Trials@uspto.gov
`571-272-7822
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`
`
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`Paper 9
`Date: April 2, 2021
`
`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.
`____________
`
`
`
`IPR2020-01602
`Patent 9,901,123 B2
`____________
`
`
`
`
`Before JO-ANNE M. KOKOSKI, ELIZABETH M. ROESEL,
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 9
`Date: April 2, 2021
`
`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.
`____________
`
`
`
`IPR2020-01602
`Patent 9,901,123 B2
`____________
`
`
`
`
`Before JO-ANNE M. KOKOSKI, ELIZABETH M. ROESEL,
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`IPR2020-01602
`Patent 9,901,123 B2
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`
`INTRODUCTION
`I.
`Philip Morris Products, S.A. (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1–7, 9, 11–19, 21, and 23–26 (the
`“challenged claims”) of U.S. Patent No. 9,901,123 B2 (“the ’123 patent,”
`Ex. 1001). Paper 2 (“Pet.”). RAI Strategic Holdings, Inc. (“Patent Owner”)
`filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With Board
`authorization, Petitioner filed a reply limited to the issue of discretion to
`deny institution pursuant to Apple Inc. v. Fintiv, Inc.1 (“Reply,” Paper 7),
`and Patent Owner filed a Sur-reply (“Sur-Reply,” Paper 8).
`Institution of an inter partes review is authorized by statute when “the
`information presented in the petition . . . and any response . . . shows that
`there is 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
`(2018); see 37 C.F.R. § 42.4 (2020). Upon consideration of the Petition, the
`Preliminary Response, the Reply, the Sur-Reply, and the evidence of record,
`we determine that Petitioner has established a reasonable likelihood of
`prevailing with respect to the unpatentability of at least 1 claim of the ’123
`patent, and we decline to exercise our discretion to deny institution.
`Accordingly, for the reasons that follow, we institute an inter partes review
`of claims 1–7, 9, 11–19, 21, and 23–26 of the ’123 patent.
`A. Real Parties-in-Interest
`Petitioner identifies Philip Morris Products, S.A., Philip Morris
`International, Inc., Altria Client Services LLC, and Philip Morris USA as the
`real parties-in-interest. Pet. 75. Patent Owner identifies RAI strategic
`
`1 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”).
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`Holdings, Inc., R.J. Reynolds Vapor Company, RAI Innovations Company,
`and R.J. Reynolds Tobacco Company as the real parties-in-interest.
`Paper 4, 1.
`B. Related Proceedings
`The parties indicate that the ’123 patent is involved in the following
`proceedings: (1) RAI Strategic Holdings, Inc. v. Altria Client Services LLC,
`No. 1:20-cv-00393-LO-TCB (E.D. Va.), and (2) Certain Tobacco Heating
`Articles and Components Thereof, U.S. International Trade Commission,
`Investigation No. 337-TA-1199. Pet. 75–76; Paper 4, 2. The parties further
`indicate that the ’123 patent is the subject of IPR2020-00919 (institution
`denied on November 16, 2020), also filed by Petitioner. Pet. 76; Paper 4, 1.
`C. The ’123 Patent
`The ’123 patent is titled “Tobacco-Containing Smoking Article,” and
`relates to smoking articles “that produce aerosols incorporating components
`derived from, or provided by, tobacco,” where the aerosols “are not
`necessarily produced as a result of burning of tobacco.” Ex. 1001, code
`(54), 4:45–49. Instead, the smoking articles produce such aerosols “as a
`result of the application of heat upon tobacco or materials that are in contact
`with tobacco.” Id. at 4:49–52. The ’123 patent explains that the smoking
`articles “produce visible aerosols that are ‘smoke-like’ in nature, and exhibit
`many of the sensory characteristics associated with those types of smoking
`articles that burn tobacco.” Id. at 4:52–55.
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`Figure 1 of the ’123 patent is reproduced below.
`
`
`Figure 1 depicts a longitudinal cross-sectional view of one embodiment of
`an electrically powered, tobacco-containing smoking article. Ex. 1001,
`8:31–32. Smoking article 10 includes outer housing 20 that is “generally
`tubular in shape,” and includes distal end 13 and mouth-end 15. Id. at
`19:44–49. Control components 50 and sensor 60 are “preferably part of a
`puff-actuated controller adapted for regulating current flow through one or
`more of the” heating elements. Id. at 20:63–67. Resistance heating
`elements 70, 72 are powered by electric power source 36, controlled by
`electrically powered control components 50, and configured to allow airflow
`therethrough. Id. at 21:22–27. Second resistance heating unit 72 “can be
`formed from relatively high surface area absorbent or wicking-type
`materials,” or
`can be employed in close proximity to an absorbent wicking
`material such that aerosol-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 the [sic]
`heat produced by the second resistance element).
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`Id. at 21:31–45. Smoking article 10 also includes cartridge 85 that contains
`tobacco 89 and an aerosol-forming material “in the form of an intimate
`mixture or provided in separate regions.” Id. at 22:2–6.
`The ’123 patent explains that, during use, “[a]ir is drawn through the
`air passageways or openings 32 in the cap 35 located at the distal end 13 . . .
`and into the outer container 20.” Id. at 24:20–23. The “[d]rawn air passes
`through air passageway 45 that extends along the length of the power source
`36 and the electronic controls components 50,” through an air passageway
`area within first heating element 70, through air flow sensing region 60, past
`or through second heating element 72, through an air passageway that
`extends along the length of cartridge 85, and into mouth-end piece 120. Id.
`at 24:23–30. The heating elements provide surface region temperatures, and
`have the ability to heat the tobacco and aerosol-forming materials “in
`surrounding regions in the vicinity of those heating elements.” Id.
`at 24:30–33. Aerosol is formed by the action of the drawn air passing the
`heated tobacco and aerosol-forming materials in the region of heating
`element 72. Id. at 24:39–41.
`D. Illustrative Claim
`Petitioner challenges claims 1–7, 9, 11–19, 21, and 23–26 of the ’123
`patent. Pet. 1, 3. Claims 1 and 15 are the only independent challenged
`claims. Claim 1 is illustrative of the claimed subject matter, and is
`reproduced below.
`
`1. An electrically-powered, aerosol-generating smoking
`article comprising:
`[a] an electrical power source within a tubular outer
`housing having a mouth-end and an end distal to the
`mouth end;
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`[b] at least one electrical resistance heater powered by
`said electrical power source;
`[c] 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
`[d] 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;
`[e] wherein the rod-shaped carrier devise 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, 32:50–33:8 (bracketed labeling designated by Petitioner; see Pet. 18
`n.3, App’x (Claim Listing)).
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`E. The Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`References/Basis
`35 U.S.C.
`Claims Challenged
`1, 2, 5, 7, 9, 11, 12,
`Hon,2 Brooks,3 Whittemore4
`§ 103
`14, 15, 18, 21, 23–26
`Hon, Whittemore, Brooks, Susa5
`§ 103
`3, 4, 13, 16, 17
`Hon, Whittemore, Brooks, Ray6
`§ 103
`6, 19
`Pet. 3. Petitioner relies on the Declaration of Stewart Fox (“the Fox
`Declaration,” Ex. 1003) in support of its contentions.
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a person having ordinary skill in the art
`(“POSA”) “would have had a Bachelor’s degree in mechanical engineering,
`electrical engineering, chemistry, or physics, or a related field, and three to
`four years of industry experience,” or a Master’s degree in the same fields
`with “one to two years of industry experience.” Pet. 9–10. Petitioner further
`contends that “[s]uch a POSA would have been familiar with electrically
`powered smoking articles and/or the components and underlying technology
`used therein.” Id. at 10 (citing Ex. 1003 ¶¶ 13–18). Patent Owner states that
`
`
`2 Chinese Patent No. CN 2719043 Y, published Aug. 24, 2005 (Ex. 1005,
`1–13 (English translation), 16–28 (original Chinese), “Hon” or “Hon ’043”).
`Petitioner provides an affidavit attesting to the accuracy of the translation.
`Ex. 1005, 14–15; see 37 C.F.R. § 42.63(b).
`3 U.S. Patent No. 4,947,874, issued Aug. 14, 1990 (Ex. 1006, “Brooks”).
`4 U.S. Patent No. 2,057,353, issued Oct. 13, 1936 (Ex. 1007, “Whittemore”).
`5 European Pat. Pub. No. EP 0845220 B1, published Sept. 3, 2003
`(Ex. 1008, “Susa”).
`6 U.S. Patent No. 4,284,089, issued Aug. 18, 1981 (Ex. 1009, “Ray”).
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`it “accepts Petitioner’s definition” but “reserves the right to dispute this
`definition if trial is instituted.” Prelim. Resp. 17. For purposes of this
`Decision, we adopt Petitioner’s proposed definition, which is consistent with
`the level of skill in the art at the time of the invention as reflected in the prior
`art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001) (explaining that specific findings regarding ordinary skill level
`are not required “where the prior art itself reflects an appropriate level and a
`need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid
`State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).
`B. Claim Construction
`We construe each claim “in accordance with the ordinary and
`customary meaning of such claim as understood by one of ordinary skill in
`the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`§ 42.100(b) (2019). Under this standard, claim terms are generally given
`their plain and ordinary meaning as would have been understood by a person
`of ordinary skill in the art at the time of the invention and in the context of
`the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313
`(Fed. Cir. 2005) (en banc). Only those terms in controversy need to be
`construed, and only to the extent necessary to resolve the controversy. See
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,
`200 F.3d 795, 803 (Fed. Cir. 1999)).
`Neither party proposes an explicit construction for any claim term.
`See Pet. 10 (asserting that the prior art discloses the claimed subject matter
`“under any reasonable construction”); Prelim. Resp. 18 (asserting that its
`reasons for denial of institution “do not require addressing the construction
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`of claim terms”). For purposes of this Decision, based on the record before
`us, we determine that none of the claim terms requires an explicit
`construction.
`C. Discretionary Denial Under 35 U.S.C. § 314(a)
`Institution of an inter partes review under 35 U.S.C. § 314(a) is
`discretionary. See 35 U.S.C. § 314(a) (stating “[t]he Director may not
`authorize an inter partes review to be instituted unless the Director
`determines that the information presented in the petition . . . shows that there
`is a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition” (emphasis added)); Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s
`decision to deny a petition is a matter committed to the Patent Office’s
`discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018)
`(“[Section] 314(a) invests the Director with discretion on the question
`whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid
`Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted,
`but never compelled, to institute an IPR proceeding.”).
`Patent Owner argues that we should deny the Petition in view of the
`parallel ITC investigation involving the ’123 patent. Prelim. Resp. 18–26.
`Patent Owner asserts that an evidentiary hearing in the ITC was scheduled to
`occur “just weeks” after Patent Owner filed its Preliminary Response, and
`that the ITC’s final determination will pre-date any Final Written Decision
`in this proceeding by seven months. Id. at 19.
`Patent Owner further notes that a different set of claims of the ’123
`patent was the subject of IPR2020-00919, also filed by Petitioner, in which
`review was discretionarily denied “in view of the parallel ITC proceeding.”
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`Id. at 18 (citing Philip Morris Products, S.A. v. RAI Strategic Holdings, Inc.,
`IPR2019-00919, Paper 9 at 6–13 (PTAB November 16, 2020) (“919
`Decision” or “919 IPR”)). Patent Owner argues that “Petitioner could have
`filed this Petition at the same time as Petitioner’s first Petition or even
`combined them into a single Petition,” and, had Petitioner done so, “it is a
`near certainty that the Board would have denied institution of the challenges
`raised in this Petition.” Id. Patent Owner argues that “the considerations
`that led the Board to deny institution on the first Petition on the ’123 patent
`apply equally, if not more so, to this Petition.” Id.
`Fintiv identifies the following factors that the Board should consider
`and balance when the patent owner raises an argument for discretionary
`denial due to an earlier trial date:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Fintiv, Paper 11 at 5–6. According to Fintiv, these factors relate to
`“efficiency, fairness, and the merits” and require the Board to take “a
`holistic view of whether efficiency and integrity of the system are best
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`served by denying or instituting review.” Id. at 6. Our analysis of the Fintiv
`factors is set forth below.
`We determine that the facts of this case as they pertain to Fintiv
`factors 1, 2, and 5 are not significantly different from the facts presented in
`the 919 IPR, and our analysis of these factors is essentially the same as set
`forth in the 919 Decision. Therefore, we incorporate by reference the
`Analysis section of the 919 Decision as it pertains to Fintiv factors 1, 2, and
`5. 919 IPR, Paper 9 at 8–9, 12. Specifically, in the 919 Decision, we
`determined that factor 1 “neither weighs in favor of or against discretionary
`denial,” factor 2 “weighs in favor of exercising discretion to deny
`institution,” and factor 5 “weighs in favor of exercising our discretion to
`deny institution.” Id. We address Fintiv factors 3, 4, and 6 below.
`1. Fintiv Factor 3: Investment in Proceedings
`Patent Owner argues that “[t]he parties will have completed all pre-
`hearing events and the ITC trial more than two months before the April 2021
`institution decision deadline.” Prelim. Resp. 22 (citing Ex. 2002, 2–4); see
`also Sur-Reply 4 (“All aspects of the ITC proceedings are nearly
`complete.”). Patent Owner also argues that “the entirety of the ITC
`proceedings—including the ALJ’s investment in his decision and the
`Commission’s investment in reaching its decision—will all be complete by
`September 2021.” Sur-Reply 4. In this case, the evidence shows that the
`parties and the ITC have invested significant work in the ITC proceeding.
`This fact favors denial of institution. Fintiv, Paper 11 at 9–10.
`Under this factor, we also analyze whether the evidence shows that
`the petitioner filed the petition expeditiously, such as promptly after
`becoming aware of the asserted claims. Fintiv, Paper 11 at 11. Petitioner
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`contends that “[j]ust five months after being accused of infringement,
`Petitioner is diligently filing this Petition—after having filed a half-dozen
`petitions challenging the asserted claims in six patents.” Pet. 72. Petitioner
`contends that “this petition does not challenge claims that Petitioner was
`accused of infringing,” and instead “it challenges the ’123 patent’s
`‘Domestic Industry’ claims, i.e., the claims that Patent Owner asserts that
`[Patent Owner] practices by selling its ‘Vuse Vibe’ vaping device.” Id.
`(citing Ex. 1016). Under these circumstances, we find no unreasonable
`delay in Petitioner’s filing, and determine that this fact is neutral.
`Accordingly, in contrast to the 919 Decision, we find that the parties
`have invested sufficient time and effort in the ITC proceeding to favor
`denial, and that Fintiv factor 3 weighs in favor of exercising our discretion to
`deny institution. Fintiv, Paper 11 at 10.
`2. Factor 4: Overlap of Issues
`Petitioner contends “that there is zero overlap between this IPR and
`any other proceeding.” Reply 1 (emphasis omitted). Petitioner contends
`that “[t]he ITC will not even consider the validity of the challenged claims
`because Petitioner dropped that issue from the ITC case.” Id. at 5 (emphasis
`omitted) (citing Ex. 1039). According to Petitioner, “this factor weighs even
`more heavily in favor of institution than a Sotera-style stipulation because,
`outside of this IPR, the validity of the challenged claims will not be
`adjudicated at all.” Id. (citing Philip Morris Products, S.A. v. RAI Strategic
`Holdings, Inc., IPR2020-01094, Paper 9 at 21–23 (PTAB Jan. 25, 2021)).
`In its Sur-Reply, Patent Owner admits that there is no overlap, but
`argues that Petitioner’s narrowing of “its invalidity defense in the ITC in the
`middle of the ITC trial, mere days before filing its Reply,” is “pure and utter
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`gamesmanship” and “violates the spirit, if not the rule of Fintiv factor 4.”
`Sur-Reply 4–5. Patent Owner also argues that “Petitioner makes no
`stipulation at all, much less a narrow stipulation that it will not pursue, in
`any court, any ground raised or that could have been raised in an IPR.” Id.
`at 6 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12
`at 18–19 (PTAB Dec. 1, 2020) (precedential as to Section II.A.)).
`Fintiv factor 4 evaluates “concerns of inefficiency and the possibility
`of conflicting decisions” when substantially identical prior art is submitted
`in both proceedings. Fintiv, Paper 11 at 12. “[I]f the petition includes the
`same or substantially the same claims, grounds, arguments, and evidence as
`presented in the parallel proceeding, that fact has favored denial.” Id.
`“Conversely, if the petition includes materially different grounds, arguments,
`and/or evidence than those presented in the district court, this fact has tended
`to weigh against exercising discretion to deny institution.” Id. at 12–13.
`The record before us establishes that, in the ITC proceeding,
`Petitioner’s prior art invalidity grounds are asserted against different claims
`based on different prior art (Morgan, Counts-962, Adams, Park), and
`Petitioner is no longer contesting the validity of the challenged claims.
`Ex. 1039. Petitioner’s decision to limit its ITC invalidity case to claims and
`grounds that are not at issue in this proceeding mitigates to some degree
`concerns of duplicative efforts between the ITC and the Board, and mitigates
`any concerns about potentially conflicting decisions. Petitioner’s decision
`ensures that an inter partes review is a “true alternative” to the ITC
`proceeding. Sotera, Paper 12 at 19.
`That Petitioner limited its invalidity case during the ITC hearing does
`not change this conclusion. We recognize that the parties have expended
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`significant resources litigating the case in the ITC, and we have taken that
`investment into account in our evaluation of Fintiv factor 3. Although we
`acknowledge that the parties and the ITC staff attorney’s office expended
`resources on overlapping invalidity issues leading up to the hearing, the
`result of Petitioner’s decision to narrow its contentions is that the ITC will
`not consider the validity of the challenged claims, and the ITC proceeding
`will not resolve this dispute between the parties.
`Accordingly, in contrast to the 919 Decision, we determine that, due
`to the lack of overlap between the claims and issues now being raised in the
`ITC proceeding and the Petition, Fintiv factor 4 weighs strongly against
`exercising our discretion to deny institution.
`3. Fintiv Factor 6: Other Circumstances, Including the Merits
`Patent Owner argues that “the Petition lacks merit on all proposed
`grounds and thus the merits of the Petition are not ‘particularly strong.’”
`Prelim. Resp. 23 (quoting Fintiv, Paper 11 at 14) (emphasis omitted).
`Petitioner responds that “[t]he petition’s strong merits also favor institution.”
`Reply at 5. For the reasons explained below, we find that the merits of this
`case are strong and weigh in favor of Petitioner on the evidence presented
`thus far. See Section II.D, infra. Accordingly, in contrast to the 919
`Decision, we find that Fintiv factor 6 weighs against exercising our
`discretion to deny institution.
`4. Balancing the Fintiv Factors
`Fintiv requires that we take “a holistic view of whether efficiency and
`integrity of the system are best served by denying or instituting review.”
`Fintiv, Paper 11 at 6. Applying this approach, we determine that the facts of
`this case, particularly with respect to Fintiv factors 4 and 6, justify a
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`different result than in the 919 IPR. More particularly, we determine that,
`on balance, Petitioner’s decision to limit its ITC invalidity case to claims and
`grounds that are not asserted in the Petition, and the strength of the Petition
`on the merits, outweigh the investment to date in the ITC proceeding, where
`the ITC proceeding involves the same parties and the same patent.
`Accordingly, we decline to exercise our discretion to deny the Petition
`pursuant to 35 U.S.C. § 314(a).
`D. Obviousness over Hon, Brooks, and Whittemore
`Petitioner contends that the subject matter of claims 1, 2, 5, 7, 9, 11,
`12, 14, 15, 18, 21, and 23–26 of the ’123 patent would have been obvious
`over Hon alone, or over the combined teachings of Hon, Brooks, and
`Whittemore. Pet. 10–62. Petitioner relies on the Fox Declaration in support
`of its contentions. Id.
`1. Overview of Hon
`Hon is directed to an electronic atomization cigarette. Ex. 1005, 4.
`Figure 1 of Hon is reproduced below:
`
`
`Figure 1 is a schematic diagram of the structure of an electronic cigarette.
`Id. at 5. Hon teaches “a mouthpiece-shaped, cigar-shaped, or a pipe-shaped
`body” that includes battery 2, air inlet 4, normal pressure cavity 5, sensor 6,
`vapor-liquid separator 7, atomizer 9, liquid-supplying bottle 11, and
`mouthpiece 15 “set successively in the enclosure 14.” Id. at 6.
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`Hon’s Figure 6 is reproduced below.
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`Figure 6 is a structural diagram of an atomizer that includes atomization
`cavity 10, long stream ejection hole 24, atomization cavity wall 25, heating
`element 26, porous body 27, and bulge 36. Id. at 5–6. Hon teaches that
`“porous body 27 is wrapped around the atomization cavity wall 25” and
`“may be made of nickel foam, stainless steel fiber felt, high molecular
`polymeric foam, and ceramic foam.” Id. “[A]tomization cavity wall 25 may
`be made of alumina or ceramic.” Id.
`Hon 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 6. 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. at 7. The solution in
`porous body 27 is driven by a high speed airflow passing through ejection
`hole 24 and ejected in the form of droplets into atomization cavity 10. The
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`solution “is atomized ultrasonically by the first piezoelectric element 23 and
`is further atomized under the effect of heating element 26.” Id. After
`atomization, large-diameter droplets are attached to the wall and reabsorbed
`by porous body 27 via overflow hole 29, and small-diameter droplets form
`an aerosol that is sucked out via aerosol passage 12, gas vent 17, and
`mouthpiece 15. Id. According to Hon, liquid storing porous body 28 in
`liquid-supplying bottle 11 is in contact with bulge 36 on atomizer 9 “to
`realize the solution supply via capillary infiltration.” Id.; see also id. at 6,
`Fig. 11 (showing and describing porous body 28 in liquid-supplying bottle
`11).
`
`2. Overview of Brooks
`Brooks relates to cigarettes and other smoking articles that “employ
`an electrical resistance heating element and an electrical power source to
`produce a tobacco-flavored smoke or aerosol.” Ex. 1006, 1:6–10. Brooks
`teaches that the smoking articles “are capable of providing the user with the
`sensations of smoking (e.g., smoking taste, feel, satisfaction, pleasure, and
`the like), by heating but not burning tobacco, without producing sidestream
`smoke or odor, and without producing carbon monoxide.” Id. at 1:11–16.
`Brooks also describes “a reusable controller which can be used with the
`cigarettes or disposable portions of the invention, as well as with other
`resistance heating aerosol producing articles.” Id. at 4:35–38. This reusable
`controller includes “a current actuation means, a separate current regulating
`means to control the temperature of the heating element, and a battery power
`supply.” Id. at 4:38–42.
`Brooks states that “[p]referably, the current actuation means is puff
`actuated, so that current flows through the resistance heating element to
`
`17
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`produce aerosol only during draw by the user.” Id. at 4:58–61. Brooks also
`states that “the current regulating means preferably is based on controlling
`the time period during which current passes through the resistance element
`during draw,” which, “in turn, controls the temperature experienced by the
`resistance element and by the aerosol forming substances.” Id. at 4:64–5:1.
`Included in the current regulating means is an electrical control circuit that
`“maximizes initial heating of the heating element, until a desired
`temperature range for volatilization of the aerosol former and the tobacco
`flavor substances is reached, usually between about 150º C. and about
`350º C.” Id. at 5:1–6. Brooks teaches that the control circuit “normally
`maintains the heating element within the desired temperature range during
`the balance of the puff and/or ensures that the heating element does not
`overheat during puffing.” Id. at 5:7–12.
`3. Overview of Whittemore
`Whittemore is directed to vaporizing units for a therapeutic apparatus.
`Ex. 1007, 1:1–2. Whittemore Figure 2 is reproduced below:
`
`
`Figure 2 is an enlarged vertical sectional view of a therapeutic apparatus
`with a vaporizing unit. Id. at 1:15–16. Vaporizing vessel A is a hollow
`
`18
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`IPR2020-01602
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`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.
`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.
`4. Analysis
`Petitioner asserts, with supporting testimony from Mr. Fox, that
`claims 1, 2, 5, 7, 9, 11, 12, 14, 15, 18, 21, and 23–26 are unpatentable as
`having been obvious over Hon, Brooks, and Whittemore. Pet. 17–65. With
`respect to independent claims 1 and 15, Petitioner contends that Hon,
`Brooks, and Whittemore disclose:
`Preamble: “An electrically-powered, aerosol generating smoking
`article, comprising:” (Pet. 17–18 (relying on Ex. 1005, code (57), 7–8,
`Fig. 1; Ex. 1003 ¶¶ 88–89));
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`Element 1/15[a]: “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;” (Pet. 18–20 (relying on Ex. 1005, 6, Fig. 1; Ex. 1003
`¶¶ 90–95)).
`Element 1/15[b]: “at least one electrical resistance heater powered by
`said electrical power source;” (Pet. 20–22 (relying on Ex. 1005, 5–7, Fig. 6,
`Fig. 12; Ex. 1007, 1:24–28; Ex. 1003 ¶¶ 96–99));
`Element 1/15[c]: “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” (Pet. 22–29 (relying on
`Ex. 1005, 6–7, Fig. 1, Fig. 12; Ex. 1006, code (57), 1:6–10, 3:63–67, 4:50–
`5:26, 7:5–7, 7:25–8:23, 9:51–65, 10:42–47, 12:39–16:31, 20:53–21:27
`Ex. 1003 ¶¶ 76–80 100–107, 114–117));
`Element 1/15[d]: “a rod-shaped carrier device [removably] engaged
`with the mouth-end of the tubular outer housing 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 [fibrous material/absorbent wicking material],
`the cartridge having a generally tubular shape and adapted for airflow
`therethrough;” (Pet. 29–45 (relying on Ex. 1005, 1, 3, 5–8, Fig. 1, Fig. 11;
`Ex. 1007, 2:7–25 Ex. 1003 ¶¶ 74, 75, 120–145, 151–153));
`Element 1/15[e]: “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
`
`20
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`IPR2020-01602
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`with the electrical resistance heater and volatilized to
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