NJOY LLC v. JUUL Labs Inc

1. Case Identification

• Case #: IPR2024-00268
• Patent #: 11,606,981
• Filed: December 5, 2023
• Petitioner(s): NJOY, LLC and NJOY Holdings, Inc.
• Patent Owner(s): JUUL Labs, Inc.
• Challenged Claims: 1, 5, 8-11, and 13-18

2. Patent Overview

• Title: Vaporizer Device and Related Methods
• Brief Description: The ’981 patent relates to an e-cigarette vaporizer device comprising a battery portion and a removable cartomizer. The battery portion includes an outer shell defining a chamber for receiving the cartomizer, which holds a vaporizable liquid.

3. Grounds for Unpatentability

Ground 1: Obviousness over Liu783 and Liu438 - Claims 1, 5, and 13-16 are obvious over Liu783 in view of Liu438.

• Prior Art Relied Upon: Liu783 (Application # 2014/0150783) and Liu438 (Application # 2013/0319438).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Liu783 disclosed a three-piece e-cigarette with a power rod (battery portion), a connector, and a replaceable atomizer (cartomizer) that is inserted into a chamber in the connector. The atomizer contained a heating element, wicking element, and a reservoir for liquid. However, Liu783 did not disclose a means for viewing the liquid level. Liu438, which shared the same inventor as Liu783, taught an e-cigarette with a transparent or translucent cartridge body to allow a user to observe the amount of remaining liquid.
  • Motivation to Combine: A POSITA would combine the teachings to provide a convenient and safe way for users to determine when Liu783's disposable atomizer was depleted. Making the cartridge translucent would serve as a clear indicator for replacement, preventing undesirable "dry hits" (inhaling super-heated air from a depleted cartridge) and promoting safety.
  • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success, as incorporating a well-known transparent material for the cartridge body was a simple modification that would not impede the device's operation.

Ground 2: Obviousness over Thorens788 and Thorens231 - Claims 1 and 13-16 are obvious over Thorens788 in view of Thorens231.

• Prior Art Relied Upon: Thorens788 (WO 2011/160788) and Thorens231 (Patent 8,794,231).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner contended that Thorens788 taught a two-piece e-cigarette with a battery-containing aerosol generating system and a replaceable cartomizer (mouthpiece) that inserted into a chamber. Thorens788 disclosed that the liquid container could be opaque or not opaque, with a preference for opaque. Thorens231, from the same inventors and describing a substantially identical device, explicitly disclosed that the cartridge could be made of glass (a translucent material) and provided a clear illustration of a mouthpiece housing structure that was described but not shown in Thorens788.
  • Motivation to Combine: A POSITA would look to Thorens231 to supplement the disclosure of Thorens788 because they were directed to the same invention. A POSITA would incorporate Thorens231's illustrated mouthpiece housing to protect the heating element and prevent a user from being burned when handling the replaceable cartomizer. Further, a POSITA would be motivated to use a translucent material for the cartridge, as taught by Thorens231, to allow viewing of the liquid level and facilitate refilling.
  • Expectation of Success: Success was predictable because the references were from the same inventors and described nearly identical systems, making the integration of their respective features a matter of routine design.

Ground 3: Obviousness over Thorens788, Thorens231, and Levin - Claim 5 is obvious over Thorens788 and Thorens231 in view of 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: This ground built upon the combination of Thorens788 and Thorens231 to challenge claim 5, which added a structure for securing the cartomizer using a metallic surface attracted to a magnet. While Thorens taught that the components were "releasably locked," it did not specify the mechanism. Levin disclosed a two-piece e-cigarette where the mouthpiece and power source were coupled using corresponding magnets.
  • Motivation to Combine: A POSITA would combine Levin's magnetic coupling with the Thorens device to provide a more convenient, reliable, and user-friendly connection. Petitioner argued that magnetic coupling was a known superior alternative to friction-fit or screw-thread connections, as magnets are self-aligning and less prone to wear or damage.
  • Expectation of Success: Petitioner argued a POSITA would have a high expectation of success, as adding small magnets to the cartomizer and battery housing was a trivial and predictable implementation of a known connection method for e-vaporizer components.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including combinations of Liu783/Liu438 with Tucker (Application # 2013/0192623) to add a window to the outer battery shell and with Zheng (Patent 9,060,548) to add compressible electrical contacts. Similar challenges were raised against Thorens788/Thorens231 using Tucker and Zheng.

4. Key Claim Construction Positions

• For the purposes of the petition, Petitioner adopted Patent Owner’s proposed constructions from a related litigation for several key terms to demonstrate unpatentability even under the Patent Owner's interpretations.
• "wicking element": Petitioner adopted the construction "e.g., any material through which liquid may be drawn via capillary action."
• "heating element": Petitioner adopted the construction "e.g., a conductive material shaped into a wire, coil, or flat ribbon that generates heat in response to current."
• "window": The parties agreed that "window" should be construed as an "opening or slit…in[] the shell through which the cartomizer is viewed."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under §325(d). Although some of the asserted prior art references were disclosed to the USPTO in an Information Disclosure Statement (IDS) during prosecution, they were part of a list of over 600 references. Petitioner contended that nothing in the record suggested the examiner substantively evaluated or appreciated the relevance of these specific references, as they were never applied in a rejection or otherwise discussed.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 5, 8-11, and 13-18 of the ’981 patent as unpatentable.