Trials@uspto. gov
`571-272-7822
`
`Paper8
`Date: August 26, 2024
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NJOY, LLC and NJOY HOLDINGS, INC. ,
`Petitioner,
`
`V.
`
`JUUL LABS, INC.,
`Patent Owner.
`
`IPR2024-00567
`Patent RE49,114E
`
`Before CHRISTOPHER M. KAISER, KIMBERL Y MCGRAW,and
`AVELYNM.ROSS, Administrative Patent Judges.
`
`ROSS, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of/nter Partes Review
`35 US.C. $ 314,37 CER. § 42.4
`
`

`

`IPR2024-00567
`Patent RE49,114E
`
`I.
`
`INTRODUCTION
`
`NJOY, LLC and NJOY Holdings, Inc. (collectively, “Petitioner’’)
`
`filed a Petition (Paper2, “Pet.”) requesting an interpartes review of claims
`
`1, 5-7, 29-30, 36, 43, 44, 76, 77, 80, 81, 86, 89, and 93 of U.S. Patent No.
`
`RE49,114 E(Ex. 1001, “the ’114 patent’). JUUL Labs,Inc. (“Patent
`
`Owner’) filed a Preliminary Response to the Petition. Paper 6 (“Prelim.
`
`Resp.”). On July 11, 2024, Patent Ownerfiled a request disclaiming claims
`
`1, 5S—7, 29-30, and 36. Ex. 3001. Accordingly, we limit our discussion to
`
`the remaining claims 43, 44, 76, 77, 80, 81, 86, 89, and 93.
`
`Wehave authority to determine whetherto institute an interpartes
`
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for
`
`instituting an inferpartes review isset forth in 35 U.S.C. § 314(a), which
`
`providesthat an interpartes review may notbe instituted “unless the
`
`Director determines. .. there is a reasonable likelihood that the petitioner
`
`would prevail with respectto at least [one] ofthe claims challenged in the
`
`petition.”
`
`For the reasonsset forth below, upon considering the Petition,
`
`Preliminary Response, and evidence ofrecord, we determinethat Petitioner
`
`has not established a reasonable likelihood ofprevailing with respectto at
`
`least one challenged claim. Accordingly, we do notinstitute an interpartes
`
`review.
`
`A.
`
`Real Parties-in-Interest
`
`Petitioner identifies NJOY, LLC, NJOY Holdings, Inc. Altria Group,
`
`Inc., AltriaGroup Distribution Company, Altria Client Services LLC, and
`
`Shenzhen Smoore Technology Limitedas real parties-in-interest. Pet. 1.
`
`Patent Owneridentifies 1tselfas the real party-in-interest. Paper 5, 2.
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`

`

`IPR2024-00567
`Patent RE49,114E
`
`B.
`
`RelatedProceedings
`
`The parties identify Certain Vaporizer Devices, Cartridges Used
`
`Therewith, and Components Thereof, 337-TA-1368 (ITC) and JUUL Labs,
`
`Inc. v. NJOY, LLC etal. , 23-cv-01204 (D. Ariz.) as related proceedings. Pet.
`
`1; Paper 5, 2.
`
`Patent Ownerfurther identifies IPR2024-00223 (U.S. Patent No.
`
`10,709, 173), IPR2024-00231 (U.S. Patent No. 10,130,123), IPR2024-00267
`
`(U.S. Patent No. 11,134,722 B2), IPR2024-00268 (U.S. Patent No.
`
`11,606,981), and IPR2024-00536 (U.S. Patent No. 11,606,981), as related
`
`matters. Paper5, 2.
`
`C.
`
`The ’114patent
`
`The ’114 patent, titled “Electronic Cigarette with Liquid Reservoir,
`
`issued on June 28, 2022, asa reissue ofU.S. Patent No. 9,596,887, issued
`
`March 21, 2017. Ex. 1001, code (45), (64). The ’114 patent describes “an
`
`electronic cigarette with an internal liquid reservoir.” /d. at 1:15—17.
`
`Figure|is illustrative ofthe electronic cigarette, and is reproduced
`
`below.
`
`

`

`IPR2024-00567
`
`Patent RE49,114E
`
`Figure | is a perspective view ofan electronic cigarette. Ex. 1001,
`
`2:46—-48.
`
`Figure 1 showselectronic cigarette 2 that includes an elongated end
`
`10 with tip end6, a cartridge 12 with mouthpiece end 4, air inlet vents 16 for
`
`allowingairflow into the cartridge 12, and a window 13 showingliquid level
`
`15 inthe cartridge 12.
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`/d. at 4:13-29.
`
`Figure 7 is illustrative and reproduced below, and showsa side view
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`diagram ofliquid reservoir cartridge 12.
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`

`

`IPR2024-00567
`Patent RE49,114E
`
`o Beee
`Re
`mew AS
`
`,
`
`Ph8
`
`Haan ad
`
`BieES
`
`Figure 7 is side sectional view ofaliquid reservoir cartridge. /d. at 3:1-3.
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`The cartridge includes outer housing 12 with tip end4 and aerosol
`
`port 5 formed therethrough,air inlet vents 16, atomizer assembly 28, and
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`atomizing chamber 38 coupled to achimney 36.
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`/d. at 6:3—-18. Figure 7
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`shows “annular space 43 between the chimney 36 and the interior ofthe
`
`housing 12 [which] defines the liquid reservoir 43.” /d. at 6:19-20. Figure
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`

`

`IPR2024-00567
`Patent RE49,114E
`
`7 showsthat“there is athinner annular cavity 39 formed between the
`
`exterior ofthe atomizing chamber38 and interior ofthe cartridge housing
`
`12.” 7d. at 6:21—23. Figure 7 showsthat “fluid 44 1s stored in the fluid
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`reservoir 43,” which can flow “into the annular cavity 39 to saturate the
`
`wick 37.” Id. at 6:23—25; see also id. at 6:40—43 (“As the liquid in the wick
`
`37 is depleted by the atomizer 32, capillary action draws additionalliquid
`
`from the liquid reservoir 43, through the cavity 39 and to the atomizer 32”).
`
`D.
`
`Illustrative Claim
`
`Petitioner challenges claims 43, 44, 76, 77, 80, 81, 86, 89, and 93 of
`
`the ’114 patent. Independent claim 431s illustrative ofthe claimed subject
`
`matter andis reproduced below!.
`
`Claim 43.
`
`[A] A cartridge comprising:
`
`[B] a cartridge housing;
`
`[C] a mouthpiece end comprising an aerosoloutlet;
`
`[D]D] an atomizing chamberdisposed within the cartridge housing
`proximate a lower endof the cartridge housing opposite
`the mouthpiece end,
`
`[E] the atomizing chamber comprising an atomizer outlet and an
`atomizing chamberairinlet;
`
`[F] the atomizing chamber further comprising a first wick
`aperture and a secondwickaperture;
`
`[G] a liquid reservoir at least partially defined by an interior of
`the cartridge housing and an exterior of the atomizing
`chamber,
`
`[H] the liquid reservoir configured to contain an atomization
`liquid;
`
`' For convenience, we adoptPetitioner’s annotated claim format.
`
`6
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`

`

`IPR2024-00567
`Patent RE49,114E
`
`[I] a chimney forming at least part of an aerosol outlet path
`sealably passing through the reservoir between the
`atomizer outlet and the aerosol outlet;
`
`[J] an atomizer disposed within the atomizing chamber,
`
`[K] the atomizer comprising a resistive heating element; and
`
`[L] a wick in contact with the atomization liquid in the liquid
`reservoir through the first wick aperture and the second
`wick aperture,
`
`[M] the wick disposed between the liquid reservoir and the
`atomizer.
`
`Ex. 1001, 11:27—11:49.
`
`E.
`
`The Asserted Unpatentability Challenges
`
`Petitioner asserts that claims 43, 44, 76, 77, 80, 81, 86, 89, and 93
`
`would have been unpatentable based on the following grounds:
`
`43, 44, 76,77, 81, 86,
`
`
`
`103(a)
`
`Cho, Nielsen?
`
`Pet. 7. Petitioner also relies on declaration testimony ofJoseph C.
`
`McAlexanderII (Ex. 1003). Patent Ownerrelies on declaration testimony
`
`of Dr. John Collins (Ex. 2001).
`
`I.
`
`ANALYSIS
`
`A.
`
`Principles ofLaw
`
`In an interpartes review,“the petitioner has the burden from the onset
`
`to show with particularity why the patent it challenges 1s unpatentable.”
`
`7 Cho, WO 2011/065754 A2, published June 3, 2011 (Ex. 1005, “Cho”).
`> Nielsen et al., U.S. Patent Pub. No. 2009/0283 103 A1, published
`Nov. 19, 2009 (Ex. 1006, “Nielsen”’).
`
`

`

`IPR2024-00567
`Patent RE49,114E
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
`
`(citing 35 U.S.C. § 312(a)(3) (2012) (requiring interpartes review petitions
`
`to identify “with particularity .
`
`.
`
`. the evidence that supports the groundsfor
`
`the challenge to each claim’’)). This burden ofpersuasion nevershifts to the
`
`patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc. , 800
`
`F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden ofproofin inter
`
`partes review).
`
`To anticipate, a reference must “showall ofthe limitations ofthe
`
`claims arranged or combined in the same wayasrecited in the claims.” Net
`
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1370 (Fed. Cir. 2008);
`
`accordIn re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
`
`Weanalyze the challenges presentedin the Petition in accordance
`
`with the above-stated principles.
`
`B.
`
`Level ofOrdinary Skill in the Art
`
`Wereview the grounds ofunpatentability in view ofthe
`
`understanding ofa person of ordinary skill in the art at the time ofthe
`
`invention. Graham, 383 U.S. at 17.
`
`Petitioner contendsthat a person of ordinary skill in theart “would
`
`haveat least aB.S. degree in Mechanical En gineering, Electrical
`
`Engineering, Industrial Design, Product Design, or similar field, with at least
`
`two years of industry experience in one ofthese fields, and such POSA
`
`would have been familiar with electrically powered vaporizingarticles, their
`
`components, or the underlying technologies.” Pet. 7.
`
`Patent Ownerarguesthat a person of ordinary skill in the art “at the
`
`time of the ’114 patent would have had a B.S. in mechanical engineering,
`
`electrical engineering, or an equivalent degree, and either at least two
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`

`

`IPR2024-00567
`Patent RE49,114E
`
`years of experience designing electro-mechanical consumerproducts or
`
`an advanced degree in mechanical engineering,electrical engineering, or
`
`an equivalentfield.” Prelim. Resp. 2 (citing Ex. 2001 99} 19). Patent Owner
`
`submits that “the arguments in this Response apply regardless ofwhich
`
`standard is adopted,” and that “Patent Owner’s expert, Dr. John Collins, was
`
`a POSITAat the time ofthe’ 114 patent under either[Petitioner’s or Patent
`
`Owner’s] definition.” /d. (citing Ex. 2001
`
`22).
`
`In light ofthe record before us, and for purposes ofthis Decision, we
`
`adopt Petitioner’s proposal regarding the level of ordinary skill in the art.
`
`Based on ourreview of the ’114 patent andthe prior art ofrecord, we
`
`determine that the definition offered by Petitioner comports with the
`
`qualifications a person would have needed to understand the ’114 patentand
`
`the priorart.
`
`C.
`
`Claim Construction
`
`Weconstrue claim terms accordingto the standard set forth in Phillips
`
`v. AWH Corp., 415 F.3d 1303, 1312-17 (Fed. Cir. 2005) (en banc);
`
`37 C.F.R. § 42.100(b) (2019). Under Phillips, we give claim terms“their
`
`ordinary and customary meaning.” Phillips, 415 F.3dat 1312. “[T]he
`
`ordinary and customary meaning of aclaim term is the meaningthat the
`
`term would haveto a person of ordinary skill in the art in question at the
`
`time ofthe invention.” /d. at 1313. “Importantly, the person of ordinary
`
`skill in the art is deemed to read the claim term notonly in the context ofthe
`
`particular claim in which the disputed term appears, but in the context ofthe
`
`entire patent, including the specification.” /d.
`
`Petitioner asserts “Petitioners are unaware of any prior construction
`
`determination related to the ’114 patent.” Pet. 7-8. However, Petitioner
`
`

`

`IPR2024-00567
`Patent RE49,114E
`
`identifies constructions for four terms proposedby theparties in the related
`
`ITC litigation. /d. at 8. Petitioner also asserts “in the analysis ofthe prior
`
`art in this Petition, the asserted prior art anticipates or renders obvious the
`
`challenged claims under both Patent Owner’s andPetitioners’
`
`interpretations.” /d.
`
`Patent Ownerasserts that “[w]ith the exception ofthe preamble of
`
`claim I, in this preliminary stage, it is not necessary for the Board to resolve
`
`the construction of any terms.” Prelim. Resp. 3. The preamble of claim 44
`
`recites an “electronic cigarette.” /d. at 11:50. Patent Owner argues that term
`
`“electronic cigarette” 1s limiting becauseit is an essential structure that 1s
`
`necessary to give meaning to the claims. Prelim. Resp. 3—4 (citing Ex. 1001,
`
`1:19—24, 28-39, 2:46-3:25, 4:15; Ex. 2001 938-44). Patent Owner
`
`arguesthat “electronic cigarette”is essential for the invention of a nicotine
`
`delivery system replacementthat delivers nicotine by atomizing liquid
`
`instead ofburning tobacco. /d. at 5 (citing Ex. 2001 4 43). Patent Owner
`
`submits that the invention ofthe ?114 patent 1s not a vaporizerfor health
`
`supplementsand that the invention of Chois for vaporizing a substance that
`
`is beneficial to the human body. /d. at 5—6 (citing Ex. 1005 4 1).
`
`For purposesofthis Decision, we need not expressly construe any
`
`claim terms, including “electronic cigarette.” See Vivid Techs., Inc. vy. Am.
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only
`
`those terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy”); see also Nidec Motor Corp.v.
`
`10
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`

`

`IPR2024-00567
`Patent RE49,114E
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`
`(citing Vivid Techs. in the context of an interpartes review).
`
`D.
`
`Challenges based on Cho
`
`Petitioner alleges that Cho anticipates claims 43, 44, 76, 77, 81, 86,
`
`89, and 93 of the ’114 patent. Pet. 11-64. Petitioner further alleges that the
`
`combination of Cho and Nielsen would have rendered obvious claim 80 of
`
`the ’114 patent. Pet. 64-70. Petitioner relies on the testimony ofMr.
`
`McAlexanderto support its arguments. See id.
`
`1. Overview ofCho (Ex. 1005)
`
`Choistitled “Device for Vaporisation and Inhalation, a Composition
`
`for Vaporisation and Inhalation Used Therewith, and a Method for
`
`Vaporizing the Composition for Vaporisation and Inhalation.” Ex. 1005,
`
`code (54). Cho’s Figure 7 is reproduced below, showing such a device.
`
`Sepa n
`SEES
`“ oa
`AN
`ee ~\
`1S
`2
`*
`b
`io
`mot
`\
`Lo
`3
`aten
`“
`;
`\
`%
`‘.
`a
`\ “
`ie
`-a
`a
`ey
`
`’
`
`*
`“
`a
`
`oe
`-
`
`a
`
`wee
`°
`oe
`
`maa:
`“
`
`+we
`
`ra
`2
`
`eck—
`Tan
`
`Teas
`
`Figure 7 is a perspective view showing a vaporisation unit of an inhalation
`
`nozzle side of the device for vaporisation andinhalation. /d. 424.
`
`11
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`

`

`IPR2024-00567
`Patent RE49,114E
`
`Figure 7 illustrates vaporization unit 1200 with storage container
`
`1201, atomization chamber1203, liquid introduction valve 1205, inhalation
`
`port 1211, and inhalation contact 1213. Ex. 1005 4 73-78. In Figure 7, “an
`
`inhalation contact 1213 for inhaling the mixed composition through body
`
`contact 1s provided in the vaporisation unit 1200 on the inhalation nozzle
`
`side having acylindrical structure.” /d. 4/73. In storage container 1201, “a
`
`predetermined filling space is secured so that the mixed composition can be
`
`filled in a liquid state and an atomization container 1203 for vaporizing the
`
`mixed composition by direct or indirect heating through a predetermined
`
`heating memberafter inducing the mixed composition ofthe storage
`
`container 1201 using capillarity.” Jd.
`
`Figure 11 1s reproduced below.
`
`Figure 11 1s a cross-sectional view of an assembled vaporisation unit 1200.
`
`Ex. 1005 {[§ 28, 89. Cho describes that unit 1200 “hasa hollowstructure,”
`
`and that Figure 11 shows“cylindrical air inhalation tube 1313”in its center,
`
`12
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`

`

`IPR2024-00567
`Patent RE49,114E
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`where“air inhalation tube 1313 communicates with an inhalation nozzle
`
`1501 of the inhalation contact 1213.” /d. at § 89. Cho describesthat storage
`
`container 1201 has a loading portion 1503, which is loaded with the mixed
`
`composition through the liquid introduction valve 1205.
`
`/d. Cho explains
`
`that the “mixed composition comesinto contact with one end ofthe inductor
`
`1315 pressed-in andinstalled through the inductorinsertion hole 1311, and
`
`the inductor 1315 adsorbs the mixed composition by capillarity and is heated
`
`by the heating member 1319.” Jd.
`
`2.
`
`Analysis ofClaim 43
`
`Petitioner contends that Cho disclosesacartridge and a mouthpiece
`
`end comprising an aerosol outlet. Pet. 46 (citing Pet. 11-13; Ex. 1003
`
`{| 49-52; Ex. 1005 99 1, 9, 53-57, 73, 77, 81, 89, Figs. 7 and 11). Petitioner
`
`argues that Cho discloses an atomizing chamberdisposed within the
`
`cartridge housing proximatealower end ofthe cartridge housing opposite
`
`the mouthpiece end andthat the atomizing chamber comprises an atomizer
`
`outlet andan atomizing chamberair inlet. /d. at 46—48 (citing Pet 22-24;
`
`Ex. 1003 ff 68-71, 129-132; Ex. 1005 § 73, 78, 82-83, 89, Figs. 9 and 11).
`
`The atomizing chamberfurther comprisesa first wick aperture and a second
`
`wick aperture. /d. at 48 (citing Pet. 22—24; Ex. 1001, 6:28-31, 6:51—54,
`
`6:57-65, 7:38, 7:58-61; Ex. 1003 99 72-74; Ex. 1005 4§ 83, 88, Figs. 8 and
`
`11; Ex. 1014.002).
`
`Petitioner contends that Cho disclosesa liquid reservoir defined by an
`
`interior ofthe cartridge housing and an exterior ofthe atomizing chamber
`
`and that the liquid reservoir is configured to contain an atomization liquid.
`
`Pet. 48-52 (citing Ex. 1003 49 135-142; Ex. 1005 49 74, 76, 81, 84, 89, Fig.
`
`11). Petitionerasserts that Cho discloses a chimney formingat least part of
`
`13
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`

`

`IPR2024-00567
`Patent RE49,114E
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`an aerosol outlet path sealably passing through the reservoir between the
`
`atomizer outlet and the aerosol outlet. /d. at 52—53 (citing Pet. 15—17;
`
`Ex. 1003 {| 58-62; Ex. 1005 9] 73, 81, 83, 89, Fig. 11). Petitioner contends
`
`that Cho discloses an atomizer disposed within the atomizing chamber and
`
`that the atomizer comprising a resistive heating element. /d. at 53 (citing
`
`Pet. 15—17, 36-37; Ex. 1001, 6:27—28; Ex. 1003 49 93-104, 143-146;
`
`Ex. 1005 {ff 39, 73, 77, 81-83, Fig. 11). Petitioner argues that Chodiscloses
`
`a wick in contact with the atomization liquid in the liquidreservoir through
`
`the first wick aperture and the second wick aperture so that the wick1s
`
`disposed betweenthe liquid reservoir and the atomizer.
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`/d. at 53-54 (citing
`
`Pet. 28-32; Ex. 1003 {| 83-90; Ex. 1005 79 83, 88-90, Fig. 11; Ex. 1014,
`
`2).
`
`Patent Ownerarguesthat Cho doesnotdisclose a “liquid reservoir
`
`[that] 1s partially defined by the exterior of an atomizing chamber”(Prelim.
`
`Resp.8 (citing Ex. 2001 4 47)), that the Petitioner’s “integrated
`
`embodiment” mixes and matches embodimentsin a ground presented as
`
`anticipatory (id. at 9), and that the “integrated embodiment”is not enabled
`
`(id.). Because we agree with Patent Ownerthat Petitioner hasfailed to
`
`establish that Cho describesa “liquid reservoir[that] is partially defined by
`
`the exterior of an atomizing chamber”—andthisissue is dispositive—we
`
`address only this issue below.
`
`14
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`IPR2024-00567
`Patent RE49,114E
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`whether Chodiscloses a liquid reservoir at leastpartially
`defined by an exterior ofthe atomizing chamberin eitherthe
`“separated embodiment”or the “integrated embodiment’
`
`Petitioner contends that Cho disclosesa liquid reservoir defined by an
`
`interior ofthe cartridge housing and an exterior ofthe atomization chamber.
`
`Pet. 48-50 (citing Ex. 1003 49 135-138; Ex. 1005 49 74, 81, 89, Fig. 11).
`
`Petitioner’s annotated version of Cho’s Figure 11 is depicted below,1.e., the
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`“separated embodiment.”
`
` es
`
`rae
`
`aé Z oe
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`—
`
`
`
`
`RS
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`
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`Id. at 30 (“Annotated Fig. 11” or “Ann. Fig. 11”). Annotated Figure 11
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`showsstorage container (or housing) (brown), connected to atomization
`
`4 Patent Ownerutilizes the terms “separated embodiment”and “integrated
`embodiment” to describe Petitioner’s alternative embodiments. See Prelim.
`Resp. 12. For consistency andconvenience, we similarly adopt these terms.
`
`15
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`container 1203 (light green), with hollow air inhalation tube 1313 located in
`
`the center of storage container 1201. Ex. 1005 § 89. Atomization container
`
`1203 includes heating member 1319 (red) coiled around inductor 1315 or
`
`wick (peach) where the ends of inductor 1315 pass through holesin fixing
`
`plate (orange), and into loading portion 1503 (1.e., the liquid reservoir)
`
`(blue).
`
`Petitioner asserts that
`
`Chodiscloses liquid loading portion 1503 (liquid reservoir)is
`defined as the space inside the storage container 1201 but outside
`air inhalation tube 1313 (chimney). EX1005, 4 [89] (“the storage
`container 1201 hasa loading portion 1503 as the remaining space
`except for the air inhalation tube 1313, and the loading portion
`1503 is loaded with the mixed composition through theliquid
`introduction valve 12035’’).
`
`Id. at 49.
`
`Petitioner alternatively asserts that “Cho further discloses an
`
`embodiment whereby the storage container 1201 and atomization container
`
`1203 are integrated into a single structure.” /d. (citingEx. 1005 4 74).
`
`Petitioner creates an integrated embodiment version of Cho Figure 11,
`
`reproduced below.
`
`16
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`IPR2024-00567
`Patent RE49,114E
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`
`
`Id. (‘Integrated Figure 11”or “Integrated Fig. 11”). Integrated Figure 11 is
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`a cross-sectional view of an assembled vaporization unit 1200 as an
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`“integrated embodiment’as proposed by Petitioner. Integrated Figure 11
`
`depicts the exterior of storage container 1201 and atomization container
`
`1203 as an integrated structure (tan), loading portion(1.e., liquid reservoir)
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`1503 (blue), cylindrical air inhalation tube 1313 (light blue), heating
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`member1319 (red), and the interior ofthe atomization container(pink).
`
`Petitioner explainsthat “[1]n this integrated embodiment, the exterior ofthe
`
`atomizing chamberfurther defines liquid loading portion 1503 because the
`
`exterior ofthe atomizing chamberis integrated with the air inhalation tube
`
`1313 (chimney).” /d. (citing Ex. 1005 4 81).
`
`17
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`

`IPR2024-00567
`Patent RE49,114E
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`Patent Ownerasserts that claim 43 requires that the liquid reservoiris
`
`“defined by an interior ofthe cartridge housing and an exterior ofthe
`
`atomizing chamber,” but “Cho’s alleged liquid reservoir is defined entirely
`
`by the interior of its storage container 1201.” Prelim. Resp. 8. Patent
`
`Ownercontends “[n]othing about Cho’s disclosure [in Figures 8 and 10 and
`
`paragraph 89] indicates that the liquid reservoiris partially defined by the
`
`exterior of an atomizing chamber.” /d. (citing Ex. 2001 447).
`
`With respect to the “integrated embodiment,” Patent Ownerfurther
`
`asserts that Cho’s single sentence that “the atomization container andthe
`
`storage container are molded into a mutually integrated structure... . the
`
`shape ofthe atomization containeritselfbecomes unnecessary” (Ex. 1005
`
`{| 74) does not disclose that that the claimedliquid reservoirthat is “defined
`
`by... an exterior ofthe atomizing chamber.” Prelim. Resp.9 (citing
`
`Ex. 2001 §] 48-49). Patent Ownerasserts that Petitioner’s Cho doesnot
`
`depict any figures showingthis integrated structure and that Petitioner’ s
`
`representation of Cho’s Figure 11 was fabricated in an attempt to imagine
`
`whatthe integrated structure might look like.
`
`/d. at 10 (citing Ex. 2001
`
`44] 50-51). Patent Ownerarguesthat Petitioner’s edited Figure 11
`
`nonetheless does not showthatthe liquid reservoir 1503 is defined by an
`
`exterior ofthe atomizing chamberas required by theclaim. /d. at 11—13
`
`(citing Ex. 2001 4] 52-53).
`
`Weare persuadedthat Petitioner has not shownthat Cho describes a
`
`“liquid reservoir [that] 1s partially defined by the exterior of an atomizing
`
`chamber”in either ofthe “separated embodiment”or the “integrated
`
`embodiment.” Pet. 48-50. With respect to the “separated embodiment,”
`
`Petitioner identifies the inside of storage container 1201 as the “interior of
`
`18
`
`

`

`IPR2024-00567
`Patent RE49,114E
`
`the cartridge housing”and the outsideofair inhalation tube 1313 as the
`
`“exterior ofthe atomizing chamber.” /d. But Annotated Figure 11 does not
`
`show air inhalation tube 1313 as part of atomizing chamber1203.
`
`Therefore, the liquid reservoir, 1.e., loading portion 1205, is not “at least
`
`partially defined by... an exterior ofthe atomizing chamber.”
`
`Petitioner’s “integrated embodiment”fares no better. Citing Cho
`
`paragraph 81, Petitioner states that in the “integrated embodiment, the
`
`exterior ofthe atomizing chamberfurther defines liquid loading portion
`
`1503 becausethe exterior ofthe atomizing chamberis integrated with the air
`
`inhalation tube 1313 (chimney).” Pet. 49. Cho, however, explains that
`
`“[t]he storage container 1201 has a hollow structure in which an air
`
`inhalation tube 1313 is buried in the center, and the air inhalation tube 1313
`
`has an integrated communication structure therearound (Ex. 1005 4 81)” and
`
`does not describe the atomization containeras integrated with the inhalation
`
`tube or chimney. Neither Petitioner nor its declarant, Mr. McAlexander,
`
`explain why the inhalation tube 1313 is part of atomization container 1203
`
`or direct our attention to any portion of Cho that describes why the
`
`inhalation tube 1313 as being integrated into atomizing chamber 1203. That
`
`inhalation tube 1313 releases vapor and is in fluid communication with
`
`atomization container 1203, does not mean thatit is integrated into
`
`atomization container 1203 such that liquid reservoir 1503 1s “at least
`
`partially defined by... . an exterior ofthe atomizing chamber,” as claimed.
`
`Petitioner bears the burden of showing whyit believes the challenged claims
`
`are unpatentable and we declinetofill in the gaps and supply the missing
`
`analysis ourselves. Cf. SmithKline Beecham Corp. v. Apotex Corp. ,439
`
`19
`
`

`

`IPR2024-00567
`Patent RE49,114E
`
`F.3d 1312, 1320 (Fed. Cir. 2006)(explaining thatjudges shouldnot haveto
`
`hunt for arguments and evidencein thebriefs).
`
`Therefore, Petitioner has not shown a reasonablelikelihood that Cho
`
`describes“a liquid reservoir at least partially defined by an interior ofthe
`
`cartridge housing and an exterior ofthe atomizing chamber’in either ofthe
`
`“separated embodiment”or the “integrated embodiment.” Forat least this
`
`reason, and based on the currentrecord, Petitioner has failed to establish that
`
`claim 43 is anticipated by Cho.
`
`3.
`
`Remaining Claims 44, 76, 77, 80, 81, 86, 89, and 93
`
`Petitioner asserts that claims 44, 76, 77, 81, 86, 89, and 93 are
`
`anticipated by Cho. Pet. 35—46, 54-64. In addition, Petitioner alleges that
`
`the combination of Cho and Nielsen would have rendered obviousclaim 80
`
`of the ’114 patent. Pet. 64-70. Each of claims 44, 76, 77, 80, 81, 86, 89,
`
`and 93 requires a “liquid reservoir at least partially defined by an interior of
`
`the cartridge housing andan exterior ofthe atomizing chamber,”either by
`
`virtue of dependence (claims 76, 77, 80, 81, 86, 89, and 93) or independent
`
`recitation (claim 44). Ex. 1001, 11:50—12:9, 19:1—19:63. Because Petitioner
`
`hasfailed to show a reasonable likelihood that Cho teachesa “liquid
`
`reservoir at least partially defined by an interior ofthe cartridge housing and
`
`an exterior ofthe atomizing chamber,” we declineto institute on the
`
`remaining claims.
`
`I.
`
`CONCLUSION
`
`For the foregoing reasons, we determinethat Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail with respectto at
`
`least one ofthe claims challenged in the Petition. Accordingly, we do not
`
`institute an interpartes review ofthe ’114 patent.
`
`20
`
`

`

`IPR2024-00567
`Patent RE49,114E
`
`IV. ORDER
`
`It is ORDEREDthatthe Petition is denied as to all challenged claims
`
`of the 114 patent and notrialis instituted.
`
`21
`
`

`

`IPR2024-00567
`Patent RE49,114E
`
`FOR PETITIONER:
`
`Anish Desai
`Elizabeth Weiswasser
`Adrian Percer
`Anne Cappella
`William Ansley
`Christopher Pepe
`Matthew Sieger
`anish.desai@weil.com
`elizabeth. weiswasser@weil.com
`adrian. percer@weil.com
`anne.cappella@weil.com
`sutton.ansley@weil.com
`christopher.pepe@weil.com
`matthew. sieger@weil.com
`
`FOR PATENT OWNER:
`
`James Glass
`John McKee
`Quincy Lu
`jim glass@quinnemanuel.com
`johnmckee@quinnemanuel.com
`quincylu@quinnemanuel.com
`
`22
`
`

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