Case 1:20-cv-00393-LO-TCB Document 821-1 Filed 01/13/22 Page 1 of 45 PageID# 21464
`Case 1:20-cv-00393-LO-TCB Document 821-1 Filed 01/13/22 Page 1 of 45 PagelD# 21464
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`EXHIBIT 1
`EXHIBIT 1
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`EXHIBIT 1
`EXHIBIT 1
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`Trials@uspto.gov
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`Paper 29
`571-272-7822
` Entered: January 10, 2022
`
`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.
`____________
`
`PGR2020-00071
`Patent 10,492,542 B1
`____________
`
`
`Before JEFFREY W. ABRAHAM, ELIZABETH M. ROESEL, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`
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`
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`INTRODUCTION
`I.
`Philip Morris Products, S.A. (“Petitioner”) filed a Petition requesting
`post-grant review of claims 1–30 of U.S. Patent No. 10,492,542 B1 (“the
`’542 patent,” Ex. 1001). Paper 2 (“Pet.”). RAI Strategic Holdings, Inc.
`(“Patent Owner”) filed a Patent Owner Preliminary Response to the Petition.
`Paper 6.
`After receiving authorization from the Board, Petitioner filed a Reply
`to Patent Owner’s Preliminary Response (Paper 7), Patent Owner filed a
`Sur-reply (Paper 8), and each party filed a supplemental brief (Papers 9 and
`10).
`
`Pursuant to 35 U.S.C. § 324, the Board instituted trial on January 13,
`2021, after determining, based on the information presented in the papers
`and evidence before us at that time, it was more likely than not that at least
`one challenged claim was unpatentable over the cited art. Paper 11
`(“Institution Decision” or “Inst. Dec.”).
`After institution, Patent Owner filed a statutory disclaimer of claims
`13–17 of the ’542 patent. Ex. 2010. Patent Owner also filed a Response to
`the Petition (Paper 15, “PO Resp.”), Petitioner filed a Reply to Patent
`Owner’s Response (Paper 19, “Reply”), and Patent Owner filed a Sur-reply
`(Paper 21, “Sur-reply”).
`On October 27, 2021, the parties presented arguments at an oral
`hearing for this proceeding. Due to an error, the Board has no transcript of
`the oral hearing.1
`
`
`1 Neither 37 C.F.R. § 42.70(a) nor 35 U.S.C. § 326(a)(10) requires that a
`transcript of the oral arguments be entered in the record. Moreover, the
`record in this proceeding is complete based on the papers filed and
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`2
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`We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written
`Decision pursuant to 35 U.S.C. § 328(a). Based on the record before us, we
`conclude that Petitioner has shown, by a preponderance of the evidence, that
`claims 1–12 and 18–30 of the ’542 patent are unpatentable.
`BACKGROUND
`II.
`A. Related Matters
`The parties indicate that the ’542 patent is involved in RAI Strategic
`Holdings, Inc. v. Altria Client Services LLC, No. 1:20-cv-393 (E.D. Va. filed
`Apr. 9, 2020) (“District Court proceeding”), and was the subject of
`IPR2020-01188, which Petitioner filed concurrently with this proceeding.
`Pet. 110–11; Paper 4, 1–2. On January 13, 2021, the Board issued a decision
`denying institution of IPR2020-01188. See IPR2020-01188, Paper 12. The
`parties also identify currently pending IPR2020-01094, which involves
`related U.S. Patent No. 9,930,915. Pet. 111; Paper 4, 1.
`B. The ’542 Patent
`The ’542 patent, titled “Smoking Articles and Use Thereof For
`Yielding Inhalation Materials,” issued on December 3, 2019, from U.S.
`Patent Application No. 16/564,902 (“the ’902 Application”), filed
`September 9, 2019. Ex. 1001, codes (54), (45), (21), (22). The ’542 patent
`claims priority to U.S. Patent Application No. 13/205,841 (“the ’841
`Application), filed on August 9, 2011. Ex. 1001, code (60).
`The ’542 patent is directed to “articles wherein tobacco, a tobacco
`derived material, or other material is heated, preferably without significant
`combustion, to provide an inhalable substance, the substance, in the various
`
`
`arguments raised therein, as we did not permit the parties to raise new
`arguments during the hearing.
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`embodiments, being in a vapor or aerosol form.” Ex. 1001, 1:22–27. The
`’542 patent explains that many previous smoking articles have been
`proposed as improvements upon, or alternatives to, smoking products that
`combust tobacco. Ex. 1001, 1:31–33. These improvements and alternatives
`seek to “provide the sensations associated with cigarette, cigar, or pipe
`smoking, without delivering considerable quantities of incomplete
`combustion and pyrolysis products.” Ex. 1001, 1:38–41. According to the
`’542 patent, previous attempts to “produce the taste and sensation of
`smoking by electrically heating tobacco have suffered from inconsistent
`release of flavors or other inhalable materials” and have been limited to the
`use of an external heating device that “was inconvenient and detracted from
`the smoking experience.” Ex. 1001, 2:5–11.
`To overcome the drawbacks of prior art devices, the ’542 patent
`describes an article that generally includes a cartridge body defining an
`interior space that can hold an inhalable substance medium and an electrical
`heating element, and a power source that heats at least a segment of the
`inhalable substance medium sufficiently to form a vapor comprising the
`inhalable substance. Ex. 1001, 2:36–55. The inner wall of the cartridge
`body and the outer wall of the inhalable substance medium define a space,
`which, together with the “mouth end” of the cartridge body, are configured
`to allow passage of the vapor comprising the inhalable substance to a
`consumer. Ex. 1001, 2:36–55, 6:21–39.
`One embodiment of the article described in the ’542 patent is depicted
`in Figure 1, reproduced below.
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`Figure 1 of the ’542 patent is a “perspective view of an article according to
`an embodiment of the invention” comprising cartridge 300 engaging control
`housing 200, wherein the cartridge is inserted into receiving chamber 210 of
`control housing 200. Ex. 1001, 7:49–52, 11:64–12:3. Control housing 200
`also includes control segment 205. Ex. 1001, 11:67–12:2.
` Figure 4 of the ’542 patent, reproduced below, shows another
`embodiment.
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`Figure 4 shows a perspective view of the interior of cartridge 300 and
`receiving chamber 210 of control housing 200. Ex. 1001, 7:59–67, 12:27–
`32. Cartridge 300 comprises cartridge body 305, formed of a wall having an
`inner and outer surface and a substantially tubular shape. Ex. 1001, 12:32–
`34. Cartridge body 305 has opposing terminal ends: engaging end 310 that
`engages receiving chamber 210, and mouth end 315 configured to allow
`passage of an inhalable substance to a consumer. Ex. 1001, 12:34–38. The
`inner wall surface of cartridge body 305 defines an interior cartridge space,
`which contains inhalable substance medium 350. Ex. 1001, 13:11–13.
`Inhalable substance medium 350 is also substantially tubular shaped and is
`formed of wall 352 with an inner surface and an outer surface. Ex. 1001,
`16:30–32.
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`Control housing 200 includes electrical energy source 220 that
`provides power to electrical heating member 400, and projection 225 that
`extends to the end of receiving chamber 210. Ex. 1001, 23:22–27.
`In the embodiment depicted in Figure 4,
`projection [225] is dimensioned to slide inside the interior space
`defined by the inner surface of the wall 352 of the inhalable
`substance medium 350. The projection also is dimensioned to
`provide the electrical heating member in sufficient proximity to
`the inhalable substance medium (preferably in direct contact
`therewith) to heat the medium and cause release of the inhalable
`substance. Thus, the engaging end 310 of the cartridge
`generally or the cartridge body 305 specifically can be
`characterized as including an opening that is sufficiently sized
`and shaped to receive at least one component of the electrical
`energy source (i.e., the projection 225).
`Ex. 1001, 23:32–43.
`
`The spatial relationship between projection 225 and inhalable
`substance medium 350 is further shown in Figure 7 of the ’542 patent,
`reproduced below.
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`Figure 7 shows cartridge 300 “inserted into the receiving chamber 210
`the minimum distance necessary such that heating member 400 that is
`attached to the projection 225 . . . has been positioned inside the
`central cavity 351 of the tubular inhalable substance medium.”
`Ex. 1001, 28:14–21.
`
`Figure 4a, reproduced below, shows a cross-section of the
`cartridge depicted in Figures 4 and 7. Ex. 1001, 8:1–5.
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`Figure 4a shows inhalable substance medium 350 having inner cavity 351
`(not numbered in the figure) and vapor barrier 375 on the inner surface of its
`wall. Ex. 1001, 16:40–42. Vapor barrier 375 prevents the release of “vapor
`or aerosol into the interior volume of the inhalable substance medium and
`facilitate[s] release of the vapor or aerosol into an annular space 319 defined
`by the outer surface of the inhalable substance medium wall 352 and the
`inner surface of the wall of the cartridge body 305.” Ex. 1001, 16:40–48.
`The ’542 patent explains that
`When a consumer draws on the mouth end of the cartridge 300,
`air thus can be drawn into the receiving chamber, pass into the
`cartridge, be drawn through the segmented and flared second
`end 354 of the inhalable substance medium 350, enter the
`annular space 319 between the inhalable substance medium and
`the cartridge body 305, and pass through the open space in the
`cartridge frame member 360 for inhalation by the consumer.
`Ex. 1001, 28:66–29:7.
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`C. Challenged Claims
`Petitioner challenges claims 1–30 of the ’542 patent.2 Claims 1 and
`19 are the only independent claims. Independent claim 1 is illustrative and
`is reproduced below:
`1. A smoking article for receiving a disposable aerosol
`forming substance, the smoking article comprising:
`a housing having a proximal end for receiving the disposable
`aerosol forming substance and an opposite distal end;
`a power source arranged within the housing adjacent to the
`distal end;
`a receiving chamber formed at the proximal end of the
`housing and having an opening for receiving the
`disposable aerosol forming substance;
`a heating projection extending at least partially in the
`receiving chamber towards the proximal end of the
`housing and terminating at a free end which is configured
`to be inserted into the disposable aerosol forming
`substance for heating the disposable aerosol forming
`substance, the heating projection comprising:
`a heating member comprising an electrically resistive
`metal which is configured to heat the disposable aerosol
`forming substance;
`an electrical connector for providing a flow of electricity
`to the heating member for heating the heating member;
`and
`a control circuit positioned within the housing between the
`power source and the heating projection and connecting
`the heating member of the heating projection to the power
`source.
`Ex. 1001, 42:12–37.
`
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`2 As stated above, Patent Owner filed a statutory disclaimer of claims 13–17
`of the ’542 patent. Ex. 2010.
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`2. Reviewed Challenges to Patentability
`In view of Patent Owner’s disclaimer of claims 13–17, we review the
`following challenges remaining from the Petition:
`Claim(s)
`Challenged
`1–12, 18–30
`1–9, 11, 12,
`19–26, 28–30
`10, 27
`
`35 U.S.C. §
`§ 112
`§ 103
`
`§ 103
`
`References/Basis
`Written Description
`Robinson,3 Greim4
`Robinson, Greim,
`Adams5
`Robinson, Greim,
`Wang6
`
`§ 103
`
`18
`
`Petitioner relies on declarations from Dr. Seetharama C. Deevi.
`Ex. 1004 (“Deevi Declaration”); Ex. 1064 (“Deevi Reply Declaration”).
`Patent Owner deposed Dr. Deevi, and filed the transcript of the deposition as
`Exhibit 2012 in this proceeding.
`Patent Owner relies on a declaration from Charles E. Clemens.
`Ex. 2011. Petitioner deposed Mr. Clemens twice, and filed transcripts of the
`depositions as Exhibit 1065 and Exhibit 1066.
` ANALYSIS
`III.
`A. Principles of Law
`In a post-grant review, the petitioner has the burden from the onset to
`show with particularity why the patent it challenges is unpatentable, and this
`burden of persuasion never shifts to the patent owner. See Dynamic
`Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`3 US 7,726,320 B2, issued June 1, 2010 (Ex. 1006).
`4 WO 2011/050964 A1, published May 5, 2011 (Ex. 1007).
`5 US 2007/0102013 A1, published May 10, 2007 (Ex. 1008).
`6 WO 2008/139411 A2, published Nov. 20, 2008 (Ex. 1012).
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`2015); 35 U.S.C. § 322(a)(3) (requiring post-grant review petitions to
`identify “with particularity . . . the evidence that supports the grounds for the
`challenge to each claim”)).
`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 at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) when presented, objective
`evidence of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–
`18 (1966).
`To show obviousness, it is not enough to show merely that the prior
`art includes separate references disclosing each separate limitation in a
`challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360
`(Fed. Cir. 2011). “This is so because inventions in most, if not all, instances
`rely upon building blocks long since uncovered, and claimed discoveries
`almost of necessity will be combinations of what, in some sense, is already
`known.” KSR, 550 U.S. at 418–419.
`On the other hand, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`
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`7 The parties have not asserted or otherwise directed our attention to any
`objective evidence of nonobviousness.
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`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re
`Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, a
`petitioner cannot satisfy its burden of proving obviousness by employing
`“mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016). Instead, a petitioner must articulate a reason
`why a person of ordinary skill in the art would have combined or modified
`the prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir.
`2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358,
`1366 (Fed. Cir. 2017) (“In determining whether there would have been a
`motivation to combine prior art references to arrive at the claimed invention,
`it is insufficient to simply conclude the combination would have been
`obvious without identifying any reason why a person of skill in the art would
`have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
`1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not
`only could have made but would have been motivated to make the
`combinations or modifications of prior art to arrive at the claimed
`invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d
`1327, 1352 (Fed. Cir. 2014)).
`To satisfy the written description requirement under 35 U.S.C.
`§ 112(a), the specification must “reasonably convey[] to those skilled in the
`art that the inventor had possession” of the claimed invention as of the filing
`date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
`2010) (en banc). An adequate written description does not require any
`particular form of disclosure or that the specification recite the claimed
`invention in haec verba, but must do more than merely render the claimed
`invention obvious. Id. at 1352. In evaluating the adequacy of the disclosure,
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`a court may consider “the existing knowledge in the particular field, the
`extent and content of the prior art, the maturity of the science or technology,
`[and] the predictability of the aspect at issue.” Capon v. Eshhar, 418 F.3d
`1349, 1359 (Fed. Cir. 2005) (cited with approval in Ariad, 598 F.3d at
`1352); see also Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353,
`1366 (Fed. Cir. 2011) (holding that because the assessment for written
`description is made from the perspective of a person of ordinary skill in the
`art, in some instances, a patentee can rely on information that is “well-
`known in the art” to satisfy written description).
`We analyze the challenges presented in the Petition in accordance
`with the above-stated principles.
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art for the
`’542 patent
`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 mechanical engineering, electrical engineering,
`chemistry, or physics, or a related field, and one to two years of
`industry experience. Such a POSA would have been familiar
`with electrically powered
`smoking articles and/or
`the
`components and underlying technology used therein.
`Pet. 14 (citing Ex. 1004 ¶¶ 26–30). Patent Owner states that “[f]or
`purposes of the trial in this proceeding, [Patent Owner] accepts
`Petitioner’s proposed education and experience level of the [person of
`ordinary skill in the art].” PO Resp. 13.
`In view of the foregoing, for purposes of this Decision, we adopt
`Petitioner’s definition of a person of ordinary skill in the art. The prior art of
`record reflects this level of ordinary skill. Okajima v. Bourdeau, 261 F.3d
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`1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate
`level of ordinary skill in the art).
`C. Claim Construction
`Pursuant to 37 C.F.R. § 42.200(b), we apply the same claim
`construction standard as would be used by a district court to construe a claim
`in a civil action involving the validity or infringement of a patent, i.e., the
`claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d
`1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms are afforded
`“their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and
`customary meaning of a claim term 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.” Id. at 1313. Only terms that are in controversy need to be
`construed, and then only to the extent necessary to resolve the controversy.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner contends that “[t]he challenged claims are unpatentable
`under any reasonable construction,” and, “for purposes of this proceeding
`. . . adopts the plain meaning of the claims and submits that no claim term
`requires construction.” Pet. 14. Patent Owner contends it was improper for
`Petitioner to adopt the plain meaning of the claims without explaining what
`it considers the plain meaning of each claim term to be. PO Resp. 13.
`Patent Owner does not offer a construction for any claim term. PO Resp. 13.
`After considering the full record developed during trial, we determine
`that no claim limitations need an express construction for purposes of
`resolving the controversy.
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`D. Claims 1–9, 11, 12, 19–26, and 28–30 – Alleged Obviousness in view
`of Robinson and Greim
`Petitioner contends claims 1–9, 11, 12, 19–26, and 28–30 would have
`been unpatentable as obvious in view of Robinson and Greim. Pet. 51–101;
`Reply 18–30. Patent Owner challenges Petitioner’s obviousness arguments.
`PO Resp. 59–86; Sur-reply 15–27.
`1. Overview of References
`a. Robinson (Ex. 1006)
`Robinson discloses a tobacco-containing, electrically powered
`smoking article. Ex. 1006, code (57). Robinson depicts one embodiment of
`its smoking article in Figure 3, reproduced below:
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`Figure 3 of Robinson is a longitudinal cross-sectional view of an electrically
`powered, tobacco-containing smoking article. Ex. 1006, 8:4–6. Figure 3
`shows smoking article 10 having outer housing 20 with mouth end 15 and
`distal end 13. Ex. 1006, 26:34–36, 27:63–66. Air is drawn through
`opening 32 in cap 35 and passes through air passageway 45 that extends the
`length of power source 36 and control components 50. Ex. 1006, 27:64–
`
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`28:2. The air continues through an air passageway in heating element 70,
`through air flow sensing region 60, past or through second heating
`element 72, through cigarette 150, and into mouthpiece 120. Ex. 1006,
`28:2–5. Smoking article 10 contains three heating elements (70, 72, and
`300) that act upon the tobacco to volatilize components of the tobacco such
`that the components are entrained in the drawn air. Ex. 1006, 28:6–9. As
`shown in Figure 3, second resistance heating element 72 can have an
`elongated portion that extends into tobacco segment 89 and is “in close
`contact with a significant amount of substrate and aerosol-forming material
`within the tobacco.” Ex. 1006, 27:35–39.
`b. Greim (Ex. 1007)
`Greim discloses “an electrically heated smoking system including a
`heater for heating an aerosol-forming substrate.” Ex. 1007, 1. Greim
`depicts one embodiment of a heater in Figure 4, reproduced below.
`
`
`Figure 4 of Greim shows a “heater for use in an electrically heated smoking
`system.” Ex. 1007, 9.8 Heater 400 comprises “flat, rigid electrically
`insulating substrate 401 having thereon electrically conductive tracks 403.”
`Ex. 1007, 13. Tracks 403 can connect to a power supply through
`
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`8 We cite to the original page numbers of the exhibit, not to the page
`numbers that Petitioner has added.
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`connections 405. Ex. 1007, 13. According to Greim, heater 400 may be
`inserted directly into plug of aerosol-forming substrate 407. Ex. 1007, 13.
`2. Analysis
`Petitioner asserts that Robinson and Greim teach or suggest all of the
`limitations of claims 1–9, 11–17, 19–26, and 28–30, and that a person of
`ordinary skill in the art would have had reason to combine the references and
`would have had a reasonable expectation of success in achieving the
`invention recited in the claims. Pet. 55–101; Reply 18–30.
`In support of its arguments, Petitioner relies on an annotated version
`of Figure 3 of Robinson, reproduced below.
`
`
`
`
`Petitioner’s annotated version of Figure 3 shows a longitudinal cross-
`sectional view of one embodiment of Robinson’s electrically powered,
`tobacco-containing smoking article. See Ex. 1006, 8:4–6. Petitioner’s
`annotations add colored highlights to help identify certain parts of the
`smoking article, as discussed below.
`
`
`
`18
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`a. Whether Robinson and Greim teach or suggest all limitations of
`the challenged claims
`Petitioner directs us to the portions of Robinson and Greim that teach
`or suggest all the limitations in the challenged claims. Pet. 62–101. We
`base our findings on the parties’ contentions, as detailed below.
`Claim 1 recites “[a] smoking article for receiving a disposable aerosol
`forming substance, the smoking article comprising: a housing having a
`proximal end for receiving the disposable aerosol forming substance and an
`opposite distal end.” Ex. 1001, 42:12–16. Petitioner contends that
`Robinson’s smoking article 10 contains housing 20 that receives tobacco
`segment 89 (highlighted brown in annotated Figure 3) of cigarette 150,
`which is a disposable aerosol forming substance. Pet. 62 (citing Ex. 1006,
`26:40–44). Petitioner further annotates Figure 3 to show that mouth-end 15
`of smoking article 10 corresponds to the proximal end of housing 20, and
`distal end 13 corresponds to the opposite distal end of housing 20, as claim 1
`requires. Pet. 63.
`Claim 1 next requires “a power source arranged within the housing
`adjacent to the distal end,” and “a receiving chamber formed at the proximal
`end of the housing and having an opening for receiving the disposable
`aerosol forming substance.” Ex. 1001, 42:17–21. Petitioner contends that
`power source 36 (highlighted green in annotated Figure 3) is within and
`adjacent to the distal end of housing 20. Pet. 63–64 (citing Ex. 1006, 19:11–
`48). Petitioner further contends that Robinson has a receiving chamber
`inside of the proximal end of its housing that receives cigarette 150 through
`the opening. Pet. 64–65 (citing Ex. 1006, 28:20–25).
`Claim 1 further recites “a heating projection extending at least
`partially in the receiving chamber towards the proximal end of the housing
`
`
`
`19
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`and terminating at a free end which is configured to be inserted into the
`disposable aerosol forming substance for heating the disposable aerosol
`forming substance.” Ex. 1001, 42:22–27. Petitioner contends that Greim
`discloses a heating element that is configured to be inserted into a disposable
`aerosol forming substance. Pet. 54 (citing Ex. 1007, 7, 13).
`Claim 1 requires the heating member comprises “an electrically
`resistive metal which is configured to heat the disposable aerosol forming
`substance” and “an electrical connector for providing a flow of electricity to
`the heating member for heating the heating member” (hereinafter referred to
`as the “electrical connector” limitation). Ex. 1001, 42:28–33. Petitioner
`contends that Greim’s heating projection includes electrically conductive
`tracks 403 and “connection pads” or “wiring” between tracks 403 and
`connections 405 to provide a flow of electricity to heat the heating member,
`as claim 1 requires. Pet. 54–55, 66–68 (citing Ex. 1007, 1–5, 12, 13, 16).
`Petitioner contends that it would have been obvious to replace Robinson’s
`entire heating element with Greim’s entire heater, including the “appropriate
`mount/base,” and that, according to Mr. Clemens, Patent Owner’s declarant,
`“making electrical connections is a pretty routine thing for [persons of
`ordinary skill in the art].” Reply 20 (citing Pet. 57–62, 65–69; quoting Ex.
`1066, 73:21–74:1).
`Petitioner creates a new figure depicting the result of its proposed
`combination of Robinson and Greim, which is reproduced below.
`
`
`
`20
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`Pet. 69. This figure from the Petition shows the longitudinal cross-sectional
`view of Robinson’s electrically powered, tobacco-containing smoking article
`depicted in Figure 3, and includes Greim’s heating element (shown in red) in
`place of Robinson’s heating element 72. Pet. 69.
`Petitioner also contends that the combined disclosures of Robinson
`and Greim teach or suggest “a control circuit positioned within the housing
`between the power source and the heating projection and connecting the
`heating member of the heating projection to the power source,” as claim 1
`requires. Pet. 68–70 (citing Ex. 1006, 26:54–63, 27:67–28:5, 28:36–41);
`Ex. 1001, 42:34–37. Referring to Petitioner’s figure above, depicting the
`proposed combination of Robinson and Greim, Petitioner directs us to
`control circuit 50 in Robinson (highlighted orange in annotated Figure 3),
`which is positioned within housing 20 between power source 36 and
`Greim’s heater (highlighted in red). Pet. 68–69. Petitioner contends that
`after replacing Robinson’s heater with the heater from Greim, control circuit
`50 would be positioned between the power source and the heating
`projection. Pet. 68–69. Petitioner further contends that Greim and Robinson
`both disclose using electronic circuitry to power heating elements. Pet. 69
`(citing Ex. 1006, 4:67–5:11, 27:10–30, 29:31–31:23; Ex. 1007, 2–3).
`
`
`
`21
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`
`Petitioner presents similar evidence and arguments regarding
`independent claim 19, and dependent claims 2–9, 11–17, 20–26, and 28–30.
`Pet. 70–101.
`With the exception of the “electrical connector” limitation in
`independent claims 1 and 19, Patent Owner does not dispute Petitioner’s
`evidence and arguments that Robinson and Greim teach or suggest the
`limitations of claims 1–9, 11, 12, 19–26, and 28–30. As to the “electrical
`connector” limitation in claims 1 and 19, Patent Owner argues that Petitioner
`maps “(i) connections 405, or (ii) connection pads and/or wiring that are
`between the heating tracks 403 and the connections 405” in Greim to the
`electrical connector recited in claim 1. PO Resp. 60. According to Patent
`Owner, however, “the only portion of Greim’s heater that remains in
`Petitioner’s proposed combination is the ‘flat, rigid electrically insulating
`substrate 401 having … electrically conductive tracks 403.’” PO Resp. 61–
`62. Patent Owner contends the Petition is deficient because the alleged
`electrical connecter is not visible in Petitioner’s figures in the Petition, and
`further argues that Petitioner fails to provide technical details about how a
`person of ordinary skill in the art would integrate Greim’s electrical
`connector into Robinson. PO Resp. 62–63; Sur-reply 22–23.
`We disagree. Petiti
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