`571-272-7822
`
`Paper 9
`Entered: September 16, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMR PRODUCTS LLC,
`
`Petitioner,
`
`V.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`
`Case IPR2015-00859
`
`Patent 8,365,742 B2
`
`Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAI\/IARA, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`R.J. Reynolds Vapor
`IPR2016-01268
`
`R.J. Reynolds Vapor v. Fontem
`Exhibit 1011-00001
`
`
`
`IPR20l5-00859
`
`Patent 8,365,742 B2
`
`I. INTRODUCTION
`
`VMR Products LLC (“Petitioner”) filed a Petition (“Pet”) to institute
`
`an interpartes review of claims 1-3 of U.S. Patent No. 8,365,742 B2 (“the
`
`’742 patent,” Ex. 1001). Paper 2. Fontem Holdings 1 B.V. (“Patent
`
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 5. We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has not established a reasonable likelihood of
`
`prevailing with respect to claims 1-3 of the ’742 patent. Accordingly, we
`
`deny the Petition, and do not institute an inter partes review.
`
`A.
`
`Related Proceedings
`
`Petitioner indicates that the ’742 patent is asserted in numerous cases
`
`pending in the Central District of California, including Fontem Ventures
`
`B. V V. VMR Products LLC, Case No. 2: 14-cv-01655 (“the District Court
`
`Action”). Pet. 1-2. Patent Owner states that the ’742 patent is also the
`
`subject of IPR2015-01587, filed by JT International SA on July 14, 2015.
`
`Paper 7, 1.
`
`B.
`
`The ’742 Patent (Ex. I001)
`
`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-forrned shell. Ex. 1001,
`
`Abstract. According to the ’742 patent, prior art devices had various
`
`disadvantages, including low atomizing efficiency, being structurally
`
`complicated, and not providing ideal aerosol effects. Id. at 1:21-24.
`
`Exhibit 1011-00002
`
`
`
`IPR20l5-00859
`
`Patent 8,365,742 B2
`
`Figure 1 of the ’742 patent is reproduced below:
`
`4515:1178
`
`
`
`
`
`
`
`-‘$=‘33$*7*33t‘$3*.'~<'*23’$7'3‘35$‘:1
`
`£*1*t+t<t¢*I+‘:+’:+2*2+1+’+‘ “=51
`52.2.2.2.2.2.2.2.t.2.2.~:2:3
`
`
`Figure 1
`
`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 al. 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 bl is located in the center on the
`
`surface of one end of cigarette shell holder “b,” and extends inward. Id. at
`
`3:59-62.
`
`Figures 5, 6, and 7 of the ’742 patent are reproduced below:
`
`Exhibit 1011-00003
`
`
`
`IPR20l5-00859
`
`Patent 8,365,742 B2
`
`323
`
`821
`
`32
`
`/ 322
`
`Figure 6
`
`
`
`:§:§z+:§:§:§:_‘o;g_;‘
`I-Tr’-i-!:.rA.vnn1.r:.v:x‘e",*
`
`
`
`
`
`
`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
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`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
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`82 includes heating wire 822 wound on the wall of cylinder 821. Id. at
`
`3:28-30. Porous component 81 contains run-through atomizing chamber
`
`811. Id. at 3:8-9. Heating rod 82 enters run-through atomizing chamber
`
`811, and the space between heating rod 82 and the interior wall of run-
`
`through atomizing chamber 811 creates negative pressure cavity 83. Id. at
`
`3:11-15. One end of porous component 81 fits with the cigarette bottle
`
`assembly, with protuberance 812 at the other end connecting to atomizing
`
`chamber 811 with run-through hole 813. Id. at 3: 16-19.
`
`C.
`
`Illustrative Claim
`
`Petitioner challenges claims 1-3 of the ’742 patent. Each of claims 1-
`
`3 is independent. Claim 1 is illustrative, and recites as follows:
`
`1.
`
`An aerosol electronic cigarette, comprising:
`
`4
`
`Exhibit 1011-00004
`
`
`
`IPR2015-00859
`
`Patent 8,365,742 B2
`
`a battery assembly, an atomizer assembly and a cigarette bottle
`assembly, and a shell
`that
`is hollow and integrally
`formed,
`
`the battery assembly electrically connected with the atomizer
`assembly, and both are located in the shell,
`
`the cigarette bottle assembly is detachably located in one end of
`the shell, and fits with the atomizer assembly inside of it;
`
`the shell has through-air-inlets,
`
`the atomizer assembly is an atomizer, which includes a porous
`component and a heating body,
`
`the heating body is a heating wire,
`
`the atomizer includes a frame,
`
`the porous component is supported by the frame,
`
`the heating wire is wound on the porous component,
`
`the frame has a run-through hole,
`
`a heating wire wound on a part of the porous component that is
`substantially aligned with the run-through hole, and with
`the porous component also positioned substantially
`within the cigarette bottle assembly.
`
`D.
`
`The Prior/lrt
`
`Petitioner relies on the following prior art references:
`
`Whittemore
`
`US 2,057,353
`
`Sept. 27, 1935
`
`1013
`
`Counts
`
`US 5,144,962
`
`Sept. 8, 1992
`
`1011
`
`Susa
`
`EP 0 845 220 A1
`
`June 3, 1998
`
`1010
`
`1012 Hon ’043
`
`Abhulimen
`
`WO 03/034847 A1
`
`May 1, 2003
`
`Chinese Patent No.
`CN 2719043 Y
`
`Aug. 24, 2005
`
`1004 and
`1005 (English
`translation
`
`Exhibit 1011-00005
`
`
`
`IPR20l5-00859
`
`Patent 8,365,742 B2
`
` Hon ’4941
`
`WO 2005/099494 A1 Oct. 27. 2005
`
`1006 and
`
`1007 (English
`translation
`
`E.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1-3 of the ’742 patent
`
`on the following grounds:
`
`Hon and Abhulimen
`
`Reference(s) Claims Challenged
`Wm
`§ lO3(a)
`
`§ W
`
`1 Hon ’494 is the PCT application equivalent of Hon ’O43. Pet. 15. When
`referring to Hon ’O43 in the Petition, Petitioner cites the English translation
`of Hon ’494 “because the translation [of Hon ’O43] does not have paragraph
`numbers or line numbers.” Id. at n. 2. Petitioner also uses Hon ’O43 and
`
`Hon ’494 interchangeably throughout the Petition. For clarity, we will refer
`to Hon ’494 and Hon ’O43 collectively as “Hon,” and we will cite to the
`English translation of Hon ’494 (EX. 1007) when referring to Hon.
`
`6
`
`Exhibit 1011-00006
`
`
`
`IPR20l5-00859
`
`Patent 8,365,742 B2
`
`A.
`
`Claim Interpretation
`
`II. ANALYSIS
`
`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.l00(b). For purposes of this
`
`Decision, based on the record before us, we make explicit the interpretation
`
`of the claim tenns “frame” and “porous component,” as set forth in claims
`
`1-3.
`
`I.
`
`“ rame ”
`
`Petitioner proposes that we construe “frame” to mean “rigid
`
`structure.” Pet. 8. In support of its construction, Petitioner relies on the
`
`district court’s ruling on claim construction in the District Court Action. Id.
`
`at 7-8 (citing Ex. 1014, 5-7). Patent Owner proposes that we construe the
`
`term to mean “a firm structure designed to hold up another component.”
`
`Prelim. Resp. 10. Patent Owner cites the Specification’s description of the
`
`fifth preferred embodiment, which includes a frame with a run-through hole
`
`on it, and a porous component set on the frame, in support of its
`
`construction. Id. at 10. (citing Ex. 1001. 5:42-47). According to Patent
`
`Owner, “[i]n the context of the ’742 patent, this is the better interpretation,
`
`particularly because ‘supported by’ means ‘held up.’” Id. at 11.
`
`Based on the record before us, we are persuaded that Petitioner’s
`
`interpretation is the broadest reasonable interpretation in light of the
`
`Specification. The only mention of “frame” in the Specification is in the
`
`discussion of the fifth preferred embodiment, where it states, with reference
`
`to Figures 17 and 18, that “the atomizer assembly is an atomizer (8), which
`
`includes a frame (82), the porous component is set on the frame (82),” and
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`Exhibit 1011-00007
`
`
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`IPR20l5-00859
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`Patent 8,365,742 B2
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`“[t]he frame (82) has a run-through hole (821) on it.” Ex. 1001, 5:42-47.
`
`That the porous component is set on the frame in one embodiment, however,
`
`is not enough to limit “frame” to a structure that is designed to hold up
`
`another component, as suggested by Patent Owner. The language of the
`
`claims further indicates that a frame need not necessarily “hold up another
`
`component.” Claims 1 and 2 require that the porous component be
`
`“supported by” the frame, but claim 3 only requires that there is “a porous
`
`component between the frame and the outlet.” Petitioner’s proposed
`
`interpretation of “frame” as “a rigid structure” is consistent with the use of
`
`the term in the Specification and the claims.
`
`For purposes of this Decision, consistent with the disclosures in the
`
`Specification and its ordinary meaning, we interpret “frame” to be “a rigid
`
`structure.”
`
`2.
`
`“porous component”
`
`Petitioner proposes that we construe “porous component” to mean “a
`
`component of the atomizer assembly in the electronic cigarette that includes
`
`pores and is permeable to liquid, such as cigarette solution from the cigarette
`
`solution storage area.” Pet. 7. In support of this construction, Petitioner
`
`relies on the Board’s interpretation of “porous component” in the Decision
`
`to Institute Inter Partes Review in IPR20l3-003 87, relating to U.S. Patent
`
`No. 8,156,944 (“the ’944 patent”), because “[t]he ’742 Patent is a divisional
`
`of the application that led to the ’944 Patent, and therefore both patents share
`
`the same specification.” Id.; see CB Distributors, Inc. V. Ruyan Investment
`
`(Holdings) Limited, Case IPR20l3-00387, slip op. at 11 (PTAB Dec. 30,
`
`2013) (Paper 7).
`
`Exhibit 1011-00008
`
`
`
`IPR20l5-00859
`
`Patent 8,365,742 B2
`
`Patent Owner proposes that we construe the term to mean “a
`
`component of the atomizer assembly having pores or interstices and
`
`providing for absorption or diffusion of liquid.” Prelim. Resp. 6-7. As
`
`support for this construction, Patent Owner states that the claims of the ’742
`
`patent include a number of recitations relating to the porous component,
`
`including that “the atomizer includes a porous component and a heating
`77 CC
`
`wire,
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`the porous component is supported by the atomizer frame having a
`77 CC
`
`run-through hole,
`
`the porous component is positioned substantially within
`
`the cigarette bottle assembly,” and “the porous component is substantially
`
`surrounded by the liquid storage component.” Id. at 7-8. Patent Owner also
`
`cites to the Specification’s statements that “the porous component provides
`
`‘liquid absorption and diffusion, and the ability to absorb liquid stored in the
`
`cigarette bottle assembly’ .
`
`.
`
`. [a]nd that it ‘absorbs the cigarette liquid from
`
`the perforated component for liquid storage.’” Id. at 8 (citing Ex. 1001,
`
`3:25-26, 66-67). According to Patent Owner, “Petitioner offers no analysis
`
`why [the construction from IPR20l3-003 87] is proper for the claims of the
`
`’742 patent,” because, “based upon the claims and the disclosure of the ’742
`
`patent, a porous component is something more than a component that simply
`
`has holes.” Id. at 8-9.
`
`Based on the record before us, we are persuaded that Petitioner’s
`
`proposed interpretation is the broadest reasonable interpretation in light of
`
`the Specification. Petitioner’s proposed interpretation is consistent with the
`
`Specification, which describes the porous component as being “made of
`
`foamed nickel, stainless steel fiber felt, macromolecular polymer foam or
`
`foamed ceramics, providing the remarkable capabilities in liquid absorption
`
`and diffusion, and the ability to absorb the liquid stored in the cigarette
`
`Exhibit 1011-00009
`
`
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`IPR20l5-00859
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`Patent 8,365,742 B2
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`bottle assembly.” Ex. 1001, 3:23-27. The Specification further states that
`
`the porous component “absorbs the cigarette liquid from the perforated
`
`component for liquid storage,” and, “[a]fter atomization, the big-diameter
`
`fine drips are re-absorbed by the porous component.” Id. at 4:25-27.
`
`Therefore, for purposes of this Decision and in accordance with the
`
`broadest reasonable interpretation in light of the Specification, we interpret
`
`“porous component” to mean “a component of the atomizer assembly in the
`
`electronic cigarette that includes pores and is permeable to liquid, such as
`
`cigarette solution from the cigarette solution storage area.”
`
`B.
`
`Obviousness over Hon and Susa
`
`Petitioner contends that claims 1-3 would have been obvious under 35
`
`U.S.C. § l03(a) over the combination of Hon and Susa. Pet. 15-32.
`
`Petitioner relies on a Declaration by Gregory Buckner, Ph.D. (“the Buckner
`
`Declaration,” Ex. 1002) in support of the contentions. Id.
`
`1 .
`
`Overview ofHon
`
`Hon is directed to an electronic atomization cigarette. Ex. 1007, 1:4-
`
`5. Figures 1 and 6 of Hon are reproduced below:
`
`10
`
`Exhibit 1011-00010
`
`
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`IPR2015-00859
`
`Patent 8,365,742 B2
`
`
`
`Figure 1 is a schematic diagram of the structure of an electronic cigarette
`
`that includes air inlet 4, normal pressure cavity 5, sensor 6, vapor-liquid
`
`separator 7, atomizer 9, liquid-supplying bottle 11, and mouthpiece 15
`
`within shell 16. Id. at 2:40, 3:14-18. Figure 6 is a structural diagram of an
`
`atomizer, which includes atomization cavity 10, heating element RL, first
`
`piezoelectric element M1, atomization cavity wall 25, porous body 27, and
`
`bulge 36. Id. at 2:48, 3:24-29, 35-38.
`
`Hon states that heating element RL “can be made of platinum wire,
`
`nickel chromium alloy or iron chromium aluminum alloy wire with rare
`
`earth element” and “can also be made into a sheet form.” Id. at 3:27-29.
`
`Hon also states that “atomization cavity wall 25 is surrounded with the
`
`porous body 27, which can be made of foam nickel, stainless steel fiber felt,
`
`high molecule polymer foam and foam ceramic,” and that “atomization
`
`cavity wall 25 can be made of aluminum oxide or ceramic.” Id. at 3:35-38.
`
`11
`
`Exhibit 101 1-0001 1
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`
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`IPR20l5-00859
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`Patent 8,365,742 B2
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`Hon further states that “[w]hen a smoker smokes, the mouthpiece 15
`
`is under negative pressure, the air pressure difference or high speed stream
`
`between the normal pressure cavity 5 and the negative pressure cavity 8 will
`
`cause the sensor 6 to output an actuating signal,” which causes the cigarette
`
`to begin operating. Id. at 4:11-14. Hon describes that air enters normal
`
`pressure cavity 5 through air inlet 4, proceeds through the through hole in
`
`vapor-liquid separator 7, and flows into atomization cavity 10 in atomizer 9.
`
`Id. at 4:21-24. The nicotine solution in porous body 27 is driven by the high
`
`speed stream passing through the ejection hole into atomization cavity 10 in
`
`the form of a droplet, where it “is subjected to the ultrasonic atomization by
`
`the first piezoelectric element M1 and is further atomized by the heating
`
`element RL.” Id. at 4:26-27. After atomization, large-diameter droplets
`
`stick to the wall and are reabsorbed by porous body 27 via overflow hole 20,
`
`and small-diameter droplets form aerosols that are sucked out via aerosol
`
`passage 12, gas vent 17, and mouthpiece 15. Id. at 4:28-31.
`
`2.
`
`Overview ofSusa
`
`Susa is directed to a flavor generation article used for simulated
`
`smoking. Ex. 1010, 1:5-7. Susa Figure 1 is reproduced below:
`I0
`
`55
`
`T3
`58
`14 20 24 23 27 553/54 52
`74
`an
`
`/ ‘-15. ._ /
`if 1'81 *‘=‘%Ii
`
`
`81 p
`i
`1
`
`
`u::.
`\
`
`9 -
`
`12
`
`Exhibit 1011-00012
`
`
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`IPR20l5-00859
`
`Patent 8,365,742 B2
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`Figure 1 is a schematic diagram of a flavor generation article described by
`
`Susa. Id. at 4:20-22. Casing 12 includes “first portion 12a to be held by the
`
`user’s mouth” and “second portion 12b for incorporating a power supply and
`
`the like.” Id. at 5: 17-20. Portions 12a and 12b are detachably connected by
`
`connecting portion 13 formed on casing main body 14, and “are electrically
`
`connected to each other through a cable 15 stored in a space formed in the
`
`casing main body 14 to correspond to the connecting portion 13.” Id. at
`
`5:20-26. Gas flow path 26 is formed in casing 12 between air intake ports
`
`24 and suction port 22. Id. at 5:36-37.
`
`Throttle hole 20, in the center of throttle plate 21, is located in gas
`
`flow path 26 and directs air from air intake ports 24 to flow along the surface
`
`of ceramic heater 42. Id. at 5:46-50. Ceramic heater 42 is fixed on the inner
`
`surface of casing main body 14 by support member 44. Id. at 7:30-32. Air
`
`from throttle hole 20 flows through gap 27 between discharge ports 35 and
`
`ceramic heater 42. Id. at 7:35-38. Liquid-absorbing porous layer 46 is
`
`formed on the surface of ceramic heater 42, and can be made of an organic
`
`compound (such as natural cellulose, a cellulose derivative, or an aramid
`
`resin), or an inorganic compound (such as carbon, alumina, or silicon
`
`carbide). Id. at 7:50-8:5.
`
`When a user inhales through suction port 22, sensor 73 outputs an
`
`operation signal to control circuit 72, which energizes ceramic heater 42. Id.
`
`at 9:41-50. After a predetermined time, discharge drive portion 38 is
`
`triggered, liquid material 36 is discharged from discharge ports 35, and is
`
`gasified with heating by ceramic heater 42. Id. at 9:50-55. As the user
`
`inhales, the gasified material is mixed with the suctioned air from air intake
`
`ports 24, passed through the throttle hole 20, passes between the discharge
`
`13
`
`Exhibit 1011-00013
`
`
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`IPR2015-00859
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`Patent 8,365,742 B2
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`ports 35 and ceramic heater 42, and is guided to suction port 22. Id. at 9:55-
`
`10:2.
`
`Figure 13 of Susa is reproduced below:
`
`521B
`'55 94
`I-I-umjjjjjuu ‘
`
` 1
`
`16 T3 22
`
`FIG.
`
`13
`
`‘E
`
`Figure 13 is a schematic view of another embodiment of Susa’s flavor
`
`generation article. Id. at 15:28-30. Formed body 92 consists “of a solid
`
`material that generates a flavor or the like to be inhaled by the user” and is
`
`detachably disposed in gas flow path 26 between ceramic heater 42 and
`
`cooling chamber 52. Id. at 14:57—15:4. Susa states that when formed body
`
`92 is sized such that there is no gap between it and the inner surface of
`
`casing main body 14, formed body 92 consists of a solid material that has
`
`good air permeability, and gas flow path 26 is formed to extend through
`
`formed body 92. Id. at 15: 13-19. When there is a gap between formed
`
`body 92 and the inner surface of casing main body 14, formed body 92 can
`
`have little or no air permeability, and gas flow path 26 is formed to extend
`
`through that gap. Id. at 15: 19-27. Coil heater 94 “is disposed around”
`
`formed body 92, and “may be arranged in a hole formed in” formed body
`
`92. Id. at 15:34-36.
`
`3.
`
`Analysis
`
`01.
`
`Claims I and 2
`
`Petitioner contends that Hon describes porous component 27
`
`supported by atomization cavity wall 25, and therefore teaches “the atomizer
`
`14
`
`Exhibit 1011-00014
`
`
`
`IPR2015-00859
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`Patent 8,365,742 B2
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`includes a frame; the porous component is supported by the frame”
`
`limitations recited in claim 1, and “the atomizer assembly including a porous
`
`component supported by a frame having a run-through hole” limitation in
`
`claim 2. Pet. 21, 28. In particular, Petitioner contends that, in Hon, “[t]he
`
`porous component is ‘arranged around the atomization cavity wall’ which
`
`‘can be made of aluminum oxide or ceramic.’” Id. at 21 (citing Ex. 1007,
`
`2: 12, 3:38). Thus, according to Petitioner, Hon’s atomization cavity wall 25
`
`is a “frame” as recited in the challenged claims.
`
`Patent Owner argues that Hon does not disclose a frame or any
`
`element that supports the porous body. Prelim. Resp. 23. Patent Owner
`
`argues that Hon’s cylindrical atomization cavity wall 25 “is supported from
`
`below and laterally by porous body 27” and “is a liner within the porous
`
`body which forms the atomization cavity 10.” Id. at 24. According to
`
`Patent Owner, atomization cavity wall 25 “that is entirely within porous
`
`body 27 does not support the porous body,” and, instead, “the porous body
`
`27 supports the wall 25 as the porous body will hold the wall in place.” Id.
`
`As discussed above, we interpret “frame” to mean “a rigid structure.”
`
`See supra Section II.A. 1. Petitioner contends Hon’s atomization cavity wall
`
`25 is this frame, at least because it can be made of aluminum oxide or
`
`ceramic. Pet. 21. We are persuaded that atomization cavity wall 25 is a
`
`rigid structure, and is therefore a frame as recited in claims 1 and 2.
`
`We are not persuaded, however, that Petitioner has established that
`
`Hon teaches a frame that supports a porous component, as also required by
`
`claims 1 and 2. Petitioner points to Hon’s description of porous component
`
`27 as being “arranged around the atomization cavity wall” to show that
`
`porous component 27 is supported by atomization cavity wall 25. Id. The
`
`15
`
`Exhibit 1011-00015
`
`
`
`IPR2015-00859
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`Patent 8,365,742 B2
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`ordinary meaning of “support” is “bear all or part of the weight of: hold
`
`up.” Prelim. Resp. 12 (citing Ex. 2005, 1708). Petitioner does not explain
`
`adequately, nor cite to sufficient evidence of record explaining, how porous
`
`component 27 is held up by atomization cavity wall 25. The teachings in
`
`Hon on which Petitioner relies describe porous component 27 surrounding
`
`atomization cavity wall 25, but do not indicate that atomization cavity wall
`
`25 is bearing the weight of, or holding up, porous cavity 27. Petitioner does
`
`not rely on Susa to teach this limitation.
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`Petitioner alternatively argues that Hon “discloses that the atomizer
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`includes a vapor-liquid separator (7), which also constitutes a frame that
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`supports the porous component” because it “is ‘sequentially interconnected’
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`with the atomizer and ‘can be made of plastic or silicon rubber.’” Pet. 21.
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`This argument is not persuasive.
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`Even if Hon’s vapor-liquid separator 7 is a frame, which we need not
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`determine for purposes of this Decision, it is not located in the atomizer as is
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`required by claims 1 and 2. Hon consistently describes vapor-liquid
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`separator 7 as an element separate from the atomizer. See, e. g., Ex. 1007,
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`3:16-18 (“a vapor-liquid separator 7, an atomizer 9, a liquid-supplying
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`bottle 11 and a mouthpiece 15 are sequentially provided within the shell
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`14”), 4:23-24 (air passes through “the through hole in the vapor-liquid
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`separator 7, and flows into the atomization cavity 10 in the atomizer 9”);
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`5: 12-14 (describing an embodiment where “the atomizer 9 is postposed
`
`within the shell 14, and the liquid-supplying bottle 11 is arranged between
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`the vapor-liquid separator 7 and the atomizer 9”). Furthermore, the
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`statement in Hon on which Petitioner relies regarding vapor-liquid separator
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`7 being “sequentially interconnected” to atomizer 9, when read in context,
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`16
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`Exhibit 1011-00016
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`
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`IPR20l5-00859
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`Patent 8,365,742 B2
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`describes the order in which the elements are arranged within the body of the
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`electronic cigarette: “[T]he air inlet, normal pressure cavity, vapor-liquid
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`separator, atomizer, aerosol passage, gas vent and mouthpiece are
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`sequentially interconnected.” Ex. 1007, 1:47-49.
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`Accordingly, we are not persuaded that Petitioner has established a
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`reasonable likelihood of showing that claims 1 and 2 would have been
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`obvious over the combination of Hon and Susa.
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`b.
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`Claims I -3
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`Claim 1 recites “the heating wire is wound on the porous component,”
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`and claims 2 and 3 recite “a heating wire wound on a part of the porous
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`component.” Petitioner contends that Susa describes that “coil heater 94 ‘is
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`disposed around the formed body 92,’ which is adjacent to ceramic heater 42
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`and porous layer 46,” and that “[f]ormed body 92 has qualities and functions
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`similar to the porous layer.” Pet. 22. According to Petitioner, because
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`Susa’s coil heater 94 envelops formed body 92, “[i]t would have been
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`obvious to one of ordinary skill in the art to wind the coil heater of Susa
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`around the porous layer in [Hon] in order to provide [the heating wire is
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`wound on the porous component] limitation” of claims 1-3. Id. at 23, 28-
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`29, 31-32. Petitioner contends that this modification of the Hon electronic
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`cigarette “is motivated by the interest of providing more efficient, uniform
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`heating” and “would enhance commercial opportunities and make the
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`product more desirable by increasing the efficiency of atomization.” Id. at
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`23.
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`Patent Owner argues that Susa’s coil heater 94 is not wound on porous
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`layer 46, “which the Petition asserts discloses the claimed porous
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`component.” Prelim. Resp. 29. Patent Owner further argues that “[t]he
`
`17
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`Exhibit 1011-00017
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`
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`IPR2015-00859
`
`Patent 8,365,742 B2
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`embodiment in Fig. 13 gasifies liquid in the same way as Fig. 1 discussed
`
`above, that is via liquid projected from the discharge head 34 onto a now
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`vertical porous layer 46 on the ceramic heater 42,” and that “coil heater 94
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`together with the formed body 92 generate flavor by heating, but
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`presumptively without gasifying where liquid contacts a heated surface, as in
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`Fig. 1.” Id. at 29-30.
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`We are not persuaded by Petitioner’s arguments. As set forth above,
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`we interpret “porous component” to mean “a component of the atomizer
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`assembly in the electronic cigarette that includes pores and is permeable to
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`liquid, such as cigarette solution from the cigarette solution storage area.”
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`See supra Section II.A.2. Petitioner contends that Susa’s formed body 92
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`“has qualities and functions similar to the porous layer,” but does not explain
`
`sufficiently, nor direct us to adequate evidence of record indicating, that a
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`person having ordinary skill in the art would have understood the formed
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`body 92 to include pores and be permeable to liquid. See Pet. 22.
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`Susa describes formed body 92 as “a solid material that generates
`
`flavor or the like,” that, depending on its size, can have good air
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`permeability, or poor to no air permeability. Ex. 1010, l4:57—l5:2, 15:13-
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`27. The embodiment shown in Susa Figure 13 that shows coil heater 94
`
`disposed around formed body 92 also includes liquid-absorbing porous layer
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`46 that “is formed on a surface of the ceramic heater 42 that receives the
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`liquid splash of the material” and “stabiliz[es] gasification of the splash of
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`material.” Id. at 7:5 0-8: 1. Consequently, we are not persuaded that that
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`formed body 92 in Susa is a “porous component” as recited in the challenged
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`claims, or that Petitioner has demonstrated that Susa teaches a heating wire
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`wound on a porous component, as is required by claims 1-3.
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`18
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`Exhibit 1011-00018
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`
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`IPR2015-00859
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`Patent 8,365,742 B2
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`A showing of obviousness must be supported by an articulated
`
`reasoning with rational underpinning to support a motivation to combine the
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`prior art teachings. KSR Int’! Co. v. Teleflex, Inc, 550 U.S. 398, 418 (2007)
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`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner asserts
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`that a person having ordinary skill in the art would be motivated to modify
`
`the Hon electronic cigarette to include a heating wire wound on a porous
`
`component “by the interest of providing more efficient, uniform heating”
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`that “would enhance commercial opportunities and make the product more
`
`desirable by increasing the efficiency of atomization.” Pet. 23. Petitioner
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`does not provide sufficient explanation as to why a person having ordinary
`
`skill in the art would have wanted to provide “more efficient, uniform
`
`heating” in the Hon cigarette. Petitioner does not direct us to, nor do we
`
`discern, statements in Hon or Susa with respect to the efficiency—or
`
`inefficiency—of atomization within the described articles. Petitioner’s
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`unsupported, conclusory statements do not constitute articulated reasoning
`
`with rational underpinnings as to why one of ordinary skill in the art would
`
`modify Hon in view of Susa’s teachings to arrive at the claimed invention.
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`For these reasons, Petitioner has not established a reasonable
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`likelihood that it would prevail on the ground that claims 1-3 of the ’742
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`patent would have been obvious over the combination of Hon and Susa.
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`C.
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`Obviousness over Hon and Abhulimen
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`Petitioner contends that claims 1-3 would have been obvious under 35
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`U.S.C. § 103(a) over the combination of Hon and Abhulimen. Pet. 32-34.
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`Petitioner relies on the Buckner Declaration (Ex. 1002) in support of its
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`contentions. Id.
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`19
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`Exhibit 1011-00019
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`
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`IPR2015-00859
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`Patent 8,365,742 B2
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`1.
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`Overview ofAbhulimen
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`Abhulimen is directed to a simulated smoking article, with a fuel
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`element physically separated from an aerosol-generating element. Ex. 1012,
`
`1. Figures 1 and 2 of Abhulimen are reproduced below:
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`
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`Figure 1 is partially-fragmented perspective view of a simulated smoking
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`device as described by Abhulimen, and Figure 2 is a longitudinal view of the
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`device shown in Figure 1. Id. at 3-4. Simulated smoking device 10 includes
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`fuel element 11, flavor- generating material 13 disposed within tubular
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`wrapper 26, and tobacco rod 14 attached to filter 12. Id. at 4. Fuel element
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`11 includes fuel tank 20, which is non-permeable and non-combustible, and
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`fuel cartridge 24 comprising a porous medium. Id. Fuel element 11 also
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`includes extended wick 22 and glow element 16. Id. Fuel tank 20 is open-
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`ended at its upstream end, where ceramic tube 32 surrounds wick 22. Id.
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`Glow element 16 is a coil comprised of copper wire filament, or other heat-
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`conducting or glowing materials such as brass, platinum, or metallic alloy.
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`Id. Heat diffuser 30 is positioned within tubular wrapper 26 between the
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`distal end of flavor-generating material 13 and glow element 16. Id. Heat
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`diffuser 30 delivers hot gas and hot air coming into tubular member 26
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`through puffing air inlets 18 to vapor-generating material of tobacco rod 14,
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`20
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`Exhibit 1011-00020
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`
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`IPR20l5-00859
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`Patent 8,365,742 B2
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`and also blocks the flame from contact with flavor-generating material 13
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`when a user inhales. Id.
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`Abhulimen describes that smoking device 10 is started by lighting the
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`metal filament of glow element 16, using a lighter placed under the article in
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`the region of puffing air inlets 18. Id. Wick 22 draws fuel to the region of
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`the metal filament, and the flame causes the fuel to vaporize. Id. When the
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`user inhales, air is pulled through puffing air inlets 18 and across the metal
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`filament of glow element 16, and the vaporized fuel combusts. Id.
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`2.
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`Analysis
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`01.
`
`Claims I and 2
`
`As set forth above, Petitioner has not established that Hon teaches a
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`frame that supports a porous component, as required by claims 1 and 2. See
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`supra Section II.B.3 .a. Petitioner does not rely on Abhulimen as teaching
`
`this limitation of claims 1 and 2. Accordingly, we determine that the record
`
`before us does not establish a reasonable likelihood that Petitioner would
`
`prevail in establishing that claims 1 and 2 would have been obvious over the
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`combination of Hon and Abhulimen.
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`[7,
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`Claims I—3
`
`Petitioner contends that Hon discloses most of the limitations of
`
`claims 1- 3, but concedes that it does not disclose “a heating wire wound on
`
`a part of the porous component.” Pet. 33. Petitioner contends that
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`Abhulimen teaches this limitation. Id. According to Petitioner, Abhulimen
`
`teaches that glow element 16 (which Petitioner equates to a heating wire) is
`
`wound on a part of wick 22 (which Petitioner equates to a porous
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`component). Id. Petitioner contends that a person having ordinary skill in
`
`the art would have been motivated “to wind the heating wire of Abhulimen
`
`21
`
`Exhibit 101 1-0002 1
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`
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`IPR20l5-00859
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`Patent 8,365,742 B2
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`around the porous layer in [Hon] to yield” a heating wire wound on a part of
`
`the porous component as recited in the claims because it would provide
`
`more efficient, uniform heating. Id. at 33-34.
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`As was the case with Petitioner’s proposed combination of Hon and
`
`Susa as set forth above, Petitioner does not provide sufficient explanation as
`
`to why a person having ordinary skill in the art would have wanted to
`
`provide “more efficient, uniform heating” in the Hon cigarette. See supra
`
`Section II.B.3.a. Petitioner does not direct us to, nor do we discern,
`
`statements in Hon or Abhulimen with respect to the efficiency—or
`
`inefficiency—of atomization within the described articles. Petitioner’s
`
`unsupported, conclusory statements do not constitute articulated reason