Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: March 23, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2016-01532
`Patent 8,365,742 B2
`____________
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`Paper 12
`Entered: March 23, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2016-01532
`Patent 8,365,742 B2
`____________
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`
`On February 28, 2017, R. J. Reynolds Vapor Company (“Petitioner”)
`filed a Request for Rehearing (Paper 10, “Request” or “Req. Reh’g”) of our
`Decision (Paper 9, “Decision” or “Dec.”) denying institution of inter partes
`review of claims 2 and 3 of U.S. Patent No. 8,365,742 B2 (“the ’742 patent,”
`Ex. 1001). According to Petitioner, the Decision “is based on a key factual
`error with respect to the disclosure of [U.S. Patent Application Serial No.
`12/226,818 (“the ’818 Application,” Ex. 1009)], which led the Board to
`erroneously conclude that claims 2 and 3 of the 742 patent are entitled to the
`filing date of the 818 application.” Req. Reh’g 13.
`A request for rehearing must identify specifically all matters the party
`believes we misapprehended or overlooked, and the place where each matter
`was addressed previously in a motion, an opposition, or a reply. 37 C.F.R.
`§ 42.71(d). Petitioner, as the party challenging the Decision, has the burden
`of showing it should be modified. Id. When rehearing a decision on a
`petition, the Board will review the decision for an abuse of discretion. See
`37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a
`decision is based on an erroneous interpretation of law, if a factual finding is
`not supported by substantial evidence, or if the decision represents an
`unreasonable judgment in weighing relevant factors.” Arnold Partnership v.
`Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 200
`F.3d 1305, 1315–16 (Fed. Cir. 2000)).
`Petitioner argues that the Decision is not supported by substantial
`evidence because “contrary to the Board’s implicit holding, the 818
`Application does not contemplate embodiments where the battery assembly
`and the atomizer assembly are merely located anywhere within a housing
`that is purportedly formed by shells (a) and (b).” Req. Reh’g 7.
`
`2
`
`
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`Specifically, Petitioner argues that the only embodiment “described in the
`818 application is one in which the battery assembly and the atomizer
`assembly are located in the same shell (i.e., shell (a)) of a housing that is
`purportedly formed by shells (a) and (b),” and, therefore, the 818
`Application “cannot provide written description support for claims 2 and 3,
`which permit the battery assembly and the atomizer assembly to be located
`in separate shells.” Id. (citing Pet. 2, 36, 42–44; Ex. 1012 ¶¶ 50–54). We
`are not persuaded by Petitioner’s argument.
`As set forth in the Decision, we compared the ’742 patent claims to
`the ’818 Application to determine whether the ’818 Application provides
`written description support for the “a battery assembly and an atomizer
`assembly within a housing” limitation of claims 2 and 3. Dec. 14–15. In
`that regard, we stated that
`the ’818 Application discloses that the electronic cigarette
`includes a battery assembly connected to an atomizer assembly
`within shell (a), and a cigarette bottle assembly that fits with the
`atomizer assembly located in a detachable end of the shell. Ex.
`1009, 18–19. The ’818 Application describes an embodiment
`where “the battery assembly and atomizer assembly are mutually
`connected and then installed inside the integrally formed shell (a)
`to form a one piece part,” which is plugged into the cigarette
`bottle assembly contained within shell (b). Id. at 20.
`Id. at 13.
`Claims 2 and 3 of the ’742 patent only require that the battery
`assembly and the atomizer assembly are within a housing, and we
`determined that “housing” is not limited to a one-piece shell. See id. at 7–9,
`14; Ex. 1001, 6:27–52. Because the ’818 Application describes a battery
`assembly and an atomizer assembly within shell (a) that is plugged into shell
`(b) to form a housing for an electronic cigarette, we were not persuaded by
`
`3
`
`
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`Petitioner’s argument that the “a battery assembly and an atomizer assembly
`within a housing” limitation recited in the challenged claims lacks written
`description support in the ’818 Application. Dec. 14. We fully considered
`the arguments and evidence presented in the Petition and deemed it
`insufficient to create a reasonable likelihood that claims 2 and 3 are not
`entitled to claim priority to the filing date of the ’818 Application. Petitioner
`does not persuasively show in the Request that this conclusion is
`unsupported by substantial evidence. It is not an abuse of discretion to have
`made an analysis or conclusion with which a party disagrees.
`Petitioner also argues that “the Board erred in concluding that the
`disclosures of the 742 patent and the 818 application are similar; they are
`vastly different in key respects.” Req. Reh’g 8. As described above,
`however, the relevant inquiry is whether the ’818 Application provides
`written description support for claims 2 and 3 of the ’742 patent, which
`requires a comparison of the claims to the ’818 Application’s disclosure, not
`a comparison of the ’818 Application’s disclosure to the ’742 patent
`specification. See Dec. 14–15. The differences between the ’742
`specification and the ’818 Application’s disclosure do not change our
`analysis with respect to the comparison of the claims of the ’742 patent and
`the disclosure of the ’818 Application. As a result, we did not abuse our
`discretion in denying institution of inter partes review of claims 2 and 3 on
`the asserted ground of unpatentability.
`Petitioner’s Request for Rehearing is denied.
`
`4
`
`
`
`
`
`
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`
`PETITIONER:
`
`Ralph J. Gabric
`Robert Mallin
`Yuezhong Feng
`BRINKS GILSON & LIONE
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
`
`PATENT OWNER:
`
`Michael J. Wise
`Joseph P. Hamilton
`PERKINS COIE LLP
`MWise@perkinscoie.com
`JHamilton@perkinscoie.com
`patentprocurement@perkinscoie.com
`
`5
`
`
`
`
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