Ecto World LLC v. RAI Strategic Holdings Inc

1. Case Identification

• Case #: IPR2024-01280
• Patent #: 11,925,202
• Filed: August 13, 2024
• Petitioner(s): Ecto World, LLC and SV3, LLC
• Patent Owner(s): RAI Strategic Holdings, Inc.
• Challenged Claims: 1-30

2. Patent Overview

• Title: Tobacco-Containing Smoking Article
• Brief Description: The ’202 patent discloses an electrically-powered, aerosol-generating smoking article. The device includes a power source, a resistance heater, and a storage compartment for a liquid aerosol-forming material that is wicked toward the heater to be volatilized and inhaled by a user.

3. Grounds for Unpatentability

Ground 1: Obviousness over Takeuchi - Claims 1, 3-15, and 18-29 are obvious over Takeuchi.

• Prior Art Relied Upon: Takeuchi (Patent 6,155,268).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Takeuchi, which discloses a "flavor-generating device for enjoying simulated smoking," teaches all limitations of the challenged claims. Takeuchi describes a device with an outer housing, a mouthpiece, an internal power source, an electrical resistance heater (heater 42 or plate-like heaters 421/422), and a draw-activated controller (control circuit 46 with sensor 52). The claimed "storage compartment" is disclosed as Takeuchi's liquid container (32) combined with a capillary tube (36) or liquid passageway (371), which wicks liquid to the heater. Takeuchi also explicitly discloses that the liquid can contain tobacco components to simulate smoking.
  • Motivation to Combine (for §103 grounds): This ground relies on a single reference. Petitioner asserted that all claim elements are present in Takeuchi. The petition noted that Takeuchi describes different features in multiple embodiments and explicitly states they "can be combined appropriately," rendering any combination of these features obvious.
  • Expectation of Success (for §103 grounds): As a single-reference ground, success was inherent in Takeuchi's own disclosure.

Ground 2: Obviousness over Takeuchi in view of Pienemann - Claims 6, 7, 14, 15, and 18-29 are obvious over Takeuchi in view of Pienemann.

• Prior Art Relied Upon: Takeuchi (Patent 6,155,268) and Pienemann (WO 2000/028843).
• Core Argument for this Ground:
  • Prior Art Mapping: To the extent Takeuchi alone does not render certain dependent claims obvious, Petitioner argued Pienemann supplies the missing elements. Pienemann discloses a system for an inhalable aerosol with a removable substrate portion containing aerosol-forming material inside a wrapper (e.g., plastic foil). It also teaches a puff detector that provides advanced power regulation (e.g., higher power on a first puff) and a screw-off end cap for battery replacement.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Pienemann with Takeuchi to improve Takeuchi's design in predictable ways. Specifically, a POSITA would be motivated to: (1) implement Takeuchi’s exchangeable liquid container using Pienemann’s taught wrapper material (paper or plastic) to prevent leaks; (2) enhance Takeuchi’s controller with Pienemann’s advanced power regulation capabilities to achieve the desired "high stability" of flavor delivery; and (3) incorporate Pienemann's removable end cap to provide easier access to Takeuchi's exchangeable components like the battery and liquid container.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success as both references are in the same field of aerosol-generating inhaling devices and the proposed modifications involved applying known techniques to solve known problems, such as component replaceability and power management.

Ground 3: Obviousness over Kim in view of Pienemann - Claims 1-30 are obvious over Kim in view of Pienemann.

• Prior Art Relied Upon: Kim (Application # 2006/0016453) and Pienemann (WO 2000/028843).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued Kim discloses a "spot-heating cigarette substitute device" that meets most claim limitations, including a housing, power source, heater (electric shorting connector), and a storage compartment (porous plastic chip). Pienemann was used to supplement Kim's disclosure.
  • Motivation to Combine (for §103 grounds): A POSITA would be motivated to modify Kim’s device using Pienemann's teachings to improve its functionality and reliability. Key motivations included: (1) replacing Kim’s error-prone heater activation mechanism (pressing the mouthpiece) with Pienemann’s more reliable puff detector and electronic circuit; (2) implementing Kim’s porous chip to be removable and using Pienemann’s wrapper to prevent liquid leakage, details Kim is silent on; and (3) incorporating Pienemann’s removable end cap and mouthpiece to allow for user replacement of batteries and the mouthpiece.
  • Expectation of Success (for §103 grounds): A POSITA would expect success in combining these references to create a more robust and user-friendly device, as the combination addressed known problems in Kim (e.g., accidental activation) with established solutions from Pienemann.

• Additional Grounds: Petitioner asserted an additional obviousness challenge against claims 1-30 based on the combination of Kim, Pienemann, and Susa (EP 0845220). Susa was introduced primarily to teach the inclusion of a tobacco component in the liquid mixture, addressing the "tobacco containing smoking article" construction argued by Petitioner.

4. Key Claim Construction Positions

• "wicked into contact with the electrical resistance heater": Petitioner argued this term should be construed consistent with a Board decision on a related patent to mean "wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed to the heat produced by, the heater." This construction is broader than requiring direct physical contact.
• "smoking article": Petitioner presented a contingent construction. If the Board finds the claims have proper written description support (an issue raised in a concurrent PGR), Petitioner argued the term must be construed as a "tobacco containing smoking article" to be consistent with the patent’s title and specification.

5. Arguments Regarding Discretionary Denial

• Denial under Fintiv: Petitioner argued against discretionary denial under Fintiv, stating that the ’202 patent has only been asserted in a parallel ITC proceeding, not a district court. Petitioner cited the USPTO’s guidance that the Board will not discretionarily deny petitions based on applying Fintiv to a parallel ITC proceeding.
• Denial under §325(d): Petitioner argued against denial under the Advanced Bionics framework. Although the primary prior art references were cited during prosecution, they were part of a massive Information Disclosure Statement (IDS) containing over 1,000 references. Petitioner asserted the Examiner never substantively considered or applied these references, and the Patent Owner ignored the Examiner's request to identify the most relevant art. Therefore, the petition presented new, noncumulative arguments that were not previously before the Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-30 of the ’202 patent as unpatentable.