Patent 10,492,541 Mailed: November 23, 2021

Petitioner’s request for a refund of certain post-institution fees paid on March 31, 2021, in the above proceeding is hereby granted.

The amount of $22,500.00 has been refunded to Petitioner’s deposit account.

The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Patent 10,492,541 B2 including, but not limited to, water, beads, solvents, active ingredients, ethanol, plant extracts, natural or artificial flavors, and/or vapor formers such as glycerine and propylene glycol.

Specifically, for purposes of the Petition, Petitioner proposes that the Board should construe the term “face” according to Patent Owner’s contentions in the District Court case, namely, to mean “‘the surface of an object,’ which does not need to be bounded by one or more edges.” Id. at 8 (quoting Ex. 1024, 29; Ex. 1026, 27–28).

Patent Owner does not expressly adopt, or direct us to, the District Court’s construction of those phrases, although the order construing those terms was available at the time of filing of the Preliminary Response.

The view provided in Juul 1 (on the left in the above image) reflects, within the transparent lower portion, three circular or spherical elements, which appear to be air bubbles floating within a liquid.

For example, in connection with the front, rear, and side faces allegedly identifiable in Verleur’s cartomizer 200A, Petitioner does not explain where one surface ends or another begins, and no explanation is self- evident upon review of Figure 12.

For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.

Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.

If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2021-00746 Patent 10,492,541 mediation, etc.) was used and the general result.

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: • “This Might Just Be the First Great E-Cig,” WIRED, April 21, 2015 (“Juul 1”)

The cartridge has a plurality of faces that are transparent allowing a user to view the interior components, including the liquid, heating mechanism and vapor channel.

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.

After the first office action, applicants filed an IDS identifying over 100 references, including a publication related to Verleur (U.S. Patent Pub. No. 2015/0128971 A1 (“the ’971 publication”)).

Thus, to the extent the examiner even substantively considered the ’971 publication, the reasons for allowance demonstrate error, and Verleur also provides new evidence of obviousness that warrants consideration by the Office.

Under the Patent and Trademark Office’s Final Rule Setting and Adjusting

Patent Fees, 78 Fed. Reg. 4212, 4233–34 (Jan. 18, 2013), Petitioner requests a refund in the amount of $22,500 to be paid to Deposit Account No. 50-3013.

In accordance with the fee schedule specified in 37 C.F.R. § 42.15(a), Petitioner paid $41,500 at the time of filing of this petition.

On October 8, 2021, the Patent Trial and Appeal Board denied institution of review.

Accordingly, Petitioner requests a refund of $22,500 for the post-institution fees that it has paid in connection with IPR2021-00746.

The following Sotera stipulation was made in the co-pending district court

Altria Client Services LLC and U.S. Smokeless Tobacco Company LLC v. R.J. Reynolds Vapor Company - Case No. 1:20-cv-00472 (M.D.N.C.) Dear Mr. Ansley: Defendants R.J. Reynolds Vapor Company and Modoral Brands, Inc. (“Reynolds”) hereby stipulate that, if the Patent Trial and Appeal Board (“PTAB”) institutes the pending inter partes review petition in IPR2021-00746 challenging the patentability of claim 24 of U.S. Patent No. 10,492,541, then Reynolds will not pursue as to the challenged claim any ground raised or that could have been reasonably raised in the IPR in the above-captioned litigation, Case No. 1:20-cv-00472 (M.D.N.C.).

To avoid any doubt, if the PTAB declines institution of IPR2021-00746, Reynolds reserves the right to pursue these invalidity grounds in the parallel litigation.

Very truly yours, William E. Devitt

By the time the Board’s institution decision is due in October, the parties will have completed fact discovery, exchanged expert reports on invalidity grounds substantially identical to those raised in the Petition, and will be on the verge of filing dispositive motions.

Because the parties and the District Court already will have invested substantial resources litigating the same validity issues presented here, and because these circumstances are the result of Petitioner’s unexplained delay, this Fintiv factor heavily favors denying institution.

Petitioner may propose, as it has in other pending IPR proceedings, to stipulate that it will not rely on the primary references in the Petition, Juul 1 and Verleur, in the District Court case, in order to tip this factor in its favor.

To the extent the Juul Articles disclose a vaporizer compartment, it could be located in a number of places on this image, including at the top, behind the black portion, or somewhere along the silver tube.

U.S. Patent No. 10,492,541 In sum, Verleur teaches a standard prior art e-cigarette device with an unhoused heating element and wick located near the center of the liquid compartment.