The parties identify Certain Vaporizer Devices, Cartridges Used Therewith, and Components Thereof, 337-TA-1368 (ITC) and JUUL Labs, Inc. v. NJOY, LLC et al., 23-cv-01204 (D. Ariz.) as related proceedings.

Patent RE49,114 E Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity ... the evidence that supports the grounds for the challenge to each claim”)).

Patent Owner argues that Cho does not disclose a “liquid reservoir [that] is partially defined by the exterior of an atomizing chamber” (Prelim. Resp. 8 (citing Ex. 2001 ¶ 47)), that the Petitioner’s “integrated embodiment” mixes and matches embodiments in a ground presented as anticipatory (id. at 9), and that the “integrated embodiment” is not enabled (id.).

Patent Owner argues that Petitioner’s edited Figure 11 nonetheless does not show that the liquid reservoir 1503 is defined by an exterior of the atomizing chamber as required by the claim.

Because Petitioner has failed to show a reasonable likelihood that Cho teaches a “liquid reservoir at least partially defined by an interior of the cartridge housing and an exterior of the atomizing chamber,” we decline to institute on the remaining claims.

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 IPR2024-00567 Patent RE49,114 mediation, etc.) was used and the general result.

No. Exhibit 2001 Declaration of John Collins, Ph.D. 2002 Statutory Disclaimer for RE49,114

In order to meet its burden, Petitioner must show that Cho discloses every element within the four corners of the reference as arranged in the challenged claims, i.e., without combining distinct embodiments.

In an inter partes review, claim terms receive their plain and ordinary meaning in light of the specification of the patent in which they appear, the

The Petition fails to establish that Cho anticipates the challenged claims for at least the following reasons: First, for claims 43 and 44, for the limitation “liquid reservoir at least partially defined by an interior of the cartridge housing and an exterior of the atomizing chamber,” Cho does not disclose this limitation, nor does the half-sentence Petitioner relies upon—which, in any case, is a distinct, mutually incompatible embodiment that cannot be combined with Cho’s other disclosures, and is also not an enabling disclosure.

Cho states that the “object of the present invention is to provide a device for vaporisation and inhalation [of] highly viscous target substances … such as amino acids, vitamins, and minerals.” Id., ¶8; see also ¶11 (“minerals,

The provision of such therapeutic substances and benefits by Cho’s apparatus is the direct opposite of the ’114 patent’s claimed electronic cigarette—which is to “emulate a tobacco cigarette[]” by providing nicotine when “a liquid is atomized” “[r]ather than burning tobacco.” Ex. 1001, ¶¶1:19-24; Ex. 2001, ¶68.

Pursuant to 37 C.F.R. § 42.8, Patent Owner JUUL Labs, Inc. (“Patent Owner”), hereby submits the following mandatory notices in connection with the Petition for Inter Partes review of U.S. Patent No. RE49,114 Case No. IPR2024- 00567.

Related Matters Under 37 C.F.R. § 42.8(b)(2) The following judicial or administrative matters may affect or be affected by a decision in this proceeding: Certain Vaporizer Devices, Cartridges Used Therewith, and Components Thereof, 337-TA-1368 (ITC) JUUL Labs, Inc. v. NJOY, LLC et al., 23-cv-01204 (D. Ariz.) NJOY, LLC et al. v. JUUL Labs, Inc., IPR2024-00223 NJOY, LLC et al. v. JUUL Labs, Inc., IPR2024-00231 NJOY, LLC et al. v. JUUL Labs, Inc., IPR2024-00267 NJOY, LLC et al. v. JUUL Labs, Inc., IPR2024-00268 NJOY, LLC et al. v. JUUL Labs, Inc., IPR2024-00536

Lead and Backup Counsel, Under 37 C.F.R. § 42.8(b)(3) Patent Owner designates the following counsel for this proceeding:

Please address all correspondence and service to all counsel as listed above.

Patent Owner’s Mandatory Notices Patent Owner consents to service by email at the addresses listed above.

Patent Owner JUUL Labs, Inc., hereby appoints the following Practitioners associated with Customer Number 505708 as its attorneys to transact all business in the Patent Trial & Appeal Board of the United States Patent & Trademark Office, including the power to add or remove backup counsel, associated with the above-captioned inter partes review.

Printed Name: Wayne Sobon Title: Vice President, Intellectual Property Date: February 29, 2024

Cho further Petition for Inter Partes Review of U.S. Patent No. RE49,114 discloses that loading portion 1503 (liquid reservoir) is separated from the atomizing chamber by the bottom wall of the storage container and the inductor module / fixing plate 1327.

Cho discloses a loading portion 1503 (liquid reservoir) at least partially Petition for Inter Partes Review of U.S. Patent No. RE49,114 defined by an interior of storage container 1201 and an exterior of the atomizing chamber.

EX1006, ¶ [0027] (“Additional embodiments of the [electronic vaporizing device] Petition for Inter Partes Review of U.S. Patent No. RE49,114 may include a viewing-window to enable a user to visually monitor the level of fluid in the liquid cartridge.”).

Because the Arizona Litigation was stayed early—even before the defendants filed a responsive pleading—the court and the parties have made minimal investments, and the trial would likely occur long after a final written decision in this proceeding.

Petition for Inter Partes Review of U.S. Patent No. RE49,114 Because the Office has not previously considered Cho or Nielsen, or the invalidity arguments stemming therefrom, discretionary denial under 35 U.S.C. § 325(d) is not warranted.