Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: September 16, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMR PRODUCTSLLC,
`Petitioner,
`
`V.
`
`FONTEM HOLDINGS1 B.V.,
`Patent Owner.
`
`Case IPR2015-00859
`Patent 8,365,742 B2
`
`Before JACQUELINE WRIGHT BONILLA, BRIAN J. MCNAMARA,and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper 9
`Entered: September 16, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMR PRODUCTSLLC,
`Petitioner,
`
`V.
`
`FONTEM HOLDINGS1 B.V.,
`Patent Owner.
`
`Case IPR2015-00859
`Patent 8,365,742 B2
`
`Before JACQUELINE WRIGHT BONILLA, BRIAN J. MCNAMARA,and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`I. INTRODUCTION
`
`VMR Products LLC (“Petitioner”) filed a Petition (“Pet.”) to institute
`an interpartes review of claims 1-3 ofU.S. Patent No. 8,365,742 B2 (“the
`°742 patent,” Ex. 1001). Paper 2. Fontem Holdings 1 B.V.(“Patent
`
`Owner’) filed a Preliminary Response (“Prelim. Resp.”). Paper 5. We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`Upon consideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has not established a reasonable likelihood of
`
`prevailing with respect to claims 1—3 of the ’742 patent. Accordingly, we
`
`denythe Petition, and do notinstitute an inter partes review.
`
`A.
`
`Related Proceedings
`
`Petitioner indicates that the ’742 patent is asserted in numerouscases
`
`pendingin the Central District of California, including Fontem Ventures
`
`B.V. v. VMR Products LLC, Case No. 2:14-cv-01655 (“the District Court
`
`Action’). Pet. 1-2. Patent Ownerstates that the ’742 patent is also the
`subject of IPR2015-01587, filed by JT International SA on July 14, 2015.
`Paper7, 1.
`
`B.
`
`The ’742 Patent (Ex. 1001)
`
`The ’742 patent,titled “Electronic Cigarette,” is directed to an aerosol
`
`electronic cigarette having a battery assembly, an atomizer assembly,a
`cigarette bottle assembly, and a hollow,integrally-formed shell. Ex. 1001,
`
`Abstract. According to the 742 patent, prior art devices had various
`
`disadvantages, including low atomizingefficiency, being structurally
`
`complicated, and not providing ideal aerosol effects. Jd. at 1:21—24.
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`Figure | of the ’742 patent is reproduced below:
`
`
`
`POURPATILLASAAA,bhhichrherbeadokKeblehed
`
`
`
`
`(PLLAPOALLLLRARLhRhAAMheMlEEeen
`ir
`r
`}¢ L/ RR2055h]
`
`aeeerrere !PNIRIN
`
`
`PRR RLS
`4
`A
`RRROCSCESH
`
`i
`j
`ESSERROLY]
`
`LIAAAAAAMALMAAEAAAMeLAbABAALbhhhAMhakeLedekiditdidetddhchedeherbitnihiatdabuddheder
`RZ
`
`Pa
`2 A: C
`OOOO)
`
`i
`
`
`
`52
`
`54
`
`33
`
`Figure 1
`
`
`
` 2
`
`1
`
`| Figure 1 is a side section view ofan electronic cigarette. Jd. at 1:45.
`Hollow, integrally-formed shell “‘a” includes a battery assembly, atomizer
`
`assembly,andcigarette bottle assembly. /d. at 2:30-33. The battery
`
`assembly connects to the atomizer assembly in shell “a,” and the detachable
`
`cigarette body assembly (whichfits with the atomizer assembly)is located in
`
`one end ofshell “a.” Jd. at 2:33-37. Shell “a” also includes through-air-
`
`inlets al. Jd. at 2:37-38. The battery assembly includes operating indicator
`
`1, battery 3, electronic circuit board 4, and airflow sensor 5. Jd. at 2:39-45.
`
`The atomizer assembly is atomizer 8, which includes a porous component
`
`and a heating rod. Jd. at 3:6-8. The cigarette bottle assembly includes
`
`hollow cigarette shell holder “b,” and perforated componentfor liquid
`
`storage 9. Id. at 3:49-51. Air channelb1 is located in the center on the
`surface of one end of cigarette shell holder “b,” and extends inward. Id. at
`
`3:59-62.
`
`Figures 5, 6, and 7 of the ’742 patent are reproduced below:
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`893
`
`82
`
`/ 822
`
`821:
`
`
`Figure 5
`‘gure
`
`Figure 6
`
`Figure 7
`
`Figure 5 is a side-section view of the porous componentof atomizer8,
`Figure 6 is a diagram ofthe structure of a heating rod in atomizer 8, and
`Figure 7 is a side-section view of atomizer 8. Jd. at 1:53-59. Atomizer 8
`
`includes porous component81 and heating rod 82. Jd. at 3:6-8. Heating rod
`
`82 includes heating wire 822 wound onthe wall of cylinder 821. Jd. at
`
`3:28-30. Porous component81 contains run-through atomizing chamber
`811. Id. at 3:8-9. Heating rod 82 enters run-through atomizing chamber
`811, and the space between heating rod 82 andtheinterior wall of run-
`
`through atomizing chamber 811 creates negative pressure cavity 83. Jd. at
`3:11-15. One end of porous component 81 fits with the cigarette bottle
`
`assembly, with protuberance 812 at the other end connecting to atomizing
`
`chamber 811 with run-through hole 813. /d. at 3:16—-19.
`
`C.
`
`Illustrative Claim
`
`Petitioner challenges claims 1-3 of the ’742 patent. Each of claims 1—
`
`3 is independent. Claim 1 is illustrative, and recites as follows:
`1.
`Anaerosol electronic cigarette, comprising:
`4
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`a battery assembly, an atomizer assembly and a cigarette bottle
`assembly, and a shell
`that
`is hollow and integrally
`formed;
`
`the battery assembly electrically connected with the atomizer
`assembly, and both are located in the shell;
`the cigarette bottle assembly is detachably located in one end of
`the shell, and fits with the atomizer assembly insideofit;
`
`the shell has through-air-inlets;
`
`the atomizer assembly is an atomizer, which includes a porous
`component anda heating body;
`the heating bodyis a heating wire;
`
`the atomizer includes a frame;
`
`the porous componentis supported by the frame;
`the heating wire is woundon the porous component;
`the frame has a run-through hole;
`
`a heating wire wound ona part of the porous componentthatis
`substantially aligned with the run-through hole; and with
`the porous component also positioned substantially
`within the cigarette bottle assembly.
`
`D.
`
`The Prior Art
`
`—
`
`Petitioner relies on the following prior art references:
`
`oe
`
`Dat
`hibit
`‘Reference aePa
`a
`[Dae ay SN
`
`
`
`
`- 2
`ae= S a
`:
`Q “ ee ce ot ee
`co
`
`>
`
`>
`
`3
`
`?
`
`Hon °043
`
`
`
`|.1004 and
`Aug. 24, 2005
`Chinese Patent No.
`
`
`
`
`
`1005 (English
`CN 2719043 Y
`translation
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`
`
`
`
`
`»
`Date
`Reference*|Patent> :
`| Exhibit Now 2)
`
`WO 2005/0994
`94 Al
`Hon°494! Oct. 27. 2005|1006 and
`
`
`
`
`1007 (English
`
`
`translation
`
`
`
`E.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1-3 of the ’742 patent
`
`on the following grounds:
`
`eae
`
`
`g
`ze
`Reference
`i
`
`
`
`
`Hon and Abhulimen
`
`Hon and Whittemore
`
`Hon and Counts
`
`Susa and Whittemore
`
`
`
`
` Susa and Abhulimen
`
`
`ve
`ce
`s
`
`Bk
`207,
`
`nged’
`
`
`
`
`
`
`§ 103(a)
`
`§ 103(a)
`
`' Hon ’494 is the PCT application equivalent of Hon ’043. Pet. 15. When
`referring to Hon ’043 in the Petition, Petitioner cites the English translation
`of Hon ’494 “because the translation [of Hon ’043] does not have paragraph
`numbersor line numbers.” /d. at n. 2. Petitioner also uses Hon ’043 and
`Hon 494 interchangeably throughout the Petition. For clarity, we will refer
`to Hon °494 and Hon ’043 collectively as “Hon,” and we will cite to the
`English translation of Hon ’494 (Ex. 1007) when referring to Hon.
`6
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`A.
`
`Claim Interpretation
`
`Il. ANALYSIS
`
`Weinterpret claims of an unexpired patent using the “broadest
`
`reasonable constructionin light of the specification of the patent in which
`
`[the claims] appear[].” 37 C.F.R. § 42.100(b). For purposesofthis
`
`Decision, based on the record before us, we make explicit the interpretation
`
`of the claim terms “frame” and “porous component,” as set forth in claims
`
`1-3.
`
`1.
`
`“frame”
`
`Petitioner proposes that we construe “frame” to mean “rigid
`
`structure.” Pet. 8. In support of its construction, Petitioner relies on the |
`
`district court’s ruling on claim construction in the District Court Action. Jd.
`
`at 7-8 (citing Ex. 1014, 5-7). Patent Ownerproposes that we construe the
`
`term to mean “a firm structure designed to hold up another component.”
`
`Prelim. Resp. 10. Patent Ownercites the Specification’s description of the
`
`fifth preferred embodiment, which includes a frame with a run-through hole
`
`on it, and a porous componentset on the frame, in support of its
`
`construction. /d. at 10. (citing Ex. 1001. 5:42-47). According to Patent
`
`Owner,“[i]n the context of the ’742 patent, this is the better interpretation,
`
`particularly because ‘supported by’ means‘held up.’” Jd. at 11.
`
`Based onthe record before us, we are persuadedthat Petitioner’s
`
`interpretation is the broadest reasonable interpretation in light of the
`
`Specification. The only mention of “frame”in the Specification is in the
`
`discussion ofthe fifth preferred embodiment, where it states, with reference
`
`to Figures 17 and 18, that “the atomizer assembly is an atomizer (8), which
`
`includes a frame (82), the porous componentis set on the frame (82),” and
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
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`“Tt}he frame (82) has a run-through hole (821) on it.” Ex. 1001, 5:42-47.
`
`That the porous componentis set on the frame in one embodiment, however,
`is not enoughto limit “frame”to a structure that is designed to hold up
`
`another component, as suggested by Patent Owner. The language ofthe
`
`claims further indicates that a frame need not necessarily “hold up another
`
`component.” Claims 1 and 2 require that the porous componentbe
`
`“supported by” the frame, but claim 3 only requiresthat there is “a porous
`
`component between the frame andthe outlet.” Petitioner’s proposed
`
`interpretation of “frame”as “a rigid structure” is consistent with the use of
`
`the term in the Specification and the claims.
`For purposes of this Decision, consistent with the disclosures in the
`
`Specification and its ordinary meaning, we interpret “frame”to be “a rigid
`
`structure.”
`
`2.
`
`“porous component”
`
`Petitioner proposes that we construe “porous component” to mean “a
`
`componentof the atomizer assemblyin the electronic cigarette that includes
`
`pores and is permeable to liquid, such as cigarette solution from the cigarette
`
`solution storage area.” Pet. 7. In support of this construction, Petitioner _
`
`relies on the Board’s interpretation of “porous component”in the Decision
`
`to Institute Inter Partes Review in IPR2013-00387,relating to U.S. Patent
`
`No. 8,156,944 (“the ’944 patent”), because “[t]he ’742 Patent is a divisional
`
`of the application that led to the ’944 Patent, and therefore both patents share
`
`the samespecification.” Id.; see CB Distributors, Inc. v. Ruyan Investment
`
`-
`
`(Holdings) Limited, Case IPR2013-00387,slip op. at 11 (PTAB Dec. 30,
`
`2013) (Paper7).
`
`
`
`IPR2015-00859 |
`Patent 8,365,742 B2
`
`Patent Ownerproposes that we construe the term to mean “a
`
`componentof the atomizer assembly having poresor interstices and
`
`providing for absorption or diffusion of liquid.” Prelim. Resp. 6-7. As
`
`support for this construction, Patent Ownerstates that the claims of the ’742
`
`patent include a numberofrecitations relating to the porous component,
`
`including that “the atomizer includes a porous componentand a heating
`
`wire,” “the porous componentis supported by the atomizer frame having a
`
`run-through hole,”“the porous componentis positioned substantially within
`
`the cigarette bottle assembly,” and “the porous componentis substantially
`
`surrounded by the liquid storage component.” Jd. at 7-8. Patent Owneralso
`cites to the Specification’s statements that “the porous component provides
`‘liquid absorption anddiffusion, and the ability to absorb liquid stored in the
`
`cigarette bottle assembly’ .
`.
`. [a]nd that it ‘absorbs the cigarette liquid from
`the perforated componentfor liquid storage.” Id. at 8 (citing Ex. 1001,
`3:25-26, 66-67). According to Patent Owner, “Petitioner offers no analysis
`
`why [the construction from IPR2013-00387] is proper for the claims of the
`
`742 patent,” because, “based upon the claimsandthe disclosure of the ’742
`
`patent, a porous component is something more than a componentthat simply
`
`has holes.” Jd. at 8-9.
`
`Based on the record before us, we are persuadedthat Petitioner’s
`
`proposedinterpretation is the broadest reasonable interpretation in light of
`
`the Specification. Petitioner’s proposed interpretation is consistent with the
`
`Specification, which describes the porous componentas being “made of
`
`foamed nickel,stainless steel fiber felt, macromolecular polymer foam or
`
`foamed ceramics, providing the remarkable capabilities in liquid absorption
`
`and diffusion, and the ability to absorb the liquid stored in the cigarette
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
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`bottle assembly.” Ex. 1001, 3:23-27. The Specification further states that
`
`the porous component“absorbsthe cigarette liquid from the perforated
`
`componentfor liquid storage,” and, “[a]fter atomization, the big-diameter
`
`fine drips are re-absorbed by the porous component.” Jd. at 4:25—27.
`
`Therefore, for purposes of this Decision and in accordance with the
`
`broadest reasonable interpretation in light of the Specification, we interpret
`
`“porous component” to mean “a component of the atomizer assembly in the
`
`electronic cigarette that includes pores and is permeable to liquid, such as
`
`cigarette solution from the cigarette solution storage area.”
`
`B.
`
`Obviousness over Hon and Susa
`
`Petitioner contends that claims 1—3 would have been obvious under 35
`
`U.S.C. § 103(a) over the combination of Hon and Susa. Pet. 15-32.
`
`Petitioner relies on a Declaration by Gregory Buckner, Ph.D. (“the Buckner
`
`Declaration,” Ex. 1002) in support of the contentions. Id.
`
`1.
`Overview ofHon
`Hon is directed to an electronic atomization cigarette. Ex. 1007, 1:4—
`5. Figures 1 and 6 of Honare reproduced below:
`
`10
`
`
`
`
`
`ELEN
`
`6
`
`{7
`
`4
`
`uw
`
`ld
`
`ba
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`IPR2015-00859
`Patent 8,365,742 B2
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`46
`
`tFe
`
` LEP]
`
`
`Figure 1 is a schematic diagram ofthe structure of an electronic cigarette
`
`that includesair inlet 4, normal pressure cavity 5, sensor 6, vapor-liquid
`separator 7, atomizer 9, liquid-supplying bottle 11, and mouthpiece 15
`within shell 16. Jd. at 2:40, 3:14-18. Figure 6 is a structural diagram of an
`
`atomizer, which includes atomization cavity 10, heating element RL,first
`piezoelectric element M1, atomization cavity wall 25, porous body 27, and
`bulge 36. Id. at 2:48, 3:24—29, 35-38.
`
`Honstates that heating element RL “can be madeof platinum wire,
`
`nickel chromium alloy or iron chromium aluminum alloy wire with rare
`
`earth element” and “can also be made into a sheet form.” /d. at 3:27-29.
`
`Honalsostates that “atomization cavity wall 25 is surrounded with the
`
`porous body 27, which can be madeof foam nickel, stainless steel fiber felt,
`
`high molecule polymer foam and foam ceramic,” and that “atomization
`
`cavity wall 25 can be made of aluminum oxideor ceramic.” Jd. at 3:35-38.
`
`11
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`
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`IPR2015-00859
`Patent 8,365,742 B2
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`Honfurtherstates that “[w]hen a smoker smokes, the mouthpiece 15
`is under negative pressure, the air pressure difference or high speed stream
`between the normalpressure cavity 5 and the negative pressure cavity 8 will
`
`cause the sensor6 to output an actuating signal,” which causesthe cigarette
`
`to begin operating. Jd. at 4:11-14. Hon describes that air enters normal
`pressure cavity 5 throughair inlet 4, proceeds through the through hole in
`vapor-liquid separator 7, and flowsinto atomization cavity 10 in atomizer9.
`
`Id. at 4:21-24. The nicotine solution in porous body 27 is driven by the high
`
`speed stream passing throughthe ejection hole into atomization cavity 10 in
`
`the form of a droplet, whereit “is subjected to the ultrasonic atomization by
`
`the first piezoelectric element M1 andis further atomized by the heating
`
`element RL.” Jd. at 4:26—27. After atomization, large-diameter droplets
`
`stick to the wall and are reabsorbed by porous body 27 via overflow hole 20,
`
`and small-diameter droplets form aerosols that are sucked out via aerosol
`
`passage 12, gas vent 17, and mouthpiece 15. Jd. at 4:28-31.
`2
`Overview ofSusa
`Susais directed to a flavor generation article used for simulated
`
`smoking. Ex. 1010, 1:5~-7. Susa Figure 1 is reproduced below:
`
`
`
` Tea]
`
`
`
`
`
`12
`
`
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`IPR2015-00859
`Patent 8,365,742 B2
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`Figure 1 is a schematic diagram ofa flavor generation article described by
`
`Susa. /d. at 4:20-22. Casing 12 includes“first portion 12a to be held by the
`
`user’s mouth” and “second portion 12b for incorporating a power supply and
`
`the like.” Jd. at 5:17-20. Portions 12a and 12b are detachably connected by
`
`connecting portion 13 formed on casing main body 14, and “are electrically
`
`connected to each other through a cable 15 stored in a space formed in the
`
`casing main body 14 to correspondto the connecting portion 13.” Jd. at
`
`5:20—26. Gas flow path 26 is formed in casing 12 betweenair intake ports
`
`24 andsuction port 22. Id. at 5:36—37.
`Throttle hole 20, in the center ofthrottle plate 21, is located in gas
`flow path 26 anddirects air from air intake ports 24 to flow along the surface
`
`of ceramic heater 42. Id. at 5:46-50. Ceramic heater 42 is fixed on the inner
`
`surface of casing main body 14 by support member44. Jd. at 7:30-32. Air
`from throttle hole 20 flows through gap 27: between discharge ports 35 and
`
`ceramic heater 42. Jd. at 7:35—38. Liquid-absorbing porouslayer 46 is
`formedon the surface of ceramic heater 42, and can be made of an organic
`
`compound(suchas natural cellulose, a cellulose derivative, or an aramid
`
`resin), or an inorganic compound(suchascarbon, alumina,orsilicon
`
`carbide). Jd. at 7:50-8:5.
`
`Whena userinhales through suction port 22, sensor 73 outputs an
`
`operation signal to control circuit 72, which energizes ceramic heater 42. Id.
`
`at 9:41-50. After a predetermined time, discharge drive portion 38 is
`
`triggered, liquid material 36 is discharged from discharge ports 35, and is
`
`gasified with heating by ceramic heater 42. Id. at 9:50-55. As the user
`
`inhales, the gasified material is mixed with the suctioned air from air intake
`
`ports 24, passed throughthe throttle hole 20, passes between the discharge
`
`13
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`
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`IPR2015-00859
`Patent 8,365,742 B2
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`ports 35 and ceramic heater 42, and is guided to suction port 22. Jd. at 9:55—
`
`10:2.
`
`Figure 13 of Susa is reproduced below:
`
`
`
`Figure 13 is a schematic view of another embodiment of Susa’s flavor
`generationarticle. Id at 15:28-30. Formed body 92 consists “of a solid
`material that generates a flavor or the like to be inhaled by the user”andis
`
`detachably disposed in gas flow path 26 between ceramic heater 42 and
`
`cooling chamber 52. Jd. at 14:57—15:4. Susa states that when formed body
`
`92 is sized such that there is no gap betweenit and the innersurface of
`
`casing main body 14, formed body 92 consists of a solid material that has
`
`good air permeability, and gas flow path 26 is formed to extend through
`
`formed body 92. Jd. at 15:13-19. Whenthere is a gap between formed
`
`body 92 and the inner surface of casing main body 14, formed body 92 can
`
`have little or no air permeability, and gas flow path 26 is formed to extend
`
`through that gap. Jd. at 15:19-27. Coil heater 94 “is disposed around”
`
`formed body 92, and “may be arranged in a hole formed in” formed body
`
`92. Id. at 15:34-36.
`3.
`Analysis
`
`a.
`
`Claims 1 and 2
`
`Petitioner contends that Hon describes porous component 27
`
`supported by atomization cavity wall 25, and therefore teaches “the atomizer
`
`14
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`IPR2015-00859
`Patent 8,365,742 B2
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`includes a frame; the porous componentis supported by the frame”
`
`limitations recited in claim 1, and “the atomizer assembly including a porous
`
`component supported by a frame having a run-through hole”limitation in
`claim 2. Pet. 21, 28. In particular, Petitioner contends that, in Hon, “[t]he
`porous componentis ‘arranged around the atomization cavity wall’ which
`
`‘can be made of aluminum oxideor ceramic.”” Jd. at 21 (citing Ex. 1007,
`
`2:12, 3:38). Thus, according to Petitioner, Hon’s atomization cavity wall 25
`
`is a “frame”as recited in the challenged claims.
`
`Patent Owner argues that Hon doesnotdisclose a frame or any
`
`element that supports the porous body. Prelim. Resp. 23. Patent Owner
`
`argues that Hon’s cylindrical atomization cavity wall 25 “is supported from
`
`below andlaterally by porous body 27”and “‘is a liner within the porous
`
`body which forms the atomization cavity 10.” Id. at 24. According to
`
`Patent Owner, atomization cavity wall 25 “that is entirely within porous
`
`body 27 does not support the porous body,” and,instead, “the porous body
`
`27 supports the wall 25 as the porous body will hold the wall in place.” Jd.
`
`Asdiscussed above, weinterpret “frame” to mean “a rigid structure.”
`
`See supra Section IJ.A.1. Petitioner contends Hon’s atomization cavity wall
`25 is this frame, at least because it can be made of aluminum oxide or
`
`ceramic. Pet. 21. We are persuaded that atomization cavity wall 25 isa
`
`rigid structure, and is therefore a frame as recited in claims 1 and 2.
`
`Weare not persuaded, however, that Petitioner has established that
`
`Honteaches a frame that supports a porous component, as also required by
`
`claims 1 and 2. Petitioner points to Hon’s description of porous component
`
`27 as being “arranged around the atomization cavity wall” to showthat
`
`porous component27 is supported by atomization cavity wall 25. Jd. The
`
`15
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`IPR2015-00859
`Patent 8,365,742 B2
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`ordinary meaning of “support”is “bear all or part of the weight of: hold
`
`up.” Prelim. Resp. 12 (citing Ex. 2005, 1708). Petitioner does not explain
`
`adequately, norcite to sufficient evidence of record explaining, how porous
`
`component27 is held up by atomization cavity wall 25. The teachings in
`
`Hon on whichPetitioner relies describe porous component 27 surrounding
`
`atomization cavity wall 25, but do not indicate that atomization cavity wall
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`25 is bearing the weight of, or holding up, porous cavity 27. Petitioner does
`not rely on Susato teach this limitation.
`|
`Petitioner alternatively argues that Hon “discloses that the atomizer
`includes a vapor-liquid separator (7), which also constitutes a frame that
`
`supports the porous component” becauseit “is ‘sequentially interconnected’
`
`with the atomizer and ‘can be madeofplastic or silicon rubber.’” Pet. 21.
`
`This argumentis not persuasive.
`
`Even if Hon’s vapor-liquid separator 7 is a frame, which we need not
`
`determine for purposes of this Decision, it is not located in the atomizeras is
`
`required by claims 1 and 2. Hon consistently describes vapor-liquid
`
`separator 7 as an element separate from the atomizer. See, e.g., Ex. 1007,
`3:16—18 (“a vapor-liquid separator 7, an atomizer 9, a liquid-supplying
`bottle 11 and a mouthpiece 15 are sequentially provided within the shell
`14”); 4:23-24 (air passes through “the through hole in the vapor-liquid
`separator 7, and flowsinto the atomization cavity 10 in the atomizer 9”);
`
`5:12—14 (describing an embodiment where “the atomizer 9 is postposed
`
`within the shell 14, and the liquid-supplying bottle 11 is arranged between
`
`the vapor-liquid separator 7 and the atomizer 9”). Furthermore, the
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`statement in Hon on which Petitioner relies regarding vapor-liquid separator
`
`7 being “sequentially interconnected” to atomizer 9, when read in context,
`
`16
`
`
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`IPR2015-00859
`Patent 8,365,742 B2
`
`describes the order in which the elements are arranged within the body of the
`
`electronic cigarette: “[T]he air inlet, normal pressure cavity, vapor-liquid
`separator, atomizer, aerosol passage, gas vent and mouthpiece are
`sequentially interconnected.” Ex. 1007, 1:47-49.
`
`Accordingly, we are not persuadedthat Petitioner has established a
`
`reasonable likelihood of showing that claims 1 and 2 would have been
`
`obvious over the combination of Hon and Susa.
`
`b.
`
`Claims 1-3
`
`Claim 1 recites “the heating wire is wound on the porous component,”
`
`and claims 2 and 3 recite “a heating wire woundona part of the porous
`
`component.” Petitioner contends that Susa describesthat “coil heater 94 ‘is
`
`disposed around the formed body 92,’ which is adjacent to ceramic heater 42
`
`and porouslayer 46,”and that “[fJormed body 92 has qualities and functions
`
`similar to the porous layer.” Pet. 22. According to Petitioner, because
`
`Susa’s coil heater 94 envelops formed body 92,“[i]t would have been
`
`obviousto one of ordinary skill in the art to wind the coil heater of Susa
`
`around the porouslayer in [Hon] in order to provide [the heating wireis
`
`wound on the porous component] limitation” of claims 1-3. Jd. at 23, 28—
`
`29, 31-32. Petitioner contendsthat this modification of the Hon electronic
`
`cigarette “is motivated by the interest of providing moreefficient, uniform
`heating” and “would enhance commercial opportunities and makethe
`product moredesirable by increasing the efficiency of atomization.” Id. at
`
`23.
`
`Patent Ownerargues that Susa’s coil heater 94 is not wound on porous
`
`layer 46, “which the Petition asserts discloses the claimed porous
`
`component.” Prelim. Resp. 29. Patent Ownerfurther arguesthat “[t]he
`
`17
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`embodimentin Fig. 13 gasifies liquid in the same wayas Fig. 1 discussed
`
`above, that is via liquid projected from the discharge head 34 onto a now
`vertical porous layer 46 on the ceramic heater 42,” and that “coil heater 94
`together with the formed body 92 generate flavor by heating, but
`
`presumptively without gasifying where liquid contacts a heated surface,as in
`Fig. 1.” Id. at 29-30.
`Weare not persuaded by Petitioner’s arguments. As set forth above,
`
`weinterpret “porous component” to mean “a componentof the atomizer
`
`assemblyin the electronic cigarette that includes pores and is permeable to
`
`liquid, such as cigarette solution from the cigarette solution storage area.”
`
`See supra Section II.A.2. Petitioner contends that Susa’s formed body 92
`
`“has qualities and functions similar to the porous layer,” but does not explain
`
`sufficiently, nor direct us to adequate evidence of record indicating, that a
`
`person having ordinary skill in the art would have understood the formed
`
`body 92 to include pores and be permeableto liquid. See Pet. 22.
`
`Susa describes formed body 92 as “a solid material that generates
`
`flavor or the like,” that, depending on its size, can have goodair
`
`permeability, or poor to no air permeability. Ex. 1010, 14:57-15:2, 15:13—
`
`27. The embodiment shownin Susa Figure 13 that showscoil heater 94
`
`disposed around formed body 92also includes liquid-absorbing porouslayer
`
`46 that “is formed ona surface of the ceramicheater 42 that receives the
`liquid splash ofthe material” and “stabiliz[es] gasification of the splash of
`material.” Jd. at 7:50—8:1. Consequently, we are not persuaded that that
`
`formed body 92 in Susais a “porous component”as recited in the challenged
`
`claims, or that Petitioner has demonstrated that Susa teaches a heating wire
`
`wound on a porous component,as is required by claims 1-3.
`
`18
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`A showing of obviousness must be supported by anarticulated
`
`reasoning with rational underpinning to support a motivation to combine the
`
`prior art teachings. KSR Int’] Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner asserts
`
`that a person having ordinary skill in the art would be motivated to modify
`
`the Honelectronic cigarette to include a heating wire wound on a porous
`
`component“bythe interest of providing moreefficient, uniform heating”
`
`that “would enhance commercial opportunities and make the product more
`
`desirable by increasing the efficiency of atomization.” Pet. 23. Petitioner
`does not provide sufficient explanation as to why a person having ordinary
`skill in the art would have wanted to provide “moreefficient, uniform
`heating”in the Hon cigarette. Petitioner does not direct us to, nor do we
`
`discern, statements in Hon or Susa with respect to the efficiency—or
`
`inefficiency—ofatomization within the described articles. Petitioner’s
`
`unsupported, conclusory statements do not constitute articulated reasoning
`
`with rational underpinnings as to why oneofordinary skill in the art would
`
`modify Honin view of Susa’s teachingsto arrive at the claimed invention.
`
`For these reasons, Petitioner has not established a reasonable
`
`likelihood that it would prevail on the ground that claims 1—3 of the ’742
`
`patent would have been obviousover the combination of Hon and Susa.
`
`C.—Obviousness over Hon and Abhulimen
`
`Petitioner contends that claims 1—3 would have been obvious under 35
`
`U.S.C. § 103(a) over the combination of Hon and Abhulimen. Pet. 32-34.
`
`Petitioner relies on the Buckner Declaration (Ex. 1002) in support ofits
`
`contentions. /d.
`
`19
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`1.
`
`Overview ofAbhulimen
`
`Abhulimenis directed to a simulated smokingarticle, with a fuel
`
`element physically separated from an aerosol-generating element. Ex. 1012,
`
`1. Figures 1 and 2 of Abhulimenare reproduced below:
`
`
`
`
`
`
`
`
`
`FIG. 2
`
`Figure 1 is partially-fragmented perspective view of a simulated smoking
`
`device as described by Abhulimen,and Figure 2 is a longitudinal view of the
`
`device shownin Figure 1. Jd. at 3-4. Simulated smoking device 10 includes
`
`fuel element 11, flavor-generating material 13 disposed within tubular
`
`wrapper 26, and tobacco rod 14 attachedto filter 12. Jd. at 4. Fuel element
`
`11 includes fuel tank 20, which is non-permeable and non-combustible, and
`
`fuel cartridge 24 comprising a porous medium. Jd. Fuel element 11 also
`
`includes extended wick 22 and glow element 16. Jd. Fuel tank 20 is open-
`ended atits upstream end, where ceramic tube 32 surrounds wick 22. Id.
`
`Glow element16 is a coil comprised of copper wire filament, or other heat-
`
`conducting or glowing materials such as brass, platinum, or metallic alloy.
`
`Id. Heat diffuser 30 is positioned within tubular wrapper 26 betweenthe
`
`distal end of flavor-generating material 13 and glow element 16.
`
`/d. Heat
`
`diffuser 30 delivers hot gas and hot air coming into tubular member26
`
`through puffing air inlets 18 to vapor-generating material of tobacco rod 14,
`
`.
`
`20
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`and also blocks the flame from contact with flavor-generating material 13
`
`whena userinhales. Jd.
`
`Abhulimen describes that smoking device 10 is started by lighting the
`metalfilament of glow element 16, using a lighter placed underthearticle in
`
`the region of puffing air inlets 18. Jd. Wick 22 drawsfuel to the region of
`
`the metal filament, and the flame causes the fuel to vaporize. Jd. When the
`user inhales, air is pulled through puffing air inlets 18 and across the metal
`filament of glow element 16, and the vaporized fuel combusts. Jd.
`
`|
`
`2.
`
`Analysis
`
`a.
`
`Claims I and 2
`
`Asset forth above, Petitioner has not established that Hon teaches a
`
`frame that supports a porous component, as required by claims 1 and 2. See
`
`supra Section II.B.3.a. Petitioner does not rely on Abhulimen as teaching
`
`this limitation of claims 1 and 2. Accordingly, we determine that the record
`
`before us does not establish a reasonable likelihood that Petitioner would
`
`prevail in establishing that claims 1 and 2 would have been obvious overthe
`
`combination of Hon and Abhulimen.
`
`b.
`
`Claims 1-3
`
`Petitioner contends that Hon discloses mostof the limitations of
`
`claims 1— 3, but concedesthat it does not disclose “a heating wire wound on
`
`a part of the porous component.” Pet. 33. Petitioner contends that
`
`Abhulimenteachesthis limitation. Jd. According to Petitioner, Abhulimen
`
`teaches that glow element 16 (which Petitioner equates to a heating wire)is
`
`woundon a part of wick 22 (which Petitioner equates to a porous
`component). Jd. Petitioner contends that a person having ordinary skill in
`the art would have been motivated “to wind the heating wire of Abhulimen
`
`21
`
`
`
`IPR2015-00859
`~ Patent 8,365,742 B2
`
`around the porous layer in [Hon] to yield” a heating wire wound ona part of
`
`the porous component asrecited in the claims because it would provide
`
`moreefficient, uniform heating. /d. at 33-34.
`
`As wasthe case with Petitioner’s proposed combination of Hon and
`
`Susaas set forth above, Petitioner does not provide sufficient explanation as
`
`to why a person having ordinary skill in the art would have wantedto
`
`provide “moreefficient, uniform heating” in the Honcigarette. See supra
`
`Section II.B.3.a. Petitioner does not direct us to, nor do we discern,
`
`statements in Hon or Abhulimen with respect to the efficiency—or
`
`inefficiency—of atomization within the described articles. Petitioner’s
`unsupported, conclusory statements do not constitute articulated reasoning
`with rational underpinnings as to why one ofordinary skill in the art would
`
`modify Hon in view of Abhulimen’s teachingsto arrive at the claimed
`invention.
`|
`Accordingly, we determinethat the record before us does not establish
`a reasonablelikelihood that Petitioner would prevail in establishing that
`
`claims 1-3 of the ’742 patent would have been obviousoverthe
`
`‘combination of Hon and Abhulimen.
`
`D.—Obviousness over Hon and Whittemore
`Petitioner contends that claims 1—3 would have been obvious under35
`
`U.S.C. § 103(a) over the combination of Hon and Whittemore. Pet. 34-36.
`
`Petitioner relies on the Buckner Declaration
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