Patent 10,485,269 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.

7 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.

In particular, the District Court found, “[A] person of ordinary skill in the art would understand the terms ‘front face’ and ‘rear face’ to mean: front/rear surface bounded by one or more edges.” Id. at 26 (emphasis omitted).

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 reasons that follow, we agree with Patent Owner that Petitioner does not show sufficiently that Verleur would have suggested a vapor precursor compartment having front and rear faces as specified in claim 19.

Even if Petitioner had made such a comparison, however, the Petition is deficient for failure to explain why the Board should view Patent Owner’s District Court infringement contentions as sufficient to show that the claim limitation reads on the prior art.

Patent Owner disagrees, arguing, “Even if the vaporizer has external ‘sides,’ that does not necessarily mean that the internal surfaces that mate with the cartomizer must share those sides.” Prelim. Resp. 38 n.8 (emphasis in original).

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 IPR2021-00745 Patent 10,485,269 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”) (Ex. 1011).

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.

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.

After the examiner issued a notice of allowance, applicants filed an IDS identifying close to 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 IPR2021-00745.

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 IPR2021-00745 challenging the patentability of claim 19 of U.S. Patent No. 10,485,269, 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 IPR2021-00745, Reynolds reserves the right to pursue these invalidity grounds in the parallel litigation.

Very truly yours, William E. Devitt