JUUL Labs Inc v. NJOY LLC

1. Case Identification

• Case #: IPR2023-00161
• Patent #: 10,334,881
• Filed: November 8, 2023
• Petitioner(s): JUUL Labs, Inc.
• Patent Owner(s): NJOY, LLC
• Challenged Claims: 1-27

2. Patent Overview

• Title: Electronic Vaporizer
• Brief Description: The ’881 patent relates to an electronic vaporizer, or "e-cigarette," configured to deliver nicotine vapor. The invention is directed to a two-part design comprising a power source section with a battery and a separable cartridge section that includes a heating element, a liquid solution, and an airflow passageway.

3. Grounds for Unpatentability

Ground 1: Obviousness over Xia alone and in view of Wang and/or Fang - Claims 1-27

• Prior Art Relied Upon: Xia (Chinese Patent No. CN 201238610Y), Wang (Chinese Application Publication No. CN 101366554A), and Fang (Chinese Application Publication No. CN 201085044Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Xia, an "atomizing electronic cigarette," discloses all key limitations of the independent claims. Xia teaches a two-part device with a detachable controller (power source) and a cartridge ("generator") containing a heating element, a solution holding medium, and an airflow passageway. Citing the Patent Owner's own positions in prior litigation, Petitioner asserted that Xia's internal air inlet qualifies as the claimed "first aperture on the first end" and that its central channel qualifies as a "central and axial airflow passageway" despite containing obstructions that divert the airflow path.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Xia with Wang to implement a known, improved design where the airflow passageway runs centrally through the solution holding medium, rather than having the medium obstruct the passageway. This modification, taught by Wang, would create smoother airflow, improve temperature control, and simplify manufacturing. A POSITA would be motivated to incorporate Fang to use its known central passageway design or its sealed, impermeable reservoir to prevent liquid from being ingested by the user.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success as all references are directed to the same predictable art of e-cigarettes, use similar components for similar functions, and were published within an eleven-month period.

Ground 2: Obviousness over Wang alone and in view of Fang - Claims 1-27

• Prior Art Relied Upon: Wang (Chinese Application Publication No. CN 101366554A) and Fang (Chinese Application Publication No. CN 201085044Y).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Wang alone renders the claims obvious. Wang discloses a two-part electronic cigarette with a battery-holding component and an attachable cartridge. The cartridge contains a heating element positioned within a "complete central air passageway," which is itself surrounded by an absorbent organic fiber that serves as the solution holding medium. This structure was argued to teach the core limitations of the challenged claims, including the central airflow passageway surrounded by the solution medium.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Wang with Fang to improve the device. For example, a POSITA would be motivated to modify Wang's absorbent fiber solution holder with Fang's hard, impermeable reservoir to prevent liquid leakage and allow for easier replacement of the absorbent material. Further motivation existed to orient Wang's heating element perpendicularly across the airflow, as taught by Fang, to increase the heated surface area, improve vapor production, and create a more compact design.
  • Expectation of Success (for §103 grounds): The proposed modifications involve combining known elements from highly similar prior art devices to achieve predictable improvements in a well-established technical field.

4. Key Claim Construction Positions

• "first aperture on the first end": Petitioner argued, based on the Patent Owner's successful infringement positions in prior litigation, that this limitation is met by a single opening inside the cartridge housing where external air converges. It does not require the aperture to be on the outermost physical edge of the cartridge. This interpretation was central to Petitioner's argument that Xia's internal air inlet satisfies the claim limitation.
• "airflow passageway that extends centrally and axially": Relying on a prior district court summary judgment ruling involving the ’881 patent's family, Petitioner contended this limitation describes the structural passageway itself, not the path of the airflow. Therefore, a passageway is "central and axial" even if it contains obstructions (like a positive pin or solution medium) that divert the actual airflow away from the central axis. This construction was used to argue that the passageways in both Xia and Wang 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, the examiner's review was not substantive. The prosecution history is silent regarding any detailed consideration of these references or the specific arguments and combinations presented in the petition. Petitioner asserted the examiner erred by overlooking persuasive art and that denial is inappropriate when the primary evidence of consideration is a mere citation in an Information Disclosure Statement (IDS).

6. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 1-27 of Patent 10,334,881 as unpatentable under 35 U.S.C. §103.