`
`
`
`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. IPR2016-01268
`
`
`
`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
`
`
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 001
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`EXHIBITS LIST ........................................................................................................ v
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ........................ 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Real Party-in-Interest ............................................................................ 1
`
`Related Matters ...................................................................................... 2
`
`Lead and Back-Up Counsel ................................................................... 5
`
`Service Information ............................................................................... 5
`
`Proof of Service ..................................................................................... 5
`
`III. GROUNDS FOR STANDING ........................................................................ 6
`
`IV.
`
`V.
`
`IDENTIFICATION OF CHALLENGE AND STATEMENT
`OF THE PRECISE RELIEF REQUESTED ................................................... 6
`
`THRESHOLD REQUIREMENT FOR INTER PARTES
`REVIEW .......................................................................................................... 7
`
`VI. STATEMENT OF REASONS FOR THE RELIEF
`REQUESTED .................................................................................................. 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`Summary of the Argument .................................................................... 7
`
`Background of the ‘742 Patent .............................................................. 8
`
`1.
`
`2.
`
`Summary of the ‘742 Patent ....................................................... 8
`
`Prosecution History of the ‘742 Patent ..................................... 10
`
`Person Having Ordinary Skill in the Art (“PHOSITA”)..................... 11
`
`Claim Construction.............................................................................. 11
`
`1.
`
`2.
`
`“Frame” ..................................................................................... 11
`
`“Porous component substantially surrounded by
`the liquid storage component” .................................................. 12
`
`E.
`
`Patents and Printed Publicaitons Relied Upon in this
`Petition ................................................................................................. 13
`
`1.
`
`Hon ‘043 (Ex. 1002; Ex. 1003) ................................................. 13
`
`2. Whittemore (Ex. 1004) ............................................................. 16
`
`i
`
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 002
`
`

`

`
`
`F.
`
`THERE IS A REASONABLE LIKELIHOOD THAT
`CLAIMS 2 AND 3 ARE OBVIOUS OVER THE
`COMBINATION OF HON ‘043 AND WHITTEMORE................... 17
`
`1. Motivation For Combining Hon ‘043 With
`Whittemore ................................................................................ 18
`
`2.
`
`Claim 2 Is Obvious ................................................................... 20
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`“an electronic cigarette” ................................................. 20
`
`“a battery assembly and an atomizer
`assembly within a housing with the battery
`assembly electrically connected to the
`atomizer assembly” ......................................................... 20
`
`“a liquid storage component in the housing” ................. 23
`
`“with the housing having one or more
`through-air-inlets”........................................................... 24
`
`“the atomizer assembly including a porous
`component supported by a frame having a
`run-through hole”............................................................ 24
`
`“a heating wire wound on a part of the
`porous component in the path of air flowing
`through the run-through hole” ........................................ 25
`
`“the porous component substantially
`surrounded by the liquid storage
`component” ..................................................................... 29
`
`3.
`
`Claim 3 Is Obvious ................................................................... 31
`
`a.
`
`b.
`
`c.
`
`d.
`
`“an electronic cigarette” ................................................. 31
`
`“a battery assembly and an atomizer
`assembly within a housing with the battery
`assembly electrically connected to the
`atomizer assembly” ......................................................... 31
`
`“with the housing having one or more
`through-air-inlets and an outlet” ..................................... 31
`
`“the atomizer assembly includes a frame
`having a run through hole, and a porous
`component between the frame and the
`outlet”.............................................................................. 32
`
`ii
`
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 003
`
`

`

`
`
`e.
`
`f.
`
`“a heating wire wound on a part of the
`porous component which is substantially
`aligned with the run-through hole” ................................. 34
`
`“with the porous component in contact with
`a liquid supply in the housing” ....................................... 35
`
`VII. CONCLUSION .............................................................................................. 36
`
`
`
`
`
`iii
`
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 004
`
`

`

`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Cuozzo Speed Techs. v. Lee,
`579 U. S. ____ (2016) ..........................................................................................11
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015) ............................................................................11
`
`KSR Int’l v. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .........................................................................................4, 19
`
`STATUTES
`
`35 U.S.C. § 103 ................................................................................................. 1, 6, 8
`
`35 U.S.C. § 112 ........................................................................................................10
`
`35 U.S.C. §§ 311-319.............................................................................................1, 7
`
`OTHER AUTHORITIES
`
`MPEP § 2143 .......................................................................................................4, 19
`
`Patent Trial Practice Guide
`77 Fed. Reg., Vol. 77, No. 157 (2012) ................................................................... 2
`
`REGULATIONS
`
`37 C.F.R. § 42 ................................................................................................. 1, 6, 11
`
`
`iv
`
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 005
`
`

`

`
`
`EXHIBITS LIST
`
`Exhibit No.
`
`Description
`
`Exhibit 1001: U.S. Pat. No. 8,365,742 to Lik Hon
`
`Exhibit 1002: Chinese Pat. No. 2719043Y to Lik Hon
`
`Exhibit 1003: Certified English translation of Chinese Pat. No. 2719043Y to Lik Hon
`
`Exhibit 1004: U.S. Pat. No. 2,057,353 to C. L. Whittemore, Jr
`
`Exhibit 1005:
`
`Application Data Sheet of April 5, 2011 Filed in U.S. Pat. Appl. No.
`13/079,937
`
`Exhibit 1006:
`
`Preliminary Amendment of April 5, 2011 Filed in U.S. Pat. Appl. No.
`13/079,937
`
`Exhibit 1007:
`
`Non-Final Office Action of July 19, 2012 in U.S. Pat. Appl. No.
`13/079,937
`
`Exhibit 1008: Amendment of August 3, 2012 in U.S. Pat. Appl. No. 13/079,937
`
`Exhibit 1009: PCT Pub. No. WO2007131449
`
`Exhibit 1010: English translation of PCT Pub. No. WO2007131449
`
`Exhibit 1011: Board’s Decision Denying Institution in IPR2015-00859
`
`Exhibit 1012:
`
`Patent Owner’s Preliminary Response to Petition for IPR of U.S. Pat.
`No. 8,365,742
`
`Exhibit 1013: Petition for IPR of U.S. Pat. No. 8,365,742 in IPR2015-00859
`
`Exhibit 1014: Board's Order Dismissing Petition IPR2015-01587
`
`Exhibit 1015: Declaration of Dr. Robert Sturges
`
`Exhibit 1016:
`
`Rohsenow, “Heat, Mass, And Momentum
`Transfer”
`
`Exhibit 1017:
`
`WO 2005/099494, which is the PCT application equivalent of Hon (CN
`2719043) (“Hon ’494”)
`
`Exhibit 1018
`
`Certified English translation of WO 2005/099494 pursuant to 37 C.F.R.
`42.63(b)
`
`
`
`v
`
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 006
`
`

`

`
`
`
`
`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. (“Fontem” or “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 for IPR, and further authorizes payment
`
`of any additional fees to be charged to this Deposit Account.
`
`This Petition demonstrates a reasonable likelihood that claims 2-3 of the
`
`‘742 patent are unpatentable under 35 U.S.C. § 103 based upon the combination of
`
`Chinese Pat. No. 2719043Y to Lik Hon (“Hon ‘043,” Ex. 1002) and U.S. Pat. No.
`
`2,057,353 to C. L. Whittemore, Jr (“Whittemore,” Ex. 1004).
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`
`A. Real Party-in-Interest
`
`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 (“Petitioner”) identifies the real-parties-
`
`in-interest as R.J. Reynolds Vapor Company and Reynolds American Inc. R.J.
`
`Reynolds Vapor Company further discloses that it is an indirect wholly owned
`
`subsidiary of Reynolds American Inc., and states that under the governing standard
`
`
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 007
`
`

`

`
`
`Reynolds American Inc. is not a real-party-in-interest. See Patent Trial Practice
`
`Guide 77 Fed. Reg., Vol. 77, No. 157 (2012) at 48759-60. Reynolds American
`
`Inc. nevertheless agrees to be bound to same extent as a real-party-in-interest.
`
`B. Related Matters
`
`Petitioner is not aware of any reexamination certificates or pending
`
`prosecution concerning the ‘742 patent.1 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). In addition
`
`to the foregoing, the Petitioner is aware of the additional matters involving the
`
`‘742 patent listed in the tables below.
`
`Pending Litigations and IPRs
`
`Case Name
`Fontem Ventures BV v. RJ Reynolds Vapor
`Company, 2-16-cv-02286 (CACD)
`Fontem Ventures BV v. Nu Mark LLC, 2-16-cv-
`02291(CACD)
`Petition for Inter Partes Review by NU MARK
`
`Filed
`April 4, 2016
`
`April 4, 2016
`
`June 28, 2016
`
`
`1 The parent of the ‘742 patent, U.S. patent no. 8,156,944 (the “‘944 patent”), is in
`
`inter partes reexamination (Reexamination No. 95/002,235). The inter partes
`
`reexamination was requested by Fin Branding Group, LLC, and alleges that all
`
`claims of the ‘944 patent are anticipated or obvious. The reexamination
`
`proceeding is currently stayed.
`
`2
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 008
`
`

`

`
`
`Case Name
`LLC, IPR2016-01302 (challenging claims 2-3)
`
`
`Filed
`
`Terminated Litigations and IPRs
`
`Case Name
`Fontem Ventures BV et al v. Nu Mark LLC, No.
`2:16-cv-02291 (C.D. Cal.)
`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, filed) (challenging
`claims 1-3)
`VMR Products, LLC v. Fontem Holdings 1 B.V.,
`IPR2015-00859 (PTAB) (challenging claims 1-3).
`
`Filed
`April 4, 2016
`
`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
`
`Pursuant to the parties’ request, the Board dismissed JT International’s
`
`petition in IPR2015-01587 in view of an apparent settlement. Ex.1014 at 2. The
`
`Board denied institution of VMR’s petition in IPR2015-00859. Ex. 1011 at 2.
`
`3
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 009
`
`

`

`
`
`Relevant here, the Board denied institution on a ground that combined Hon ‘043
`
`with Whittemore, finding that the petitioner in that matter failed to articulate
`
`sufficient reasoning with rational underpinnings (as opposed to conclusory
`
`statements) as to why the person of ordinary skill in the art would have been
`
`motivated to make the proposed combination. Specifically, the Board concluded
`
`that the “more efficient, uniform heating” as the motivation to combine the
`
`references consisted of unsupported conclusory statements. Id. at 17-19, 21-25. In
`
`addition, the Board found that the petitioner in that matter also failed to explain
`
`adequately how the cavity wall 25 in Hon ‘043 provides support for porous
`
`component 27. Id. at 16.
`
`Petitioner’s proposed combination of Hon ‘043 and Whittemore is not
`
`subject to the same objections. Petitioner explains how the cavity wall 25 of Hon
`
`‘043 provides support for porous component 27. Moreover, the Petitioner provides
`
`rational underpinnings why more efficient heating would have motivated the
`
`person of ordinary skill in the art to modify Hon ‘043 as taught by Whittemore.
`
`For the reasons provided herein, the Petitioner’s proposed combination of Hon
`
`‘043 with Whittemore involves the simple substitution of one known element for
`
`another to obtain predictable results – a rational for obviousness that has been
`
`expressly endorsed by the Supreme Court. See KSR Int’l v. Co. v. Teleflex Inc.,
`
`550 U.S. 398, 416 (2007); see also MPEP § 2143.
`
`4
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 010
`
`

`

`
`
`C. Lead and Back-Up Counsel
`
`Lead Counsel
`
`Back-Up 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
`
`
`
`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
`
`
`
`
`D.
`
`Service Information
`
`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.
`
`E.
`
`Proof of Service
`
`Proof of service of this Petition on the Patent Owner at the correspondence
`
`address of record for the ‘742 Patent is attached.
`
`5
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 011
`
`

`

`
`
`III. GROUNDS FOR STANDING
`
`As required by 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘742 Patent
`
`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
`
`Pursuant to 37 C.F.R. § 42.104(b), the precise relief requested is that the
`
`Patent Trial and Appeal Board review and find unpatentable claims 2 and 3 of the
`
`‘742 Patent.
`
`Petitioner requests inter partes review and cancellation of claims 2-3 of the
`
`‘742 patent pursuant to 35 U.S.C. § 103 as set forth herein. The ‘742 patent is to be
`
`reviewed under pre-AIA § 103. Petitioner’s detailed statement of the reasons for
`
`the relief requested is set forth below in the section titled “Statement of Reasons
`
`for the Relief Requested.” In accordance with 37 C.F.R. § 42.6(c), copies of the
`
`exhibits are filed herewith. In addition, the Petition is accompanied by the
`
`Declaration of Dr. Robert Sturges (“Sturges Decl.”) Ex. 1015.
`
`Claims 2-3 of the ‘742 patent are unpatentable based upon the following
`
`ground:
`
`Ground 1: Claims 2-3 are obvious over Chinese Pat. No. 2719043Y to Lik
`
`Hon (“Hon ‘043,” Ex. 1002; “Hon ‘043 English translation,” Ex. 1003; Hon PCT
`
`6
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 012
`
`

`

`
`
`equivalent; Ex. 1017; and Hon PCT English translation; Ex. 1018) in view of U.S.
`
`Pat. No. 2,057,353 to Whittemore, Jr (“Whittemore,” Ex. 1004).
`
`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). As explained below, 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
`
`The ‘742 patent is titled “Aerosol Electronic Cigarette.” Hon ‘043 discloses
`
`every element of claims 2 and 3 of the ‘742 patent, except that Hon ‘043’s heating
`
`wire is not wound on a porous component. However, a heating wire wound on a
`
`porous wick is disclosed by Whittemore.
`
`As explained herein, simple thermodynamics would have motivated the
`
`person having ordinary skill in the art (“PHOSITA”) to modify Hon ‘043 as taught
`
`by Whittemore. The PHOSITA would have readily appreciated that, because air is
`
`a good thermal insulator, the air gaps between the heating wire 26 of Hon ‘043 and
`
`the liquid nicotine droplets expelled into the atomization chamber 10 create a
`
`7
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 013
`
`

`

`
`
`relatively inefficient heating environment for heating the nicotine solution, and
`
`thus wire 26 would need to be operated at relatively high temperatures, which
`
`would require more battery power. In contrast, Whittemore’s wick/heating wire
`
`configuration is more thermally efficient than the configuration of Hon ‘043,
`
`because the heating element is in direct contact with the liquid that is vaporized.
`
`Accordingly, the POSITA would have been motivated to substitute Whittemore’s
`
`wick/heating wire configuration for the heating wire of Hon ‘043 to achieve the
`
`predicted result of more efficient heating, lower heating temperatures, and
`
`improved battery life. Ex. 1015 at ¶¶ 56-62.
`
`Accordingly, Petitioner respectfully requests that the Board find that claims
`
`2 and 3 of the ‘742 patent are invalid under 35 U.S.C. § 103.
`
`B.
`
`Background of the ‘742 Patent
`
`1.
`
`Summary of the ‘742 Patent
`
`The ‘742 patent generally describes an electronic cigarette.
`
`
`
`8
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 014
`
`

`

`
`
`With respect to Fig. 1, the electronic cigarette includes a battery 3, an
`
`atomizer assembly 8 and a liquid storage 9. Ex. 1001 at 2:30-38, 44-45; 3:6-8, 49-
`
`51; Fig. 1. The electronic cigarette also includes a shell (a) which is hollow and
`
`integrally formed. Id. at 2:30-33. The battery assembly connects with said atomizer
`
`assembly and both are located in said shell (a). Id. The shell (a) has through-air-
`
`inlets (a1). Id. at 2:37-38; Fig. 1. A porous component of the atomizer assembly 8,
`
`i.e., protuberance/bulge 812, contacts the liquid storage 9 “to achieve the capillary
`
`impregnation for liquid supply.” Id. at 3:16-21; 4:37-40.
`
`Further details of the atomizer assembly 8 are illustrated in annotated Figs.
`
`17 and 18, which are reproduced below. Id. at Figs. 17-18.
`
`
`
`The atomizer assembly includes “a frame (82), the porous component (81)
`
`set on the frame (82), and the heating wire (83) wound on the porous component
`
`(81). The frame (82) has a run-through hole (821) on it. The porous component
`
`(81) is wound with heating wire (83) in the part that is on the side in the axial
`
`9
`
`Frame
`
`Porous
`Component
`
`Porous
`Component
`
`Frame
`
`Heating
`Wire
`
`Heating
`Wire
`
`Run-
`Through
`Hole
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 015
`
`

`

`
`
`direction of the run-through hole (821). One end of the porous component (81) fits
`
`with the cigarette bottle assembly.” Id. at 5:42-50.
`
`2.
`
`Prosecution History of the ‘742 Patent
`
`The ‘742 patent issued from U.S. Appl. No. 13/079,937, which was filed on
`
`April 5, 2011. Ex. 1005 at 2. On April 5, 2011, Applicant also filed a Preliminary
`
`Amendment cancelling all application claims (i.e., claims 1-29) and adding sole
`
`application claim 30. Ex. 1006 at 3. The Examiner rejected application claim 30
`
`under 35 U.S.C. § 112, second paragraph, as indefinite, but stated that the claim
`
`would be allowable if the § 112 rejection was overcome. Ex. 1007 at 3-4.
`
`According to the Examiner, CN2719043 (“Hon ‘043”) was the closest prior art of
`
`record but purportedly failed to disclose that the heating wire could be wound on a
`
`portion of the porous component. Id.
`
`In response, the Applicant amended application claim 30 by specifying that
`
`“the porous component is supported by the frame” and “a heating wire wound on a
`
`part of the porous component that is substantially aligned with the run-through
`
`hole,” respectively. Ex. 1008 at 2-3. Applicant also added new independent claims
`
`31 and 32. Id. at 3. Application claims 30-32 were subsequently allowed, and
`
`issued as patent claims 1-3, respectively. Id.; Ex. 1001 at 6:6-52.
`
`10
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 016
`
`

`

`
`
`C.
`
`Person Having Ordinary Skill in the Art (“PHOSITA”)
`
`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 is a person with at least the equivalent of
`
`a Bachelor’s degree in electrical engineering, mechanical engineering, or
`
`biomedical engineering or related fields, along with at least 5 years of experience
`
`designing electromechanical devices, including those involving circuits, fluid
`
`mechanics and heat transfer. Ex. 1015, ¶¶ 29-30.
`
`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).
`
`1.
`
`“Frame”
`
`Both claims 2 and 3 of the ‘742 patent recite the term “frame.” The Board
`
`previously construed “frame” to mean a “rigid structure.” IPR2015-00859, Ex.
`
`11
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 017
`
`

`

`
`
`1011 at pp. 7-8. For purposes of this Petition only, the Petitioner accepts the
`
`Board’s prior construction.
`
`2.
`
`“Porous component substantially surrounded by the
`liquid storage component”
`
`The specification of the ‘742 patent does not expressly define this limitation,
`
`it having been added during prosecution. Ex. 1008 at 3. However, Fig. 1 of the
`
`‘742 patent (annotated below) illustrates that protuberance/bulge 812 in the
`
`atomizer assembly’s porous component is in physical contact with liquid storage 9
`
`for liquid transfer from the liquid storage to the porous component. Ex. 1001 at
`
`Fig. 1; 3:16-19.
`
`
`
`For purposes of this Petition, “porous component substantially surrounded
`
`by the liquid storage component” should be construed under the BRI standard
`
`applicable here to encompass the above-illustrated structure described in Fig. 1 of
`
`the ‘742 patent.
`
`12
`
`Atomizer
`porous
`component
`
`Liquid
`Storage
`component
`
`Protuberance of
`atomizer porous
`component
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 018
`
`

`

`
`
`E.
`
`Patents and Printed Publications Relied Upon in this
`Petition
`
`1. Hon ‘043 (Ex. 1002; Ex. 1003)
`
`The ‘742 patent claims priority to PCT Application No.
`
`PCT/CN2007/001575, filed on May 15, 2007. Ex. 1001 at 1; Ex. 1005 at 2.
`
`Because Hon ‘043 published on August 24, 2005, it is prior art under 35 U.S.C. §
`
`102(b).
`
`Hon ‘043 discloses an electronic cigarette, which is illustrated in Fig. 1 from
`
`Hon ‘043 below.
`
`
`
`Hon ‘043’s electronic cigarette includes “a cell 2, an electronic circuit board
`
`3, a normal pressure cavity 5, a sensor 6, a vapor-liquid separator 7, an atomizer 9,
`
`a liquid-supplying bottle 11 and a mouthpiece 15 … sequentially provided within
`
`the shell 14.” Ex. 1003 at 9:3-6. “An air inlet 4 is provided on the external wall of
`
`the shell 14.” Id. at 9:3.
`
`Details of Hon ‘043’s atomizer assembly 9 are illustrated in annotated Fig. 6
`
`of Hon ‘043.
`
`13
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 019
`
`

`

`
`
`
`
`The atomizer has an atomization cavity wall 25 “surrounded with a porous
`
`body 27.” Id. at 9:22-23. The porous body 27 includes a bulge 36. Id. at 9:11-12;
`
`Fig. 6. The bulge 36 of the porous body 27 is in physical contact with and
`
`substantially surrounded by liquid supplying bottle 11. See Id., Fig. 1. A short
`
`stream ejection hole 30 or a long stream ejection hole 24 is provided on the
`
`atomization cavity wall 25. Id. at 9:13-24; Figs. 6-8. In use, “[t]he high speed
`
`stream passing through the ejection hole drives the nicotine solution in the porous
`
`body 27 to eject into the atomization cavity 10 in the form of droplet[s], where the
`
`nicotine solution is subjected to the ultrasonic atomization by the first piezoelectric
`
`element 23 and is further atomized by the heating element 26.” Id. at 10:28-11:2.
`
`As the Board determined in IPR2015-00859, cavity wall 25 is a “frame.”
`
`Ex. 1011 at 15. However, the Board held that the petitioner in that matter failed to
`
`establish that the cavity wall provided support for the porous body 27, as claimed.
`
`According to the Board, the “Petitioner does not explain adequately, nor cite to
`
`14
`
`Atomization Cavity
`
`Heating
`Element
`
`Porous Body
`
`Atomization
`Cavity Wall
`
`First
`Piezoelectric
`Element
`
`Long Stream
`Ejection Hole
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 020
`
`

`

`
`
`sufficient evidence of record explaining, how porous component 27 is held up by
`
`atomization cavity wall 25. The teachings in Hon on which Petitioner relies
`
`describe porous component 27 surrounding atomization cavity wall 25, but do not
`
`indicate that atomization cavity wall 25 is bearing the weight of, or holding up,
`
`porous cavity 27.” Id. at 15-16.
`
`The Petitioner here respectfully submits that on the basis of the current
`
`record, which is more fully developed on this issue, the evidence establishes that
`
`the PHOSITA would have understood that atomization cavity wall 25 provides
`
`support for porous body 27. As explained in the accompanying declaration of Dr.
`
`Sturges, cavity wall 25 provides support for porous body 27 in several ways.
`
`
`
`
`
`To begin with, porous body 27 is attached to cavity wall 25 either by a
`
`friction fit or with a bonding material to prevent axial displacement of the porous
`
`body under the shear forces at the interface of cavity wall 25 and porous body 27
`
`when the porous body is inserted into the solution storage body 28 (see Fig. 11 of
`
`15
`
`Porous
`Body
`
`Heating
`Element
`
`Atomization
`Cavity
`
`Atomization
`Cavity Wall
`
`Long Stream
`Ejection Hole
`
`First
`Piezoelectric
`Element
`
`atomization
`cavity wall 25
`
`Bulge 36
`
`Atomizer
`9
`
`Liquid-Supplying Bottle
`11
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 021
`
`

`

`
`
`Hon ‘043) of the liquid supplying bottle 11. These shear forces can be significant
`
`particularly when the rigidities of the porous body 27 and solution storage body28
`
`are similar and relatively high. In addition, the leading edge of the cavity wall 25
`
`provides further support for the porous body in the area of bulge 36. Ex.1015 at ¶¶
`
`45-46. The cavity wall 25 also provides radial support when pressure increases in
`
`the low pressure area surrounding the atomizer 9, such as when the user
`
`deliberately or accidentally blows into the mouthpiece 15. In that situation, the
`
`cavity wall 25 provides radial support to porous body 27, and thus prevents the
`
`body 27 from impinging upon and/or destroying the atomization cavity 10. Id. at
`
`47-50.
`
`2. Whittemore (Ex. 1004)
`
`Whittemore is prior art under 35 U.S.C. § 102(b). Whittemore discloses a
`
`vaporizing unit, which is illustrated in annotated Fig. 2 of Whittemore below.
`
`
`
`16
`
`Wick
`
`Atomizer
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 022
`
`

`

`
`
`A vaporizing vessel A is “adapted to hold a liquid medicament x and
`
`provided with an electrically-operated heating means comprising two electrical
`
`conductors 1 and 2 and a filament or heating element 3 combined in such a way
`
`that when said conductors are energized by an electric current, the filament 3 will
`
`become heated.” Ex. 1004 at p. 1, left col., ll. 18-28. Whittemore also discloses
`
`that heating element 3 is wound on a part of wick D. According to Whittemore, “a
`
`wick D made of any suitable material and combined with the heating element or
`
`filament 3 in such a way that a portion of said wick is always in contact or
`
`approximate contact with the heating element or filament 3, and a portion of said
`
`wick is always in contact with the medicament in the vaporizing vessel, whereby
`
`said medicament will be carried by capillary action to a point where it will be
`
`vaporized by the heat from the filament 3.” Id. at p 1, left col., l. 54 - right col., l.
`
`8.
`
`F.
`
`THERE IS A REASONABLE LIKELIHOOD THAT
`CLAIMS 2 AND 3 ARE OBVIOUS OVER THE
`COMBINATION OF HON ‘043 AND WHITTEMORE
`
`As illustrated by the discussion, annotated figures and claim chart below, the
`
`PHOSITA would have been motivated to combine the teachings of Hon ‘043 with
`
`those of Whittemore to arrive at the claimed invention.
`
`17
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 023
`
`

`

`
`
`1. Motivation For Combining Hon ‘043 With
`Whittemore
`
`The PHOSITA would have readily understood the inefficiencies associated
`
`with the heating element configuration disclosed in Hon ‘043. The liquid nicotine
`
`droplets are expelled into the atomization cavity 25 and heated by convection from
`
`the heat given off by heating element 26. In other words, the nicotine droplets are
`
`heated in the atomization cavity via the heat transfer through air gaps between the
`
`heating element and the nicotine droplets.
`
`
`
`However, air is a very poor thermal conductor, and the PHOSITA would
`
`have immediately appreciated the thermal inefficiencies associated with the
`
`configuration of Hon ‘043. For example, to compensate for the poor thermal
`
`transfer properties of air, the PHOSITA would have appreciated that the heating
`
`element 26 would need to be at higher temperatures to vaporize the nicotine
`
`18
`
`Porous
`Body
`
`Heating
`Element
`
`Atomization
`Cavity
`
`Atomization
`Cavity Wall
`
`Long Stream
`Ejection Hole
`
`First
`Piezoelectric
`Element
`
`Philip Morris Products, S.A.
`Exhibit 1021
`Page 024
`
`

`

`
`
`droplets than would be required with respect to droplets that were in direct contact
`
`with the heating element. Ex. 1015 at ¶¶ 56-58.
`
`In contrast to the configuration of Hon ‘043, the PHOSITA would have
`
`recognized that the configuration disclosed in Whittemore (i.e., a heating wire
`
`wound on a porous wick) is thermally more efficient, because the liquid (which is