Ecto World LLC v. RAI Strategic Holdings Inc

1. Case Identification

• Case #: PGR2024-00049
• 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 comprises an outer housing containing a power source, an electrical resistance heater, a controller, and a storage compartment for a liquid aerosol-forming material that is wicked to the heater for vaporization.

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 simulated smoking, teaches every limitation of the challenged claims. Takeuchi describes a device with an outer casing (housing), a mouthpiece, an internal power source, an electric heater, and a liquid container (storage compartment). The liquid is transported to the heater via capillary action (wicking) where it is gasified. An air passageway allows a user's inhalation to draw air through the device, mixing with the vapor to form an aerosol that exits through the mouthpiece. A sensor detects the user's draw and a control circuit activates the heater, meeting the controller limitation. Petitioner asserted that the Patent Owner had previously admitted in other proceedings that Takeuchi discloses these core elements.

Ground 2: 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 contended that Kim discloses a base "cigarette substitute device" that meets most claim limitations, including a housing, power source, a heater embedded in a porous chip (storage compartment) containing a nicotine mixture, and an air path for inhalation. Pienemann was argued to supply the remaining features and provide motivations to modify Kim. Specifically, Pienemann teaches a puff detector and control circuitry that regulates power, which would be combined with Kim to replace its rudimentary, error-prone heater activation mechanism. Pienemann also teaches removable components, such as a wrapped substrate and screw-off end caps for battery access, which would be applied to Kim’s device.
  • Motivation to Combine: A POSITA would combine Kim and Pienemann to improve Kim’s functionality and reliability. Pienemann's puff detector would solve the problem of Kim's heater activating from accidental pressure. Pienemann’s teachings on removable, wrapped cartridges and replaceable batteries would address Kim's silence on how to replace consumed liquid or dead batteries, a known design consideration for such devices.
  • Expectation of Success: A POSITA would have a reasonable expectation of success as both references are in the same field of aerosol-generating inhalers and address similar problems. The proposed modifications, such as integrating known puff-detector circuitry or using wrappers for liquid cartridges, were argued to be routine implementations using known methods to achieve predictable results.

Ground 3: Lack of Written Description - Claims 1-30 are invalid under 35 U.S.C. §112

• Prior Art Relied Upon: None.

• Core Argument for this Ground:

  • Written Description Failure: Petitioner argued that the ’202 patent specification fails to provide adequate written description for claims that are not limited to a "tobacco-containing" smoking article. The entire disclosure, from the title ("Tobacco-Containing Smoking Article") to every described embodiment, allegedly focuses exclusively on devices for "providing tobacco enjoyment." Petitioner asserted that the specification explicitly frames the invention's novelty as modifying a known device to add tobacco. During prosecution, the applicant deleted all "tobacco-containing" limitations from the claims, impermissibly broadening them beyond the scope of the original disclosure. This, Petitioner argued, renders the claims invalid for failing to demonstrate that the inventors possessed a tobacco-free invention at the time of filing.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including claims 6, 7, 14, 15, and 18-29 over Takeuchi in view of Pienemann, and claims 1-30 over Kim and Pienemann in further view of Susa (EP Application # 0845220) to explicitly teach adding a tobacco component to the aerosol liquid.

4. Key Claim Construction Positions

• "wicked into contact with the electrical resistance heater": Petitioner argued this term should be construed consistent with a prior Federal Circuit-affirmed Board construction from a related case 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."
• "smoking article": Petitioner argued that if its §112 challenge fails, the term "smoking article" should be construed to mean "tobacco containing smoking article." This construction was asserted to be necessary to align the claim scope with the patent's specification, which exclusively describes tobacco-based embodiments.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv because the only parallel proceeding is an ITC investigation, not a district court litigation. Citing PTAB guidance, Petitioner stated that the Board does not apply Fintiv factors to parallel ITC proceedings.
• §325(d) (Advanced Bionics): Petitioner argued that denial is inappropriate because the primary prior art references (Takeuchi, Kim, Pienemann), while listed on the face of the ’202 patent, were never substantively considered by the Examiner. They were allegedly buried in a massive Information Disclosure Statement (IDS) of over 1,000 references, and the Patent Owner ignored the Examiner's request to identify the most relevant documents. As the art and arguments were not previously presented to the Office in a meaningful way, Petitioner contended institution is strongly favored.

6. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 1-30 of the ’202 patent as unpatentable.