Filed on behalf of: Philip Morris Products, S.A.
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`Entered: May 27, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
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`v.
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`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
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`_______________________
`Case IPR2020-01602
`Patent 9,901,123
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`PETITIONER’S NOTICE OF APPEAL
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`Entered: May 27, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
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`v.
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`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
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`_______________________
`Case IPR2020-01602
`Patent 9,901,123
`_______________________
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`PETITIONER’S NOTICE OF APPEAL
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`IPR2020-01602 (USP 9,901,123)
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`Petitioner’s Notice of Appeal
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`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Petitioner Philip
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`Morris Products, S.A. (“Petitioner”) appeals to the United States Court of Appeals
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`for the Federal Circuit from the Final Written Decision entered by the Patent Trial
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`and Appeal Board (the “Board”) on March 30, 2022 (Paper 32) (the “Final Written
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`Decision,” a copy of which is attached hereto as Exhibit A).
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Petitioner further indicates that
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`the issues on appeal may include, without limitation:
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`• Whether the Board erred in determining that Petitioner has not shown
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`by a preponderance of the evidence that any of the challenged claims
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`of U.S. Patent No. 9,901,123 are unpatentable as obvious, along with
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`all reasons, findings, opinions, and orders leading thereto or underlying
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`that decision.
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), this Notice is being filed
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`with the Director of the United States Patent and Trademark Office, and a copy of
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`this Notice is being concurrently filed with PTAB. In addition, a copy of the Notice
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`of Appeal, along with the required docketing fee, is being filed with the Clerk of
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`Court for the United States Court of Appeals for the Federal Circuit.
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`IPR2020-01602 (USP 9,901,123)
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`Petitioner’s Notice of Appeal
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`Respectfully submitted,
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`Dated: May 27, 2022
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`By: / Jonathan M. Strang /
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`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
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`Counsel for Petitioner
`Philip Morris Products, S.A.
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`IPR2020-01602 (USP 9,901,123)
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`Petitioner’s Notice of Appeal
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`CERTIFICATE OF SERVICE
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`I hereby certify that, pursuant to 37 C.F.R. § 90.2(a)(1), on this 27th day of
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`May, 2022, I electronically filed the foregoing PETITIONER’S NOTICE OF
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`APPEAL with the Patent Trial and Appeal Board via E2E, in accordance with 37
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`C.F.R. § 42.6(b)(1).
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`I also hereby certify that a true and correct paper copy of the foregoing
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`PETITIONER’S NOTICE OF APPEAL is being filed by hand with the Director
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`of the United States Patent and Trademark Office at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`I also hereby certify that, pursuant to Federal Circuit Rule 52(a)(2), on the
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`27th day of May, 2022, a true and correct copy of the foregoing PETITIONER’S
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`NOTICE OF APPEAL and the filing fee, were filed with the Clerk's Office of the
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`U.S. Court of Appeals for the Federal Circuit via CM/ECF.
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 27th day of May, 2022,
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`a true and correct copy of the foregoing PETITIONER’S NOTICE OF APPEAL
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`was served by electronic mail on Patent Owner’s lead and backup counsel at the
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`following email addresses:
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`IPR2020-01602 (USP 9,901,123)
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`Petitioner’s Notice of Appeal
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`David M. Maiorana (Reg. No. 41,449)
`Kenneth S. Luchesi (Reg. No. 58,673)
`David B. Cochran (Reg. No. 39,142)
`Jones Day
`901 Lakeside Avenue
`Cleveland, OH 44114
`Tel: 216.586.3939
`Fax: 216.579.0212
`Email: dmaiorana@jonesday.com
`Email: kluchesi@jonesday.com
`Email: dcochran@jonesday.com
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`Anthony M. Insogna (Reg. No. 35,203)
`Jones Day
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121-3134
`Tel: 858.314.1200
`Fax: 844.345.3178
`Email: aminsogna@jonesday.com
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`Geoffrey K. Gavin (Reg. No. 47,591)
`Jones Day
`1221 Peachtree Street, N.E., Suite 400
`Atlanta, GA 30361-3053
`Tel: 404.521.3939
`Fax: 404.581.8330
`Email: ggavin@jonesday.com
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`Joshua R. Nightingale (Reg. No. 67,865)
`Jones Day
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219-2514
`Tel: 412.391.3939
`Fax: 412.394.7959
`Email: jrnightingale@jonesday.com
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`IPR2020-01602 (USP 9,901,123)
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`Petitioner’s Notice of Appeal
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`By: / Jonathan M. Strang /
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`Jonathan M. Strang (Reg. No. 61,724)
`jonathan.strang@lw.com
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, D.C. 20004-1304
`Telephone: 202.637.2200
`Fax: 202.637.2201
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`Counsel for Petitioner
`Philip Morris Products, S.A.
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`EXHIBIT A
`EXHIBIT A
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`Trials@uspto.gov
`571-272-7822
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`Paper 32
`Date: March 30, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PHILIP MORRIS PRODUCTS, S.A.,
`Petitioner,
`v.
`RAI STRATEGIC HOLDINGS, INC.,
`Patent Owner.
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`IPR2020-01602
`Patent 9,901,123 B2
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`Before MICHELLE N. ANKENBRAND, JO-ANNE M. KOKOSKI,
`and ELIZABETH M. ROESEL, Administrative Patent Judges.
`KOKOSKI, Administrative Patent Judge.
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`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
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`IPR2020-01602
`Patent 9,901,123 B2
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`I.
`INTRODUCTION
`We have jurisdiction to conduct this inter partes review under
`35 U.S.C. § 6, and issue this Final Written Decision pursuant to 35 U.S.C.
`§ 318(a). For the reasons that follow, we determine that Philip Morris
`Products, S.A. (“Petitioner”) has not shown by a preponderance of the
`evidence that 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) are
`unpatentable.
`A. Procedural Background
`Petitioner filed a Petition to institute an inter partes review of
`claims 1–7, 9, 11–19, 21, and 23–26 of the ’123 patent. Paper 2 (“Pet.”).
`RAI Strategic Holdings, Inc. (“Patent Owner”) filed a Preliminary Response.
`Paper 6. With Board authorization, Petitioner filed a Preliminary Reply
`(Paper 7), and Patent Owner filed a Preliminary Sur-reply (Paper 8).
`Pursuant to 35 U.S.C. § 314(a), we instituted an inter partes review of
`claims 1–7, 9, 11–19, 21, and 23–26 on the grounds advanced in the
`Petition. Paper 9 (“Institution Decision” or “Dec.”), 7, 34.
`After institution of trial, Patent Owner filed a Patent Owner Response
`(“PO Resp.,” Paper 16), Petitioner filed a Reply (“Pet. Reply,” Paper 23),
`and Patent Owner filed a Sur-reply (“Sur-reply,” Paper 25). We held an oral
`hearing on January 6, 2022, and a transcript is included in the record.
`Paper 31 (“Tr.”).
`B. 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
`Holdings, Inc., R.J. Reynolds Vapor Company, RAI Innovations Company,
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`and R.J. Reynolds Tobacco Company as the real parties-in-interest.
`Paper 4, 1.
`C. Related Matters
`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.
`D. 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.
`Figure 1 of the ’123 patent is reproduced below.
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`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).
`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.” Ex. 1001, 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
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`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.
`E. 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.
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`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;
`[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;
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`[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)).
`F. Prior Art and Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1, 2, 5, 7, 9, 11, 12,
`14, 15, 18, 21, 23–26
`1, 2, 5, 7, 9, 11, 12,
`Hon, Brooks,2 Whittemore3
`§ 103
`14, 15, 18, 21, 23–26
`Hon, Whittemore, Brooks, Susa4
`§ 103
`3, 4, 13, 16, 17
`Hon, Whittemore, Brooks, Ray5
`§ 103
`6, 19
`Pet. 3. Petitioner relies on the Declaration of Stewart Fox (“the Fox
`Declaration,” Ex. 1003) in support of its contentions. Patent Owner relies on
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`References/Basis
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`35 U.S.C.
`§ 103
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`Hon1
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`1 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).
`2 U.S. Patent No. 4,947,874, issued Aug. 14, 1990 (Ex. 1006, “Brooks”).
`3 U.S. Patent No. 2,057,353, issued Oct. 13, 1936 (Ex. 1007, “Whittemore”).
`4 European Pat. Pub. No. EP 0845220 B1, published Sept. 3, 2003
`(Ex. 1008, “Susa”).
`5 U.S. Patent No. 4,284,089, issued Aug. 18, 1981 (Ex. 1009, “Ray”).
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`the Declaration of Charles E. Clemens (“the Clemens Declaration,”
`Ex. 2010) to support its arguments.
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Factors pertinent to a determination of the level of ordinary skill in the
`art include “(1) the educational level of the inventor; (2) type of problems
`encountered in the art; (3) prior art solutions to those problems; (4) rapidity
`with which innovations are made; (5) sophistication of the technology; and
`(6) education level of workers active in the field.” Envtl. Designs, Ltd. v.
`Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
`Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
`Cir. 1983)). Not all such factors may be present in every case, and one or
`more of these or other factors may predominate in a particular case. Id.
`Moreover, “[t]hese factors are not exhaustive but are merely a guide to
`determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v.
`Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining the level
`of ordinary skill, we may also look to the prior art, which may reflect an
`appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001). Additionally, “[a] person of ordinary skill is also a person of
`ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 421 (2007).
`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; Ex. 1003 ¶¶ 13–
`18. Petitioner further contends that “[s]uch a POSA would have been
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`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, “[f]or the purposes of the trial in this
`proceeding,” it “accepts Petitioner’s proposed education and experience
`level of the POSA.” PO Resp. 12 (citing Pet. 9–10; Ex. 2010 ¶¶ 48–50).
`Accordingly, we adopt Petitioner’s assessment of the level of ordinary skill
`in the art, which is undisputed on this record and consistent with the level of
`skill in the art at the time of the invention as reflected in the prior art in this
`proceeding.
`B. Claim Construction
`We apply the claim construction standard articulated in Phillips v.
`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R.
`§ 42.100(b) (2019). Under Phillips, the “words of a claim ‘are generally
`given their ordinary and customary meaning,’” which is “the meaning that
`the term would have to a person of ordinary skill in the art in question at the
`time of the invention, i.e., as of the effective filing date of the patent
`application.” Phillips, 415 F.3d at 1312–13 (quoting Vitronics Corp. v.
`Conceptronic, Inc., 90 F3.d 1576, 1582 (Fed. Cir. 1996)). “[W]e need only
`construe terms ‘that are in controversy, and only to the extent necessary to
`resolve the controversy.” 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)).
`1. “wicked into contact”
`Claims 1 and 15 recite, in relevant part, 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.”
`Ex. 1001, 33:2–5, 33:63–66. Patent Owner argues that “the plain and
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`ordinary meaning of ‘wicked into contact,’ as used in claims 1 and 15 of
`the ’123 patent, is that the mixture comprising the tobacco extract and the
`aerosol-forming material (i.e., the liquid) must be brought into contact with
`the electrical resistance heater by wicking.” PO Resp. 10. Patent Owner
`argues that
`a POSA reading the specification of the ’123 patent would
`understand that, for the embodiment where the heater is located
`in “proximity” to the wicking material, there are multiple
`options for the manner in which the liquid may reach (or not
`reach) the heater: (1) it can be “wicked . . . so as to contact” the
`heater; (2) it can be “otherwise transferred so as to contact” the
`heater; (3) it can be “wicked . . . so as to contact . . . an area in
`close proximity to” the heater; or (4) it can be “otherwise
`transferred so as to contact . . . an area in close proximity to”
`the heater.
`Id. at 11 (citing Ex. 2010 ¶¶ 43–47) (alteration in original). According to
`Patent Owner, “claims 1 and 15 require the first option—‘wicked so as to
`contact’ the heater,” and the claim language “does not encompass other
`manners of transfer, as those are explicitly described in the specification as
`different options.” Id. (citing Ex. 2010 ¶ 46); see also Sur-reply 3 (“[T]he
`claim does not recite that the aerosol-forming material is ‘wicked or
`otherwise transferred into contact’ with the heater.”).
`Patent Owner also argues that “[i]n asserting that ‘[t]his claim element
`does not require the wick itself to contact the heater, but merely be in
`proximity to the heater’ (Petition at 46), Petitioner improperly reads the
`‘mixture . . . can be wicked into contact’ limitation entirely out of claims 1
`and 15.” PO Resp. 30–31 (second alteration in original). Patent Owner
`argues that “the dependent claims are directed to the location of the heater
`and the wick vis-á-vis one another, whereas claims 1 and 15 are directed to
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`the manner in which the liquid reaches the heater,” and “[t]hese are different
`claim requirements.” Id. at 31.
`Petitioner responds that “the specification describes embodiments in
`which the absorbent wicking material does not contact the heater, but the
`aerosol-forming material is nonetheless wicked into contact with the heater,”
`and, “[t]hus, ‘wicked into contact’ must allow for additional, assistive,
`mechanisms of liquid transport to allow the wicked liquid to contact the
`heater from some distance away.” Pet. Reply 4 (citing Ex. 1001, 21:38–45).
`Therefore, Petitioner contends, “[t]he plain and ordinary meaning of the
`claim term allows for any number of additional methods of liquid transport,
`so long as the liquid is wicked and, as a result, contacts the heater.” Id.
`Having reviewed the claim language, the Specification, and the
`evidence from the complete record now before us, we determine that
`“wicked into contact with the electrical resistance heater” means “wicked
`into contact (1) with the heater, or (2) with an area in close proximity to, and
`exposed by the heat produced by, the heater.” We do not adopt Patent
`Owner’s position that “wicked into contact” requires that the liquid mixture
`must be brought into contact with the electrical resistance heater solely by
`wicking.
`The Specification teaches that heating element 72 “can be formed
`from relatively high surface area absorbent or wicking-type materials” that
`“are useful for supporting or holding sufficient aerosol-forming material for
`aerosol generation, as well as for wicking additional aerosol-forming
`material for aerosol generation during subsequent puffs.” Ex. 1001, 21:31–
`38. The Specification also teaches that heating element 72
`can be employed in close proximity to an absorbent wicking
`material such that aerosol-forming material can be wicked or
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`otherwise transferred so as to contact the second resistance
`heating element or contact an area in close proximity to the
`second resistance heating element (e.g., a region that is exposed
`to a [sic] the heat produced by the second resistance element).
`Id. at 21:39–45. The Specification goes on to teach that the “smoking article
`is assembled such that a certain amount of aerosol-forming material and
`tobacco components can be wicked or otherwise transferred to heating
`element 72 or the region in close proximity to the heating element.” Id.
`at 22:20–24.
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`The Specification further teaches that the “resistance heating elements
`provide surface region temperatures, and hence the ability to heat aerosol-
`forming materials and tobacco materials in surrounding regions in the
`vicinity of those heating elements.” Ex. 1001, 24:30–33. In that regard, the
`Specification describes that aerosol “is formed by the action of the drawn air
`passing heated tobacco components and aerosol-forming material in the
`region occupied by the second heating element 72” and is then “drawn
`through the mouth-end piece 120, and into the mouth of the smoker.” Id.
`at 24:39–43.
`Because volatilization occurs by exposure to and/or contact with the
`heating element, these disclosures in the Specification indicate that the
`mixture comprising the tobacco extract and the aerosol-forming material
`must be exposed to the heat produced by the heater. According to the
`Specification, this is accomplished when the absorbent fibrous or wicking
`material either contacts the heater, or contacts an area in close proximity to
`the heater. The Specification, therefore, conveys the necessity of the liquid
`mixture being wicked to an area that either contacts the heater, or that is
`close enough to the heater to be exposed to its heat.
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`Additional recitations found in the dependent claims further confirm
`that “wicked into contact with the electrical resistance heater” as used in
`claims 1 and 15 encompasses both wicking into contact with the heater, and
`wicking into contact with an area in close proximity to the heater. See
`Philips, 415 F.3d at 1314 (“Other claims of the patent in question, both
`asserted and unasserted, can also be valuable sources of enlightenment as to
`the meaning of a claim term.”). Dependent claims 14, 24, and 25 are set
`forth below.
`
`14. The smoking article of claim 1, wherein the
`absorbent fibrous material is in contact with the electrical
`resistance heater.
`24. The smoking article of claim 15, wherein the
`absorbent wicking material is in contact with the electrical
`resistance heater.
`25. The smoking article of claim 15, wherein the
`absorbent wicking material is positioned in proximity to the at
`least one electrical resistance heater.
`Ex. 1001, 33:38–40, 34:23–28. These dependent claims, which are directed
`to the location of the heater in relation to the wicking material, also include
`the manner in which the liquid reaches the heater recited in the independent
`claims. Claims 14 and 24, therefore, require that the liquid be wicked into
`contact with the heater and the wicking material be in contact with the
`heater. Claim 25 requires that the liquid be wicked into contact with the
`heater and the wicking material be positioned in proximity to the heater.
`Because claims 14, 24, and 25 are narrower than the independent claims
`from which they depend, claims 1 and 15 necessarily encompass smoking
`articles in which the absorbent fibrous or wicking material is either in
`contact with the heater or is positioned in proximity to the heater. Trustees
`of Columbia Univ. in City of New York v. Symantec Corp., 811 F.3d 1359,
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`1370 (Fed. Cir. 2016) (“[I]n a situation where dependent claims have no
`meaningful difference other than an additional limitation, the independent
`claim is not restricted by the added limitation in the dependent claim. In
`such situations, construing the independent claim to exclude material
`covered by the dependent claim would be inconsistent.” (emphases added)
`(citations omitted)). Therefore, the phrase “wicked into contact with the
`resistance heater” must be construed broadly enough to encompass
`embodiments in which the wicking material “is in contact with” the heater
`and embodiments in which the wicking material is “positioned in proximity
`to” the heater.
`Notably, the Specification does not provide any further detail as to
`how the liquid comes to contact the heater when the wicking material is in
`proximity to, instead of in contact with, the heater. Patent Owner argues that
`“[a] POSA would understand that a liquid can be wicked into contact with
`the heater even when the wicking material is not touching the heater”
`because “cohesive forces between molecules of a liquid can give rise to
`strong surface tension of the liquid and liquids can ‘bridge’ small gaps
`between surfaces.” PO Resp. 31 (citing Ex. 2010 ¶¶ 75–79). In that regard,
`Mr. Clemens testifies:
`When the wicking material and the heater are in proximity to
`one another as described in the ’123 patent, a POSA would
`understand that cohesive forces and surface tension allow the
`liquid (on the wicking material) to be wicked into contact with
`the heater even if the heater and wicking material are separated
`by a small distance. The liquid mixture that is present in the
`wicking material will extend a small distance from the wicking
`material to the heater, bridging the gap from the wicking
`material and into contact with the heater. As the liquid is
`vaporized and drawn away from the heater during draw by the
`user, the absence of liquid in the wicking material will cause
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`IPR2020-01602
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`more wicking action within the wicking material, thus wicking
`more liquid into its place and into contact with the heater.
`Ex. 2010 ¶ 79.
`The smoking article described in claims 1 and 15, however, includes
`elements in addition to the heater and the wicking material, and the
`Specification describes the arrangement of those elements and the use of the
`smoking article. Ex. 1001, 5:56–8:10, 19:37–30:36, Figs. 1–3. The
`Specification also describes the role the airflow generated by the user’s draw
`plays in facilitating the volatilization of the liquid mixture. Id. at 21:15–62,
`24:19–43, 27:16–33, 29:1–26. In light of these disclosures in the
`Specification, neither Patent Owner nor Mr. Clemens adequately addresses
`how a POSA would understand the arrangement of the other elements in the
`smoking article, and their function during use, to affect the cohesive forces
`and surface tension between the wicking material and the heater, and/or
`provide other mechanisms to transport the liquid from the wicking material
`to the heater. Moreover, as Petitioner points out, “‘surface tension’ and
`‘cohesive forces’ are additional methods of liquid transport, beyond
`wicking.” Pet. Reply 4.
`Accordingly, we are not persuaded the term “wicked into contact”
`requires that the liquid mixture must be brought into contact with the
`electrical resistance heater solely by wicking, as Patent Owner contends.
`Nothing in the language of claims 1 and 15 would indicate to a POSA that
`“wicked into contact with the electrical resistance heater” cannot include
`forces other than wicking, particularly when the absorbent fibrous or
`wicking material is located in proximity to the heater. This is consistent
`with the Specification, which, as described above, teaches that the liquid is
`either wicked into contact with the heater or wicked into contact with an area
`
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`IPR2020-01602
`Patent 9,901,123 B2
`in close proximity to, and exposed to the heat produced by, the heater, for
`volatilization, depending on the location of the absorbent fibrous or wicking
`material in relation to the heater.
`In view of the foregoing, we construe the phrase “wicked into contact
`with the electrical resistance heater” to mean “wicked into contact (1) with
`the heater, or (2) with an area in close proximity to, and exposed to the heat
`produced by, the heater.”
`C. 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.
`
`
`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. Ex. 1005, 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. Ex. 1005, 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. at 7. 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 s
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