NJOY LLC v. JUUL Labs Inc

1. Case Identification

• Case #: IPR2024-00231
• Patent #: 10,130,123
• Filed: November 28, 2023
• Petitioner(s): NJOY, LLC and NJOY Holdings, Inc.
• Patent Owner(s): JUUL Labs, Inc.
• Challenged Claims: 14-16, 18, 27-29, 31-32

2. Patent Overview

• Title: Vaporizer Device with Differential Pressure Sensor
• Brief Description: The ’123 patent discloses a vaporizer device comprising a device body and an insertable cartridge. The core technology involves a pressure sensor configured to detect a user's draw by having a first side exposed to a "sealed air flow path" created during inhalation and a second side exposed to a "device air path" open to ambient pressure, with a gasket sealing the two paths from each other.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 14, 27, and 32 by Worm

• Prior Art Relied Upon: Worm (Application # 2015/0245658).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Worm discloses every element of the independent claims. Worm teaches an electronic smoking article with a control body, a cartridge, and a cartridge receptacle (cavity 225). It explicitly discloses a differential pressure sensor (308) with one side exposed to a "pressure reduction space" (the sealed path) and the other to a "normal pressure space" open to ambient air (the device path). Worm's sealing member (380) functions as the claimed gasket to isolate these two paths. Petitioner contended that the claimed "channel" forming the sealed air path is disclosed as the non-airtight interface between Worm's cartridge projection and the device body's cavity, which allows airflow from the periphery of the device to the heater and mouthpiece outlet.

Ground 2: Obviousness over Worm in view of Levitz - Claims 14, 27, and 32

• Prior Art Relied Upon: Worm (Application # 2015/0245658) and Levitz (WO 2012/142293).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative to Ground 1. To the extent Worm is found not to explicitly disclose the sealed air path originating as a channel at the cartridge-receptacle interface, Levitz was introduced to supply this teaching. Levitz discloses a two-piece e-cigarette with an airflow path that enters at the interface between the battery section and the cartomizer section.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Levitz's airflow design with Worm's device for several reasons. Locating air inlets at the connection interface was a well-known design choice that would have been an obvious modification to ensure adequate airflow. Furthermore, this design prevents liquid backflow from contaminating the sensor in the main body and makes the air channel accessible for cleaning by simply removing the cartridge.
  • Expectation of Success: A POSITA would have a high expectation of success because both Worm and Levitz describe similar two-piece e-cigarette architectures. Modifying Worm's airflow to match the common design taught by Levitz would be a straightforward implementation that would not disrupt the device's core functionality.

Ground 3: Obviousness over Thorens and Weigensberg - Claims 14, 27, and 32

• Prior Art Relied Upon: Thorens (Application # 2014/0318559) and Weigensberg (Application # 2015/0020831).

• Core Argument for this Ground:

  • Prior Art Mapping: Thorens was asserted to disclose the basic structure of a vaporizer, including a device body (shell 101) with a cartridge receptacle and an insertable cartridge (mouthpiece 201) containing liquid and a heater. Weigensberg was relied upon to teach the claimed differential pressure sensor system. Weigensberg discloses a replacement e-cigarette tip containing a differential pressure sensor exposed to negative pressure on one side and ambient air on the other, a surrounding structure that functions as a gasket, and circuitry to output sensor readings.
  • Motivation to Combine: A POSITA would combine these references by replacing Thorens' simple puff detector with Weigensberg's more advanced differential sensor system. The motivation was to incorporate a well-known component to gain known benefits, such as improved reliability (e.g., preventing accidental activation at high altitude), enabling more advanced features based on variable airflow data, and achieving a more compact design by integrating the sensor with the LED indicator light at the device tip.
  • Expectation of Success: Success was expected because the modification involves substituting one known type of puff sensor for another in a conventional two-piece e-cigarette design. Weigensberg teaches a self-contained replacement tip, making the electrical integration into Thorens' system a trivial task for a POSITA.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 5-8) by adding Lamb (Application # 2016/0128389) to the primary combinations. Lamb was used to explicitly teach limitations in dependent claims not addressed by the primary combinations, such as the use of a MEMS pressure sensor, a capacitive membrane, outputting specific pressure values, and using a nicotine formulation in the vaporizable material.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under both §314(a) (Fintiv) and §325(d).
• Under §314(a), Petitioner contended that Fintiv denial is improper because the Director has issued guidance stating the PTAB will not deny petitions based on a parallel International Trade Commission (ITC) proceeding. Regarding a co-pending district court case, that litigation was stayed very early, before responsive pleadings were filed, meaning party and judicial resources have been minimally invested.
• Under §325(d), Petitioner argued denial is unwarranted because the examiner never previously considered the asserted prior art combinations. While Worm was cited in an IDS during prosecution of the ’123 patent, it was never substantively analyzed by the examiner, and the other key references (Thorens, Levitz, Weigensberg, and Lamb) were never before the Office at all.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 14-16, 18, 27-29, 31, and 32 of Patent 10,130,123 as unpatentable.