Patent No. 8,156,944
`Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`CB Distributors, Inc. and DR Distributors, LLC,
`Petitioners
`
`v.
`
`Ruyan Investment (Holdings) Limited,
`Patent Owner
`
`Patent No. 8,156,944
`Issue Date: April 17, 2012
`Title: AEROSOL ELECTRONIC CIGARETTE
`_______________
`
`Inter Partes Review No. ______
`____________________________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.
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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`NOTICES AND STATEMENTS ................................................................... 1
`
`INTRODUCTION .......................................................................................... 3
`
`III. THE ’944 PATENT ........................................................................................ 4
`
`A.
`
`B.
`
`Background .......................................................................................... 4
`
`Prosecution History .............................................................................. 7
`
`1.
`
`2.
`
`3.
`
`Preliminary Amendments .......................................................................... 7
`
`First Office Action and Response .............................................................. 8
`
`Second Office Action, Response, and Allowance ..................................... 8
`
`C.
`
`Related Inter Partes Reexamination .................................................... 9
`
`1.
`
`Request For Reexamination And Office Action ........................................ 9
`
`IV. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY ......... 11
`
`A.
`
`B.
`
`C.
`
`Statutory Grounds For The Challenge Of Each Claim ...................... 11
`
`Claim Construction............................................................................. 12
`
`1.
`
`2.
`
`Broadest Reasonable Construction .......................................................... 12
`
`Run-through Atomizing Chamber ........................................................... 12
`
`Ground 1 – Anticipation of claims 1, 2, 5-8, 10, 33, and 35, 37,
`and 38 By Liu ..................................................................................... 18
`
`D. Ground 2 – Obviousness of Claim 20 Based on Liu .......................... 29
`
`E.
`
`F.
`
`Ground 3 – Obviousness of Claims 3, 4, 12, 15, 17, and 26
`Based On Liu In View Of Susa .......................................................... 30
`
`Ground 4 – Obviousness of Claims 1-4, 8-12, 15-26, 33-34, 36,
`and 38 Based on Hon ’494 In View of Liu ........................................ 36
`
`G. Ground 5 – Obviousness of Claims 39-41 Based On Hon ’494
`In View of Liu and Susa ..................................................................... 47
`
`V.
`
`CONCLUSION ............................................................................................. 54
`
`
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`Exhibit List for Inter Partes Review of U.S. Patent No. 8,156,944
`
`Exhibit Description
`
`Exhibit #
`
`U.S. Patent No. 8,156,944 to Han
`
`Request for Certificate of Correction dated June 11, 2012
`
`WO 2007/131449 A1 to Hon
`
`CN Patent No. 2719043
`
`CN Patent Application No. 200620090805
`
`Certified English Translation of CN Patent Application No.
`
`200620090805 dated October 6, 2011
`
`WO 2004/095955 A1 to Hon
`
`WO 2005/099494 A1 to Hon
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`Certified English Translation of WO 2005/099494 A1 to Hon dated
`
`1009
`
`June 17, 2013
`
`Office Action dated February 2, 2011
`
`Response to Office Action dated February 22, 2011
`
`Office Action dated April 12, 2011
`
`Response to Office Action dated October 12, 2011
`
`1010
`
`1011
`
`1012
`
`1013
`
`Inter Partes Reexamination Request dated September 13, 2012
`
`1014
`
`Order Granting Reexamination dated November 27, 2012
`
`1015
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`Office Action dated November 27, 2012
`
`Response to Office Action dated January 28, 2013
`
`Third Party Response dated February 27, 2013
`
`WO 2007/078273 A1 to Liu
`
`EP 0845220 A1 to Susa et al.
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
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`Petitioners CB Distributors, Inc. and DR Distributors, LLC (“Petitioners”)
`
`respectfully petition for inter partes review of claims 1-12, 15-26, and 33-41 of
`
`U.S. Patent No. 8,156,944 (“the ’944 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), Petitioners identify CB Distributors, Inc.
`
`and DR Distributors, LLC as the real parties-in-interest.
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners identify the following related
`
`inter partes reexamination and litigation involving the ’944 patent.
`
`On September 13, 2012, a Request for Inter Partes Reexamination of the
`
`’944 patent was filed by Fin Branding Group, LLC (“Fin”). On November 27,
`
`2012, the PTO granted the Inter Partes Reexamination Request (Control No.
`
`95/002,235) and issued an Office Action. The patent owner filed a Response to the
`
`Office Action on January 28, 2013 and filed a Supplemental Amendment on
`
`February 5, 2013. On February 27, 2013, Fin filed a Third Party Response. The
`
`Inter Partes Reexamination is discussed in more detail in Section III, Part C,
`
`below.
`
`On June 22, 2012, Ruyan Investment (Holdings) Limited filed nine lawsuits
`
`in the Central District of California asserting infringement of the ’944 patent:
`
`Ruyan Investment (Holdings) Limited v. Sottera, Inc., No. CV12-5454; Ruyan
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`Investment (Holdings) Limited v. LOEC, Inc., No. CV12-5455; Ruyan Investment
`
`(Holdings) Limited v. CB Distributors, Inc. and DR Distributors, LLC, No. CV12-
`
`5456; Ruyan Investment (Holdings) Limited v. The Safe Cig, LLC, No. CV12-5462;
`
`Ruyan Investment (Holdings) Limited v. Vapor Corp., No. CV12-5466; Ruyan
`
`Investment (Holdings) Limited v. Fin Branding Group, LLC, No. CV12-5468;
`
`Ruyan Investment (Holdings) Limited v. Barjan LLC, No. CV12-5470; Ruyan
`
`Investment (Holdings) Limited v. Spark Industries, LLC, No. CV12-5471; Ruyan
`
`Investment (Holdings) Limited v. Nicotek LLC, No. CV12-5477; Ruyan Investment
`
`(Holdings) Limited v. Logic Technology Development LLC, No. CV12-5482.
`
`All cases were consolidated for pre-trial purposes as Ruyan Investment
`
`(Holdings) Limited v. Sottera, Inc., No. CV12-5454 on December 19, 2012. On
`
`February 25, 2013 the Court stayed all proceedings in light of the inter partes
`
`reexamination requested by Fin.
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioners identify the following counsel
`
`and a power of attorney accompanies this Petition.
`
`
`
`Lead Counsel
`
`Backup Counsel
`
`David L. Fehrman
`dfehrman@mofo.com
`Registration No.: 28,600
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd.
`
`Mehran Arjomand
`marjomand@mofo.com
`Registration No.: 48,231
`MORRISON & FOERSTER LLP
`707 Wilshire Blvd.
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`Los Angeles, California 90017-3543
`Tel: (213) 892-5601
`Fax: (213) 892-5454
`
`Los Angeles, California 90017
`Tel: (213) 892-5630
`Fax: (323) 210-1329
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up
`
`counsel is provided above.
`
`Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the ’944 patent is
`
`available for inter partes review and that the Petitioners are not barred or estopped
`
`from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`II.
`
`INTRODUCTION
`
`The ’944 patent1 is directed to an aerosol electronic cigarette containing a
`
`battery assembly, an atomizer assembly, a cigarette-solution storage area, and a
`
`hollow shell. The atomizer assembly includes a “run-through atomizing chamber”
`
`and an electric heating rod, which includes a cylinder with a heating wire wound
`
`on the wall of the cylinder.
`
`Section III of this Petition summarizes the ’944 patent and its prosecution
`
`history. Section IV sets forth the detailed grounds for invalidity of claims 1-12,
`
`15-26, and 33-41. Accordingly, Petitioners respectfully request a Decision to
`
`institute inter partes review.
`
`
`1 The ’944 patent is issued to Li Han. On June 11, 2012, Ruyan, assignor of the ’944 patent, filed a request to
`correct the name of the inventor of the ’944 from Li Han to Lik Hon. (Ex. 1002.) Lik Hon is the named inventor of
`prior art reference WO2005/099494 A1 discussed below.
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`III. THE ’944 PATENT
`
`A. Background
`
`As noted above, the ’944 patent is directed to an aerosol electronic cigarette.
`
`
`
`
`
`In an embodiment shown in Figures 1 and 22 above, the aerosol electronic cigarette
`
`comprises a hollow shell (a), containing a battery assembly and an atomizer
`
`assembly. A removable cigarette bottle assembly in a hollow cigarette holder shell
`
`and mouthpiece (b) can be inserted into hollow shell (a) to fit into the atomizer
`
`assembly. (Col. 2, ll. 1-2; col. 6, 56-58.) The atomizer assembly includes a porous
`
`
`2 The drawings from the corresponding published PCT application WO2007/131449 A1 (Ex. 1003) are substituted
`in place of the illegible drawings from the ’944 patent.
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`component and a heating rod. Several different atomizer assemblies are disclosed.
`
`One embodiment of the atomizer is shown in Figures 5- 8, reproduced below.
`
`
`
`
`
`The porous component 81 has a “run-through” atomizing chamber 811 and a
`
`half sphere protuberance 812 at its exit end, which fits into the cigarette bottle
`
`assembly. (Col. 6, ll. 13-34.) The heating rod 82 includes a cylinder 821 with a
`
`heating wire 822 wound on the wall of cylinder 821. The rod extends along the
`
`length of the atomizing chamber 811, as shown in Figures 7 and 8.
`
`The diameter of heating rod 82 is less than the diameter of atomizing
`
`chamber 811, creating a clearance between the heating rod and atomizing chamber,
`
`thus forming a negative pressure cavity 83. (Col. 6, ll. 37-42.) A run-through hole
`
`813 formed in the protruding half sphere 812 is indicated as connecting to the run-
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`through atomizing chamber 811. (Col. 6, ll. 23-28.) However, the precise location
`
`and extent of such hole is unclear, as it is depicted differently in each of Figures 5
`
`and 8. The specification indicates that when the smoker inhales, the cavity of the
`
`cigarette holder shell is in a negative pressure state. (Col. 7, ll. 8-9.)
`
`A second embodiment is shown in Figures 13-16 and includes a similar
`
`structure of a heating rod extending along the length of the run-through chamber.
`
`A third embodiment is shown in Figures 17 and 18, reproduced below. In this
`
`embodiment, a heating wire is wound around a portion of a porous component 81
`
`which extends across a central opening of the porous component and frame 82 to
`
`which it is attached.
`
`
`
`
`
`Before summarizing the prosecution history and the inter partes
`
`reexamination and presenting the grounds of invalidity, Petitioners provide a table
`
`listing the relevant patents and publications to Hon with accompanying
`
`abbreviations and exhibit numbers for the Board’s benefit.
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`Patent or Publication
`
`Abbreviation
`
`Exhibit
`
`1001
`1003
`
`1004
`1005
`
`
`
`1006
`
`1007
`1008
`
`1009
`
`Number
`
`US Patent No. 8,156,944
`WO 2007/131449 A1
`(PCT Pub. of the ’944
`patent)
`CN Patent No. 2719043
`CN Patent Application. No.
`200620090805
`
`Certified Translation of
`Hon ’805
`WO 2004/095955 A1
`WO 2005/099494 A1
`
`Certified Translation of
`Hon ’494
`
`The ’944 patent
`Hon ’449
`
`Hon ’043
`Hon ’805
`
`
`
`Hon ’955
`Hon ’494
`
`
`
`
`
`B.
`
`Prosecution History
`
`1.
`
`Preliminary Amendments
`
`The application which ultimately issued as the ’944 patent entered the
`
`national phase on October 29, 2008, from PCT application No.
`
`PCT/CN2007/001575, filed on May 15, 2007 which claimed priority to CN Patent
`
`Application No. 20062009805 (Hon ’805). The application was filed with 29
`
`claims. In an October 29, 2008 Preliminary Amendment, the applicant added three
`
`additional claims. On April 20, 2009, the applicant cancelled all the pending
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`claims in a Second Preliminary Amendment, and replaced them with 27 new
`
`claims (33-59).
`
`2.
`
`First Office Action and Response
`
`On February 2, 2011, the Examiner issued a Restriction Requirement noting
`
`that claims 33-36 and 38-59 (Group I) were directed to the embodiment shown in
`
`Figure 5, whereas claim 37 (Group II) was directed to the embodiment shown in
`
`Figure 17. (Ex. 1010 at 2.) On February 22, 2011, the applicant elected Group I
`
`and cancelled claim 37. (Ex. 1011 at 1.)
`
`3.
`
`Second Office Action, Response, and Allowance
`
`A second Office Action was mailed on April 12, 2011. In this Office Action
`
`(Ex. 1012), pending claims 34, 36, and 60 were objected to and claims 33, 35, and
`
`38-69 were rejected either as being indefinite under 35 U.S.C. 112, second
`
`paragraph, or obvious over Chinese Patent No. 2719043 to Hon (Hon ’043), or
`
`obvious over Hon ’043 in view of PCT Application No. WO 2004/095955 A1 to
`
`Hon (Hon ’955).
`
`The applicant filed a response on October 12, 2011. (Ex. 1013.) With
`
`regard to claims 35, 38, 42 and 44-45, which were rejected as indefinite, the
`
`applicant argued for certain claims (35, 44, and 45) and amended other claims (38
`
`and 42) to overcome the indefiniteness rejection. (Id. at 14.) With respect to the
`
`obviousness rejections, the applicant argued that Hon ’043 “is not prior art to the
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`present claims” because the application was entitled to the earlier May 16, 2006
`
`filing date of its foreign priority document Hon ’805. This argument was incorrect,
`
`because Hon ’043 is prior art under 35 U.S.C. § 102(b) as it issued on August 24,
`
`2005, more than one year prior to May 15, 2007.3 The applicant further stated that
`
`the priority document “is substantially the same as the current specification and
`
`figures.” This is also incorrect, as the figures and description of the Hon ’805 are
`
`substantially different from those of the application that issued as the Hon ’944
`
`patent, as discussed in more detail below.
`
`Nevertheless, on December 6, 2011, in response to the applicant’s
`
`amendment and response, the Examiner issued a Notice of Allowance.
`
`C. Related Inter Partes Reexamination
`
`1.
`
`Request For Reexamination And Office Action
`
` On September 13, 2012, a Request for Inter Partes Reexamination of the
`
`’944 patent (Ex. 1014, “Inter Partes Reexamination Request”) was filed by Fin
`
`stating six proposed grounds for rejections. The first two proposed grounds for
`
`rejection were based on WO 2005/099494 to Hon (“Hon ’494” 4) (anticipation) and
`
`Hon ’494 in view of Hon ’955 (obviousness).
`
`
`3 May 17, 2007 is the filing date of Hon ’944’s PCT Application, which is the “date of application for patent in the
`United States” for purposes of 35 U.S.C. § 102(b).
`4 Hon ’043 claims priority to Chinese Application No. 200420031182.0, which is also the Chinese priority
`application for Hon ’494. As explained below in § IV, Part C, Hon ’494 is also prior art to the ’944 patent under 35
`U.S.C. § 102(b).
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`On November 27, 2012, the PTO granted the Inter Partes Reexamination
`
`Request (Ex. 1015) and issued an Office Action (Ex. 1016). In the Office Action,
`
`with regard to anticipation by Hon ’494, the Examiner adopted the proposed
`
`rejections for claims 1-4, 8-12, 15-26, 33, 34, 36, and 38. (Id. at 5-9.) The
`
`Examiner declined to adopt the proposed rejections for claims 5-7, 35, 37 and 39-
`
`41, stating that Hon ’494 does not disclose a coiled wire (claims 5-7) wound
`
`outside the wall of the cylinder (claims 35 and 37), and does not disclose mandrils
`
`on the walls of both ends of the cylinder (claims 39-41). (Id. at 5, 9-10.)
`
`With regard to obviousness based on Hon ’494 in view of Hon ’955, the
`
`Examiner adopted the proposed rejections for claims 1, 2, 5, 6, 8-12, 15-17, 24, 26,
`
`33-36, and 38 but declined to adopt the proposed rejections for claims 7, 13, 14,
`
`27-32, 37, and 39-41. (Id. at 10-11.) The Examiner stated that the combination
`
`does not disclose a coiled wire on the outer surface of the cylinder (claims 7 and
`
`37) or mandrils on the walls of both ends of the cylinder (claims 39-41). (Id. at 11-
`
`12.)
`
`On January 28, 2013, the Patent Owner filed a Response to the Office
`
`Action. (Ex. 1017.) The Response argued that the Hon ’494 does not disclose a
`
`run-through atomizing chamber or an electric heating rod. (Id., pp. 10-16.) Fin
`
`filed comments in response on February, 27 2013. (Ex. 1018.)
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`IV. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY
`
`Pursuant to 37 C.F.R. § 42.104(b), Petitioners respectfully request the
`
`cancellation of claims 1-12, 15-26, and 33-41 of the ’944 patent based on the
`
`grounds of invalidity as set forth in this Petition.
`
`A.
`
`Statutory Grounds For The Challenge Of Each Claim
`
`Ground 1 – Anticipation under 35 U.S.C. § 102(e) of claims 1, 2, 5-8, 10,
`
`33, 35, 37, and 38 based on WO2007/078273 A1 to Liu (“Liu,”
`
`Ex. 1019);
`
`Ground 2 – Obviousness under 35 U.S.C. § 103(a) of claim 20 based on
`
`Liu;
`
`Ground 3 – Obviousness under 35 U.S.C. § 103(a) of claims 3, 4, 12, 15,
`
`17, and 26 based on Liu in view of EP 0845220 A1 to Susa et
`
`al. (“Susa,” Ex. 1020);
`
`Ground 4 – Obviousness under 35 U.S.C. § 103(a) of claims 1-4, 8-12, 15-
`
`26, 33-34, 36, and 38 based on Hon ’494 in view of Liu; and
`
`Ground 5 – Obviousness under 35 U.S.C. § 103(a) of claims 39-41 based
`
`on Hon ’494 in view of Liu and Susa.
`
`Before addressing these grounds of invalidity, Petitioners set forth how the
`
`challenged claims are to be construed. 37 C.F.R. § 42.104(b)(3). Petitioners then
`
`present a discussion of how the claims are unpatentable under the statutory
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`grounds raised. 37 C.F.R. § 42.104(b)(4). Finally, Petitioners set forth a claim
`
`chart that specifies where each element of a challenged claim is met by the prior
`
`art. 37 C.F.R. § 42.104(b)(4). The showing in these sections establishes a
`
`reasonable likelihood of prevailing as to each ground of invalidity with respect to
`
`the challenged claims as to that ground.
`
`B. Claim Construction
`
`1.
`
`Broadest Reasonable Construction
`
`Petitioners note that a claim is given the “broadest reasonable construction in
`
`light of the specification” in inter partes review. See 37 C.F.R. § 42.100(b). In
`
`general, terms should be given their ordinary and accustomed meaning as
`
`understood by one of ordinary skill in the art. It is submitted that the term “run-
`
`through atomizing chamber” requires additional detailed analysis, as discussed
`
`below.
`
`2.
`
`Run-through Atomizing Chamber
`
`The term “run-through atomizing chamber” should be interpreted as broadly
`
`as possible in a manner consistent with the specification. It is apparent that the
`
`Patent Owner is attempting to ascribe a narrow meaning to this term in the co-
`
`pending reexamination in its attempts to distinguish prior art. (See Ex. 1017, pp.
`
`10-14.) However, these arguments should be rejected, as they do not in any way
`
`reflect the broadest reasonable construction consistent with the specification.
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`The term “run-through atomizing chamber” is not defined in the
`
`specification. Rather, the term is simply introduced, and it is stated with reference
`
`to Figures 5-8, (Fig. 7 is reproduced below) that the body of the porous component
`
`82 “has a run-through atomizing chamber (811),” the “diameter of the electric
`
`heating rod (82) is less than the diameter of the atomizing chamber (811),” and
`
`“there is a clearance between the electric heating rod (82) and interior wall of the
`
`atomizing chamber (811), which forms a negative pressure cavity (83).” (Ex.
`
`1001, col. 6, ll. 15-21.)
`
`
`
`Air flow through the device is described at Col. 7, ll. 22-47. This discussion
`
`indicates that the user’s smoking action causes negative pressure to be created in
`
`the cavity 83, and that small-diameter fine drips are suspended to form gasoloid.
`
`The drips are atomized by the heating rod along the full length of the chamber.
`
`Applying the broadest reasonable construction consistent with the
`
`specification, the term “run-through atomizing chamber” means a chamber having
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`a flow in which atomization occurs along the length thereof. There is no
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`requirement that the input and output ends of the chamber be unblocked, as argued
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`by the Patent Owner during reexamination. (Ex. 1017, p. 11-14.) The claim
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`recites an atomizing chamber, not what may be located at arbitrarily defined ends
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`of the chamber. Liquid is atomized as it runs through the entire length of the
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`chamber.
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`The difference between a run-through atomizing chamber and other
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`atomizers is apparent from a comparison of the elected embodiment with the non-
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`elected embodiment illustrated in Figs. 17 and 18 below. An atomizing chamber
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`having a path in which atomization occurs along its length is shown in Figures 5-8,
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`the elected embodiment, as well as in the embodiment of Figures 13-16. In
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`contrast, the atomizer assembly of the non-elected embodiment does not have such
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`a path.
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`
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`This embodiment includes a frame 82 and a porous component 81 having a
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`coiled heating element wrapped around a bar that extends across the space defined
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`by the frame 82. The space is where atomization occurs, and may therefore be
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`considered an atomizing chamber. Notably, however, in contrast to the other
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`embodiments it is not referred to as a “run-through” chamber and atomization does
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`not occur along the length of a run-through path.
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`
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`The term “run-through atomizing chamber” should not be construed to mean
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`simply having an unblocked input end and unblocked output end as argued by the
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`Patent Owner in the reexamination, as such does not relate to the chamber itself.
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`Moreover, this argument is completely belied by the ‘944 patent itself. In the
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`reexamination, after arguing that the run-through chamber must have open ends,
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`the Patent Owner attempted to distinguish Hon ‘494 by submitting the sketch
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`below showing that the exit end in Hon ‘494 has an arch that restricts flow and
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`asserting that in Hon ‘494 there is no “open and unrestricted pathway through the
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`atomizing chamber, i.e., there is no run-through chamber.” (Ex. 1017, p 14)
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`
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`However, the end of the run-through chamber in the ‘944 patent itself is even more
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`closed and restricted than in the sketch of Hon ‘494. Specifically, the exit end of
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`the run-through chamber of Figures 5-8 has the half sphere protuberance 812 and is
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`therefore partially closed and will obstruct flow at least as much as the arch in
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`Hon’494.
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`
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`This protruberance is discussed in the very same paragraph of the specification
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`which introduces the run-through chamber (Ex. 1001, col. 6, ll. 13-34.) Thus, the
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`Patent Owner’s construction of run-through atomizing chamber would exclude the
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`very embodiment of the ‘944 patent that describes the chamber.
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`The term “run-through” must be accorded some meaning, as “[c]laims must
`
`be interpreted with an eye towards giving effect to all terms in the claim.” See e.g.
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`Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); Elekta
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`Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1305-07 (Fed. Cir.
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`2000) (refusing to adopt a claim construction which would render claim language
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`superfluous). A construction of the term “run-through atomizing chamber” which
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`includes reference to atomization occurring along the length of the flow path gives
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`meaning to the term “run-through” while remaining consistent with the
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`specification.
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`This construction is also consistent with the priority application (Hon ’805).
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`This application discloses embodiments of an atomizer similar to the atomizer of
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`Figures 16-17 of the ’944 patent. These are shown in Figures 8-11, reproduced
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`below.
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`
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`As is the case with respect to Figures. 16 and 17, these atomizers have
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`heating elements that extend across the flow path rather than along it. Also, the
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`description of these atomizers does not refer to them as being run-through
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`atomizing chambers. Rather, it is stated that “atomizer 307 can be the ones as
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`shown in figures 8 and 9 being a capillary impregnation type atomizer, or can be
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`the ones shown in figures 10 and 11 being a spray type atomizer.” (Ex. 1006, at
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`13.)
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`
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`In view of the foregoing, “run-through atomizing chamber” should be
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`construed as a chamber having a flow in which atomization occurs along the length
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`thereof.
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`C. Ground 1 – Anticipation of claims 1, 2, 5-8, 10, 33, and 35, 37,
`and 38 By Liu
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`PCT Application No. US2005/046546 to Liu was filed on December 22,
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`2005 and published as WO 2007/078273 A1 (“Liu”) on July 12, 2007. (Ex. 1019.)
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`Liu was filed in English and designated the United States and therefore is prior art
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`to the ’944 patent under 35 U.S.C. § 102(e) as of its filing date of December 22,
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`2005. (Id.)
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`Liu is entitled “No-Tar Electronic Smoking Utensils.” It is directed to an
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`aerosol electronic cigarette containing a battery 14, an atomizer 24, a liquid storage
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`container cigarette-solution storage area 18, and an outer casing 6. (Id., Figs. 1 and
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`2.) The atomizer (referred to in Liu as a “vapouriser”) includes an electric heating
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`rod with a spirally wound heating wire mounted on the outside of the heating rod.
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`(Id. at p. 6, ll. 18-19; 9, ll. 19-20.) The basic structure is illustrated in Figure 2,
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`reproduced below.
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`The dividing wall 20, separating the battery chamber 14 and the liquid
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`container 18, contains a plurality of apertures 28 as shown in Fig. 6 below. (Id., p.
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`6, ll. 2-7.) The cylindrical vapouriser housing also includes a plurality of apertures
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`28 to allow air and liquid to be drawn into the vapouriser as shown in Fig. 5.
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`
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`
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`In Figure 2 above, the user of the electronic cigarette draws in air via the
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`mouthpiece end Y. (Id., p. 4, ll. 6-7, 24-25.) As the user draws on the cigarette
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`mouthpiece, air is drawn into the cigarette through a plurality of apertures 16 on
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`the outside shell and into the battery chamber 14. (Id., p. 5-6, ll. 32-2.) The air in
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`the battery chamber is sucked into the liquid container 18 through apertures 22
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`where it mixes with the liquid solution. (Id., p. 7, ll. 16-19.) The air and liquid
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`solution mixture is then drawn into the porous walls of the vapouriser heater
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`assembly which contain apertures 28. (Id., Fig. 5; p. 6, ll. 20-22; p. 7, ll. 16-19.)
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`The liquid solution is then vaporized inside the vapouriser before being inhaled via
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`the mouthpiece. (Id.) The flow of air through the cigarette indicates the space in
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`between the vapouriser housing 24 and the heating rod 26 forms a negative
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`pressure cavity as the user inhales.
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`The vapouriser assembly includes a “heater wire 26 spirally wound on a
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`central ceramic insulating rod.” (Id., p. 6, ll. 18-19; p. 9, ll. 19-20.) As shown in
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`Figure 2, above, the central rod 26 extends along the length of the vapouriser 24.
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`Thus, the vapouriser disclosed in Liu is essentially the same as the run-
`
`through atomizer found in the ’944 patent. Liu discloses precisely what the
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`Examiner had found was missing from the prior art in the inter partes
`
`reexamination, i.e., a cylinder with heating wire wound on the wall of the cylinder
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`inside an atomizer assembly. It is submitted that Liu anticipates each of claims 1,
`
`2, 5-8, 10, 33, and 35, 37 and 38. The claim charts below specify where each
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`claim element is found in Liu.
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`
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`U.S. Patent No. 8,156,944
`1[a]. 5 An aerosol electronic cigarette,
`comprising:
`
`Liu
`Liu discloses an aerosol electronic
`cigarette. See, e.g., Fig. 2; p. 2, ll. 6-9.
`
`
`
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`5 The limitations of certain claims were numbered (e.g., 1[a], 1[b], 1[c], etc.) so that these limitations can be
`referenced in other claims.
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`U.S. Patent No. 8,156,944
`1[b]. a battery assembly,
`
`Liu
`Liu discloses a battery assembly. See,
`e.g., Fig. 2; p. 5, ll. 31-32 (“a cylindrical
`battery chamber 12 for housing a
`battery 14).
`
`1[c]. an atomizer assembly,
`
`
`Liu discloses an atomizer assembly 24.
`See, e.g., Fig. 2; p. 6, ll. 15-17
`(“cylindrical vapouriser heater
`assembly”); p. 8, ll. 5-6.
`
`
`1[d]. a cigarette-solution storage area, Liu discloses a cigarette-solution
`storage area 18. See, e.g., Fig. 2; p. 5,
`ll. 9-10, (“the simulated cigarette of the
`example is provided with a container
`for a liquid mixture”); p. 6, ll. 2-4, 9-15,
`29-30 (“a cylindrical liquid container 18
`separated from the battery chamber by a
`dividing wall 20. … that may contain
`any suitable chemicals, and may be
`provided with or without nicotine.”).
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`U.S. Patent No. 8,156,944
`1[e]. and a hollow shell having a
`mouthpiece:
`
`Liu
`Liu discloses a hollow shell 6 having a
`mouthpiece 4. See, e.g., Fig. 1; p. 5, ll.
`7 (“mouthpiece end”), 14-15 (“outer
`casing”).
`
`1[f].
`the battery assembly connects
`with the atomizer assembly, and both
`are located in the shell;
`
`Liu discloses a battery 14 that connects
`with the atomizer assembly to provide
`current to the heater 26, and both are
`located in the shell. See, e.g., Figs. 2
`and 7; p. 3, ll. 24-27; p.5, ll. 11-12.
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