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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`R.J. REYNOLDS VAPOR COMPANY
`Petitioner
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`v.
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`ALTRIA CLIENT SERVICES LLC
`Patent Owner
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`
`
`
`Case No. IPR2021-00746
`U.S. Patent No. 10,492,541
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`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,492,541
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
`III.
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`IV.
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`V.
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`C.
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`B.
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`C.
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`Introduction ............................................................................................................................ 1
`Grounds For Standing Pursuant To 37 C.F.R. § 42.104(a) .................................................... 1
`Background Information For The ’541 Patent ....................................................................... 2
`A.
`Overview Of The ’541 Patent .................................................................................... 2
`B.
`Overview Of The Prosecution History ....................................................................... 4
`C.
`Level Of Skill In The Art ........................................................................................... 5
`Identification Of Challenge Pursuant To 37 C.F.R. § 42.104(b) ........................................... 5
`A.
`37 C.F.R. § 42.104(b)(1): Claim For Which IPR Is Requested ................................. 5
`B.
`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific Grounds On Which
`The Challenge To The Claim Is Based ...................................................................... 5
`37 C.F.R. § 42.104(b)(3): Claim Construction .......................................................... 7
`1.
`Face ................................................................................................................ 7
`37 C.F.R. § 42.104(b)(4): How The Construed Claim Is Unpatentable .................... 9
`D.
`37 C.F.R. § 42.104(b)(5): Supporting Evidence ........................................................ 9
`E.
`There Is A Reasonable Likelihood Claim 24 Of The ’541 Patent Is Unpatentable ............... 9
`A.
`Brief Overview Of The Prior Art ............................................................................... 9
`1.
`Overview Of The Juul Prior Art And Motivation To Combine ..................... 9
`2.
`Overview Of Verleur.................................................................................... 13
`Ground 1: Claim 24 Is Obvious Over Juul 1 In View Of Juul 2 and Juul 3 ............ 18
`1.
`Independent Claim 24 .................................................................................. 18
`Ground 2: Claim 24 Is Obvious Over Verleur ......................................................... 26
`1.
`Independent Claim 24 .................................................................................. 26
`Institution Is Warranted........................................................................................................ 34
`A.
`35 U.S.C. § 325(d) ................................................................................................... 34
`B.
`35 U.S.C. § 314(a) ................................................................................................... 36
`VII. Conclusion ........................................................................................................................... 37
`VIII. Fee Authorization ................................................................................................................. 38
`IX. Mandatory Notices Pursuant to 37 C.F.R. § 42.8(a)(1) ....................................................... 38
`A.
`37 C.F.R. § 42.8(b)(1): Real Parties-In-Interest ...................................................... 38
`B.
`37 C.F.R. § 42.8(b)(2): Related Matters .................................................................. 38
`-i-
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`VI.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`C.
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`37 C.F.R. § 42.8(b)(3), (4): Lead And Back-Up Counsel And Service
`Information ............................................................................................................... 38
`CERTIFICATE OF WORD COUNT UNDER 37 C.F.R. § 42.24(a) ............................................ 3
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`I.
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`Introduction
`U.S. Patent No. 10,492,541 (“the ’541 patent”) relates to an electronic vapor
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`(e-vapor) device. The claims recite a pod assembly for an e-vapor apparatus. The pod
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`assembly includes a compartment that holds a liquid and a compartment that heats the
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`liquid to produce a vapor. The vapor passes through a vapor channel that extends
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`through the liquid compartment. A user can inhale the vapor through a mouthpiece on
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`the e-vapor device.
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`The examiner allowed the claims of the ’541 patent stating, in part, that the prior
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`art did not disclose the claimed vapor channel. But e-vapor devices having vapor
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`channels that extend through the device’s liquid compartment were well known in the
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`art. For example, the Juul e-cigarette, described in multiple prior art publications,
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`disclosed an e-vapor device having such a vapor channel. As did U.S. Patent Pub.
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`No. 2015/0128976 A1 (“Verleur”). None of these references were relied upon by the
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`patent examiner during prosecution of the application that matured into the ’541 patent.
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`If these references had been substantively considered, the challenged claim
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`would not have issued. Therefore, this petition for IPR should be instituted.
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`II. Grounds For Standing Pursuant To 37 C.F.R. § 42.104(a)
`Petitioner certifies the ’541 patent is available for IPR and Petitioner is not barred
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`or estopped from requesting IPR challenging the patent claims on the grounds identified
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`herein.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`III. Background Information For The ’541 Patent
`A. Overview Of The ’541 Patent
`The ’541 patent is titled “Pod Assembly, Dispensing Body, And E-Vapor
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`Apparatus Including The Same” and is directed to electronic vapor devices (a/k/a
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`e-vapor devices). Ex. 1003 at 1:20-27.
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`The e-vapor device described in the ’541 patent is illustrated in the figures below.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`Id. at Figs. 1, 15, 18.
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`As shown in Figure 1 above, the ’541 patent discloses an e-vapor device having
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`a dispensing body 104. Id. at 5:58-62, Fig. 1. The dispensing body 104 has a body
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`portion 118, a mouthpiece 108, and a through-hole 114. Id. at 5:60-65, 6:18-21, Fig. 1.
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`The through-hole 114 is configured to receive a pod assembly 302. Id. at 5:65-67, Figs.
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`1, 15.
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`The pod assembly 302, which is shown intact and exploded in Figures 15 and 18
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`respectively, includes a vapor precursor compartment (e.g., liquid compartment)
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`(unnumbered interior portion of pod assembly 302) to hold a substance, such as liquid,
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`that is vaporized. Id. at 6:5-17, Figs. 15, 18. The pod assembly 302 also includes a
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`device compartment having a vaporizer 306. Id. at 6:5-7, 6:30-33, Figs. 15, 18. The
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`vaporizer is configured to heat the vapor precursor to produce a vapor. Id. at 6:37-39,
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`Figs. 15, 18. The vapor passes through a vapor channel 308 in the pod assembly. Id.
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`The vapor channel extends through the center of the liquid compartment and is aligned
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`with a vapor passage 106 in the mouthpiece 108 of the e-vapor device so that a user can
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`inhale the vapor. Id. at 2:14-17, 6:18-29, 6:40-45, 7:13-20, 11:66-12:4, Figs. 1, 15, 18.
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`The vapor channel 308/408 is visible through at least a face of the pod assembly
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`302/402. Id. at 10:41-44, Figs. 15, 19.
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`The e-vapor device has a battery that supplies power to the vaporizer via
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`electrical contacts 416 on the insertion end of the pod assembly. Id. at 7:44-54, 11:52-
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`59, Figs. 1, 19; Ex. 1005 at ¶¶21-26.
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`B. Overview Of The Prosecution History
`The ’541 patent was filed on October 22, 2018 as U.S. Patent Application
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`No. 16/166,899 (“the ’899 application”) claiming priority to an application filed on
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`April 22, 2015. Ex. 1009 at 138.
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`On April 18, 2019, the examiner issued an office action rejecting the claims for
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`nonstatutory double patenting. Id. at 143-151. On May 30, 2019, applicants filed a
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`terminal disclaimer. Id. at 213-215.
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`On June 14, 2019, applicants filed an IDS identifying over 100 references. Id.
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`at 233-235.
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`On July 10, 2019, the examiner issued a notice of allowance. Id. at 828. In the
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`reasons for allowance, the examiner stated that the prior art does not teach or suggest
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`the claimed “vapor channel extending through the vapor precursor compartment.” Id.
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`at 833.
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`On October 24, 2019, the examiner issued another notice of allowance after
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`applicants filed an additional IDS. Id. at 960-961. The ’541 patent issued on
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`December 3, 2019. Ex. 1003.
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`C. Level Of Skill In The Art
`A person of ordinary skill in the art (“POSA”) at the time of the alleged invention
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`for the ’541 patent would possess at least a Bachelor’s degree in mechanical
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`engineering, electrical engineering, chemistry, or physics, or a related field, and over
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`three years of relevant industry experience, or a Master’s degree in mechanical
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`engineering, electrical engineering, chemistry, or physics, or a related field, and over
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`two years of industry experience. Ex. 1005 at ¶¶17-20. Such a POSA would have been
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`familiar with electrically powered vaporizing articles and their components and
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`underlying technologies or similar components and technologies. Id.
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`IV.
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`Identification Of Challenge Pursuant To 37 C.F.R. § 42.104(b)
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`37 C.F.R. § 42.104(b)(1): Claim For Which IPR Is Requested
`A.
`IPR is requested for claim 24 of the ’541 patent.
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`B.
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`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific Grounds On
`Which The Challenge To The Claim Is Based
`IPR is requested in view of the following references:
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`• “This Might Just Be the First Great E-Cig,” WIRED, April 21, 2015 (“Juul 1”)
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`(Ex. 1011). Juul 1 was published on April 21, 2015 and is prior art to the ʼ541 patent
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`under at least AIA 35 U.S.C. § 102(a)(1).
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`• “Startup behind the Lambo of vaporizers just launched an intelligent e-cigarette,”
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`The Verge, April 21, 2015 (“Juul 2”) (Ex. 1012). Juul 2 was published on April 21,
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`2015 and is prior art to the ʼ541 patent under at least AIA 35 U.S.C. § 102(a)(1).
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`• “PAX Labs, Inc. Introduces Revolutionary Technologies with Powerful E-
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`Cigarette JUUL,” Business Wire, April 21, 2015 (“Juul 3”) (Ex. 1013). Juul 3 was
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`published on April 21, 2015 and is prior art to the ʼ541 patent under at least AIA 35
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`U.S.C. § 102(a)(1).1
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`• U.S. Patent Pub. No. 2015/0128976 A1 to Verleur, et al. (“Verleur”) (Ex. 1014).
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`Verleur was filed on November 12, 2014, published on May 14, 2015, and is prior art
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`to the ʼ541 patent under at least AIA 35 U.S.C. § 102(a)(2).
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`The specific statutory grounds on which the challenge to the claims is based and
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`prior art relied upon for each ground are as follows:
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`Ground 1: Claim 24 is unpatentable under 35 U.S.C. § 103 over Juul 1 in view of
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`Juul 2 and Juul 3.
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`1 Juul 1, Juul 2 and Juul 3 all are articles from a media blitz on April 21, 2015
`describing the publicly launched Juul e-cigarette. Attached as Exhibits 1015-1018 are
`declarations demonstrating that these articles were published and publicly available
`on April 21, 2015.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`Ground 2: Claim 24 is unpatentable under 35 U.S.C. § 103 over Verleur.
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`37 C.F.R. § 42.104(b)(3): Claim Construction
`C.
`This petition is based on the claim constructions proposed by Patent Owner in
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`the co-pending District Court action.2 As explained below, Patent Owner proposed a
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`“plain and ordinary meaning” for various claim terms. Patent Owner demonstrated its
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`“plain and ordinary” meanings in its Infringement Contentions, which may be
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`considered by the Office for claim construction purposes. See 35 U.S.C. §301(a)(2);
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`10X Genomics, Inc. v. Bio-Rad Labs., Inc., IPR2020-00086, Paper 8 (PTAB Apr. 27,
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`2020) at 21-22. Under Patent Owner’s proposed claim constructions, the challenged
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`claim of the ’541 Patent is invalid as demonstrated in this Petition. Ex. 1005 at ¶¶51-
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`55.
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`Face
`1.
`The challenged claim recites a pod assembly having a number of “face(s)”: front
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`face, rear face, first side face, second side face, downstream end face, and upstream end
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`face. Ex. 1003 at 28:55-60. In contending that “front face” and “rear face” should be
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`given their “plain and ordinary meaning,” Patent Owner states that the ordinary
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`meaning of “face” is “the surface of an object,” which does not need to be bounded by
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`one or more edges. Ex. 1024 at 29; Ex. 1026 at 27-28.
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`2 Petitioners have proposed, and reserve the right to argue, in other proceedings
`alternative constructions.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`Patent Owner contends that this meaning of “face” is broad enough to encompass
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`the accused VUSE ALTO Pod as shown in its infringement contentions depicting the
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`accused product as having a front face, rear face, first side face, second side face,
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`downstream end face, and upstream end face.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`Ex. 1021 at H4-H8; see also Ex. 1028 at ¶ 168; Ex. 1005 at ¶55. Petitioner proposes
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`Patent Owner’s construction of “face” for purposes of this Petition.
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`37 C.F.R. § 42.104(b)(4): How The Construed Claim Is Unpatentable
`D.
`An explanation of how claim 24 is unpatentable, including where each claim
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`feature is found in the prior art and the motivation to combine the prior art, is set forth
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`below in Section V.
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`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`E.
`An Appendix of Exhibits supporting this petition is attached. Exhibit 1005 is a
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`supporting Declaration of Karl R. Leinsing, MSME, PE.
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`V. There Is A Reasonable Likelihood Claim 24 Of The ’541 Patent Is
`Unpatentable
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`A. Brief Overview Of The Prior Art
`1. Overview Of The Juul Prior Art And Motivation To Combine
`Juul 1, Juul 2, and Juul 3 each describe the same device – the Juul e-cigarette.
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`Ex. 1011 at 1-7; Ex. 1012 at 1-6; Ex. 1013 at 1-2. Indeed, Juul 1 and Juul 2 both use
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`the same image to depict the Juul device. Ex. 1011 at 3; Ex. 1012 at 1. These references
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`are articles from April 21, 2015 describing the publicly launched Juul device. Ex. 1011
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`at 1-7; Ex. 1012 at 1-6; Ex. 1013 at 1-2. As explained further below, each of these
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`references discloses that the Juul device is an electronic vaporizer (e-vapor) that
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`vaporizes liquid contained in a pod (known as the Juulpod) for inhalation by a user.
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`Ex. 1011 at 1-7; Ex. 1012 at 1-6; Ex. 1013 at 1-2; Ex. 1005 at ¶56
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`Juul 1, Juul 2, and Juul 3 each are from the same field of endeavor as the ’541
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`patent as they all are directed to “electronic vapor devices.” Ex. 1003 at 1:20; Ex. 1011
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`at 1-2, Ex. 1012 at 1-3; Ex. 1013 at 1; Ex. 1005 at ¶¶56-57. Thus, Juul 1, Juul 2, and
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`Juul 3 are analogous art to the ’541 patent. Ex. 1005 at ¶¶56-57. A POSA would have
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`been motivated to combine each of these three Juul references together. Ex. 1005 at
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`¶¶56-57. These three references described the same device. Juul 1 and Juul 2 even use
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`the same image to depict the Juul device. Ex. 1011 at 3; Ex. 1012 at 1. Thus, a POSA
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`would have been motivated to use the teachings from each of these references in
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`combination with the teachings from the other references describing the Juul device.
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`Ex. 1005 at ¶¶56-57. For example, Juul 3 discloses that the Juul device has a “liquid-
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`to-wick” cartridge system. Ex. 1013 at 1. A POSA would have been motivated to
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`combine this teaching with Juul 1 and Juul 2 to provide a mechanism by which the
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`liquid in the Juul device is transported to the heating mechanism. Ex. 1005 at ¶56-57.
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`Juul 1, Juul 2 and Juul 3, collectively, are referred to herein as “Juul.”
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`(a) Overview Of Juul 1
`Juul 1, entitled “This Might Just Be the First Great E-Cig,” is directed to the Juul
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`e-cigarette. Ex. 1011 at 1-7. Juul 1 discloses “an e-cigarette system, with a pocket-size
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`vaporizer and nicotine juice cartridges you swap in and out.” Id. at 2. “It’s a long, thin,
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`slightly rounded rectangle. It’s mostly battery . . . save for a slot at the top where you
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`pop in a tiny pack of nicotine-infused ‘juice.’” Id. at 2. Juul 1 depicts the Juul vaporizer
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`and cartridge in the following images:
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`Id. at 1, 5.
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`In addition to containing the nicotine juice, the cartridge has a heating mechanism
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`having a heating coil adjacent the insertion end of the cartridge. Id. at 4-6. The heating
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`mechanism vaporizes the nicotine juice with the vapor traveling through a vapor
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`channel in the cartridge. Id. at 5, 6. The vapor channel leads to a mouthpiece where
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`the user places his/her mouth to inhale the vapor. Id. at 2, 5.
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`The cartridge has a plurality of faces that are transparent allowing a user to view
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`the interior components, including the liquid, heating mechanism and vapor channel.
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`Id. 1, 5. The device body has a window that is aligned with the cartridge allowing the
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`user to view the interior components of the cartridge after it has been inserted in the
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`device. Id. at 1.
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`The device has a battery and magnets. Id. at 3; Ex. 1005 at ¶¶58-61.
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`(b) Overview Of Juul 2
`Juul 2, entitled “Startup behind the Lambo of vaporizers just launched an
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`intelligent e-cigarette,” is directed to the Juul e-cigarette. Ex. 1012 at 1-6. Juul 2
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`discloses a “rectangular e-cigarette” (a/k/a “vaporizer”) having “disposable cartridges
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`easily popped into the device” as shown in the following pictures. Id. at 1, 3, 4, 6.
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`Id. at 1, 4.
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`The cartridges, known as “Juulpods,” contain liquid having nicotine. Id. at 2,
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`4, 6. The device vaporizes the liquid allowing a user to inhale the vapor. Id. at 2-3, 4.
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`The vapor travels through a vapor channel in the cartridge. Id. at 4. The vapor channel
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`leads to a mouthpiece where the user places his/her mouth to inhale the vapor. Id.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`at 2, 4.
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`The cartridge has a plurality of faces that are transparent allowing a user to view
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`the interior components, including the liquid, heating mechanism and vapor channel.
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`Id. at 4. The device body has a window that is aligned with the cartridge allowing the
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`user to view the interior components of the cartridge after it has been inserted in the
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`device. Id. at 1, 6.
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`The insertable end of the cartridge has electrical contacts. Id. at 4. The device
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`has a rechargeable battery and magnets. Id. at 3; Ex. 1005 at ¶¶62-65.
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`(c) Overview Of Juul 3
`Juul 3, entitled “PAX Labs, Inc. Introduces Revolutionary Technologies with
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`Powerful E-Cigarette JUUL,” is directed to the Juul e-cigarette. Ex. 1013 at 1-2. Juul 3
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`discloses an e-cigarette having liquid-nicotine cartridges, known as JUULpods, that are
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`inserted in the device. Id. at 1-2. The device uses a “liquid-to-wick cartridge system.”
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`Id. at 1. The device produces a vapor for a consumer to inhale. Id. at 1. The device
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`has a battery and magnets. Id. at 1-2; Ex. 1005 at ¶66.
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`2. Overview Of Verleur
`Verleur, entitled “Vaporizer,” is directed to “vaporizers, which may also be
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`referred to as electronic cigarettes.” Ex. 1014 at [0002]. As shown in Figure 1 below,
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`Verleur discloses a vaporizer having a chamber 108
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`for
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`receiving a
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`cartomizer 200/200A. Id. at [0034], [0042]. The cartomizer contains a vaporizable
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`substance 300/300A, such as a liquid. Id. at [0042]. Verleur discloses a wick 216 and
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`a heating element proximate the insertion end of the cartomizer. Id. at [0043], [0045].
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`The heating element heats the vaporizable liquid. Id. at [0005], [0043]. The vaporized
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`liquid travels through an inhalation tube 222 away from the heating element to a
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`mouthpiece 220 allowing a user to inhale the vaporized liquid. Id. at [0043], [0055],
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`Fig. 1.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`As shown in Figure 1B, Verleur discloses that the cartomizer includes three
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`electrical contacts 218 on the insertion end of the cartomizer. Id. at [0005], [0008],
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`[0049], Figs. 1, 1B, 2, 2A. The electrical contacts 218 are electrically connected to
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`heating element 214. Id. at [0005], [0032], [0037]. When the cartomizer is inserted in
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`the cartomizer chamber 108 of the vaporizer, the insertion end 210 having the electrical
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`contacts compress pogo pins 122, shown in Figure 1C, to establish an electrical
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`connection. Id. at [0037]. A battery 110 housed in the vaporizer supplies the current.
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`Id. at [0032], [0034], [0035], [0037], Fig. 1. Current flows through the electrical
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`contacts 218 to activate heating element 214. Id. at [0037], [0043].
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`Verleur discloses that cartomizer has a plurality of external surfaces. As shown,
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`for example, in Figures 4 and 15 below, the body of the cartomizer is translucent
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`allowing a user to view its internal components. Id. at [0042], Figs. 4, 5, 12, 15. “[A]t
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`least a portion of body 208 [of cartomizer 200A] may be composed of translucent or
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`substantially translucent material, such as glass or plastic, so that a user may see fluid
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`300A held within.” Id. at [0042], Figs. 4, 5, 12, 15. The vaporizer may include
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`windows 130 that are translucent and aligned with the translucent body of the
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`cartomizer allowing the user to view the cartomizer. Id. at [0041], [0042], Figs. 1, 4, 5.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`As shown in Figures 1B and 1C above, Verleur discloses that vaporizer 10 has
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`magnets 124 and 202 to secure the cartomizer in the cartomizer chamber. Id. at
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`[Abstract], [0039], [0040], [0053], Figs. 1, 1B, 1C; Ex. 1005 at ¶70.
`
`Verleur is from the same field of endeavor as the ’541 patent as both are directed
`
`to “electronic vapor devices.” Ex. 1003 at 1:20; Ex. 1014 at [0002]; Ex. 1005 at ¶¶67-
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`71. Thus, Verleur is analogous art to the ’541 patent. Ex. 1005 at ¶¶67-71.
`
`B. Ground 1: Claim 24 Is Obvious Over Juul 1 In View Of Juul 2 and
`Juul 3
`
`1.
`
`Independent Claim 24
`
`(a) Preamble: “A pod assembly for an e-vapor apparatus,
`comprising:”
`To the extent the preamble of claim 24 is limiting, it is disclosed by the
`
`combination of Juul 1, Juul 2 and Juul 3 (collectively referred to as “Juul”).
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`-18-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`Juul discloses an e-vapor apparatus. As disclosed in the ’541 patent, an e-vapor
`
`apparatus is an electronic vapor device. Ex. 1003 at 1:20-27. Juul discloses an
`
`electronic cigarette that produces a vapor. Ex. 1011 at 1-2, 6; Ex. 1012 at 1-4; Ex. 1013
`
`at 1. Juul uses a battery, electrical connections, a “precision resistance measurement
`
`circuit,” and a heating mechanism to vaporize a liquid. Ex. 1011 at 1, 4, 6; Ex. 1012
`
`at 2-3; Ex. 1013 at 1. Thus, Juul discloses an electronic vapor device (i.e., an e-vapor
`
`apparatus).
`
`Juul also discloses a pod assembly. Specifically, as shown in the following
`
`picture, Juul discloses a cartridge, known as the Juulpod, for insertion into the device.
`
`Ex. 1011 at 1-2, 5; Ex. 1012 at 2-4; Ex. 1013 at 1-2.
`
`Ex. 1012 at 4.
`
`Juul therefore discloses a pod assembly (Juulpod) for an e-vapor apparatus. Juul
`
`discloses the preamble of claim 24. Ex. 1005 at ¶¶217-220.
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`-19-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
`
`
`(b) Element 1: “a plurality of external surfaces including a
`front face, a rear face opposite the front face, a first side
`face between the front face and the rear face, a second
`side face opposite the first side face, a downstream end
`face, and an upstream end face opposite the downstream
`end face;”
`Element 1 of claim 1 is disclosed by Juul. As discussed above, Juul discloses the
`
`Juulpod cartridge. As shown in the images below, the Juulpod has a plurality of external
`
`surfaces: a front face, a rear face, two side faces, a downstream end face and an
`
`upstream end face.
`
`
`
`Ex. 1011 at 5; Ex. 1012 at 4.
`
`As shown, the rear face is opposite the front face, the first side face is between
`
`the front and rear faces, the second side face is opposite the first side face, and the
`
`upstream end face is opposite the downstream end face. Each of these faces is “the
`
`surface of an object.” The geometry of the Juulpod is further disclosed by the
`
`rectangular shape of the Juul device in which the Juulpod is inserted. Ex. 1011 at 2
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`-20-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`(“It’s a long, thin, slightly rounded rectangle. . . It purposely doesn’t look or feel like a
`
`cigarette. . . You do look a little like you plugged a USB stick in your mouth.”)
`
`Thus, Juul discloses a plurality of external surfaces including a front face, a rear
`
`face opposite the front face, a first side face between the front face and the rear face, a
`
`second side face opposite the first side face, a downstream end face, and an upstream
`
`end face opposite the downstream end face. Juul therefore discloses element 1 of
`
`claim 24. Ex. 1005 at ¶¶221-223.
`
`(c) Element 2: “a pre-vapor formulation compartment
`configured to hold a pre-vapor formulation such that the
`pre-vapor formulation is visible through at least the
`front face;”
`Element 2 of claim 24 is disclosed by Juul. Juul discloses a liquid compartment
`
`that holds a liquid formulation. Specifically, Juulpod holds a vaporizable liquid.
`
`Ex. 1011 at 1, 2 (“nicotine-infused juice”), 5; Ex. 1012 at 2 (“liquid-nicotine
`
`cartridges”), 3-4; Ex. 1013 at 1 (“liquid-to-wick”), 2. Because this liquid is vaporized,
`
`the liquid is a pre-vapor formulation and the liquid compartment is a pre-vapor
`
`formulation compartment.
`
`Juul discloses that the liquid is visible through at least the front face. The images
`
`depict that the faces of the Juulpod are transparent such that the fluid is visible.
`
`
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`-21-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`
`
`
`Ex. 1011 at 5; Ex. 1012 at 4. Juul also discloses that the device has windows that are
`
`transparent and aligned with the transparent body of the Juulpod allowing the user to
`
`view the Juulpod. Ex. 1011 at 1.
`
`Juul
`
`therefore discloses a pre-vapor formulation compartment (liquid
`
`compartment) configured to hold a pre-vapor formulation (“nicotine-infused juice”,
`
`“liquid-nicotine”) such that the pre-vapor formulation is visible through at least the
`
`front face. Juul discloses element 2 of claim 24. Ex. 1005 at ¶¶224-226.
`
`(d) Element 3: “a device compartment upstream from the
`pre-vapor
`formulation compartment,
`the device
`compartment configured
`to heat
`the pre-vapor
`formulation to produce a vapor; and”
`Element 3 of claim 24 is disclosed by Juul. Juul discloses that Juulpod has a
`
`heating mechanism and wick. Ex. 1011 at 4-6; Ex. 1012 at 2-3; Ex. 1013 at 1. As
`
`shown in the image below, a vaporizer compartment having the heating mechanism and
`
`wick is at the insertion end of the Juulpod (i.e., away from the mouthpiece). Ex. 1011
`
`
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`-22-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`at 5. The insertion end is the upstream end of the Juulpod as vapor travels from the
`
`vaporizer compartment at this end through a vapor channel and to a mouthpiece at the
`
`other (downstream) end. Ex. 1011 at 1-2, 4-6; Ex. 1012 at 2-4; Ex. 1013 at 1. As shown
`
`in the image below, the vaporizer compartment is upstream from the liquid
`
`compartment.
`
`
`
`Ex. 1011 at 5. The wick and heating element are used to heat and vaporize the liquid
`
`in the Juulpod. Ex. 1011 at 4-6; Ex. 1012 at 2-3; Ex. 1013 at 1. Juul discloses a “liquid-
`
`to-wick cartridge system.” Ex. 1013 at 1. It would have been known to a POSA that
`
`the wick absorbs the liquid and transports the liquid to the heating mechanism to heat
`
`and vaporize the liquid. Ex. 1005 at ¶227.
`
`Thus, Juul discloses a device compartment (vaporizer compartment) upstream
`
`from the vapor precursor compartment (liquid compartment), the device compartment
`
`configured to heat the vapor precursor to produce a vapor. Juul therefore discloses
`
`
`
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`-23-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`element 3 of claim 24. Ex. 1005 at ¶¶227-228.
`
`(e) Element 4: “a vapor channel extending through the pre-
`vapor formulation compartment, the vapor channel
`being visible through at least the front face.”
`Element 4 of claim 1 is disclosed by Juul.
`
`Juul discloses a vapor channel for transporting the vaporized liquid from the
`
`vaporizer compartment, through the Juulpod containing the liquid, and to the
`
`mouthpiece so that a user can inhale the vaporized liquid. Ex. 1011 at 1-2, 4-6; Ex. 1012
`
`at 2-4; Ex. 1013 at 1.
`
`
`
`Ex. 1011 at 5.
`
`Juul discloses that the vapor channel is visible through at least the front face. As
`
`shown above, for example, the image depicts that the front face of the Juulpod is
`
`transparent such that the internal components, including the vapor channel, are visible.
`
`
`
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`-24-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
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`Ex. 1011 at 5; Ex. 1012 at 4.
`
`Juul also discloses that the device has windows that are transparent and aligned
`
`with the transparent body of the Juulpod allowing the user to view the internal
`
`components of the Juulpod, including the vapor channel.
`
`
`
`Ex. 1011 at 1.
`
`Thus, Juul discloses a vapor channel extending through the pre-vapor
`
`formulation compartment (liquid compartment), the vapor channel being visible
`
`through at least the front face. As such, Juul renders obvious claim 24. Ex. 1005 at
`
`¶¶229-233.
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`-25-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
`
`
`C. Ground 2: Claim 24 Is Obvious Over Verleur
`Independent Claim 24
`1.
`
`(a) Preamble: “A pod assembly for an e-vapor apparatus,
`comprising:”
`To the extent the preamble of claim 24 is limiting, it is disclosed by Verleur.
`
`Verleur discloses an e-vapor apparatus. As disclosed in the ’541 patent, an
`
`e-vapor apparatus is an electronic vapor device. Ex. 1003 at 1:20-27. Verleur discloses
`
`a vaporizer 10 and that such a device also is referred to as an electronic cigarette.
`
`Ex. 1014 at [Abstract], [0002]. The device uses a battery, electrical connections and a
`
`heating element to vaporize a substance, such as liquid. Id. at [Abstract], [0005], Fig. 1.
`
`Thus, Verleur discloses an electronic vapor device (i.e., an e-vapor apparatus).
`
`Verleur also discloses a pod assembly. Specifically, and as shown in for
`
`example, Figure 12, Verleur discloses vaporizer 10 having a “vaporization unit or
`
`cartomizer” 200/200A that is connectable to the vaporizer. Id. at [0034], [0042], Fig. 1,
`
`12.
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`-26-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,492,541
`
`
`Verleur therefore discloses a pod assembly (cartomizer 200/200A) for an e-vapor
`
`apparatus (vaporizer 10). Verleur discloses the preamble of claim 24. Ex. 1005 at
`
`
`
`¶¶234-237.
`
`(b) Element 1: “a plurality of external surfaces including a
`front face, a rear face opposite the front face, a first side
`face between the front face and the rear face, a second
`side face opposite the first side face, a downstream end
`face, and an upstream end face opposite the downstream
`end face;”
`Element 1 of claim 1 is disclosed by Verleur. As d