RAI Strategic Holdings, Inc.

Patent Trials and Appeals Board

Jan 13, 2021

IPR2020-01188 (P.T.A.B. Jan. 13, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Entered: January 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PHILIP MORRIS PRODUCTS, S.A.,
Petitioner,

v.

RAI STRATEGIC HOLDINGS, INC.,
Patent Owner.
____________

IPR2020-01188
Patent 10,492,542 B1
____________

Before JEFFREY W. ABRAHAM, ELIZABETH M. ROESEL, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

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I. INTRODUCTION
Philip Morris Products, S.A. (“Petitioner”) filed a Petition requesting
inter partes review of claims 1–30 of U.S. Patent No. 10,492,542 B1 (“the
’542 patent,” Ex. 1001). Paper 2 (“Pet.”). RAI Strategic Holdings, Inc.
(“Patent Owner”) filed a Patent Owner Preliminary Response to the Petition.
Paper 6 (“Prelim. Resp.”).
After receiving authorization from the Board, Petitioner filed a Reply
to Patent Owner’s Preliminary Response (Paper 7, “Reply”), Patent Owner
filed a Sur-reply (Paper 8, “Sur-reply”), and each party filed a supplemental
brief (Paper 11, “Pet. Suppl. Br.”; Paper 9, “PO Suppl. Br.”).
For the reasons set forth below, we deny institution of inter partes
review.
II. BACKGROUND
A. Related Matters
The parties indicate that the ’542 patent is involved in RAI Strategic
Holdings, Inc. v. Altria Client Services LLC, No. 1:20-cv-393 (E.D. Va. filed
Apr. 9, 2020), and is the subject of PGR2020-00071, which Petitioner filed
concurrently with this proceeding. Pet. 75; Paper 4, 1–2. The parties also
identify IPR2020-01094, which involves related U.S. Patent No. 9,930,915.
Pet. 75; Paper 4, 1.
B. The ’542 Patent
The ’542 patent, titled “Smoking Articles and Use Thereof For
Yielding Inhalation Materials,” issued on December 3, 2019, from U.S.
Patent Application No. 16/564,902 (“the ’902 Application”), filed
September 9, 2019. Ex. 1001, codes (54), (45), (21), (22). The ’542 patent
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claims priority to U.S. Patent Application No. 13/205,841 (“the ’841
Application), filed on August 9, 2011. Ex. 1001, code (60).
The ’542 patent is directed to “articles wherein tobacco, a tobacco
derived material, or other material is heated, preferably without significant
combustion, to provide an inhalable substance, the substance, in the various
embodiments, being in a vapor or aerosol form.” Ex. 1001, 1:22–27. The
’542 patent explains that many previous smoking articles have been
proposed as improvements upon, or alternatives to, smoking products that
combust tobacco. Ex. 1001, 1:31–33. These improvements and alternatives
seek to “provide the sensations associated with cigarette, cigar, or pipe
smoking, without delivering considerable quantities of incomplete
combustion and pyrolysis products.” Ex. 1001, 1:38–41. According to the
’542 patent, previous attempts to “produce the taste and sensation of
smoking by electrically heating tobacco have suffered from inconsistent
release of flavors or other inhalable materials” and have been limited to the
use of an external heating device that “was inconvenient and detracted from
the smoking experience.” Ex. 1001, 2:5–11.
To overcome the drawbacks of prior art devices, the ’542 patent
describes an article that generally includes a cartridge body defining an
interior space that can hold an inhalable substance medium and an electrical
heating element, and a power source that heats at least a segment of the
inhalable substance medium sufficiently to form a vapor comprising the
inhalable substance. Ex. 1001, 2:36–55. The inner wall of the cartridge
body and the outer wall of the inhalable substance medium define a space,
which, together with the “mouth end” of the cartridge body, are configured
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to allow passage of the vapor comprising the inhalable substance to a
consumer. Ex. 1001, 2:36–55, 6:21–39.
One embodiment of the article described in the ’542 patent is depicted
in Figure 1, reproduced below.

Figure 1 of the ’542 patent is a “perspective view of an article according to
an embodiment of the invention” comprising cartridge 300 engaging control
housing 200, wherein the cartridge is inserted into receiving chamber 210 of
control housing 200. Ex. 1001, 7:49–52, 11:64–12:3. Control housing 200
also includes control segment 205. Ex. 1001, 11:67–12:2.
Figure 4 of the ’542 patent, reproduced below, shows another
embodiment.
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Figure 4 shows a perspective view of the interior of cartridge 300 and
receiving chamber 210 of control housing 200. Ex. 1001, 7:59–67, 12:27–
32. Cartridge 300 comprises cartridge body 305, formed of a wall having an
inner and outer surface and a substantially tubular shape. Ex. 1001, 12:32–
34. Cartridge body 305 has opposing terminal ends: engaging end 310 that
engages receiving chamber 210, and mouth end 315 configured to allow
passage of an inhalable substance to a consumer. Ex. 1001, 12:34–38. The
inner wall surface of cartridge body 305 defines an interior cartridge space,
which contains inhalable substance medium 350. Ex. 1001, 13:11–13.
Inhalable substance medium 350 is also substantially tubular shaped and is
formed of wall 352 with an inner surface and an outer surface. Ex. 1001,
16:30–32.
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Control housing 200 includes electrical energy source 220 that
provides power to electrical heating member 400, and projection 225 that
extends to the end of receiving chamber 210. Ex. 1001, 23:22–27.
In the embodiment depicted in Figure 4,
projection [225] is dimensioned to slide inside the interior space
defined by the inner surface of the wall 352 of the inhalable
substance medium 350. The projection also is dimensioned to
provide the electrical heating member in sufficient proximity to
the inhalable substance medium (preferably in direct contact
therewith) to heat the medium and cause release of the inhalable
substance. Thus, the engaging end 310 of the cartridge
generally or the cartridge body 305 specifically can be
characterized as including an opening that is sufficiently sized
and shaped to receive at least one component of the electrical
energy source (i.e., the projection 225).
Ex. 1001, 23:32–43.
The spatial relationship between projection 225 and inhalable
substance medium 350 is further shown in Figure 7 of the ’542 patent,
reproduced below.
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Figure 7 shows cartridge 300 “inserted into receiving the chamber 210
the minimum distance necessary such that heating member 400 that is
attached to the projection 225 . . . has been positioned inside the
central cavity 351 of the tubular inhalable substance medium.”
Ex. 1001, 28:14–21.
Figure 4a, reproduced below, shows a cross-section of the
cartridge depicted in Figures 4 and 7. Ex. 1001, 8:1–5.
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Figure 4a shows inhalable substance medium 350 having inner cavity 351
(not numbered in the figure) and vapor barrier 375 on the inner surface of its
wall. Ex. 1001, 16:40–42. Vapor barrier 375 prevents the release of “vapor
or aerosol into the interior volume of the inhalable substance medium and
facilitate[s] release of the vapor or aerosol into an annular space 319 defined
by the outer surface of the inhalable substance medium wall 352 and the
inner surface of the wall of the cartridge body 305.” Ex. 1001, 16:40–48.
The ’542 patent explains that
When a consumer draws on the mouth end of the cartridge 300,
air thus can be drawn into the receiving chamber, pass into the
cartridge, be drawn through the segmented and flared second
end 354 of the inhalable substance medium 350, enter the
annular space 319 between the inhalable substance medium and
the cartridge body 305, and pass through the open space in the
cartridge frame member 360 for inhalation by the consumer.
Ex. 1001, 28:66–29:7.

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C. Challenged Claims
Petitioner challenges claims 1–30 of the ’542 patent. Claims 1 and 19
are the only independent claims. Independent claim 1 is illustrative, and is
reproduced below:
1. A smoking article for receiving a disposable aerosol
forming substance, the smoking article comprising:
a housing having a proximal end for receiving the disposable
aerosol forming substance and an opposite distal end;
a power source arranged within the housing adjacent to the
distal end;
a receiving chamber formed at the proximal end of the
housing and having an opening for receiving the
disposable aerosol forming substance;
a heating projection extending at least partially in the
receiving chamber towards the proximal end of the
housing and terminating at a free end which is configured
to be inserted into the disposable aerosol forming
substance for heating the disposable aerosol forming
substance, the heating projection comprising:
a heating member comprising an electrically resistive
metal which is configured to heat the disposable aerosol
forming substance;
an electrical connector for providing a flow of electricity
to the heating member for heating the heating member;
and
a control circuit positioned within the housing between the
power source and the heating projection and connecting
the heating member of the heating projection to the power
source.
Ex. 1001, 42:12–37.
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2. Asserted Challenges
Petitioner asserts that claims 1–30 would have been unpatentable
based on the following challenges:

Claim(s)
Challenged 35 U.S.C. § References/Basis
1–9, 11–17,
19–26, 28–30 §103 Robinson,
1 Greim2
10, 27 §103 Robinson, Greim, Adams3
18 §103 Robinson, Greim, Wang4

Petitioner also relies on the declaration of Seetharama C. Deevi (“the
Deevi Declaration,” Ex. 1004).
III. ANALYSIS
The applicable statute provides that a “petition for inter partes review
shall be filed after the later of either—(1) the date that is 9 months after the
grant of a patent, or (2) if a post-grant review is instituted under chapter 32,
the date of the termination of such post-grant review.” 35 U.S.C. § 311(c).
Similarly, our rules require that, if a patent is a patent described in section
3(n)(1) of the Leahy-Smith America Invents Act, a petition for inter partes
review must be filed no earlier than nine months after the date of the grant of
the patent. 37 C.F.R. § 42.102(a)(1). Leahy-Smith America Invents Act
(“AIA”), Pub L. No. 112-29, 125 Stat. 284 (2011). AIA section 3(n)(1)

1 US 7,726,320 B2, issued June 1, 2010 (Ex. 1006).
2 WO 2011/050964 A1, published May 5, 2011 (Ex. 1007).
3 US 2007/0102013 A1, published May 10, 2007 (Ex. 1008).
4 WO 2008/139411 A2, published Nov. 20, 2008 (Ex. 1012).
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describes patents that issue from applications “that contain[] or contained at
any time . . . a claim to a claimed invention that has an effective filing date
in Section 100(i) of title 35, United States Code, that is on or after” “the
expiration of the 18-month period beginning on the date of the enactment
of” the AIA. AIA § 3(n)(1). Because the AIA was enacted on September
16, 2011, section 3(n)(1) patents are those that issue from applications that at
one point contained at least one claim with an effective filing date on or after
March 16, 2013, with “effective filing date” having the definition given to it
by 35 U.S.C. § 100(i).
Petitioner, concurrent with the filing of this inter partes review
Petition, filed a post-grant review petition, PGR2020-00071, directed to the
same claims of the ’542 patent that are challenged here. Based upon the
information presented in the post-grant review petition, we held in the
decision instituting a post-grant review that Petitioner has established that at
least one claim of the ’542 patent has an effective filing date after March 16,
2013. PGR2020-00071, Paper 11. Accordingly, based on the evidentiary
record presented to date in the post-grant review, we determined the ’542
patent is a section 3(n)(1) patent for which no inter partes review may be
filed until 9 months after the issuance of the patent, or until after the date of
termination of the post-grant review. PGR2020-00071, Paper 11.
The ’542 patent issued on December 3, 2019. Ex. 1001, at code (45).
We instituted a post-grant review of the ’542 patent on January 13, 2021,
and that post-grant review is currently pending. Petitioner filed the instant
Petition on June 26, 2020. As such, the instant Petition was filed within 9
months of the grant of the ’542 patent and before termination of the post-
grant review. The Petition is therefore premature, and, as a result, we deny
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institution of inter partes review. 35 U.S.C. § 311(c); 37 C.F.R.
§ 42.102(a)(1).
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Petition is denied and no trial is instituted.

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For PETITIONER:

Jonathan M. Strang
Matthew J. Moore
Dale Chang
Lesley M. Hamming
LATHAM & WATKINS LLP
jonathan.strang@lw.com
matthew.moore@lw.com
dale.chang@lw.com
lesley.hamming@lw.com

For PATENT OWNER:

David M. Maiorana
Anthony M. Insogna
Kenneth S. Luchesi
Geoffrey K. Gavin
Joshua R. Nightingale
George N. Phillips
David B. Cochran
JONES DAY
dmaiorana@jonesday.com
aminsogna@jonesday.com
kluchesi@jonesday.com
ggavin@jonesday.com
jrnightingale@jonesday.com
gphillips@jonesday.com
dcochran@jonesday.com