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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMR PRODUCTS LLC
`
`Petitioner
`
`v.
`
`FONTEM HOLDINGS 1 B.V.
`
`Patent Owner
`
`
`
`
`
`
`U.S. Patent No. 8,365,742
`Issue Date: February 5, 2013
`Title: AEROSOL ELECTRONIC CIGARETTE
`Inventor: Lik Hon
`Filed: April 5, 2011
`U.S. Application Serial No. 13/079,937
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100, et seq.
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION .................................................................................................................. 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) ................................................. 1
`
`A. REAL PARTY INTEREST UNDER 37 C.F.R. § 42.8(b)(1) ................................ 1
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2) ....................................... 1
`
`C. NOTICE OF LEAD COUNSEL UNDER 37 C.F.R. §§ 42.8(b)(3) and 42.10(a) .. 3
`
`D. SERVICE INFORMATION UNDER 37 C.F.R. §§ 42.8(b)(4) ............................. 3
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103 .............................................................. 3
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 ............. 3
`
`A. GROUND FOR STANDING UNDER 37 C.F.R. § 42.104(a) .............................. 3
`
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b) .............. 4
`
`1. The claims for which inter partes review is requested under 37 C.F.R. §
`42.104(b)(1) ..................................................................................................... 4
`
`2. The statutory grounds and prior art on which the challenge is based under 37
`C.F.R. § 42.104(b)(2) ...................................................................................... 4
`
`3. How the challenged claims are to be construed under 37 C.F.R. §
`42.104(b)(3) ..................................................................................................... 6
`
`4. How the construed claims are unpatentable under the identified statutory
`grounds under 37 C.F.R. § 42.104(b)(4) ......................................................... 9
`
`5. The exhibit number of the supporting evidence relied upon under 37 C.F.R. §
`42.104(b)(5) ..................................................................................................... 9
`
`V. BACKGROUND .................................................................................................................. 10
`
`A. THE ‘742 PATENT .............................................................................................. 10
`
`
`
`i
`
`

`

`B. THE PROSECUTION HISTORY OF THE ‘742 PATENT ................................ 12
`
`1. Preliminary Amendment ............................................................................... 12
`
`2. First Office Action Rejects Claim 30 as Indefinite ....................................... 12
`
`3. Applicants Add “Heating Wire Wound on a Porous Component” ............... 13
`
`4. Examiner Interview ....................................................................................... 14
`
`5. Notice of Allowance ...................................................................................... 15
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE CLAIM OF THE
`
`‘742 PATENT IS UNPATENTABLE .......................................................................................... 15
`
`A. GROUND 1: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE UNDER 35 U.S.C.
`
`§ 103 AS BEING OBVIOUS IN VIEW OF HON ‘043 IN FURTHER VIEW OF
`
`SUSA .................................................................................................................... 15
`
`1.
`
`Independent claim 1 ...................................................................................... 16
`
`2.
`
`Independent claim 2 ...................................................................................... 26
`
`3.
`
`Independent claim 3 ...................................................................................... 29
`
`B. GROUND 2: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE UNDER 35 U.S.C.
`
`§ 103 AS BEING OBVIOUS IN VIEW OF HON ‘043 IN FURTHER VIEW OF
`
`ABHULIMEN....................................................................................................... 32
`
`1. Abhulimen discloses “a heating wire wound on a part of the porous
`component” ................................................................................................... 33
`
`C. GROUND 3: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE UNDER 35 U.S.C.
`
`§ 103 AS BEING OBVIOUS IN VIEW OF HON ‘043 IN FURTHER VIEW OF
`
`WHITTEMORE .................................................................................................... 34
`
`1. Whittemore discloses “a heating wire wound on a part of the porous
`component” ................................................................................................... 35
`
`
`
`ii
`
`

`

`D. GROUND 4: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE UNDER 35 U.S.C.
`
`§ 103 AS BEING OBVIOUS IN VIEW OF HON ‘034 IN FURTHER VIEW OF
`
`COUNTS............................................................................................................... 36
`
`1. Counts discloses “a heating wire wound on a part of the porous component”
` ....................................................................................................................... 37
`
`E. GROUND 5: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE UNDER 35 U.S.C.
`
`§ 103 AS BEING OBVIOUS IN FURTHER VIEW OF SUSA .......................... 38
`
`1.
`
`Independent claim 1 ...................................................................................... 38
`
`2.
`
`Independent claim 2 ...................................................................................... 48
`
`3.
`
`Independent claim 3 ...................................................................................... 51
`
`F. GROUND 6: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE UNDER 35 U.S.C.
`
`§ 103 AS BEING OBVIOUS IN VIEW OF SUSA IN FURTHER VIEW OF
`
`ABHULIMEN....................................................................................................... 54
`
`1. Abhulimen Discloses “a heating wire wound on a part of the porous
`component” ................................................................................................... 54
`
`2. Abhulimen Discloses the Remaining “Porous Component” Limitations ..... 55
`
`G. GROUND 7: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE UNDER 35 U.S.C.
`
`§ 103 AS BEING OBVIOUS IN VIEW OF SUSA IN FURTHER VIEW OF
`
`WHITTEMORE .................................................................................................... 57
`
`1. Whittemore Discloses “a heating wire wound on a part of the porous
`component” ................................................................................................... 57
`
`2. Whittemore Discloses the Remaining “Porous Component” Limitations .... 59
`
`VII. CONCLUSION ..................................................................................................................... 60
`
`VIII. CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) .......................................... 60
`
`
`
`iii
`
`

`

`
`
`EXHIBIT LIST
`
`Exhibit
`
`Exhibit Description
`
`1001 U.S. Patent No. 8,365,742 (“’742 Patent”)
`
`1002 Declaration of Gregory Buckner, Ph.D.
`
`1003 Curriculum Vitae of Gregory Buckner, Ph.D.
`
`1004 China Patent CN 2719043 (“Hon ‘043”) – issue date August 24, 2005
`
`1005 Certified English translation of Hon (CN 2719043) pursuant to 37
`C.F.R. 42.63(b)
`
`1006 WO 2005/099494, which is the PCT application equivalent of Hon (CN
`2719043) (“Hon ‘494”)
`
`1007 Certified English translation of WO 2005/099494 pursuant to 37 C.F.R.
`42.63(b)
`
`1008 CA 2562581, which is the Canadian equivalent of Hon (CN 2719043)
`(“Hon ‘581”)
`
`1009 US 2007/0267031, which is the U.S. equivalent of Hon (CN 271043)
`(“Hon ‘031”)
`
`1010
`
`EP 0845220 (“Susa”) – Published June 3, 1998
`
`1011 U.S. Patent No. 5,144,962 (“Counts”) – issue date September 8, 1992
`
`1012 WO 03/034847 (“Abhulimen”), Published May 1, 2003
`
`1013 U.S. Patent No. 2,057,353 (“Whittemore”) – issue date October 13,
`1936
`
`1014
`
`Litigation proceedings in CV 14-1645 – Rulings on Claims
`Construction
`
`1015 WO 2007/131449, which is the PCT application for the ‘742 Patent
`
`1016
`
`‘742 Prosecution History, Preliminary Amendment
`
`
`
`iv
`
`

`

`1017
`
`‘742 Prosecution History, Non-final office action
`
`1018
`
`‘742 Prosecution History, Amendment
`
`1019
`
`‘742 Prosecution History, Supplemental Amendment
`
`1020
`
`‘742 Prosecution History, Examiner Interview Summary
`
`1021
`
`‘742 Prosecution History, Notice of Allowance
`
`1022
`
`‘742 Prosecution History, Certificate of Correction
`
`1023 DECISION - Institution of Inter Partes Review in IPR2013-00387,
`Paper 7
`
`
`
`
`
`v
`
`

`

`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100, et seq., the
`
`undersigned, on behalf of and acting in a representative capacity for petitioner,
`
`VMR Products LLC (“VMR” or “Petitioner”), hereby petitions for inter partes
`
`review of claims 1, 2 and 3 (all claims) of U.S. Patent No. 8,365,742 (“the ‘742
`
`Patent”), issued to Fontem Holdings 1 B.V. (“Patent Owner”). The ‘742 Patent is
`
`attached as Exhibit 1001.
`
`I.
`
`INTRODUCTION
`
`Petitioner herby asserts that there is a reasonable likelihood that Petitioner
`
`will prevail on at least one of the challenged claims as being unpatentable and
`
`respectfully requests institution of an inter partes review of the ‘742 Patent for
`
`judgment against claims 1, 2 and 3 (all claims) as unpatentable under 35 U.S.C. §
`
`103.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`A. REAL PARTY INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
`
`Petitioner VMR Products LLC is the real party in interest for the instant
`
`petition.
`
`B. RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following related
`
`litigation involving the ‘742 Patent. The ‘742 Patent is currently the subject of a
`
`patent infringement lawsuit brought by the Patent Owner against Petitioner in
`
`Fontem Ventures B.V. and Fontem Holdings 1 B.V. v. VMR Products, LLC, Case
`
`
`
`1
`
`

`

`No.: 2:14-cv-01655, filed on March 5, 2014, in the U.S. District Court for the
`
`Central District of California (now consolidated for discovery and pre-trial
`
`purposes with Case Nos. 2:14-cv-01645). In addition to the ‘742 Patent, Patent
`
`Owner has asserted U.S. Patent No. 8,375,957, U.S. Patent No. 8,393,331, U.S.
`
`Patent No. 8,490,628 and U.S. Patent No. 8,689,805 in this litigation.
`
`The aforementioned patents, including the ‘742 Patent, are also the subject
`
`of patent infringement lawsuits brought by the Patent Owner against third party
`
`Defendants in (i) Fontem Ventures BV and Fontem Holdings 1 B.V. v. NJOY, Inc,
`
`No. CV14-1645; (ii) Fontem Ventures BV and Fontem Holdings 1 B.V. v. LOEC,
`
`Inc., No. CV14-1648; (iii) Fontem Ventures BV and Fontem Holdings 1 B.V. v. CB
`
`Distributors, Inc. and DR Distributors, LLC, No. CV14-1649; (iv) Fontem
`
`Ventures BV and Fontem Holdings 1 B.V. v. Vapor Corp., No. CV14-1650; (v)
`
`Fontem Ventures BV and Fontem Holdings 1 B.V. v. Fin Branding Group, LLC,
`
`and Victory Electronic Cigarettes Corp, No. CV14-1651; (vi) Fontem Ventures BV
`
`and Fontem Holdings 1 B.V. v. BallantyneBrands, LLC., No. CV14-1652; (vii)
`
`Fontem Ventures BV and Fontem Holdings 1 B.V. v. Spark Industries, LLC, No.
`
`CV14-1653; and (viii) Fontem Ventures BV and Fontem Holdings 1 B.V. v. Logic
`
`Technology Development LLC, No. CV14-1654.
`
`
`
`2
`
`

`

`C. NOTICE OF LEAD COUNSEL UNDER 37 C.F.R. §§ 42.8(b)(3)
`and 42.10(a)
`
`Petitioner provides the following designation of counsel.
`
`Lead Counsel
`Gregory L. Hillyer, Esquire
`USPTO Reg. No.: 44,154
`FELDMAN GALE, P.A.
`5335 Wisconsin Avenue, N.W., Suite
`410 Washington, D.C. 20015
`ghillyer@feldmangale.com
`Phone: (305) 357-0447
`Fax: (305) 358-3309
`
`Back-up Counsel
`Javier Sobrado, Esquire
`USPTO Reg. No.: 65,511
`FELDMAN GALE, P.A.
`One Biscayne Tower, 30th Floor
`2 South Biscayne Boulevard
`Miami, FL 33131-4332
`jsobrado@feldmangale.com
`Phone: (305) 358-5001
`Fax: (305) 358-3309
`
`
`D. SERVICE INFORMATION UNDER 37 C.F.R. §§ 42.8(b)(4)
`
`Service information for lead counsel is provided in the designation of lead
`
`counsel above. Service of any documents via hand-delivery may be made at the
`
`postal mailing address of the respective lead or back-up counsel designated above.
`
`III. PAYMENT OF FEES UNDER 37 C.F.R. § 42.103
`
`The undersigned has satisfied the required fee required under 37 C.F.R. §
`
`42.15(a) for this Petition. The undersigned further authorizes payment for any
`
`additional fees that might be due in connection with this Petition to be charged to
`
`Deposit Account No. 50-3632.
`
`IV. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§§ 42.104
`
`A. GROUND FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`
`Petitioner hereby certifies that the ‘742 Patent is available for inter partes
`
`
`
`3
`
`

`

`review and that the Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the claims of the ‘742 Patent on the grounds identified herein.
`
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. §
`42.104(b)
`
`The precise relief requested by Petitioner is that the Patent Trial and Appeal
`
`Board (“PTAB”) review, find invalid and cancel claims 1, 2 and 3 (all claims) of
`
`the ‘742 Patent.
`
`1. The claims for which inter partes review is requested under 37
`C.F.R. § 42.104(b)(1)
`
`Petitioner requests inter partes review of claims 1, 2 and 3 (all claims) of the
`
`‘742 Patent.
`
`2. The statutory grounds and prior art on which the challenge is
`based under 37 C.F.R. § 42.104(b)(2)
`
`The PTAB applies U.S. law in conducting an inter partes review. 35 U.S.C.
`
`§§ 311-319. Unpatentability is proven by a preponderance of the evidence. 35
`
`U.S.C. § 316. Inter partes review of the ‘742 Patent is requested in view of the
`
`following prior art: first primary reference, Hon ‘043 (Ex. 1004, and English
`
`translation Ex. 1005) and/or its PCT equivalent, Hon ‘494 (Ex. 1006 and English
`
`Translation Ex. 1007) (collectively, “the Hon References”) with secondary
`
`references: Susa (Ex. 1010), Abhulimen (Ex. 1012), Whittemore (Ex. 1013) and
`
`Counts (Ex. 1011). Inter partes review of the ‘742 Patent is also requested in view
`
`of the following prior art: second primary reference Susa (Ex. 1010), alone, and
`
`
`
`4
`
`

`

`with secondary references Abhulimen (Ex. 1012) and Whittemore (Ex. 1013). The
`
`statutory grounds for the challenges are set forth below.
`
`
`
`GROUND 1: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Hon ‘043 (its equivalent Hon ‘494) in further
`
`view of Susa.
`
`
`
`GROUND 2: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Hon ‘043 (its equivalent Hon ‘494) in further
`
`view of Abhulimen.
`
`
`
`GROUND 3: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Hon ‘043 (its equivalent Hon ‘494) in further
`
`view of Whittemore.
`
`GROUND 4: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Hon ‘043 (its equivalent Hon ‘494) in further
`
`view of Counts.
`
`
`
`GROUND 5: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Susa alone.
`
`
`
`GROUND 6: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Susa in further view of Abhulimen.
`
`
`
`GROUND 7: Independent claims 1, 2 and 3 would have been obvious
`
`under 35 U.S.C. § 103(a) in view of Susa in further view of Whittemore.
`
`
`
`5
`
`

`

`3. How the challenged claims are to be construed under 37 C.F.R.
`§ 42.104(b)(3)
`
`Claims subject to inter partes review receive the “broadest reasonable
`
`construction in light of the specification of the patent in which it appears.” 37
`
`C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,766 (Aug. 14, 2012). Although Petitioner’s construction of claim terms
`
`is not binding upon Petitioner in any related litigation, Petitioner submits that for
`
`the purposes of this inter partes review only, the claim terms take on their ordinary
`
`and customary meaning that the terms would have to one of ordinary skill in the art
`
`in view of the specification of the ‘742 Patent, except as specifically discussed
`
`below. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`a. Level of Ordinary Skill in the Art
`
`“A person of ordinary skill in the art is a person of ordinary creativity, not an
`
`automaton.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). As
`
`confirmed by Dr. Gregory Buckner, the level of ordinary skill in the art of the ‘742
`
`Patent is a person with at least a Bachelor’s degree in electrical engineering,
`
`mechanical engineering or biomedical engineering, along with at least five years of
`
`experience designing eletromechanical medical devices. Ex. 1002, Declaration of
`
`Gregory Buckner, Ph.D., ¶13.
`
`
`
`6
`
`

`

`b. Terms Construed
`
`i. “Porous Component”
`
`All three independent claims of the ‘752 Patent recite a “porous
`
`component.” Ex. 1001, col. 6, lns. 17, 33 and 46. While Petitioner believes this
`
`term is entitled to the broadest reasonable construction, this term received
`
`treatment when a Request for Trial was granted in connection with IPR2013-00387
`
`regarding U.S. Patent No. 8,156,944 (“’944 Patent”). Ex. 1023. The ‘742 Patent is
`
`a divisional of the application that led to the ‘944 Patent and therefore both patents
`
`share the same specification. In the Decision (“’944 Patent Decision”) by the
`
`Patent Trial and Appeal Board, “porous component” was interpreted 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.” Ex. 1023 at 11.
`
`ii. “Frame”
`
`All three independent claims of the ‘752 Patent recite a “frame.” Ex. 1001,
`
`col. 6, lns. 19, 34 and 45. The term “frame” was the subject of claim construction
`
`proceedings in Fontem Ventures B.V. and Fontem Holdings 1 B.V. v. VMR
`
`Products, LLC, Case No.: 2:14-cv-01655 (and related cases consolidated with Case
`
`No. 2:14-cv-01645). Ex. 1014, Court’s Rulings on Claims Construction. In those
`
`proceedings, the Patent Owner took the position that “frame” means “a support.”
`
`Ex. 1014, p. 5. The Court disagreed with this construction, holding that “frame”
`
`
`
`7
`
`

`

`need not be a structure on which the porous component is set. Id. at 5-7. Rather,
`
`“frame” means a “rigid structure.” Id. at 7.
`
`iii. “Liquid Storage Component” or “Liquid Supply”
`
`Claim 2 of the ‘742 Patent recites a “liquid storage component.” Ex. 1001,
`
`col. 6, ln 31. According to the Court’s Rulings on Claims Construction, this term
`
`did not require construction, but was not limited to a hollow, walled container for
`
`storing liquid. Ex. 1014, p. 19-21. Claim 3 of the ‘742 Patent recites a “liquid
`
`supply.” Ex. 1001, col. 6, ln. 51. According to the Court’s Rulings on Claims
`
`Construction, this term did not require construction, but was not limited to a liquid
`
`supply bottle. Ex. 1014, p. 19-21.
`
`iv. “Integrally Formed”
`
`Claim 1 of the ‘742 Patent recites a shell that is hollow and “integrally
`
`formed.” Ex. 1001, col. 6, lns. 8-9. According to the Court’s Rulings on Claims
`
`Construction, this term means “formed by parts that make up a whole.” Ex. 1014,
`
`p. 10. Petitioner does not believe that the Court’s construction excludes, or that the
`
`broadest construction would exclude, shells (or housings) made of one piece.
`
`v. “Substantially”
`
`All three independent claims of the ‘752 Patent recite the term
`
`“substantially.” Ex. 1001, col. 6, lns. 24, 37 and 49. Specifically, claims 1 and 3
`
`require a porous component that is “substantially aligned with the run-through
`
`hole” and claim 2 requires a porous component that is “substantially surrounded by
`
`
`
`8
`
`

`

`the liquid storage component.” Id. According to the Court’s Rulings on Claims
`
`Construction, in the context of claims 1 (and therefore 3) and 2, “substantially”
`
`means “largely but not completely.” Ex. 1014, p. 26. Under this definition, the
`
`majority of the porous component need not be aligned with the run-through hole
`
`(claims 1 and 3), or surrounded by the liquid storage component (claim 2). Indeed,
`
`in the figures of the ‘742 Patent itself, the majority of the porous component is not
`
`surrounded by the liquid storage component (yellow). Ex. 1002, ¶31; Ex. 1001,
`
`‘742 Patent, Fig. 1.
`
`
`4. How the construed claims are unpatentable under the
`identified statutory grounds under 37 C.F.R. § 42.104(b)(4)
`
`An explanation of how claims 1, 2 and 3 of the ‘742 Patent are unpatentable
`
`under the identified statutory grounds, including the identification of where each
`
`element of each claim is found in the prior art, is provided below in the form of
`
`discussion and graphics.
`
`5. The exhibit number of the supporting evidence relied upon
`under 37 C.F.R. § 42.104(b)(5)
`
`Patent or Publication
`
`Abbreviation
`
`CN 2719043
`
`Hon ‘043
`
`Exhibit
`
`1004
`
`(1005, certified English
`
`
`
`9
`
`

`

`Patent or Publication
`
`Abbreviation
`
`WO 2005/099494
`
`(PCT equivalent of Hon ‘043)
`
`Hon ‘494
`
`EP 0845220
`
`Susa
`
`U.S. Patent No. 5,144,962
`
`Counts
`
`WO 03/034847
`
`Abhulimen
`
`U.S. Patent No. 2,057,353
`
`Whittemore
`
`V. BACKGROUND
`
`A. THE ‘742 PATENT
`
`Exhibit
`translation)
`
`1006
`
`(1007, certified English
`translation)
`
`1010
`
`1011
`
`1012
`
`1013
`
`The ‘742 Patent is generally directed to an aerosol electronic cigarette. Ex.
`
`1001, ‘742 Patent, Title. More particularly, the ‘742 Patent is directed to an
`
`electronic cigarette having a battery assembly, an atomizer assembly and a
`
`cigarette bottle assembly. Ex. 1001, col. 1, lns. 28-30. The basic configuration of
`
`the electronic cigarette described in the ‘742 Patent is shown in Figure 1 below.
`
`
`
`
`
`10
`
`

`

`In this embodiment, hollow shell (a) contains removable bottle assembly (b).
`
`Ex. 1001, col. 2, lns. 30-37. The battery assembly in Figure 1 includes an
`
`operating indicator (1), a battery (3), an electronic circuit board (4) and an airflow
`
`sensor (5), all of which are located in the shell. Ex. 1001, col. 2, lns. 39-44.
`
`The atomizer assembly in Figure 1 is depicted by atomizer (8), which
`
`includes a porous component. Several different atomizer assembly configurations
`
`are disclosed in the ’742 Patent. The embodiment relevant to claims 1, 2 and 3 is
`
`shown in Figures 17 and 18, which are reproduced below.
`
`
`
`In this embodiment, a porous component (81) is set on a frame (82). Ex.
`
`1001, Fig. 7, col. 5, lns. 42-46. A heating wire (83) is wound around the portion of
`
`the porous component which extends across the central opening of a run-through
`
`hole (821). Ex. 1001, Figs. 17 and 18, col. 5, lns. 42-49.
`
`The ‘742 Patent includes three independent claims. Ex. 1001, col. 6, lns. 5-
`
`52. For ease of reference, the elements of the claims are broken down into
`
`subsections as set forth in the Declaration of Dr. Gregory Buckner. Ex. 1002, ¶24.
`
`
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`11
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`B. THE PROSECUTION HISTORY OF THE ‘742 PATENT
`
`1. Preliminary Amendment
`
`The application which led to the ‘742 Patent was filed on April 5, 2011 as
`
`U.S. Application Serial No. 13/079,937. The application was a divisional
`
`application of U.S. Patent Application No. 12/226,818, filed on October 29, 2008
`
`(now U.S. Patent No. 8,156,944), which is the national stage entry of PCT
`
`Application No. PCT/CN2007/001575, filed on May 15, 2007, which claimed
`
`priority to CN Patent Application No. 2006/20090805, filed on May 16, 2006. Ex.
`
`1015. The application was filed with 29 original claims. Id. In an April 5, 2011
`
`Preliminary Amendment, the Applicant cancelled all 29 original claims, added one
`
`new claim, and amended the specification. Ex. 1016 at 2-3. 1
`
`2. First Office Action Rejects Claim 30 as Indefinite
`
`On July 19, 2012, the Examiner rejected the sole claim, claim 30. Ex. 1017.
`
`Specifically, claim 30 was rejected under 35 USC § 112 as being indefinite. Id. at
`
`2. The Examiner found that it was unclear which “part” and “side” to which the
`
`Applicant was referring in the claim recitation of “the said porous component is
`
`wound with heating wire in the part that is on the side in the axial direction of the
`
`run through hole . . . .” Id. Although the Examiner indicated that Claim 30 would
`
`
`1
`For ease of reference, and to avoid confusion, all citations to office actions
`
`or responses are to the numbered page on the original office action or response.
`
`
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`12
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`

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`be allowable if the § 112 rejection was overcome, the Examiner explicitly stated
`
`that Hon ‘043 was the closest prior art and that only one limitation was lacking.
`
`The Examiner believes that the closest prior art record, namely the CN
`
`2719043 reference, neither teaches nor reasonably suggests an aerosol
`
`electronic cigarette having the claimed combination of structural
`
`features, including “an atomizer, which includes a porous
`
`component and a heating body; the said heating body is heating
`
`wire . . . the heating wire is wound on the said porous component”.
`
`Id. at 2-3 (emphasis added).
`
`3. Applicant Adds “Heating Wire Wound on a Porous
`Component”
`
`In response to the first office action, on August 3, 2012 Applicant made
`
`amendments to claim 30 in which “porous component is wound with heating wire
`
`in the on the side in the axial direction of the run-through hole” was replaced with
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`“the heating wire is wound on a part of the porous component that is substantially
`
`aligned with the run-through hole.” Ex. 1018 at 2 (claim 30) and 4 (Remarks).
`
`Applicant also added new claims 31-32. Id. at 2-3. With respect to these new
`
`claims, Applicant argued that “[n]ew claim 31 is similar to claim 30 and includes
`
`the elements of claim 30, but written with more common English usage.” Id. at 4.
`
`Further, “[n]ew claim 32 is similar to claims 30 and 31 but describes a heating wire
`
`wound on a part of the porous component substantially aligned with the run-
`
`
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`13
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`

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`through hole . . . and with the porous component in contact with a liquid supply in
`
`the housing . . .” Id. Finally, Applicant alleged that “[n]ew claims 31 and 32 are
`
`believed to be allowable for the same reason that claim 30 is indicated to be
`
`allowable at paragraph 4 of the Office Action.”
`
`Four days later, on August 7, 2012 Applicant supplemented its response to
`
`the July 19, 2012 Office Action. Ex. 1019. In the supplemental response, the
`
`Applicant provided a substitute specification with numerous substantive changes
`
`from the previous version. Id. at 2.
`
`4. Examiner Interview
`
`Although the prosecution history does not show any additional rejections
`
`after the Applicant filed the August 7, 2012 response, Applicant conducted an
`
`examiner interview on August 14, 2012. Ex. 1020. The Examiner Interview
`
`Summary states that during the interview, the Examiner and the Applicant’s
`
`counsel discussed claims 30, 31 and 32 as well as the following prior art
`
`references: “Voges, U.S. Patent No. 6,196,218; Robinson, U.S. Patent No.
`
`1,775,947; Counts, U.S. Patent No. 5,144,962; Brooks, U.S. Patent No. 4,947,875;
`
`Japan Tobacco, EP 0 845 220 B1; Hon Lik WO/2004/095855; and Hon Lik
`
`WO/2005/099494”. Ex. 1020. According to the Summary, “[n]o agreement was
`
`reached.” Id.
`
`
`
`14
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`

`5. Notice of Allowance
`
`On November 14, 2012, the USPTO issued a notice of allowance. Ex. 1021.
`
`The ‘742 Patent issued on February 5, 2013. Claims 30, 31 and 32 issued as
`
`claims 1, 2 and 3, respectively. Ex. 1001. On July 2, 2013, the USPTO issued a
`
`certificate of correction. Ex. 1022.
`
`VI. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘742 PATENT IS UNPATENTABLE
`
`A. GROUND 1: CLAIMS 1, 2 AND 3 ARE UNPATENTABLE
`UNDER 35 U.S.C. § 103 AS BEING OBVIOUS IN VIEW OF
`HON ‘043 IN FURTHER VIEW OF SUSA
`
`Hon ‘043 issued on August 24, 2005. Ex. 1005, Hon ‘043 (English
`
`translation), p. 1. The PCT application equivalent is Hon ‘494, which was
`
`published on October 27, 2005. Ex. 1007, Hon ‘494 (English translation), cover
`
`page.2 Both references name as the inventor Lik Hon, who is the inventor named
`
`on the ‘742 Patent. Ex. 1001; Ex. 1007, Hon ‘494. Both references are directed to
`
`an electronic atomizing cigarette and discloses a shell 14, an air inlet 4, a battery 2,
`
`
`2
`The English translation of Hon ‘043 (Ex. 1004) is Ex. 1005. However,
`
`because the translation does not have paragraph numbers or line numbers, citations
`
`will be made to the certified English translation of the PCT equivalent, Hon ‘494
`
`(Exhibit 1007). For ease of reference, and to avoid confusion, all citations to the
`
`prior art will use the original page numbers where columns are not available.
`
`
`
`15
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`

`an atomizer 9, a liquid-supplying bottle 11, a porous body 27, a cavity wall 25 and
`
`a heating element RL. Ex. 1002, ¶41; Ex. 1007, Hon ‘494, Fig. 1; p.1, lns. 4-5; p.
`
`3, lns. 15-18, 35-37; p. 4, lns. 2 and 18-27.
`
`As noted above, during prosecution of the application that led to the ‘742
`
`Patent, Applicant agreed with the Examiner’s findings, and therefore conceded,
`
`that Hon ‘043 (and therefore Hon ‘494) was a close prior art reference that did not
`
`teach “an atomizer, which includes a porous component and a heating body; the
`
`said heating body is heating wire . . . the heating wire is wound on the said porous
`
`component”. In response to this finding, Applicant added this limitation to achieve
`
`patentability. This limitation, however, was long known in the prior art as
`
`reflected in several exemplary references provided herein. Accordingly, the single
`
`limitation allegedly not disclosed in Hon ‘043 is disclosed in other patents and
`
`publications that were well known, and the combinations would have been obvious
`
`to one of ordinary skill in the art, particularly given the prevalence of the feature.
`
`As explained in detail below, claims 1, 2 and 3 of the ‘742 Patent are unpatentable
`
`under 35 U.S.C. § 103(a) as being obvious in view of Hon ‘043 (Hon ‘494) in
`
`further view of several secondary references. Ex. 1002, ¶42.
`
`1. Independent claim 1
`
`
`
`
`
`a.
`
`Preamble – [1] an aerosol electronic cigarette
`
`
`
`16
`
`

`

`The preamble of claim 1 recites “an aerosol electronic cigarette.” Ex. 1001,
`
`col. 6, ln. 6. Hon ‘494 discloses an aerosol electronic cigarette. Ex. 1002, ¶43.
`
`Hon ‘494 is entitled “An Aerosol Electronic Cigarette.” Ex. 1002, ¶43; Ex. 1007,
`
`Hon ‘494, cover page, Title.
`
`b.
`
`[1.1] a battery assembly, an atomizer assembly and a
`cigarette bottle assembly, and a shell that is hollow
`and integrally formed
`
`
`
`Claim 1 recites “a battery assembly, an atomizer assembly and a cigarette
`
`bottle assembly, and a shell that is hollow and integrally formed.” Ex. 1001, col. 6,
`
`lns. 7-9. Hon ‘494 discloses this limitation. Ex. 1002, ¶44. As reflected in Figure
`
`1, and the accompanying description, “A LED 1, a cell 2, an electronic circuit
`
`board 3, a normal pressure cavity 5, a sensor 6, a vapor-liquid separator 7, an
`
`atomizer 9, a liquid-supplying bottle 11 and a mouthpiece 15 are sequentially
`
`provided within the shell 14.” Ex. 1002, ¶44; Ex. 1007, Hon ‘494, p. 3, lns. 15-18.
`
`
`
`
`
`17
`
`
`
`

`

`c.
`
`[1.2] the battery assembly electrically connected with
`the atomizer assembly and both are located in the
`shell
`
`
`
`Claim 1 recites “the battery assembly electrically connected with the
`
`atomizer assembly and both are located in the shell.” Ex. 1001, col. 6, ln. 10-11.
`
`Hon ‘494 discloses this limitation. Ex. 1002, ¶45. Figure 12 shows the electrical
`
`connection between the battery (circled in green) and the atomizer consisting of
`
`first piezoelectric element M1 and heating element RL (both circled in red). The
`
`locations of M1 and RL in the atomizer are shown in Fig. 6.
`
`
`
`Ex. 1002, ¶45. Ex. 1007, , p. 3, ln. 50-p. 4, ln. 10. “Cell 2” and “atomizer 9” are
`
`“provided within the shell 14.” Ex. 1002, ¶46; Ex. 1007, Hon ‘494, p. 3, lns. 15-
`
`18; p. 6, lns. 1-18, claim 1.
`
`d.
`
`[1.3] the cigarette bottle assembly is detachably
`located in one end of the shell, and fits with the
`atomizer assembly inside it
`
`
`
`Claim 1 recites “the cigarette bottle assembly is detachably located in one
`
`end of the shell, and fits with th