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`Paper No. ___
`Filed: June 20, 2015
`
`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.
`______________
`
`
`Case 2015-000859
`Patent No. 8,365,742
`
`______________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,365,742
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`LEGAL126421249.1
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`1.
`2.
`
`3.
`
`4.
`5.
`
`6.
`
`TABLE OF CONTENTS
`
`
`Page
`
`INTRODUCTION ............................................................................................................. 1
`CLAIM CONSTRUCTION ............................................................................................... 3
`2.1
`Electronic Cigarette ............................................................................................... 3
`2.2
`Porous Component ................................................................................................. 6
`2.3
`Liquid supply and liquid storage component ......................................................... 9
`2.4
`Frame ................................................................................................................... 10
`2.5
`Supported by ........................................................................................................ 11
`2.6
`Heating wire wound on a part of the porous component ..................................... 12
`2.7
`Run-through hole ................................................................................................. 14
`2.8
`Substantially aligned ............................................................................................ 14
`2.9
`Atomizer .............................................................................................................. 17
`SUMMARY OF THE ARGUMENTS ............................................................................ 18
`3.1
`Heating Wire Wound on a Part of the Porous Component .................................. 18
`3.2
`Frame Having a Run-Through Hole .................................................................... 19
`3.3
`Law of Obviousness ............................................................................................. 19
`EXAMINATION OF THE ‘742 PATENT ...................................................................... 20
`RESPONSE TO GROUND 1: THE PETITION SHOWS NO REASONABLE
`LIKELIHOOD THAT CLAIMS 1–3 ARE UNPATENTABLE OVER HON 494
`IN VIEW OF SUSA......................................................................................................... 21
`5.1
`Overview of Hon ‘494 ......................................................................................... 21
`5.2
`Hon ‘494 Has No Frame Supporting a Porous Component ................................. 23
`5.3
`Hon ‘494 has no heating wire wound on a part of the porous componen ........... 25
`5.4
`Overview of Susa ................................................................................................. 26
`5.5
`Susa Has No Frame with a Run-Through Hole and No Porous Component
`in Contact with or Substantially Surrounded by a Liquid Supply ....................... 29
`Susa Has No Heating Wire Wound on a Porous Component .............................. 29
`5.6
`RESPONSE TO GROUND 2: THE PETITION SHOWS NO REASONABLE
`LIKELIHOOD THAT CLAIMS 1–3 ARE UNPATENTABLE OVER HON 494
`IN VIEW OF ABHULIMEN ........................................................................................... 34
`6.1
`Overview of Abhulimen ...................................................................................... 34
`6.2
`Claim Limitations Missing From Abhulimen ...................................................... 36
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`TABLE OF CONTENTS
`(continued)
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`Page
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`6.3
`
`Claim Limitations Missing From the Combination of Hon ‘494 and
`Abhulimen............................................................................................................ 38
`RESPONSE TO GROUND 3: THE PETITION SHOWS NO REASONABLE
`LIKELIHOOD THAT CLAIMS 1–3 ARE UNPATENTABLE OVER HON 494
`IN VIEW OF WHITTEMORE ........................................................................................ 40
`7.1
`Overview of Whittemore ..................................................................................... 40
`7.2
`Claim Elements Missing From The Combination of Hon ‘494 and
`Whittemore .......................................................................................................... 41
`RESPONSE TO GROUND 4: THE PETITION SHOWS NO REASONABLE
`LIKELIHOOD THAT CLAIMS 1–3 ARE UNPATENTABLE OVER HON 494
`IN VIEW OF COUNTS ................................................................................................... 43
`8.1
`Overview of Counts ............................................................................................. 43
`8.2
`Claim Elements Missing From The Combination of Hon ‘494 and Counts ........ 45
`Response to Ground 5: The Petition Shows No Reasonable Likelihood that
`Claims 1–3 are Unpatentable Over Susa ......................................................................... 47
`RESPONSE TO GROUND 6: THE PETITION SHOWS NO REASONABLE
`LIKELIHOOD THAT CLAIMS 1–3 ARE UNPATENTABLE OVER SUSA
`COMBINED WITH ABHULIMEN ................................................................................ 53
`RESPONSE TO GROUND 7: THE PETITION SHOWS NO REASONABLE
`LIKELIHOOD THAT CLAIMS 1–3 ARE UNPATENTABLE OVER SUSA
`COMBINED WITH WHITTEMORE ............................................................................. 53
`11.1 Elements Missing From the Combination of Susa and Whittemore.................... 53
`11.2 Whittemore is Not Reasonably Combined with Susa .......................................... 54
`CONCLUSION ................................................................................................................ 56
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`7.
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`8.
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`9.
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`10.
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`11.
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`12.
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`LIST OF EXHIBITS RELIED UPON HEREIN
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`Petitioner’s Exhibits
`
`Exhibit
`
`Description
`
`Ex. 1001
`
`U.S. Patent No. 8,365,742 (“the ‘742 patent”)
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`Ex. 1006
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` WO 2005/099494, which is the PCT application equivalent of
`
`Hon (CN2719043) (“Hon ‘494”)
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`Ex. 1007
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`Certified English translation of WO 2005/099494
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`Ex. 1010
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`European Patent No. EP0845220 B1 (“Susa”)
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`Ex. 1011
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`U.S. Patent No. 5,144,962 (“Counts”)
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`Ex. 1012
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`WO 03/034847 (“Abhulimen”)
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`Ex. 1013
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`U.S. Patent No. 2,057,353 (“Whittemore”)
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`Ex. 1014
`
`Litigation Proceedings in CV 14-1645-Rulings on Claims
`
`Construction
`
`Ex. 1017
`
`Prosecution History, Non-final Office Action
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`
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`LEGAL126421249. 1iv
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`Ex. 1020
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`‘742 Prosecution History, Examiner Interview Summary
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`Patent Owner’s Exhibits
`
`Exhibit
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`
`
`
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`
`
`
`
`
`
`Electronic Cigarette: a possible substitute for cigarette
`dependence by P. Caponnetto et al. 2013; 79:1, 12-19
`
`Safety evaluation and risk assessment of electronic cigarettes as
`tobacco cigarette substitutes: a systematic review
`Ther Adv Drug Saf 2014, Vol 5(2) 67-86
`
`e-cigarette definition Dictionary.reference.com
`
`Dkt 93 - 0Joint Claim Construction and Prehearing Statement;
`Case No. CV14-1645 GW (MRWx)
`
`The New Oxford American Dictionary 2001
`
`Dkt 133 Civil Minutes dated May 7, 2015, Case No. CV 14-
`1645-GW (MRWx)
`
`US Patent 4,981,522 Nichols et al.
`
`Dkt 34 - Revised Joint Claim Construction and Prehearing
`Statement, Case No. CV 14-1645-GW (MRWx) and related
`cases
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`LEGAL126421249.1 -v-
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`1.
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`INTRODUCTION
`VMR Products LLC (“Petitioner”) filed a Petition for Inter Partes Review of
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`U.S. Patent No. 8,365,742 (the “’742 patent”) on March 10, 2015. Petittion (Paper
`
`2). The Patent Trial and Appeal Board (the “Board”) mailed a Notice of Filing
`
`Date Accorded to Petition on March 20, 2015. Notice of Filing (Paper 3).
`
`Pursuant to 37 C.F.R. § 42.107, Fontem Holdings 1 B.V. (“Patent Owner”)
`
`submits this Preliminary Patent Owner Response requesting that the petition be
`
`denied because the Petitioner has failed to establish “that there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the claims
`
`challenged in the petition” under 35 U.S.C. § 314(a).
`
`
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`Petitioner’s request for Inter Partes Review should be denied because none
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`of the prior art relied on in the Petition discloses “a heating wire wound on a part
`
`of the porous component” as required by all the claims. In addition, none of the
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`prior art relied on in the Petition discloses a “porous component supported by a
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`frame having a run-through hole” as in claims 1 and 2. These limitations are
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`missing from any combination of the prior art.
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`So, Petitioner resorts to attorney argument that the missing elements were
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`“well known” and “obvious to one of ordinary skill.” But, “[a]rgument of counsel
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`cannot take the place of evidence lacking in the record.” Estee Lauder Inc. v.
`
`L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) . See also Velander v. Garner,
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`LEGAL126421249.1
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`348 F.3d 1359, 1371 (Fed. Cir. 2003) (attorney argument and conclusory
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`statements, absent evidence, are entitled to little, if any, weight). Petitioner’s
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`expert, Dr. Buckner submits a declaration (Ex. 1002) that is a verbatim copy of the
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`Petition. Pages 18–61 of Ex. 1002 (Ex. 1002-019–1002-062) are identical to pages
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`15–60 of the Petition (Paper 2). Both documents have the same drafting errors (for
`
`example, referring to Hon ‘494 as having the porous layer 46 of Susa, and others).
`
`As Ex. 1002 adds nothing, it can be ignored. Logic Tech. Dev., LLC v. Fontem
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`Holdings 1 B. V., IPR2015-00098, Paper 8, May 11, 2015 Decision Denying
`
`Institution of Inter Partes Review, pages 9–10, (rejecting the declaration testimony
`
`of the same Dr. Buckner of Petitioner’s Exhibit 1002 in the present proceeding).
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`ActiveVideo Networks, Inc. v. Verizon Comm., Inc., 649 F.3d 1312, 1327 (Fed. Cir.
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`2012) (rejecting “conclusory and factually unsupported” expert
`
`testimony
`
`regarding obviousness). See also Kinetic Tech., Inc. v. Skyworks Solutions, Inc.,
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`IPR2014-00529, Paper 8, September 23, 2014, Decision Denying Institution of
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`Inter Partes Review, page 15 (PTAB 2014) (“Merely repeating an argument from
`
`the Petition in the declaration of a proposed expert does not give that argument
`
`enhanced probative value.”).
`
`
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`Accordingly, institution of Inter Partes Review of any claim of the ’742
`
`patent should be denied.
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`2.
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`CLAIM CONSTRUCTION
`In an inter partes review proceeding, “[a] claim in an unexpired patent shall
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`be given its broadest reasonable construction in light of the specification of the
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`patent in which it appears.” 37 C.F.R. § 42.100(b). Under that standard, primacy
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`is given “to the language of the claims, followed by the specification.
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`Additionally, the prosecution history, while not literally within the patent
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`document, serves as intrinsic evidence for purposes of claim construction.” Tempo
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`Lighting v. Tivoli, 742 F.3d 973, 977 (2013). Moreover, claims are construed from
`
`the perspective of one of ordinary skill in the art at the time of the invention.
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`Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).
`
`Petitioner offers no substantive analysis on claim construction. Instead,
`
`Petitioner relies solely on the constructions in other proceedings, primarily the
`
`companion district court decision.
`
`2.1 Electronic Cigarette
`
`Patent Owner’s Construction
`
`Petitioner’s Construction
`
`An electronic device that simulates the
`feel and experience of a traditional
`cigarette without burning.
`
`None.
`
`
`
`The broadest reasonable interpretation of the term “electronic cigarette” is
`
`“an electronic device that simulates the feel and experience of a traditional
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`LEGAL126421249.1 - 3 -
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`cigarette without burning.” The ’742 patent is directed to an “electronic cigarette.
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`The title of the ’742 patent is an aerosol “electronic cigarette.” Ex. 1001-001, ‘742
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`patent, title. Claim 1 of the ’742 patent recites an “aerosol electronic cigarette” in
`
`the preamble. Ex. 1001-014, ’742 patent, 6:6. Claims 2 and 3 recite an “electronic
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`cigarette” in the their respective preambles. Ex. 1001-014, ‘742 patent, 6:27, 6:39.
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`The problem solved by the ’742 patent is discussed at col. 1, lines 5–25.
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`
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`Smoking causes serious respiratory system diseases and cancer,
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`though it is hard to persuade the smokers to completely quit smoking.
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`
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`Nicotine is the effective ingredient in cigarettes. Nicotine acts
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`on the receptor of the central nervous system….
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`
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`To provide cigarette substitutes that contain nicotine but not
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`harmful tar, many products have been used. These products are not as
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`harmful as tar, but are absorbed very slowly. As a result, smokers
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`can't be satisfied in full. In addition, the smokers are deprived of the
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`“smoking” habit.
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`
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`The electronic cigarettes currently available on the market may
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`resolve the above-mentioned issue, though they are complicated in
`
`structure. They don't provide the ideal aerosol effects, and their
`
`atomizing efficiency is not high.
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`Ex 1001-012, ’742 patent, 1:5–25.
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`
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`The problem to be solved is not just in efficiently delivering nicotine. The
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`rituals of the smoking must also be provided. The solution to the problem is the
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`claimed electronic cigarette which both efficiently provides nicotine and also
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`provides the smoking habit. The smoking habit is provided via a device that
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`simulates the feel and experience of a traditional cigarette. Researchers assessing
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`smoking cessation products have recognized that the “efficacy with NRTs
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`[nicotine replacement therapy], as with other anti-smoking medication, is modest
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`because it addresses only the physical component of cigarette smoking (i.e.
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`nicotine dependence), and is unlikely to resolve the psychological factors
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`(cognitive and behavioral including handling, holding and puffing a cigarette)
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`associated with cigarette smoking.” Caponnetto, P., et al., Electronic cigarette: a
`
`possible substitute for cigarette dependence, 79:1 Monaidi Arch. Chest Dis. 12, 13
`
`(2013) (citations omitted) (Ex. 2001).
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`
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`In contrast “[electronic cigarettes] are unique in that they provide rituals
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`associated with smoking behavior (e.g. hand-to-mouth movement, visible ‘smoke’
`
`exhaled) and sensory stimulation associated with it.” Farsalinos, K.E., et al.,
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`Safety evaluation and risk assessment of electronic cigarettes as tobacco cigarette
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`substitutes: a systematic review, 5[2] Ther. Adv. Drug Saf. 67, 68 (2014) (citations
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`omitted) (Ex. 2002). As such, electronic cigarettes may “provide a coping
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`mechanism for the conditioned smoking cues by replacing some of the
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`mechanisms associated with smoking gestures (e.g., hand-to-mouth action of
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`smoking), and for these reasons it is now perceived as a more attractive substitute
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`for smoking. . . .” Id. at 13.
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`And Dictionary.com defines “e-cigarette” as “a device used to simulate
`
`the experience of smoking, having a cartridge with a heater that vaporizes
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`liquid nicotine
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`instead
`
`of
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`burning
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`tobacco.”
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`http://dictionary.reference.com/browse/e-cigarette (last visited 06/18/2015). Ex.
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`2003.
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`In fact, four days after filing the Petition, in related district court litigation
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`Petitioner agreed that, as used in the ’742 patent, the term “electronic cigarette”
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`had that same meaning. Fontem v. NJOY, Case No. 14-1645, Dkt. 93, Ex. A (Ex.
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`2004).
`
`
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`Accordingly, the broadest reasonable construction of “electronic cigarette” is
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`“an electronic device that simulates the feel and experience of a cigarette without
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`burning.” Petitioner does not disagree.
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`2.2 Porous Component
`
`Patent Owner’s Construction
`
`Petitioner’s Construction
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`LEGAL126421249.1 - 6 -
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`A component of the atomizer assembly
`
`A component of the atomizer assembly
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`having
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`pores
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`or
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`interstices
`
`and
`
`in the electronic cigarette that includes
`
`providing for absorption or diffusion of
`
`pores and is permeable to liquid, such as
`
`liquid.
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`cigarette solution from the cigarette
`
`solution storage area. Petition at page 7
`
`(Paper 2).
`
`
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`
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`The ’742 patent claims recite the following regarding the porous component:
`
` the atomizer includes a porous component and heating wire (claims 1–3);
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` the porous component is supported by the atomizer frame having a run-
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`through hole (claims 1 & 2);
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` the porous component is between the atomizer frame and the outlet
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`(claim 3);
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` the heating wire is wound on a part of the porous component (claims 1–
`
`3); that is substantially aligned with the run-through hole (claims 1 & 3)
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`or in the path of air flowing through the run-through hole (claim 2);
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`LEGAL126421249.1 - 7 -
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` the porous component is positioned substantially within the cigarette
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`bottle assembly (claim 1);
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` the porous component is substantially surrounded by the liquid storage
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`component (claim 2);
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` the porous component is in contact with a liquid supply in the housing
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`(claim 3).
`
`
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`As described in the ’742 Patent, the porous component provides “liquid
`
`absorption and diffusion, and the ability to absorb liquid stored in the cigarette
`
`bottle assembly.” Ex. 1001-013, ’742 Patent, 3:25–26. And, that it “absorbs the
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`cigarette liquid from the perforated component for liquid storage….” Ex. 1001-
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`013, ’742 Patent, 3:66–67. The function of the porous component is to draw liquid
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`from the liquid storage to the atomizer for vaporization. That is why the porous
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`component is in the atomizer assembly, has a coil wrapped around it, and is in
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`contact with the liquid supply. It is not merely a component that has holes.
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`
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`Petitioner proposes that the Board accept the definition of porous component
`
`from IPR2013-00387, which involved the parent patent (USPN 8,156,944) to the
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`‘742 patent. Petition at page 7 (Paper 2). Petitioner offers no analysis why that
`
`construction is proper for the claims of the ‘742 patent. As explained above, based
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`LEGAL126421249.1 - 8 -
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`upon the claims and the disclosure of the ‘742 patent, a porous component is
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`something more than a component that simply has holes.
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`2.3 Liquid supply and liquid storage component
`
`Patent Owner’s Construction
`
`Petitioner’s Construction
`
`A supply of liquid; a component that
`
`None. But not limited to a liquid supply
`
`stores a supply of liquid.
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`bottle.
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`
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`Claims 2 and 3 of the ’742 patent recite a “liquid storage component” and a
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`“liquid supply,” respectively. “Liquid supply” means exactly what it says: a
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`supply of liquid. Similarly, a “liquid storage component” is a component that
`
`stores a supply of liquid. The ’742 patent specification discloses “[a] component
`
`for liquid storage of the cigarette bottle assembly stores the nicotine liquid.” Ex.
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`1001-012, ’742 Patent, 1:38–39. “The perforated component for liquid storage (9)
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`is made of such materials as PLA fiber, terylene fiber or nylon fiber, which are
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`suitable for liquid storage” and “[t]he perforated component for liquid storage (9)
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`of the cigarette bottle assembly and the porous component (81) of the atomizer (8)
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`contact each other to achieve the capillary impregnation for liquid supply.” Ex.
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`1001-013, ’742 Patent, 3:1–54, 4:36–40.
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`LEGAL126421249.1 - 9 -
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`2.4 Frame
`
`Patent Owner’s Construction
`
`Petitioner’s Construction
`
`A firm structure designed to hold up
`
`A rigid structure. Petition at pages 7–8
`
`another component.
`
`(Paper 2).
`
`
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`
`
`The ’742 patent claims recite an atomizer having a frame, the frame has a
`
`run-through hole. Claims 1 and 2 state that the frame supports the porous
`
`component.
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`
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`The ‘742 patent specification reads:
`
`In the fifth preferred embodiment, as shown in FIGS. 17 and 18, the
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`atomizer assembly is an atomizer (8), which includes a frame (82), the
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`porous component (81) set on the frame (82), and the heating wire
`
`(83) wound on the porous component (81). The frame (82) has a run-
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`through hole (821) on it.
`
`Ex. 1001-014, ‘742 Patent, 5:42–47.
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`The Petition cites to the claim construction ruling in CV14-1645 (Ex. 1014).
`
`Petition at page 7 (Paper 2). In Ex. 1014, the Court acknowledges that “rigid”
`
`introduces some measure of ambiguity, and observed that “the ‘742 patent
`
`identifies the ‘frame’ as a firm structure designed to hold up another component.”
`
`Ex. 1014-008. In the context of the ‘742 patent, this is the better interpretation,
`
`particularly because “supported by” means “held up” as set forth below. Thus,
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`frame should be construed as “a firm structure designed to hold up another
`
`component.”
`
`2.5 Supported by
`
`Patent Owner’s Construction
`
`Petitioner’s Construction
`
`Held up by; i.e., bearing all or part of
`
`None.
`
`the weight of;
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`
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`LEGAL126421249.1 - 11 -
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`Claims 1 and 2 of the ‘742 patent recite a porous component that is
`
`supported by a frame. The ’742 patent specification
`
`discloses and illustrates such an embodiment in Figs.
`
`17 and 18 (left). The description of Figs. 17 and 18
`
`includes:
`
`In the fifth preferred embodiment, as shown in FIGS. 17 and 18,
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`the atomizer assembly is an atomizer (8), which includes a frame (82),
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`the porous component (81) set on the frame (82), and the heating wire
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`(83) wound on the porous component (81). The frame (82) has a run-
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`through hole (821) on it. Ex. 1001-014, ‘742 Patent, 5:42–47.
`
`The New Oxford American Dictionary defines “support” to mean “1. Bear
`
`all or part of the weight of: hold up.” Ex. 2005 at 1708 (2001).
`
`
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`Thus, as illustrated by Fig. 18 and the disclosure of the specification, the
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`broadest reasonable interpretation of “supported by” is its ordinary meaning of
`
`“held up by, i.e., bearing all or part of the weight of.”
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`2.6 Heating wire wound on a part of the porous component
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`Patent Owner’s Construction
`
`Petitioner’s Construction
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`LEGAL126421249.1 - 12 -
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`The heating wire is wrapped around and
`
`None
`
`in contact with a part of the porous
`
`component.
`
`
`
`
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`
`
`Claims 1–3 of the ’742 patent recite “a heating wire wound on a part of the
`
`porous component.” The ’742 patent specification
`
`discloses and illustrates such an embodiment in Figs.
`
`17 and 18. The description of Figs. 17 and 18
`
`includes: “The porous component (81) is wound
`
`with heating wire (83) in the part that is on the side in the axial direction of the
`
`run-through hole (821).” Ex. 1001-014, ‘742 Patent, 5:47–49. Fig. 18 (left) shows
`
`the heating wire is in contact with the part of the porous component. Consistent
`
`with the above construction of the porous component to draw liquid from the liquid
`
`supply to the atomizer for atomization, the heating wire is “wound on a part of the
`
`porous component.” Emphasis added. The word “on” further indicates that the
`
`wire touches the component. The New Oxford American Dictionary defines “on”
`
`to mean “1. Physically in contact with and supported by (a surface).” Ex. 2005 at
`
`1194 (2001).
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`2.7 Run-through hole
`
`Patent Owner’s Construction
`
`Petitioner’s Construction
`
`A hole extending through
`
`None
`
`
`
`
`
`Claims 1–3 of the ’742 patent recite “a frame” having a “run-through hole.”
`
`The ’742 patent specification illustrates a frame
`
`with a run-through hole in Fig 18 (left). “The
`
`frame (82) has a run-through hole (821) on it.”
`
`Ex. 1001-014, ‘742 Patent, 5:46–47. Fig. 18 to the
`
`left shows the run-through hole 821 extending
`
`through the frame. The run-through hole is a through hole with open ends.
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`2.8 Substantially aligned
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`Patent Owners Construction
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`Petitioner’s Construction
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`At least largely in line with
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`“Substantially” means largely but not
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`completely. Petition at page 9 (Paper
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`2).
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`LEGAL126421249.1 - 14 -
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`The Petition at page 9 refers to Ex. 1014, page 26 as supporting Petitioner’s
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`construction. Petition at page 9 (Paper 2). However, Ex. 1014, pages 24–25 is
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`directed to the phrases “substantially within” and “substantially surrounded by” in
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`claims 1 and 2, as is clear from the recitation of these phrases at the top of page 25
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`of Ex. 1014. Ex. 1014-025–1014-026. “Substantially aligned,” the phrase at issue
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`here, is not discussed.
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`The ‘742 patent states:
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`the atomizer assembly is an atomizer (8), which includes a
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`frame (82), the porous component (81) set on the frame (82), and the
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`heating wire (83) wound on the porous component (81). The frame
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`(82) has a run-through hole (821) on it. The porous component (81) is
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`wound with heating wire (83) in the part that is on the side in the axial
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`direction of the run-through hole (821). Ex. 1001-014, ‘742 Patent,
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`5:43–49.
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`
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`In Figs. 17 and 18 of the ‘742 patent shown below, the heating wire 83 is
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`wound on a part of the porous component in direct alignment with the run-through
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`hole 821.
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`LEGAL126421249.1 - 15 -
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`Fig. 17 is a view looking into the right side of the atomizer as it is shown in
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`Fig. 18. The run-through hole 821 is not visible in Fig. 17 because it is hidden
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`behind the part of the porous component on which the heating wire 83 is wound.
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`Consequently, that part of the porous component is aligned with the run-through
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`hole to a degree that the line-of-site of the run-through hole 821 is partially or fully
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`blocked. This alignment is shown by the centerline added through Figs. 17 and 18
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`above. This alignment may be visualized by the result of poking a hypothetical
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`wire or rod through the run-through hole 821. The hypothetical wire or rod will hit
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`the heating wire 83. The context of the ‘742 patent shows that “substantially
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`aligned with the run-through hole” means the porous body is in line with or in the
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`path of the run-through hole.
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`
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`As the court reasoned in its second Markman hearing:
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`Patent drafters often use approximation words - like substantially - to
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`affirmatively indicate that total precision is not required… the Court
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`LEGAL126421249.1 - 16 -
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`would construe “substantially ” as a term of approximation design to
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`capture “minor variations that may be appropriate to secure the
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`invention.” Plaintiffs’ proposed construction - “at least largely -
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`accurately reflects this meaning. It is also consistent with the term’s
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`ordinary meaning when used as a term of approximation. Fontem
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`Ventures B.V. et al. v. NJOY, Inc. et al., Case No. CV 14-1645-
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`GW(MRWx), Ruling on Claim Construction, Ex. 2006 at page 8.
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`
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`The same definition of substantially should be applied to aligned here, “at
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`least largely in line with.”
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`2.9 Atomizer
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`Patent Owners Construction
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`Petitioner’s Construction
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`A component that converts liquid into
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`None
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`aerosol or vapor.
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`
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`The broadest reasonable interpretation of the term “atomizer” is a
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`“component that converts liquid into aerosol or vapor.” Petitioner (along with its
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`co-defendants in related litigation) already agreed to that construction. Fontem v.
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`NJOY, Case No. 14-1645, Dkt. 34 at 7 (Ex. 2008).
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`LEGAL126421249.1 - 17 -
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`Claims 1 , 2 and 3 recite an “atomizer” that includes a “frame,” “porous
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`body,” and a “heating wire.” The ‘742 patent specification discloses that “the
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`atomizer (8) works to atomize the cigarette liquid and produce gas flow, which
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`enters the cigarette holder shell (b).” Ex. 1001-014, ‘742 Patent, 5:21–23. And,
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`that:
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`In the fifth preferred embodiment, as shown in FIGS. 17 and 18, the
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`atomizer assembly is an atomizer (8), which includes a frame (82), the
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`porous component (81) set on the frame (82), and the heating wire (83)
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`wound on the porous component (81). The frame (82) has a run-through
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`hole (821) on it. The porous component (81) is wound with heating wire
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`(83) in the part that is on the side in the axial direction of the run-through
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`hole (821). Ex. 1001-014, ‘742 Patent, 5:42–49.
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`Thus, the broadest reasonable interpretation of the term “atomizer” is a
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`“component that converts liquid into aerosol or vapor.”
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`3.
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`
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`SUMMARY OF THE ARGUMENTS
`3.1 Heating Wire Wound on a Part of the Porous Component
`None of the prior art relied on in the Petition discloses “a heating wire
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`wound on a part of the porous component” as required by all the claims.
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`LEGAL126421249.1 - 18 -
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`3.2 Frame Having a Run-Through Hole
`None of the prior art relied on in the Petition discloses a “porous component
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`supported by a frame having a run-through hole” as in claims 1 and 2.
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`
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`Consequently,
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`these
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`limitations are necessarily missing
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`from any
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`combination of the prior art.
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`3.3 Law of Obviousness
`Even if the prior art is modified as proposed in the Petition to create these
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`
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`limitations, there is still no reasonable likelihood of the claims being found to be
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`unpatentable because the Petition offers no reason to combine the prior art as
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`described in the Petition. Rather the Petition simply states conclusions of
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`obviousness with no articulated reasoning. KSR lnt'l Co. v. Teleflex Inc.,550 U.S.
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`398, 401 (2007).
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`
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`"A patent composed of several elements is not proved obvious merely
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`by demonstrating that each of its elements was, independently, known in the
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`prior art." Id.
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`
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`"[I]nventions in most, if not all, instances rely upon building blocks long
`
`since uncovered, and claimed discoveries almost of necessity will be
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`combinations of what, in some sense, is already known." Id., 550 U.S. at 419.
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`To prove obviousness, Petitioners must show that "there was an apparent
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`LEGAL126421249.1 - 19 -
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`reason to combine the known elements in the fashion claimed by the patent at
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`issue." Id. at 418. The analysis "should be made explicit." Id.
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`
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`"[R]ejections on obviousness grounds cannot be sustained by mere
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`conclusory statements; instead, there must be some articulated reasoning with
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`some rational underpinning to support the legal standard of obviousness." Id.
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`at 418 (quoting In re Kahn, 441F.3d 977, 988 (Fed. Cir.2006)).
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`4.
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`EXAMINATION OF THE ‘742 PATENT
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`The Petition at page 13 cites to the First Office Action (Ex. 1017-003–1017-
`
`004) as supporting the contention that the Examiner determined that “only one
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`limitation was lacking” from Hon ‘043. Petition at page 13 (Paper 2). The
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`Examiner’s statement of reasons for allowance in Ex. 1017 is:
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`The Examiner believes that the closest prior art of record, namely the
`
`CN 2719043 reference, neither teaches nor reasonably suggests an
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`aerosol electronic cigarette having the claimed combination of
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`structural features, including “an atomizer, which includes a porous
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`component and a heating body; the said heating body is heating
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`wire…the heating wire is wound on the said porous component. Ex.
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`1017-003–1017-004.
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`LEGAL126421249.1 - 20 -
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`Among the claimed combination of structural features (in addition to the
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`atomizer) are the frame, the run-through hole, and the part of the porous aligned
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`with the run-through hole. The Examiner did not conclude that “only one
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`limitation was lacking.”
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`5.
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`
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`RESPONSE TO GROUND 1: THE PETITION SHOWS NO
`REASONABLE LIKELIHOOD THAT CLAIMS 1–3 ARE
`UNPATENTABLE OVER HON 494 IN VIEW OF SUSA
`5.1 Overview of Hon ‘494
`The Petition refers to various equivalent “Hon” publications which are Exs.
`
`1004–009. For consistency, this paper refers only to Ex. 1007 (Hon ‘494) as Ex.
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`1007 is primarily cited in the Petition.
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`
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`The atomizer of Hon ‘494 is shown in Figs. 6–8.
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`
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`The elements in these Figures are the
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`porous body 27; the porous bulge 36;
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`LEGAL126421249.1 - 21 -
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`the atomizing cavity 10; the heating element 26; the cavity wall 25; the first piezo
`
`element 23 and long stream ejection holes 24. The cavity wall 25 is surrounded by
`
`the porous body 27. The wall 25 can be made of aluminum oxide or ceramic. Ex.
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`1007-005, Hon ‘494, lines 27–38. The unlabeled extended lines in Figs. 6 and 8
`
`are the wire leads of the heating element 26.
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`
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`Element 23 in Fig. 6 and element 35 in Fig. 8 are both piezoelectric
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`elements, which may be omitted, with atomization then made only by the heating
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`element 26. Ex. 1007-006, Hon ‘494, lines 41–43.
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`
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`Fig. 7 is