Paper No. ___
`Filed: April 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 No. IPR2016-01268
`Patent No. 8,365,742
`
`
`
`
`
`______________________________________________________________
`
`PATENT OWNER OPPOSITION TO PETITION FOR
`INTER PARTES REVIEW
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`Case IPR2016-01268
`Patent No. 8,365,742
`
`I.
`II.
`
`V.
`
`INTRODUCTION .......................................................................................... 1 
`BACKGROUND ............................................................................................ 4 
`A.
`The ’742 Patent and Claims ................................................................. 4 
`B.
`Procedural Background ........................................................................ 7 
`III. A PERSON OF ORDINARY SKILL IN THE ART ..................................... 7 
`IV. CLAIM CONSTRUCTION ........................................................................... 8 
`A.
`“supported by” ...................................................................................... 8 
`CLAIMS 2 AND 3 ARE PATENTABLE .................................................... 11 
`A.
`Claim 2 is Not Obvious Over Hon ’043 in View of Whittemore ...... 12 
`1.
`Hon ’043 .................................................................................. 12 
`2. Whittemore ............................................................................... 17 
`3.
`Independent Claim 2 ................................................................ 18 
`a.
`Hon ’043 does not teach or suggest a “porous
`component supported by a frame” ................................. 18 
`(i)
`Hon ’043’s atomization cavity wall does not
`support the porous body under the broadest
`reasonable interpretation of the term “supported
`by” ............................................................................. 19 
`(ii) Hon ’043’s atomization cavity wall does not
`prevent axial displacement of the porous body ......... 20 
`(iii) Hon ’043’s atomization cavity wall does not
`prevent the porous body from deforming ................. 25 
`(iv) Hon ’043’s atomization cavity wall does not
`provide radial support during pressure increases ...... 31 
`(v) Hon ’043’s atomization cavity wall does not
`provide “further support” in the area of the
`bulge .......................................................................... 42 
`The combination of Hon ’043 and Whittemore
`does not teach or suggest “a heating wire wound
`on a part of the porous component” .............................. 43 
`
`b.
`
`
`
`
`-i-
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`

`

`4.
`
`B.
`
`Case IPR2016-01268
`Patent No. 8,365,742
`A Skilled Person Would Not Have Combined Hon ’043
`With Whittemore ...................................................................... 45 
`Claim 3 Is Not Obvious Over Hon ’043 in View of Whittemore ...... 53 
`1.
`Independent Claim 3 ................................................................ 53 
`a.
`Hon ’043 combined with Whittemore does not
`teach or suggest “a heating wire wound on a part
`of the porous component which is substantially
`aligned with the run-through hole” ................................ 54 
`The combination of Hon ’043 and Whittemore
`does not teach or suggest placing the “porous
`component between the frame and the outlet” .............. 54 
`A Skilled Person Would Not Have Combined Hon ’043
`With Whittemore ...................................................................... 59 
`VI. CONCLUSION ............................................................................................. 59 
`CERTIFICATE OF COMPLIANCE ...................................................................... 60 
`
`b.
`
`2.
`
`
`
`
`-ii-
`
`

`

`TABLE OF AUTHORITIES
`
`Case IPR2016-01268
`Patent No. 8,365,742
`
`
`
`CASES
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 12
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) .......................................................................... 53
`
`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc.,
`725 F.3d 1341 (Fed. Cir. 2013) .......................................................................... 12
`
`Google, Inc. v. Network-1 Techs., Inc.,
`IPR2015-00345 (PTAB June 23, 2015) (Ex. 2026) ........................................... 19
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 12
`
`In re Ratti,
`270 F.2d 810 (C.C.P.A. 1959) ............................................................................ 53
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 11, 12
`
`LG Display Co., Ltd. v. Delaware Display Group, LLC,
`IPR2014-01359 (PTAB Mar. 2, 2015) (Ex. 2027) ............................................. 19
`
`STATUTES
`
`35 U.S.C. § 103 ........................................................................................................ 11
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.100 ..................................................................................................... 8
`
`37 C.F.R. § 42.104(b)(3) .......................................................................................... 19
`
`MPEP 2143.01(VI) .................................................................................................. 53
`
`iii
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`

`

`Case IPR2016-01268
`Patent No. 8,365,742
`
`LIST OF EXHIBITS
`
`Petitioner’s Exhibits
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Pat. No. 8,365,742 to Lik Hon
`
`Ex. 1002
`
`Chinese Pat. No. 2719043Y to Lik Hon
`
`Ex. 1003
`
`Certified English translation of Chinese Pat. No. 2719043Y to Lik
`Hon
`
`Ex. 1004 U.S. Pat. No. 2,057,353 to C. L. Whittemore, Jr
`
`Ex. 1005 Application Data Sheet of April 5, 2011 Filed in U.S. Pat. Appl. No.
`13/079,937
`
`Ex. 1006
`
`Preliminary Amendment of April 5, 2011 Filed in U.S. Pat. Appl.
`No. 13/079,937
`
`Ex. 1007 Non-Final Office Action of July 19, 2012 in U.S. Pat. Appl. No.
`13/079,937
`
`Ex. 1008 Amendment of August 3, 2012 in U.S. Pat. Appl. No. 13/079,937
`
`Ex. 1009
`
`PCT Pub. No. WO2007131449
`
`Ex. 1010
`
`English translation of PCT Pub. No. WO2007131449
`
`Ex. 1011 Board’s Decision Denying Institution in IPR2015-00859
`
`Ex. 1012
`
`Patent Owner’s Preliminary Response to Petition for IPR of U.S.
`Pat. No. 8,365,742 in IPR2015-00859
`
`Ex. 1013
`
`Petition for IPR of U.S. Pat. No. 8,365,742 in IPR2015-00859
`
`Ex. 1014 Board's Order Dismissing Petition IPR2015-01587
`
`Ex. 1015 Declaration of Dr. Robert Sturges
`
`
`
`iv
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`

`

`Case IPR2016-01268
`Patent No. 8,365,742
`
`Ex. 1016 Rohsenow, “Heat, Mass, And Momentum Transfer”
`
`Ex. 1017 WO 2005/099494, which is the PCT application equivalent of Hon
`(CN 2719043) (“Hon ’494”)
`
`Ex. 1018 Certified English translation of WO 2005/099494 pursuant to 37
`C.F.R. 42.63(b)
`
`Ex. 1019 Updated translator declaration attached to the Certified English
`translation of Chinese Pat. No. 2719043Y to Lik Hon that was
`previously submitted as Exhibit 1003 submitted in accordance with
`PTAB Order in Paper 10
`
`Ex. 1020
`
`Supplemental Declaration of Dr. Robert H. Sturges submitted in
`accordance with PTAB Order in Paper 21
`
`Ex. 1021 Declaration of Huo Gejun submitted in accordance with PTAB
`Order in Paper 21
`
`
`
`
`
`
`
`-v-
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`

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`Case IPR2016-01268
`Patent No. 8,365,742
`
`Patent Owner’s Exhibits
`
`Exhibit
`
`Description
`
`Ex. 2001 Declaration of Richard Meyst
`
`Ex. 2002
`
`RESERVED
`
`Ex. 2003
`
`RESERVED
`
`Ex. 2004
`
`Summary of Examiner Interview of 08/14/2012 Interview in U.S.
`Patent Application No. 13/079,937 issued as U.S. Patent No.
`8,365,742
`
`Ex. 2005
`
`Robinson U.S. Patent No. 1,775,947
`
`Ex. 2006
`
`Counts U.S. Patent No. 5,144,962 (“Counts IV”)
`
`Ex. 2007
`
`Susa EP Patent No. 0 845 220B1
`
`Ex. 2008
`
`Statement of Related Applications filed 12/22/2015 in U.S. Patent
`Application No. 13/740,011
`
`RESERVED
`Ex. 2009
`Ex. 2010 Notice of Allowance dated 6/21/2016 in U.S. Patent Application
`No. 13/740,011
`
`Ex. 2011
`
`Statement of Related Applications filed 4/3/2014 in U.S. Patent
`Application No. 14/244,376, issued as U.S. Patent No. 9,326,548
`
`Ex. 2012
`
`Examiner Interview Summary of 12/1/2015 Interview in U.S. Patent
`Application No. 14/244,376, issued as U.S. Patent No. 9,326,548
`
`Ex. 2013
`
`Statement of Related Applications filed 1/13/2016 in U.S. Patent
`Application No. 14/244,376, issued as U.S. Patent No. 9,326,548
`Ex. 2014 Notice of Allowance dated 3/15/2016 in U.S. Patent Application
`No. 14/244,376, issued as U.S. Patent No. 9,326,548
`
`
`
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`Case IPR2016-01268
`Patent No. 8,365,742
`
`Ex. 2015
`
`Second Declaration of Richard Meyst
`
`Ex. 2016 Deposition Transcript of Robert Sturges, March 8, 2017
`
`Ex. 2017 New Oxford American Dictionary, 2001, selected pages
`Ex. 2018 Xi, Zhengping et al., “Progress of Application Researches of Porous
`Fiber Metals,” Materials, Vol. 4, pp. 816-824, April 19, 2011
`
`Ex. 2019
`
`Choe, Heeman et al., “Mechanical properties of oxidation-resistant
`Ni-Cr foams,” Materials Science and Engineering A384, pp. 184-
`193, May 2004
`
`Ex. 2020
`
`Third Party Response to Amendment filed February 27, 2013 in
`Reexamination No. 95/002,235
`
`Ex. 2021
`
`Ex. 2022
`
`Ex. 2023
`
`CB Distributors, Inc. and DR Distributors, LLC v. Ruyan
`Investment (Holdings) Limited, IPR2013-00387, Paper 1, Petition
`for Inter Partes Review of Patent No 8,156,944, June 27, 2013
`
`CB Distributors, Inc. and DR Distributors, LLC v. Ruyan
`Investment (Holdings) Limited, IPR2013-00387, Ex. 1017, Office
`Action Response filed January 28, 2013 in Reexam 95/002,235
`
`Kinetic Tech., Inc. v. Skyworks Solutions, Inc., IPR2014-00529,
`Paper 8, Decision Denying Institution of Inter Partes Review (PTAB
`Sept. 23, 2014)
`
`Ex. 2024
`
`Fluent 6.3 Users Guide, Fluent, Inc., Lebanon, NH, September 2006
`(excerpt)
`
`Ex. 2025
`
`Su, Wei-Fang, “Principles of Polymer Design and Synthesis,”
`Springer, Heidelberg, 2013, Chapter 2 - Polymer Size and Polymer
`Solutions
`Ex. 2026 Google Inc. v. Network-1 Technologies, Inc., IPR2015-00345, Paper
`6, Decision Instituting Inter Partes Review (PTAB June 23, 2015)
`
`
`
`
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`Case IPR2016-01268
`Patent No. 8,365,742
`
`Ex. 2027
`
`LG Display Co., Ltd., v. Delaware Display Group LLC, IPR2014-
`01359, Paper 12, Decision Denying Institution of Inter Partes
`Review (PTAB Mar. 2, 2015)
`
`Ex. 2028 Declaration of Amy Candeloro
`
`
`
`
`
`-viii-
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`

`Case IPR2016-01268
`Patent No. 8,365,742
`
`I.
`
`INTRODUCTION
`
`In instituting review, the Board found an issue of material fact between the
`
`testimony of the parties’ experts. After cross-examination, it is now clear that
`
`Petitioner’s expert’s analysis is driven by hindsight and his testimony is not
`
`credible.
`
`Petitioner filed this Petition and two expert declarations1 claiming that the
`
`claimed “frame” that “support[s]” the “porous component” is disclosed in Hon
`
`’043 by a cavity wall that supposedly prevents “axial displacement” of a porous
`
`body. The Board relied on that testimony as creating a dispute sufficient to
`
`institute review. Now, Petitioner’s expert has changed his testimony. When cross-
`
`examined about how Hon ’043’s cavity wall could prevent axial displacement of
`
`the porous body when the wall is completely within the porous body, Petitioner’s
`
`expert testified that the cavity wall is “not to prevent the axial displacement,” but
`
`to “to prevent the porous body from deforming” during assembly of the electronic
`
`cigarette. Sturges 3/8/2017 Dep. Tr., 117:20-118:4 (Ex. 2016). Petitioner’s brief
`
`and two expert declarations say nothing about deformation prevention. Nor does
`
`the prior art. The reason deformation was never mentioned is because deformation
`
`1 Ex. 1015 filed with the Petition and Ex. 1020 filed after institution attempting to
`
`address Patent Owner’s Objections to Petitioner’s Evidence (Paper 16).
`
`
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`Case IPR2016-01268
`Patent No. 8,365,742
`was never a problem until Petitioner’s expert needed it as a basis for his hindsight-
`
`driven opinion.
`
`The Board also relied on Petitioner’s expert’s claim that Hon ’043’s cavity
`
`wall provides “radial support” against backpressure. Petitioner’s expert claims that
`
`the “inadvertent action” of “blowing on the mouthpiece” would cause the porous
`
`body to “impinge upon and/or destroy the atomization cavity” without the
`
`purported radial support. Petitioner’s “radial support” theory is based on a
`
`misunderstanding of airflow in Hon ’043. Hon ’043 discloses an atomizer where
`
`atomized droplets are formed in a cavity surrounded by a liquid-filled porous body.
`
`Ex. 1003 at 9-11, Fig. 6. Petitioner’s expert believes there is no exit hole for
`
`droplets to escape the cavity to be inhaled by the user “other than through the
`
`porous material.” Ex. 2016, 75:2-6. He even admits that “there would be no need
`
`for support against the pressure if there were a hypothetical hole in the end.” Ex.
`
`2016, 140:24-141:11. But if Petitioner’s expert is correct—he is not—the
`
`atomized droplets would be “reabsorbed” as they passed through the liquid-filled
`
`porous body and never reach the user. Ex. 1003 at 11. So, to explain how
`
`atomized droplets pass through the liquid-filled porous body without being
`
`reabsorbed, Petitioner’s expert relies on the mythical premise that liquid in the
`
`porous body will simply “[m]ove…to one side” so that atomized droplets can
`
`
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`-2-
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`Case IPR2016-01268
`Patent No. 8,365,742
`escape. Ex. 2016, 104:12-19. Nonsense. As Patent Owner’s expert testifies, one
`
`skilled in the art would understand that the atomized droplets Hon ’043 exit the
`
`atomization cavity through an opening on one end—the droplets do not pass
`
`through the liquid-filled porous body.
`
`Indeed, Hon ’043 has been considered by the Patent Office at least twice
`
`before, and no one understood airflow to occur in the manner Petitioner’s expert
`
`now alleges. In the prior proceedings, all parties involved understood the prior art
`
`atomizer had a hole through which atomized droplets escape. Petitioner’s
`
`allegation that Hon ’043’s cavity wall provides “radial support” is based on its
`
`incorrect understanding of airflow in Hon ’043.
`
`That Petitioner’s expert’s opinion is driven by hindsight is also evident from
`
`the alleged motivation to combine Hon ’043 with Whittemore. Hon ’043 discloses
`
`an “ejection hole” atomizer where a high speed stream of air drives liquid through
`
`a small hole, producing atomized droplets. Those droplets can be “further
`
`atomized” by an optional heating element. Petitioner’s expert testifies that the
`
`ejection-heater method of atomization is thermally inefficient because, according
`
`to Petitioner’s expert, most of the ejected droplets will not come into direct contact
`
`with the heating element. So, to meet the claimed “heating wire wound on a part
`
`of the porous component” limitation, he proposes a modification where the
`
`
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`-3-
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`Case IPR2016-01268
`Patent No. 8,365,742
`optional heating element is wound on a wick because, again according to
`
`Petitioner’s expert, that would be a more efficient method of atomization. Yet, the
`
`proposed combination retains the ejection holes. So, thermally inefficient or not,
`
`ejected droplets will follow the same path in his proposed combination as they do
`
`in the prior art. As such, there is no reason to keep the ejection holes in the
`
`proposed combination other than to meet another limitation, the claimed “run-
`
`through hole.” Petitioner’s proposed combination is classic hindsight.
`
`For those and other reasons set forth herein, Petitioner has not shown
`
`unpatentability of claims 2 and 3.
`
`II. BACKGROUND
`
`A. The ’742 Patent and Claims
`
`The ’742 Patent relates to an “aerosol electronic cigarette” directed toward
`
`satisfying the “smoking habit” without the harmful effects of tar. Ex. 1001, Title,
`
`1:5-24. The ’742 Patent provides particular improvements over the prior art in
`
`“atomizing efficiency” and “ideal aerosol effects.” Ex. 1001, 1:21-24. The ’742
`
`Patent focuses on this problem by addressing how air flows through the device in
`
`combination with how liquid is atomized by a heating element. Ex. 2015 ¶¶11-12;
`
`see Paper 8 at 3-5.
`
`
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`Case IPR2016-01268
`Patent No. 8,365,742
`Figure 1 (below) shows an embodiment of the claimed device. Air flows
`
`into the device through inlets a1 and enters the atomizer 8. Ex. 1001, 4:14-17.
`
`The atomizer atomizes liquid into an aerosol or vapor, which flows through shell b
`
`and out the air channel b1. Ex. 1001, 5:18-23.
`
`
`
`One embodiment of the atomizer 8 is depicted below in Figures 17 (front
`
`view) and 18 (side view). Ex. 1001, 5:42-52. The porous component 81 transfers
`
`liquid from the liquid storage 9 via capillary impregnation. Ex. 1001, 4:36-40.
`
`The porous component 81 is set on the frame 82, and wound with heating wire 83
`
`on the part that is in the path of air flowing through the run-through hole 821. Ex.
`
`1001, 5:42-52.
`
`
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`-5-
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`Case IPR2016-01268
`Patent No. 8,365,742
`
`
`
`Improved airflow, atomizing efficiency, and aerosol effects are specific
`
`improvements over the prior art cited here. Ex. 2015 ¶¶47-49. The improved
`
`airflow is attributable to the claimed “run-through hole,” which can be throttled
`
`with a “restriction component,” allowing the electronic cigarette to more closely
`
`approximate the “draw” of a real cigarette than Hon ’043’s ejection hole atomizer.
`
`Ex. 2015 ¶48; Ex. 1001, 4:65-5:8, Fig. 10. The claimed heating wire wound on a
`
`porous component that is either aligned with the run-through hole or in the path of
`
`air is simpler and produces a better aerosol than Hon ’043’s ejection holes and
`
`piezoelectric methods. Ex. 2015 ¶47. The heating wire wound on a porous
`
`component is also cheaper than Hon ’043’s piezoelectric elements, and produces a
`
`more uniform vapor. Ex. 2015 ¶49.
`
`Independent claims 2 and 3 each require an atomizer including a heating
`
`wire wound on part of a porous component. Claim 2 further requires that the
`
`porous component be “supported by a frame having a run-through hole,” while
`
`
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`Case IPR2016-01268
`Patent No. 8,365,742
`claim 3 requires “a frame having a run-through hole.” The claimed heating wire is
`
`either “in the path of air flowing through the run-through hole” or “substantially
`
`aligned with the run-through hole.”
`
`B.
`
`Procedural Background
`
`The Board instituted review of a single ground, whether claims 2 and 3
`
`would have been obvious over Chinese Pat. No. 2719043Y to Lik Hon (“Hon
`
`’043”) (Ex. 1002 and English translation Ex. 1003) in view of U.S. Pat. No.
`
`2,057,353 to C. L. Whittemore, Jr. (“Whittemore”) (Ex. 1004). Claim 1 is not
`
`subject to IPR. Paper 10 at 15.
`
`In its decision to institute review, the Board found there were issues of
`
`material fact created by testimonial evidence. Paper 10 at 13-14. Patent Owner
`
`now files this Opposition along with an additional expert declaration and the
`
`benefit of having cross-examined Petitioner’s expert. Ex. 2015; Ex. 2016.
`
`III. A PERSON OF ORDINARY SKILL IN THE ART
`A person of ordinary skill in the art would be a person with a mechanical or
`
`electrical engineering degree, or similar technical degree, or equivalent work
`
`experience, and 5-10 years of experience working in the area of electromechanical
`
`devices, including medical devices. Ex. 2015 ¶22. Petitioner defines a person of
`
`ordinary skill in the art as someone with at least the equivalent of a Bachelor’s
`
`
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`Case IPR2016-01268
`Patent No. 8,365,742
`degree in electrical engineering, mechanical engineering, or biomedical
`
`engineering or related fields, along with at least 5 years of experience designing
`
`electromechanical devices, including those involving circuits, fluid mechanics and
`
`heat transfer. Paper 2 at 11; Ex. 1015 ¶¶29-30. Under either definition, claims 2
`
`and 3 of the ’742 Patent are patentable.
`
`IV. CLAIM CONSTRUCTION
`In IPR proceedings, claim terms are given their broadest reasonable
`
`construction in light of the specification. 37 C.F.R. § 42.100(b). Petitioner
`
`proposed constructions for two claim terms: “frame” and “porous component
`
`substantially surrounded by the liquid storage component.” Paper 2 at 11-12. In
`
`its decision to institute review, the Board determined that neither term requires
`
`construction. Paper 10 at 8. Although Patent Owner disagrees with Petitioner’s
`
`proposed constructions, Patent Owner agrees with the Board that neither term
`
`needs to be construed here. Below, Patent Owner addresses the additional term
`
`“supported by.”
`
`A.
`
`“supported by”
`
`Patent Owner’s Construction
`“having all or part of its weight borne
`by: held up by”
`
`Petitioner’s Construction
`None proposed
`
`
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`-8-
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`Case IPR2016-01268
`Patent No. 8,365,742
`In a prior decision declining to institute review of the ’742 patent, the Board
`
`found that the ordinary meaning of “support” is “bear all or part of the weight of:
`
`hold up.” Ex. 1011 at 15-16.
`
`Claims 1 and 2 recite a “porous component [is] supported by [a/the] frame.”
`
`In both claims 1 and 2, the “frame” supporting the porous component has a “run-
`
`through hole.” In claim 1, part of the porous component is “substantially aligned”
`
`with the run-through hole, and in claim 2 it is “in the path of air flowing through
`
`the run-through hole.” Thus, in both claims 1 and 2, the frame holds at least part
`
`of the porous component in a particular location: either “aligned with” the run-
`
`through hole or “in the path of air.”
`
`Although the ’742 patent’s specification does not use the term “supported
`
`by,” it refers to “supports (841)” in Figures 13-16. These supports “lie against the
`
`interior wall of the shell (a),” and thus “suspend[] the cylinder (821)” within the
`
`shell to hold up the cylinder and ensure it remains in its desired position within the
`
`device. Ex. 1001, 5:24-30. The “supports” (red) and the cylinder (blue) are
`
`depicted below in annotated Figures 13 and 16.
`
`
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`Case IPR2016-01268
`Patent No. 8,365,742
`
`
`
`The “supports” in the specification bear all or part of the weight of, or hold
`
`up, the cylinder 821. Similarly, Figures 17 and 18 depict porous component 81
`
`“set on” frame 82, which is bearing all or part of the weight of, or holding up, the
`
`porous component. Ex. 1001, 5:42-46. The frame 82 (red) supporting the porous
`
`component 81(blue) is depicted below in annotated figures 17 and 18.
`
`
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`Case IPR2016-01268
`Patent No. 8,365,742
`
`
`
`Thus, when the claims recite “supported by,” they are using the plain and
`
`ordinary meaning of “support,” which is to “bear all or part of the weight of: hold
`
`up.” Ex. 2015 ¶¶21-30.
`
`V. CLAIMS 2 AND 3 ARE PATENTABLE
`Under pre-AIA 35 U.S.C. § 103, a patent may not be obtained “if the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter as a whole would have been made obvious at the time
`
`the invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains.” “A patent composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007).
`
`To prove obviousness, Petitioner must show that “there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.” Id. at
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`418.
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`In addition, the obviousness inquiry must avoid “even a hint of hindsight.”
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`Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341, 1352
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`(Fed. Cir. 2013). “Obviousness ‘cannot be based on the hindsight combination of
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`components selectively culled from the prior art to fit the parameters of the
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`patented invention.’” Id. (citations omitted).
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`“[R]ejections on obviousness grounds cannot be sustained by mere
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`conclusory statements; instead, there must be some articulated reasoning with
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`some rational underpinning to support the legal conclusion of obviousness.” KSR,
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`550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). That
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`proposition applies to expert testimony regarding obviousness. See, e.g.,
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`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1327 (Fed.
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`Cir. 2012) (rejecting “conclusory and factually unsupported” expert testimony
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`regarding obviousness).
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`A. Claim 2 is Not Obvious Over Hon ’043 in View of Whittemore
`Petitioner has not met its burden of proving claim 2 is obvious.
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`1. Hon ’043
`Hon ’043 was cited and considered during prosecution of the ’742 Patent.
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`Ex. 1001, References Cited. Hon ’043 discloses several embodiments of an
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`electronic cigarette. Hon ’043 describes, among other things, the device’s
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`atomizer and liquid supply. Liquid-supplying bottle 11 includes a solution storage
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`porous body 28, which holds the liquid in a porous structure such as foam or fiber.
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`Ex. 1003 at 9-10. Atomizer 9 includes a porous body 27 that makes contact with
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`solution storage porous body 28 inside liquid-supplying bottle 11, allowing liquid
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`to move from the storage body to the atomizer via capillary action. Id. at 9, 11.
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`Atomizer 9 also includes atomization cavity 10, which is surrounded by porous
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`body 27. Id. at 9. Atomizer 9 (red) and liquid-supplying bottle 11 (blue) are
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`shown in annotated Figure 1.
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`Air flows into the device through inlet 4 and enters the atomization cavity 10
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`inside atomizer 9. Id. at 10-11. Inside atomization cavity 10, liquid is atomized
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`into fine droplets, which flow out aerosol passage 12, gas vent 17, and mouthpiece
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`15 for inhalation. Id.
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`Liquid is atomized in the cavity in a number of ways. First, the high speed
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`stream of air passing through ejection holes 24 or 30 causes liquid to eject into
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`cavity 10 in the form of droplets. Id. at 10. Those droplets would be considered
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`atomized particles. Ex. 2017 (“atomize”: “convert (a substance) into very fine
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`particles or droplets”); see Ex. 2024 at 22-47 (“The plain-orifice is the most
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`common type of atomizer and the most simply made.”). Second, the atomizer may
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`include a piezoelectric element 23 on its outside surface which atomizes the liquid
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`via ultrasonic vibrations. Ex. 1003 at 10-11. Third, the airstream may be focused
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`directly at a piezoelectric element 35 inside cavity 10. Id. at 11. And fourth, a
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`heating element 26, which may be in the form of a “wire” or “sheet,” can be
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`included in cavity 10. Id. at 9-11.
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`The heating element 26 and both piezoelectric elements 23 and 35 are
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`optional. Ex. 1003 at 11. If included, the heating element “further atomize[s]” the
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`ejected liquid droplets via direct contact between the droplets and the heater. Hon
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`’043 teaches that the ejection holes “focus” the ejected droplets at the atomizing
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`element inside the cavity. Ex. 1003 at 11. The heating element 26 is thus aligned
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`with the ejection holes so that the ejected droplets are aimed at the heater to be
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`“further atomized.” Ex. 2015 ¶¶98-101. Atomization cavity 10 (green),
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`piezoelectric element 23 (pink), piezoelectric element 35 (pink), heating element
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`26 (red line), ejection holes 24 (purple), and porous body 27 (red circle) are
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`depicted below in annotated Figures 6 and 8.
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`The wall 25 of atomization cavity 10 (shown above in blue) is made of
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`aluminum oxide or ceramic. Id. at 9. An overflow hole 29 is included in the
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`atomization cavity wall 25. Id. at 11. After atomization, droplets that are too large
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`for inhalation stick to the cavity wall 25 and are reabsorbed into porous body 27
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`through the overflow hole 29. Id. Overflow holes 29 (orange) in cavity wall 25
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`(blue) are depicted below in annotated Figure 7, along with ejection holes 30
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`(purple) and cavity 10 (green).
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`Patent No. 8,365,742
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`The operation of Hon ’043’s atomizer according to Ex. 1003 at 10-11 is
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`illustrated below. Ex. 1003 at 10-11; Ex. 2015 ¶¶36-40.
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`2. Whittemore
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`Whittemore was also cited and considered during prosecution of the ’742
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`Patent. Ex. 1001, References Cited. Whittemore discloses a “vaporizing unit.”
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`Ex. 1004. The patent issued in 1936. As depicted in Figure 2 below, the device
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`looks like a light bulb. Whittemore discloses wick D inside glass vessel A that
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`holds liquid medicament x. Id., 1:19-28. Liquid is carried up the wick D via
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`capillary action, where it is vaporized by heat from filament 3. Id., 1:50-2:8.
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`Independent Claim 2
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`3.
`Independent claim 2 recites an electronic cigarette with an “atomizer
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`assembly including a porous component supported by a frame having a run-
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`through hole” and “a heating wire wound on a part of the porous component in the
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`path of air flowing through the run-through hole.” These limitations are not
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`disclosed or suggested by the combination of Hon ’043 and Whittemore.
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`a. Hon ’043 does not teach or suggest a “porous
`component supported by a frame”
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`Petitioner asserts that Hon ’043’s cavity wall 25 is a “frame” supporting
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`porous body 27. Petition at 4, 15, 16; Ex. 1015 ¶¶44-48. Petitioner does not rely
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`on Whittemore for this limitation. In its decision to institute review, the Board
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`found an issue of material fact between the testimonial evidence of Petitioner’s
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`expert, Dr. Robert Sturges, and Patent Owner’s expert, Richard Meyst on that
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`issue. Paper 10 at 13-14.
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`(i) Hon ’043’s atomization cavity wall does not
`support the porous body under the broadest
`reasonable interpretation of the term
`“supported by”
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`“Petitioner has the burden of showing in the Petition ‘[h]ow the challenged
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`claim is to be construed.’” LG Display Co., Ltd. v. Delaware Display Group, LLC,
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`IPR2014-01359 at 7 (Ex. 2027) (emphasis added) (alteration in original); 37 C.F.R.
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`§ 42.104(b)(3). A Petition that does not set forth a “specific construction” relies on
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`the “plain, ordinary meaning of claim terms.” Google, Inc. v. Network-1 Techs.,
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`Inc., IPR2015-00345 at 9 (Ex. 2026). Petitioner here did not propose a specific
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`construction for the claim term “supported by.” See Paper 2 at 11-12.
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`The Board previously found the ordinary meaning of “support” is “bear all
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`or part of the weight of: hold up.” Ex. 1011at 15-16. This is the broadest
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`reasonable interpretation and is consistent with the patent’s claims and
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`specification. See supra, section IV.A; Ex. 2015 ¶¶21-30. Dr. Sturges admits he
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`applied a broader interpretation. Ex. 2016, 38:21-25. His interpretation is “to
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`maintain or define the shape of the porous component with respect to applied
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`forces.” Id. 37:11-18. His interpretation of the term “supported by” is inconsistent
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`with the ’742 Patent, and includes “prevent[ing] axial displacement of the porous
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`body,” “radial support when the low pressure area surrounding the atomizer is
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`raised due to blowing on the mouthpiece,” and some form of “further support.”
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`Ex. 1015 ¶¶45-47; Petition at 15-16. Dr. Sturges also opines that the term includes
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`“prevent[ing] the porous body from deforming.” Ex. 2016, 117:20-118:4. Dr.
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`Sturges’s interpretation is unreasonably broad and driven by hindsight.
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`The Board previously found that Hon ’043 does not disclose that the cavity
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`wall “is bearing the weight of, or holding up” the porous body. Ex. 1011 at 16.
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`The Board’s previous finding was correct—Hon ’043’s cavity wall 25 is entirely
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`inside of porous body 27, and thus cannot bear its weight or hold it up. Ex. 2015
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`¶50. But even under Dr. Sturges’ amorphous and unreasonably broad
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`interpretation, Hon ’043 does not disclose a “porous component supported by a
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`frame.”
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`(ii) Hon ’043’s atomization cavity wall does not
`prevent axial