway obstructed by other components, meets the claim limitations, especially when interpreted consistently with the Patent Owner's infringement positions in parallel litigation on a parent patent. Wang and Fang were introduced as teaching obvious alternative designs, such as a central airflow passageway extending through the entire solution holding medium (Wang) or a known coiled heating element configuration (Wang, Fang). For example, modifying Xia’s airflow passageway to be consistent with Wang’s—where the solution medium surrounds a complete central air channel—was presented as a simple substitution of known elements.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings because all three references address the same technology (handheld electronic cigarettes) and were published within an 11-month period. A POSITA would be motivated to modify Xia with elements from Wang or Fang to achieve predictable benefits like improved airflow, better temperature control, increased liquid capacity, and simpler manufacturing, all of which were known goals in the art.
  • Expectation of Success: A POSITA would have a high expectation of success because the combination involves substituting known, predictable components in a well-understood field to achieve foreseeable improvements.

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

• Prior Art Relied Upon: Wang (Chinese Patent Application Publication No. CN101366554) and Fang (Chinese Patent No. CN 201085044Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Wang alone discloses most of the claimed elements. Wang teaches a two-part e-cigarette with a separable cartridge containing a housing, a solution holding medium (absorbent organic fiber), and a heating element positioned within a hollow, central airflow channel. The heating element is transverse to the longitudinal axis and is partially exposed to the airflow. Fang was introduced to teach any remaining details, such as a different transverse heating element configuration. Petitioner argued that modifying Wang's design to incorporate Fang's heating element and wick configuration was an obvious design choice.
  • Motivation to Combine: A POSITA would be motivated to modify Wang’s device with elements from Fang to further optimize performance. For example, incorporating Fang's heating element design could increase the heater's surface area contacting the airflow and nicotine solution, create a wider and more uniform airflow passageway, and enhance portability.
  • Expectation of Success: The combination would yield predictable results, as it involves integrating components from two very similar devices in the same technical field to achieve known benefits.

4. Key Claim Construction Positions

• Petitioner asserted that the Patent Owner’s own infringement arguments in prior and parallel litigation on the parent ’881 patent should inform the claim scope. Two key interpretations were highlighted:
  • "first aperture on the first end": This limitation is met by an aperture that is internal to the cartridge housing, not necessarily on the exterior surface. Air can enter through external side inlets and converge at this internal aperture, which still satisfies the "on the first end" requirement.
  • "airflow passageway [that] extends centrally and axially": This limitation refers to the structural definition of the passageway itself. The passageway can meet this definition even if components within it (like a positive pin or portions of the solution medium) obstruct or divert the actual path of the airflow away from the central axis.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be improper. Although the prior art references (Xia, Wang, Fang) were disclosed to the USPTO during prosecution of the ’864 patent via an Information Disclosure Statement (IDS), the prosecution history is silent on any substantive consideration of them. Petitioner contended that the Examiner did not review the references in detail or address the specific invalidity arguments presented in the petition. Therefore, the petition raises new, substantial questions of patentability that the Examiner did not previously consider, making institution appropriate.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-48 of the ’864 patent as unpatentable under 35 U.S.C. §103.