NJOY Inc v. JUUL Labs Inc

1. Case Identification

• Case #: IPR2024-00267
• Patent #: 11,134,722
• Filed: December 5, 2023
• Petitioner(s): NJOY, LLC and NJOY Holdings, Inc.
• Patent Owner(s): JUUL Labs, Inc.
• Challenged Claims: 1, 3, 5, 7, 9-21

2. Patent Overview

• Title: Vaporizer Device
• Brief Description: The ’722 patent describes an e-cigarette vaporizer with two main parts: a reusable battery portion and a disposable cartomizer containing a vaporizable liquid. Key claimed features include the placement of the heating element entirely within a receiving chamber, a magnetic coupling mechanism between the components, charger contacts on the battery portion, and a window to view the liquid level in the cartomizer.

3. Grounds for Unpatentability

Ground 1: Obviousness over Pan and Levin - Claims 1, 3, 5, 7, 9-13, 15-16, and 18-21 are obvious over Pan in view of Levin.

• Prior Art Relied Upon: Pan (Patent 8,205,622) and Levin (Patent 9,427,022).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Pan disclosed the fundamental structure of the claimed vaporizer, including a battery portion (an "electronic inhaler") and a replaceable liquid-holding cartomizer (an "electronic atomizer") that inserts into a chamber. However, Pan lacked specific disclosures for a plurality of external charger contacts and magnetic coupling. Petitioner asserted that Levin supplied these missing elements, teaching a vaporizer with a micro-USB charging port (disclosing a plurality of electrical contacts) at the distal end of the device and a magnetic coupling mechanism to connect the mouthpiece and battery portions.
  • Motivation to Combine: Petitioner contended a POSITA would combine Levin’s features into Pan’s device for predictable reasons. Adding a standardized micro-USB port to Pan’s rechargeable battery was a logical step for user convenience, allowing charging without battery removal. Similarly, replacing Pan's threaded or plug connection with Levin’s magnetic coupling would make assembly easier, faster, and more reliable, overcoming the drawbacks of screw threads (wear, damage) and friction fits (jamming).
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success. Incorporating a standardized, well-known micro-USB port into Pan's end cap would be routine. Likewise, adding small magnets to couple the two main components was a common and well-understood technique in the e-vapor field, presenting no technical hurdles.

Ground 2: Obviousness over Pan, Levin, and Tucker - Claims 14 and 17 are obvious over Pan and Levin, further in view of Tucker.

• Prior Art Relied Upon: Pan (Patent 8,205,622), Levin (Patent 9,427,022), and Tucker (Application # 2013/0192623).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the combination of Pan and Levin from Ground 1 to address claims 14 and 17, which additionally required a "window" on the outer shell for viewing the cartomizer. Petitioner argued that the Pan/Levin combination taught all limitations except the window. Tucker was introduced to explicitly teach an e-cigarette with a transparent window on its outer shell to allow a user to see the amount of remaining liquid.
  • Motivation to Combine: Petitioner asserted a POSITA would be motivated to add Tucker's window to the Pan/Levin device to improve usability and safety. A window provides a convenient visual indicator of the liquid level, helping users know when to replace the cartomizer and, crucially, preventing a "dry hit" (inhaling super-heated air from a depleted cartomizer), which was a known issue.
  • Expectation of Success: Success was expected because making a portion of the device's plastic or metal shell transparent (or adding a cutout) was a simple and predictable design modification that would not affect the vaporizer's core function.

Ground 3: Obviousness over Thorens788, Thorens231, and Levin - Claims 1, 3, 5, 7, 9-13, 15-16, and 18-21 are obvious over Thorens788 in view of Thorens231 and Levin.

• Prior Art Relied Upon: Thorens788 (WO 2011/160788), Thorens231 (Patent 8,794,231), and Levin (Patent 9,427,022).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this as an alternative to Ground 1, starting with Thorens788 as the primary reference for a two-piece aerosol generator with a battery housing and a chamber for receiving a cartomizer. Thorens231, which shared common inventors with Thorens788, was used to provide a clear illustration of a mouthpiece housing. As in Ground 1, Levin was added to teach the claimed plurality of charger contacts (via a micro-USB port) and a magnetic coupling mechanism, which were not disclosed in the Thorens references.
  • Motivation to Combine: The motivations were analogous to those in Ground 1. A POSITA would look to Thorens231 to supplement Thorens788 because they describe substantially similar devices from the same inventors. A POSITA would incorporate Levin's charging port and magnetic coupling for the same reasons of enhanced convenience, reliability, and ergonomics.
• Additional Grounds: Petitioner asserted Ground 4, arguing claims 14 and 17 are obvious over Thorens788, Thorens231, and Levin, further in view of Tucker, paralleling the logic of Ground 2.

4. Key Claim Construction Positions

• For the purposes of the petition, Petitioner adopted the Patent Owner's proposed constructions for the key terms "wicking element" and "heating element" from the related district court litigation.
• The parties were in agreement on the construction of the term "window" as an "opening or slit on or proximate to the shell through which the cartomizer is viewed."
• By adopting these constructions, Petitioner aimed to demonstrate unpatentability even under the Patent Owner's preferred claim scope.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under § 325(d).
• Although the asserted prior art references were cited in Information Disclosure Statements (IDSs) during prosecution, Petitioner contended they were never substantively considered by the Examiner. The references were part of a submission of over 1,600 documents, and the Examiner did not identify or discuss Pan, Levin, Thorens788, Thorens231, or Tucker as a basis for any rejection.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 3, 5, 7, 9-21 of the ’722 patent as unpatentable.