Paper No. ___
`Filed November 16, 2016
`
`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 No. 8,365,742
`
`
`
`
`
`______________________________________________________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
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`
`
`TABLE OF CONTENTS
`
`IPR2016-01532
`Patent No. 8,365,742
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`D.
`
`E.
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. DISCUSSION ................................................................................................. 6
`A.
`The ’742 Patent’s Priority Claim ......................................................... 6
`B. A Person Of Ordinary Skill In The Art ................................................ 6
`C.
`Claim Construction............................................................................... 7
`1.
`“Housing” ................................................................................... 8
`The Petition Fails To Show A Reasonable Likelihood That The
`Claims Of The ’742 Patent Are Unpatentable ................................... 12
`The ’742 Patent Claims Are Entitled To The Benefit Of At
`Least The Filing Date Of The ’818 Application ................................ 12
`1.
`Requirements for a priority claim under 35 U.S.C. § 120 ....... 12
`2.
`The ’818 application describes “a battery assembly and
`an atomizer assembly within a housing” ................................. 14
`a.
`The claims of the ᾿742 patent are not required to
`recite every feature disclosed in the ᾿818
`application. ..................................................................... 18
`The term “the invention” and applicant’s
`subsequent amendments to the specification do not
`demonstrate that the ’818 application’s “a battery
`assembly and an atomizer assembly within a
`housing” is limited to one embodiment. ........................ 28
`(i) Use of the phrase “the invention” ....................... 29
`(ii) Amendments to the ᾿937 application .................. 32
`III. CONCLUSION ............................................................................................. 39
`CERTIFICATE OF COMPLIANCE ...................................................................... 40
`
`b.
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`IPR2016-01532
`Patent No. 8,365,742
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`TABLE OF AUTHORITIES
`
`
`
`
`
`CASES
`Absolute Software, Inc. v. Stealth Signal, Inc.,
`659 F.3d 1121 (Fed. Cir. 2011) .................................................... 5, 28, 29, 32, 35
`
`Anascape, Ltd. v. Nintendo of Am. Inc.,
`601 F.3d 1333 (Fed. Cir. 2010) .............................................................. 27, 28, 36
`
`Apple Inc. v. ContentGuard Holdings, Inc.,
`IPR2015-00457 (PTAB June 30, 2015) ............................................................. 33
`
`Cooper Cameron Corp. v. Kvaerner Oilfield Products, Inc.,
`291 F.3d 1317 (Fed. Cir. 2002) .......................................................................... 17
`
`Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp.,
`635 F.3d 1373 (Fed. Cir. 2011) .......................................................................... 26
`
`Fontem Ventures, B.V., et al. v. NJOY, Inc., et al.,
`CV 14-1645-GW, Dkt. 65 (C.D. Cal. Jan. 29, 2015) ......................................... 11
`
`Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327 (Fed. Cir. 2004) .......................................................................... 25
`
`Greene’s Energy Group, LLC v. Oil States Energy Services,
`IPR2014-00364, 2015 WL 2089119 (PTAB May 1, 2015) ............................... 25
`
`Honeywell Inc. v. Victor Co. of Japan, Ltd.,
`298 F.3d 1317 (Fed. Cir. 2002) .......................................................................... 19
`
`Hynix Semiconductor Inc. v. Rambus Inc.,
`645 F.3d 1336 (Fed. Cir. 2011) .......................................................................... 14
`
`ICU Med., Inc. v. Alaris Med. Sys., Inc.,
`558 F.3d 1368 (Fed. Cir. 2009) .................................................................... 26, 27
`
`Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC,
`381 F.3d 1142 (Fed. Cir. 2004) .......................................................................... 14
`
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`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008) .................................................................... 27, 28
`
`IPR2016-01532
`Patent No. 8,365,742
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`Research Corp. Techs. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010) ................................................................ 27, 37, 38
`
`Resonate Inc. v. Alteon Websystems, Inc.,
`338 F.3d 1360 (Fed. Cir. 2003) .......................................................................... 18
`
`Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.,
`563 F.3d 1358 (Fed. Cir. 2009) ................................... 3, 4, 15, 18, 19, 20, 24, 32
`
`ScriptPro LLC v. Innovation Assoc., Inc.,
`833 F.3d 1336 (Fed. Cir 2016) ..................................................................... 24, 25
`
`SRI Int’l v. Matsushita Elec. Corp. of America,
`775 F.2d 1107 (Fed. Cir. 1985) .................................................................... 15, 25
`
`Tronzo v. Biomet, Inc.,
`156 F.3d 1154 (Fed. Cir. 1998) .................................................................... 27, 28
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d 1555 (Fed. Cir. 1991) .......................................................................... 15
`
`Vas-Cath Inc. v. Mahurkar,
`935 F.2d (Fed. Cir. 1991) ................................................................................... 17
`
`Ventana Med. Sys., Inc. v. Biogenex Labs, Inc.,
`473 F.3d 1173 (Fed. Cir. 2006) .......................................................................... 25
`
`STATUTES
`
`35 U.S.C. § 112 ........................................................................................................ 33
`
`35 U.S.C. § 120 .................................................................................................. 12, 13
`
`35 U.S.C. § 314(a) ..................................................................................................... 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 1.73 ....................................................................................................... 34
`
`37 C.F.R. § 1.125 ..................................................................................................... 34
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`-iii-
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`M.P.E.P. § 608.01(d)................................................................................................ 34
`M.P.E.P. § 608.01(d) .............................................................................................. ..34
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`IPRZO16-01532
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`IPR2016-01532
`Patent No. 8,365,742
`Patent No. 8,365,742
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`M.P.E.P. § 1893.03(b) ............................................................................................... 6
`M.P.E.P. § 1893.03(b) ............................................................................................. ..6
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`IPR2016-01532
`Patent No. 8,365,742
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`
`
`LIST OF EXHIBITS
`
`Petitioner’s Exhibits
`
`Exhibit
`
`Description
`
`Ex. 1001
`
` U.S. Pat. No. 8,365,742 to Lik Hon
`
`Ex. 1002
`
` U.S. Pat. Pub. No. 2009/0095311 to Li Han
`
`Ex. 1003
`
` Chinese Pat. Appl. No. 200620090805.0
`
`Ex. 1004
`
` English translation of Chinese Pat. Appl. No. 200620090805.0
`
`Ex. 1005
`
` PCT publication corresponding to PCT/CN2007/001575
`
`Ex. 1006
`
` English translation of PCT ‘575
`
`Ex. 1007
`
` PCT publication corresponding to PCT/CN2007/001576
`
`Ex. 1008
`
` English translation of PCT ‘576
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`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
` U.S. Pat. Appl. No. 13/079,937 with Preliminary Amendment Filed
`April 5, 2011
` Amendment with Substitute Specification Filed in USSN
`13/079,937 on August 7, 2012
`
`Ex. 1012
`
` Declaration of Dr. Robert Sturges
`
`Ex. 1013
`
` Board’s Decision Denying Institution in IPR2015-00859
`
`Ex. 1014
`
`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)
`
`Ex. 1015
`
` U.S. Pat. No. 8,156,944
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`IPR2016-01532
`Patent No. 8,365,742
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`Ex. 1016
`
` 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)
`
`Patent Owner’s Exhibits
`
`Exhibit
`
`Description
`
`Ex. 2001
`
`Ex. 2002
`
` Declaration of Richard Meyst
` Merriam-Webster’s Collegiate Dictionary (11th ed. 2003) (selected
`pages)
`
`Ex. 2003
`
` File History for U.S. Patent No. 8,365,742
`
`Ex. 2004
`
`Ex. 2005
`
` File History for U.S. Patent No. 8,156,944
` Claim Chart – Written Description in Priority Application for U.S.
`Patent No. 8,365,742 Claims 2 and 3
`
`Ex. 2006
`
`Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00457,
`Paper 9, Decision Denying Institution of Inter Partes Review
`
`(PTAB, June 30, 2015)
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`IPR2016-01532
`Patent No. 8,365,742
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`INTRODUCTION
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`Fontem Holdings 1 B.V. (“Patent Owner”) requests that the Petition for Inter
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`
`I.
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`
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`Partes Review (“Petition”) of U.S. Patent No. 8,365,742 (the “’742 patent”) filed
`
`by R.J. Reynolds Vapor Company (“Petitioner”) on August 5, 2016 be denied
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`because Petitioner 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
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`petition” as required by 35 U.S.C. § 314(a). Petitioner challenges claims 2 and 3
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`of the ’742 patent, but does not challenge claim 1.
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`
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`The alleged anticipating prior art to claims 2 and 3 is U.S. Patent
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`Application Publication No. 2009/0095311 (“’311 publication”). The ’311
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`publication is the publication of U.S. Patent Application No. 12/226,818 (the “’818
`
`application” or “’818 priority application”), which is the parent application to the
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`’742 patent. Petitioner alleges that claims 2 and 3 of the ’742 patent are not
`
`entitled to priority to the ’818 application so that publication of the ’818
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`application is prior art to the ’742 patent. Petition at 16-17.
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`
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`Petitioner’s sole dispute with the ’742 patent’s priority claim is whether or
`
`not the ’818 application meets the written description requirement for the
`
`limitation “a battery assembly and an atomizer assembly within a housing” as
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`recited in claims 2 and 3. Id. at 16. So, the Petition boils down to a single issue: if
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`the ’818 application provides written description for the claim limitation “a battery
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`assembly and an atomizer assembly within a housing,” then claims 2 and 3 are
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`IPR2016-01532
`Patent No. 8,365,742
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`entitled to priority to the ’818 application, and the ’818 application’s ’311
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`publication is not prior art.1
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`
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`Here, the ’818 priority application discloses exactly what is claimed, “a
`
`battery assembly and an atomizer assembly within a housing.” Figure 1 of the
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`’818 application, reproduced below, 2 shows a battery 3 and accompanying parts,
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`and an atomizer 8 and accompanying parts, both within the housing (shell a and b)
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`of the device. Ex. 1009 at 27. Referring to Figures 1-10, the ’818 application
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`describes that “[t]he battery assembly connects with the atomizer assembly and
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`both are located in the shell.” Ex. 1009 at 18-19.
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`1
`Petitioner asserts essentially the same ground for another related patent, U.S.
`
`Patent No. 9,326,548 in IPR2016-01691.
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`2
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`The figures of the ᾿742 patent and ᾿818 application are the same, except that
`
`the figures of the ᾿742 patent are of higher quality than those of the ᾿818
`
`application. Compare Ex. 1001 at 4-11 (Figures 1-24) with Ex. 1009 at 27-34
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`(Figures 1-24). For this reason, Figure 1 reproduced and annotated throughout
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`Patent Owner’s response is Figure 1 from the ᾿742 patent.
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`IPR2016-01532
`Patent No. 8,365,742
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`Petitioner does not dispute that the ’818 application describes “a battery
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`assembly and an atomizer assembly in a housing” as claimed. Petition at 2, 16, 38-
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`44. Instead, Petitioner argues that claims 2 and 3 cannot be entitled to the priority
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`to the ’818 application because those claims do not include other features
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`described in the ’818 application. Specifically, the ’818 application discloses an
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`embodiment where the battery assembly and the atomizer assembly are located in a
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`“integrally formed” shell and describes the advantages of a “simple structure” over
`
`the prior art. According to Petitioner, because claims 2 and 3 do not further limit
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`the battery assembly and atomizer assembly to being located in a one-piece shell,
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`then the ’818 application cannot provide written description for those claims.
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`Petition at 2, 16, 38-44.
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`
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`But, Petitioner’s reasoning for limiting the ’818 application’s written
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`description to every advantage described in the application has been rejected by the
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`Federal Circuit. In Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., the Federal
`
`Circuit held that “when the specification sets out two different problems present in
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`the prior art, it is unnecessary for each and every claim in the patent to address
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`IPR2016-01532
`Patent No. 8,365,742
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`both problems.” 563 F.3d 1358, 1367 (Fed. Cir. 2009). So, the court affirmed
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`summary judgment that claims directed to one of two advantages described in the
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`specification were not invalid under the written description requirement. The court
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`in Revolution Eyewear summarized, “[i]nventors can frame their claims to address
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`one problem or several, and the written description requirement will be satisfied as
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`to each claim as long as the description conveys that the inventor was in possession
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`of the invention recited in that claim.” Id.
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`
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`Here, the ᾿818 application discloses “a battery assembly and an atomizer
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`assembly in a housing” as claimed. Just like in Revolution Eyewear, the ’818
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`application provides written description for the claims even though the ’818
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`application also describes other advantages over the prior art. For example, claims
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`2 and 3 address the primary advantage of the ’818 application, namely, “an aerosol
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`electronic cigarette that substitutes for cigarettes and helps the smokers to quit
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`smoking.” Ex. 1009 at 14. Claims 2 and 3 also address the ’818 application’s
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`advantage of improved atomizing efficiency. See id. at 13 (“What’s worse, the
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`[prior art] electronic cigarettes don’t provide the ideal aerosol effects, and their
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`atomizing efficiency is not high.”) (emphasis added). Just like in Revolution
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`Eyewear, there is no requirement that claims 2 and 3 must also include limitations
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`directed at every other advantage disclosed in the ’818 application, such as the
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`advantage of a “simple structure.” In fact, claim 1, which Petitioner’s do not
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`IPR2016-01532
`Patent No. 8,365,742
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`challenge here, addresses that advantage reciting “[a]n aerosol electronic cigarette,
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`comprising: . . . a shell that is hollow and integrally formed; the battery assembly
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`electrically connected with the atomizer assembly, and both are located in the shell
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`. . . .” Ex. 1001 at 6:6-26. There is no requirement that every claim include that
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`same limitation.
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`
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`The ’818 application’s use of the phrase the “invention” and subsequent
`
`amendments deleting that phrase do not limit the ’818 application’s written
`
`description. In Absolute Software, Inc. v. Stealth Signal, Inc., the Federal Circuit
`
`confirmed that “use of the phrase ‘present invention’ or ‘this invention’ is not
`
`always so limiting, such as where the references to a certain limitation as being the
`
`‘invention’ are not uniform, or where other portions of the intrinsic evidence do
`
`not support applying the limitation to the entire patent.” 659 F.3d 1121, 1136
`
`(Fed. Cir. 2011). Here, the ’818 application repeatedly describes the disclosed
`
`electronic cigarette including a battery assembly and an atomizer assembly located
`
`in an integral as an “embodiment” (Ex. 1009 at 18-20, 22), confirming that the use
`
`of the phrase “the invention” was not meant to limit the ’818 application’s written
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`description.
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`Because the ’818 application provides written description for “a battery
`
`assembly and an atomizer assembly within a housing,” the ’311 publication is not
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`prior art to the ’742 patent claims 2 and 3. Accordingly, Patent Owner requests
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`IPR2016-01532
`Patent No. 8,365,742
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`that the Petition be denied.
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`II. DISCUSSION
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`A. The ’742 Patent’s Priority Claim
`
`
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`The ᾽742 patent issued on February 5, 2013, from U.S. Application No.
`
`13/079,937 (the “᾽937 application”), which was filed on April 5, 2011. The ᾽937
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`application is a divisional of U.S. Application No. 12/226,818 (the “᾽818
`
`application”), the national phase of Application No. PCT/CN2007/001575 filed on
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`May 15, 2007, which claims the benefit of priority to Chinese Patent Application
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`No. 200620090805.0 (“CN ’805”) filed on May 16, 2006. Because the ’818
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`application is the national phase of Application No. PCT/CN2007/001575, the
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`’818 application’s actual filing date is the date the PCT was filed on May 15, 2007.
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`M.P.E.P. § 1893.03(b).
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`B. A Person Of Ordinary Skill In The Art
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`
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`A person of ordinary skill in the art at the time of the invention (a “skilled
`
`person” or similar) would have had a mechanical or electrical engineering degree,
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`industrial design degree, or similar technical degree, or equivalent work
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`experience, and 5-10 years of working in the area of electromechanical devices,
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`including medical devices. Ex. 2001 ¶ 17. As used herein, a person of ordinary
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`skill in the art, one skilled in the art, or similar phrases, refers to a person of
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`ordinary skill in the art at the time of the filing of the ’818 application on May 15,
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`IPR2016-01532
`Patent No. 8,365,742
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`2007.
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`Petitioner’s definition of a person of ordinary skill differs in that Petitioner
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`asserts that a person of ordinary skill would have “at least the equivalent of a
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`Bachelor’s degree in electrical engineering, mechanical engineering, or biomedical
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`engineering or related fields, along with at least 5 years of experience designing
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`electromechanical devices, including those involving circuits, fluid mechanics, and
`
`heat transfer.” Petition at 18-19; Ex. 1012 ¶ 16. The dispute between Patent
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`Owner’s and Petitioner’s definition of a person of ordinary skill in the art does not
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`affect the result of the Petition. Under either definition, one of ordinary skill in the
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`art would find that the ’818 application meets the written description requirement
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`for the claim limitation “a battery assembly and an atomizer assembly within a
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`housing.” Ex. 2001 ¶ 18.
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`C. Claim Construction
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`
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`Petitioner recites constructions for the terms “frame” and “porous
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`component,” which were adopted in an unrelated IPR, but provides no other
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`discussion of those constructions. Petition at 19. Petitioner construes “the porous
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`component substantially surrounded by the liquid storage component” to
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`encompass an embodiment described in Figure 1 of the ᾿742 patent, but does not
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`provide an actual textual construction of the term. Id. at 20-21. The meanings of
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`those terms are not relevant to resolution of the Petition. So, while Patent Owner
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`Patent No. 8,365,742
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`does not agree with the proposed constructions, Patent Owner does not address
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`those terms here and requests that the Board decline to construe those terms.
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`
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`The only claim term that is relevant to the Petition is the term at the center of
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`the written description dispute, “a battery assembly and an atomizer assembly
`
`within a housing.” Petitioner sets forth a construction for the term “housing.”
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`Petition at 19-20.
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`1.
`
`“Housing”
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`Patent Owner’s Construction
`No construction necessary or,
`alternatively, a casing
`
`Petitioner’s Construction
`Not limited to a one-piece shell
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`Independent claims 2 and 3 of the ’742 patent each require a “housing”:
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`2.
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`An electronic cigarette, comprising:
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`a battery assembly and an atomizer assembly within a housing with
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`the battery assembly electrically connected to the atomizer assembly;
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`a liquid storage component in the housing;
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`with the housing having one or more through-air-inlets;
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`. . . .
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`3.
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`An electronic cigarette, comprising:
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`IPR2016-01532
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`a battery assembly and an atomizer assembly within a housing with
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`the battery assembly electrically connected to the atomizer assembly;
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`with the housing having one or more through-air-inlets and an outlet;
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`. . .
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`and with the porous component in contact with a liquid supply in the
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`housing.
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`Ex. 1001 at 6:27-52.
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`
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`Petitioner and Patent Owner agree that the term “housing” should not be
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`limited to a one-piece housing. Petition at 20; Ex. 1012 ¶ 24. Patent Owner
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`further asserts that the term housing needs no construction. “Housing” is easily
`
`understood and can be readily applied without specialized technical knowledge. In
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`the alternative, Patent Owner proposes that “housing” be construed to have its
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`plain meaning, namely, “a casing.” Ex. 2001 ¶ 22.
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`
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`The claims and specification of the ᾿742 patent support Patent Owner’s
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`proposed construction of “housing.” Claim 2 requires “a battery assembly and an
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`atomizer assembly within a housing,” “a liquid storage component in the
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`housing,” and “with the housing having one or more through-air-inlets.” Ex. 1001
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`at 6:27-38 (emphasis added). Claim 3 requires “a battery assembly and an
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`atomizer assembly within a housing,” “with the housing having one or more
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`through-air-inlets and an outlet,” and “with the porous component in contact with a
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`liquid supply in the housing.” Id. at 6:39-52 (emphasis added). Thus, the claims
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`IPR2016-01532
`Patent No. 8,365,742
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`are consistent with term “housing” meaning a casing.
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`Similarly, Figure 1 of the ’742 patent (reproduced and annotated below),
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`shows a multi-piece housing. Specifically, shell (a) and (b) form a casing or
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`housing to cover and protect the internal components of the electronic cigarette,
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`which include the claimed battery assembly, atomizer assembly, and liquid storage
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`component. Ex. 1001 at. 4. See also id. at 8 (Figure 19). Ex. 2001 ¶ 24.
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`
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`Referring to Figure 1, inter alia, the specification further describes that
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`“[t]he battery assembly connects with the atomizer assembly and both are located
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`in the shell.” Ex. 1001 at 2:33-35. The specification further describes that “[o]ne
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`end of the cigarette holder shell (b) plugs into the shell (a) . . . .” Id. at 3:57-58.
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`IPR2016-01532
`Patent No. 8,365,742
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`Ex. 2001 ¶ 25.
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`
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`Petitioner agrees with the district court’s construction in Fontem Ventures,
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`B.V., et al. v. NJOY, Inc., et al., CV 14-1645-GW that “‘housing’ need not be
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`construed, other than to specify that it need not be a ‘one-piece shell.’” Petition at
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`20. The court held that the specification of the ᾿742 patent describes “two ‘shells’
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`being fit together to form the housing,” and “once fit together to form a unitary
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`whole, both shells – (a) and (b) – are ‘the shell.’” Ex. 1014 at 9-10. The court also
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`noted that both shells (a) and (b) must make up the unitary whole of the housing
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`otherwise the claim language would be inconsistent with the specification and a
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`disclosed embodiment. For example, the court noted that “a portion of the
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`cigarette bottle assembly, which the specification describes as ‘located in one end
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`of the shell, ’742 patent, at 2:35-36, is entirely in shell (b) when shells (a) and (b)
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`are combined . . . . If the housing includes shell (a) but not shell (b) . . . then the
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`claim language is inconsistent with the specification and a disclosed embodiment.”
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`Id. at 10, n.13. Thus, the claims and specification of the ᾿742 patent make clear
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`that the term “housing” includes a casing that can be made of more than one
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`component.
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`Extrinsic evidence also supports Patent Owner’s proposed construction.
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`Webster’s defines “housing” as “something that covers and protects: as a case or
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`enclosure (as for a mechanical part or an instrument).” Ex. 2002 at 4. And Patent
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`IPR2016-01532
`Patent No. 8,365,742
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`Owner’s expert agrees with Patent Owner’s proposed construction. Ex. 2001 ¶¶
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`22-26.
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`D. The Petition Fails To Show A Reasonable Likelihood That The
`Claims Of The ’742 Patent Are Unpatentable
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`
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`Petitioner proposes one ground of unpatentability, that “[c]laims 2-3 of the
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`’742 patent are anticipated by U.S. 2009/0095311.” Petition at 21. Petitioner’s
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`purported ground is based on its argument that the disclosure in one of the ’742
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`patent’s priority applications, the ’818 application, does not meet the written
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`description requirement for “a battery assembly and an atomizer assembly within a
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`housing” recited in the ᾽742 patent claims 2 and 3. So, Petitioner concludes that
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`the publication of that same priority application, the ᾽311 publication, anticipates
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`the ’742 patent claims. Petition at 16-17, 21. For the reasons set forth herein, the
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`’742 patent claims are entitled to priority to the ’818 application.
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`E.
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`The ’742 Patent Claims Are Entitled To The Benefit Of At Least
`The Filing Date Of The ’818 Application
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`1.
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`Requirements for a priority claim under 35 U.S.C. § 120
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`The effective filing date for a patent claim is the filing date of an earlier filed
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`patent application if four conditions are met. First, the earlier filed patent
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`application must have at least one inventor in common with the later filed patent
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`application. 35 U.S.C. § 120 (pre-AIA). Second, the patent application must
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`Patent No. 8,365,742
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`contain a specific reference to the earlier filed application. Id. Third, the later filed
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`application must be “filed before the patenting or abandonment of . . . the first
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`application or on an application similarly entitled to the benefit of the filing date of
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`the first application.” Id. And fourth, the claim must be described and enabled
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`under § 112 by the earlier filed patent application. Id.
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`
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`Petitioner does not dispute the first three conditions of § 120. Petitioner
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`only disputes whether the ᾽742 patent is entitled to the filing date of the ’818
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`application because, according to Petitioner, the ’818 application’s disclosure of a
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`“a battery assembly and an atomizer assembly within a housing” is limited to “an
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`electronic cigarette where the battery assembly and atomizer assembly are located
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`together in the same one-piece shell.” Petition at 53-54. The ’742 patent claims
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`are, however, entitled to priority to the ’818 application because all of the above
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`conditions are satisfied.
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`
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`Patent Owner first demonstrates that the ’742 patent claims are entitled to
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`priority to the ’818 application for the uncontested requirements. First, the earlier
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`filed patent application has the same inventor as the later filed patent application.
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`The sole inventor of the ᾽818 application is also the inventor of the ᾽937
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`application. Ex. 2003 at 5-7; Ex. 2004 at 66-68. Second, the ’937 application
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`includes a specific reference to the earlier filed application, specifically to the ᾽818
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`application. Ex. 1010 at 6. Third, the ᾽937 application was filed on April 5, 2011,
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`Patent No. 8,365,742
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`before the ᾽818 application issued as the 8,156,944 patent on April 17, 2012. Exs.
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`1001; 1015. Finally, the ’818 application describes and enables all the limitations
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`of the ᾽742 patent claims as shown in the claim chart provided as Exhibit 2005.
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`Ex. 2001 ¶ 50.
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`
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`Petitioner does not challenge any of the above requirements for the priority
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`claim except written description of “a battery assembly and an atomizer assembly
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`within a housing.” Patent Owner now addresses Petitioner’s arguments regarding
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`the ’818 application’s written description of the claim limitation, “a battery
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`assembly and an atomizer assembly within a housing.”
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`2.
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`The ’818 application describes “a battery assembly and an
`atomizer assembly within a housing”
`In Hynix Semiconductor Inc. v. Rambus Inc., the Federal Circuit confirmed
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`
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`that the “test under the written description requirement is ‘whether the disclosure
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`of the application relied upon reasonably conveys to those skilled in the art that the
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`inventor had possession of the claimed subject matter as of the filing date.’” 645
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`F.3d 1336, 1351 (Fed. Cir. 2011) (citation omitted). The “written description
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`requirement can be satisfied by ‘words, structures, figures, diagrams, formulas,
`
`etc.’” Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1154 (Fed. Cir.
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`2004) (citations omitted) (emphasis in original). “The invention is, for purposes of
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`the ‘written description’ inquiry, whatever is now claimed.” Vas-Cath Inc. v.
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`IPR2016-01532
`Patent No. 8,365,742
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`Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis in oal).
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`
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`The Federal Circuit has long rejected the notion that a patent’s claims should
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`be limited to preferred embodiments, whether through claim construction or
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`written description. See Revolution Eyewear, 563 F.3d at 1367. As the court
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`explained in SRI Int’l v. Matsushita Elec. Corp. of America, “[i]f everything in the
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`specification were required to be read into the claims, or if structural claims were
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`to be limited to devices operated precisely as a specification-described
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`embodiment is operated, there would be no need for claims.” 775 F.2d 1107, 1121
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`(Fed. Cir. 1985). The court continued, “[n]or could an applicant, regardless of the
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`prior art, claim more broadly than that embodiment. Nor would a basis remain for
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`the statutory necessity that an applicant conclude his specification with ‘claims
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`particularly pointing out and distinctly claiming the subject matter which the
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`applicant regards as his invention.’” Id.
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`
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`Here, the ᾿818 application reasonably conveys to a person of ordinary skill
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`in the art that the inventor was in possession of the claimed “a battery assembly
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`and an atomizer assembly within a housing” under either Petitioner or Patent
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`Owner’s construction of the term “housing.” Exactly what is claimed is disclosed
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`in the text and figures of the ᾿818 application. Ex. 2001 ¶¶ 32-36. And there is no
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`additional disclosure in the ᾿742 patent that is not in the ᾿818 application, which is
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`necessary to provide written description support for the claim limitation, “a battery
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`IPR2016-01532
`Patent No. 8,365,742
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`assembly and an atomizer assembly within a housing.”
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`
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`The text of the ᾿818 application contemplates embodiments of a battery
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`assembly and atomizer assembly within the casing of the electronic cigarette. For
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`example, the specification describes “[o]f this embodiment, the battery assembly
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`and atomizer assembly are mutually connected and then installed inside the
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`integrally formed shell (a) to form a one-piece part.”3 Ex. 1009 at 20. The
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`specification also describes that “the cigarette bottle assembly includes a hollow
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`cigarette holder shell (b), and a perforated component for liquid storage (9) inside
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`the shell (b).” Id. “One end of the cigarette holder shell (b) plugs into the shell (a)
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`. . . .” Id. Thus, the ᾿818 specification expressly describes the electronic cigarette
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`as having more than one shell (i.e., shell (a) and (b)), which forms the housing that
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`encases the internal components of the electronic cigarette, including the battery
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`assembly and atomizer assembly. Ex. 2001 ¶¶ 34, 36.
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`
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`The figures of the ᾿818 application also depict the claimed “a battery
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`assembly and an atomizer assembly within a housing.” The Federal Circuit has
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`3 The disclosure of the ᾿742 patent was changed from “Of this embodiment” to
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`read “In this embodiment” to correct for a grammatical error. Ex. 1011