Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 7
`Entered: December 30, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`CB DISTRIBUTORS, INC. and
`DR DISTRIBUTORS, LLC
`Petitioner
`
`v.
`
`RUYAN INVESTMENT (HOLDINGS) LIMITED
`Patent Owner
`____________
`
`Case IPR2013-00387
`Patent 8,156,944 B2
`
`_______________
`
`
`Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAMARA, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`
`BONILLA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`VMR-Ex. 1023-001
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`I.
`
`INTRODUCTION
`
`CB Distributors, Inc. and DR Distributors, LLC (collectively “CB
`
`Distributors”) filed a petition (Paper 1, “Pet.”) to institute an inter partes review of
`
`claims 1-12, 15-26, and 33-41 of U.S. Patent No. 8,156,944 B2 (Ex. 1001) (“the
`
`’944 patent”) pursuant to 35 U.S.C. § 311 et seq. Ruyan Investment (Holdings)
`
`Limited (“Ruyan”) did not file a preliminary response. We have jurisdiction under
`
`35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides:
`
`THRESHOLD—The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`For the reasons set forth below, we conclude that CB Distributors has
`
`established a reasonable likelihood that it will prevail in showing the
`
`unpatentability of at least one challenged claim. Pursuant to 35 U.S.C. § 314, we
`
`institute an inter partes review of claims 1-12, 15-26, and 33-38, but not claims 39-
`
`41, of the ’944 patent.
`
`A. Related Matters
`
`CB Distributors indicates that a third party, Fin Branding Group, LLC
`
`(“Fin”), requested inter partes reexamination of the ’944 patent, i.e., reexamination
`
`proceeding 95/002,235. Pet. 1. In an Order entered July 24, 2013, the Board
`
`stayed that reexamination in view of this inter partes review. Paper 6.
`
`CB Distributors also indicates that Ruyan filed lawsuits asserting
`
`infringement of the ’944 patent against nine different defendants in U.S. District
`
` 2
`
`
`
`
`
`VMR-Ex. 1023-002
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`Court for the Central District of California, including Ruyan Investment (Holdings)
`
`Limited v. CB Distributors, Inc. and DR Distributors, LLC, No. CV12-5456, and
`
`Ruyan Investment (Holdings) Limited v. Fin Branding Group, LLC, No. CV12-
`
`5468. Pet. 1-2. The district court consolidated all nine cases for pre-trial purposes
`
`as Ruyan Investment (Holdings) Limited v. Sottera, Inc., No. CV12-5454. Id. at 2.
`
`On February 25, 2013, the district court stayed all proceedings in light of the inter
`
`partes reexamination requested by Fin. Id.
`
`B. The ’944 Patent (Ex. 1001)
`
`The ’944 patent relates generally to an aerosol electronic cigarette that
`
`contains nicotine, but not tar, and “substitutes for cigarettes and helps the smokers
`
`to quit smoking.” Ex. 1001, 1: 5-7, 57-60. Figure 1 of the ’944 patent, as
`
`reproduced in better quality in the petition, is reproduced below.
`
`
`
`Pet. 4; Ex. 1001, Fig. 1. Figure 1 depicts a side section view of an aerosol
`
`electronic cigarette comprising a battery assembly, an atomizer assembly, a
`
`cigarette bottle assembly, and shell a. Id. at 5:38-42; 1:62-65. The battery
`
`assembly includes battery 3, operating indicator 1, electronic circuit board 4, and
`
`airflow sensor 5. The atomizer assembly is atomizer 8. Id. at 6:13-15. The
`
`cigarette bottle assembly includes a perforated component for liquid storage 9
`
`inside hollow cigarette holder shell b. Id. at 6:56-58.
`
` 3
`
`
`
`
`
`VMR-Ex. 1023-003
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`Figures 5-8 of the ’944 patent, as reproduced in better quality in the petition,
`
`are reproduced below.
`
`Pet. 5; Ex. 1001, Figs. 5-8. Figure 5 depicts a side section view of porous
`
`component 81 and run-through atomizing chamber 811 of atomizer 8 (shown in
`
`Figure 1). Figure 6 depicts electric heating rod 82 of atomizer 8. Figure 7 depicts
`
`a side section of atomizer 8, including porous component 81, electric heating rod
`
`82 (shown in Figure 6), and negative pressure cavity 83. Figure 8 depicts a cubic
`
`
`
`structure of atomizer 8. Ex. 1001, 4:44-55; 6:13-42.
`
`C. Illustrative Claims
`
`Claims 1, 10, 39, and 41 are independent. Claims 2-9 depend, directly or
`
`indirectly, on claim 1, which is reproduced below:
`
`1. An aerosol electronic cigarette, comprising:
`
`a battery assembly, an atomizer assembly, a cigarette-solution
`storage area, and a hollow shell having a mouthpiece;
`
` 4
`
`
`
`
`
`VMR-Ex. 1023-004
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`the battery assembly connects with the atomizer assembly, and
`both are located in the shell;
`
`the cigarette solution storage area is located in one end of the
`shell adjacent to the mouthpiece, and fits with at least a portion of the
`said atomizer assembly inside it;
`
`the shell has through-air-inlets;
`
`the atomizer assembly includes an atomizer comprising an
`electric heating rod and a run-through atomizing chamber;
`
`the electric heating rod comprises a cylinder and a heating
`element provided at the wall of the cylinder,
`
`the electric heating rod is in the said atomizing chamber and
`there is a negative pressure cavity in the atomizing chamber.
`
`Id. at 9:2-16 (emphasis and indentation added).
`
`Claims 11, 12, 15-26, and 33-38 depend, directly or indirectly, on claim 10,
`
`which is reproduced below:
`
`10. An aerosol electronic cigarette, comprising:
`
`a battery assembly, an atomizer assembly, a cigarette solution
`storage area, and a shell that is hollow and comprises a mouthpiece;
`
`the said battery assembly connects with the said atomizer
`assembly, and both are located in the said shell;
`
`the said cigarette solution storage area is located in one end of
`the shell proximal to the mouthpiece, and fits with at least a portion of
`the said atomizer assembly inside it;
`
`the said shell has through-air-inlets;
`
`the atomizer assembly is an atomizer, which includes a porous
`component and an electric heating rod;
`
`wherein the electric heating rod comprises a cylinder and a
`heating element provided at the wall of the cylinder, the said porous
`component has a run-through atomizing chamber;
`
`the electric heating rod is in the said atomizing chamber and
`there is a negative pressure cavity in the atomizing chamber.
`
` 5
`
`
`
`
`
`VMR-Ex. 1023-005
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`Id. at 9:36-52 (emphasis and indentation added). Independent claims 39 and 41 are
`
`similar to claim 10, but further recite elements relating to the heating element, as
`
`well as additional elements relating to “a protuberance on one end” of the porous
`
`component. Id. at 11:23-12-37. Claim 40 depends on claim 39. Id. at 12:9-12.
`
`D. Prior Art Relied Upon
`
`CB Distributors relies upon the following prior art references:
`
`Liu
`
`Susa
`
`
`
`
`
`Hon ’494
`
`
`
`
`
`WO 2007/078273 A1
`
`July 12, 2007
`
`Ex. 1019
`
`EP 0 845 220 A1
`
`
`
`June 3, 1998
`
`Ex. 1020
`
`Ex. 1008
`WO 2005/099494 A1 Oct. 27, 2005
`
`
`
` (English translation Ex. 1009)
`
`E. Alleged Grounds of Unpatentability
`
`CB Distributors contends that claims 1-12, 15-26, and 33-41 of the
`
`’944 patent are unpatentable under 35 U.S.C. §§ 102(b) and 103(a) based on the
`
`following five grounds. Pet. 11.
`
`Reference(s)
`
`Basis
`
`Claims Challenged
`
`Liu
`
`Liu
`
`§ 102
`
`1, 2, 5-8, 10, 33, 35, 37, and 38
`
`§ 103
`
`20
`
`Liu and Susa
`
`§ 103
`
`3, 4, 12, 15, 17, and 26
`
`Hon ’494 and Liu
`
`§ 103
`
`1-4, 8-12, 15-26, 33, 34, 36, and 38
`
`Hon ’494, Liu, and Susa
`
`§ 103
`
`39-41
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`Consistent with the statute and legislative history of the Leahy-Smith
`
`America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011), the Board
`
` 6
`
`
`
`
`
`VMR-Ex. 1023-006
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`construes claims in an unexpired patent by applying the broadest reasonable
`
`interpretation in light of the specification. 37 C.F.R. § 42.100(b); see also Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim
`
`terms are also given their ordinary and customary meaning as would be understood
`
`by one of ordinary skill in the art in the context of the entire disclosure. In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`1. “Run-through atomizing chamber”
`
`All challenged independent claims recite an atomizer assembly that
`
`“includes an atomizer comprising an electric heating rod and a run-through
`
`atomizing chamber.” CB Distributors contends that “run-through atomizing
`
`chamber” means “a chamber having a flow in which atomization occurs along the
`
`length thereof,” and does not require “that the input and output ends of the
`
`chamber be unblocked.” Pet. 13-14. For the purposes of this decision, we adopt
`
`that claim construction, which is logical when reading each challenged claim as a
`
`whole, and is consistent with disclosures in the Specification of the ’944 patent.
`
`For example, one embodiment of the atomizing chamber is “run-through
`
`atomizing chamber (811),” as described in the Specification and shown in
`
`Figures 5, 7, and 8 of the ’944 patent. Ex. 1001, 6:13-16; Figs. 5, 7, 8. The
`
`Specification discloses that the “diameter of the electric heating rod (82) is less
`
`than the diameter of the atomizing chamber (811),” and that “electric heating rod
`
`(82) enters into the atomizing chamber (811), and there is a clearance between the
`
`electric heating rod (82) and interior wall of the atomizing chamber (811), which
`
`forms a negative pressure cavity (83).” Id. at 6:16-21. Independent claims 1 and
`
`10, and the Specification, indicate that the electric heating rod includes “a cylinder
`
`and a heating element provided at the wall of the cylinder.” Id. at 2:44-46.
`
` 7
`
`
`
`
`
`VMR-Ex. 1023-007
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`Consistently, a “run-through atomizing chamber” in the challenged claims
`
`refers to a chamber inside an atomizer, where that chamber is defined by an
`
`interior wall of a component in the atomizer creating the chamber, e.g., the interior
`
`wall of cylindrical porous component 81, as shown in Figures 5 and 7 of the
`
`’944 patent. Although the Specification does not define “run-through” per se, a
`
`reading of independent claim 1, 10, 39, or 41, in view of the Specification,
`
`indicates that this phrase means that the atomizing chamber runs through, i.e.,
`
`inside and along the length of, the atomizer and its electric heating rod, and
`
`atomization occurs along (i.e., runs through) the length of the chamber.
`
`2. “Negative pressure cavity in the atomizing chamber”
`
`All challenged independent claims recite an atomizer assembly where “there
`
`is a negative pressure cavity in the atomizing chamber.” As noted above, the
`
`’944 patent Specification discloses that a clearance exists between the heating rod
`
`and an interior wall of a component in the atomizer that defines the run-through
`
`atomizing chamber. Id. at 2:40-42; 6:13-21, 40-41. The Specification also
`
`discloses that the “clearance forms a negative pressure cavity.” Id. The
`
`Specification describes that when a person inhales, within shell b, “one end of the
`
`airflow sensor (5) forms a normal pressure cavity, while the other end forms a
`
`negative pressure cavity.” Id. at 7:8-11. As further described in the Specification,
`
`and shown in Figure 1, “air enters the normal pressure cavity through the air inlet
`
`(a1), passes the check valve (7) via the airflow passage in the airflow sensor (5),
`
`and flows to the negative pressure cavity (83) in the atomizer (8).” Id. at 7:22-25;
`
`Fig. 1.
`
`In addition, the Specification discloses that because “negative pressure
`
`cavity (83) provides the negative pressure compared with the outside, the air flow
`
`sprays into it, bringing the cigarette liquid from the porous component (81) to
`
` 8
`
`
`
`
`
`VMR-Ex. 1023-008
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`spray into the negative pressure cavity (83) in the form of fine drips.” Id. at 7:25-
`
`29. After the fine drips enter into the negative pressure cavity, the heating rod
`
`heats the drips for atomization. Id. at 7:30-32. After atomization, the drips form a
`
`“gasoloid, which is discharged through the negative pressure cavity (83) and run-
`
`through hole (813),” and into shell b, and absorbed by air channel b1. Id. at 7:32-
`
`43.
`
`In other words, negative pressure in cavity 83 causes an air and liquid
`
`mixture to form fine drips as the mixture leaves the porous component and enters
`
`cavity 83. The above-mentioned disclosures in the Specification, as a whole,
`
`indicate that cavity 83 has a negative pressure compared to pressure outside that
`
`cavity, i.e., outside the run-through atomizing chamber, e.g., outside porous
`
`component 81, as depicted in Figures 5 and 7 of the Specification.
`
`For the purposes of this decision, consistent with each independent claim as
`
`a whole, an ordinary meaning of the phrase “negative pressure”1 in relation to a
`
`distinct cavity, as well as disclosures in the Specification, we interpret “negative
`
`pressure cavity” to refer to a cavity within the run-through atomizing chamber of
`
`the atomizer, where pressure inside that cavity is negative compared to pressure
`
`outside the cavity. For example, pressure inside the negative pressure cavity is
`
`negative compared to pressure outside the atomizer assembly, within the recited
`
`shell of the electronic cigarette.
`
`
`1 See, e.g., OXFORD DICTIONARY OF SCIENCE 633 (4th ed. 1999) (defining
`“pressure” as the “force normally acting on unit area of a surface or the ratio of
`force to area”).
`
` 9
`
`
`
`
`
`VMR-Ex. 1023-009
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`3. “Cigarette solution storage area”
`
`All challenged independent claims recite a “cigarette solution storage area”
`
`that is “located in one end of the shell” and “fits with at least a portion of the said
`
`atomizer assembly inside it.”
`
`An example of the recited “cigarette solution storage area” is “perforated
`
`component for liquid storage (9),” located inside shell b, as shown in Figure 1 and
`
`described in the ’944 patent Specification. Id. at 6:56-58. Dependent claim 2, for
`
`instance, recites “a cigarette solution in the cigarette solution storage area, the
`
`cigarette solution comprising nicotine.” Id. at 9:34-36. Such claim language
`
`indicates that the cigarette solution storage area is capable of storing a cigarette
`
`solution, such as one comprising nicotine. See also id. at 11:21-23 (claim 38,
`
`reciting “a cigarette solution comprising nicotine”).
`
`As depicted in Figures 1, 5, and 7, and described in the Specification, porous
`
`component 81 of atomizer 8 (part of the atomizer assembly) “has a protuberance
`
`on one end,” i.e., protuberance 812, that fits inside perforated component for liquid
`
`storage 9. Id. at 2:46-50; 4:44-45; 6:23-30; see Figure 1 (depicting a protuberance
`
`on atomizer 8 fitting inside perforated component for liquid storage 9).
`
`For the purposes of this decision, consistent with each claim as a whole, as
`
`well as disclosures in the Specification, a “cigarette solution storage area” that “fits
`
`with at least a portion of the said atomizer assembly inside it” means that at least a
`
`part of an atomizer, such as a protuberance on a component of an atomizer, is
`
`located inside the cigarette solution storage area, which is capable of storing a
`
`cigarette solution, such as one comprising nicotine. See also, Ex. 1001, claim 2,
`
`9:17-19.
`
`
`
`
`
`10
`
`VMR-Ex. 1023-010
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`4. “Porous component”
`
`Independent claims 10, 39, and 41 recite an atomizer that “includes a porous
`
`component.” Claim 20, which depends on claim 10, recites that the “porous
`
`component is made of foamed nickel, stainless steel fiber felt, polymer or
`
`ceramics.”
`
`An example of the porous component is porous component 81, shown in
`
`Figures 5, 7, and 8 of the Specification of the ’944 patent (reproduced above).
`
`Pet. 5; Ex. 1001, Figs. 5, 7, 8. The Specification describes that “porous component
`
`(81) is made of foamed nickel, stainless steel fiber felt, macromolecular polymer
`
`foam or foamed ceramics, providing the remarkable capabilities in liquid
`
`absorption and diffusion, and the ability to absorb the liquid stored in the cigarette
`
`bottle assembly.” Ex. 1001, 6:30-34. The Specification also states that porous
`
`component 81 “absorbs the cigarette liquid from the perforated component for
`
`liquid storage (9).” Id. at 7:3-7. The Specification further describes that “[a]fter
`
`atomization, the big-diameter fine drips are re-absorbed by the porous component
`
`(81) under the action of vortex.” Id. at 7:32-37.
`
`For the purposes of this decision, consistent with disclosures in the
`
`Specification as well as an ordinary meaning of the phrase “porous,”2 we interpret
`
`a “porous component” to be a component of the atomizer assembly in the
`
`electronic cigarette that includes pores and is permeable to liquid, such as cigarette
`
`solution from the cigarette solution storage area.
`
`
`2 See, e.g., Random House Webster’s College Dictionary 1051 (1995) (defining
`“porous” as “permeable by water, air, etc.” or “full of pores”).
`
`
`
`11
`
`
`
`VMR-Ex. 1023-011
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`B. Discussion
`
`1. 35 U.S.C. § 102(b) Ground Based on Liu
`
`CB Distributors contends that Liu anticipates 1, 2, 5-8, 10, 33, 35, 37, and
`
`38. Pet. 11, 18-29. CB Distributors uses claim charts to explain how the reference
`
`allegedly discloses the claimed subject matter. Id.
`
`a. Liu (Ex. 1019)
`
`Liu relates generally to a no-tar electronic smoking utensil. Ex. 1019, 1:6-7.
`
`Figures 1-6 in Liu illustrate an embodiment described in this reference. Figures 1-
`
`6 are reproduced below.
`
`Figure 1 depicts a side view of a “simulated cigarette,” including outer casing 6.
`
`Id. at 4:15-16; 5:14-15. Figures 2-6 present different sectional viewpoints of the
`
`simulated cigarette of Figure 1. Id. at 4:18-31. Figure 3 depicts a tip end view,
`
`
`
`
`
`12
`
`
`
`VMR-Ex. 1023-012
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`looking in the direction of arrow X in Figure 2. Figure 4 depicts mouthpiece end 4
`
`(as shown in Figure 1), looking at the direction of arrow Y in Figure 2. As
`
`depicted in Figures 2 and 6, the simulated cigarette comprises battery chamber 12
`
`including a plurality of apertures 16, and cylinder liquid container 18 separated
`
`from the battery chamber by dividing wall 20 that comprises a plurality of
`
`apertures 22. Liquid container 18 “is formed of porous inorganic material,” which
`
`“facilitates the distribution and the mixing of the air and liquid mixture.” Id. at
`
`6:11-14.
`
`As shown in Figures 2 and 5, the simulated cigarette also comprises
`
`cylindrical vapouriser heater assembly housing 24, which is “mounted within a
`
`central bore provided in the mouthpiece end of the liquid container 18.” Id. at
`
`6:16-18. Housing 24 houses heater wire 26 spirally wound on a central ceramic
`
`insulating rod. Id. at 6: 18-19. As described in Liu, “walls of the heater housing
`
`24 are provided with a plurality of apertures 28 to permit entry of the liquid/air
`
`from the liquid container 18 into the heater housing 24.” Id. at 6:20-22.
`
`Liu describes that as “the user draws on the cigarette mouthpiece, air is
`
`drawn into the battery chamber [12], into the liquid container [18] to mix with the
`
`liquid mixture, and into the heater assembly [24],” and the “resulting vapour is
`
`drawn into the mouth of the user.” Id. at 7:16-19. Liu further describes that “in
`
`use, suction on the mouthpiece by the user causes air to be drawn through the
`
`porous container for liquid [18], over the heated vapouriser, into the mouthpiece
`
`and into the mouth of the user.” Id. at 4:6-8; see also 9:21-24.
`
`b. Analysis
`
`As noted above, CB Distributors uses claim charts to explain how Liu
`
`allegedly discloses every element recited in each of claims 1, 2, 5-8, 10, 33, 35, 37,
`
`and 38. Pet. 11, 18-29.
`
`
`
`13
`
`
`
`VMR-Ex. 1023-013
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`For example, CB Distributors points to disclosure in Liu as corresponding to
`
`certain elements recited in independent claims 1 and 10 as follows:
`
`’944 patent claim element
`
`Disclosure in Liu
`
`“an atomizer assembly”
`
`Vapouriser heater assembly housing 24
`
`“a cigarette solution storage area” Liquid container 18
`
` “negative pressure cavity in the
`atomizing chamber”
`
`“suction on the mouthpiece by the user
`causes air to be drawn through the porous
`container for liquid, over the heated
`vapouriser, into the mouthpiece and into
`the mouth of the user” (citing Ex 1019,
`4:6-9; 9:22-24, Fig. 2)
`
`“porous component” (claim 10) Walls of heater assembly housing 24
`“provided with a plurality of apertures 28
`to permit entry of the liquid/air from the
`liquid container 18 into the heater housing
`24” (citing Ex. 1019, 6:20-11, Fig. 5)
`
`Pet. 21, 25, 26, and 28.
`
`As stated in Liu, a portion of liquid container 18 “is formed of a porous
`
`material to facilitate distribution of the liquid through the container, prior to being
`
`fed to the heater means.” Ex. 1019, 3:1-3; Pet. 21. That liquid mixture may
`
`contain nicotine. Id. at 3:10-13. Thus, CB Distributors argues that Liu discloses
`
`that “liquid container 18” stores a cigarette solution. Pet. 21. Liu also discloses
`
`that “vapouriser heater assembly housing 24” houses an electric heating rod (i.e.,
`
`“heater wire 26 spirally wound on a central ceramic insulating rod”), which is
`
`capable of vaporizing for inhalation, i.e., atomizing, a cigarette solution. Id. at
`
`6:16-22; 7:16-19; Pet. 21, 24. As shown in Figure 1 of Liu, housing 24 (an
`
`atomizer assembly) fits inside liquid container 18 (a cigarette-solution storage
`
`
`
`14
`
`
`
`VMR-Ex. 1023-014
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`area), as recited in the challenged independent claims. Id. at Fig. 1; Pet. 23. CB
`
`Distributors argues that Figure 1 of Liu identifies these components and depicts a
`
`“run-through atomizing chamber,” i.e., a chamber inside housing 24 that contains
`
`the heating rod, which runs along the length of housing 24. Id.
`
`In relation to the “negative pressure cavity in the atomizing chamber” recited
`
`in independent claims 1 and 10, CB Distributors argues that Liu discloses that after
`
`a user draws on a cigarette mouthpiece, air goes into battery chamber 14, and “air
`
`in the battery chamber is sucked into the liquid container 18 through apertures 22
`
`where it mixes with the liquid solution.” Pet. 19 (citing Ex. 1019, 7:16-19).
`
`According to CB Distributors, “air and liquid solution mixture is then drawn into
`
`the porous walls of the vapouriser heater assembly [24] which contain apertures
`
`28.” Id. (citing Ex. 1019, Fig. 5; 6:20-22; 7:16-19). CB Distributors also contends
`
`that “flow of air through the cigarette indicates the space in between the vapouriser
`
`housing 24 and the heating rod 26 forms a negative pressure cavity as the user
`
`inhales.” Id.
`
`As discussed above, we interpret this “negative pressure cavity” element as
`
`referring to a cavity within a run-through atomizing chamber of an atomizer, where
`
`pressure inside that cavity is negative compared to pressure outside the cavity.
`
`CB Distributors contends this cavity in Liu, as shown in Fig. 2 of that reference, is
`
`located between the inner wall of heater assembly housing 24 and heater wire 26.
`
`Pet. 25; Ex. 1019, Fig. 2. Consistent with CB Distributors’s arguments, in a claim
`
`chart, CB Distributors points to disclosure in Liu stating that “suction on the
`
`mouthpiece by the user causes air to be drawn through the porous container for the
`
`liquid, over the heated vapouriser, into the mouthpiece and into the mouth of the
`
`user.” Pet. 25, 28 (citing Ex 1019, 4:6-9; 9:22-24). Along these lines, we note that
`
`Liu describes that “the flow of fluids through the cigarette is caused solely or
`
`
`
`
`15
`
`VMR-Ex. 1023-015
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`principally by the suction of the user.” Ex. 1019, 2:24-26. In addition, as
`
`CB Distributors points out, Liu discloses that “walls of the heater housing 24 are
`
`provided with a plurality of apertures 28 to permit entry of the liquid/air from the
`
`liquid container 18 into the heater housing 24.” Id. at 6:20-22; Pet. 28.
`
`In other words, Liu indicates that when a user inhales, liquid from container
`
`18 moves into the atomizing chamber inside housing 24. See, e.g., Ex. 1019, 7:16-
`
`19. CB Distributors argues that negative pressure, via suction on the mouthpiece,
`
`exists necessarily inside vapouriser housing 24 relative to pressure outside housing
`
`24 in order for liquid to move in that direction. Pet. 25. Thus, while Liu does not
`
`mention “negative pressure” per se, by virtue of its discussion of suction and how
`
`liquid flows inside the cigarette, Liu discloses inherently (necessarily) that pressure
`
`in the cavity between the inner wall of heater assembly housing 24 and heater wire
`
`26 is negative as compared to pressure existing inside liquid container 18. We are
`
`persuaded that CB Distributors has shown a reasonable a likelihood that it will
`
`prevail on its contention that Liu anticipates independent claim 1.
`
`In addition, we are persuaded likewise that CB Distributors has shown a
`
`reasonable likelihood that it will prevail on its contention that Liu anticipates
`
`independent claim 10. For example, as discussed above, the “porous component”
`
`of claim 10 refers to a component in the electronic cigarette that includes pores and
`
`is permeable to liquid, i.e., allows liquid to pass through it. CB Distributors
`
`contends that Liu discloses that an “air and liquid solution mixture is [] drawn into
`
`the porous walls of the vapouriser heater assembly which contain apertures 28.”
`
`Pet. 19 (citing Ex. 1019, Fig. 5; 6:20-22; 7:16-19). In other words, apertures 28 in
`
`the walls housing 24 correspond to pores, and therefore the “walls of heater
`
`housing 24” correspond to a porous component. Id. at 28.
`
`
`
`16
`
`
`
`VMR-Ex. 1023-016
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`Based on the record before us, CB Distributors has demonstrated a
`
`reasonable likelihood of prevailing on its assertion that Liu anticipates independent
`
`claims 1 and 10.
`
`In addition, CB Distributors argues that Liu discloses the claimed subject
`
`matter recited in dependent claims 2, 5-8, 33, 35, 37, and 38, as presented in the
`
`petition and claim charts. Liu describes that the liquid in container 18 may contain
`
`nicotine, as recited in claims 2 and 38. Pet. 25, 29; Ex. 1019, 6:29-30. Liu also
`
`describes a “heater wire 26 spirally wound on a central ceramic insulating rod” that
`
`corresponds to a “coiled wire” that “extends along the length of” and “on the outer
`
`surface of,” or “on the outside of,” a cylinder, as recited in dependent claims 5-8,
`
`33, 35, and 37. Pet. 26, 28-29; Ex. 1019, 6:18-19. We are persuaded that CB
`
`Distributors has demonstrated a reasonable likelihood of prevailing on its assertion
`
`that Liu anticipates dependent claims 2, 5-8, 33, 35, 37, and 38.
`
`2. 35 U.S.C. § 103(a) Ground Based on Hon ’494 and Liu
`
`CB Distributors contends that claims 1-4, 8-12, 15-26, 33-34, 36, and 38 of
`
`the ’944 patent would have been obvious over Hon ’494 and Liu. Pet. 11, 36-47.
`
`Again, CB Distributors uses claim charts to explain how the references allegedly
`
`teach or suggest the claimed subject matter. Id. We discuss Liu above.
`
`a. Hon ’494 (Ex. 1009)
`
`Hon ’494 relates to an aerosol electronic cigarette. Ex. 1009, 1:35-37.
`
`Figures 1 and 6 in Hon ’494 are reproduced below.
`
`
`
`17
`
`
`
`VMR-Ex. 1023-017
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`
`
`
`
`Figure 1 depicts the structure of an electronic cigarette, which includes air inlet 4,
`
`normal pressure cavity 5, sensor 6, negative pressure cavity 8, vapor-liquid
`
`separator 7, atomizer 9, liquid-supplying bottle 11, mouthpiece 15, and shell 14.
`
`Ex. 1009, Fig. 1, 3:14-21. Figure 6 depicts a structural diagram of the atomizer,
`
`which includes atomization cavity 10, heating element RL, first piezoelectric
`
`element M1, atomization cavity wall 25, and porous body 27. Id. at 2:48, 3:26-29,
`
`35-38.
`
`As described in Hon ’494, “solution storage porous body 28 in the liquid-
`
`supplying bottle 11 will be in contact with the bulge 36 on the atomizer 9, thereby
`
`achieving the capillary infiltration liquid-supplying.” Id. at 4:31-33; 3:24-25;
`
`Figs. 1, 6, and 11. Hon ’494 further discloses that heating element RL “can be
`
`made of platinum wire, nickel chromium alloy or iron chromium aluminum alloy
`
`
`
`18
`
`
`
`VMR-Ex. 1023-018
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`wire with rare earth element” and “can also be made into a sheet form.” Id. at
`
`3:27-29. Porous body 27 in atomizer 9 “can be made of foam nickel, stainless steel
`
`fiber felt, high molecular polymer foam and foam ceramic,” and that “atomization
`
`cavity wall 25 can be made of aluminum oxide or ceramic.” Id. at 3:35-38; Fig. 6.
`
`In addition, Hon ’494 describes that “[w]hen a smoker smokes, the
`
`mouthpiece 15 is under negative pressure, the air pressure difference or high speed
`
`stream between the normal pressure cavity 5 and the negative pressure cavity 8
`
`will cause the sensor 6 to output and actuating signal,” which causes the cigarette
`
`to go into operation. Id. at 4:11-14. Hon ’494 teaches that air enters normal
`
`pressure cavity 5 through air inlet 4, goes through a hole in vapor-liquid separator
`
`7, and flows into atomization cavity 10 of atomizer 9. Id. at 4:21-24. A “high
`
`speed stream passing through the ejection hold drives the nicotine solution in the
`
`porous body 27 to eject into the atomization cavity 10 in the form of droplet,”
`
`where the nicotine solution is atomized by element M1 and further atomized by
`
`heating element RL. Id. at 4:24-27. After atomization, larger diameter droplets are
`
`reabsorbed by porous body 27, and smaller diameter droplets form aerosols, which
`
`are sucked out via passage 12, gas vent 17 and mouthpiece 15. Id. at 4:28-31.
`
`b. Analysis
`
`As noted above, CB Distributors uses claim charts to explain how Hon ’494,
`
`in view of Liu, allegedly teaches or suggests every element recited in each of
`
`claims 1-4, 8-12, 15-26, 33-34, 36, and 38. Pet. 11, 36-47.
`
`For example, CB Distributors points to disclosure in Hon ’494 as
`
`corresponding to certain elements recited in independent claims 1 and 10 as
`
`follows:
`
`
`
`
`
`
`
`19
`
`VMR-Ex. 1023-019
`
`

`

`IPR2013-00387
`Patent 8,156,944 B2
`
`
`’944 patent claim element
`
`Disclosure in Hon ’494
`
`“an atomizer assembly”
`
`“a cigarette solution storage area”
`that “fits with at least a portion of
`the said atomizer assembly inside
`it”
`
`Atomizer 9 with atomization cavity 10
`and heating element RL
`
`Liquid-supplying bottle 11 that fits with
`bulge 36 of atomizer 9 inside it
`
`“porous component” (claim 10)
`
`Porous component 27
`
`Pet. 37, 39-42.
`
`Hon ’494 also indicates that inhalation (“smoking”) by a user causes a “high
`
`speed stream,” which leads to liquid (“nicotine solution”) flowing from porous
`
`body 27 into atomization cavity 10 of atomizer 9. Ex. 1009, 4:11-27. In other
`
`words, it is a reasonable position that a “negative pressure cavity” exists
`
`necessarily in atomization cavity 10 in relation to pressure outside that cavity.
`
`CB Distributors recognizes, however, that Hon ’494 does not describe a run-
`
`through atomizing chamber or electric heating rod comprising a cylinder, and
`
`therefore, does not disclose a negative pressure cavity in that atomizing chamber,
`
`as required in claims 1 and 10. Pet. 40-42. CB Distributors points to Liu for such
`
`disclosures, as discussed above. Id.
`
`CB Distributors contends that it “would have been obvious to employ a
`
`vapouriser assembly as disclosed by Liu (including the