Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: January 4, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`____________
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 10
`Entered: January 4, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`____________
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2016-01268
`Patent 8,365,742 B2
`
`
`I. INTRODUCTION
`R.J. Reynolds Vapor Company (“Petitioner”) filed a Petition (“Pet.”)
`to institute an inter partes review of claims 2 and 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 8. We have jurisdiction under 35 U.S.C. § 314.
`Upon consideration of the Petition and Preliminary Response, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing with respect to the unpatentability of claims 2 and 3 of the ’742
`patent. Accordingly, we institute an inter partes review of those claims.
`Related Proceedings
`A.
`The parties indicate that the ’742 patent is asserted in numerous cases
`pending in the Central District of California, including Fontem Ventures
`B.V. v. R.J. Reynolds Vapor Company, Case No. 2:16-cv-02286. Pet. 2–3;
`Paper 4, 1–5; Paper 6, 2. The ’742 patent was previously the subject of
`IPR2015-00859 (“the 859 IPR,” institution denied on September 9, 2015)
`and IPR2015-01587 (terminated on December 14, 2015 at the joint request
`of the parties before an institution decision was entered) (Pet. 3; Paper 4, 7),
`and also currently is the subject of IPR2016-01532, filed by Petitioner on
`August 5, 2016, and IPR2016-01303, filed by Nu Mark LLC on June 28,
`2016 (Paper 4, 7; Paper 7, 1).
`The ’742 Patent (Ex. 1001)
`B.
`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
`
`2
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`IPR2016-01268
`Patent 8,365,742 B2
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`disadvantages, including low atomizing efficiency, being structurally
`complicated, and not providing ideal aerosol effects. Id. at 1:21–24.
`Figure 1 of the ’742 patent is reproduced below:
`
`
`
`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
`
`3
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`IPR2016-01268
`Patent 8,365,742 B2
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`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:
`
`
`
`
`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
`
`4
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`IPR2016-01268
`Patent 8,365,742 B2
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`assembly, with protuberance 812 at the other end connecting to atomizing
`chamber 811 with run-through hole 813. Id. at 3:16–19.
`Challenged Claims
`C.
`Petitioner challenges claims 2 and 3 of the ’742 patent, which are
`reproduced below.
`2. An electronic cigarette, comprising:
`a battery assembly and an atomizer assembly within a housing
`with the battery assembly electrically connected to the
`atomizer assembly;
`a liquid storage component in the housing;
`with the housing having one or more through-air-inlets;
`the atomizer assembly including a porous component supported
`by a frame having a run-through hole;
`a heating wire wound on a part of the porous component in the
`path of air flowing through the run-through hole; and
`the porous component substantially surrounded by the liquid
`storage component.
`3. An electronic cigarette, comprising:
`a battery assembly and an atomizer assembly within a housing
`with the battery assembly electrically connected to the
`atomizer assembly;
`with the housing having one or more through-air-inlets and an
`outlet;
`the atomizer assembly includes a frame having a run through
`hole, and a porous component between the frame and the
`outlet;
`a heating wire wound on a part of the porous component which
`is substantially aligned with the run-through hole; and
`with the porous component in contact with a liquid supply in the
`housing.
`
`5
`
`
`
`
`
`IPR2016-01268
`Patent 8,365,742 B2
`
`D.
`
`Hon ’043
`
`Chinese Patent No.
`CN 2719043 Y
`
`The Prior Art
`Petitioner relies on the following prior art references:
`Reference
`Patent
`Date
`Exhibit No.
`Whittemore US 2,057,353
`Sept. 27,
`1004
`1935
`Aug. 24,
`2005
`
`1002 and
`1003 (English
`translation) 1
`
`
`E.
`
`The Asserted Ground of Unpatentability
`Petitioner challenges the patentability of claims 2 and 3 of the
`’742 patent on the following ground:
`References
`Hon ’043 and Whittemore
`
`Basis
`§ 103
`
`Claims Challenged
`2, 3
`
`
`
`II. ANALYSIS
`
`A.
`
`35 U.S.C. § 325(d)
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108. Our discretion on whether to institute is
`
`
`1 Hon ’043 is a Chinese patent, and Petitioner provided an English-language
`translation, as required by 37 C.F.R. § 42.63(b). Our citations are to that
`translation, which we assume for purposes of this Decision is accurate.
`However, although the translation of Hon ’043 is accompanied by a
`translator’s certificate attesting to the accuracy of the translation (Ex. 1003,
`19), the certificate is not an “affidavit” as required by 37 C.F.R. § 42.63(b)
`and as defined by 37 C.F.R. §§ 1.68 and 42.2. Specifically, the translator’s
`certificate does not warn the translator “that willful false statements and the
`like are punishable by fine or imprisonment, or both.” 37 C.F.R. § 1.68.
`Petitioner must file, as a new exhibit, a satisfactory affidavit attesting to the
`accuracy of the translation within ten business days of this Decision.
`6
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`IPR2016-01268
`Patent 8,365,742 B2
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`guided by 35 U.S.C. § 325(d), which states that “the Director may take into
`account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office.”
`Patent Owner requests that the Board exercise its discretion under
`§ 325(d) and decline to institute inter partes review of the ’742 patent
`because the ground presented in the Petition presents the same prior art and
`arguments rejected in the Institution Decision in the 859 IPR. Prelim. Resp.
`7–13. Patent Owner notes that § 325(d) has been used to deny a petition “in
`part because ‘[a]llowing similar, serial challenges to the same patent, by the
`same petitioner, risks harassment of patent owners and frustration of
`Congress’s intent in enacting the Leahy-Smith America Invents Act,’” and
`argues that “[t]he same reasoning should apply even if the Petitioner is
`different.” Id. at 7 (quoting Arista Networks v. Cisco Systems, Inc., Case
`No. IPR2015-01710, 2016 WL 1083023 at *5 (PTAB Feb. 16, 2016)).
`Although the arguments in the Petition are similar to those asserted by
`VMR Products LLC in the 859 IPR, the permissive language of § 325(d)
`does not prohibit instituting inter partes review based on prior art or
`arguments previously presented to the Office. While we are mindful of the
`burden on Patent Owner and the Office to rehear the same or substantially
`the same prior art or arguments previously presented to the Office, we are
`persuaded, for the reasons that follow, that Petitioner’s arguments have
`merit. Moreover, Patent Owner has not demonstrated that the Petition
`constitutes harassment or is part of a pattern of filing serial petitions against
`the ’742 patent. Therefore, considering the totality of the circumstances, we
`
`7
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`IPR2016-01268
`Patent 8,365,742 B2
`
`do not exercise our authority to decline an inter partes review of the ’742
`patent under § 325(d).
`B.
`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); see Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Only those terms in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`Petitioner proposes constructions for the terms “frame” and “porous
`component substantially surrounded by the liquid storage component.”
`Pet. 11–12. Patent Owner states that it disagrees with Petitioner’s proposed
`constructions, “[b]ut because those constructions are not relevant to” the
`Preliminary Response, it “does not dispute those construction[s] here.”
`Prelim. Resp. 13. For purposes of this Decision, based on the record before
`us, we determine that none of the claim terms requires an explicit
`construction.
`C. Obviousness over Hon ’043 and Whittemore
`Petitioner contends that claims 2 and 3 would have been obvious
`under 35 U.S.C. § 103 over the combination of Hon ’043 and Whittemore.
`Pet. 17–36. Petitioner relies on the Declaration of Dr. Robert H. Sturges
`(Ex. 1015) in support of its contentions. Id. Patent Owner disagrees with
`Petitioner’s contentions, and relies on the Declaration of Richard Meyst
`(Ex. 2001).
`
`8
`
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`IPR2016-01268
`Patent 8,365,742 B2
`
`
`Overview of Hon ’043
`1.
`Hon ’043 is directed to an electronic atomization cigarette. Ex. 1003,
`5. Figure 1 of Hon ’043 is reproduced below:
`
`
`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 8–9.
`Figure 6 of Hon ’043 is reproduced below.
`
`
`Figure 6 is a structural diagram of an atomizer, which includes atomization
`cavity 10, long stream ejection hole 24, atomization cavity wall 25, heating
`element 26, porous body 27, and bulge 36. Id. at 9. Hon ’043 states that
`“atomization cavity wall 25 is surrounded with the porous body 27, which
`9
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`IPR2016-01268
`Patent 8,365,742 B2
`
`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.
`Hon ’043 teaches 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 10. 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. 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 23
`and is further atomized by the heating element 26.” Id. at 10–11. After
`atomization, large-diameter droplets stick to the wall and are reabsorbed by
`porous body 27 via overflow hole 29, and small-diameter droplets form
`aerosols that are sucked out via aerosol passage 12, gas vent 17, and
`mouthpiece 15. Id. at 11.
`2.
`Overview of Whittemore
`
`Whittemore is directed to vaporizing units for a therapeutic apparatus.
`Ex. 1004, 1:1–2. Whittemore Figure 2 is reproduced below:
`
`10
`
`
`
`
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`IPR2016-01268
`Patent 8,365,742 B2
`
`
`
`Figure 2 is an enlarged sectional view of a therapeutic apparatus with a
`vaporizing unit as taught by Whittemore. Id. at 1:15–16. Vaporizing vessel
`A is a hollow glass container that holds liquid medicament x. Id. at 1:19–23.
`Conductors 1 and 2 are combined with heating element 3 such that, when
`conductors 1 and 2 are energized, heating element 3 is heated. Id. at 1:24–
`27. Wick D is combined with heating element 3 so that a portion of wick D
`is always in contact, or in approximate contact, with heating element 3, and
`a portion of wick D is also in contact with liquid medicament x. Id. at 1:53–
`2:5.
`
`According to Whittemore, medicament x is carried on wick D by
`capillary action to a point where it will be vaporized by the heat from
`heating element 3. Id. at 2:5–8. Whittemore states that “wick D consists of
`a thread, string or strand of some suitable wick material doubled
`intermediate its ends so as to form a substantially inverted V-shaped device
`whose side portions are encased in and surrounded by coiled or looped
`portions” of heating element 3, and “the lower ends or free ends of the side
`pieces of the wick projecting downwardly into the medicament and
`terminating at or in close proximity to the closed bottom 6 of the vessel.” Id.
`at 2:9–18.
`
`11
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`IPR2016-01268
`Patent 8,365,742 B2
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`
`Analysis
`3.
`Petitioner contends that “Hon ’043 discloses every element of claims
`2 and 3 of the ’742 patent, except that Hon ’043’s heating wire is not wound
`on a porous component,” and “a heating wire wound on a porous wick is
`disclosed by Whittemore.” Pet. 7. For example, Petitioner contends that
`Hon ’043 describes “the atomizer assembly including a porous component
`supported by a frame having a run-through hole” limitation of claim 2
`because “the PHOSITA [person having ordinary skill in the art] would have
`understood that atomization cavity wall 25 provides support for porous body
`27.” Id. at 15. Petitioner contends that “porous body 27 is attached to cavity
`wall 25 either by a friction fit or with a bonding material to prevent axial
`displacement of the porous body under the shear forces at the interface of
`cavity wall 25 and porous body 27” when porous body 27 is inserted into
`solution storage body 28 of liquid supplying bottle 11, “the leading edge of
`the cavity wall 25 provides further support for the porous body in the area of
`bulge 36,” and “cavity wall 25 also provides radial support when pressure
`increases in the low pressure area surrounding atomizer 9, such as when the
`user deliberately or accidentally blows in the mouthpiece 15.” Id. at 15–16
`(citing Ex. 1015 ¶¶ 45–50).
`In support of Petitioner’s contentions, Dr. Sturges states that “shear
`forces could be particularly significant when the porous body and the
`solution storage body 28 are made from materials that have similar and
`relatively high rigidity.” Ex. 1015 ¶ 45. Dr. Sturges further states that,
`“should the user blow into the mouthpiece by mistake, the pressure in the
`space around the atomizer could rise to as much a[s] 2 pounds per square
`inch or more,” which “could cause the porous body 27 to impinge upon
`
`12
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`IPR2016-01268
`Patent 8,365,742 B2
`
`and/or destroy the atomization cavity 10 but for the support provided by
`atomization cavity wall 25.” Id. ¶ 48.
`Patent Owner argues that because “cavity wall 25 is entirely inside of
`porous body 27, the cavity wall 25 cannot support or hold up the porous
`body 27.” Prelim. Resp. 15. Patent Owner argues that, contrary to
`Petitioner’s contentions, “Hon ’043 says nothing about the cavity wall 25
`being attached to the porous body, about preventing axial displacement, or
`shear forces,” and does not say anything “about a friction fit or a bonding
`material.” Id. at 16. Patent Owner further argues that “Hon ’043 makes no
`mention of the leading edge of the cavity wall 25,” “the cavity wall
`providing radial support to the porous body 27, or any indication that the
`porous body requires any radial support.” Id. In support of Patent Owner’s
`arguments, Mr. Meyst states that “providing a friction fit would complicate
`making the device described in Hon ’043 because a friction fit requires
`precise mechanical tolerances on the mating components, and a pressing step
`to fit them together.” Ex. 2001 ¶ 36. Mr. Meyst further states that a bonding
`material “would interfere with the reabsorption by forming a barrier between
`the atomization cavity wall [25] and the porous body 27 which would block
`overflow hole 29.” Id. ¶ 38.
`For purposes of deciding whether to institute an inter partes review,
`we must view any issues of material fact created by testimonial evidence in
`the light most favorable to Petitioner. 37 C.F.R. § 42.108(c). Thus, only for
`purposes of this Decision, we must resolve the dispute between Dr. Sturges
`and Mr. Meyst regarding whether atomization cavity wall 25 supports
`porous body 27 in Petitioner’s favor. Consequently, we are persuaded, on
`
`13
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`IPR2016-01268
`Patent 8,365,742 B2
`
`the present record, that Petitioner has established that Hon ’043 describes “a
`porous component supported by a frame” as required by claim 2.
`Petitioner further contends that a person having ordinary skill in the
`art “would have readily understood the inefficiencies associated with the
`heating element configuration disclosed in Hon ’043,” and would also “have
`recognized that the configuration disclosed in Whittemore (i.e., a heating
`wire wound on a porous wick) is thermally more efficient, because the liquid
`(which is contained in the porous wick) comes into direct contact with the
`heating element.” Pet. 18–19 (citing Ex. 1015 ¶¶ 58–62). Petitioner
`contends that “in the Whittemore configuration, the heating element can be
`run at lower temperatures as compared to the configuration in Hon ’043,
`where there are air gaps between the nicotine droplets and the heating
`element,” and, therefore, “less energy is required to vaporize the liquid.” Id.
`at 19. According to Petitioner, “the proposed combination is the simple
`substitution of one known element (Whittemore’s wick/heating wire
`configuration) for another (Hon ’043’s heating element) to obtain
`predictable results.” Id. We are persuaded, based on the current record, that
`Petitioner has provided sufficient reasoning with rational underpinning to
`support a reason to combine Hon ’043 and Whittemore.
`For these reasons, we determine that the record before us establishes a
`reasonable likelihood that Petitioner would prevail in showing that the
`subject matter of claim 2 would have been obvious over the combined
`teachings of Hon ’043 and Whittemore. We also have considered the
`arguments and evidence with respect to claim 3, and are persuaded on the
`present record that Petitioner has established a reasonable likelihood that it
`would prevail as to claim 3 as well. See Pet. 31–36.
`
`14
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`IPR2016-01268
`Patent 8,365,742 B2
`
`
`
`
`III. CONCLUSION
`Based on the arguments in the Petition and Preliminary Response, and
`the evidence of record, we determine that Petitioner has demonstrated a
`reasonable likelihood that it would prevail on its challenge that claims 2
`and 3 of the ’742 patent are unpatentable.
`At this stage of the proceeding, the Board has not made a final
`determination as to the construction of any claim term or the patentability of
`claims 2 and 3.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is instituted as to claims 2 and 3 of the ’742 patent with respect to the
`following ground:
`Whether claims 2 and 3 are unpatentable under 35 U.S.C. § 103 as
`obvious over the combined teachings of Hon ’043 and Whittemore;
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 315(c) and
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial
`commencing on the entry date of this Decision;
`FURTHER ORDERED that Petitioner shall file as an exhibit, within
`ten business days of this Decision, an affidavit attesting that Exhibit 1003 is
`an accurate translation of Hon ’043, in compliance with 37 C.F.R.
`§ 42.63(b); and
`
`15
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`IPR2016-01268
`Patent 8,365,742 B2
`
`
`FURTHER ORDERED that no ground other than that specifically
`granted above is authorized for inter partes review as to the claims of the
`’742 patent.
`
`PETITIONER:
`
`Ralph J. Gabric
`Robert Mallin
`Yuezhong Feng
`BRINKS GILSON & LIONE
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
`
`PATENT OWNER:
`
`Michael J. Wise
`Joseph P. Hamilton
`PERKINS COIE LLP
`MWise@perkinscoie.com
`JHamilton@perkinscoie.com
`patentprocurement@perkinscoie.com
`
`16
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