`571-272-7822
`
`Paper 15
`Entered: December 8, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NJOY, INC., CB DISTRIBUTORS, INC., DR DISTRIBUTORS, LLC,
`FIN BRANDING GROUP, LLC, ELECTRONIC CIGARETTES
`INTERNATIONAL GROUP, LTD. F/K/A VICTORY ELECTRONIC
`CIGARETTES CORPORATION, AND
`LOGIC TECHNOLOGY DEVELOPMENT LLC,
`Petitioners,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2015-01299
`Patent 8,910,641 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, DONNA M. PRAISS, 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
`
`Fontem Ex. 2016
`Nu Mark LLC v. Fontem Holdings 1 B.V. IPR2016-01303
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`Patent 8,910,641 B2
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`I. INTRODUCTION
`NJOY, Inc., CB Distributors, Inc., DR Distributors, LLC, FIN
`Branding Group, LLC, Electronic Cigarettes International Group, Ltd. f/k/a
`Victory Electronic Cigarettes Corporation, and Logic Technology
`Development LLC (collectively, “Petitioner”) filed a Petition (“Pet.”) to
`institute an inter partes review of claims 1–11, 17, 19, and 20 of U.S. Patent
`No. 8,910,641 B2 (“the ’641 patent,” Ex. 1001). Paper 1. Fontem Holdings
`1 B.V. (“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”).
`Paper 6. We have jurisdiction under 35 U.S.C. § 314.
`Upon consideration of the Petition, Preliminary Response, and the
`evidence of record, we determine that Petitioner has not established a
`reasonable likelihood of prevailing with respect to the unpatentability of
`claims 1–11, 17, 19, and 20 of the ’641 patent. Accordingly, we deny the
`Petition and do not institute an inter partes review.
`A.
`Related Proceedings
`Petitioner identifies multiple cases pending in the Central District of
`California that could be affected by this proceeding. Pet. 2–3. Petitioner
`also identifies ten related inter partes review proceedings. Id. at 3. Patent
`Owner additionally identifies four petitions for inter partes review “filed by
`JT International S.A. prior to Logic Technology Development LLC’s
`acquisition.” Paper 5, 1.
`B.
`The ’641 Patent
`The ’641 patent, titled “Electronic Cigarette,” is directed to an
`electronic cigarette that includes a shell, a cell, a control circuit, a nicotine
`solution, and an electro-thermal vaporization nozzle installed at the air
`suction end of the shell. Ex. 1001, Abs. According to the ’641 patent, the
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`control circuit provides starting current to an electric heater arranged within
`the electro-thermal vaporization nozzle, and the cell that provides the power
`to the control circuit can be a disposable or rechargeable battery. Id. at
`1:65–2:5. The high temperature in the electro-vaporization nozzle causes
`nicotine liquid to rapidly vaporize to form a puff of smoke. Id. at 2:2–4.
`Figure 1 of the ’641 patent is reproduced below:
`
`
`
`Figure 1 is a schematic diagram of an electronic cigarette. Id. at 2:13–14.
`Resistance sensor 19 activates control circuit board 8 when a smoker puts
`the cigarette holder in his/her mouth, causing circuit board 8 to output two
`driving voltages, one to supply power to the electric heating element of
`electro-thermal vaporization nozzle 17, and the other to activate micro pump
`11. Id. at 3:48–53. Nicotine solution is then pumped to electro-thermal
`vaporization nozzle 17 by nicotine storage container 13, vaporized into high
`temperature vapor on the heating element of electro-thermal vaporization
`nozzle 17, and ejected from the opening end. Id. at 3:53–58. In the air, the
`ejected vapor is expanded and condensed into micro aerosol droplets. Id. at
`3:58–59. The electronic cigarette also comprises charger 1, charging jack 2,
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`spring 4, shell 6, threads 7, switch 9, passage tube 14, and baffle plate 15.
`Id. at 4:26–28.
`The Specification states that the electro-thermal vaporization nozzle is
`a small tube with an internal diameter of 0.05–2 mm that can be straight or
`spiral. Id. at 3:1–2, 3:9–11. The electric heating element within the electro-
`thermal vaporization nozzle can be made of wires, and can be in the shape of
`a straight line, single spiral, double spiral, cluster, or spiral cluster. Id. at
`3:14–19.
`C.
`Illustrative Claims
`Petitioner challenges claims 1–11, 17, 19, and 20 of the ’641 patent.
`Claims 1 and 17 are independent, and read as follows:
`1.
`An electronic cigarette, comprising:
`a housing having an inlet and an outlet;
`a battery and an atomizer in the housing, with the atomizer
`including a tube having a metal wire heater coil within
`the tube electrically linked to the battery;
`a liquid source in the housing and outside of the tube;
`with liquid in the liquid source capable of moving from the
`liquid source into the tube and contacting the wire heater
`coil to create vapor.
`Ex. 1001, 6:36–44.
`17. An electronic cigarette comprising:
`a housing, an air inlet leading into the housing, and an air outlet
`leading out of the housing;
`a battery, a control circuit, a sensor, and a vaporization nozzle
`in the housing, with the control circuit electrically
`connected to the battery and to the sensor;
`the vaporization nozzle including a coil heating element within
`a tube and with the coil heating element electrically
`connected to the control circuit; and
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`Exhibit No.
`1005
`1007
`1006
`1004
`1003
`1010
`
`a solution storage in the housing outside of the tube, wherein
`solution in the solution storage is capable of moving from
`the solution storage into the tube.
`Id. at 8:1–12.
`D.
`The Prior Art
`Petitioner relies on the following prior art references:
`Reference
`Description
`Date
`Gilbert
`US 3,200,819
`Aug. 17, 1965
`Haglund
`US 4,207,457
`June 10, 1980
`Ingebrethsen
`US 5,388,574
`Feb. 14, 1995
`Higgins
`US 5,666,977
`Sep. 16, 1997
`Takeuchi
`US 6,155,268
`Dec. 5, 2000
`Susa
`EP 0 845 220 A1
`June 3, 1998
`
`E.
`
`The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–11, 17, 19, and 20
`of the ’641 patent on the following grounds:
`References
`Basis
`Higgins, Ingebrethsen, and
`§ 103
`Haglund
`Higgins, Ingebrethsen,
`Haglund, and Gilbert
`Higgins, Ingebrethsen,
`Haglund, and Susa
`Takeuchi and Haglund
`Takeuchi, Haglund, and
`Gilbert
`Takeuchi, Haglund, and
`Susa
`
`Claims Challenged
`1–3, 6, 7, 9, 10, 17, 20
`
`4, 5
`
`8, 9, 11, 19
`
`1– 3, 6–10, 17, 19, 20
`
`4, 5
`
`9, 11
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`
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`II. ANALYSIS
`
`A.
`
`Claim Interpretation
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b). For purposes of this
`Decision, based on the record before us, we determine that none of the claim
`terms requires an explicit construction.
`B.
`Obviousness over Higgins, Ingebrethsen, and Haglund
`Petitioner contends that the subject matter of claims 1–3, 6, 7, 9, 10,
`17, and 20 would have been obvious under 35 U.S.C. § 103 over the
`combination of Higgins, Ingebrethsen, and Haglund. Pet. 16–33. Petitioner
`provides claim charts and relies on the Declaration of Samir Nayfeh, Ph.D.
`(“the Nayfeh Declaration,” Ex. 1002) in support of its contentions. Id.
`1.
`Overview of Higgins
`Higgins is directed to an electrical smoking article with a liquid
`tobacco flavor medium delivery system that transfers the liquid from a
`cartridge to a heater, generates a predetermined amount of tobacco flavor,
`and delivers it to a smoker. Ex. 1004, 3:21–26. Higgins Figures 1 and 2 are
`reproduced below:
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`Figure 1 is a perspective view of a preferred embodiment of the Higgins
`electrical smoking article, and Figure 2 is a partially-fragmented exploded
`perspective view of the electrical smoking article shown in Figure 1. Id. at
`2:57–61. Smoking article 10 includes permanent portion 20 and disposable
`filter insert 21 within permanent cavity 30 at the mouth end of permanent
`portion 20. Id. at 4:49–52. Within permanent portion 20 are liquid jet
`delivery system 32, power source 22, heater 23, control circuit 24, and liquid
`medium cartridge 28. Id. at 4:52–54. Power source 22 can be a replaceable
`or rechargeable battery, a capacitor, or both, and provides power for heater
`23 and liquid jet delivery system 32. Id. at 4:55–62, 5:7–9.
`Liquid jet delivery system 32, which is controlled by control circuit
`24, includes one or more nozzles 33 and is connected to liquid medium
`cartridge 28 by delivery tube 28A. Id. at 5:8–11. Nozzles 33 spray a
`predetermined amount of liquid tobacco flavor medium toward heater 23,
`which heats the droplets to generate the aerosol that is drawn through
`disposable filter insert 21 and delivered to the smoker. Id. at 5:12–17.
`2.
`Overview of Ingebrethsen
`Ingebrethsen is directed to aerosol delivery articles that are capable of
`providing relatively small aerosol particles while subjecting the material to
`be aerosolized to relatively low temperatures. Ex. 1006, 1:5–9. Figure 1 of
`Ingebrethsen is reproduced below:
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`Figure 1 is a partial sectional view of an Ingebrethsen aerosol delivery
`article. Id. at 2:60–61. Aerosol delivery article 10 comprises aerosol
`generator 13, reservoir 18, aerosol forming material 23, enclosure member
`30, passageway 35, mouth end 42, heating unit 45, heating region 46, and
`delivery portion 55. Id. at 2:65–3:9.
`Aerosol generator 13 produces first aerosol 40 using aerosol forming
`material 23 from reservoir 18. Id. at 3:10–12. First aerosol 40 exits aerosol
`generator 13, and passes through passageway 35 to get to heating unit 45.
`Id. at 3:34–35, 48–51. In heating region 46, heating unit 45 heats first
`aerosol 40 to form a second aerosol. Id. at 4:10–12. Heating unit 45
`generates heat using resistance heating element 72 and electrical power
`source 74, which can be a battery. Id. at 4:21–25. Resistance heating
`element 72 is provided by winding resistance heating wire 72 around a
`coiled length of metal tubing 77. Id. at 4:37–41. Insulating material 79 can
`be positioned within enclosure member 30, such that it surrounds metal
`tubing 77. Id. at 4:55–59.
`According to the Specification, the aerosol forming material is a
`multi-component material that includes at least one active ingredient and at
`least one other ingredient. Id. at 6:28–30. The active ingredient can include
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`a flavoring agent to provide flavor (such as tobacco, fruit, or spice) to the
`aerosol. Id. at 6:31–33.
`3.
`Overview of Haglund
`Haglund is directed to a porcupine wire coil positioned in a tube with
`an electrically-insulating interior that, when energized, can heat fluid
`flowing through the tube. Ex. 1007, Abs. Haglund describes stretching
`axially “a porcupine coil of electrical resistance wire characteristically
`formed by a substantially helical series of substantially flat convolutions
`having looped ends or peaks” such that “the convolutions are spaced apart
`from each other at least enough to prevent short-circuiting between the
`convolutions.” Id. at 1:47–53. The peaks of the convolutions of the coil are
`embedded in the electrically-insulating interior of a tube “to anchor each
`convolution against movement individually, leaving the balance of each
`convolution entirely exposed inside of the tube so that a high heat exchange
`efficiency can be obtained when fluid is flowed through the tube.” Id. at
`1:53–61. Haglund states that “[t]he fluid must flow through the
`crisscrossing maze of the flat convolution legs so as to produce turbulent
`flow conditions.” Id. at 1:61–63. Haglund further states that it is “preferred
`to use a tube made from felted ceramic fibers providing for structural
`rigidity while being deformable or compressible under pressure applied at
`any localized area.” Id. at 2:3–6.
`4.
`Discussion
`Petitioner contends that “Higgins describes a battery-operated
`cigarette that uses a heater coil to vaporize liquid” and “Ingebrethsen and
`Haglund, collectively, teach techniques to efficiently heat liquid.” Pet. 16.
`Petitioner contends that a person having ordinary skill in the art would have
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`applied the techniques taught in Ingebrethsen and Haglund “to surround the
`coil of Higgins with an insulative tube, to contain the heat and liquid in the
`same volume so that heat could be more efficiently transferred to the liquid.”
`Id. at 16–17 (citing Ex. 1002 ¶¶ 61–69). According to Petitioner, the
`advantages of doing so include a longer battery life and faster response time
`of the electronic cigarette. Id. at 17.
`Patent Owner argues that “[o]ne skilled in the art would not have
`replaced Higgins’ system to vaporize liquid droplets, with Haglund’s system
`to heat fluid flowing through a tube.” Prelim. Resp. 20. Patent Owner
`argues that liquid does not flow to the heater in Higgins; instead, “small
`droplets of liquid sufficient for a single puff [are] ejected to a spaced-apart
`heater,” with 1-2 mg aerosol generating a 2-second, 35 ml puff (about 1-2 ml
`volume of liquid). Id. at 18–19. Patent Owner argues that “Haglund
`discloses that the ‘fluid must flow through the crisscrossing maze of the flat
`convolution legs to produce turbulent flow conditions,’” and that “[t]he scale
`of Haglund is significantly larger than Higgins, involving pipes up to about 6
`inches in diameter.” Id. at 19–20 (citing Ex. 1007, 1:61–66).
`Patent Owner further argues that “Ingebrethsen discloses that the
`heating element 72 is outside the metal tubing 77, a serpentine tube of 10–30
`cm in length through which the aerosol flows,” and that insulating material
`79 that surrounds metal tubing 77 is there to ensure that the heat generated
`by heating element 72 is efficiently used to heat the aerosol by “direct[ing]
`heat toward the tubing and not away from it.” Id. at 23–24. According to
`Patent Owner, “Ingebrethsen expressly criticizes systems that vaporize a
`liquid by directly contacting the liquid with a heating wire” and therefore
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`“teaches away from the proposed combination with Higgins and Haglund.”
`Id. at 24–25.
`Patent Owner argues that “Higgins also teaches against combination
`with Ingebrethsen and Haglund for several reasons,” including that “Higgins
`describes condensation of aerosol as a problem as it generates off-tastes,”
`and “[a] tube of fiber insulation surrounding the Higgins heater 123 would
`provide a vast increase in surfaces for condensation.” Id. at 25. Patent
`Owner also argues that in the embodiments described in Higgins, air flows
`from the air channels over the surface of the heater, directly exposing the
`heater to both tobacco liquid droplets and flowing air, but in Petitioner’s
`“proposed modification of Higgins, only liquid contacts the heater” and
`“vapor and air do not mix within the device.” Id. at 26. Therefore, Patent
`Owner argues, Petitioner’s proposed “modification changes the principal
`[sic] of operation of Higgins” and “reflects a 20/20 hindsight analysis.” Id.
`A showing of obviousness must be supported by an articulated
`reasoning with rational underpinning to support a motivation to combine the
`prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
`obviousness grounds cannot be sustained by mere conclusory statements;
`instead, there must be some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.”)). Petitioner
`asserts that a person having ordinary skill in the art, considering together the
`teachings of Higgins, Ingebrethsen, and Haglund, “would have had reason to
`surround the coil of Higgins with a tube made of a fiber material, to
`efficiently transfer sufficient heat from the coil to the liquid tobacco flavor
`medium to cause a vapor (and ultimately an aerosol) to form.” Pet. 23.
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`Petitioner, however, does not provide sufficient explanation as to why a
`person having ordinary skill in the art would have wanted to provide more
`efficient heat transfer in the Higgins electronic smoking article. Petitioner
`does not direct us to, nor do we discern, statements in Higgins with respect
`to the efficiency—or inefficiency—of heating within the described article.
`Petitioner and Dr. Nayfeh assert, for example, that a person having
`ordinary skill in the art would have used Ingebrethsen’s insulating material
`around the coil in Higgins “to constrain the heat from the coil in the same
`space where the liquid was supplied to ensure efficient heat transfer from the
`coil to the substance being heated.” Pet. 21 (citing Ex. 1002 ¶ 65). This,
`according to Petitioner and Dr. Nayfeh, would allow longer battery life,
`“which Higgins acknowledges as a concern by seeking to avoid designs that
`‘unnecessarily increase the power consumption of the article.’” Id. at 21–22
`(citing Ex. 1004, 1:62–65). Higgins, however, is not concerned with
`inefficient heat transfer with respect to power consumption; instead, Higgins
`is concerned with using a greater volume of tobacco flavor generating
`material than is heated by the heater because “such excess tobacco flavor
`generating material may serve as a heat sink which may unnecessarily
`increase the power consumption of the article.” Ex. 1004, 1:59–65.
`Petitioner and Dr. Nayfeh then assert that Haglund demonstrates how
`to apply the teachings in Ingebrethsen to the Higgins structure, while
`“maintaining the heater configuration taught in Higgins, which allows,
`during operation, liquid tobacco flavor medium to come into contact with
`the wire heating coil to produce an aerosol.” Pet. 22–23; see also Ex. 1002
`¶¶ 66–69. Dr. Nayfeh further testifies:
`A POSA [person having ordinary skill in the art] would have
`identified a tube that efficiently heats liquid as a[n] important
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`component of an electronic cigarette. Having identified such a
`tube as an important component, a POSA would naturally seek
`out references that teach how best to implement such a tube.
`Haglund is representative of what a POSA would have known
`about designing a device that efficiently transfers heat to a
`liquid, which should happen in a well-designed battery-
`operated electronic cigarette. A POSA would have looked to a
`reference such as Haglund for guidance in implementing the
`heater in an electronic cigarette with a liquid flavorant that is to
`be efficiently heated.
`Ex. 1002 ¶ 35. Neither Petitioner nor Dr. Nayfeh explain adequately why a
`person having ordinary skill in the art would look to Haglund, which is
`concerned with providing a stable arrangement of a porcupine coil within a
`tube that maximizes the wire surface area exposed to high-velocity fluid
`flow through the tube (see Ex. 1007, 1:27–44), for guidance in improving
`heating efficiency in an electronic cigarette such as the one described in
`Higgins, where “the total amount of liquid delivered to the heater, per puff,
`is in the range from about 1 mg to about 10 mg, to provide a heated
`condensation aerosol having a mass in the range from about 0.05 mg to
`about 3.5 mg, as in conventional cigarettes” (Ex. 1004, 6:13–17). Simply
`stating that Haglund represents the knowledge of a person having ordinary
`skill in the art with respect to designing a device that efficiently transfers
`heat to a liquid, without any objective support, is insufficient.
`Consequently, we are not persuaded that the Petition establishes why
`a person having ordinary skill in the art would attempt to improve Higgins
`by looking at Ingebrethsen and Haglund. Petitioner and Dr. Nayfeh contend
`that each element of the ’641 patent was known in the prior art, but an
`articulated reasoning of why a person having ordinary skill in the art would
`have combined the elements to achieve the claimed invention is missing.
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`Without such articulated reasoning, Petitioner’s contentions are insufficient
`to establish that the claims of the ’641 patent would have been obvious
`based on the combination of Higgins, Ingebrethsen, and Haglund. See,
`Cheese Sys. Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341,
`1352 (Fed. Cir. 2013) (“Obviousness cannot be based on the hindsight
`combination of components selectively culled from the prior art to fit the
`parameters of the patented invention.” (internal quotation marks omitted)).
`As explained in KSR, “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, 550 U.S. at 418.
`For these reasons, Petitioner has not established a reasonable
`likelihood that it would prevail on the ground that claims 1–3, 6, 7, 9, 10, 17,
`and 20 would have been obvious under 35 U.S.C. § 103 over the
`combination of Higgins, Ingebrethsen, and Haglund.
`C. Obviousness over Higgins, Ingebrethsen, Haglund,
`and Gilbert or Susa
`Petitioner contends that the subject matter of claims 4 and 5 would
`have been obvious under 35 U.S.C. § 103(a) over the combination of
`Higgins, Ingebrethsen, Haglund, and Gilbert. Pet. 33–36. Petitioner also
`contends that the subject matter of claims 8, 9, 11, and 19 would have been
`obvious under 35 U.S.C. § 103(a) over the combination of Higgins,
`Ingebrethsen, Haglund, and Susa. Id. at 36–40. We already have
`determined that Petitioner did not set forth sufficient articulated reasoning
`with rational underpinnings to support the combination of Higgins,
`Ingebrethsen, and Haglund. Petitioner does not provide any additional
`arguments with respect to the proposed combinations of Higgins,
`Ingebrethsen, Haglund, and Gilbert, and Higgins, Ingebrethsen, Haglund,
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`and Susa, with respect to an ordinarily-skilled artisan’s motivation to
`combine the cited references. Accordingly, Petitioner has not established a
`reasonable likelihood of prevailing on the grounds that claims 4 and 5 would
`have been obvious under 35 U.S.C. § 103(a) over the combination of
`Higgins, Ingebrethsen, Haglund, and Gilbert, or that claims 8, 9, 11, and 19
`would have been obvious under 35 U.S.C. § 103(a) over the combination of
`Higgins, Ingebrethsen, Haglund, and Susa.
`D. Obviousness over Takeuchi and Haglund
`Petitioner contends that the subject matter of claims 1–3, 6–10, 17,
`and 19 would have been obvious under 35 U.S.C. § 103(a) over the
`combination of Takeuchi and Haglund. Pet. 40–56. Petitioner relies on the
`Nayfeh Declaration in support of its contentions. Id.
`1.
`Overview of Takeuchi
`Takeuchi is directed to a flavor-generating device for simulated
`smoking, wherein the flavor to be inhaled by the user is generated by heating
`a liquid flavor source without relying on combustion. Ex. 1003, 1:3–8.
`Figure 1 of Takeuchi is reproduced below:
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`Figure 1 is a sectional view of a flavor-generating device described in
`Takeuchi. Id. at 2:51–52. Flavor-generating device 10 includes casing 12,
`the inner space of which is separated into upper chamber 121 and lower
`chamber 122 by partition wall 13. Id. at 4:29–33. Mouthpiece 16 having
`port 22, or, alternatively, a filter, is detachably inserted into inhalation port
`holder 14. Id. at 4:41–47. Within upper chamber 121, gas passageway 20 is
`defined between air intake port 18 and inhalation port 22. Id. at 4:50–52.
`Liquid container 32 containing liquid flavor source 34 is fixed within lower
`chamber 122. Id. at 5:28–30. Liquid passageway 37 is defined by capillary
`tube 36, with capillary tube lower end 36a positioned near the bottom of
`liquid container 32. Id. at 5:49–52. Capillary tube outlet portion 36b
`protrudes into upper chamber 121, creating cooling chamber 21 between
`capillary tube 36 and inhalation port 22. Id. at 5:1–3. Heater 42 is mounted
`to capillary tube 36, and has an inner diameter equal to that of capillary
`tube 36. Id. at 6:7–10. Liquid container 32 is provided with opening 33 to
`maintain the inner pressure of liquid container 32 at atmospheric pressure in
`order to ensure the transfer of liquid flavor source 34 by capillary force. Id.
`at 5:58–62.
`Takeuchi states that “liquid flavor source 34 contains at least a flavor
`substance,” and that “it is possible for the liquid flavor source 34 to contain a
`substance forming aerosol when heated” in order to add smoke to the flavor.
`Id. at 5:32–35. According to Takeuchi, when the described flavor-
`generating device is used as a simulated smoking article, liquid flavor source
`34 can contain tobacco components such as tobacco extracts and tobacco
`smoke condensate. Id. at 5:43–46.
`
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`Discussion
`2.
`Petitioner contends that Takeuchi describes a “rod-like” heater located
`within a tube, but “does not expressly state how the in-tube heating element
`is made.” Pet. 45. Petitioner contends that “[c]oils were a common form of
`resistive heating element, which a POSA would have had reason to use in
`the electronic cigarette of Takeuchi.” Id. Petitioner further contends that a
`person having ordinary skill in the art “would have recognized Haglund as a
`particularly efficient version of an in-tube heater (from the heat transfer
`perspective) to be used as (or as a substitution for) the ‘rod-like’ heater of
`Takeuchi.” Id. at 46 (citing Ex. 1002 ¶ 143). According to Petitioner, “[a]
`POSA interested in ensuring the Takeuchi system quickly and efficiently
`transferred sufficient heat from the coil to the liquid tobacco flavor medium
`to cause an aerosol to form would thus have had reason to incorporate
`Haglund into Takeuchi, by implementing Takeuchi’s in-tube heater as a coil
`of resistance wire.” Id.
`Patent Owner argues that “one skilled in the art would not modify
`Takeuchi’s system in which liquid to be vaporized moves due to capillary
`forces with Haglund’s turbulent flow liquid heater.” Prelim. Resp. 31.
`Patent Owner argues that “creation of turbulent flow would inhibit fluid
`movement caused by capillary forces by disrupting the surface tension of the
`liquid.” Id. at 33. Patent Owner further argues that Haglund heats a fluid
`but does not vaporize it, that Haglund “employs high power applications,
`using multi-phase AC powering,” and that “Haglund’s contemplated coil has
`a diameter up to six inches.” Id.
`We agree with Patent Owner that Petitioner has not provided
`sufficient explanation as to why a person having ordinary skill in the art
`
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`would have replaced Takeuchi’s rod-like heater with Haglund’s coil heater
`that produces turbulent flow. Takeuchi states that the objects of the
`invention include providing “a flavor-generating device which can be driven
`with a low energy, which effectively prevents a flavor source from being
`wasted” that “can be made small in size and light in weight.” Ex. 1003,
`1:59–67. Takeuchi also emphasizes that “[o]ne feature of the present
`invention resides in that transportation of a liquid flavor source from the
`liquid container containing the same to the heater site is effected by the
`capillary force or capillary.” Id. at 3:31–34. Petitioner does not explain
`adequately why a person having ordinary skill in the art would use the
`Haglund coil, which is designed to heat high velocity fluid while creating
`turbulent flow, to heat liquid that is transported by capillary force in the
`Takeuchi electronic cigarette. Petitioner’s statement that Haglund teaches “a
`particularly efficient structure for an in-tube heater (from the heat-transfer
`perspective),” without objective support, is insufficient.
`Accordingly, Petitioner has not established a reasonable likelihood
`that it would prevail on the ground that claims 1–3, 6–10, 17, and 19 would
`have been obvious under 35 U.S.C. § 103(a) over the combination of
`Takeuchi and Haglund.
`E.
`Obviousness over Takeuchi, Haglund, and Gilbert or Susa
`Petitioner contends that the subject matter of claims 4 and 5 would
`have been obvious under 35 U.S.C. § 103(a) over the combination of
`Takeuchi, Haglund, and Gilbert. Pet. 56–57. Petitioner also contends that
`the subject matter of claims 9 and 11 would have been obvious under 35
`U.S.C. § 103(a) over the combination of Takeuchi, Haglund, and Susa. Id.
`at 57–59. We have already determined that Petitioner did not set forth
`
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`sufficient articulated reasoning with rational underpinnings to support the
`combination of Takeuchi and Haglund. Petitioner does not provide any
`additional arguments with respect to the proposed combinations of
`Takeuchi, Haglund, and Gilbert, and Takeuchi, Haglund, and Susa, with
`respect to a skilled artisan’s motivation to combine the references.
`Accordingly, Petitioner has not established a reasonable likelihood of
`prevailing on the grounds that claims 4 and 5 would have been obvious
`under 35 U.S.C. § 103(a) over the combination of Takeuchi, Haglund, and
`Gilbert, or that claims 9 and 11 would have been obvious under 35 U.S.C.
`§ 103(a) over the combination of Takeuchi, Haglund, and Susa.
`
`
`III. CONCLUSION
`For the foregoing reasons, we conclude that, on the present record,
`Petitioner has not established a reasonable likelihood that it would prevail on
`its challenge that claims 1–11, 17, 19, and 20 of the ’641 patent are
`unpatentable.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that the Petition is denied.
`
`
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`IPR2015-01299
`Patent 8,910,641 B2
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`PETITIONER:
`
`Edmund J. Walsh
`James H. Morris
`WOLF, GREENFIELD & SACKS, P.C.
`EWalsh-PTAB@wolfgreenfield.com
`JMorris-PTAB@wolfgreenfield.com
`
`
`
`PATENT OWNER:
`
`Michael J. Wise
`Joseph P. Hamilton
`PERKINS COIE LLP
`patentprocurement@perkinscoie.com
`MWise@perkinscoie.com
`JHamilton@perkinscoie.com
`ACandeloro@perskinscoie.com
`
`
`
`
`
`
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