Federal Circuit Finds Vaping Pipe Patent Not Valid

The Federal Circuit has upheld a Patent Trial and Appeal Board (PTAB or Board) ruling that certain claims of US Patent No. 10,561,170 were invalid for anticipation.

The court also upheld the Board’s denial of the patent owner’s proposed substitute patent claims.

The patent owner is Healthier Choices Management Corp. (“Healthier Choices”), a grocery and vape store chain. According to Seeking Alpha, some investors were attracted by the company’s patent infringement lawsuit against Philip Morris.

This appeal pertained to an inter partes review (IPR) in which Philip Morris challenged claims of the ’170 patent directed to an electronic vaping pipe.

Philip Morris also has its own line of E-vapor products.

As the court explained,

A patent is invalid for anticipation under 35 U.S.C. § 102 if a single prior art reference discloses each and every limitation of the claimed invention.

35 U.S.C. § 102 states the “novelty” condition for patentability:

Novelty; Prior Art.—A person shall be entitled to a patent unless—

(1)

the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2)

the claimed invention was described in a patent issued under section 151 or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

As the court explained,

The Board found that Philip Morris, whose evidence included expert testimony from Dr. Seetharama C. Deevi, had established by a preponderance of the evidence that prior art reference U.S. Patent Application Publication No. 2012/0160251 (“Hammel”) discloses each limitation of claims 1 and 5, including “a heating element fixed in the combustible material reservoir”—which is the only claim language at issue on appeal with respect to claims 1–8.

The Board rejected Healthier Choices’ argument that Hammel was silent as to “how the components are interconnected, and how the device operates” because Hammel’s disclosure “includes a circuit diagram showing electrical connections, including from battery 1 to heater 11, as controlled by controller 7 and initiated by mouthpiece switch 3.”

The Board also explained that Healthier Choices’ “assertions that Hammel’s disclosure is insufficient . . . do not adequately credit the ability of a person of ordinary skill in the art to interpret Hammel’s figures as a whole.”

In patent law, a “person of ordinary skill in the art” (sometimes called a “POSITA”) is a hypothetical person having the relevant level of ordinary skill in the “art” (i.e., the technology) that’s relevant to the patent at issue – in this case, the art of vaping pens.

The point of view of a POSITA is relevant in determining whether a pending or issued patent claim would have been obvious in view of the prior art, including prior patents.

In this case,

The Board found that (1) “a person of ordinary skill would have reasonably understood from Hammel’s figures that its heating element has legs that fix it in place in holes within the porcelain tube” and (2) “Dr. Deevi’s explanation of Hammel supports a reasonable inference that it discloses a heating element fixed in the combustible material reservoir.”

Thus, the court affirmed the Board’s decision.