Paper No. ___
`Filed: October 7, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`NU MARK LLC,
`Petitioner,
`v.
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`______________
`
`Case IPR2016-01303
`Patent No. 8,365,742
`
`____________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`

`
`Case IPR2016-01303
`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 .......................................... 7
`D. A Person of Ordinary Skill in The Art ................................................. 8
`III. CLAIM CONSTRUCTION ........................................................................... 8
`A. Atomizer Assembly .............................................................................. 8
`B. Other claim terms ............................................................................... 10
`IV. GROUND 1: TAKEUCHI MODIFIED IN VIEW OF
`WHITTEMORE ........................................................................................... 11
`A.
`Claim 2: Limitations missing from the combination of
`Takeuchi and Whittemore .................................................................. 12
`1.
`The combination of Takeuchi and Whittemore does not
`disclose a porous component supported by a frame ................ 12
`The combination of Takeuchi and Whittemore does not
`disclose a atomizer assembly including a porous
`component supported by a frame having a run-through
`hole ........................................................................................... 22
`Claim 3: Limitations missing from the combination of
`Takeuchi and Whittemore .................................................................. 23
`1.
`The combination of Takeuchi and Whittemore does not
`disclose a porous component between the frame and the
`outlet ......................................................................................... 23
`The combination of Takeuchi and Whittemore does not
`disclose a heating wire wound on a part of the porous
`component which is substantially aligned with the run-
`through hole ............................................................................. 25
`The Petition Fails to Provide Any Credible Reason to Modify
`Takeuchi in view of Whittemore ........................................................ 26
`
`2.
`
`2.
`
`B.
`
`C.
`
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`Patent No. 8,365,742
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`TABLE OF CONTENTS
`(continued)
`
`Page
`Takeuchi teaches away from a wire coil .................................. 26
`The Ground 1 modification changes the principle of
`operation of Takeuchi contrary to M.P.E.P. § 2143.VI ........... 33
`V. GROUND 2: BROOKS IN VIEW OF TAKEUCHI .................................. 35
`A.
`Limitations missing from the combination of Brooks and
`Takeuchi ............................................................................................. 35
`1.
`The combination of Brooks and Takeuchi does not
`disclose a heating wire wound on a part of the porous
`component ................................................................................ 35
`The Petition Fails to Provide Any Credible Reasons to Modify
`Brooks in view of Takeuchi ............................................................... 39
`1.
`A person of skill in the art would not be motivated to
`modify Brooks in light of Takeuchi in accordance with
`Petitioner’s proposed combination .......................................... 39
`Takeuchi teaches away from a replaceable atomizer
`assembly ................................................................................... 42
`The reasoning in the petition for modifying Brooks in
`view of Takeuchi is illusory ..................................................... 43
`Takeuchi is not reasonably pertinent to Brooks ...................... 45
`The Ground 2 modification changes the principle of
`operation of Brooks contrary to M.P.E.P. § 2143.VI .............. 48
`The Petition provides no motivation for the Ground 2
`modification ........................................................................................ 49
`VI. SUBSEQUENT USPTO EXAMINATION RELEVANT TO
`GROUNDS 1 AND 2 ................................................................................... 50
`VII. CONCLUSION ............................................................................................. 52
`CERTIFICATE OF COMPLIANCE ...................................................................... 54
`
`1.
`2.
`
`2.
`
`3.
`
`4.
`5.
`
`B.
`
`C.
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`Patent No. 8,365,742
`
`CASES
`Arendi S.A.R.L v. Apple Inc., Google Inc., Motorola Mobility LLC,
`__F.3d.__, No. 2015-2073, 2016 WL 4205964 (Fed. Cir. Aug. 10,
`2016) ................................................................................................................... 37
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 32
`
`In re Ratti,
`270 F. 2d 810 (CCPA 1959) ............................................................................... 34
`
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ............................................................................................ 32
`
`Leo Pharm. Prod, Ltd. v. Rea,
`726 F.3d 1346 (Fed. Cir. 2013) .......................................................................... 49
`
`STATUTES
`
`35 U.S.C. § 314(a) ............................................................................................... 1, 52
`
`OTHER AUTHORITIES
`
`37 CFR § 42.24 ........................................................................................................ 54
`
`M.P.E.P. § 2121 ....................................................................................................... 27
`
`M.P.E.P. § 2141.01(a)I ............................................................................................ 47
`
`M.P.E.P. § 2143.VI ............................................................................................ 33, 48
`
`M.P.E.P. § 2143.01 I, V, VI ..................................................................................... 34
`
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`Patent No. 8,365,742
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`LIST OF EXHIBITS
`
`Petitioner's Exhibits
`
`Exhibit
`
`Description
`
`Ex. 1001
`
` U.S. Patent No. 8,365,742 (“the 742 Patent”)
`
`Ex. 1002
`
` Excerpts from the prosecution history of U.S. Patent No. 8,365,742
`
`Ex. 1003
`
` Declaration of John M. Collins (“Collins Decl.”)
`
`Ex. 1004
`
` U.S. Patent No. 6,155,268 (“Takeuchi”)
`
`Ex. 1005
`
` U.S. Patent No. 2,057,353 (“Whittemore”)
`
`Ex. 1006
`
`Ex. 1007
`
` U.S. Patent No. 4,947,874 (“Brooks”)
` Docket entry #65 from Fontem Ventures, B.V., et al. v. NJOY, Inc.,
`et al., 2:14-cv-01645 (C.D. Cal.) (“Rulings on Claim Construction”)
`
`Ex. 1008
`
` U.S. Patent Application No. 2006/0093977 A1 (“Pellizzari I”)
`
`Ex. 1009
`
` U.S. Patent No. 7,059,307 (“Pellizzari II”)
`
`Ex. 1010
`
` U.S. Patent No. 5,894,841 (“Voges”)
`
`Ex. 1011
`
` U.S. Patent No. 5,743,251 (“Howell”)
`
`Ex. 1012
`
` U.S. Patent No. 2,461,664 (“Smith”)
`
`Ex. 1013
`
` U.S. Patent No. 3,234,357 (“Eberhard”)
`
`Ex. 1014
`
` U.S. Patent No. 5,745,985 (“Ghosh”)
`
`Ex. 1015
`
` U.S. Patent No. 4,676,237 (“Wood”)
`
`Ex. 1016
`
` U.S. Patent No. 4,945,448 (“Bremenour”)
`
`Ex. 1017
`
` U.S. Patent No. 2,442,004 (“Hayward-Butt”)
`
`Ex. 1018
`
` U.S. Patent No. 3,200,819 (“Gilbert”)
`
`
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`Ex. 1019
`
` U.S. Patent No. 6,501,052 (“Cox”)
`
`Ex. 1020
`
` U.S. Patent No. 6,491,233 (“Nichols”)
`
`Patent Owner's Exhibits
`
`Exhibit
`
`Description
`
`Ex. 2001
`
`VMR Products LLC v. Fontem Holdings 1 B.V., IPR2015-00859,
`Paper 9, DECISION Denying Institution of Inter Partes Review
`
`(PTAB Sep. 16, 2015)
`
`Ex. 2002
`
` RESERVED
`
`Ex. 2003
`
` RESERVED
`
`Ex. 2004
`
` Declaration of Richard Meyst (“Meyst Decl.”)
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2010
`
`Ex. 2011
`
`Ex. 2012
`
`Ex. 2013
`
`
`
`
`
` RESERVED
` JT International, S.A., v. Fontem Holdings 1 B.V., IPR 2015-01587,
`Paper 12, Order Dismissing Petitions (PTAB Dec. 14, 2015)
`
` U.S. Patent No. 4,735,217 (“Gerth”)
` Office Action in U.S. Patent Application No. 14/244,376 dated
`9/4/2014
` Office Action in U.S. Patent Application No. 14/244,376 dated
`8/20/2015
`
` U.S. Patent No. 4,922,901 (“Brooks ‘901”)
` Examiner Interview Summary of 12/1/2015 Interview in U.S. Patent
`Application No. 14/244,376, dated 12/4/2015
` Statement of Related Applications in U.S. Patent Application No.
`14/244,376, dated 12/22/2015
` Notice of Allowance in U.S. Patent Application No. 14/244,376,
`dated 3/15/2016
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`Patent No. 8,365,742
` Statement of Related Applications in U.S. Patent Application No.
`13/740,011, dated 12/22/2015
` Notice of Allowance in U.S. Patent Application No. 13/740,011,
`dated 6/21/2016
`
`NJOY, Inc. et al. v. Fontem Holdings 1 B.V., IPR2015-01299, Paper
`15, DECISION Denying Institution of Inter Partes Review (PTAB
`
`Dec. 8, 2015)
` Summary of Examiner Interview in U.S. Application No.
`14/244,376, dated 12/22/2015
`
`Ex. 2014
`
`Ex. 2015
`
`Ex. 2016
`
`Ex. 2017
`
`
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`Case IPR2016-01303
`Patent No. 8,365,742
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`I.
`
`INTRODUCTION
`
`Fontem Holdings 1 B.V. (“Patent Owner”) requests that NU MARK LLC’s
`
`(“Nu Mark” or “Petitioner”) Petition for Inter Partes Review of U.S. Patent No.
`
`8,365,742 (the “’742 patent”) be denied 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 petition” under 35 U.S.C. § 314(a). The
`
`Petition challenges claims 2 and 3 and does not challenge claim 1.
`
`Regarding claims 2 and 3, both claim electronic cigarettes that have an
`
`“atomizer assembly” that atomizes liquid to be inhaled by a user. The atomizer
`
`assembly includes a “porous component” and “a frame having a run through hole”
`
`with “a heating wire wound on a part of the porous component.” Claim 2 further
`
`requires that the “heating wire wound on a part of the porous component [be] in the
`
`path of airflow through the run-through hole,” and claim 3 similarly requires the
`
`“heating wire wound on a part of the porous component [be] substantially aligned
`
`with the run-through hole.” Claim 2 also requires that the frame “support[]” the
`
`porous component. The claimed configurations improve drawbacks found in prior
`
`art electronic cigarettes related to airflow and atomization efficiency.
`
`The prior art cited by Petitioner suffers from those, and many other,
`
`drawbacks. So, Petitioner employs hindsight based on the claims to combine
`
`disparate portions of the prior art as claimed. For example, Ground 1’s proposed
`
`
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`Patent No. 8,365,742
`combination of Takeuchi and Whittemore fails to disclose the claimed frame that
`
`“supports” the porous component. So, Petitioner cobbles together three separate
`
`portions of Takeuchi’s device unrelated to converting liquid into vapor, and labels
`
`them a “frame having a run through
`
`hole” that supports the “porous
`
`component,” shown right where the
`
`blue portion is the alleged frame. But those portions do not “support” a porous
`
`component and do not convert liquid to vapor. Instead, those disparate portions
`
`receive the already-vaporized particles and thus cannot be part of the claimed
`
`“atomizer assembly.” Petitioner’s purported “frame” is simply part of Takeuchi’s
`
`housing and air flow path. As such, Takeuchi and Whittemore do not render
`
`obvious claims 2 or 3.
`
`Ground 2’s combination of Brooks with Takeuchi requires a wholesale
`
`redesign of Brooks to eliminate Brooks’ primary advantage, that Brooks does not
`
`require a liquid storage container or the components necessary to transport liquid
`
`from that liquid storage container to a heater for vaporization. Instead, Brooks
`
`eliminates and teaches away from those features in favor of a disposable heating
`
`element directly impregnated with liquid sufficient to produce 6-10 puffs like a
`
`traditional cigarette. Petitioner provides no reason why one skilled in the art would
`
`have discarded that primary advantage of Brooks when combining Brooks with
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`Patent No. 8,365,742
`Takeuchi to include a liquid storage container, let alone to include the claimed
`
`frame and porous component. And even when combined, Petitioner and its expert
`
`concede that the limitation of a heating wire wound on a porous component of
`
`claims 2 and 3 is missing.
`
`For those and other reasons set forth herein, Patent Owner requests that the
`
`Board deny the Petition.
`
`II. BACKGROUND
`A. The ’742 Patent
`The ’742 patent generally relates to an “aerosol electronic cigarette.” Ex.
`
`1001, Title. The ’742 Patent explains that the disclosed device can provide
`
`nicotine, without depriving the user of the “smoking habit,” meaning a user uses
`
`the device like a traditional cigarette so that the device simulates the feel and
`
`experience of smoking. Ex. 1001 at 1: 18-20. The problem to be solved is not just
`
`in the ability to efficiently deliver nicotine like the nicotine patch or gum. The
`
`rituals of smoking must be provided.
`
`One of the problems the ’742 patent addresses in prior art electronic
`
`cigarettes is the lack of atomizing efficiency: “The electronic cigarettes currently
`
`available on the market . . . are complicated in structure. They don't provide the
`
`ideal aerosol effects, and their atomizing efficiency is not high.” Ex. 1001 at 1:
`
`21–24. The ’742 patent focuses on this problem by addressing how air flows
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`through an electronic cigarette in combination with how liquid contacts a heater to
`
`be vaporized.
`
`Air flow is a key concept in the ’742 Patent. The resistance to air flow
`
`through the electronic cigarette during inhalation should generally simulate that of
`
`a real tobacco cigarette. If the air flow resistance is too high, the user’s inhalation
`
`effort will be unduly high and the air flow rate through the e-cigarette (which
`
`entrains the nicotine vapor) will be too low. On the other hand, if the air flow
`
`resistance is too low, the user will inhale excessive air and the air flow rate will be
`
`too high. In either case, the ratio of air to atomized liquid will cause a user to
`
`inhale too much air and not enough atomized liquid or vice versa.
`
`In one embodiment, the ’742 patent discloses an improved atomizer
`
`configuration that address both airflow and vaporization. The ’742 Patent states:
`
`“the atomizer assembly is an atomizer (8), which includes a frame (82), the porous
`
`component (81) set on the frame (82), and the heating wire (83) wound on the
`
`porous component (81). The frame (82) has a run-through hole (821) on it. The
`
`porous component (81) is wound with heating wire (83) in the part that is on the
`
`side in the axial direction of the run-through hole (821).” Ex. 1001 at 5:43–49 .
`
`That embodiment is shown in Figures 17 and 18 (reproduced below),
`
`showing the heating wire (83) wound on a part of the porous component (81) in
`
`alignment with run-through hole (821).
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`As shown in Figure 18, the run-through hole (821) is aligned with portion of
`
`the porous component (81) in contact with the heating wire (83) such that the line
`
`of sight to the run-through hole (821) is partially or fully blocked. This alignment
`
`may be visualized by the result of poking a hypothetical rod through run-through
`
`hole (821). The hypothetical rod will hit heating wire (83). The context of the
`
`’742 Patent shows that “substantially aligned with the run-through hole,” as recited
`
`in claim 3, means the porous body is in line with or in the path of the run-through
`
`hole.
`
`
`
`In the embodiment shown in Figures 17 and 18, air flows into the atomizer
`
`through the run-through hole and is directed to the heating wire because the wire is
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`Patent No. 8,365,742
`aligned with the run through hole. Those design elements help to improve the
`
`aerosol effects and atomizing efficiency of the claimed electronic cigarette.
`
`The ’742 patent claims recite an atomizer according to the above
`
`embodiments. Claims 2 and 3 of the ’742 patent both require “a frame” having a
`
`“run-through hole” and “a heating wire wound on a part of the porous component.”
`
`Claim 2 further requires that the heating wire be “in the path of air flowing through
`
`the run-through hole” and claim 3 requires that the heating wire be “substantially
`
`aligned with the run-through hole.” Finally, claim 2 requires that the frame
`
`“supports” the porous component and claim 3 requires that the “porous component
`
`is between the frame and the outlet.”
`
`The Prosecution History of the ’742 Patent.
`
`B.
`Section 5 of the Petition discusses the prosecution history. Two points there
`
`merit discussion. During the Examiner Interview, Brooks US Patent No.
`
`4,947,875 was discussed whereas the Petition relies on Brooks US Patent No.
`
`4,947,874. These patents have the same drawings and technical description, and
`
`are largely duplicates. Consequently, the Examiner was aware of the content of
`
`Brooks US Patent No. 4,947,874 as discussed during the Examiner Interview.
`
`At section 5.1 the Petition paraphrases the Examiner’s comment in a first
`
`Office Action on a reason for allowance. The Examiner’s complete statement is:
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`Patent No. 8,365,742
`“The following is an Examiner's statement of reasons for
`allowance: The Examiner believes that the closest prior art of record,
`namely the CN 2719043 reference, neither teaches nor reasonably
`suggests an aerosol electronic cigarette having
`the claimed
`combination of structural features, including ‘an atomizer, which
`includes a porous component and a heating body; the said heating
`body is heating wire...the heating wire is wound on the said porous
`component’. Hence, the claim is allowable over the prior art of
`record.”
`Ex. 1002 at 7-8.
`
`C. The Prior IPR Petitions on the ’742 Patent.
`A first petition was filed on March 10, 2015 by VMR Products LLC that
`
`relied on combinations of prior art including Whittemore, but not Takeuchi or
`
`Brooks. That petition was denied on the merits on September 16, 2015. Ex. 2001
`
`at 31.
`
`A second petition was filed against the ‘742 patent by JTI International S.A.,
`
`on July 14, 2015 with eight grounds including combinations of Takeuchi, Brooks
`
`and Whittemore (i.e., the same references used in the present Petition). That
`
`second Petition was dismissed via agreement of the parties before any institution
`
`decision by the Board. Ex. 2006.
`
`Two additional IPR petitions have been filed on the ’742 patent. The Board
`
`has not issued a decision on institution for either IPR. Another petitioner, R. J.
`
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`Reynolds Vapor Company, filed IPR2016-01532 on August 5, 2016 against the
`
`‘742 patent asserting the claims are invalid over the publication of its parent
`
`application (US2009/0095311) on the basis that the claims of the ‘742 patent are
`
`not entitled to a priority claim earlier than the actual filing date of the application
`
`for the ‘742 patent. R. J. Reynolds Vapor Company also filed IPR 2016-01268 on
`
`July 2, 2016 asserting obviousness based on combination of Hon ’043 and
`
`Whittemore.
`
`D. A Person of Ordinary Skill in The Art.
`A person of ordinary skill in the art at the time of the invention (a “skilled
`
`person”) would have had a mechanical or electrical engineering degree, industrial
`
`design degree, or similar technical degree, or equivalent work experience, and 5-10
`
`years of working in the area of electromechanical devices, including medical
`
`devices. Ex. 2004 at ¶¶ 23-25. Petitioner argues a skilled person would have “3-5
`
`years of experience in designing and developing handheld devices with thermal
`
`management and fluid handling technologies.” Petition at 24-25. Petitioner has
`
`not met its burden either way.
`
`III. CLAIM CONSTRUCTION
`A. Atomizer Assembly.
`Patent Owner’s Construction
`
`Petitioner’s Construction
`
`that
`“a component or components
`convert(s) liquid into aerosol or vapor”
`
`No construction.
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`Claims 2 and 3 require “an atomizer assembly.” The claims also expressly
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`recite the components make up the atomizer assembly.
`
`Claim 2 recites:
`
`An electronic cigarette, comprising:
`
`. . .
`the atomizer assembly including a porous component supported
`by a frame having a run-through hole;
`a heating wire wound on a part of the porous component in the
`path of air flowing through the run-through hole; and
`the porous component substantially surrounded by the liquid
`storage component.
`And claim 3 recites:
`
`An electronic cigarette, comprising:
`
`. . .
`the atomizer assembly includes a frame having a run-through
`hole, and a porous component between the frame and the outlet;
`a heating wire wound on a part of the porous component which
`is substantially aligned with the run-through hole; and
`with the porous component in contact with a liquid supply in
`the housing.
`In short the claimed atomizer assemblies include a “frame,” “a porous
`
`component,” and a “heating wire wound on part of the porous component.” Each
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`of those componets is the portion of the claimed device that “converts liquid into
`
`aerosol or vapor.”
`
`The frame 82 shown in Figs. 17 and 18 of the ‘742 patent is a part of the
`
`atomizer assembly as it supports the porous component 81 and also directs air flow
`
`to the heating wire 83 wound on the porous component 81 to convert liquid into
`
`aerosol.
`
`Although claims 2 and 3 are directed to the atomizer embodiment of Figs.
`
`17-18, the discussion of the embodiment of Figs. 5-8 is relevant to construction of
`
`“atomizer assembly.” The ’742 specification describes how the disclosed
`
`atomizers heat the liquid “for atomization.” Ex. 1001 at 4:25. The ’742 patent
`
`further describes that “as shown in FIGS. 5-8, the atomizer assembly is an
`
`atomizer (8), which includes a porous component (81) and a heating rod (82).” Ex.
`
`1001 at 3:6-8. The porous component and the heating rod 82 or heating wire 83,
`
`are components directly involved in atomization. Each of those components is
`
`used to “convert liquid into aerosol or vapor.”
`
`B. Other claim terms.
`Petitoner proposes claim constructions for the terms “substantially,”
`
`“frame,” and “porous component.” Petition at 22-24. Patent Owner does not
`
`dispute the proposed construction for “substantially” to mean “in significant part or
`
`extent.”
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`Patent No. 8,365,742
`Patent owner disagrees with the proposed construction for “frame” and
`
`“porous component.” But, because those constructions are not relevant to this
`
`response, Patent Owner does not dispute those constructions here. Patent Owner
`
`reserves its right to dispute those constructions if the IPR is instituted.
`
`IV. GROUND 1: TAKEUCHI MODIFIED IN VIEW OF WHITTEMORE
`Ground 1 proposes that claims 2 and 3 are obvious over the combination of
`
`Takeuchi (Ex. 1004) modified by Whittemore (Ex. 1005). The Petition at page 27
`
`asserts that Takeuchi discloses all of the limitations of claims 2 and 3 except for
`
`the heating wire wound around a porous component. So, Petitioner relies on
`
`Whittemore for that limitation. Petition at 36 and elsewhere then argues that it
`
`would be obvious to modify Takeuchi by discarding the solid heater 42 of
`
`Takeuchi and replacing it with the wire of Whittemore wound around the
`
`protruding end of the pore structure of Takeuchi. Ex. 1004 at 9, Fig. 15 (302).
`
`Even if Takeuchi is modified using Whittemore as proposed, Takeuchi as
`
`modified fails to disclose several limitations of both claims 2 and 3. Regardless,
`
`Petitioner provides no credible motivation why a person of ordinary skill would
`
`modify Takeuchi in view of Whittemore.
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`Patent No. 8,365,742
`A. Claim 2: Limitations missing from the combination of Takeuchi
`and Whittemore.
`1.
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`The combination of Takeuchi and Whittemore does not
`disclose a porous component supported by a frame
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`Claim 2 recites “the atomizer assembly including a porous component
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`supported by a frame having a run-through hole.” As shown in the embodiment of
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`Figs. 17 and 18 of the ’742 patent, the porous component is 81, the frame is 82 and
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`the run-through hole is 821. Ex. 1001 at 5:42-49.
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`At page 36 the Petition argues “that the heater 42 in Takeuchi could be
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`embodied as a heating wire wound around
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`the protruding end of
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`the
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`intercommunicating pore structure in the capillary tube 36.” Thus, in Ground 1 the
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`presumptive porous component is the pore structure 302 in Figs. 14-15, moved into
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`the capillary tube 36 in Fig. 1 of Takeuchi. The “porous component supported by a
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`frame” limitation is discussed at pages 48-53 of the Petition and shown in the
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`images below.
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`Case IPR2016-01303
`Patent No. 8,365,742
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`The Petition at page 45 equates the casing 12 shown in blue outline in the
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`first image above to the claimed “housing.” At page 51 the Petition then argues
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`that “[f]urther, as shown in Fig. 1, the capillary tube 36 is supported by a rigid
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`structure (i.e., a frame) consisting of at least the partition wall 13, a squeeze plate
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`24, and the upper portion of the casing 12.” Ex. 1003 at ¶ 54 makes the same
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`conclusion. The three components making up the alleged frame is shown in blue
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`below.
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`Case IPR2016-01303
`Patent No. 8,365,742
`But, neither Petitioner nor Dr. Collins provide any explanation why these
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`disparate components together form a “frame.”
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`First, Takeuchi does not teach that the capillary tube 36 is attached to, let
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`alone supported by, the partition wall 13. Rather, Takeuchi teaches “[t]he upper
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`end portion of the capillary tube 36 protrudes into the upper chamber 121 of the
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`casing 12 somewhat downstream of the squeeze plate 24 and is equipped with the
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`heater 42 serving to gasify the liquid flavor source 34.” Ex. 1004 at 6:4-7
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`(emphasis added).
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`In other words, the capillary tube 36 protrudes through a clearance hole in
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`the partition wall 13. The capillary tube 36 is not supported by the partition wall
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`13. The image on the right below is an enlargement of Figure 1 of Takeuchi.
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`Case IPR2016-01303
`Patent No. 8,365,742
`An understanding of how the capillary tube 36 is supported is provided by
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`Takeuchi’s disclosure about preventing liquid from leaking out of the liquid
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`container 32. Takeuchi states:
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`“It is desirable for the opening 33 to be formed at the highest
`position of the container 32 during the ordinary operation of the
`flavor-generating device and to have a sufficiently small diameter so
`that the liquid flavor source 34 may not leak to the outside
`therethrough even if the device is inadvertently turned upside down.
`For example, a pin hole extending through the wall of the container 32
`satisfies the particular requirements of the opening 33.”
`Ex. 1004 at 5:62-6:3.
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`To prevent leaking there must be a seal between the capillary tube 36 and
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`the liquid container 32 at the top of the liquid container 32 where the capillary tube
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`36 extends out of the liquid container 32. Without a seal between the capillary
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`tube 36 and the liquid container 32, liquid would leak out of the liquid container if
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`the device was turned upside down. Ex. 2004 at ¶¶ 46-47.
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`If the capillary tube 36 is sealed to the liquid container 32, which it must be
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`to avoid leaking, then the capillary tube 36 is necessarily attached to the liquid
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`container 32, and thus supported on and by the liquid container 32. That is what
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`Takeuchi means by “The upper end portion of the capillary tube 36 protrudes into
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`the upper chamber 121…” as quoted above. The capillary tube protrudes through
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`the partition wall 13, it is not supported by it.
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`Patent No. 8,365,742
`Trying to support the capillary tube 36 with the partition wall 13 is not only
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`not necessary, it would also be more difficult. Specifically, attaching the capillary
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`tube 36 to the partition wall 13 would require precise alignment of the components.
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`Misalignment resulting from mechanical tolerances would stress the capillary tube
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`and the seal on the liquid container 32 around the capillary tube 36, which would
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`increase risk of leaks. The person of ordinary skill, knowing these factors, would
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`understand that the capillary tube 36 is supported by the liquid container 32, and
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`that it is not supported by the partition wall 13. Ex. 2004 at ¶ 48.
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`Manufacturing the Takeuchi device with the capillary tube 36 supported on
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`the partition wall 13, and not on the liquid container 32, would be difficult.
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`Referring to Fig. 1 of Takeuchi above, this would require sealing the capillary tube
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`36 to the liquid container after the liquid container 32 is installed into the casing
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`12. A person of ordinary skill would understand that Takeuchi teaches sealing the
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`capillary tube to the liquid container 32, to avoid this problem.
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`At page 52 the Petition states:
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`Further, the liquid container 32 does not support the as the [sic]
`capillary tube 36 and heater 42, because Takeuchi describes capillary
`tube 36 as being ‘inserted’ within the liquid container 32, and thus the
`liquid container 32 does not play a role in supporting or holding up
`the capillary tube 36.
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`Nonsense. Takeuchi anticipates the possibility of the device being
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`inadvertently turned upside down and identifies opening 33 as the only possible
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`point of leakage because capillary tube 36 is sealed into and supported by the
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`liquid container 32.
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`Second, the disparate component that allegedly makes up the frame, squeeze
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`plate 24, is entirely unrelated to the partition wall 13. There is no reason for
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`viewing the two as a “frame.” Ex. 2004 at ¶52-54.
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`In relevant part, Takeuchi discloses:
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`“As shown in FIG. 1, the flavor-generating device 10 includes a
`casing 12 made of plastic, metal, ceramic, wood, etc. The inner space
`of the casing 12 is partitioned into an upper chamber 121 and a lower
`chamber 122 by a partition wall 13. As will be described herein later,
`the upper chamber 121 is used as a gas passageway 20 for forming a
`gaseous stream of a flavor which is to be inhaled by a user. On the
`other hand, the lower chamber 122 is used as a housing for housing a
`liquid container 32, a power source 44 and a control circuit.”
`Ex. 1004 at 4:30-39.
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`Takeuchi makes no other mention of the partition wall 13.
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`On the squeeze plate 24, Takeuchi teaches:
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`“A squeeze plate 24 having a squeeze hole 24a formed in the
`central portion is arranged within the gas passageway 20 and
`positioned close to the air intake port 18. The squeeze hole 24a of the
`squeeze plate 24 act to regulate or direct the air introduced from the
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`intake port 18 selectively toward an outlet portion 36b of a capillary
`tube 36 described in detail below.”
`Ex. 1004 at 4:61-67.
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`Takeuchi continues: “The upper end portion of the capillary tube 36
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`protrudes into the upper chamber 121 of the casing 12 somewhat downstream of
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`the squeeze plate 24 and is equipped with the heater 42 serving to gasify the liquid
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`flavor source 34.” Ex. 1004 at 6:4-7. In other words, the squeeze plate 24 in
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`Takeuchi is entirely unrelated to the partition wall 13. Ex. 2004 at ¶54. The
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`Petition provides no basis for grouping those components together as a frame.
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`Petitioner’s conclusion is hindsight based on the claims. Ex. 2004 at ¶ 52.
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`Third, there is even less reason to include “the upper portion of the casing
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