Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: September 16, 2015
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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.
`____________
`
`Case IPR2015-00859
`Patent 8,365,742 B2
`____________
`
`Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAMARA, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 9
`Entered: September 16, 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 IPR2015-00859
`Patent 8,365,742 B2
`____________
`
`Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAMARA, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
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`I. INTRODUCTION
`VMR Products LLC (“Petitioner”) filed a Petition (“Pet.”) to institute
`an inter partes review of claims 1–3 of U.S. Patent No. 8,365,742 B2 (“the
`’742 patent,” Ex. 1001). Paper 2. Fontem Holdings 1 B.V. (“Patent
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 5. We have
`jurisdiction under 35 U.S.C. § 314.
`Upon consideration of the Petition and Preliminary Response, we
`determine that Petitioner has not established a reasonable likelihood of
`prevailing with respect to claims 1–3 of the ’742 patent. Accordingly, we
`deny the Petition, and do not institute an inter partes review.
`A.
`Related Proceedings
`Petitioner indicates that the ’742 patent is asserted in numerous cases
`pending in the Central District of California, including Fontem Ventures
`B.V. v. VMR Products LLC, Case No. 2:14-cv-01655 (“the District Court
`Action”). Pet. 1–2. Patent Owner states that the ’742 patent is also the
`subject of IPR2015-01587, filed by JT International SA on July 14, 2015.
`Paper 7, 1.
`B.
`The ’742 Patent (Ex. 1001)
`The ’742 patent, titled “Electronic Cigarette,” is directed to an aerosol
`electronic cigarette having a battery assembly, an atomizer assembly, a
`cigarette bottle assembly, and a hollow, integrally-formed shell. Ex. 1001,
`Abstract. According to the ’742 patent, prior art devices had various
`disadvantages, including low atomizing efficiency, being structurally
`complicated, and not providing ideal aerosol effects. Id. at 1:21–24.
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`Figure 1 of the ’742 patent is reproduced below:
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`Figure 1 is a side section view of an electronic cigarette. Id. at 1:45.
`Hollow, integrally-formed shell “a” includes a battery assembly, atomizer
`assembly, and cigarette bottle assembly. Id. at 2:30–33. The battery
`assembly connects to the atomizer assembly in shell “a,” and the detachable
`cigarette body assembly (which fits with the atomizer assembly) is located in
`one end of shell “a.” Id. at 2:33–37. Shell “a” also includes through-air-
`inlets a1. Id. at 2:37–38. The battery assembly includes operating indicator
`1, battery 3, electronic circuit board 4, and airflow sensor 5. Id. at 2:39–45.
`The atomizer assembly is atomizer 8, which includes a porous component
`and a heating rod. Id. at 3:6–8. The cigarette bottle assembly includes
`hollow cigarette shell holder “b,” and perforated component for liquid
`storage 9. Id. at 3:49–51. Air channel b1 is located in the center on the
`surface of one end of cigarette shell holder “b,” and extends inward. Id. at
`3:59–62.
`Figures 5, 6, and 7 of the ’742 patent are reproduced below:
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`Figure 5 is a side-section view of the porous component of atomizer 8,
`Figure 6 is a diagram of the structure of a heating rod in atomizer 8, and
`Figure 7 is a side-section view of atomizer 8. Id. at 1:53–59. Atomizer 8
`includes porous component 81 and heating rod 82. Id. at 3:6–8. Heating rod
`82 includes heating wire 822 wound on the wall of cylinder 821. Id. at
`3:28–30. Porous component 81 contains run-through atomizing chamber
`811. Id. at 3:8–9. Heating rod 82 enters run-through atomizing chamber
`811, and the space between heating rod 82 and the interior wall of run-
`through atomizing chamber 811 creates negative pressure cavity 83. Id. at
`3:11–15. One end of porous component 81 fits with the cigarette bottle
`assembly, with protuberance 812 at the other end connecting to atomizing
`chamber 811 with run-through hole 813. Id. at 3:16–19.
`C.
`Illustrative Claim
`Petitioner challenges claims 1–3 of the ’742 patent. Each of claims 1–
`3 is independent. Claim 1 is illustrative, and recites as follows:
`1.
`An aerosol electronic cigarette, comprising:
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`a battery assembly, an atomizer assembly and a cigarette bottle
`assembly, and a shell that is hollow and integrally
`formed;
`the battery assembly electrically connected with the atomizer
`assembly, and both are located in the shell;
`the cigarette bottle assembly is detachably located in one end of
`the shell, and fits with the atomizer assembly inside of it;
`the shell has through-air-inlets;
`the atomizer assembly is an atomizer, which includes a porous
`component and a heating body;
`the heating body is a heating wire;
`the atomizer includes a frame;
`the porous component is supported by the frame;
`the heating wire is wound on the porous component;
`the frame has a run-through hole;
`a heating wire wound on a part of the porous component that is
`substantially aligned with the run-through hole; and with
`the porous component also positioned substantially
`within the cigarette bottle assembly.
`The Prior Art
`Petitioner relies on the following prior art references:
`Reference
`Patent
`Date
`Exhibit No.
`Whittemore
`US 2,057,353
`Sept. 27, 1935 1013
`Counts
`US 5,144,962
`Sept. 8, 1992
`1011
`Susa
`EP 0 845 220 A1
`June 3, 1998
`1010
`Abhulimen WO 03/034847 A1 May 1, 2003
`1012
`Hon ’043
`Chinese Patent No.
`Aug. 24, 2005 1004 and
`CN 2719043 Y
`1005 (English
`translation)
`
`D.
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`Reference
`Hon ’4941
`
`Date
`Patent
`WO 2005/099494 A1 Oct. 27. 2005
`
`Exhibit No.
`1006 and
`1007 (English
`translation
`
`
`E.
`
`The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–3 of the ’742 patent
`on the following grounds:
`Reference(s)
`Hon and Susa
`
`Basis
`§ 103(a)
`
`Claims Challenged
`1–3
`
`Hon and Abhulimen
`
`Hon and Whittemore
`
`Hon and Counts
`
`Susa
`
`Susa and Abhulimen
`
`Susa and Whittemore
`
`
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`
`1 Hon ’494 is the PCT application equivalent of Hon ’043. Pet. 15. When
`referring to Hon ’043 in the Petition, Petitioner cites the English translation
`of Hon ’494 “because the translation [of Hon ’043] does not have paragraph
`numbers or line numbers.” Id. at n. 2. Petitioner also uses Hon ’043 and
`Hon ’494 interchangeably throughout the Petition. For clarity, we will refer
`to Hon ’494 and Hon ’043 collectively as “Hon,” and we will cite to the
`English translation of Hon ’494 (Ex. 1007) when referring to Hon.
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`II. ANALYSIS
`
`A.
`
`Claim Interpretation
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b). For purposes of this
`Decision, based on the record before us, we make explicit the interpretation
`of the claim terms “frame” and “porous component,” as set forth in claims
`1–3.
`
`“frame”
`1.
`Petitioner proposes that we construe “frame” to mean “rigid
`structure.” Pet. 8. In support of its construction, Petitioner relies on the
`district court’s ruling on claim construction in the District Court Action. Id.
`at 7–8 (citing Ex. 1014, 5–7). Patent Owner proposes that we construe the
`term to mean “a firm structure designed to hold up another component.”
`Prelim. Resp. 10. Patent Owner cites the Specification’s description of the
`fifth preferred embodiment, which includes a frame with a run-through hole
`on it, and a porous component set on the frame, in support of its
`construction. Id. at 10. (citing Ex. 1001. 5:42–47). According to Patent
`Owner, “[i]n the context of the ’742 patent, this is the better interpretation,
`particularly because ‘supported by’ means ‘held up.’” Id. at 11.
`Based on the record before us, we are persuaded that Petitioner’s
`interpretation is the broadest reasonable interpretation in light of the
`Specification. The only mention of “frame” in the Specification is in the
`discussion of the fifth preferred embodiment, where it states, with reference
`to Figures 17 and 18, that “the atomizer assembly is an atomizer (8), which
`includes a frame (82), the porous component is set on the frame (82),” and
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`“[t]he frame (82) has a run-through hole (821) on it.” Ex. 1001, 5:42–47.
`That the porous component is set on the frame in one embodiment, however,
`is not enough to limit “frame” to a structure that is designed to hold up
`another component, as suggested by Patent Owner. The language of the
`claims further indicates that a frame need not necessarily “hold up another
`component.” Claims 1 and 2 require that the porous component be
`“supported by” the frame, but claim 3 only requires that there is “a porous
`component between the frame and the outlet.” Petitioner’s proposed
`interpretation of “frame” as “a rigid structure” is consistent with the use of
`the term in the Specification and the claims.
`For purposes of this Decision, consistent with the disclosures in the
`Specification and its ordinary meaning, we interpret “frame” to be “a rigid
`structure.”
`2.
`“porous component”
`Petitioner proposes that we construe “porous component” to mean “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.” Pet. 7. In support of this construction, Petitioner
`relies on the Board’s interpretation of “porous component” in the Decision
`to Institute Inter Partes Review in IPR2013-00387, relating to U.S. Patent
`No. 8,156,944 (“the ’944 patent”), because “[t]he ’742 Patent is a divisional
`of the application that led to the ’944 Patent, and therefore both patents share
`the same specification.” Id.; see CB Distributors, Inc. v. Ruyan Investment
`(Holdings) Limited, Case IPR2013-00387, slip op. at 11 (PTAB Dec. 30,
`2013) (Paper 7).
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`Patent Owner proposes that we construe the term to mean “a
`component of the atomizer assembly having pores or interstices and
`providing for absorption or diffusion of liquid.” Prelim. Resp. 6–7. As
`support for this construction, Patent Owner states that the claims of the ’742
`patent include a number of recitations relating to the porous component,
`including that “the atomizer includes a porous component and a heating
`wire,” “the porous component is supported by the atomizer frame having a
`run-through hole,” “the porous component is positioned substantially within
`the cigarette bottle assembly,” and “the porous component is substantially
`surrounded by the liquid storage component.” Id. at 7–8. Patent Owner also
`cites to the Specification’s statements that “the porous component provides
`‘liquid absorption and diffusion, and the ability to absorb liquid stored in the
`cigarette bottle assembly’ . . . [a]nd that it ‘absorbs the cigarette liquid from
`the perforated component for liquid storage.’” Id. at 8 (citing Ex. 1001,
`3:25–26, 66–67). According to Patent Owner, “Petitioner offers no analysis
`why [the construction from IPR2013-00387] is proper for the claims of the
`’742 patent,” because, “based upon the claims and the disclosure of the ’742
`patent, a porous component is something more than a component that simply
`has holes.” Id. at 8–9.
`Based on the record before us, we are persuaded that Petitioner’s
`proposed interpretation is the broadest reasonable interpretation in light of
`the Specification. Petitioner’s proposed interpretation is consistent with the
`Specification, which describes the porous component as being “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
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`bottle assembly.” Ex. 1001, 3:23–27. The Specification further states that
`the porous component “absorbs the cigarette liquid from the perforated
`component for liquid storage,” and, “[a]fter atomization, the big-diameter
`fine drips are re-absorbed by the porous component.” Id. at 4:25–27.
`Therefore, for purposes of this Decision and in accordance with the
`broadest reasonable interpretation in light of the Specification, we interpret
`“porous component” to mean “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.”
`B.
`Obviousness over Hon and Susa
`Petitioner contends that claims 1–3 would have been obvious under 35
`U.S.C. § 103(a) over the combination of Hon and Susa. Pet. 15–32.
`Petitioner relies on a Declaration by Gregory Buckner, Ph.D. (“the Buckner
`Declaration,” Ex. 1002) in support of the contentions. Id.
`1.
`Overview of Hon
`Hon is directed to an electronic atomization cigarette. Ex. 1007, 1:4–
`5. Figures 1 and 6 of Hon are reproduced below:
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`Figure 1 is a schematic diagram of the structure of an electronic cigarette
`that includes air inlet 4, normal pressure cavity 5, sensor 6, vapor-liquid
`separator 7, atomizer 9, liquid-supplying bottle 11, and mouthpiece 15
`within shell 16. Id. at 2:40, 3:14–18. Figure 6 is a structural diagram of an
`atomizer, which includes atomization cavity 10, heating element RL, first
`piezoelectric element M1, atomization cavity wall 25, porous body 27, and
`bulge 36. Id. at 2:48, 3:24–29, 35–38.
`Hon states that heating element RL “can be made of platinum wire,
`nickel chromium alloy or iron chromium aluminum alloy wire with rare
`earth element” and “can also be made into a sheet form.” Id. at 3:27–29.
`Hon also states that “atomization cavity wall 25 is surrounded with the
`porous body 27, which can be made of foam nickel, stainless steel fiber felt,
`high molecule polymer foam and foam ceramic,” and that “atomization
`cavity wall 25 can be made of aluminum oxide or ceramic.” Id. at 3:35–38.
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` Hon further states 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 an actuating signal,” which causes the cigarette
`to begin operating. Id. at 4:11–14. Hon describes that air enters normal
`pressure cavity 5 through air inlet 4, proceeds through the through hole in
`vapor-liquid separator 7, and flows into atomization cavity 10 in atomizer 9.
`Id. at 4:21–24. The nicotine solution in porous body 27 is driven by the high
`speed stream passing through the ejection hole into atomization cavity 10 in
`the form of a droplet, where it “is subjected to the ultrasonic atomization by
`the first piezoelectric element M1 and is further atomized by the heating
`element RL.” Id. at 4:26–27. After atomization, large-diameter droplets
`stick to the wall and are reabsorbed by porous body 27 via overflow hole 20,
`and small-diameter droplets form aerosols that are sucked out via aerosol
`passage 12, gas vent 17, and mouthpiece 15. Id. at 4:28–31.
`2.
`Overview of Susa
`
`Susa is directed to a flavor generation article used for simulated
`smoking. Ex. 1010, 1:5–7. Susa Figure 1 is reproduced below:
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`Figure 1 is a schematic diagram of a flavor generation article described by
`Susa. Id. at 4:20–22. Casing 12 includes “first portion 12a to be held by the
`user’s mouth” and “second portion 12b for incorporating a power supply and
`the like.” Id. at 5:17–20. Portions 12a and 12b are detachably connected by
`connecting portion 13 formed on casing main body 14, and “are electrically
`connected to each other through a cable 15 stored in a space formed in the
`casing main body 14 to correspond to the connecting portion 13.” Id. at
`5:20–26. Gas flow path 26 is formed in casing 12 between air intake ports
`24 and suction port 22. Id. at 5:36–37.
`Throttle hole 20, in the center of throttle plate 21, is located in gas
`flow path 26 and directs air from air intake ports 24 to flow along the surface
`of ceramic heater 42. Id. at 5:46–50. Ceramic heater 42 is fixed on the inner
`surface of casing main body 14 by support member 44. Id. at 7:30–32. Air
`from throttle hole 20 flows through gap 27 between discharge ports 35 and
`ceramic heater 42. Id. at 7:35–38. Liquid-absorbing porous layer 46 is
`formed on the surface of ceramic heater 42, and can be made of an organic
`compound (such as natural cellulose, a cellulose derivative, or an aramid
`resin), or an inorganic compound (such as carbon, alumina, or silicon
`carbide). Id. at 7:50–8:5.
`When a user inhales through suction port 22, sensor 73 outputs an
`operation signal to control circuit 72, which energizes ceramic heater 42. Id.
`at 9:41–50. After a predetermined time, discharge drive portion 38 is
`triggered, liquid material 36 is discharged from discharge ports 35, and is
`gasified with heating by ceramic heater 42. Id. at 9:50–55. As the user
`inhales, the gasified material is mixed with the suctioned air from air intake
`ports 24, passed through the throttle hole 20, passes between the discharge
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`ports 35 and ceramic heater 42, and is guided to suction port 22. Id. at 9:55–
`10:2.
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`Figure 13 of Susa is reproduced below:
`
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`Figure 13 is a schematic view of another embodiment of Susa’s flavor
`generation article. Id. at 15:28–30. Formed body 92 consists “of a solid
`material that generates a flavor or the like to be inhaled by the user” and is
`detachably disposed in gas flow path 26 between ceramic heater 42 and
`cooling chamber 52. Id. at 14:57–15:4. Susa states that when formed body
`92 is sized such that there is no gap between it and the inner surface of
`casing main body 14, formed body 92 consists of a solid material that has
`good air permeability, and gas flow path 26 is formed to extend through
`formed body 92. Id. at 15:13–19. When there is a gap between formed
`body 92 and the inner surface of casing main body 14, formed body 92 can
`have little or no air permeability, and gas flow path 26 is formed to extend
`through that gap. Id. at 15:19–27. Coil heater 94 “is disposed around”
`formed body 92, and “may be arranged in a hole formed in” formed body
`92. Id. at 15:34–36.
`3.
`Analysis
`
`a.
`Claims 1 and 2
`Petitioner contends that Hon describes porous component 27
`supported by atomization cavity wall 25, and therefore teaches “the atomizer
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`includes a frame; the porous component is supported by the frame”
`limitations recited in claim 1, and “the atomizer assembly including a porous
`component supported by a frame having a run-through hole” limitation in
`claim 2. Pet. 21, 28. In particular, Petitioner contends that, in Hon, “[t]he
`porous component is ‘arranged around the atomization cavity wall’ which
`‘can be made of aluminum oxide or ceramic.’” Id. at 21 (citing Ex. 1007,
`2:12, 3:38). Thus, according to Petitioner, Hon’s atomization cavity wall 25
`is a “frame” as recited in the challenged claims.
`Patent Owner argues that Hon does not disclose a frame or any
`element that supports the porous body. Prelim. Resp. 23. Patent Owner
`argues that Hon’s cylindrical atomization cavity wall 25 “is supported from
`below and laterally by porous body 27” and “is a liner within the porous
`body which forms the atomization cavity 10.” Id. at 24. According to
`Patent Owner, atomization cavity wall 25 “that is entirely within porous
`body 27 does not support the porous body,” and, instead, “the porous body
`27 supports the wall 25 as the porous body will hold the wall in place.” Id.
`As discussed above, we interpret “frame” to mean “a rigid structure.”
`See supra Section II.A.1. Petitioner contends Hon’s atomization cavity wall
`25 is this frame, at least because it can be made of aluminum oxide or
`ceramic. Pet. 21. We are persuaded that atomization cavity wall 25 is a
`rigid structure, and is therefore a frame as recited in claims 1 and 2.
`We are not persuaded, however, that Petitioner has established that
`Hon teaches a frame that supports a porous component, as also required by
`claims 1 and 2. Petitioner points to Hon’s description of porous component
`27 as being “arranged around the atomization cavity wall” to show that
`porous component 27 is supported by atomization cavity wall 25. Id. The
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`ordinary meaning of “support” is “bear all or part of the weight of: hold
`up.” Prelim. Resp. 12 (citing Ex. 2005, 1708). Petitioner does not explain
`adequately, nor cite to sufficient evidence of record explaining, how porous
`component 27 is held up by atomization cavity wall 25. The teachings in
`Hon on which Petitioner relies describe porous component 27 surrounding
`atomization cavity wall 25, but do not indicate that atomization cavity wall
`25 is bearing the weight of, or holding up, porous cavity 27. Petitioner does
`not rely on Susa to teach this limitation.
`Petitioner alternatively argues that Hon “discloses that the atomizer
`includes a vapor-liquid separator (7), which also constitutes a frame that
`supports the porous component” because it “is ‘sequentially interconnected’
`with the atomizer and ‘can be made of plastic or silicon rubber.’” Pet. 21.
`This argument is not persuasive.
`Even if Hon’s vapor-liquid separator 7 is a frame, which we need not
`determine for purposes of this Decision, it is not located in the atomizer as is
`required by claims 1 and 2. Hon consistently describes vapor-liquid
`separator 7 as an element separate from the atomizer. See, e.g., Ex. 1007,
`3:16–18 (“a vapor-liquid separator 7, an atomizer 9, a liquid-supplying
`bottle 11 and a mouthpiece 15 are sequentially provided within the shell
`14”); 4:23–24 (air passes through “the through hole in the vapor-liquid
`separator 7, and flows into the atomization cavity 10 in the atomizer 9”);
`5:12–14 (describing an embodiment where “the atomizer 9 is postposed
`within the shell 14, and the liquid-supplying bottle 11 is arranged between
`the vapor-liquid separator 7 and the atomizer 9”). Furthermore, the
`statement in Hon on which Petitioner relies regarding vapor-liquid separator
`7 being “sequentially interconnected” to atomizer 9, when read in context,
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`describes the order in which the elements are arranged within the body of the
`electronic cigarette: “[T]he air inlet, normal pressure cavity, vapor-liquid
`separator, atomizer, aerosol passage, gas vent and mouthpiece are
`sequentially interconnected.” Ex. 1007, 1:47–49.
`Accordingly, we are not persuaded that Petitioner has established a
`reasonable likelihood of showing that claims 1 and 2 would have been
`obvious over the combination of Hon and Susa.
`
`b.
`Claims 1-3
`Claim 1 recites “the heating wire is wound on the porous component,”
`and claims 2 and 3 recite “a heating wire wound on a part of the porous
`component.” Petitioner contends that Susa describes that “coil heater 94 ‘is
`disposed around the formed body 92,’ which is adjacent to ceramic heater 42
`and porous layer 46,” and that “[f]ormed body 92 has qualities and functions
`similar to the porous layer.” Pet. 22. According to Petitioner, because
`Susa’s coil heater 94 envelops formed body 92, “[i]t would have been
`obvious to one of ordinary skill in the art to wind the coil heater of Susa
`around the porous layer in [Hon] in order to provide [the heating wire is
`wound on the porous component] limitation” of claims 1–3. Id. at 23, 28–
`29, 31–32. Petitioner contends that this modification of the Hon electronic
`cigarette “is motivated by the interest of providing more efficient, uniform
`heating” and “would enhance commercial opportunities and make the
`product more desirable by increasing the efficiency of atomization.” Id. at
`23.
`
`Patent Owner argues that Susa’s coil heater 94 is not wound on porous
`layer 46, “which the Petition asserts discloses the claimed porous
`component.” Prelim. Resp. 29. Patent Owner further argues that “[t]he
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`embodiment in Fig. 13 gasifies liquid in the same way as Fig. 1 discussed
`above, that is via liquid projected from the discharge head 34 onto a now
`vertical porous layer 46 on the ceramic heater 42,” and that “coil heater 94
`together with the formed body 92 generate flavor by heating, but
`presumptively without gasifying where liquid contacts a heated surface, as in
`Fig. 1.” Id. at 29–30.
`We are not persuaded by Petitioner’s arguments. As set forth above,
`we interpret “porous component” to mean “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.”
`See supra Section II.A.2. Petitioner contends that Susa’s formed body 92
`“has qualities and functions similar to the porous layer,” but does not explain
`sufficiently, nor direct us to adequate evidence of record indicating, that a
`person having ordinary skill in the art would have understood the formed
`body 92 to include pores and be permeable to liquid. See Pet. 22.
`Susa describes formed body 92 as “a solid material that generates
`flavor or the like,” that, depending on its size, can have good air
`permeability, or poor to no air permeability. Ex. 1010, 14:57–15:2, 15:13–
`27. The embodiment shown in Susa Figure 13 that shows coil heater 94
`disposed around formed body 92 also includes liquid-absorbing porous layer
`46 that “is formed on a surface of the ceramic heater 42 that receives the
`liquid splash of the material” and “stabiliz[es] gasification of the splash of
`material.” Id. at 7:50–8:1. Consequently, we are not persuaded that that
`formed body 92 in Susa is a “porous component” as recited in the challenged
`claims, or that Petitioner has demonstrated that Susa teaches a heating wire
`wound on a porous component, as is required by claims 1–3.
`
`18
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`IPR2015-00859
`Patent 8,365,742 B2
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`
`A showing of obviousness must be supported by an articulated
`reasoning with rational underpinning to support a motivation to combine the
`prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner asserts
`that a person having ordinary skill in the art would be motivated to modify
`the Hon electronic cigarette to include a heating wire wound on a porous
`component “by the interest of providing more efficient, uniform heating”
`that “would enhance commercial opportunities and make the product more
`desirable by increasing the efficiency of atomization.” Pet. 23. Petitioner
`does not provide sufficient explanation as to why a person having ordinary
`skill in the art would have wanted to provide “more efficient, uniform
`heating” in the Hon cigarette. Petitioner does not direct us to, nor do we
`discern, statements in Hon or Susa with respect to the efficiency—or
`inefficiency—of atomization within the described articles. Petitioner’s
`unsupported, conclusory statements do not constitute articulated reasoning
`with rational underpinnings as to why one of ordinary skill in the art would
`modify Hon in view of Susa’s teachings to arrive at the claimed invention.
`For these reasons, Petitioner has not established a reasonable
`likelihood that it would prevail on the ground that claims 1–3 of the ’742
`patent would have been obvious over the combination of Hon and Susa.
`C. Obviousness over Hon and Abhulimen
`Petitioner contends that claims 1–3 would have been obvious under 35
`U.S.C. § 103(a) over the combination of Hon and Abhulimen. Pet. 32–34.
`Petitioner relies on the Buckner Declaration (Ex. 1002) in support of its
`contentions. Id.
`
`19
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`IPR2015-00859
`Patent 8,365,742 B2
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`
`Overview of Abhulimen
`1.
`Abhulimen is directed to a simulated smoking article, with a fuel
`element physically separated from an aerosol-generating element. Ex. 1012,
`1. Figures 1 and 2 of Abhulimen are reproduced below:
`
`
`Figure 1 is partially-fragmented perspective view of a simulated smoking
`device as described by Abhulimen, and Figure 2 is a longitudinal view of the
`device shown in Figure 1. Id. at 3–4. Simulated smoking device 10 includes
`fuel element 11, flavor-generating material 13 disposed within tubular
`wrapper 26, and tobacco rod 14 attached to filter 12. Id. at 4. Fuel element
`11 includes fuel tank 20, which is non-permeable and non-combustible, and
`fuel cartridge 24 comprising a porous medium. Id. Fuel element 11 also
`includes extended wick 22 and glow element 16. Id. Fuel tank 20 is open-
`ended at its upstream end, where ceramic tube 32 surrounds wick 22. Id.
`Glow element 16 is a coil comprised of copper wire filament, or other heat-
`conducting or glowing materials such as brass, platinum, or metallic alloy.
`Id. Heat diffuser 30 is positioned within tubular wrapper 26 between the
`distal end of flavor-generating material 13 and glow element 16. Id. Heat
`diffuser 30 delivers hot gas and hot air coming into tubular member 26
`through puffing air inlets 18 to vapor-generating material of tobacco rod 14,
`20
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`IPR2015-00859
`Patent 8,365,742 B2
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`and also blocks the flame from contact with flavor-generating material 13
`when a user inhales. Id.
`Abhulimen describes that smoking device 10 is started by lighting the
`metal filament of glow element 16, using a lighter placed under the article in
`the region of puffing air inlets 18. Id. Wick 22 draws fuel to the region of
`the metal filament, and the flame causes the fuel to vaporize. Id. When the
`user inhales, air is pulled through puffing air inlets 18 and across the metal
`filament of glow element 16, and the vaporized fuel combusts. Id.
`2.
`Analysis
`a.
`Claims 1 and 2
`As set forth above, Petitioner has not established that Hon teaches a
`frame that supports a porous component, as required by claims 1 and 2. See
`supra Section II.B.3.a. Petitioner does not rely on Abhulimen as teaching
`this limitation of claims 1 and 2. Accordingly, we determine that the record
`before us does not establish a reasonable likelihood that Petitioner would
`prevail in establishing that claims 1 and 2 would have been obvious over the
`combination of Hon and Abhulimen.
`b.
`Claims 1–3
`
`Petitioner contends that Hon discloses most of the limitations of
`claims 1– 3, but concedes that it does not disclose “a heating wire wound on
`a part of the porous component.” Pet. 33. Petitioner contends that
`Abhulimen teaches this limitation. Id. According to Petitioner, Abhulimen
`teaches that glow element 16 (which Petitioner equates to a heating wire) is
`wound on a part of wick 22 (which Petitioner equates to a porous
`component). Id. Petitioner contends that a person having ordinary skill in
`the art would have been motivated “to wind the heating wire of Abhulimen
`
`21
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`IPR2015-00859
`Patent 8,365,742 B2
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`around the porous layer in [Hon] to yield” a heating wire wound on a part of
`the porous component as recited in the claims because it would provide
`more efficient, uniform heating. Id. at 33–34.
`As was the case with Petitioner’s proposed combination of Hon and
`Susa as set forth above, Petitioner does not provide sufficient explanation as
`to why a person having ordinary skill in the art would have wanted to
`provide “more efficient, uniform heating” in the Hon cigarette. See supra
`Section II.B.3.a. Petitioner does not direct us to, nor do we discern,
`statements in Hon or Abhulimen with respect to the efficiency—or
`inefficiency—of atomization within the described articles. Petitioner’s
`unsupported, conclusory statements do not constitute articulated reasoning
`with ration
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