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
`
`U.S. Patent No.: 8,365,742
`Issue Date: Feb. 5, 2013
`Title: Aerosol Electronic Cigarette
`
`
`
`Inter Partes Review No. IPR2016-01532
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,365,742 PURSUANT TO
`35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42
`
`

`
`
`
`TABLE OF CONTENTS
`
`Page
`
`V. 
`
`INTRODUCTION ........................................................................................... 1 
`I. 
`II.  MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ...................... 11 
`A. 
`Real Party-in-Interest (§ 42.8(b)(1)) ................................................... 11 
`B. 
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 11 
`1. 
`Related Matters ......................................................................... 11 
`Lead and Back-Up Counsel ................................................................. 14 
`C. 
`Service Information ............................................................................. 14 
`D. 
`III.  GROUNDS FOR STANDING ...................................................................... 15 
`IV. 
`IDENTIFICATION OF CHALLENGE AND STATEMENT
`OF THE PRECISE RELIEF REQUESTED (37 C.F.R. § 42.104
`(B)) ................................................................................................................. 15 
`THRESHOLD REQUIREMENT FOR INTER PARTES
`REVIEW ........................................................................................................ 16 
`VI.  STATEMENT OF REASONS FOR THE RELIEF
`REQUESTED ................................................................................................ 16 
`A. 
`Summary of the Argument .................................................................. 16 
`B. 
`Background of the ‘742 Patent ............................................................ 17 
`C. 
`Person Having Ordinary Skill in the Art (“PHOSITA”) ..................... 18 
`D. 
`Claim Construction ............................................................................. 19 
`E. 
`U.S. 2009/0095311 ANTICIPATES CLAIMS 2-3 OF
`THE ‘742 PATENT............................................................................. 21 
`PRIORITY DATE OF CLAIMS 2 AND 3 OF THE ‘742
`PATENT .............................................................................................. 33 
`1. 
`The Board May Rule on Priority Issues .................................... 33 
`2. 
`Legal Standards ......................................................................... 34 
`3. 
`Statement of Facts ..................................................................... 37 
`4. 
`Application Serial No. 13/079,937 ........................................... 44 
`
`F. 
`
`i
`
`
`

`
`
`
`
`
`5. 
`
`The Parent ‘818 Application Does Not Support the
`Broad “Housing” Limitation in Clams 2 and 3 of
`the ‘742 Patent .......................................................................... 47 
`VII.  CONCLUSION .............................................................................................. 54 
`
`
`
`ii
`
`
`

`
`
`
`TABLE OF AUTHORITIES
`
`CASES 
`Anascape, Ltd. v. Nintendo of Am., Inc.,
`601 F.3d 1333 (Fed. Cir. 2010) .................................................................... passim
`Core Survival, Inc. v. S & S Precision, LLC,
`PGR2015-00022, Paper 8 (Feb. 19, 2016) ........................................................... 33
`Cuozzo Speed Techs. v. Lee,
`579 U.S. ___ (2016) ............................................................................................. 19
`Fontem Ventures B.V. et al. v. NJOY, Inc. et al.,
`No. 2:14-cv-01645 (C.D. Cal., filed March 5, 2014) ........................................... 20
`ICU Med., Inc. v. Alaris Med. Sys., Inc.,
`558 F.3d 1368 (Fed. Cir. 2009) ......................................................... 35, 50, 51, 53
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................ 19
`In re NTP, Inc.,
`654 F.3d 1268 (Fed. Cir. 2011) ..................................................................... 34, 46
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) ............................................................................ 35
`Munchkin, Inc., et al. v. Luv N’ Care, Ltd.,
`IPR2013-00072, Paper 28 (Final Written Decision, Apr. 21, 2014),
`aff’d, 599 Fed. Appx. 958 (Fed. Cir. 2015) ......................................................... 34
`PowerOasis, Inc. et al. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .................................................................... passim
`Research Corp. Techs., Inc. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010) ...................................................................... passim
`Samsung Electronics Co., Ltd., et al. v. Affinity Labs. Of Texas, LLC,
`IPR2014-01181, Paper 36 (Final Written Decision, Jan. 28, 2016) .................... 34
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) ............................................................................ 35
`Verizon Servs. Corp. et al. v. Vonage Holdings Corp. et al.,
`503 F.3d 1295 (Fed. Cir. 2007) .............................................................................. 9
`
`iii
`
`
`

`
`
`
`STATUTES 
`35 U.S.C. § 102 ................................................................................................ passim
`35 U.S.C. § 103 ........................................................................................................ 15
`35 U.S.C. §§ 311-319 ................................................................................... 1, 11, 16
`OTHER AUTHORITIES 
`Patent Trial Practice Guide
`77 Fed. Reg., Vol. 77, No. 157 (2012) ................................................................. 11
`REGULATIONS 
`37 C.F.R. § 42 ......................................................................................... 1, 11, 15, 19
`
`
`iv
`
`
`

`
`
`
`EXHIBITS LIST
`
`Exhibit 1009:
`
`Description
`Exhibit No.
`Exhibit 1001: U.S. Pat. No. 8,365,742 to Lik Hon
`Exhibit 1002: U.S. Pat. Pub. No. 2009/0095311 to Li Han
`Exhibit 1003: Chinese Pat. Appl. No. 200620090805.0
`Exhibit 1004: English translation of Chinese Pat. Appl. No.
`200620090805.0
`Exhibit 1005: PCT publication corresponding to PCT/CN2007/001575
`Exhibit 1006: English translation of PCT ‘575
`Exhibit 1007: PCT publication corresponding to PCT/CN2007/001576
`Exhibit 1008: English translation of PCT ‘576
`U.S. Pat. Appl. No. 12/226,818 Filed October 29, 2008,
`including English translation of the PCT publication
`(also included as Ex. 1006), Application Data Sheet, and
`Preliminary Amendment
`Exhibit 1010: U.S. Pat. Appl. No. 13/079,937 with Preliminary
`Amendment Filed April 5, 2011
`Exhibit 1011: Amendment with Substitute Specification Filed in
`USSN 13/079,937 on August 7, 2012
`Exhibit 1012: Declaration of Dr. Robert Sturges
`Exhibit 1013: Board’s Decision Denying Institution in IPR2015-
`00859
`Rulings On Claims Construction, Fontem Ventures, B.V.
`et al. v. NJOY, Inc. et al., No. 2:14-cv-01645 (C.D. Cal.,
`filed March 5, 2014)
`Exhibit 1015: U.S. Pat. No. 8,156,944
`Complaint, Fontem Ventures B.V. et al. v. R.J. Reynolds
`Vapor Company, No. 2:16-cv-02286 (C.D. Cal., filed
`April 4, 2016)
`
`Exhibit 1014:
`
`Exhibit 1016:
`
`
`
`v
`
`
`

`
`
`I.
`
`
`INTRODUCTION
`
`Pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42, R.J. Reynolds Vapor
`
`Company (“Petitioner”) respectfully requests Inter Partes Review (“IPR”) of
`
`claims 2 and 3 of U.S. Pat. No. 8,365,742 to Lik Hon, titled “Aerosol Electronic
`
`Cigarette” (“‘742 patent,” Ex. 1001), which is currently assigned to Fontem
`
`Holdings 1 B.V. (“Patent Owner”). The Petitioner authorizes the Patent and
`
`Trademark Office to charge Deposit Account No. 23-1925 for the fees set in 37
`
`C.F.R. § 42.15(a) for this Petition, and further authorizes payment of any
`
`additional fees to be charged to this Deposit Account.
`
`Challenged claims 2 and 3 of the ‘742 patent are invalid as anticipated under
`
`35 U.S.C. § 102(b) by the parent application of the ‘742 patent, which published
`
`on April 16, 2009 (US2009/0095311 (“the ‘311 publication”), Ex. 1002). See Ex.
`
`1012 at ¶¶ 21-39. In order to survive this invalidity ground, the Patent Owner must
`
`demonstrate that claims 2 and 3 are entitled to a filing date prior to April 17, 2010.
`
`This, the Patent Owner cannot do, because claims 2 and 3 are not entitled to a
`
`filing date any earlier than April 5, 2011, the filing date of U.S. Serial No.
`
`13/079,937 (“the ‘937 application”), which matured into the ‘742 patent.1
`
`1Claims 2 and 3 are not even entitled to the April 5, 2011 filing date because the
`
`as-filed ‘937 application does not provide written description support for claims 2
`
`and 3. After filing the ‘937 application, the Applicant attempted to cure the § 112
`
`
`
`

`
`
`
`The only sufficiently early parent application on which Patent Owner could
`
`attempt to rely in an effort to avoid the invalidating ‘311 publication is U.S. Serial
`
`No. 12/226,818 filed October 29, 2008 (i.e., the “parent ‘818 application”), but the
`
`parent ‘818 application fails to provide written description support for broad claims
`
`2 and 3 of the ‘742 patent. Claims 2 and 3 of the ‘742 patent broadly encompass
`
`an electronic cigarette where the battery assembly and the atomizer assembly are
`
`located in either the same or separate shells of the claimed housing. In contrast,
`
`the parent ‘818 application narrowly describes the “invention” as an electronic
`
`cigarette with the battery assembly and the atomizer assembly located in the same
`
`one-piece shell. See Ex. 1012 at ¶¶ 42-54. See, e.g., PowerOasis, Inc. et al. v. T-
`
`Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“It is elementary patent
`
`law that a patent application is entitled to the benefit of the filing date of an earlier
`
`filed application only if the disclosure of the earlier application provides support
`
`for the claims of the later application, as required by 35 U.S.C. § 112”) (citations
`
`omitted). Nowhere does the parent ‘818 application describe or contemplate an
`
`electronic cigarette of the “invention” having the battery assembly and atomizer
`
`
`problem with a “substitute” specification that substantially re-wrote and attempted
`
`to significantly broaden the written description of the originally described
`
`invention.
`
`
`
`2
`
`

`
`
`
`assembly located in separate shells. See, e.g., Anascape, Ltd. v. Nintendo of Am.,
`
`Inc., 601 F.3d 1333, 1339 (Fed. Cir. 2010) (“A patentee is not deemed to disclaim
`
`every variant that it does not mention. However, neither is a patentee presumed to
`
`support variants that are not described.”); PowerOasis, Inc., 522 F.3d at 1306
`
`(“Entitlement to a filing date does not extend to subject matter which is not
`
`disclosed, but would be obvious over what is expressly disclosed.”) (citations
`
`omitted).
`
`The lack of written description support in the parent ‘818 application for
`
`broad claims 2 and 3 of the ‘742 patent is illustrated by the following sequence of
`
`events:
`
`May 16, 2006: The Applicant filed a Chinese priority application, CN
`
`200620090805.0, Ex. 1003; English translation, Ex. 1004. In relevant part, the
`
`Chinese priority application describes an electronic cigarette where the battery
`
`assembly and the atomizer assembly are located in separate shells. As illustrated
`
`in the annotated figures below, the battery assembly is located in a “first shell”
`
`211, the atomizer assembly is located in a “second shell” 306, and a cigarette
`
`liquid bottle 401 is located in a third piece, a cigarette bottle assembly. Ex. 1004 at
`
`4:37-40; 5:16-17, 29-30; Ex. 1003 at Figs. 2A, 3-4. The first and second shells are
`
`“connected through the thread electrode” (see 209, 302), and the cigarette bottle
`
`3
`
`

`
`
`
`assembly is plugged into an end of “second shell” 306. Ex. 1004 at 4:32-34; 5:30-
`
`32; Ex. 1003 at Figs. 2A, 3-4.
`
`
`
`May 15, 2007: The Applicant filed two PCT applications claiming priority
`
`to the above-referenced Chinese application, PCT/CN2007/001575 (“PCT ‘575”;
`
`Ex. 1005; English translation, Ex. 1006) and PCT/CN2007/001576 (“PCT ‘576”;
`
`Ex. 1007; English translation, Ex. 1008). However, the disclosures of PCT ‘575
`
`and PCT ‘576 are materially different.
`
`Consistent with the Chinese priority application, the PCT ‘576 (see figures
`
`below), describes an electronic cigarette in which the battery assembly and the
`
`atomizer assembly are located in separate shells. Ex. 1008 at Figs. 2A, 3-4.
`
`The ‘742 patent does not claim priority to PCT ‘576. Ex. 1001 at 1.
`
`
`
`4
`
`

`
`
`
`In contrast to the Chinese priority application, the PCT ‘575 (see figures
`
`below), which the Applicant later nationalized as the parent ‘818 application,
`
`describes and illustrates the “invention” as an electronic cigarette having a one-
`
`piece shell (i.e., shell (a)) in which both the battery assembly and the atomizer
`
`assembly are located. Ex. 1005 at Fig. 1.
`
`
`
`
`
`October 29, 2008: Seeking patent protection for the electronic cigarette
`
`described in PCT ‘575, the Applicant nationalized PCT ‘575, which became the
`
`parent ‘818 application. Ex 1009. Although the Application Data Sheet claims
`
`priority to the Chinese priority application (Id. at 4), the Applicant did not amend
`
`the specification to include disclosure from the Chinese priority application into
`
`the parent ‘818 specification. The Applicant also submitted a Preliminary
`
`Amendment adding new claims. Id. at 6-11. Consistent with the written
`
`description of the parent ‘818 application, sole independent claim 1 (and the other
`
`5
`
`

`
`
`
`claims by virtue of their dependency) required that “the said battery assembly
`
`connects with the said atomizer assembly and both are located in the said shell
`
`(a).” Id. at 7; 27 (Fig. 1).
`
`
`
`The parent ‘818 application further states that “the purpose of this invention”
`
`is to simplify the “complicated” three-section structure of the prior art electronic
`
`cigarettes, and that a “benefit” of the “invention” is that there is “just one
`
`connection between two parts” (i.e., between one-piece shell (a) and cigarette
`
`holder shell (b)):
`
`“The electronic cigarettes currently available on the market . . . are
`
`complicated in structure. Their cigarette bodies can be roughly
`
`divided into three sections, which have to be connected through via
`
`plugging or thread coupling before use.”2
`
`Ex. 1009 at 13, last paragraph.
`
`“The purpose of this invention is fulfilled with the following
`
`technical solution: an aerosol electronic cigarette includes a battery
`
`2 Emphasis added unless otherwise noted.
`
`6
`
`

`
`
`
`assembly, an atomizer assembly and a cigarette bottle assembly, and
`
`also includes a shell, which is hollow and integrally formed. The said
`
`battery assembly connects with said atomizer assembly and both
`
`are located in said shell.”
`
`Id. at 14, 2nd paragraph.
`
`“This invention will bring the following benefits: . . . (2) For this
`
`invention, the battery assembly and atomizer assembly are directed
`
`installed inside the shell, and then connected with the cigarette bottle
`
`assembly. That is, there is just one connection between two parts,
`
`resulting in a very simple structure. For use or change, you just
`
`need to plug the cigarette holder into the shell, providing great
`
`convenience.”
`
`Ex. 1009 at 16, last paragraph.
`
`In order for there to be “just one connection between two parts” between the
`
`shell and the cigarette bottle assembly, the shell in which the battery assembly and
`
`the atomizer assembly are installed must be a one-piece shell. See also id. at 17
`
`and 27 (Figures 1 and 2 illustrating “the electronic cigarette of this invention” as
`
`including a one-piece shell (a) in which both the battery assembly and atomizer
`
`assembly are located); 18-19 (“As shown in Figure 1-10, this utility model
`
`provides an aerosol electronic cigarette, which includes a battery assembly, an
`
`7
`
`

`
`
`
`atomizer assembly and a cigarette bottle assembly, and also includes a shell (a),
`
`which is hollow and integrally formed. The battery assembly connects with
`
`the atomizer assembly and both are located in the shell.”); 20 (“Of this
`
`embodiment, the battery assembly and atomizer assembly are mutually
`
`connected and then installed inside the integrally formed shell (a) to form a
`
`one-piece part.”); 23 (claim 1); 31 (Figure 19 illustrating one-piece shell (a)).
`
`April 5, 2011: The Applicant filed the ‘937 application (which matured into
`
`the ‘742 patent) as a divisional of the parent ‘818 application. Ex. 1010; Ex. 1001
`
`at 1. The Applicant also submitted a Preliminary Amendment amending the
`
`specification to “incorporate[] by reference” the parent ‘818 application, the PCT
`
`‘575 application, and the Chinese priority application. Ex. 1010 at 6. The
`
`Applicant canceled claims 1-29, and added new application claim 30, which
`
`required “a shell that is hollow and integrally formed: the said battery assembly
`
`connects with the said atomizer assembly, and both are located in the said shell.”
`
`Id. at 7.
`
`August 7, 2012: During prosecution of the ‘937 application, the Applicant
`
`submitted a “substitute specification.” The substitute specification broadened the
`
`disclosure of the ‘937 application by deleting text that narrowly described the
`
`“invention” as an electronic cigarette having the battery assembly and atomizer
`
`assembly located in the same, one-piece shell. See Ex. 1011. The Applicant also
`
`8
`
`

`
`
`
`submitted new application claims 31 and 32 (which issued as claims 2 and 3,
`
`respectively, of the ‘742 patent) with commensurately broadened scope, reciting,
`
`inter alia, “a battery assembly and an atomizer assembly within a housing,” instead
`
`of in the same “said shell” or “said shell (a).” Id. at 4 (emphasis added).
`
`These were broadening revisions. Nonetheless, the Applicant told the
`
`Examiner that the substitute specification merely “corrects various grammatical
`
`and punctuation errors” and “deletes extraneous and redundant content.” Id. at 2.
`
`But, that was not the case. The deletions to the specification were significant, and
`
`intended to broaden the “invention” from an electronic cigarette where the battery
`
`assembly and the atomizer assembly are located in the same one-piece shell to an
`
`invention where the battery assembly and atomizer assembly may be located in
`
`either the same or separate shells. See Anascape Ltd., 601 F.3d at 1338 (“A
`
`description can be broadened by removing limitations. The limitation to a single
`
`input member capable of movement in six degrees of freedom was removed. . . and
`
`new claims were provided of commensurately broadened scope. This is classical
`
`new matter.”); see also Verizon Servs. Corp. et al. v. Vonage Holdings Corp. et al.,
`
`503 F.3d 1295, 1308 (Fed. Cir. 2007) (“When a patent thus describes the features
`
`of the ‘present invention’ as a whole, this description limits the scope of the
`
`invention.”).
`
`9
`
`

`
`
`
`The broad scope of claims 2 and 3, which encompass an electronic cigarette
`
`with the battery assembly and atomizer assembly located in either the same or
`
`separate shells, does not have written description support in the parent ‘818
`
`application, which narrowly describes the “invention” as an electronic cigarette
`
`where the battery assembly and the atomizer assembly are located together in the
`
`same one-piece shell. As such, claims 2 and 3 are not entitled to the filing date of
`
`the parent ‘818 application, and are therefore anticipated by the ‘311 publication
`
`under 35 U.S.C. § 102(b).3
`
`
`3 There is no inconsistency with the parent ‘818 application (which was published
`
`as the ‘311 publication) anticipating, but not providing written description
`
`support, for claims 2 and 3 of the ‘742 patent. The parent ‘818 application’s
`
`disclosure of the battery/atomizer assemblies in the same shell anticipates but
`
`does not provide written description support for the broad claims that encompass
`
`an electronic cigarette where the battery/atomizer assemblies are either in the
`
`same or separate shells. See Research Corp. Techs., Inc. v. Microsoft Corp., 627
`
`F.3d 859, 872 (Fed. Cir. 2010) (broad claims of the ‘772 patent were not entitled
`
`to the priority date of the parent application, and, as a result, the patent that
`
`issued from the parent application anticipated those claims).
`
`10
`
`

`
`
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-in-Interest (§ 42.8(b)(1))
`
`For purposes of 35 U.S.C. § 312(a)(2) and 37 C.F.R. § 42.8(b)(1) only,
`
`Petitioner, R.J. Reynolds Vapor Company, identifies the real parties-in-interest as
`
`R.J. Reynolds Vapor Company, RAI Strategic Holdings, Inc., RAI Innovations
`
`Company (the direct parent company of R.J. Reynolds Vapor Company and RAI
`
`Strategic Holdings, Inc.), R.J. Reynolds Tobacco Company, and RAI Services
`
`Company. Each of the foregoing entities is a direct or indirect wholly owned
`
`subsidiary of Reynolds American Inc. Although Petitioner does not believe that
`
`Reynolds American Inc. is a real party-in-interest (see Patent Trial Practice Guide
`
`77 Fed. Reg., Vol. 77, No. 157 (2012) at 48759-60), Reynolds American Inc. and
`
`each of its other wholly owned subsidiaries (direct and indirect) nevertheless agree
`
`to be bound by any final written decision in these proceedings to the same extent as
`
`a real party-in-interest. See 35 U.S.C. § 315(e).
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`1.
`Related Matters
`Petitioner is not aware of any reexamination certificates or pending
`
`prosecution concerning the ‘742 patent. Petitioner is a defendant in the following
`
`litigation involving the ‘742 patent: Fontem Ventures B.V. et al. v. R.J. Reynolds
`
`Vapor Company, No. 2:16-cv-02286 (C.D. Cal., filed April 4, 2016). Claims 2 and
`
`3 of the ‘742 patent have been asserted against the Petitioner. Also, Petitioner filed
`
`11
`
`

`
`
`
`a petition for IPR, IPR2016-01268, challenging claims 2 and 3 of the ‘742 patent.
`
`In addition to the foregoing, the Petitioner is aware of the following additional
`
`matters involving the ‘742 patent and other related matters listed in the tables
`
`below.
`
`Pending Litigations and IPRs
`
`Case Name
`Fontem Ventures BV et al. v. Nu Mark LLC, 2-16-
`cv-02291(C.D. Cal.)
`Petition for Inter Partes Review by NU MARK
`LLC, IPR2016-01303 (PTAB) (challenging
`claims 2-3 of the ‘742 patent)
`Nu Mark LLC v. Fontem Holdings 1 B.V.,
`IPR2016-01307 (PTAB) (U.S. Patent No.
`8,375,957)
`Nu Mark LLC v. Fontem Holdings 1 B.V.,
`IPR2016-01309 (PTAB) (U.S. Patent No.
`8,863,752)
`
`Pending Patent Applications
`
`Serial No.
`U.S. Patent Application No. 13/740,011, which
`claims priority to the ‘742 patent
`U.S. Patent Application No. 15/167,659, which
`claims priority to the ‘742 patent
`U.S. Patent Application No. 15/167,690, which
`claims priority to the ‘742 patent
`U.S. Patent Application No. 15/158,421, which
`claims priority to the same foreign application as
`does the ‘742 patent
`U.S. Patent Re-Examination No. 95/002,235,
`which claims priority to the ‘742 patent
`
`Terminated Litigations and Previous IPR Petitions
`
`Filed
`April 4, 2016
`
`June 28, 2016
`
`June 28, 2016
`
`June 28, 2016
`
`Filed
`January 11, 2013
`
`May 27, 2016
`
`May 27, 2016
`
`May 18, 2016
`
`September 13,
`2012
`
`12
`
`

`
`
`
`Case Name
`Fontem Ventures BV et al v. NJOY, Inc., No.
`2:14-cv-01645 (C.D. Cal.)
`Fontem Ventures BV et al v. LOEC, Inc. et al, No.
`2:14-cv-01648 (C.D. Cal.)
`Fontem Ventures BV et al v. CB Distributors, Inc.
`et al, No. 2:14-cv-01649 (C.D. Cal.)
`Fontem Ventures BV et al v. Vapor Corp., No.
`2:14-cv-01650 (C.D. Cal.)
`Fontem Ventures BV et al v. FIN Branding
`Group, LLC et al, No. 2:14-cv-01651 (C.D. Cal.)
`Fontem Ventures BV et al v. Ballantyne Brands,
`LLC, No. 2:14-cv-01652 (C.D. Cal.)
`Fontem Ventures BV et al v. Spark Industries,
`LLC, No. 2:14-cv-01653 (C.D. Cal.)
`Fontem Ventures BV et al v. Logic Technology
`Development LLC, No. 2:14-cv-01654 (C.D. Cal.)
`Fontem Ventures BV et al v. VMR Products, LLC,
`No. 2:14-cv-01655 (C.D. Cal.)
`JT International S.A. v. Fontem Holdings 1 B.V.,
`IPR2015-01587 (PTAB) (challenging claims 1-3
`of the ‘742 patent)
`VMR Products, LLC v. Fontem Holdings 1 B.V.,
`IPR2015-00859 (PTAB) (challenging claims 1-3
`of the ‘742 patent).
`CB Distributors, Inc. v. Fontem Holdings 1 B.V.,
`IPR2013-00387 (PTAB) (U.S. Patent No.
`8,156,944)
`Logic Technology Development, LLC v. Fontem
`Holdings 1 B.V., IPR2015-00098 (PTAB) (U.S.
`Patent No. 8,375,957)
`NJOY, Inc. v. Fontem Holdings 1 B.V., IPR2015-
`01301 (PTAB) (U.S. Patent No. 8,863,752)
`JT International S.A. v. Fontem Holdings 1 B.V.,
`IPR2015-01513 (PTAB) (U.S. Patent No.
`8,375,957)
`JT International S.A. v. Fontem Holdings 1 B.V.,
`IPR2015-01604 (PTAB) (U.S. Patent No.
`8,863,752)
`
`
`13
`
`Filed
`March 5, 2014
`
`March 5, 2014
`
`March 5, 2014
`
`March 5, 2014
`
`March 5, 2014
`
`March 5, 2014
`
`March 5, 2014
`
`March 5, 2014
`
`March 5, 2014
`
`July 14, 2015
`
`March 10, 2015
`
`June 27, 2013
`
`October 21,
`2014
`
`May 29, 2015
`
`June 26, 2015
`
`July 20, 2015
`
`

`
`
`
`C. Lead and Back-Up Counsel
`
`Lead Counsel
`Ralph J. Gabric
`Reg. No. 34,167
`rgabric@brinksgilson.com
`
`Brinks Gilson & Lione
`Suite 3600, NBC Tower
`455 Cityfront Plaza Drive
`Chicago, IL 60611-5599
`T: 312-321-4200, F: 312-321-4299
`
`
`
`
`
`Back-Up Counsel
`Robert Mallin
`Reg. No. 35,596
`rmallin@brinksgilson.com
`
`Brinks Gilson & Lione
`Suite 3600, NBC Tower
`455 Cityfront Plaza Drive
`Chicago, IL 60611-5599
`T: 312-321-4200, F: 312-321-4299
`
`Yuezhong Feng
`Reg. No. 58,657
`yfeng@brinksgilson.com
`
`Brinks Gilson & Lione
`Suite 3600, NBC Tower
`455 Cityfront Plaza Drive
`Chicago, IL 60611-5599
`T: 312-321-4200, F: 312-321-4299
`
`Service Information
`
`D.
`Service of any documents via hand delivery, express mail or regular mail
`
`may be made to the lead and backup counsel at the postal mailing address above.
`
`Petitioner also consents to service by email at the above-designated email
`
`addresses.
`
`14
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`

`
`
`
`III. GROUNDS FOR STANDING
`As required by 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘742 Patent
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`is available for inter partes review and that Petitioner is not barred or estopped
`
`from requesting inter partes review on the grounds identified herein.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT OF THE
`PRECISE RELIEF REQUESTED (37 C.F.R. § 42.104 (B))
`Ground 1: Claims 2 and 3 of the ‘742 patent are unpatentable under 35
`
`U.S.C. § 102 (pre-AIA) as anticipated by U.S. Pat. Pub. No. 2009/0095311 (“the
`
`‘311 publication,” Ex. 1002). Claims 2 and 3 of the ‘742 patent are not entitled to
`
`a priority date earlier than April 17, 2010, and therefore, the ‘311 publication,
`
`which was published on April 16, 2009, qualifies as prior art under § 102(b).
`
`This Petition is accompanied by the Declaration of Dr. Robert Sturges
`
`(“Sturges Decl.”). Ex. 1012.
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`Statement of Non-Redundancy: On July 2, 2016, Petitioner filed another
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`Petition for IPR on the ‘742 patent (IPR2016-01268). The present Petition is not
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`redundant of the ground presented in the previously filed petition, which assumed
`
`without conceding that claims 2 and 3 are entitled to the priority of the filing date
`
`of PCT/CN2007/001575, and which asserts unpatentability under 35 U.S.C. § 103.
`
`In contrast, the present Petition asserts one ground of unpatentability under §
`
`102(b) and alleges that claims 2 and 3 are not entitled to a priority date any earlier
`
`than April 17, 2010.
`
`15
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`

`
`
`
`V. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW
`This Petition meets the threshold requirement for inter partes review
`
`because it establishes “a reasonable likelihood that the petitioner would prevail
`
`with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.
`
`§ 314(a). For the ground of unpatentability proposed below, there is a reasonable
`
`likelihood that Petitioner will prevail with respect to at least one of the challenged
`
`claims.
`
`VI. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`A.
`Summary of the Argument
`Claims 2 and 3 of the ‘742 patent are not entitled to the priority date of the
`
`parent ‘818 application because the parent application does not provide written
`
`description support for “a battery assembly and an atomizer assembly within a
`
`housing.” Ex. 1001 at 6:27-52. Rather than describing the broadly claimed
`
`“housing,” which encompasses the battery assembly and the atomizer assembly
`
`located in either the same or separate shells of the “housing,” the parent ‘818
`
`application narrowly describes the “invention” as one in which the battery and
`
`atomizer assemblies are located together in the same, one-piece shell. With respect
`
`to the “invention,” no other structure for the battery assembly and the atomizer
`
`assembly is described in the parent ‘818 application. Accordingly, claims 2 and 3
`
`are broader than the invention described in the parent ‘818 application, and thus
`
`are not entitled to its October 29, 2008 filing date. Thus, the published parent
`
`16
`
`

`
`
`
`application (i.e., the ‘311 publication, Ex. 1002), which discloses an electronic
`
`cigarette that is within the scope of the broadly claimed invention of claims 2 and
`
`3, is invalidating prior art under 35 U.S.C. § 102(b).
`
`Accordingly, Petitioner respectfully requests that the Board find that claims
`
`2 and 3 of the ‘742 patent are invalid under 35 U.S.C. § 102(b).
`
`Background of the ‘742 Patent
`
`B.
`The ‘742 patent is generally directed to an electronic cigarette.
`
`
`
`
`
`Fig. 1
`
`With respect to Figure 1, the electronic cigarette includes a “shell or housing
`
`(a), which is hollow and integrally formed. The battery assembly (which may
`
`include battery 3, operating indicator 1, electronic circuit board 4, and airflow
`
`sensor 5, which are connected to the battery) connects with the atomizer assembly
`
`17
`
`

`
`
`
`8, and both are located in the shell.” Ex. 1001 at 2:30-42. “[T]he cigarette bottle
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`assembly includes a hollow cigarette holder shell (b), and a perforated component
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`for liquid storage (9) inside the shell (b).” Id. at 3:49-51. “One end of the cigarette
`
`hold shell (b) plugs into the shell (a).” Id. at 3:57-58. When shell (b) is plugged
`
`into shell (a), the cigarette bottle assembly is located in one end of shell (a), and is
`
`detachable from shell (a). Id. at 2:35-36. The atomizer assembly 8 has a porous
`
`component that contacts the liquid storage 9 in the cigarette bottle assembly to
`
`achieve capillary transport of liquid from the cigarette bottle assembly to the
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`atomizer assembly 8. Id. at 4:37-40. The liquid from the cigarette bottle assembly
`
`is heated and atomized in the atomizer assembly 8. Id. at 4:9-25.
`
`Person Having Ordinary Skill in the Art (“PHOSITA”)
`
`C.
`The PHOSITA is a hypothetical person who is presumed to know the
`
`relevant prior art. Factors that guide the determination of level of ordinary skill in
`
`the art may include: the education level of those working in the field, the
`
`sophistication of the technology, the types of problems encountered in the art, the
`
`prior art solutions to those problems, and the speed at which innovations are made
`
`may help establish the level of skill in the art.
`
`The PHOSITA for the ‘742 patent at the time of the alleged invention would
`
`have had at least the equivalent of a Bachelor’s degree in electrical engineering,
`
`mechanical engineering, or biomedical engineering or related fields, along with at
`
`18
`
`

`
`
`
`least 5 years of experience designing electromechanical devices, including those
`
`involving circuits, fluid mechanics, and heat transfer. Ex. 1012 at ¶¶ 15-16.
`
`D. Claim Construction
`Pursuant to 37 C.F.R. § 42.100(b), a claim in an unexpired patent is given its
`
`broadest reasonable construction in light of the specification in which it appears.
`
`In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278-79 (Fed. Cir. 2015), aff’d
`
`Cuozzo Speed Techs. v. Lee, 579 U.S. ___ (2016).
`
`“frame”: In IPR2015-00859 the Board construed the claim term “frame”
`
`under the applicable BRI standard to mean “rigid structure.” Ex. 1013, Pap