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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`R.J. REYNOLDS VAPOR COMPANY,
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`Petitioner
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`v .
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`FONTEM HOLDINGS 1 B.V.,
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`Patent Owner
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`U.S. Patent 8,365,742
`Issue Date: Feb. 5, 2013
`Title: Aerosol Electronic Cigarette
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`Inter Partes Review No. 2016-01532
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`PETITIONER’S REQUEST FOR REHEARING
`PURSUANT TO 37 C.F.R. § 42.71(d)
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`TABLE OF CONTENTS
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`Page
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`BASIS FOR REHEARING ............................................................................. 1
`A.
`Legal Standard ....................................................................................... 1
`B.
`The Board’s Priority Decision Is Not Supported By
`Substantial Evidence ............................................................................. 2
`1.
`The Written Description Requirement ........................................ 3
`2.
`The Board Misapprehended The Disclosure of The
`818 Application ........................................................................... 3
`III. CONCLUSION .............................................................................................. 13
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`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.71(d), R.J. Reynolds Vapor Company
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`(“Reynolds” or “Petitioner”) requests rehearing of the Board’s Decision denying
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`institution of Inter Partes Review entered February 7, 2017 (Paper 9, hereinafter
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`“Decision”).
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`II. BASIS FOR REHEARING
`A. Legal Standard
`Pursuant to 37 C.F.R. § 42.71(c)-(d) a party may request rehearing of a
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`decision by the Board on whether to institute trial without prior authorization from
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`the Board. “The request must specifically identify all matters the party believes
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`the Board misapprehended or overlooked, and the place where each such matter
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`was previously addressed in a motion, an opposition, or a reply.” Id. The Board
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`will review the previous decision for an abuse of discretion. 37 C.F.R. § 42.71(c).
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`“An abuse of discretion may be indicated if a decision is based on an erroneous
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`interpretation of law, if a factual finding is not supported by substantial evidence,
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`or if the decision represents an unreasonable judgment in weighing relevant
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`factors.” IPR 2013-00369, Paper 39 at 2-3 (citing Star Fruits S.N.C. v. United
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`States, 393 F.3d 1277, 1281 (Fed. Cir. 2005).
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`1
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`B.
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`The Board’s Priority Decision Is Not Supported By
`Substantial Evidence
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`Petitioner’s sole ground asserts that claims 2 and 3 of U.S. Patent No.
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`8,365,742 (“742 patent,” Ex. 1001) are anticipated by U.S. Patent Application
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`Publication No. 2009/0095311 A1, published on April 16, 2009 (“311
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`publication”, Ex. 1002). The 311 publication is the publication of U.S. Application
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`Serial No. 12/226,818 (“818 application” or “parent 811 publication,” Ex. 1009).
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`In support of the ground for anticipation, Petitioner contends that the parent 818
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`application does not provide written description support for claims 2 and 3 of the
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`742 patent. As such, claims 2 and 3 are not entitled to the filing date of the parent
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`818 application, and thus the intervening publication of the 818 application (i.e.,
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`the 311 publication) anticipates claims 2 and 3. Petition at 1-10, 15, 33, 37-54; Ex.
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`1012 at ¶¶ 21-39, 42-54.
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`As set forth in the Petition, the 818 application repeatedly and narrowly
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`describes the “invention” (and not merely an embodiment of the invention) as an
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`electronic cigarette with the battery assembly and atomizer assembly located in the
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`same shell. This limiting disclosure was removed via an intervening “substitute
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`specification.” In contrast to the 818 application, which describes the invention as
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`the battery and atomizer assembly in the same shell, claims 2 and 3 of the 742
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`patent are not so limited, permitting the battery assembly and atomizer assembly to
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`be located in either the same or separate shells of a housing. Petition at 2, 5-10,
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`2
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`37-54; Ex. 1012 at ¶¶ 42-54; Ex. 1009 at 12-31; Ex. 1001 at 14. Notwithstanding
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`the difference between the scope of claims 2 and 3 of the 742 patent and the
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`narrow description set forth in the 818 application, the Board nonetheless found
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`that the 818 application provides written description support for broad claims 2 and
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`3. Decision at 14. Petitioner respectfully submits that the Board’s finding is not
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`supported by substantial evidence.
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`The Written Description Requirement
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`1.
`Compliance with the written description requirement is a question of fact.
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`ScriptPro LLC v. Innovation Assocs., 833 F.3d 1336, 1340 (Fed. Cir. 2016). As
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`the Board correctly noted, to satisfy the written description requirement, the
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`disclosure of the priority application must convey with reasonably clarity to those
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`skilled in the art that, as of the filing date sought, the inventor was in possession of
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`the claimed invention. See Decision at 10-11.
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`2.
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`The Board Misapprehended The Disclosure of The
`818 Application
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`The specification, drawings, and original claims of the 818 application
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`narrowly describe the “invention” as a battery assembly and atomizer assembly
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`located in the same shell, i.e., shell (a). Petition at 5-8, 38-44; Ex. 1012 at ¶¶ 42-
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`54; Ex. 1009 at 12-14, 16-27. Figure 2 (annotated) from the 818 application is
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`representative:
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`3
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`Battery 3
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`Atomizer 8
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`Shell (a)
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`Shell (a), which contains both the battery assembly and atomizer assembly,
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`is then connected to shell (b), which contains a perforated component for liquid
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`storage. As the 818 application explains, this two-piece arrangement permits easy
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`replacement of the liquid storage shell (b) when the liquid is exhausted. Petition at
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`6-8, 39-44; Ex. 1012 at ¶¶ 43-49; Ex. 1009 at 12, 14, 16-20, 23.
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`Additional excerpts from the 818 application are set forth in the table below.
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`As the Board will note, and as explained in the Petition, original claim 1 (the only
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`independent claim) and the specification of the 818 application narrowly describe
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`the “invention” as the battery assembly and atomizer assembly located in the same
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`shell (a).
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`Original Claim 1. Petition at 5-6, 42; Ex. 1012 at ¶ 49; Ex. 1009 at 23.
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`Specification of The 818 Application
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`4
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`Abstract. Petition at 39; Ex. 1009 at 12.
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`Contents of invention. Petition at 6-7, 39-40; Ex. 1012 at ¶ 45; Ex. 1009 at
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`14, 16.
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`Specific Mode for Carrying Out the Invention. Petition at 41-42; Ex. 1012 at
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`¶ 48; Ex. 1009 at 18, 19.
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`5
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`In stark contrast to the 818 application, which repeatedly describes the
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`“invention” as the battery assembly and atomizer assembly in the same shell (a),
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`claims 2 and 3 of the 742 patent broadly recite “a battery assembly and the
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`atomizer assembly located [anywhere] within a housing,” which the Board
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`construed as not limited to a one-piece shell. See Decision at 7 (“[w]e agree with
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`the parties that ‘housing’ is not limited to a one-piece shell”). As a result, claims 2
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`and 3 permit the battery assembly and atomizer assembly to be located in separate
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`shells of a housing; a configuration that is simply not described in the 818
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`application. See Petition at 2, 37, 42-44; Ex. 1012 at ¶¶ 50-54.
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`In finding that claims 2 and 3 nonetheless found written description support
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`in the 818 application, the Board misapprehended the scope of the disclosure of the
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`818 application. According to the Board, the “disclosure of the 818 Application is
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`similar to the disclosure of the ‘742 patent,” and, like the 742 patent, the 818
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`application “contemplated embodiments of an electronic cigarette in which the
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`battery assembly and the atomizer assembly are in a housing that is completed
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`6
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`when multiple shells [i.e., shell (a) and cigarette bottle assembly shell (b)] are
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`connected.” Decision at 13. The Board erred in two important respects.
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`First, and contrary to the Board’s implicit holding, the 818 application does
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`not contemplate embodiments where the battery assembly and the atomizer
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`assembly are merely located anywhere within a housing that is purportedly formed
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`by shells (a) and (b). To the contrary, the disclosure of the 818 application is much
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`narrower. The only embodiment – indeed the “invention” – described in the 818
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`application is one in which the battery assembly and the atomizer assembly are
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`located in the same shell (i.e., shell (a)) of a housing that is purportedly formed by
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`shells (a) and (b). Petition at 5-8, 38-44; Ex. 1012 at ¶¶ 42-54; Ex. 1009 at 12-14,
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`16-27. No other arrangement is described, nor contemplated by the 818
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`application. Petition at 2, 37, 42-44; Ex. 1012 at ¶¶ 50-54. Thus, the 818
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`application, which narrowly describes the “invention” as a battery assembly and
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`atomizer in the same shell cannot provide written description support for claims 2
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`and 3, which permit the battery assembly and atomizer assembly to be located in
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`separate shells.
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`As noted in the Petition, the facts here are analogous to the Federal Circuit
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`decisions in ICU Medical, Research Corp. Techs, and Anascape. See Petition at
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`50-54; see also Decision at 10-11. As was the situation in those cases, the claims
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`7
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`at issue here are broader than the narrow description of the invention set forth in
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`the specification.
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`Second, and perhaps more important, the Board erred in concluding that the
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`disclosures of the 742 patent and the 818 application are similar; they are vastly
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`different in key respects. The 818 application repeatedly describes the “invention”
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`as the battery assembly and atomizer assembly located in the same shell, i.e., shell
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`(a), of a housing. Petition at 5-8, 38-44; Ex. 1012 at ¶¶ 42-54; Ex. 1009 at 12-14,
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`16-27. However, this limiting disclosure was removed from the 742 patent via an
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`intervening “substitute specification.” The “substitute specification” rewrote the
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`818 application by adding “new matter” that fundamentally expanded the scope of
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`the invention. First, the term “shell (a)” was replaced in the “substitute
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`specification” with the term “housing” in an effort to broaden the invention from
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`one in which the battery and atomizer assemblies are located in the same shell (a)
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`to one in which these components may also be located in separate shells of a
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`“housing.” The “substitute specification” also added new matter by deleting the
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`818 application’s repeated use of the term “invention” in connection with the
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`arrangement of the battery and atomizer assemblies located in the same shell (a),
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`in an effort to morph the same shell “invention” into merely a preferred
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`embodiment. Petition at 8-10, 44-46; Ex. 1011 at 9, 14-19. In short, because there
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`is no written description support in the 818 application, claims 2 and 3 must
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`8
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`necessarily rely on the new matter added to the “substitute specification.” As such,
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`claims 2 and 3 are not entitled to the earlier filing date of the 818 application.
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`For the Board’s convenience, Petitioner sets forth below a few examples of
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`the broadening new matter added via the “substitute specification.” Further
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`examples of additional broadening new matter are found in the substitute
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`specification submitted with the Petition as Ex. 1011.
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`Ex. 1011 at 9.
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`The new matter added to the “substitute specification” was carried forward
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`into the 742 patent. By adding this new matter, the applicant attempted to broaden
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`the narrow “invention” described in the 818 application, i.e., the battery and
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`atomizer assemblies located together in the same shell (a), to one that permits the
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`battery and atomizer assemblies to be located in separate shells of a housing; an
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`arrangement that is simply not disclosed or otherwise contemplated by the
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`“invention” described in the 818 application. Petition at 2, 37, 42-44; Ex. 1012 at
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`¶¶ 50-54. Thus, even if one assumes that the 818 application describes a housing
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`formed from shells (a) and (b), the “invention” of the 818 application always and
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`only describes the battery assembly and atomizer assembly as located together in
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`the same shell of the housing.
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`At bottom, the figures and text of the 818 application do not convey to the
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`person of ordinary skill in the art that the inventor was in possession of the broad
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`11
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`
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`limitation of claims 2 and 3, “a battery assembly and atomizer assembly [located
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`anywhere] within a [multi-shell] housing.” To the contrary, and what the Board
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`failed to apprehend, is that the description of the invention in the 818 application is
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`narrower. At most, the 818 application conveys that the inventor was in possession
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`of an “invention” where the battery assembly and atomizer assembly are located
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`together in the same shell of a two-piece housing. The difference between the
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`narrow description of the 818 application and the broad scope of claims 2 and 3 is
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`illustrated in the chart below.
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`“Invention” Described in 818 Application Claims 2 and 3 of the 742 patent
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`The battery assembly and atomizer
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`The battery assembly and atomizer
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`assembly are located in same shell (a) of
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`assembly may be located anywhere
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`a housing that may be formed from shells
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`in a single-shell or multi-shell
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`(a) and (b).
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`housing, including in the same shell
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`or separate shells of a housing.
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`Finally, the legal authority cited by the Board is distinguishable on its facts.
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`In ScriptPro, the Federal Circuit determined that the broad claims (which were not
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`limited to using patient-identifying information for storing containers) had written
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`description support because the specification described storing the containers using
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`12
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`indexing criterion other than just patient-identifying information. 833 F.3d at
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`1340. In contrast, the only arrangement described in the 818 application is the
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`battery assembly and the atomizer assembly located together in the same shell (a).
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`This arrangement is not merely one embodiment of the described invention, but it
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`is the sole embodiment and is repeatedly characterized by the 818 application as
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`the “invention.”
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`III. CONCLUSION
`The Board’s decision is based on a key factual error with respect to the
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`scope of the disclosure of the 818 application, which led the Board to erroneously
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`conclude that claims 2 and 3 of the 742 patent are entitled to the filing date of the
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`818 application. For the reasons explained herein, and as set forth in the Petition,
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`claims 2 and 3 are not entitled to the filing date of the 818 application.
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`Accordingly, Petitioner respectfully requests rehearing and institution of
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`trial.
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`Dated: February 28, 2017
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`Respectfully submitted,
`/s/
`Ralph J. Gabric
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`Ralph J. Gabric (Reg. No. 34,167)
`Robert Mallin (Reg. No. 35,596)
`Yuezhong Feng (Reg. No. 58,657)
`Brinks Gilson & Lione
`NBC Tower – Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`Attorneys for Petitioner
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`13
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on February 28, 2017, a complete and entire copy of this Petitioner’s
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`Request for Rehearing Pursuant to 37 C.F.R. § 42.71(d) was served by Electronic
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`submission through the USPTO Patent Trial and Appeal Board End-to-End System
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`and by e-mail to
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`Michael J. Wise, Lead Counsel (MWise@perkinscoie.com)
`Joseph P. Hamilton, Back-up Counsel
`(JHamilton@perkinscoie.com)
`Jenna M. DeRosier (JDeRosier@perkinscoie.com)
`Tyler R. Bowen, Back-up Counsel
`(TBowen@perkinscoie.com)
`Amy Candeloro (ACandeloro@perkinscoie.com)
`patentprocurement@perkinscoie.com
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`Ralph J. Gabric
`/s/
`
`
`Ralph J. Gabric (Reg. No. 34,167)
`Brinks Gilson & Lione
`NBC Tower – Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`Attorney for Petitioner
`
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`Dated: February 28, 2017
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