Paper No. ___
`Filed: October 7, 2016
`
`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 PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`
`
`
`
`
`Filed: October 7, 2016
`
`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 PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`
`
`
`
`
`
`Case IPR2016-01268
`Patent No. 8,365,742
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`Page
`INTRODUCTION .......................................................................................... 1
`BACKGROUND ............................................................................................ 3
`A.
`The ’742 Patent .................................................................................... 3
`B.
`The Prosecution History of the ’742 Patent ......................................... 6
`C.
`The Prior IPR Petitions on the ’742 Patent .......................................... 6
`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d) ........ 7
`IV. CLAIM CONSTRUCTION ......................................................................... 13
`V.
`THE PETITION DOES NOT DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT CLAIMS 2 AND 3 ARE UNPATENTABLE
`OVER HON ’043 IN VIEW OF WHITTEMORE ...................................... 13
`A. Overview of Hon ’043. ....................................................................... 13
`B. Hon ’043 does not disclose a Frame Supporting a Porous
`Component. ........................................................................................ 15
`The Petition Provides no Rational Underpinnings for Modifying
`Hon ’043 in view of Whittemore. ...................................................... 20
`VI. SUBSEQUENT USPTO EXAMINATION RELEVANT TO THE
`PETITION .................................................................................................... 22
`A. U.S. Application 13/740,011. ............................................................. 22
`B. U.S. Application 14/244,376 . ............................................................ 22
`VII. CONCLUSION ............................................................................................. 24
`CERTIFICATE OF COMPLIANCE ...................................................................... 25
`
`C.
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`-i-
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`CASES
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`TABLE OF AUTHORITIES
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`Case IPR2016-01270
`Patent No. 8,893,726
`
`
`Arista Networks v. Cisco Systems, Inc.,
`IPR 2015-01710, 2016 WL 1083023 (Feb. 16, 2016) .......................................... 7
`
`STATUTES
`
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`35 U.S.C. § 325(d) ........................................................................................... 1, 7, 13
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`ii
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`
`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
`
`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
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`
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`iii
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`Ex. 1015 Declaration of Dr. Robert Sturges
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`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)
`
`
`
`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
`
`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
`
`
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`iv
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`Ex. 2012
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`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
`
`
`
`v
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`I.
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`INTRODUCTION
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`Case IPR2016-01268
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`Fontem Holdings 1 B.V. (“Patent Owner”) requests that R. J. Reynolds
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`Vapor Company’s (“Petitioner” or “Reynolds”) Petition for Inter Partes Review of
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`U.S. Patent No. 8,365,742 (“the ’742 Patent”) be denied under 35 U.S.C. § 314(a)
`
`because the Petition fails to establish “that there is a reasonable likelihood that the
`
`petitioner would prevail with respect to at least 1 of the claims challenged in the
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`petition,” and under 35 U.S.C. § 325(d) because the same Ground was already
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`rejected by the Board in a previous IPR petition. The Petition challenges claims 2
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`and 3 but does not challenge claim 1.
`
`Ground 3 of the petition in IPR2015-00859 is the same as the sole Ground
`
`and arguments in this Petition. Ex. 1013 at 5, 34-35. The prior petition was denied
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`because there was no motivation to modify or combine the references as claimed
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`and the references did not disclose the claim limitation “a porous component
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`supported by a frame.” Ex. 1011 at 22-25. Here, the Board should deny the
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`Petition for the same reasons as the Board previously denied the same Ground and
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`arguments.
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`First, in the prior IPR, the Board found that the “Petitioner does not provide
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`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.
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`Petitioner does not direct us to, nor do we discern, statements in Hon or Susa with
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`respect to the efficiency—or inefficiency—of atomization within the described
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`articles. Petitioner’s unsupported, conclusory statements do not constitute
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`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
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`invention.” Ex. 1011 at 19 . Here, Petitioner asserts the same motivation to
`
`combine and modify the references as the prior IPR petition, namely, “simple
`
`thermodynamics.” Petitioner’s “simple thermodynamics” argument here suffers
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`from the same flaws and should be rejected again.
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`Similarly, regarding the missing “frame” limitation the Board found that
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`“the petitioner . . . failed to explain adequately how the cavity wall 25 in Hon ‘043
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`provides support for porous component 27.” Petition (Paper 2) at 4 (citing Ex.
`
`1011 at 16). Here, Petitioner points to the same element as allegedly disclosing the
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`“frame” limitation, namely, the cavity wall 25 of Hon ’043. But, Petitioner’s
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`assertion that the same “cavity wall 25” is the claimed “frame” here fails because
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`that cavity wall 25 does not support a porous component just as the Board found in
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`the previous IPR. Ex. 1011 at 15-16.
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`Accordingly, Patent Owner requests that the Petition be denied.
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`II. BACKGROUND
`A. The ’742 Patent
`The ’742 Patent generally relates to an “aerosol electronic cigarette.” Ex.
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`1001, Title. The ’742 Patent explains that the disclosed device can provide
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`nicotine, without depriving the user of the “smoking habit,” meaning a user uses
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`the device like a traditional cigarette so that the device simulates the feel and
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`experience of smoking. Ex. 1001 at 1:18-20. The problem to be solved is not just
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`in the ability to efficiently deliver nicotine like the nicotine patch or gum. The
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`rituals of the smoking must be provided. Ex. 2001 at ¶ 11.
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`One of the problems the ’742 Patent addresses in prior art electronic
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`cigarettes is the lack of atomizing efficiency: “The electronic cigarettes currently
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`available on the market . . . are complicated in structure. They don't provide the
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`ideal aerosol effects, and their atomizing efficiency is not high.” Ex. 1001 at 1:21–
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`24. The ’742 Patent focuses on this problem by addressing how air flows through
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`an electronic cigarette in combination with how liquid contacts a heater to be
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`vaporized. Ex. 2001 ¶¶ 11-12.
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`Air flow is a key concept in the ’742 Patent. The resistance to air flow
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`through the electronic cigarette during inhalation should generally simulate that of
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`a real tobacco cigarette. If the air flow resistance is too high, the user’s inhalation
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`effort will be unduly high and the air flow rate through the e-cigarette (which
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`entrains the nicotine vapor) will be too low. On the other hand, if the air flow
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`resistance is too low, the user will inhale excessive air and the air flow rate will be
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`too high. In either case, the ratio of air to atomized liquid will cause a user to
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`inhale too much air and not enough atomized liquid or vice versa. Ex. 2001 at ¶
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`12.
`
`In one embodiment, the ’742 Patent discloses an improved atomizer
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`configuration that addresses both airflow and vaporization. The ’742 Patent states:
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`“the atomizer assembly is an atomizer (8), which includes a frame (82), the porous
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`component (81) set on the frame (82), and the heating wire (83) wound on the
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`porous component (81). The frame (82) has a run-through hole (821) on it. The
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`porous component (81) is wound with heating wire (83) in the part that is on the
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`side in the axial direction of the run-through hole (821).” Ex. 1001 at 5:43–49 .
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`That embodiment is shown in Figures 17 and 18 (reproduced below), showing the
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`heating wire (83) wound on a part of the porous component (81) in alignment with
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`run-through hole 821.
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`As shown in Figure 18, the run-through hole (821) is aligned with portion of
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`the porous component (81) in contact with the heating wire (83) such that the line-
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`of-site to the run-through hole 821 is partially or fully blocked. This alignment
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`may be visualized by the result of poking a hypothetical rod through run-through
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`hole 821. The hypothetical rod will hit heating wire 83. The context of the ’742
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`Patent shows that “substantially aligned with the run-through hole” means the
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`porous body is in line with or in the path of the run-through hole. Ex. 2001 at ¶ 21.
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`In embodiment shown in Figure 17 and 18 air flows freely into the atomizer
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`through the run-through hole and is directed to the heating wire because the wire is
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`aligned with the run through hole. Those design elements help to improve the
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`aerosol effects and atomizing efficiency of the claimed electronic cigarette. Ex.
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`2001 at ¶ 13.
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`The ’742 Patent claims recite an atomizer according to the above
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`embodiments. Claims 2 and 3 of the ’742 Patent both require “a frame” having a
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`“run-through hole” and “a heating wire wound on a part of the porous component.”
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`Claim 2 further requires that the heating wire be “in the path of air flowing through
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`the run-through hole” and claim 3 requires that the heating wire be “substantially
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`aligned with the run-through hole.” Finally, claim 2 further recites that the frame
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`“support[s]” the porous component and claim 3 recites that the “porous component
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`[is] between the frame and the outlet.”
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`The Prosecution History of the ’742 Patent
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`B.
`In the Office Action dated July 19, 2012, the Examiner identified Hon ’043
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`as the closest prior art of record. Ex. 1007 at 3. During the Examiner Interview on
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`August 14, 2012, Hon
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`’043
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`(specifically
`
`its PCT equivalent Hon
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`WO/2005/099494) was discussed. Ex. 2004 at 1. Robinson U.S. Patent No.
`
`1,775,947, Ex. 2005; Counts US Patent No. 5,144,962, Ex. 2006; and Susa EP 0
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`845 220, Ex. 2007, were also discussed at the Examiner Interview. Ex. 2004 at 1.
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`Each of these references discloses a wire heating coil.
`
`C. The Prior IPR Petitions on the ’742 Patent
`A first petition that was filed was IPR2015-00859 filed on March 10, 2015
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`by VMR Products LLC. Ground 3 of the VMR Petition (Hon ’043 modified by
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`Whittemore) is identical to the single ground in the present Petition filed by
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`Reynolds. The Board denied institution of the VMR’s Petition on September 16,
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`2015. Ex. 1011 at 31.
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`A second Petition IPR2015-01587 was filed by JT International S.A., on
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`July 14, 2015, relying on Takeuchi, Cox, Brooks and Whittemore. This second
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`Petition was dismissed via agreement of the parties before any institution decision
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`by the Board. Ex. 1014 at 2.
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`Two additional IPR petitions have been filed on the ’742 Patent. The Board
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`has not issued a decision on institution for either IPR. The Petitioner here filed
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`IPR2016-01532 on August 5, 2016 against the ‘742 Patent asserting the claims are
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`invalid over the publication of its parent application (US2009/0095311) on the
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`basis that the claims of the ’742 Patent are not entitled to a priority claim earlier
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`than the actual filing date of the application for the ’742 Patent. Another
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`petitioner, Nu Mark LLC, filed IPR 2016-01303 on June 28, 2016 asserting
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`obviousness based on combinations of Takeuchi, Brooks and Whittemore.
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`III. THE PETITION SHOULD BE DENIED UNDER 35 U.S.C. § 325(d)
`In pertinent part, 35 U.S.C. § 325(d) provides:
`
`“In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take into
`account whether, and reject the petition or request because, the same
`or substantially the same prior art or arguments previously were
`presented to the Office.”
`In Arista Networks v. Cisco Systems, Inc., the Board denied a petition under
`
`35 U.S.C. § 325(d) in part because “[a]llowing similar, serial challenges to the
`
`same patent, by the same petitioner, risks harassment of patent owners and
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`frustration of Congress’s intent in enacting the Leahy-Smith America Invents Act.”
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`IPR 2015-01710, 2016 WL 1083023, at *5 (Feb. 16, 2016).
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`The same reasoning should apply even if the Petitioner is different.
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`Otherwise, a subsequent Petitioner can simply recycle the same losing petition to
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`harass a patent owner.
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`Here, Ground 3 of the VMR Petition in IPR2015-00859 is identical to the
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`present Petition. Ex. 1013 at 5. And, the claims, the prior art, the proposed
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`modification of Hon ’043 using the wick and wire coil of Whittemore, and the
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`arguments in the VMR Petition are the same as in the present Petition. Ex. 1011 at
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`22-25 (The VMR Petition refers Hon ’494 which is the PCT equivalent of Hon
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`’043--as noted in the description of Petitioner’s Ex. 1017 on page V of the
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`Petition.)
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`The modification of Hon ’043 is the same as in the VMR Petition. The
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`present Petition does not cite to anything new in the ’742 Patent, or in the Hon
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`’043 patent, or in Whittemore. The Petition does not cite to anything new in the
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`file history, or even any new extrinsic evidence.
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`The Petition here asserts that it addresses two shortcoming in the previous
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`petition. First, in denying the VMR Petition, the Board found that “the petitioner .
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`. . failed to articulate sufficient reasoning with rational underpinnings (as opposed
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`to conclusory statements) as to why the person of ordinary skill in the art would
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`have been motivated to make the proposed combination. Specifically, the Board
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`concluded that the “more efficient, uniform heating” as the motivation to combine
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`the references consisted of unsupported conclusory statements.” Petition at 4
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`(citing 1011 at 17-19, 21-25.). Here, Petitioner asserts that it provides the missing
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`“rational underpinnings why more efficient heating would have motivated the
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`person of ordinary skill in the art to modify Hon ’043 as taught by Whittemore.”
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`Petition at 4.
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`But, Petitioner’s rational underpinnings are the same ones rejected in the
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`prior IPR. In denying the VMR Petition, the Board wrote:
`
`Petitioner asserts 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” that “would enhance
`commercial opportunities and make the product more desirable by
`increasing the efficiency of atomization.” 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. 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
`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.
`Ex. 1011 at 19 (citations omitted). The same reasoning applies to the present
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`Petition. Neither Hon ’043 or Whittemore contain statements with respect to
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`“more efficient heating, lower heating temperatures, and improved battery life”.
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`No evidence suggests these advantages would be obtained, other than the
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`conclusory statements in the Sturges Declaration which lack any technical basis or
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`explanation.
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`Petitioner Reynolds’ alleged new rational underpinnings are the same
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`thermodynamics arguments previous presented to the board. Petitioner alleges
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`that:
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`[S]imple thermodynamics would have motivated the person having
`ordinary skill in the art (“PHOSITA”) to modify Hon ’043 as taught
`by Whittemore. The PHOSITA would have readily appreciated that,
`because air is a good thermal insulator, the air gaps between the
`heating wire 26 of Hon ’043 and the liquid nicotine droplets expelled
`into the atomization chamber 10 create a relatively inefficient heating
`environment for heating the nicotine solution, and thus wire 26 would
`need to be operated at relatively high temperatures, which would
`require more battery power. In contrast, Whittemore’s wick/heating
`wire configuration is more thermally efficient than the configuration
`of Hon ’043, because the heating element is in direct contact with the
`liquid that is vaporized. Accordingly, the POSITA would have been
`motivated to substitute Whittemore’s wick/heating wire configuration
`for the heating wire of Hon ’043 to achieve the predicted result of
`more efficient heating, lower heating temperatures, and improved
`battery life. Ex. 1015 at ¶¶ 56-62.
`Petition at 7-8.
`
`In other words, Petitioner’s “simple thermodynamics” argument is that
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`“Whittemore’s wick/heating wire configuration is more thermally efficient than the
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`configuration on Hon ’043, because the heating element is in direct contact with
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`the liquid that is vaporized.” The previously rejected VMR Petition argued the
`
`same thing:
`
`The modification is motivated by the interest of providing more
`efficient, uniform heating. The winding of the heating coil around the
`porous component increases the contact area between the component
`and the coil, in turn, improving heat transfer to the component. Such
`an improvement would enhance commercial opportunities and make
`the product more desirable by
`increasing
`the efficiency of
`atomization.
`Ex. 1013 at 23 (citations omitted).
`
`Second, for the VMR petition, the Board found that “the petitioner . . . failed
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`to explain adequately how the cavity wall 25 in Hon ’043 provides support for
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`porous component 27.” Petition at 4 (citing Ex. 1011 at 16.) Here, Petitioner
`
`asserts that it explains how the cavity wall 25 of Hon ’043 provides support for
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`porous component 27.” Petition at 4. But, Petitioner’s argument was already
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`rejected in the prior IPR.
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`The claim limitation at issue is “a porous component supported by a frame”
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`in claim 2. The Petition requires that in Hon ’043 the cavity wall 25 support the
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`porous body 27, to meet this limitation. But in Hon ’043 the cavity wall 25 is
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`entirely inside of the porous body 27, as shown in the image below from page 15
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`of the Petition, so that it cannot support the porous body.
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`
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`In Hon ’043, if the cavity wall 25 is removed the porous body 27 remains as
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`is. If the porous body 27 is removed, the cavity wall 25 falls down.
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`In the VMR Decision the Board found the atomization cavity wall 25 is a
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`“frame” but the Board was not persuaded that the atomization cavity wall 25
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`supports a porous component. Ex. 1011 at 15-16. Nothing in the present Petition
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`suggests any different result. The Petition asserts that in Hon ’043 the cavity wall
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`25 supports the porous body 27, based on a presumption of shear forces occurring
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`when the porous body is inserted into the solution storage body 28. Page 16 of the
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`Petition relies on a presumption of a leading edge of the cavity wall supporting the
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`bulge area 36 of the porous body. Yet, Hon ’043 says nothing about shear forces
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`or a leading edge of the cavity wall.
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`The Board should deny the Petition under 35 U.S.C. § 325(d) because the
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`issues raised by the Petition have already been decided in the VMR Decision.
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`IV. CLAIM CONSTRUCTION
`In the VMR Decision the Board construed “frame” to mean “a rigid
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`structure” and “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 liquid,
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`such as cigarette solution from the cigarette solution storage area.” Ex. 1011 at 7-
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`8. Patent Owner disagrees with those constructions for “frame” and “porous
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`component.” But, because those constructions are not relevant to this response,
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`Patent Owner does not dispute those construction here. Patent Owner reserves its
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`right to dispute those constructions if the IPR is instituted.
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`V. THE PETITION DOES NOT DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT CLAIMS 2 AND 3 ARE UNPATENTABLE
`OVER HON ’043 IN VIEW OF
`WHITTEMORE
`A. Overview of Hon ’043.
`The atomizer of Hon ’043 is shown
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`in Fig. 6, right. The elements in these
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`Figures are the porous body 27; the porous
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`bulge 36; the atomizing cavity 10; the heating element 26; the cavity wall 25; the
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`first piezo element 23 and long stream ejection holes 24. The cavity wall 25 is
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`surrounded by the porous body 27. The wall 25 can be made of aluminum oxide or
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`ceramic. Ex. 1003 at 9.
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`Fig. 1 of Hon ’043, below, shows an embodiment where the atomizer 9 in an
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`electronic cigarette.
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`Hon ’043 operates as follows:
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`The air enters the normal pressure cavity 5 through the air inlet
`4, passes through the air passage 18 of the sensor and then the through
`hole in the vapor-liquid separator 7, and flows into the atomization
`cavity 10 in the atomizer 9. The high speed stream passing through
`the ejection hole drives the nicotine solution in the porous body 27 to
`eject into the atomization cavity 10 in the form of droplet, where the
`nicotine solution is subjected to the ultrasonic atomization by the first
`piezoelectric element 23 and is further atomized by the heating
`element 26. After the atomization the large diameter droplets stick to
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`the wall under the action of eddy flow and are reabsorbed by the
`porous body 27 via the overflow hole 29, whereas the small diameter
`droplets float in stream and forms aerosols, which are sucked out via
`the aerosol passage 12, gas vent 17 and mouthpiece 15.
`Ex.1003 at 10-11.
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`B. Hon ’043 does not disclose a Frame Supporting a Porous
`Component.
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`In the VMR Decision the Board found that the ordinary meaning of
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`“support” is “bear all or part of the weight of: hold up.” Relying on the lack of
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`explanation as to how the porous component 27 is held up by the cavity wall 25 the
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`Board found that the cavity wall 25 does not support the porous body as claimed.
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`Ex. 1011 at 15-16. To the contrary, since the cavity wall 25 is entirely inside of
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`porous body 27, the cavity wall 25 cannot support or hold up the porous body 27.
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`Ex. 2001 at ¶ 28.
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`The Petition at page 4, 15 and 16, and the Sturges Declaration, Ex. 1015 at
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`paragraphs 44-48, assert that the cylindrical wall 25 is a “frame” which supports
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`the porous body 27 via the following statements:
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`“To begin with, porous body 27 is attached to cavity wall 25
`either by a friction fit or with a bonding material to prevent axial
`displacement of the porous body under the shear forces at the
`interface of cavity wall 25 and porous body 27 when the porous body
`is inserted into the solution storage body 28 (see Fig. 11 of Hon ’043)
`of the liquid supplying bottle 11.”
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`Petition at 15-16.
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`Case IPR2016-01268
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`Hon ’043 says nothing about the cavity wall 25 being attached to the porous
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`body, about preventing axial displacement, or shear forces. Hon ’043 says nothing
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`about a friction fit or a bonding material. These are factors created purely by the
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`Petitioner and have no factual basis in the record. Regardless, when the porous
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`body is inserted into the solution storage body 28, there are no forces, shear or
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`otherwise, acting on the cavity wall 25, because the cavity wall 25 is inside of the
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`porous body 27 as shown in Fig. 6 of Hon ’043. Ex. 2001 at ¶30.
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`The Petition also asserts that:
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`“In addition, the leading edge of the cavity wall 25 provides
`further support for the porous body in the area of bulge 36. Ex.1015 at
`¶¶ 45-46. The cavity wall 25 also provides radial support when
`pressure increases in the low pressure area surrounding the atomizer
`9, such as when the user deliberately or accidentally blows into the
`mouthpiece 15. In that situation, the cavity wall 25 provides radial
`support to porous body 27, and thus prevents the body 27 from
`impinging upon and/or destroying the atomization cavity 10.
`Id. at 47-50.”
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`Petition at 16.
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`Hon ’043 makes no mention of the leading edge of the cavity wall 25. Hon
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`’043 makes no mention of the cavity wall providing radial support to the porous
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`body 27, or any indication that the porous body requires any radial support. Again,
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`these are factors created purely by the Petitioner without any factual basis in the
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`record.
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`There is nothing in Hon ’043 to support any of these conclusions in the
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`Petition. The porous body does not need, and is not provided with, any radial
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`support. Ex. 2001 at ¶ 35.
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`The function of the cavity wall 25 in Hon ’043 is to provide a surface for
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`large droplets to stick to:
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`“After the atomization the large diameter droplets stick to the
`wall under the action of eddy flow and are reabsorbed by the porous
`body 27 via the overflow hole 29, whereas the small diameter droplets
`float in stream and forms aerosols, which are sucked out via the
`aerosol passage 12, gas vent 17 and mouthpiece 15.”
`Ex. 1003 at 11.
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`The cavity wall 25 does not function to support the porous body.
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`The Petition and the Sturges Declaration show a lack of understanding of
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`what Hon ’043 discloses. Pages 25-26 of the Petition and page 33 of the Sturges
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`Declaration describe an air stream moving radially through the atomization cavity
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`wall 25 as indicated in the marked up Fig. 6 from page 26 of the Petition below.
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`Fig. 6 above indicates air moving radially outwardly through both the cavity
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`wall 25 and the porous body 27. However, the porous body 27 is saturated with
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`liquid from the liquid supplying bottle 11 and it has thick walls. Those factors
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`increase make the porous body’s resistance to air flow, particularly where there are
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`open paths with less resistance for air to flow through the device, such as the
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`ejection holes leading into the atomization cavity. Ex. 2001 at ¶ 45. The
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`atomization cavity wall 25 is made of aluminum oxide or ceramic. The
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`atomization cavity wall 25 has overflow holes 29 to allow large droplets to be
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`reabsorbed by the porous body. Ex. 1003 at 11. Those descriptions of the
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`atomization cavity wall mean that it is not permeable.
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`The cavity wall 25 and the porous body 27 have insufficient permeability, or
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`no permeability, to allow air flow through them. Drawing air through the
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`cylindrical sidewalls of the porous body by inhaling on the device, as shown in the
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`marked up Fig. 6 from the Petition, would require vacuum well beyond normal
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`inhalation, or not be possible even with high vacuum. That is not how Hon ’043
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`works. Ex. 2001 at ¶ 41.
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`Instead, Fig. 6 of Hon ’043 shows side openings in the porous body 27, as
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`labelled below.
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`The bulge part 36 of the porous body is a bridge with side openings on either
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`side. In a front view it would appear as shown on the right above. Air flows out
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`through the side openings at the downstream end of the atomization cavity 10, and
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`not radially out through the atomization cavity wall 25 and the side walls of the
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`porous body 27. Ex. 2001 at ¶ 44.
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`The atomization cavity 10 is open at the upstream end via the ejection holes,
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`and it is open at the downstream end via the side openings. This means that there
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`is no low pressure area surrounding the porous body 27, as argued at page 16 of the
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`Petition relative to “a porous component supported on a frame”, and there are no
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`high pressure surfaces, and no low pressure surfaces of the porous body 27, as
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`argued at pages 25-26 of the Petition relative to “a heating wire wound on a part of
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`the porous component in the path of air flowing through the run-through hole”.
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`Ex. 2001 at ¶ 44.
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`The Petition does not argue that Whittemore discloses “a porous component
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`supported by a frame.” As neither Hon ’043 nor Whittemore discloses this
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`limitation, the combination of Hon ’043 and Whittemore also does not disclose “a
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`porous component supported by a frame” as recited in claim 2.
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`C. The Petition Provides no Rational Underpinnings for Modifying
`Hon ’043 in view of Whittemore.
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`In the VMR Decision, the Board wrote:
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`“Petitioner contends that a person having ordinary skill in the
`art would have been motivated “to wind the coil heater of Whittemore
`around the porous layer in Hon” to provide more efficient, uniform
`heating. Id. at 36. As set forth above with respect to the combinations
`of Hon and Susa, and Hon and Abhulimen, we are not persuaded that
`Petitioner has articulated reasoning with rational u
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