Case 1:20-cv-00393-LO-TCB Document 895-11 Filed 01/21/22 Page 1 of 5 PageID# 24699
`Case 1:20-cv-00393-LO-TCB Document 895-11 Filed 01/21/22 Page 1 of 5 PagelD# 24699
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`EXHIBIT 11
`EXHIBIT 11
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`Case 1:20-cv-00393-LO-TCB Document 895-11 Filed 01/21/22 Page 1 of 5 PagelD# 24699
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`EXHIBIT 11
`EXHIBIT 11
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`Case 1:20-cv-00393-LO-TCB Document 895-11 Filed 01/21/22 Page 2 of 5 PageID# 24700
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,555,556
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In the Inter Partes Review of U.S. Patent No. 10,555,556
`Trial No.: IPR2021-00585
`Issued:
`February 11, 2020
`Filed:
`August 9, 2016
`Inventors: Alexandre Malgat, et al.
`Assignee: Philip Morris Products S.A.
`Title:
`CARTRIDGE FOR AN AEROSOL-GENERATING SYSTEM
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`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
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`PETITION FOR INTER PARTES REVIEW
`UNDER 37 C.F.R. § 42.100
`On behalf of R.J. Reynolds Vapor Company (“Petitioner”) and in accordance
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`with 35 U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes review (“IPR”) is respectfully
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`requested for claims 1, 3-9, 15, 18, 20-21, and 25-26 of U.S. Patent No. 10,555,556 (“the
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`’556 Patent”) (EX1001).
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`The undersigned representative of Petitioner authorizes the Office to charge the
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`$41,500 Petition and Post-Institution Fees, and any additional fees, to Deposit Account
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`503013, ref: 629000-850001.
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`Case 1:20-cv-00393-LO-TCB Document 895-11 Filed 01/21/22 Page 3 of 5 PageID# 24701
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,555,556
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`engineering, electrical engineering, industrial design or product design or product
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`design engineering, chemistry, or physics, or a related field, and one to two years of
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`industry experience, and a POSITA might also have been familiar with electrically
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`powered smoking articles and their components and underlying technologies or similar
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`components and technologies. A higher level of education may substitute for a lesser
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`amount of experience, and vice versa. EX1002, ¶¶18-20.
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`IV.
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`Identification Of Challenge Pursuant To 37 C.F.R. § 42.104(b)
`A.
`37 C.F.R. § 42.104(b)(1): Claims For Which IPR Is Requested
`IPR is requested for claims 1, 3-9, 15, 18, 20-21, and 25-26 of the ’556 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 Claims Is Based
`IPR is requested in view of the following references:
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`• U.S. Patent Pub. No. 2013/0056012 to Hearn et al. (“Hearn”) (EX1004). Hearn
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`was filed on November 12, 2012, published on March 7, 2013, claims priority to
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`GB1003552.5 filed on March 3, 2010, and is prior art to the ’556 Patent under at least
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`AIA 35 U.S.C. §§ 102(a)(1), 102(a)(2).
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`• U.S. Patent No. 7,920,777 to Rabin et al. (“Rabin”) (EX1005). Rabin was filed
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`on November 13, 2007, issued on April 5, 2011, claims priority to U.S. Patent
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`Application No. 10/691,067 filed May 16, 2005, and is prior art to the ’556 Patent under
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`at least AIA 35 U.S.C. §§ 102(a)(1), 102(a)(2).
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`• U.S. Patent No. 8,314,591 to Terry et al. (“Terry”) (EX1006). Terry was filed
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`-10-
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`Case 1:20-cv-00393-LO-TCB Document 895-11 Filed 01/21/22 Page 4 of 5 PageID# 24702
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,555,556
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`on May 15, 2010, issued on November 20, 2012, and is prior art to the ’556 Patent under
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`at least AIA 35 U.S.C. §§ 102(a)(1), 102(a)(2).
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`• U.S. Pat. No. 8,794,231 to Thorens, et al. (“Thorens”) (EX1007). Thorens was
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`filed on April 29, 2009, issued on August 5, 2014, and claims priority to European
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`Patent Application No. 08 251 579 filed April 30, 2008, and is prior art to the ’556
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`Patent under at least AIA 35 U.S.C. §§ 102(a)(1), 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: Claims 1, 3-9, 15, 18, 20-21, and 25-26 are unpatentable under 35 U.S.C.
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`§ 103 over Hearn alone, or Hearn in view of Rabin.
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`Ground 2a: Claims 1, 4-8, 15, 18, 21, and 25 are unpatentable under 35 U.S.C.
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`§ 103 over Terry in view of Thorens.
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`Ground 2b: Claims 3, 9, and 26 are unpatentable under 35 U.S.C. § 103 over Terry
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`in view of Thorens and Rabin.
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`C.
`37 C.F.R. § 42.104(b)(3): Claim Construction
`The Board gives claims their ordinary and customary meaning, or “the meaning
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`that the term would have to a [POSITA] at the time of the invention.” Phillips v. AWH
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`Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). Petitioner proposes no claim
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`terms for construction at this time.
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`Petitioner notes that in related litigation between the Patent Owner and Petitioner,
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`-11-
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`Case 1:20-cv-00393-LO-TCB Document 895-11 Filed 01/21/22 Page 5 of 5 PageID# 24703
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 10,555,556
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`F: 216-579-0212
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`Matthew W. Johnson (Reg. No. 59,108)
`mwjohnson@jonesday.com
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`T: 412-394-9524
`F: 412-394-7959
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`
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this petition.
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`Please address all correspondence to lead and back-up counsel at the addresses above.
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`Petitioner also consents to electronic service by email at the email addresses listed
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`above.
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`VIII. Conclusion
`Petitioner respectfully requests inter partes review of claims 1, 3-9, 15, 18, 20-
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`21, and 25-26 of the ’556 Patent.
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`Dated: February 27, 2021
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`Respectfully submitted,
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`/John A. Marlott/
`John A. Marlott (Reg. No. 37,031)
`jamarlott@jonesday.com
`JONES DAY
`77 W. Wacker Dr.
`Chicago, IL 60601
`T: 312-269-4236
`F: 312-782-8585
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`-76-
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