R.J. Reynolds Seeks PTO Review of Phillip Morris E-Cigarette Patent

R.J. Reynolds Vapor Company (RJRV) has petitioned the United States Patent and Trademark Office for inter partes review of six claims made in a patent assigned to Philip Morris Products S.A. United States Patent No. 9,814,265 relates to the basic functionality of e-cigarettes, according to Monday’s petition. RJRV requests the cancellation of the claims as unpatentable, asserting that they are well-known in the art and their combination would have been obvious.

The 82-page filing explains the intricacies of the heating and vaporizing mechanisms used in e-cigarettes, and includes several detailed diagrams. The petition also explains that RJRV has standing to request cancellation based on its certification that the patent-in-suit is available for inter partes review and that RJRV is neither barred nor estopped from making the request.

The petition then describes prior art. The patent-in-suit reportedly acknowledges that the “basic principles” of electronic-cigarette design were “developed to marketability and optimized” over a period of two-decades predating the patent. Hence, RJRV argues, the patent describes a “prior-art approach, ‘which dates back to 1990’ and had ‘become accepted in view of its comparatively easy technical realizability in combination with its convincing functionality.’”

According to the filing, there are disadvantages in the prior art that the asserted patent claims to fix, such as the increasing contamination of the vaporizing unit throughout its life, a fluid leak, and that due to its design, the e-cigarette’s length cannot be shortened.

RJRV takes issue with the patent’s six claims on the basis that to a person having ordinary skill in the art (POSITA), it would have been obvious to combine previous inventions to overcome the claimed deficiencies. Additionally, the filing explains why four prior inventions would have led a POSITA to draw the same conclusions the patent asserts as novel.

RJRV is represented by Jones Day.