UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`JT INTERNATIONAL S.A.
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.
`Patent Owner
`
`U.S. Patent No. 8,365,742
`Issued: February 5, 2013
`Filed: April 5, 2011
`Inventor: Lik Hon
`Title: AEROSOL ELECTRONIC CIGARETTE
`_____________________
`
`Inter Partes Review No. IPR2015-01587
`__________________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R. § 42.100
`
`
`
`

`
`TABLE OF CONTENTS
`
`
`Page
`
`
`NOTICES AND STATEMENTS ................................................................... 1
`I.
`INTRODUCTION .......................................................................................... 2
`II.
`III. THE ‘742 PATENT ........................................................................................ 3
`A.
`Background .......................................................................................... 3
`B.
`Prosecution History .............................................................................. 4
`IV. CLAIM CONSTRUCTION ........................................................................... 6
`V.
`IDENTIFICATION OF CHALLENGE ....................................................... 13
`VI. OVERVIEW OF PRIOR ART ..................................................................... 14
`A.
`Takeuchi ............................................................................................. 14
`B.
`Cox ..................................................................................................... 15
`C.
`Brooks................................................................................................. 16
`D. Whittemore ......................................................................................... 17
`E.
`Liu ....................................................................................................... 17
`F.
`Susa ..................................................................................................... 18
`VII. DETAILED EXPLANATION OF GROUNDS OF INVALIDITY ............ 19
`A. Ground 1: Claims 1-3 are Obvious Based on Takeuchi ..................... 19
`B. Ground 2: Claims 1-3 are Obvious Based on Takeuchi in View
`of Cox ................................................................................................. 27
`C. Ground 3: Claims 1 and 3 are Obvious Based on Brooks ................. 30
`D. Ground 4: Claims 1-3 are Obvious Based on Brooks in View of
`Whittemore ......................................................................................... 35
`Ground 5: Claims 1-3 are Obvious Based on Liu in View of
`Susa ..................................................................................................... 39
`Ground 6: Claims 1-3 are Anticipated in View of Susa .................... 47
`F.
`G. Ground 7: Claim 3 is Obvious Based on Susa ................................... 53
`H. Ground 8: Claims 1-3 are Obvious Based on Susa in View of
`Whittemore ......................................................................................... 54
`VIII. CONCLUSION ............................................................................................. 60
`
`-i-
`
`
`E.
`
`
`
`

`
`Exhibit List for Inter Partes Review of U.S. Patent No. 8,365,742
`
`Exhibit Description
`
`Exhibit
`
`
`
`U.S. Patent No. 8,365,742 (“’742 patent”)
`
`Declaration of Jeffrey A. Schuster, Ph.D.
`
`U.S. Patent No. 6,155,268 (“Takeuchi”)
`
`U.S. Patent No. 6,234,167 (“Cox”)
`
`U.S. Patent No. 4,947,874 (“Brooks”)
`
`U.S. Patent No. 2,057,353 (“Whittemore”)
`
`EP 0 845 220 (“Susa”)
`
`WO 2007/078273 A1 (“Liu”)
`
`‘742 Prosecution History, Preliminary Amendment
`
`‘742 Prosecution History, Non-final Office Action
`
`‘742 Prosecution History, Amendment
`
`‘742 Prosecution History, Supplemental Amendment
`
`‘742 Prosecution History, Examiner Interview Summary
`
`‘742 Prosecution History, Notice of Allowance
`
`‘742 Prosecution History, Certificate of Correction
`
`Fontem Litigation Joint Claim Construction Chart
`
`Claim Construction Rulings in CV 14-1645
`
`Webster’s New World Collegiate Dictionary (“detach”)
`
`Oxford American Dictionary & Thesaurus (“frame”)
`McGraw-Hill Dictionary of Scientific and Technical Terms (5th ed.
`1994) (“assembly”) (“component”) (“porous”)
`
`
`
`i
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`

`
`Exhibit Description
`
`Academic Press Dictionary (“permeability”) (“solid”)
`
`American Heritage Dictionary (“atomize”) (“end”) (“substantial”)
`
`Merriam-Webster.com (“aerosol”) (“atomizer”) (“permeable”)
`(“porous”)
`
`
`
`
`Exhibit
`
`1021
`
`1022
`
`1023
`
`
`
`ii
`
`

`
`
`
`Petitioner JT International S.A. (“Petitioner”) respectfully petitions for inter
`
`partes review of claims 1-3 (all claims) of U.S. Patent No. 8,365,742 (“the ‘742
`
`patent” (Ex. 1001)) in accordance with 35 U.S.C. §§ 311-319 and 37 C.F.R.
`
`§42.100 et seq.
`
`I.
`
`NOTICES AND STATEMENTS
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner identifies JT International S.A.
`
`as the real party-in-interest. For example, no other party has funded, directed or
`
`controlled this Petition. 37 C.F.R. § 42.8(b)(1).
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner identifies the following
`
`judicial matters involving the ‘742 patent: 12-cv-5454 and 14-cv-01645. On
`
`March 10, 2015, VMR Products LLC filed a petition for inter partes review of
`
`claims 1, 2, and 3 (all claims) of the ‘742 patent (Case No. 2015-00859).
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioner identifies the following
`
`counsel. Lead counsel for Petitioner is Erik G. Swenson, Norton Rose Fulbright
`
`US LLP, Reg. No. 45,147, who
`
`can be
`
`reached by
`
`email
`
`at
`
`erik.g.swenson@nortonrosefulbright.com, by ph: 612-321-2266, by fax: 612-321-
`
`2288, and at: Norton Rose Fulbright US LLP, 3100 RBC Plaza, 60 South 6th St.
`
`Minneapolis, MN 55402. Backup counsel is George W. Jordan III, who can be
`
`reached by email at george.jordan@nortonrosefulbright.com, by ph: 713-651-
`
`5423, by fax: 713-651-5246, and at: Norton Rose Fulbright US LLP, 1301
`
`
`
`1
`
`

`
`
`
`McKinney, Suite 5100, Houston, TX 77010. A power of attorney accompanies
`
`this Petition. Petitioner consents to electronic service at USNRF-JTI-Fontem-IPR-
`
`Service@nortonrosefulbright.com.
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘742 patent is
`
`available for inter partes review and that the Petitioner is not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`II.
`
`INTRODUCTION
`
`The ‘742 patent is directed to an electronic cigarette comprising a shell (or
`
`housing) including an air inlet, battery assembly, and cigarette bottle assembly that
`
`fits with an atomizer assembly. The atomizer assembly provides an atomizer
`
`including a frame with a run through hole substantially aligned with heating wire
`
`wound on a porous component. A porous component contacts liquid storage.
`
`Section III of this Petition summarizes the ‘742 patent and its prosecution
`
`history. Section IV addresses claim construction. Section V identifies the grounds
`
`for invalidity all claims. Section VI is an overview of prior art. Section VII
`
`provides the detailed explanations of grounds. These showings are accompanied
`
`by the Declaration of Jeffrey A. Schuster, Ph.D. (Ex. 1002 (“Schuster Decl.”)).
`
`Accordingly, Petitioner respectfully requests a Decision to institute inter partes
`
`review of the ‘742 patent.
`
`
`
`2
`
`

`
`III. THE ‘742 PATENT
`A. Background
`The ‘742 patent is directed to an electronic cigarette such as in FIG. 1 below.
`
`
`
`Hollow shell (a) contains an atomizer and battery assembly. (Id. at 2:30-37.)
`
`A cigarette bottle assembly includes liquid storage 9. (Id. at 3:49-51.) The
`
`cigarette bottle assembly fits with the atomizer assembly. (Id. at 3:6-21.) A
`
`porous component of the atomizer assembly contacts the liquid storage, achieving
`
`“capillary impregnation” for the liquid supply. (Id. at 4:37-40.)
`
`Figures 17-18 depicting the atomizer are reproduced below.
`
`
`Porous component 81 is set on frame 82. (Id. at FIGS. 1, 17-18; 5:42-46.)
`
`Heating wire 83 is wound around a portion of the porous component aligned with
`
`run-through hole 821. (Id. at FIGS. 1718; 5:42-49.)
`
`
`
`3
`
`

`
`
`
`Prosecution History
`
`B.
`The application which led to the ‘742 patent was filed on April 5, 2011 as
`
`U.S. App. Serial No. 13/079,937. The application was a divisional of U.S. Pat.
`
`App. No. 12/226,818, filed Oct. 29, 2008 (now U.S. Pat. No. 8,156,944), which is
`
`the national stage entry of PCT/CN2007/001575, filed on May 15, 2007, with
`
`priority to CN Pat. App. No. 2006/20090805, filed on May 16, 2006. (Ex. 1015.)
`
`On April 5, 2011 Applicant replaced all 29 claims in a Preliminary
`
`Amendment, with one new claim, and amended the specification. (Ex. 1009 at 2-
`
`3.) On July 19, 2012, the Examiner rejected sole claim 30 under 35 U.S.C. § 112
`
`as indefinite, (Ex. 1010 at 2.) finding it unclear which “part” and “side” the
`
`Applicant was referring to in the limitation “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.) The Examiner indicated that Claim 30 would be allowable
`
`if the § 112 rejection was overcome, explicitly stating that Hon ‘043 was the
`
`closest prior art and that only one limitation—“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”—was lacking. (Id. at 2-3.)
`
`On Aug. 3, 2012, Applicant responded, amending claim 30 by replacing
`
`“porous component is wound with heating wire in the on the side in the axial
`
`direction of the run-through hole” with “the heating wire is wound on a part of the
`
`
`
`4
`
`

`
`
`
`porous component that is substantially aligned with the run-through hole.” (Ex.
`
`1011 at 2 (claim 30) and 4 (Remarks).) and also adding claims 31-32, (id. at 2-3.)
`
`arguing three claims were “similar to claim 30 and include the elements of claim
`
`30, but written with more common English usage […][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-through hole . . . and with the porous
`
`component in contact with a liquid supply in the housing . . .” (Id.)
`
`On Aug. 7, 2012 Applicant supplemented its response to the July 19, 2012
`
`Office Action. (Ex. 1012.) The Applicant provided a substitute specification with
`
`substantive changes from the previous version. (Id. at 2.)
`
`Although there were no additional rejections after the Aug. 7, 2012
`
`response, Applicant conducted an examiner interview on Aug. 14, 2012. (Ex.
`
`1013.) No agreement was reached during the interview. (Id.)
`
`On Nov. 14, 2012, the USPTO issued a notice of allowance. (Ex. 1014.)
`
`The ‘742 patent issued on Feb. 5, 2013. Claims 30-32 issued as claims 1-3. (Ex.
`
`1001.) On July 2, 2013, the USPTO issued a certificate of correction. (Ex. 1015.)
`
`1.
`Review of claims 1-3 of the ‘742 patent was requested in IPR2015-000859
`
`Inter Partes Review
`
`under 35 U.S.C. § 103(a) as obvious based on the following: China Pat. No. CN
`
`2719043 to Hon (“Hon ‘043”) in view of European Pat. Pub. No. EP 0 845 220 to
`
`
`
`5
`
`

`
`
`
`Susa (“Susa”); Hon ‘043 in view of PCT Pat. Pub. No. WO 03/034847 to
`
`Abhulimen (“Abhulimen”); Hon ‘043 in view of U.S. Pat. No. 2,057,353 to
`
`Whittemore (“Whittemore”); Hon ‘043 in view of U.S. Pat. No. 5,144,962 to
`
`Counts (“Counts”); Susa alone; Susa in view of Abhulimen; and Susa in view of
`
`Whittemore. (Paper 2, Mar. 10, 2015.)
`
`IV. CLAIM CONSTRUCTION
`The claims should be construed for purposes of this proceeding consistent
`
`with their broadest reasonable interpretation (“BRI”) in light of the specification.
`
`Petitioner expressly reserves the right to advance different constructions in any
`
`proceeding employing a different claim construction standard. A person of
`
`ordinary skill in the art at the time of the alleged invention of the ‘742 patent had a
`
`four-year degree in Mechanical Engineering, Electrical Engineering, Physics, or
`
`equivalent, as well as at least four years of experience in designing pulmonary drug
`
`delivery devices. (Schuster Decl. ¶20.)
`
`The claim terms requiring analysis are discussed below. None of these
`
`claim terms were defined in the specification.
`
`A.
`
`“Cigarette Bottle Assembly”: Claim 1 recites “cigarette bottle assembly”
`
`which the ‘742 patent describes as including a cigarette holder shell (b) and a
`
`perforated liquid storage component 9. (Ex. 1001 at 3:49-51; FIGS. 4, 11-12.) A
`
`porous component absorbs cigarette liquid from the liquid storage component 9.
`
`
`
`6
`
`

`
`
`
`(Id. at 3:63-67.) The cigarette bottle assembly includes air channel (b1), which
`
`serves as the inhalation port. (Id. at 5:18-21.) In the Summary of the Invention
`
`section, the ‘742 patent just refers to “bottle assembly.” (Id. at 1:30.) The plain
`
`meaning of the term “assembly” is a “unit containing component parts of a
`
`mechanism, machine or similar device.” (Ex. 1020 at 139.) Thus, the BRI of
`
`“cigarette bottle assembly” is “an enclosed unit containing component parts for
`
`cigarette material.” (Schuster Decl. ¶¶ 34-40.)
`
`B.
`
`“Cigarette Bottle Assembly is Detachably Located In One End of the
`
`Shell”: Claim 1 recites the “cigarette bottle assembly is detachably located in one
`
`end of the shell.” The cigarette bottle may be detached from shell (a). (Ex. 1001
`
`at FIGS. 1-2.) The ‘742 patent uses the term “cigarette bottle assembly is
`
`detachably located in one end of the shell” in a manner consistent with its plain and
`
`ordinary meaning. (e.g., Webster’s New World Collegiate Dictionary, Ex. 1018 at
`
`392 (defines “detach” as “to unfasten or separate and remove; disconnect;
`
`disengage”); See, also e.g., American Heritage Dictionary, Ex. 1022 at 607
`
`(defines “end” as an “outside or extreme edge or physical limit; a boundary.”).)
`
`Accordingly, the BRI of “cigarette bottle assembly is detachably located in one end
`
`of the shell” is “the cigarette bottle assembly located at a boundary or terminal
`
`surface of the shell may be separated and removed from another part of the
`
`electronic cigarette.” (Schuster Decl. ¶¶ 41-46.)
`
`
`
`7
`
`

`
`
`
`C.
`
`“Frame”: All claims of the ‘742 patent recite the term “frame.” The ‘742
`
`patent describes “frame” as a structure with a porous component “set on” it. (Ex.
`
`1001 at 5:42-46.) This relationship is illustrated in FIGS. 17 and 18 below, which
`
`depict frame 82 supporting porous component 81 and heating wire 83. (Id. at 5:42-
`
`49.)
`
`
`The ‘742 patent uses the term “frame” in a manner consistent with its plain
`
`and ordinary meaning. (Id.) (See, e.g., OXFORD AMERICAN DICTIONARY &
`
`THESAURUS, Ex. 1019 at 581 (defining “frame” as “the basic rigid supporting
`
`structure of anything”); Fontem Litigation Joint Claim Construction Chart, Ex.
`
`1016 at Ex. B pp. 7-8 (Fontem relying on same definition of “frame”); Court’s
`
`Rulings on Claims Construction, Ex. 1017 at pp. 7 (the court held that “frame”
`
`means a “rigid structure.”).) Accordingly, the BRI of “frame” is “a rigid structure,
`
`or combination of structures, for direct or indirect support.” (Schuster Decl. ¶¶ 47-
`
`53.)
`
`D.
`
`“Run-through Hole”: All claims of the ‘742 patent recite the term “run-
`
`through hole.” The ‘742 patent describes the “run-through hole” as a passageway
`
`
`
`8
`
`

`
`
`
`that connects with the atomizing chamber. (Id. at 3:19-21.) The run-through hole
`
`may be a passageway 821 positioned on the air inflow side of the atomizer (id. at
`
`5:45-47, FIG. 18), or passageway 813 at the aerosol outflow side of the atomizer.
`
`(Id. at 4:29-30; FIG. 5.) The ‘742 patent uses the term “run-through hole” in a
`
`manner consistent with its plain and ordinary meaning. (Schuster Decl. at ¶¶ 54-
`
`58.) Accordingly, the BRI of “run-through hole” is “a passageway between
`
`surfaces of a body or bodies.” (Id.)
`
`E.
`
`“Substantially”: The ‘742 specification does not refer to “substantially”;
`
`however, all claims recite this term. The prosecution history shows “substantially”
`
`was added by Applicant. (Ex. 1011 at 2-3.) Claim 1 was amended to recite a
`
`porous component “substantially aligned with the run-through hole”; added claim
`
`2 recites a porous component “substantially surrounded by the liquid storage
`
`component”; added claim 3 recites a porous component “substantially aligned with
`
`the run-through hole.” (Id.) According to the court’s claim construction ruling,
`
`“substantially” means “largely but not completely.” (Ex. 1017 at 26.) American
`
`Heritage Dictionary defines “substantial” as “[c]onsiderable in importance, value,
`
`degree, amount, or extent[.]” (Ex. 1022 at 1791.) Regarding “largely,” 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).
`
`(Schuster Decl. ¶ 63.) Indeed, there is no disclosure in which a majority of the
`
`
`
`9
`
`

`
`porous component is “surrounded” by the cigarette bottle assembly with only a
`
`minor portion (yellow) surrounded in the figures. (Schuster Decl. ¶ 64; Ex. 1001 at
`
`FIG. 1.)
`
`
`
`The BRI of “substantially” should not exclude “completely”. The porous
`
`component exactly aligned with the run-through hole and completely surrounded
`
`by the liquid storage component are consistent with the specification of ‘742. The
`
`part of the porous component 81 that heating wire 83 is wound on is in exact
`
`alignment (i.e. no off-set) with the run-through hole in the drawings, even though
`
`the claims recite “substantial” alignment. (See, e.g., Ex. 1001 at FIGS. 17, 18.).
`
`Accordingly, the BRI of “substantially” consistent with the specification is
`
`“largely, whether less or more than a majority.” (Schuster Decl. ¶¶ 41-46.)
`
`F.
`
`“Atomizer”: Claim 1 recites “atomizer.” Claims 2 and 3 do not recite
`
`“atomizer,” but do recite an “atomizer assembly.” The specification refers to
`
`“atomizer” and “atomizer assembly” interchangeably, stating an “atomizer
`
`assembly is an atomizer” (Id. at 3:6-8; see also 7-8; 13-18.) As explained by Dr.
`
`Schuster, the ‘742 patent strays from the classic definition of “atomizer,” using the
`
`term to broadly cover a condensation aerosol generator. (Schuster Decl. ¶¶ 74-75.)
`
`
`
`10
`
`

`
`
`
`Moreover, the American Heritage Dictionary defines “atomize” as “2. [T]o
`
`reduce to tiny particles or a fine spray.” (Ex. 1022 at 117.) “Tiny particles” refers
`
`to solid (i.e. non-liquid) particles as a spray is liquid. Merriam-Webster defines
`
`“aerosol” as “a suspension of fine solid or liquid particles in gas.” (Ex. 1023
`
`(http://www.merriam-webster.com/dictionary/aerosol).) The meaning of “aerosol”
`
`has not changed from the time of the ‘742 patent to now. (Schuster Decl. ¶ 78.)
`
`
`
`Accordingly, the BRI of “atomizer” consistent with the specification is a
`
`“device that converts a substance into an aerosol or vapor.” (Schuster Decl. ¶¶ 71-
`
`80.)
`
`G.
`
`“Fits With the Atomizer Assembly Inside It”: Claim 1 recites “fits with
`
`the atomizer assembly inside it.” (Ex. 1001 at 6:12-14.) ‘742 teaches that the
`
`atomizer assembly “fits with” the cigarette bottle assembly (id. at 1:30-33 and
`
`2:36-38.) via protuberance 812. (Id. at 3:15-23.) The phrase “inside it” is not used
`
`in the specification. In embodiments that include a “frame,” ‘742 does not disclose
`
`a protuberance. Instead, Figure 18 illustrates a frame 82 and porous component 81
`
`with flush ends. Accordingly, the BRI of “fits with the atomizer assembly inside
`
`it” is “contacts the atomizer assembly.” (Schuster Decl. ¶¶ 81-85.)
`
`H.
`
`“Porous Component”: All claims of the ‘742 patent recite “porous
`
`component.” (Ex. 1001.) The ‘742 patent uses “porous component” consistently
`
`with its plain meaning, using “porous” to describe foamed ceramics, foamed metal,
`
`
`
`11
`
`

`
`
`
`polymer foam, and fiber felt. (Id. at 3:23-27.) (See, e.g., Ex. 1020 at 424 (defining
`
`“component” as a “constituent part of a system”)); (Id. at 1549 (defining “porous”
`
`as “[c]apable of absorbing
`
`liquids”); Ex. 1023
`
`(http://www.merriam-
`
`webster.com/dictionary/porous) (defining “porous” as “having small holes to allow
`
`air or liquid to pass through.”) Therefore, the BRI of “porous component” is a
`
`“part which liquid or gas can pass through or be absorbed by.” (Schuster Decl. ¶¶
`
`86-91.)
`
`I.
`
`“Electronic Cigarette” / “Aerosol Electronic Cigarette”: The term
`
`“electronic cigarette” is recited in the preamble. The preambles do not recite
`
`structural components or serve as antecedent basis for the body of the claims, and
`
`“electronic cigarette” was not relied upon to argue patentability.
`
`The ‘742 patent does not use the term in a manner inconsistent with their
`
`plain meaning, referring to “[a] component for liquid storage of the cigarette bottle
`
`assembly (which) stores the nicotine liquid. Smokers can enjoy the feel of
`
`smoking [ . . . ]” (Ex. 1001 at 1:38-40). Therefore, the BRI of “electronic
`
`cigarette” is an “electronically controlled device for inhalation by a user of
`
`vaporized or aerosolized material, which device can be used as a substitute for
`
`cigarette smoking.” (Schuster Decl. ¶¶ 92-95.)
`
`
`
`12
`
`

`
`
`
`V.
`
`IDENTIFICATION OF CHALLENGE
`
`Petitioner respectfully requests the cancellation of claims 1-3 of the ‘742
`
`patent based on the grounds of invalidity in this Petition. 37 C.F.R. § 42.104(b).
`
`The grounds are based on the following: Takeuchi (Ex. 1003); Cox (Ex. 1004);
`
`Brooks (Ex. 1005); Whittemore (Ex. 1006); Susa (Ex. 1007); and Liu (Ex. 1008).
`
`The pre-AIA statutory grounds for the challenges are set forth below.
`
`Prior Art Reference(s)
`#
`1 Takeuchi
`2 Takeuchi and Cox
`3 Brooks
`4 Brooks and Whittemore
`5 Liu and Susa
`6 Susa
`7 Susa
`8 Susa and Whittemore
`
`Basis Claims Challenged
`103(a)
`1-3
`103(a)
`1-3
`103(a)
`1 and 3
`103(a)
`1-3
`103(a)
`1-3
`102
`1-3
`103(a)
`3
`103(a)
`1-3
`
`Grounds 1-8 are not redundant of IPR2015-000859 at least because of the
`
`following reasons: Takeuchi, Brooks and Liu are primary references not relied
`
`upon in the pending IPR; Cox is a secondary reference not relied upon in the
`
`pending IPR; Susa is relied upon for anticipation aside from obviousness; Takeuchi
`
`is a strong primary reference especially as to frame and porous component; Brooks
`
`is a strong primary reference especially as to frame and detachable cigarette bottle
`
`assembly; Liu is a strong primary reference especially as to the heating wire and
`
`the path of air flowing through the run-through hole of the frame; Cox is a strong
`
`
`
`13
`
`

`
`
`
`secondary reference especially as to cigarette bottle assembly and heating wire;
`
`and Whittemore is a strong secondary reference especially as to the porous
`
`component.
`
`Based on their publication dates, Takeuchi (Dec. 5, 2000), Brooks (Aug. 14,
`
`1990), Whittemore (Oct. 13, 1936), and Susa (June 3, 1998) each qualify as §
`
`102(b) prior art. Based on its December 22, 2005 filing date, Liu qualifies as §
`
`102(e) prior art.
`
`VI. OVERVIEW OF PRIOR ART
`A. Takeuchi
`Takeuchi, entitled “Flavor-Generating Device,” describes a simulated
`
`smoking device for generating flavored inhalation aerosol. (Ex. 1003 at 1:4-9.)
`
`The device includes casing 12 (casing main body 14) partitioned by partition wall
`
`13 into upper chamber 121, with heater 42, and lower chamber 122 with
`
`detachable battery 44 and liquid container 32. (Id. at 4:26-38; 6:15-29; 8:59-9:7;
`
`FIGS. 1, 8.)
`
`Casing 12 includes air intake port 18 and air introduction hole 26. (Id. at
`
`5:4-7; 9:8-9.) Upper chamber 121 includes squeeze hole 24a to direct air from the
`
`air intake port 18 toward the outlet of capillary tube 36. (Id. at 4:61-67; 8:5-10.)
`
`
`
`14
`
`

`
`
`
`
`The battery 44 powers heater 42 for gasifying liquid 34. (Id. at 6:4-22.)
`
`Heater 42 is mounted on capillary tube 36 (id. at 6:8-9.) or heater 425 on the end of
`
`intercommunicating pore structure 302. (Id. at 10:61-63.) The device, a
`
`“simulated smoking article,” may contain “tobacco extracts and a tobacco smoke
`
`condensate. (Id. at 5:40-52.) Liquid 34 is delivered to the heater by capillary
`
`force, where it is evaporated to form an aerosol. (Id. at Abstract; 5:33-35.)
`
`B. Cox
`Cox, entitled “Aerosol Generator and Methods of Making and Using an
`
`Aerosol Generator,” was not cited during prosecution of the ‘742 patent. The
`
`device has first component 23, including liquid material 31, removably attached to
`
`second component 25 with a battery. The two components can be attached end to
`
`end. (Ex. 1004 at 3:46-60.) The material flows from material source 37 into tube
`
`27 disposed in mouthpiece section 49 when valve 35 is opened. (Id. at 4:39-45.)
`
`
`
`15
`
`

`
`
`
`Within tube 27 the material is volatilized by heater 33 supplied with energy
`
`by the battery, and subsequently condenses to form an aerosol. (Id.) Material
`
`source 37 includes flexible container 45. (Id. at 4:62-65.)
`
`C. Brooks
`Brooks, entitled “Smoking Articles Utilizing Electrical Energy,” is directed
`
`to a smoking article in the form of a cigarette or pipe to provide a tobacco-flavored
`
`aerosol which includes a battery 34, resistance heating element 18, and disposable
`
`smoking cartridge 94. (Ex. 1005 at 3:63-4:2; 7:15-25; 12:3-15.) Battery 34
`
`provides electrical energy to the heating element 18. (Id. at 5:68-6:4.)
`
`
`
`16
`
`

`
`
`
`Porous heating element 18 carries and volatilizes aerosol-forming substance.
`
`(Id. at 5:42-50; 7:26-30.) Plug 16 including air flow passageway 6 connects to the
`
`heating element 18. (Id. at 8:33-42.)
`
`D. Whittemore
`Whittemore, entitled “Vaporizing Unit for Therapeutic Apparatus,” discloses
`
`a vessel holding heating element 3 which surrounds and contacts wick D. (Ex.
`
`1006 at 1:50-2:8; 2:38-46 (claim 1); FIG. 2.) “Medicament x is “carried by
`
`capillary action” to heater 3. (Ex. 1006 at FIG. 2; 1:50–2:8.)
`
`Liu
`
`E.
`Liu, entitled “No Tar Electronic Smoking Utensils,” is directed to a
`
`simulated cigarette having a liquid container formed of porous material.
`
`
`Within casing 6 is battery 14 in battery chamber 12. (Ex. 1008 at 5:30–32.)
`
`Apertures 16 permit air entry into the battery chamber 12. (Id. at 5:32–6:2.) Wall
`
`
`
`17
`
`

`
`
`
`20 separates liquid container 18 from battery chamber 12 and has apertures 22 to
`
`allow air flow to porous material containing liquid container 18. (Id. at 6:2–14.)
`
`Heater assembly housing 24 in the mouthpiece end of liquid container 18
`
`contains heater wire 26 wound on an insulating rod. (Id. at 6:16–19.) Apertures
`
`28 allow flow of liquid and air from liquid container 18. (Id. at 6:20–22.)
`
`Susa
`
`F.
`Susa, entitled “Flavor Producing Article, describes a simulated smoking
`
`flavor producing article. (Ex. 1007 at 1:14-17; 2:13-21; FIG. 13.)
`
`“Casing 12 comprises first portion 12a and second portion 12b.” (Id. at
`
`Abstract; 5:17-22; FIG. 1.) Air intake ports 24 receive air into casing 12 (casing
`
`main body 14). (Id. at FIG. 1; 5:33-36.) Material container 32 storing liquid
`
`material 36 is “detachably fixed” in first portion 12a of the casing. (Id. at 5:51-58.)
`
`Coil heater 94 heats formed body 92. (Id. at FIG. 13, 15:37-40.) Formed
`
`body 92 contains “good air permeability” and “material to be inhaled by the user,”
`
`including menthol, or a tobacco component. (Id. at FIG. 13; 15:5-17.)
`
`
`
`18
`
`

`
`
`
`VII. DETAILED EXPLANATION OF GROUNDS OF INVALIDITY
`A. Ground 1: Claims 1-3 are Obvious Based on Takeuchi
`Takeuchi alone renders obvious claims 1-3 of the ‘742 patent. As for claim
`
`1, Takeuchi discloses an electronic cigarette comprised of a battery assembly (see
`
`claim chart below, claim 1, element 1[b] (source 44 in red)), a cigarette bottle
`
`assembly (see claim chart below, claim 1, element 1[b] (components in blue)) with
`
`an atomizer assembly (see claim chart below, claim 1, element 1[b] (heater 42,
`
`liquid passageway 37 in green)) fitted inside of it, surrounded by a hollow shell
`
`(casing 12). (Ex. 1003 at 4:30-38; 5:58-6:29.) The battery assembly (source 44) is
`
`electrically connected to the atomizer (specifically to heater 42). (Id. at 6:12-29;
`
`6:55-62.) The cigarette bottle assembly is detachable from the battery assembly.
`
`(Id. at 6:12-14.)
`
`Source 44 and heater 42 are in casing 12 and electrically connected. (Id. at
`
`6:23-29; 6:55-62.) Casing 12 has through-air-inlets (air intake 18 and air
`
`introduction hole 26). (Id. at 8:5-10.) The cigarette bottle assembly is detachably
`
`located in one end of the shell (source 44 is removable (id. at 6:12-14.) and the
`
`atomizer assembly fits inside it.
`
`Figure 15 of Takeuchi discloses liquid passageway 36 in the form of
`
`intercommunicating pore structure 302. (Schuster Decl. ¶ 120; Ex. 1003 at 10:59-
`
`63.) Takeuchi teaches “features can be combined appropriately depending on the
`
`
`
`19
`
`

`
`object of the flavor generating device.” (Ex. 1003 at 11:4-6.) Therefore, below is
`
`a portion of the embodiment of Figure 1 with the atomizer of Figure 15. (Schuster
`
`Decl. ¶ 121):
`
`
`
`As shown above, Takeuchi discloses a frame (in red) comprised of partition
`
`wall 13, squeeze plate 24 and the top portion of the casing 12. (Schuster Decl. ¶
`
`122.) Alternatively, the frame can be taken to be only partition wall 13 and
`
`squeeze plate 24. (Id.) The porous component (intercommunicating pore structure
`
`302) is positioned substantially within the cigarette bottle assembly and supported
`
`by the frame. The frame has a run through hole (squeeze hole 24a) that is
`
`substantially aligned with the heating body (heater 425). (Ex. 1003 at 4:63-67.)
`
`As to claim 2, Takeuchi discloses air flowing through the run-through hole
`
`(squeeze hole 24a) and the porous component (porous element 302) substantially
`
`surrounded by the liquid storage component (liquid container 32). (Id. at 3:42-47;
`
`4:61-67; 8:5-10; 10:53-59.)
`
`
`
`20
`
`

`
`
`
`As to claim 3, Takeuchi discloses the porous component 302 between the
`
`frame and outlet (inhalation port 22; mouthpiece 161 (see figures above)) (id. at
`
`6:56-7:2; 9:8-34; 10:50-67; FIGS. 1, 8, 14-15) and in contact with a liquid supply
`
`(liquid flavor source 34). (Id. at 3:35-46; 10:50-59.)
`
`To the extent that the frame shown above may not disclose the porous
`
`component between the frame and the outlet, the embodiment of Figure 8 does. As
`
`shown in the modified figure below (features can be combined appropriately […]”
`
`(id. at 11:4-6.)), the device provides a frame (plates 361 and 362) (Id. at 8:35-44.)
`
`and a run through hole (liquid passageway 371). (Schuster Decl. ¶ 126.)
`
`
`Based on the BRI of “frame,” plates 361 and 362 are a frame for the pore
`
`structure 302. (Schuster Decl. ¶ 127-128; Ex. 1003 at FIGS. 8 and 15.)
`
`Accordingly, Takeuchi renders claims 1-3 obvious. The claim charts below
`
`specify where each element of these claims is found. 37 C.F.R. § 42.104(b).
`
`Patent
`U.S.
`8,365,742
`
`No.
`
`Takeuchi
`
`
`
`21
`
`

`
`
`
`Takeuchi discloses an aerosol electronic cigarette.
`See, e.g., 5:43-46 (“simulated smoking article”).
`
`Takeuchi discloses a battery assembly (“source 44”),
`an atomizer assembly (“capillary tube 36”; “liquid
`passageway 37”/“liquid passageway 371”; “heater
`42”;
`“heater
`425”
`“enclosure
`301”;
`“intercommunicating pore structure 302”), and a
`cigarette bottle assembly (“Casing 12” without
`removable “source 44”). See, e.g., Abstract; 5:58-
`6:29; 10:50-67; FIGS. 1, 14-15.
`
`
`aerosol
`cigarette,
`
`1[a]
` An
`electronic
`comprising:
`1[b] a battery assembly,
`an atomizer assembly and
`a
`cigarette
`bottle
`assembly,
`
`
`
`1[c] and a shell that is
`hollow
`and
`integrally
`formed;
`1[d] the battery assembly
`electrically
`connected
`with
`the
`atomizer
`assembly, and both are
`located in the shell;
`
`1[e] the cigarette bottle
`assembly
`is detachably
`located in one end of the
`shell, and fits with the
`atomizer assembly inside
`
`
`
`Takeuchi discloses a shell (“casing 12”) that is
`hollow and integrally formed. See, e.g., 4:30-38;
`FIG. 1.
`Takeuchi discloses a battery assembly (“source 44”)
`electrically connected with the atomizer assembly
`(“capillary tube 36”; “liquid passageway 37”/“liqu