Trials@uspto.gov
`571-272-7822
`
`Paper 63
`Entered: December 19, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2016-01268
`Patent 8,365,742 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`Philip Morris Products, S.A.
`Exhibit 1022
`Page 001
`
`

`

`IPR2016-01268
`Patent 8,365,742 B2
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`
`I. INTRODUCTION
`R.J. Reynolds Vapor Company (“Petitioner”) filed a Petition (“Pet.”)
`to institute an inter partes review of claims 2 and 3 of U.S. Patent
`No. 8,365,742 B2 (Ex. 1001, “the ’742 patent”). Paper 2. On January 3,
`2017, we instituted an inter partes review of claims 2 and 3 based on our
`determination that the information presented in the Petition demonstrated a
`reasonable likelihood that Petitioner would prevail in challenging claims 2
`and 3 as unpatentable under 35 U.S.C. § 103 as obvious over the combined
`teachings of Hon ’0431 and Whittemore.2 Paper 10 (“Dec. on Inst.”).
`Fontem Holdings 1 B.V. (“Patent Owner”) filed a Patent Owner Response
`(Paper 24, “PO Resp.”), and an Errata in support of its Patent Owner
`Response (Paper 27). Petitioner filed a Reply (Paper 30, “Reply”) and an
`Errata in support of its Reply (Paper 34).
`Petitioner supports its Petition with the Declaration of Dr. Robert H.
`Sturges (Ex. 1015), the Supplemental Declaration of Dr. Robert H. Sturges
`(Ex. 1020), and the Reply Declaration of Dr. Robert H. Sturges (Ex. 1027).
`Patent Owner relies on the First and Second Declarations of Richard Meyst
`(Ex. 2001; Ex. 2015).
`On September 14, 2017, we authorized the parties to file supplemental
`briefing regarding the deposition testimony of Dr. Sturges and Mr. Meyst
`taken in R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V., Case IPR2016-
`01692 (“the 1692 IPR”). Paper 45. Specifically, Petitioner filed a
`
`
`1 Hon ’043, Chinese Patent No. CN 2719043 Y, published Aug. 24, 2005
`(Exs. 1002 and 1003 (English translation)). Petitioner provided an affidavit
`attesting to the accuracy of the translation. Ex. 1019; see 37 C.F.R.
`§ 42.63(b).
`2 Whittemore, US 2,057,353, published Sept. 27, 1935 (Ex. 1004).
`
`2
`
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`Philip Morris Products, S.A.
`Exhibit 1022
`Page 002
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`IPR2016-01268
`Patent 8,365,742 B2
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`Supplemental Brief Regarding Cross-Examination Testimony of Mr. Meyst
`in the 1692 IPR (Paper 51), and Patent Owner filed Brief Regarding
`Testimony from Dr. Robert H. Sturges in the 1692 IPR (Paper 52).
`Thereafter, Patent Owner filed a Reply to Petitioner’s Supplemental Brief
`(Paper 57), and Petitioner filed a Reply to Patent Owner’s Brief (Paper 56).
`Patent Owner filed a Motion to Exclude (Paper 37) Exhibits 1005–
`1008, 1022, and 1027–1032. Petitioner filed an Opposition (Paper 42) and
`Patent Owner filed a Reply (Paper 47).
`An oral hearing was held on October 10, 2017. A transcript of the
`hearing is included in the record (Paper 62, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has not established
`by a preponderance of the evidence that claims 2 and 3 of the ’742 patent are
`unpatentable.
`Related Proceedings
`A.
`The parties indicate that the ’742 patent is asserted in numerous cases
`pending in the Central District of California, including Fontem Ventures
`B.V. v. R.J. Reynolds Vapor Company, Case No. 2:16-cv-02286. Pet. 2–3;
`Paper 4, 1–5; Paper 6, 2.
`The ’742 Patent (Ex. 1001)
`B.
`The ’742 patent, titled “Electronic Cigarette,” is directed to an aerosol
`electronic cigarette having a battery assembly, an atomizer assembly, a
`cigarette bottle assembly, and a hollow, integrally-formed shell. Ex. 1001,
`Abstract.
`
`
`
`
`3
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`Exhibit 1022
`Page 003
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`IPR2016-01268
`Patent 8,365,742 B2
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`
`Figure 1 of the ’742 patent is reproduced below:
`
`
`
`Figure 1 is a side section view of an electronic cigarette. Id. at 1:45.
`Hollow, integrally-formed shell “a” includes a battery assembly, atomizer
`assembly, and cigarette bottle assembly. Id. at 2:30–33. The battery
`assembly connects to the atomizer assembly in shell “a,” and the detachable
`cigarette body assembly (which fits with the atomizer assembly) is located in
`one end of shell “a.” Id. at 2:33–37. Shell “a” also includes through-air-
`inlets a1. Id. at 2:37–38. The battery assembly includes operating indicator
`1, battery 3, electronic circuit board 4, and airflow sensor 5. Id. at 2:39–45.
`The atomizer assembly is atomizer 8, which includes a porous component
`and a heating rod. Id. at 3:6–8. The cigarette bottle assembly includes
`hollow cigarette shell holder “b,” and perforated component for liquid
`storage 9. Id. at 3:49–51. Air channel b1 is located in the center on the
`surface of one end of cigarette shell holder “b,” and extends inward. Id. at
`3:59–62.
`
`
`
`
`4
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`Philip Morris Products, S.A.
`Exhibit 1022
`Page 004
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`IPR2016-01268
`Patent 8,365,742 B2
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`
`Figures 17 and 18 of the ’742 patent are reproduced below:
`
`
`
`Figure 17 is a diagram of the axial structure of one embodiment of atomizer
`8, and Figure 18 is a side-section view the atomizer shown in Figure 17. Id.
`at 2:11–14. Atomizer 8 includes frame 82, porous component 81 set on
`frame 82, and heating wire 83 wound on porous component 81. Id. at 5:42–
`46. Frame 82 has run-through hole 821, and porous component 81 is wound
`with heating wire 83 in that part that is on the side in the axial direction of
`run-through hole 821. Id. at 5:46–49. One end of porous component 81 fits
`with the cigarette bottle assembly. Id. at 5:49–50.
`Claims 2 and 3 are independent claims, and are reproduced below:
`2. An electronic cigarette, comprising:
`a battery assembly and an atomizer assembly within a housing
`with the battery assembly electrically connected to the
`atomizer assembly;
`a liquid storage component in the housing;
`with the housing having one or more through-air-inlets;
`the atomizer assembly including a porous component supported
`by a frame having a run-through hole;
`a heating wire wound on a part of the porous component in the
`path of air flowing through the run-through hole; and
`the porous component substantially surrounded by the liquid
`storage component.
`
`
`
`
`5
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`Philip Morris Products, S.A.
`Exhibit 1022
`Page 005
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`IPR2016-01268
`Patent 8,365,742 B2
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`Ex. 1001, 6:27–38.
`3. An electronic cigarette, comprising:
`a battery assembly and an atomizer assembly within a housing
`with the battery assembly electrically connected to the
`atomizer assembly;
`with the housing having one or more through-air-inlets and an
`outlet;
`the atomizer assembly includes a frame having a run through
`hole, and a porous component between the frame and the
`outlet;
`a heating wire wound on a part of the porous component which
`is substantially aligned with the run-through hole; and
`with the porous component in contact with a liquid supply in the
`housing.
`Id. at 6:39–52.
`
`
`II. ANALYSIS
`
`A.
`
`Claim Interpretation
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Only those terms in
`controversy need to be construed, and only to the extent necessary to resolve
`the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999).
`In the Petition, Petitioner proposes constructions for the terms “frame”
`and “porous component substantially surrounded by the liquid storage
`component.” Pet. 11–12. In the Decision on Institution, we determined that,
`based on the record at the time, no claim term required express construction.
`
`
`
`
`6
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`Page 006
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`Patent 8,365,742 B2
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`Dec. on Inst. 8. In the Patent Owner Response, Patent Owner proposes a
`construction for the term “supported on.” PO Resp. 8–11. Because we
`decide this case on issues unrelated to any of these claim terms, we need not
`construe them herein.
`B.
`Level of Ordinary Skill in the Art
`Petitioner and Patent Owner each propose a particular level of
`ordinary skill in the art. Pet. 11; PO Resp. 7–8. In light of the evidence
`before us, we find that the references themselves represent the level of
`ordinary skill in the art, and that we need not explicate it further. See
`Okajima v. Bourdeau, 261 F.3d 12350, 1355 (Fed. Cir. 2001) (the level of
`ordinary skill in the art usually is evidenced by the references themselves);
`In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the
`Board of Patent Appeals and Interferences did not err in concluding that the
`level of ordinary skill in the art was best determined by the references of
`record).
`C. Obviousness over Hon ’043 and Whittemore
`Petitioner asserts that claims 2 and 3 would have been obvious under
`35 U.S.C. § 103 over the combined teachings of Hon ’043 and Whittemore.
`Pet. 17–37; Reply 8–28. To prevail on its patentability challenge, Petitioner
`must establish facts supporting its challenge by a preponderance of the
`evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). A claim is unpatentable
`under 35 U.S.C. § 103 if the differences between the subject matter sought
`to be patented and the prior art are such that the subject matter as a whole
`would have been obvious to a person having ordinary skill in the art to
`which the subject matter pertains. KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
`398, 406 (2007). A party that petitions the Board for a determination of
`
`
`
`
`7
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`Page 007
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`obviousness must show that “a skilled artisan would have been motivated to
`combine the teachings of the prior art references to achieve the claimed
`invention, and that the skilled artisan would have had a reasonable
`expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharm.
`USA, Inc., 566 F.3d 989, 994 (Fed. Cir. 2009) (quoting Pfizer, Inc. v.
`Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007)).
`1.
`Overview of Hon ’043
`Hon ’043 is directed to an electronic atomization cigarette. Ex. 1003,
`5. Figure 1 of Hon ’043 is reproduced below:
`
`
`Figure 1 is a schematic diagram of the structure of an electronic cigarette
`that includes air inlet 4, normal pressure cavity 5, sensor 6, vapor-liquid
`separator 7, atomizer 9, liquid-supplying bottle 11, and mouthpiece 15
`within shell 16. Id. at 8–9.
`
`
`
`
`8
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`Exhibit 1022
`Page 008
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`IPR2016-01268
`Patent 8,365,742 B2
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`
`Figure 6 of Hon ’043 is reproduced below.
`
`
`Figure 6 is a structural diagram of an atomizer, which includes atomization
`cavity 10, long stream ejection hole 24, atomization cavity wall 25, heating
`element 26, porous body 27, and bulge 36. Id. at 9. Hon ’043 states that
`“atomization cavity wall 25 is surrounded with the porous body 27, which
`can be made of foam nickel, stainless steel fiber felt, high molecule polymer
`foam and foam ceramic,” and that “atomization cavity wall 25 can be made
`of aluminum oxide or ceramic.” Id.
`Hon ’043 teaches that “[w]hen a smoker smokes, the mouthpiece 15 is
`under negative pressure, the air pressure difference or high speed stream
`between the normal pressure cavity 5 and the negative pressure cavity 8 will
`cause the sensor 6 to output an actuating signal,” which causes the cigarette
`to begin operating. Id. at 10. Air enters normal pressure cavity 5 through air
`inlet 4, proceeds through the through hole in vapor-liquid separator 7, and
`flows into atomization cavity 10 in atomizer 9. Id. The nicotine solution in
`porous body 27 is driven by the high speed stream passing through the
`ejection hole into atomization cavity 10 in the form of a droplet, where it “is
`
`
`
`
`9
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`Page 009
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`subjected to the ultrasonic atomization by the first piezoelectric element 23
`and is further atomized by the heating element 26.” Id. at 10–11. After
`atomization, large-diameter droplets stick to the wall and are reabsorbed by
`porous body 27 via overflow hole 29, and small-diameter droplets form
`aerosols that are sucked out via aerosol passage 12, gas vent 17, and
`mouthpiece 15. Id. at 11.
`
`2.
`Overview of Whittemore
`Whittemore is directed to vaporizing units for a therapeutic apparatus.
`Ex. 1004, 1:1–2. Whittemore Figure 2 is reproduced below:
`
`
`Figure 2 is an enlarged sectional view of a therapeutic apparatus with a
`vaporizing unit as taught by Whittemore. Id. at 1:15–16. Vaporizing vessel
`A is a hollow glass container that holds liquid medicament x. Id. at 1:19–23.
`Conductors 1 and 2 are combined with heating element 3 such that, when
`conductors 1 and 2 are energized, heating element 3 is heated. Id. at 1:24–
`27. Wick D is combined with heating element 3 so that a portion of wick D
`is always in contact, or in approximate contact, with heating element 3, and
`a portion of wick D is also in contact with liquid medicament x. Id. at 1:53–
`2:5.
`
`
`
`
`10
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`Exhibit 1022
`Page 010
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`Patent 8,365,742 B2
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`
`According to Whittemore, medicament x is carried on wick D by
`capillary action to a point where it will be vaporized by the heat from
`heating element 3. Id. at 2:5–8. Whittemore states that “wick D consists of
`a thread, string or strand of some suitable wick material doubled
`intermediate its ends so as to form a substantially inverted V-shaped device
`whose side portions are encased in and surrounded by coiled or looped
`portions” of heating element 3, and “the lower ends or free ends of the side
`pieces of the wick projecting downwardly into the medicament and
`terminating at or in close proximity to the closed bottom 6 of the vessel.” Id.
`at 2:9–18.
`3. Motivation to Combine Hon ’043 and Whittemore
`Petitioner contends that a person having ordinary skill in the art
`(“PHOSITA”) “would have readily understood the inefficiencies associated
`with the heating element configuration disclosed in Hon ’043.” Pet. 18. In
`support of this contention, Dr. Sturges testifies that
`[a]s the PHOSITA would have understood, Hon ’043 is a
`relatively inefficient way for heating the nicotine droplets ejected
`from porous body 27. As the PHOSITA would have understood,
`the liquid nicotine droplets are expelled into the atomization
`chamber 10, and heated by heating element 26. The PHOSITA
`would have also understood that there are air gaps between the
`nicotine droplets in the atomization chamber 10 and the heating
`element 26. Air is a very good insulator, i.e., a poor heat transfer
`material, and thus Hon ’043’s heating element needs to be at a
`higher temperature in order to vaporize the nicotine liquid
`droplets than if the droplets were in direct contact with the
`heating element. This is clear when one considers the difference
`between touching a hot object directly and only coming close to
`it.
`Ex. 1015 ¶ 56. Petitioner further contends that “the PHOSITA would have
`recognized” that Whittemore’s configuration of a heating wire wound on a
`
`11
`
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`Page 011
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`porous wick “is thermally more efficient, because the liquid (which is
`contained in the porous wick) comes into direct contact with the heating
`element.” Pet. 19. Thus, according to Petitioner, “the proposed combination
`is a simple substitution of one known element (Whittemore’s wick/heating
`wire configuration) for another (Hon ’043’s heating element) to obtain
`predictable results,” i.e., more efficient heating, lower heating temperatures,
`and improved battery life. Id. (citing Ex. 1015 ¶¶ 59–62).
`Patent Owner argues that “thermal efficiency would not have
`motivated a skilled person to combine Hon ’043 with Whittemore” because
`they “have different modes of operation, and in at least some ways,
`Hon ’043 is more thermally efficient.” PO Resp. 46. In particular, Patent
`Owner argues that atomizing droplets ejected from the ejection hole with the
`heater may “be more thermally efficient than Whittemore because Hon ’043
`only heats droplets of liquid, whereas Whittemore heats the ‘bulk’ liquid
`without the prior benefit of forming droplets via the ejection holes.” Id.
`Patent Owner also argues that “[a] simple substitution as Petitioner proposes
`would be to remove the entire atomizer in Hon ’043 and replace it with
`Whittemore’s wire-wrapped wick dipped directly into liquid-supplying
`bottle 11,” such that “liquid would be transported directly from Hon ’043’s
`liquid-supplying bottle 11 via Whittemore’s wick D to Whittemore’s
`filament 3 for vaporization.” Id. at 51–52. According to Patent Owner,
`“[t]here would be no reason (other than hindsight) to retain Hon ’043’s
`porous body 27 ‘arranged outside around’ atomization cavity wall 25, the
`bulge 36 for ‘achieving capillary infiltration,’ ejection holes 24 and 30,
`overflow holes 29, or piezoelectric elements 25 [sic] and 35.” Id. (citing
`Ex. 1003, 7, 9–11; Ex. 2015 ¶¶ 95–97).
`
`
`
`
`12
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`Page 012
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`Patent 8,365,742 B2
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`
`The Supreme Court requires an expansive and flexible approach to
`determining whether a patented invention would have been obvious at the
`time it was made. See KSR, 550 U.S. at 415. The existence of a reason for a
`person having ordinary skill in the art to modify a prior art reference is a
`question of fact. See In re Constr. Equip. Co., 665 F.3d 1254, 1255 (Fed.
`Cir. 2011). In an obviousness analysis, some kind of reason must be shown
`as to why a person having ordinary skill in the art would have thought of
`combining or modifying the prior art to achieve the patented invention. See
`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008). A
`reason to combine or modify the prior art may be found explicitly or
`implicitly in market forces, design incentives, the “interrelated teachings of
`multiple patents,” “any need or problem known in the field of endeavor at
`the time of invention and addressed by the patent,” and “the background
`knowledge, creativity, and common sense of the person of ordinary skill.”
`Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
`2009) (quoting KSR, 550 U.S. at 418–21).
`Here, Petitioner proposes a combination of references that purports to
`show the claimed invention would have been obvious on the basis of
`thermodynamics. In particular, Petitioner states that “simple
`thermodynamics would have motivated the person having ordinary skill in
`the art . . . to modify Hon ’043 as taught by Whittemore.” Pet. 7. From the
`general proposition that metal is a more efficient conductor of heat than
`flowing gas because air is a relatively poor heat transfer material, Petitioner
`concludes that air gaps between “heating wire 26 of Hon ’043 and the liquid
`nicotine droplets expelled into the atomization chamber 10 create a
`relatively inefficient environment for heating the nicotine solution, and thus
`
`
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`13
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`Exhibit 1022
`Page 013
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`wire 26 would need to be operated at relatively high temperatures, which
`would require more battery power.” Id. at 7–8.
`As Patent Owner notes, Petitioner’s arguments regarding the alleged
`inefficiencies of the Hon ’043 atomizer are based on Dr. Sturges’s
`hypothesis “that ‘a very small percentage’ of the droplets ejected from the
`ejection holes will contact the heating element.” PO Resp. 48 (citing
`Ex. 2016, 61:20–22). In this regard, Dr. Sturges testified at his deposition
`that only “[a] small amount” of the airstream exiting Hon ’043’s ejection
`holes may be directed at the heater
`[b]ecause the air would naturally begin to disperse as it left the
`ejection holes, and so a small fraction of that dispersed stream
`may find its way into the vicinity of the wire. But there is a
`natural tendency for a slipstream to occur, in which case most of
`the entrained droplets would just pass over wire 26 without even
`touching it.
`Ex. 2016, 61:8–19. Petitioner, however, does not provide adequate
`explanation as to why a person having ordinary skill in the art would think
`that to be the case. In reaching that determination, we credit Mr. Meyst’s
`testimony over that of Dr. Sturges.
`For example, Mr. Meyst identified a number of factors that would
`affect the determination of the percentage of entrained droplets that contact
`the wire in the Hon ’043 atomizer. Mr. Meyst states that,
`[w]hile it is true that some liquid droplets will not touch the
`heater, there is no way to know what percentage will come into
`direct contact without knowing a number of other factors, such
`as the heater’s dimensions, the cavity’s dimensions, the size of
`the ejection holes, and the spray pattern. A person of ordinary
`skill would have understood these factors, and would have made
`selections that would result in most of the liquid coming into
`direct contact with the heating element. For example, Hon ’043
`discloses that the ejection holes may be “long” or [“]short,” may
`14
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`
`employ a “slot structure” or a “circular hole structure” ranging
`from 0.1 mm to 1.3 mm, and that “single” or “multiple” holes
`may be used. A skilled person could have calculated or used
`commercially available Computational Fluid Dynamics software
`such as FLUENT to model the path of droplets ejected from the
`ejection holes and focus them at the heating element.
`Ex. 2015 ¶ 98 (internal citations omitted). Dr. Sturges, however, stated at
`his deposition that he did not do any calculations to determine how factors
`such as the speed and pressure of the airstream, and the rate of change of the
`pressure of the airstream as it travels through the ejection holes and into the
`atomization chamber, would affect the dispersion of the droplets ejected
`from the ejection holes towards the heating wire in Hon ’043. Ex. 2016,
`64:5–66:4. In light of the variables that can affect how the droplets could
`disperse upon ejection from the ejection holes, Petitioner has not explained
`adequately why a person having ordinary skill in the art would understand
`that only a small amount of droplets would contact Hon ’043’s heating wire
`and that the atomization described in Hon ’043 is inefficient.
`Moreover, Petitioner and Dr. Sturges do not identify objective
`evidence to support Dr. Sturges’s conclusion that the thermal efficiency of
`Hon ’043 needed improvement. As an initial matter, we note that Petitioner
`does not direct us to, nor do we discern, any statements in Hon ’043 or
`Whittemore with respect to the efficiency—or inefficiency—of atomization
`within the described articles. Dr. Sturges identifies one page from a
`thermodynamics textbook listing heat coefficients for convection and
`conduction (Ex. 1015 ¶ 57 (citing Ex. 1016, 3)), but does not identify any
`other evidence in the prior art or otherwise that identifies atomization
`inefficiency as a generally known problem in the field, or that specifically
`discusses the efficiency of atomization within electronic cigarettes. While it
`
`
`
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`15
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`Page 015
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`is true that, when a claimed invention involves a combination of elements,
`“any need or problem known in the relevant field of endeavor at the time of
`the invention can provide a reason to combine,” that need or problem must
`nevertheless be identified sufficiently. Tyco Healthcare Grp. LP v. Ethicon
`Endo-Surgery, Inc., 774 F.3d 968, 977 (Fed. Cir. 2014).
`Petitioner’s arguments and Dr. Sturges’s testimony with respect to the
`modification of Hon ’043 leave an analytical gap that does not sufficiently
`apprise us of why one of ordinary skill in the art would have modified
`Hon ’043 with Whittemore’s wire-wrapped wick. Petitioner’s and
`Dr. Sturges’s assertions that a person having ordinary skill in the art would
`be motivated to modify Hon ’043 based on “simple thermodynamics” do not
`adequately address why a person having ordinary skill would have wanted to
`provide more efficient heating in the Hon ’043 electronic cigarette.
`In an obviousness determination, we must avoid analyzing the prior
`art through the prism of hindsight. Instead, we must “cast the mind back to
`the time the invention was made” and “occupy the mind of one skilled in the
`art who is presented with only the references, and who is normally guided by
`then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540, 1553 (Fed. Cir. 1983); see also Kinetic Concepts, Inc. v.
`Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting
`Innogenetics, 512 F.3d at 1374 n.3 (“We must still be careful not to allow
`hindsight reconstruction of the references to reach the claimed invention
`without any explanation as to how or why the references would be combined
`to produce the claimed invention.”)). Here, Petitioner attempts to imbue one
`of ordinary skill in the art with knowledge of the claimed invention, when no
`prior art reference, references of record, or other evidence conveys or
`
`
`
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`16
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`Page 016
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`Patent 8,365,742 B2
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`suggests that knowledge. Petitioner’s proposed rationale relies upon general
`and conclusory statements from Dr. Sturges regarding thermal dynamics that
`are not sufficiently supported in the record, and instead appear to be based
`on impermissible use of hindsight after review of the ’742 patent, rather than
`on a supported reason to modify the heating configuration in Hon ’043’s
`atomizer. See KSR, 550 U.S. at 421 (stating that the fact finder must be
`aware “of the distortion caused by hindsight bias and must be cautious of
`arguments reliant upon ex post reasoning”). In order to establish a
`motivation to combine the references, Petitioner needed to explain
`sufficiently what would have led a person of ordinary skill in the art at the
`time of the invention to consider modifying the Hon ’043 atomizer to
`include a “heating wire wound on a part of the porous component” as recited
`in claims 2 and 3. Petitioner failed to provide such an explanation.
`We are similarly unpersuaded by Petitioner’s argument that “the
`proposed combination is the simple substitution of one known element
`(Whittemore’s wick/heating wire configuration) for another (Hon ’043’s
`heating element) to obtain predictable results.” Pet. 19. In particular, we
`credit Patent Owner’s contention, supported by testimony from Mr. Meyst,
`that “[a] simple substitution as Petitioner proposes would be to remove the
`entire atomizer in Hon ’043 and replace it with Whittemore’s wire-wrapped
`wick dipped directly into liquid-supplying bottle 11.” PO Resp. 51–52.
`Mr. Meyst explains:
`In Hon ’043 the porous body 27 moves liquid from the solution
`storage body for vaporization. “The solution storage porous
`body 28 in the liquid-supplying bottle 11 will be in contact with
`the bulge 36 on the atomizer 9, thereby achieving the capillary
`infiltration liquid-supplying.” Hon ’043 (Ex. 1003) at 11. In
`Whittemore the wick D performs this function. Substituting the
`
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`17
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`Philip Morris Products, S.A.
`Exhibit 1022
`Page 017
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`IPR2016-01268
`Patent 8,365,742 B2
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`wick/heating wire configuration of Whittemore for the heating
`wire 26 of Hon ’043 results in a redundant design having both
`the porous body 27 of Hon ’043 and the wick D of Whittemore.
`On the other hand, if the porous body 27 and the heating wire 26
`of Hon ’043 are removed in making the modification, then the
`atomizer of Hon ’043 is entirely discarded and replaced with
`something else having little relation to the atomizer disclosed in
`Hon ’043.
`Ex. 2016 ¶ 95 (citing Ex. 2001 ¶¶ 56–57).
`Petitioner’s response to Patent Owner’s contention, however, fails to
`explain adequately why the proposed “simple substitution” would add
`Whittemore’s wick and retain Hon ’043’s porous body, when, as Mr. Meyst
`notes, Whittemore’s wick performs the same function as the porous body in
`Hon ’043. Instead, Petitioner reiterates that “the PHOSITA would not have
`considered replacing Hon ’043’s entire atomizer an improvement,” and
`argues that “the simplest and most straightforward substitution and one that
`does not involve a major design change would be simply to substitute
`Whittemore’s wire wrapped wick for the heating wire of Hon [’]043.”
`Reply 26. Likewise, Dr. Sturges’s testimony in support of Petitioner’s
`argument does not provide any reasoning for retaining Hon ’043’s porous
`body other than that it “would be the simplest and most straightforward
`approach.” Ex. 1027 ¶ 51.
`Because neither Petitioner nor Dr. Sturges explains sufficiently why
`one would substitute only Whittemore’s wick—and not the wire wrapped
`wick dipped directly into the liquid supply as taught by Whittemore—into
`Hon ’043’s atomizer, Petitioner does not establish that replacing Hon ’043’s
`heating wire with Whittemore’s wire wrapped wick as proposed is a simple
`substitution that would have been obvious to a person having ordinary skill
`in the art.
`
`
`
`18
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`Philip Morris Products, S.A.
`Exhibit 1022
`Page 018
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`Petitioner must demonstrate obviousness by a preponderance of the
`evidence. 35 U.S.C. § 316(e); see also Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)
`(requiring inter partes review petitions to identify “with particularity . . . the
`evidence that supports the grounds for the challenge to each claim”)). After
`considering the parties’ arguments and evidence, however, we are not
`persuaded that Petitioner has made a sufficient showing that a person having
`ordinary skill in the art would have combined the teachings in the manner
`contended by Petitioner. Accordingly, we find that Petitioner has not shown
`by a preponderance of the evidence that independent claims 2 and 3 of
`the ’742 patent are unpatentable under 35 U.S.C. § 103 as obvious over the
`combined teachings of Hon ’043 and Whittemore.
`
`
`III. CONCLUSION
`For the reasons given, we are not persuaded that Petitioner has shown
`by a preponderance of the evidence that claims 2 and 3 of the ’742 patent
`would have been obvious over the combined teachings of Hon ’043 and
`Whittemore.
`
`
`IV. PATENT OWNER’S MOTION TO EXCLUDE
`Patent Owner moves to exclude (1) Exhibits 1005–1008 and 1022,
`and (2) the Sturges Reply Declaration (Ex. 1027) and Exhibits 1028–1032
`that support the Sturges Reply Declaration. Paper 37, 1. We do not reach
`the merits of Patent Owner’s Motion to Exclude because our Decision does
`not rely on Exhibits 1005–1008 and 1022, and, as explained above, even if
`we consider the disputed Sturges Reply Declaration and evidence, Petitioner
`
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`19
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`Philip Morris Products, S.A.
`Exhibit 1022
`Page 019
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`has not shown by a preponderance of the evidence that claims 2 and 3 are
`unpatentable. Accordingly, we dismiss Patent Owner’s Motion to Exclude
`as moot.
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Petitioner has not shown by a preponderance of the
`evidence that claims 2 and 3 of the ’742 patent are unpatentable;
`FURTHER ORDERED that Patent Owner’s Motion to Exclude
`(Paper 37) is dismissed; and
`FURTHER ORDERED that, because this is a Final Written Decision,
`parties to the proceeding seeking judicial review of this Decision must
`comply with the notice and service requirements of 37 C.F.R. § 90.2.
`
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`20
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`Philip Morris Products, S.A.
`Exhibit 1022
`Page 020
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`IPR2016-01268
`Patent 8,365,742 B2
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`PETITIONER:
`
`Ralph J. Gabric
`Robert Mallin
`Yuezhong Feng
`BRINKS GILSON & LIONE
`rgabri