UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner
`
`v.
`
`RAI STRATEGIC HOLDINGS, Inc.,
`Patent Owner
`
`Patent No. 9,901,123
`
`Inter Partes Review No. IPR2020-01602
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`

`

`Patent Owner Preliminary Response
`IPR2020-01602
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`Page
`INTRODUCTION AND SUMMARY OF ARGUMENT ............................. 1 
`BACKGROUND ............................................................................................ 3 
`A.
`The ’123 Patent .................................................................................... 3 
`B.
`The Challenged Claims ........................................................................ 6 
`C.
`Related Proceedings On The ’123 Patent ............................................. 8 
`D.
`The Asserted Prior Art ....................................................................... 10 
`1.
`Hon ’043 .................................................................................. 12 
`2.
`Brooks ...................................................................................... 15 
`3. Whittemore ............................................................................... 16 
`Level Of Ordinary Skill In The Art .................................................... 17 
`E.
`Claim Construction ............................................................................ 17 
`F.
`III. THE BOARD SHOULD DENY INSTITUTION IN VIEW OF THE
`PARALLEL ITC PROCEEDING ................................................................ 18 
`IV. THE BOARD SHOULD DENY INSTITUTION BECAUSE THE
`PETITION IS NOT REASONABLY LIKELY TO SUCCEED. ................ 26 
`A.
`Petitioner Has Not Shown A Reasonable Likelihood That The
`Challenged Claims Are Unpatentable Under Ground 1 ..................... 27 
`1.
`Petitioner Has Not Shown That Hon ’043 Discloses A
`Rod-Shaped Carrier Device That Is Positioned So That
`During Draw “the mixture comprising the tobacco extract
`and the aerosol-forming material can be wicked into
`contact with the electrical resistance heater and
`volatilized” ............................................................................... 28 
`Petitioner Has Not Demonstrated That It Would Have
`Been Obvious To Modify Hon ’043 With Whittemore ........... 32 
`
`2.
`
`
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`
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`TABLE OF CONTENTS
`(continued)
`
`Patent Owner Preliminary Response
`IPR2020-01602
`
`
`Page
`
`3.
`
`4.
`
`Petitioner Has Not Shown That Hon ’043 Discloses “a
`puff-actuated controller within the tubular outer housing
`and adapted for regulating current flow through the
`electrical resistance heater during draw” ................................. 35 
`Petitioner Has Not Demonstrated That It Would Have
`Been Obvious To Modify Hon ’043 With Brooks .................. 36 
`Petitioner Has Not Shown A Reasonable Likelihood That The
`Challenged Claims Are Unpatentable Under Grounds 2 And 3 ........ 39 
`CONCLUSION ............................................................................................. 39 
`
`B.
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`-ii-
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`V.
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`Patent Owner Preliminary Response
`IPR2020-01602
`
`
`TABLE OF AUTHORITIES
`
`Page
`
`
`
`CASES
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 at 5-16 (PTAB Mar. 20, 2020)
`(precedential) ...............................................................................................passim
`
`Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc.,
`IPR2020-00800, Paper 10 (PTAB Oct. 22, 2020) ........................................ 20, 24
`
`Facebook, Inc. v. Sound View Innovations, LLC,
`IPR2017-01005, Paper 13 (PTAB Sept. 1, 2017) ............................................... 17
`
`Fitbit, Inc. v. Koninklijke Philips N.V.,
`IPR2020-00771, Paper 14 (PTAB Oct. 19, 2020) ............................ 20, 22, 23, 24
`
`Garmin Int’l, Inc. v. Koninklijke Philips N.V,
`IPR2020-00754, Paper 11 (PTAB Oct. 27, 2020) ........................................ 20, 24
`
`Google LLC v. EcoFactor Inc.,
`IPR2020-00946, Paper 11 (PTAB Nov. 18, 2020) ....................................... 20, 24
`
`Google LLC v. Uniloc 2017 LLC,
`IPR2020-00115, Paper 7 (PTAB March 23, 2020) ............................................ 26
`
`Grain Processing Corp. v. Am. Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................ 26
`
`Jones v. Hardy,
`727 F.2d 1524 (Fed. Cir. 1984) .......................................................................... 26
`
`Lantz Med., Inc. v. Bonutti Research, Inc.,
`IPR 2015-00995, Paper 11 (PTAB Oct. 21, 2015) ....................................... 31, 37
`
`-iii-
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`

`

`TABLE OF AUTHORITIES
`(continued)
`
`Patent Owner Preliminary Response
`IPR2020-01602
`
`
`Page
`
`NHK Spring Co. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential) ..... 19, 24, 25, 26
`
`Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc.,
`IPR2020-00919, Paper 9 (PTAB Nov. 16, 2020) ........................................passim
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) .......................................................... 17
`
`R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V. (“RJRV”),
`IPR2016-01268, Paper 63 (PTAB Dec. 19, 2017) ....................................... 32, 33
`
`Salpeter v. Arp Wave, LLC,
`IPR2019-01384, Paper 12 (PTAB Jan. 27, 2020) ........................................ 31, 37
`
`SK Innovation Co., Ltd. v. LG Chem Ltd.,
`IPR2020-01036, Paper 13 (PTAB Nov. 30, 2020) ....................................... 20, 24
`
`STATUTES
`
`35 U.S.C. § 103 ........................................................................................................ 26
`
`35 U.S.C. § 311 ............................................................................................ 11, 31, 37
`
`35 U.S.C. § 314 .............................................................................................. 1, 19, 24
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.104 ....................................................................................... 11, 31, 37
`
`Patent Trial and Appeal Board Consolidated Trial Practice Guide
`(November 2019) (“Practice Guide”), available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?M
`URL= .................................................................................................................. 20
`
`-iv-
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`Patent Owner Preliminary Response
`IPR2020-01602
`
`
`LIST OF PATENT OWNER EXHIBITS
`
`Ex. 2003
`
`Ex. 2001 Complaint from ITC Investigation No. 337-TA-1199
`Ex. 2002
`ITC Procedural Schedule in Certain Tobacco Heating Articles and
`Components Thereof, ITC Inv. No. 337-TA-1199 (June 11, 2020)
`Excerpt of Respondents’ Pre-Hearing Brief in Certain Tobacco
`Heating Articles and Components Thereof, ITC Inv. No. 337-TA-
`1199 (December 11, 2020)
`Ex. 2004 U.S. Patent Application Publication No. 2007/0267031
`Ex. 2005
`Excerpts of Respondents’ Joint Disclosure of Final Contentions in
`Response to Individual Interrogatory No. 12 (Final Invalidity
`Contentions) in Certain Tobacco Heating Articles and Components
`Thereof, ITC Inv. No. 337-TA-1199 (September 18, 2020)
`
`
`Ex. 2006 Order Denying Respondents’ Motion for Leave to Amend Their
`Response to the Complaint in Certain Tobacco Heating Articles and
`Components Thereof, ITC Inv. No. 337-TA-1199 (October 22, 2020)
`
`
`Ex. 2007
`
`
`Ex. 2008
`
`
`
`
`
`
`
`
`
`
`
`Excerpts of Deposition Transcript of Stewart M. Fox in Certain
`Tobacco Heating Articles and Components Thereof, ITC Inv. No.
`337-TA-1199 (November 6, 2020)
`
`Excerpts of Ruyan Product Internal R&D Assessment (March 2007)
`
`-v-
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`

`

`Patent Owner Preliminary Response
`IPR2020-01602
`
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`This is Petitioner’s second IPR Petition on the ’123 patent. (See IPR2020-
`
`I.
`
`00919 (first Petition on the ’123 patent).) The Board should deny institution of this
`
`Petition for the same reason it denied the first Petition – the ITC will address the
`
`validity of the challenged claims in the ’123 patent long before the PTAB would
`
`possibly issue any Final Written Decision on this Petition.
`
`The ITC will complete its evidentiary hearing on the ’123 patent by the end
`
`of this month (January 2021). ALJ Cheney will issue his Initial Determination by
`
`May 14, 2021, and the Commission will issue its Final Determination by
`
`September 15, 2021 – almost seven months before any hypothetical April 2022 Final
`
`Written Decision in an instituted IPR proceeding here. Petitioner filed its first IPR
`
`Petition on the ’123 patent in May 2020 – four months before this second Petition –
`
`and the Board exercised its discretion under 35 U.S.C. § 314(a) to deny the first
`
`Petition. See Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc., IPR2020-
`
`00919, Paper 9 at 6-13 (PTAB Nov. 16, 2020). The Board carefully evaluated the
`
`six factors set forth in Apple Inc. v. Fintiv, Inc. (hereinafter “Fintiv”), IPR2020-
`
`00019, Paper 11 at 5-16 (PTAB Mar. 20, 2020) (precedential) in denying Petitioner’s
`
`first challenge to the ’123 patent. See IPR2020-00919, Paper 9 at 6-13. The Board
`
`should do so again here, where the only significant difference is that the ITC
`
`investigation is even closer to completion.
`
`
`
`1
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`

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`Patent Owner Preliminary Response
`IPR2020-01602
`
`Even if the Board were to consider the merits of this Petition, the Board would
`
`find that Petitioner has not shown a reasonable likelihood of success on its proposed
`
`grounds. Petitioner challenges claims 1-7, 9, 11-19, 21, and 23-26, and only Ground
`
`1 addresses the independent claims, claims 1 and 15. (Petition at 3.) Grounds 2 and
`
`3 address only a handful of dependent claims, by adding fourth and fifth secondary
`
`references, and are thus only relevant if Petitioner is successful on Ground 1. (Id.)
`
`
`
`Petitioner’s Ground 1 applies a broad-brush approach in challenging claims 1
`
`and 15, vastly oversimplifying the claimed smoking articles. Petitioner, in effect,
`
`contends that one change here, and another change there, would simply have been
`
`obvious. But this is incorrect on the law and the facts. The obviousness inquiry
`
`asks, notwithstanding the differences between the claims and the prior art, whether
`
`a person of ordinary skill in the art would have been motivated to make the particular
`
`combination claimed, and in the manner claimed. Petitioner cannot meet its burden
`
`to show that the challenged claims would have been obvious.
`
`For example, the challenged claims require a specific wick and heater
`
`configuration that allows a liquid mixture to be “wicked into contact” with an
`
`electrical resistance heater. This was the limitation that the Patent Office previously
`
`relied on in allowing the claims, and Petitioner has not shown that its chosen
`
`references describe or suggest this limitation. (See Ex. 1002 at 143-44.) The
`
`challenged claims also require a puff-actuated controller for regulating current flow
`
`2
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`

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`Patent Owner Preliminary Response
`IPR2020-01602
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`during draw. Petitioner recognizes the shortcomings of its primary reference –
`
`Chinese Patent No. C2719043Y (“Hon ’043”) – with respect to these features and
`
`tries to plug the holes in its case with secondary references. But these secondary
`
`references are not sufficient. They describe archaic or more complicated devices
`
`that a POSA would not have been motivated to combine with Hon ’043 to arrive at
`
`the claimed inventions. If the Board reaches the merits in determining whether to
`
`institute trial, it should deny this Petition for substantive reasons.
`
`II. BACKGROUND
`A. The ’123 Patent
`The ’123 patent generally describes smoking articles that heat tobacco rather
`
`than burn it. (See, e.g., Ex. 1001 at 4:42-52 (The patent is directed to smoking
`
`articles that “produce aerosols that are not necessarily … a result of burning of
`
`tobacco, but rather … a result of the application of heat upon tobacco or materials
`
`that are in contact with tobacco.”).) In addition to heat-not-burn devices, the ’123
`
`patent also describes the use of e-liquid as an aerosol forming material. (Id. at 13:18-
`
`21.) For example, the patent discloses aerosol-forming material formulations of
`
`mixtures of glycerin and water, or mixtures of propylene glycol and water. (Id. at
`
`14:13-15.)
`
`The ’123 patent notes that the aerosol-forming material can be maintained
`
`within the smoking article in a number of ways. For example, the aerosol-forming
`
`3
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`Patent Owner Preliminary Response
`IPR2020-01602
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`material can be contained within a container in liquid form, or soaked within
`
`absorbent fibrous materials or sponge—like materials. (Id. at 14:26-29.) The smoking
`
`articles disclosed in the ’ 123 patent contain control circuitry that may include a
`
`controller for regulating current flow through the device. (Id. at 30:37-32:34.) The
`
`controller may be “puff-actuated,” meaning that the device senses when a user takes
`
`a puff on the device and then actuates the control circuitry to operate the device.
`
`Figure 1, reproduced below, shows a longitudinal cross-sectional View of one
`
`embodiment of the ’ 123 patent invention:
`
`Controller 50
`
`Outer housing 20
`
`Smoking article 10
`
`Power source 36
`
`a Heating element 72
`
`\
`@
`
`o
`
`40
`
`@
`
`a
`
`35
`
`\
`
`23
`
`as
`
`mi
`
`120
`
`09N
`
`7/////%’|WW
`
`x 9
`
`,
`
`n‘\““““““‘.Vn“““‘L\““\“A“‘““““‘V“‘\“‘A“- 1..
`,‘_nn\\\'q
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`\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\\r,
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`89
`us
`
`95
`9s
`
`45
`
`10
`
`60
`
`Dlstal end 13
`
`Mouth end 15
`
`HG. l
`
`(Id. at Fig. 1 (annotated).)
`
`

`

`Patent Owner Preliminary Response
`IPR2020-01602
`
`The smoking article 10 is “rod-like or tubular in nature, generally akin to a
`
`cigarette-type or cigar-type smoking article” and has an outer housing 20 that is
`
`likewise “generally tubular in shape.” (Id. at 19:41-50.) The outer housing 20
`
`includes a mouth-end 15 and distal end 13, with “the distal end compris[ing] an
`
`opening adapted for intake of air into the smoking article 10.” (Id. at 19:59-64.)
`
`An electric power source 36, “such as at least one battery” is located within the
`
`outer housing 20. (Id. at 20:12-13.) The smoking article 10 further includes a
`
`controller 50 that is powered by the electric power source 36. (Id. at 20:33-43.)
`
`The ’123 patent describes example circuits that can be included in the controller 50
`
`(see, e.g., id. at 20:40-48, 30:37-32:34, describing Figs. 4 & 5) and further states that
`
`“[r]epresentative types of electronic control components” for the controller 50 may
`
`include those of U.S. Patent No. 4,947,874 to Brooks (id. at 20:43-48). Brooks is one
`
`of the secondary references Petitioner relies on in the Petition. (See, e.g., Petition at
`
`16-17, 25-29.)
`
`In the embodiment of Figure 1, the smoking article 10 includes a cartridge 85
`
`that contains tobacco 89 of some form and an aerosol-forming material. (Ex. 1001 at
`
`22:1-3.) “The tobacco 89 and the aerosol-forming material can be in the form of an
`
`intimate mixture or provided in separate regions of the cartridge 85.” (Id. at 22:3-6.)
`
`The smoking article 10 further includes a resistive heating element 72 that “can be
`
`employed in close proximity to an absorbent wicking material such that aerosol-
`
`5
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`Patent Owner Preliminary Response
`IPR2020-01602
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`forming material can be wicked or otherwise transferred so as to contact the second
`
`resistance element or contact an area in close proximity to the second resistance
`
`element (e.g., a region that is exposed to a [sic] the heat produced by the second
`
`resistance element).” (Id. at 21:38-45.) “The representative smoking article 10 is
`
`assembled such that a certain amount of aerosol-forming material and tobacco
`
`components can be wicked or otherwise transferred to heating element 72 or the
`
`region in close proximity to the heating element.” (Id. at 22:20-24.)
`
`B.
`The Challenged Claims
`In its first Petition on the ’123 patent, Petitioner unsuccessfully challenged
`
`claims 27-30. (See IPR2020-00919, Paper 2.) Here, Petitioner challenges claims 1-
`
`7, 9, 11-19, 21, and 23-26 of the ’123 patent. (See Petition at 3.)
`
`Independent claim 1 recites:
`
`1. An electrically-powered, aerosol-generating smoking article
`
`comprising:
`an electrical power source within a tubular outer housing having a
`mouth-end and an end distal to the mouth-end;
`at least one electrical resistance heater powered by said electrical
`power source;
`a puff-actuated controller within the tubular outer housing and
`adapted for regulating current flow through the electrical
`resistance heater during draw, the controller comprising a sensor
`adapted for sensing draw on the smoking article by a user; and
`
`6
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`

`

`Patent Owner Preliminary Response
`IPR2020-01602
`
`
`a rod-shaped carrier device engaged with the mouth-end of the
`tubular outer housing and comprising a cartridge providing a
`liquid storage compartment containing a mixture comprising a
`tobacco extract and an aerosol-forming material absorbed within
`an absorbent fibrous material, the cartridge having a generally
`tubular shape and adapted for airflow therethrough;
`wherein the rod-shaped carrier device is operatively positioned such
`that, during draw, the mixture comprising the tobacco extract and
`the aerosol-forming material can be wicked into contact with the
`electrical resistance heater and volatilized to produce a visible
`mainstream aerosol incorporating tobacco components or
`tobacco-derived components that can be drawn into the mouth of
`the user of the smoking article.
`(Ex. 1001 at 32:50-33:8.) Claims 2-7, 9, and 11-14 depend from claim 1. (Id. at
`
`33:9-23, 33:27-28, 33:31-40.)
`
`Independent claim 15 is similar to claim 1. (Id. at 33:41-34:2.) Claims 16-
`
`19, 21, and 23-26 depend from claim 15. (Id. at 34:3-12, 34:17-18, 34:21-30.) Claim
`
`15 recites:
`
`15. An electrically-powered, aerosol-generating smoking article
`
`comprising:
`an electrical power source in the form of a battery within a tubular
`outer housing having a mouth-end and an end distal to the mouth-
`end;
`
`7
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`Patent Owner Preliminary Response
`IPR2020-01602
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`
`at least one electrical resistance heater powered by said electrical
`power source;
`a puff-actuated controller within the tubular outer housing and
`adapted for regulating current flow through the electrical
`resistance heater during draw, the controller comprising a sensor
`adapted for sensing draw on the smoking article by a user; and
`a rod-shaped carrier device removably engaged with the mouth-end
`of the tubular outer housing and comprising a cartridge providing
`a liquid storage compartment containing a mixture comprising a
`tobacco extract comprising nicotine and an aerosol-forming
`material selected from glycerin, propylene glycol, or a mixture
`thereof, the mixture absorbed within an absorbent wicking
`material, the cartridge having a generally tubular shape and
`adapted for airflow therethrough;
`wherein the rod-shaped carrier device is operatively positioned such
`that, during draw, the mixture comprising the tobacco extract and
`the aerosol-forming material can be wicked into contact with the
`electrical resistance heater and volatilized to produce a visible
`mainstream aerosol incorporating tobacco components or
`tobacco-derived components that can be drawn into the mouth of
`the user of the smoking article.
`(Id. at 33:41-34:2.)
`
`C. Related Proceedings On The ’123 Patent
`On April 9, 2020, RAI filed an ITC complaint against Petitioner Philip Morris
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`Products, S.A. (“Petitioner” or “PMP”) and related entities for, inter alia,
`
`8
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`Patent Owner Preliminary Response
`IPR2020-01602
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`Petitioner’s infringement of the ’123 patent and additional patents. See Certain
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`Tobacco Heating Articles & Components Thereof, Inv. No. 337-TA-1199 (ITC
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`Apr. 9, 2020). (Ex. 2001 at 12-13.) In the ITC, the challenged claims of the ’123
`
`patent are all at issue. The challenged claims cover Reynolds’s own products (and
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`thus are relevant to a domestic industry determination in the ITC), and Petitioner is
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`challenging the validity of these claims in the ITC and has raised the same
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`patentability arguments that it raises in this Petition. (See, e.g., Ex. 2003 (excerpts
`
`of Respondents’ pre-hearing brief in the ITC).)
`
`As mentioned above, the ’123 patent was also the subject of another IPR
`
`Petition filed by Petitioner, and the Board denied institution on that Petition. Philip
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`Morris Prods., IPR2020-00919, Paper 9 at 12-13.1 The Board found that “the
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`proximity of the anticipated ITC hearing date, combined with an anticipated final
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`determination from the ITC prior to the Board’s final decision on validity of claims
`
`in dispute between the same parties” outweighed any factors favoring institution. Id.
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`As explained in Section III infra, the considerations that led the Board to deny
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`institution of the first Petition on the ’123 patent apply even more heavily here in
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`favor of denying institution on this Petition.
`
`
`1 Petitioner did not petition for rehearing of the Board’s denial of its first
`Petition on the ’123 patent.
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`9
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`Patent Owner Preliminary Response
`IPR2020-01602
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`D.
`
`The Asserted Prior Art
`
`Petitioner asserts five prior art references across the three grounds set forth in
`
`the Petition:
`
`0 Chinese Patent No. CN2719043Y (“Hon ’043”);
`
`0 US. Patent No. 4,947,874 to Brooks (“Brooks”);
`
`0 US. Patent No. 2,057,353 (“Whittemore”);
`
`0 European Patent Publication No. EP 0845220 (“Susa”); and
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`0 US. Patent No. 4,284,089 (“Ray”).
`
`(See Petition at 3; Exs. 1005-1009.) Petitioner’s Grounds 1—3 are:
`
`0 Ground 1: Claims 1. 2.5. 7. 9. 11.12. 14. 15.18. 21. and 23-26 are
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`Unpatentable Over Hon (Ex. 1005). alone or with Brooks (Ex. 1006) and
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`Whittemore (Ex. 1007):
`
`Grormd 3: Claims 6 and 19 are Unpatentable Over Hon. Whittemore. Brooks. and Ray (Ex. 1009).
`
`Ground 2: Claims 3. 4. 13. 16. and 17 are Unpatcntablc Ovcr Hon.
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`Whittemore. Brooks. and Susa (Ex. 1008):
`
`(Petition at 3.) Patent Owner RAI provides an overview of Hon ’043, Brooks, and
`
`Whittemore below- Grounds 2 and 3 apply only to dependent claims, and cannot be
`
`sustained if Petitioner’s arguments for independent claims 1 and 15 in Ground I fail.
`
`(See Petition at 62-68.) Accordingly, because the Board does not need to consider
`
`10
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`

`Patent Owner Preliminary Response
`IPR2020-01602
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`Susa and Ray to deny institution of this Petition, RAI does not further describe Susa
`
`and Ray in this preliminary response.
`
`
`
`All three of Hon ’043, Brooks, and Whittemore were before the Patent Office
`
`during prosecution of the ’123 patent. (Ex. 1001 at 2, 4; Ex. 1002 at 149 (entry 45),
`
`153 (entry 158), 159 (entry 305).) In addition, U.S. Patent Application Publication
`
`No. 2007/0267031 to Hon (Ex. 2004) corresponds to Hon ’043 and was also before
`
`the Patent Office during prosecution of the ’123 patent. (Ex. 1001 at 3; Ex. 1002 at
`
`153 (entry 156).) Indeed, over a half dozen prior art references by Hon were
`
`disclosed to the Patent Office. (Ex. 1001 at 3-4; Ex. 1002 at 153, 155-57, 159.)
`
`Throughout the Petition, Petitioner improperly refers to and relies on “Hon’s
`
`prior-art Ruyan device.” (See, e.g., Petition at 4-9, 18-23, 28-41.) The “Ruyan
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`device” (or more appropriately, the Ruyan devices, as there were multiple versions
`
`of such devices) does not form part of Petitioner’s invalidity grounds, and indeed
`
`cannot because it is not a printed publication or patent. Under 35 U.S.C. § 311(b),
`
`“[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or
`
`more claims of a patent only on a ground that could be raised under section 102 or
`
`103 and only on the basis of prior art consisting of patents or printed publications”
`
`(emphasis added). Likewise, 37 C.F.R. § 42.104(b)(4) requires that the petition
`
`“must specify where each element of the claim is found in the prior art patents or
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`11
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`

`Patent Owner Preliminary Response
`IPR2020-01602
`
`printed publications relied upon” (emphasis added). Because the Ruyan device is
`
`not a patent or a printed publication, it cannot be relied on.
`
`
`
`Petitioner incorrectly alleges that “the Ruyan device” is applicant-admitted
`
`prior art (Petition at 5, 36), but Petitioner never establishes that the ’123 patent
`
`specification ever admits that any Ruyan device is, in fact, prior art to the ’123
`
`patent. Instead, what Petitioner is really trying to do is to tie “the Ruyan device” to
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`Hon ’043 in an attempt to bolster and broaden the disclosure of Hon ’043 by relying
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`on features allegedly shown in “the Ruyan device,” which is not prior art—and even
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`if prior art, cannot be relied upon in an IPR petition. (See, e.g., Petition at 21-23,
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`33-34, 36-37, 40-41, 48-49.) Petitioner is also trying to re-litigate an inequitable
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`conduct claim concerning “the Ruyan device” that the ITC ALJ already rejected.
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`(See Ex. 2006.) The Board should ignore Petitioner’s improper attempts to use “the
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`Ruyan device” in this Petition (and to exceed the statutory limits of IPRs by relying
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`on impermissible alleged devices and alleged inequitable conduct).
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`1. Hon ’043
`Hon ’043 describes an electronic atomization cigarette. (Ex. 1005 at 4.) As
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`shown in Figure 1 below (id. at 9), the electronic cigarette includes air inlet 4, normal
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`pressure cavity 5, sensor 6, vapor-liquid separator 7, atomizer 9, liquid-supplying
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`bottle 11, and mouthpiece 15 within a shell 14. (Id. at 6.)
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`Figure 6, reproduced below, is a structural diagram of the atomizer 9, which
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`includes atomization cavity 10, long stream ejection hole 24, atomization cavity wall
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`25, heating element 26, porous body 27, bulge 36, and first piezoelectric element 23.
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`(Id. at 6-7, 11.)
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`The “porous body 27 is wrapped around the atomization cavity wall 25, and
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`[the porous body] may be made of nickel foam, stainless steel fiber felt, high
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`molecular polymeric foam, and ceramic foam” (Id. at 6.) “[T]he atomization cavity
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`wall 25 may be made of alumina or ceramic.” (Id.) The bulge 36 of the porous body
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`27 is in contact with the storage porous body 28 in the liquid-supplying bottle 11 to
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`pull liquid around the outside of the atomizer cavity wall 25 using “capillary
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`infiltration.” (Id.)
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`When a user puffs the device, air flows into the air inlets 44, through air
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`passage 18 of the sensor, through the hole in the vapor liquid separator 7, and then
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`flows into the atomization cavity 10 in the atomizer 9. (Id.) The “solution in the
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`porous body 27 is driven by the high-speed airflow of the ejection hole [24] and
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`ejected in the form of droplets into the atomization cavity 10.” (Id. at 7.) The
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`nicotine solution on the porous body 27 is first atomized by the “first piezoelectric
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`element 23,” carried into the atomization cavity by the airstream, and then “further
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`atomized under the effect of the heating element 26.” (Id.) After atomization, large-
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`diameter droplets stick to the wall and are reabsorbed by the porous body 27 via
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`overflow hole 29, whereas the small diameter droplets float in stream and form
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`aerosols, which are sucked out via the aerosol passage 12, gas vent 17 and
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`mouthpiece 15. (Id.)
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`“To simplify the design,” Hon ’043 describes another embodiment, where
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`“the first piezoelectric element 23 on the atomizer 9 may be removed, and the
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`atomization of the solution relies only on the heating element 26.” (Id.) The size of
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`the atomizer could then be made smaller, and the structure of the “atomizer
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`Patent Owner Preliminary Response
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`electronic cigarette [would be] the same as that of Embodiment 1.” (Id.) Hon ’043
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`provides another embodiment, shown in Figure 8 below, where the first piezoelectric
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`element 23 and the heating element 26 in the atomizer 9 can be omitted, and an
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`additional second piezoelectric element 35 can be arranged in the atomization cavity.
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`(Id.) In this embodiment, “the airflow via the ejection hole vibrates the focal point
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`at its center to realize atomization, and the strong ultrasonic atomization effect is
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`achieved.” (Id.)
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`k
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`:
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`\\\VE
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`2.
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`Brooks
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`Brooks issued in 1990 and “relates to cigarettes and other smoking articles
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`such as cigars, pipes, and the like, which employ an electrical resistance heating
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`element and an electrical power source to produce a tobacco flavored smoke or
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`aerosol.” (Ex. 1006 at 1, 1:6-10.) The ’123 patent specification expressly discusses
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`Brooks, stating that it discloses “electronic control components” and “sensing
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`mechanism components” for electronic smoking articles. (Ex. 1001 at 20:43-63,
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`21:2-8.)
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`Figures 9 and 10 of Brooks illustrate exemplary time-based control circuits
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`and related wiring for preferred controllers. (Ex. 1006 at 7:5-7.) Each of the circuits
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`of Figures 9 and 10 includes a power source 34, an electrical resistance heating
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`element 18, a current actuation mechanism 28, and a current regulating circuit for
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`controlling the passage of current through the resistance element during periods of
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`current actuation. (Id. at 12:39-46; 15:30-35.)
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`3. Whittemore
`Whittemore issued in 1936 and describes a vaporization unit for a therapeutic
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`apparatus. (Ex. 1007 at 1-2.) As shown below in Figure 2, the vaporization vessel
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`A is a hollow glass container that holds liquid
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`medicament x. (Id. at 1:19-28.) The vaporization vessel
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`A includes an electrically-operated heating means with
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`conductors 1 and 2 and a heating element 3. (Id.) The
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`vaporization vessel A includes an air inlet orifice 4 at a
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`point below the upper end of the vessel and a vapor outlet
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`5 in the top wall of the vessel. (Id. at 1:28-39.) Wick D
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`is a suitable wick material and is “in contact or
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`approximate contact with the heating element” 3, such
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`that the “medicament will be carried by capillary action to a point where it will be
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`vaporized by the heat from the filament 3.” (Id. at 1:50-2:8.) The wick D forms an
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`inverted v-shaped device that extends “downwardly into the medicament and
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`terminating at or in close proximity to the closed bottom 6 of the vessel A.” (Id. at
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`2:8-18.) The “unit will operate properly so long as there is sufficient medicament in
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`the vaporization vessel A to engage or contact with a portion of the wick D.” (Id. at
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`2:19-25.)
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`E.
`Level Of Ordinary Skill In The Art
`Petitioner proposes a definition of a person of ordinary skill in the art
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`(“POSA”). (Petition at 9-10.) For purposes of this POPR, RAI accepts Petitioner’s
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`definition, but RAI reserves the right to dispute this definition if trial is instituted.
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`F. Claim Construction
`Claim terms are to be construed in accordance with the standard set forth in
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`Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). In addition,
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`“[o]nly terms which are in controversy need to be construed, and then only to the
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`extent necessary to resolve the controversy and material to the decision.” Facebook,
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`Inc. v. Sound View Innovations, LLC, IPR2017-01005, Paper 13 at 6 (PTAB Sept. 1,
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`2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
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`Cir. 1999)).
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`Patent Owner Preliminary Response
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`As detailed below, multiple, independent reasons warrant denial of institution
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`and do not require addressing the construction of claim terms. If the Board
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`nonetheless institutes trial, RAI reserves its right to put forth constructions for any
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`claim terms, including terms for which Petitioner formally or otherwise relies on a
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`construction of a term.
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`III. THE BOARD SHOULD DENY INSTITUTION IN VIEW OF THE
`PARALLEL ITC PROCEEDING
`Under clear guidance from the Board, the Board should deny the Petition
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`purely for efficiency reasons in view of the pending ITC investigation on the ’123
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`patent that involves the same parties here. The ’123 patent was the subject of another
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`IPR Petition filed by Petitioner, on a different set of claims, for which the Board
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`recently denied institution in view of the parallel ITC proceedings. Philip Morris
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`Prods., IPR2020-00919, Paper 9 at 6-13. The Board should reach the same
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`c