Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: February 7, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`R.J. REYNOLDS VAPOR COMPANY
`Petitioner,
`
`V.
`
`FONTEM HOLDINGS1 B.V.,
`Patent Owner.
`
`Case IPR2016-01532
`Patent 8,365,742 B2
`
`Before BRIAN J. MCNAMARA, JEREMY M. PLENZLER,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: February 7, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`R.J. REYNOLDS VAPOR COMPANY
`Petitioner,
`
`V.
`
`FONTEM HOLDINGS1 B.V.,
`Patent Owner.
`
`Case IPR2016-01532
`Patent 8,365,742 B2
`
`Before BRIAN J. MCNAMARA, JEREMY M. PLENZLER,and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`I. INTRODUCTION
`
`R.J. Reynolds Vapor Company(‘Petitioner’) filed a Petition (“Pet.”)
`
`to institute an inter partes review of claims 2 and 3 of U.S. Patent
`
`No. 8,365,742 B2 (“the ’742 patent,” Ex. 1001). Paper 1. Fontem
`
`Holdings 1 B.V. (“Patent Owner’’) filed a Preliminary Response (“Prelim.
`
`Resp.”). Paper 7. We have jurisdiction under 35 U.S.C. § 314.
`
`Uponconsideration of the Petition and Preliminary Response, we
`
`determine that Petitioner has not established a reasonable likelihood of
`
`prevailing with respect to the unpatentability of claims 2 and 3 of the ’742
`patent. Accordingly, we deny the Petition and do notinstitute an inter
`partes review.
`
`A.
`
`Related Proceedings
`
`The parties indicate that the ’742 patent is asserted in Fontem
`
`Ventures B.V. v. R.J. Reynolds Vapor Company, Case No. 2:16-cv-02286
`(C.D. Cal. 2016).' Pet. 11; Paper 4, 2. The ’742 patent previously was the
`subject of IPR2015-00859 (institution denied on September9, 2015) and
`
`IPR2015-01587 (terminated on December14, 2015 at the joint request of the
`
`parties before an institution decision was entered) (Pet. 13; Paper 4, 7), and
`is the subject of IPR2016-01303, filed by Nu Mark LLC on June 28, 20167
`
`(Paper 4, 7).
`
`' Patent Ownerindicatesthat this proceeding was subsequently transferred
`to the U.S. District Court for the Middle District of North Carolina, where it
`is pending underCivil Action No. 16-CV-1255. Paper8, 1.
`* This proceeding was terminated atthe joint requestof the parties before an
`institution decision was entered. Nu Mark LLC v. Fontem Holdings 1 B.V.,
`Case IPR2016-1303, slip op. at 2-3, 5 (PTAB Jan. 4, 2017) (Paper 12).
`2
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`B.
`
`The ’742 Patent
`
`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 atomizing efficiency, being structurally
`
`complicated, and not providing ideal aerosol effects. Jd. at 1:21—24.
`
`Figure | of the ’742 patent is reproduced below:
`
`
`4 515 al
`
`7
`
`8
`
`o£
`
`
`ji Lea.
` tC)TOLLALLdk1AihrkenknbnhnhpakkeLed
`neeae
`REoY)
`ES
`DerES
`
`j
`
`bi
`
`
`2
`$2
`54
`
`33
`
`Figure1
`
`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, and cigarette bottle assembly. Jd. at 2:30-33. The battery
`
`assembly connects to the atomizer assemblyin 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. The battery assembly includes
`
`operating indicator 1, battery 3, electronic circuit board 4, and airflow sensor
`
`5. Id. at 2:39-45. The atomizer assembly is atomizer 8, which includes a
`
`porous componentand a heating rod. Jd. at 3:6-8. The cigarette bottle
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`assembly includes hollow cigarette shell holder (b), and perforated
`
`componentfor liquid storage 9. Jd. at 3:49-S1.
`
`Figures 5, 6, and 7 of the 742 patent are reproduced below:
`
`81
`
`811
`
`
`
`PDD
`
`812
`
`a <a
`
`813
`DOOOOD)
`
`823
`
`82
`
`L/L
`
`822
`
`821
`
`Figure5
`
`Figure 6
`
`81
`
`aoe hoes
`
`83
`
`
`
`POOQOOOOSS.
`
`
`
`|PAHO,
`821
` oo
`
`CCUG
`
`OOQOPOARKSS
`
`
`81)
`
`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 atomizer8, and
`
`Figure 7 is a side-section view of atomizer 8. Jd. at 1:53-59. Atomizer 8
`
`includes porous component 81 and heating rod 82.
`
`/d. at 3:6-8. Heating rod
`
`82 includes heating wire 822 wound on the wall of cylinder 821. Jd. at
`
`3:28-30. Porous component81 contains run-through atomizing chamber
`
`811. Jd. 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. Id. at
`
`3:11-15. One end of porous component81 fits with the cigarette bottle
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`assembly, with protuberance 812 at the other end connecting to atomizing
`
`chamber 811 with run-through hole 813. Jd. at 3:16—-19.
`
`C.
`
`Challenged Claims
`
`Petitioner challenges claims 2 and 3 of the ’742 patent, which are
`
`reproduced below.
`
`2. An electronic cigarette, comprising:
`
`a battery assembly and an atomizer assembly within a housing
`with the battery assembly electrically connected to the
`atomizer assembly;
`
`a liquid storage componentin the housing;
`
`with the housing having one or more through-air-inlets;
`
`the atomizer assembly including a porous component supported
`by a frame having a run-throughhole;
`
`a heating wire wound on a part of the porous componentin the
`path of air flowing through the run-throughhole; and
`
`the porous component substantially surrounded by the liquid
`storage component.
`
`3. An electronic cigarette, comprising:
`
`a battery assembly and an atomizer assembly within a housing
`with the battery assembly electrically connected to the
`atomizer assembly;
`
`with the housing having one or more through-air-inlets and an
`outlet;
`
`the atomizer assembly includes a frame having a run through
`hole, and a porous component between the frame and the
`outlet;
`a heating wire wound ona part of the porous component which
`is substantially aligned with the run-through hole; and
`
`with the porous componentin contact with a liquid supply in the
`housing.
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`D.
`
`The Asserted Ground of Unpatentability
`
`Petitioner challenges the patentability of claims 2 and 3 of the
`
`742 patent under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent
`
`Application Publication No. 2009/0095311 Al, published on April 16, 2009
`
`(“the ’311 Publication,” Ex. 1002).
`
`A.
`
`Claim Interpretation
`
`Il. ANALYSIS
`
`Weinterpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[the claims] appear[].” 37 C.F.R. § 42.100(b); see Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016). The Board, however, may not
`
`“construe claims during IPR so broadly that its constructions are
`
`unreasonable under general claim construction principles... . ‘[T]he
`
`protocol of giving claims their broadest reasonable interpretation .
`
`.
`
`. does
`
`not include giving claimsa legally incorrect interpretation.’” Microsoft
`
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (citation
`
`omitted). “Rather, ‘claims should always beread in light of the specification
`
`and teachings in the underlying patent’” and “[e]ven underthe broadest
`
`reasonable interpretation, the Board’s construction ‘cannot be divorced from
`
`the specification and the record evidence.’” /d. (citations omitted). Only
`
`those terms in controversy need to be construed, and only to the extent
`
`necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. &
`
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Petitioner proposes constructions for the terms “frame,”
`
`99 66.
`
`“porous
`
`component,” “‘a battery assembly and an atomizer assembly within a
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`housing,” and “the porous componentsubstantially surrounded bytheliquid
`
`storage component.” Pet. 19-21. Patent Ownerstates that it disagrees with
`39 66.
`
`Petitioner’s proposed constructions of the terms “frame,”
`
`“porous
`
`component,” and “the porous componentsubstantially surrounded by the
`
`liquid storage component,” but “does not address those terms here” because
`
`“[t]he meanings of those termsare not relevant to the resolution of the
`
`Petition.” Prelim. Resp. 7-8. Patent Owner proposes a construction for the
`
`term “housing.” Jd. at 8-12. For purposes of this Decision, based on the
`
`record before us, we determinethat it is necessary to address the
`
`interpretation of the claim term “housing”as set forth in claims 2 and 3.
`
`“housing”
`
`Petitioner notes that, in a “prior waveoflitigations,” “[t]he district
`
`court ruled that ‘housing’ ‘need not be construed, other than to specify thatit
`
`need not be a ‘one-pieceshell.’’” Pet. 19-20 (quoting Ex. 1014, 8-10).
`
`Petitioner proposes that we construe “housing”as not being limited to a one-
`
`piece shell, consistent with the district court’s ruling.
`
`/d. at 20. Patent
`
`Owneragreesthat “the term ‘housing’ should not be limited to a one-piece
`99 66.
`
`housing,” andasserts that “housing”
`
`“needs no construction,”or,
`
`alternatively, it “be construed to have its plain meaning, namely, ‘a casing.”
`
`Prelim. Resp. 9.
`
`Weagree with the parties that “housing”is not limited to a one-piece
`
`shell. The Specification states that “[t]he battery assembly connects with the
`
`atomizer assembly andboth are located in a housing,” with a bottle assembly
`
`“located in one endof the housing”that “fits with the atomizer assembly.”
`
`Ex. 1001, 1:30-33. The Specification describes, with reference to Figures
`
`1-10,
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`an aerosol electronic cigarette [that] includes a battery assembly,
`an atomizer assembly and cigarette bottle assembly, and also
`includes a shell or housing (a), which is hollow andintegrally
`formed. The battery assembly connects with the atomizer
`assembly and both are located in the shell. The cigarette bottle
`assembly is located in one end ofthe shell, which is detachable.
`The cigarette bottle assembly fits with the atomizer assembly.
`Id. at 2:30-37. The Specification further describes that “the battery
`
`assembly and atomizer assembly are mutually connected andtheninstalled
`
`inside the integrally formed shell (a) to form a one-piece part,” and one end
`
`of cigarette holder shell (b) “plugs into the shell (a).” Jd. at 3:42-44, 49-52,
`
`57-58. Moreover, the embodiments described in the Specification include at
`
`least two pieces—shell (a), containing a battery assembly and atomizer
`
`assembly, and shell (b), containing a cigarette bottle assembly. See id. at
`
`2:30-38, 3:42-62, 5:9-18. These disclosures indicate that at least shell (a)
`
`and shell (b) together form a “housing”as set forth in claims 2 and 3.
`That a “housing”is not limited to a one-piece shell is further
`
`confirmed by the language of the claims. Claim 2 recites “a battery
`
`assembly and an atomizer assembly within a housing”as well as “a liquid
`
`storage componentin the housing,” and claim 3 similarly recites “a battery
`
`assembly and an atomizer assembly within a housing”and “the porous
`
`componentin contact with a liquid supply in the housing.” Jd. at 6:28-31,
`
`40-42, 51-52. The Specification describes that the cigarette bottle assembly
`
`“includes a hollow cigarette holder shell (b), and perforated componentfor
`
`liquid storage (9) inside the shell (b).” Jd. at 3:49-51. Because the cigarette
`
`bottle assembly includesthe liquid storagein shell (b), and the claims
`
`require that the liquid storage componentor porous componentis also in the
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`housing, the housing must include both shell (a) and shel! (b), and the term
`
`“housing” cannot be limited to a one-piece shell.
`
`Uponreview ofthe Specification, we do notfind an explicit or special
`
`definition for the claim term “housing.” Therefore, for purposes ofthis
`
`Decision, we determinethat “housing” does not require an explicit
`
`construction.
`
`C.
`
`Anticipation by the ’311 Publication
`
`Petitioner contends that the subject matter of claims 2 and3is
`
`unpatentable under 35 U.S.C. § 102(b) as anticipated by the ’311
`
`Publication, which published on April 16, 2009. Pet. 21-33. The *311
`
`Publication is the publication of U.S. Patent Application Serial No.
`
`12/226,818 (“the 818 Application,” Ex. 1009), filed as
`
`PCT/CN2007/001575 on May 15, 2007, to which the ’742 patent claims
`
`priority as a divisional filing (U.S. Patent Application Serial No. 13/079,937
`
`(“the °937 Application,” Ex. 1010), filed on April 5, 2011). Jd. at 1, 5, 8.
`
`Accordingly, Petitioner’s challenge is based on the ’742 patent not being
`
`entitled to priority to the °818 Application. Jd. at 1-10, 33-54.
`
`Petitioner’s contentions are based solely on the “a battery assembly
`
`and an atomizer assembly within a housing”limitation of claims 2 and3.
`
`Petitioner argues that “claims 2 and 3 are not entitled to a filing date any
`
`earlier than” the April 5, 2011 filing date of the °937 Application because
`
`the ’818 Application “narrowly describes the ‘invention’ as an electronic
`
`cigarette where the battery assembly and the atomizer assembly are located
`
`together in the same one-pieceshell,” and, thus, does not provide written
`
`description support for claims 2 and 3, “which encompass an electronic
`
`cigarette with the battery assembly and atomizer assembly located in either
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`the same or separate shells.” Pet. 10. In other words, Petitioner argues that
`
`the °818 Application does not provide support for an electronic cigarette
`
`“having the battery assembly and the atomizer assembly located in separate
`
`shells.” Jd. at 2. Petitioner also asserts that “[t]here is no inconsistency with
`
`the parent °818 application (which was published as the °311 publication)
`
`anticipating, but not providing written description support, for claims 2 and
`
`3 of the ’742 patent.” Jd. at 10, n. 3.
`
`“Tt is elementary patent law that a patent application is entitled
`
`to the benefit of the filing date of an earlier filed application only if the
`
`disclosure of the earlier application provides support for the claims of the
`
`later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-
`Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted);
`see also Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 871-72
`
`(Fed. Cir. 2010) (holding the later-filed application, with claims that were
`
`not limited to a “blue noise mask,” was notentitled to the priority filing date
`
`of the parent application, which was “limited to a blue noise mask”); JCU
`
`Med., Inc. v. Alaris Med. Sys., 558 F.3d 1368, 1377-78 (Fed. Cir. 2009)
`
`(holding that “spikeless” claims “added years later during prosecution” were
`
`not supported by the specification which “describe[d] only medical valves
`
`with spikes”); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158-60 (Fed. Cir.
`
`1998) (holding the generic shaped cupclaimsofthe later-filed child
`
`application were not entitled to the filing date of the parent application that
`
`“disclosed only a trapezoidal cup and nothing more”). “To satisfy the
`
`written description requirement the disclosure of the prior application must
`
`convey with reasonable clarity to those skilled in the art that, as ofthe filing
`
`date sought, [the inventor] was in possession of the invention.” PowerOQasis,
`
`10
`
`
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`IPR2016-01532
`Patent 8,365,742 B2
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`522 F.3d at 1306 (citations omitted). The sufficiency of written description
`
`support is based on “an objective inquiry into the four corners of the
`
`specification from the perspective of a person of ordinary skill in the art.”
`
`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`
`(en banc).
`
`Petitioner has the burden to persuadeus that the ’311 Publication is
`
`invalidating prior art. We make ourdecisions on institution based on
`
`whetherthe information presented in the petition and the patent owner’s
`
`preliminary response “showsthat there is a reasonable likelihood that the
`
`. petitioner would prevail with respect to at least 1 of the claims challenged in
`
`the petition.” 35 U.S.C. § 314(a). “In an inter partes review, the burden of
`
`persuasion is on the petitioner to prove ‘unpatentability by a preponderance
`
`of the evidence,’ .
`
`.
`
`. and that burden nevershifts to the patentee.” Dynamic
`
`Drinkware, LLC vy. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
`
`2015) (quoting 35 U.S.C. § 316(e)). The burden of production can shift to
`
`the patent owner, however. See id. at 1379. This shift happens where it is
`
`“warranted because the patentee affirmatively seeks to establish a
`
`proposition not relied on by the patent challenger and not a necessary
`
`predicate for the unpatentability claim asserted—effectively an affirmative
`
`defense.” In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1376 (Fed.
`
`Cir. 2016). Here, Petitioner has asserted that the °311 Publication discloses
`
`each limitation of the challenged claims, and the 818 Application does not
`
`provide written description support for those same claims, as evidenced by
`
`the disclosure of the ’311 Publication. Thus, Petitioner has the burden of
`
`persuasion, based onall of the evidence, on both of these assertions. See
`
`Dynamic Drinkware, 800 F.3d at 1378.
`
`1]
`
`
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`IPR2016-01532
`Patent 8,365,742 B2
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`Petitioner contends that the ’818 Application describes and claims an
`
`electronic cigarette that is limited to having the battery assembly and the
`
`atomizer assembly in the sameshell for several reasons. Pet. 1-10, 37-54.
`
`These reasons include that: (1) the “Abstract” describes the invention as
`
`including both the battery assembly and the atomizer assembly in one end of
`
`a hollow, integrally formed shell (a); (2) the “Contents of the Invention”
`
`section “repeatedly describes the ‘invention’ as one in whichthe battery
`
`assembly and the atomizer assembly are located together in the same, one-
`piece shell;” (3) the ’818 Application “also touts that a benefit of ‘this
`invention’ is an electronic cigarette with a ‘very simple structure’ that has
`
`‘just one connection between twoparts,’ namely, between the shell (a) and
`
`the cigarette holder shell (b);” and (4) all the embodiments described in the
`
`“Specific Mode for Carrying Out the Invention” section “contemplate[] a
`
`shell (a) in which both the battery assembly and the atomizer assembly
`
`reside.” Id. at 38-41.
`
`Patent Ownerarguesthat “[t]he text of the °818 application
`
`contemplates embodiments of a battery assembly and atomizer assembly
`within the casing of the electronic cigarette” by “expressly describ[ing] the
`electronic cigarette as having more than oneshell (i.e., shell (a) and shell
`
`(b)), which forms the housing that encases the internal components ofthe
`
`electronic cigarette, including the battery assembly and the atomizer
`
`assembly.” Prelim. Resp. 16. Patent Owneralso arguesthat the figures in
`
`the °818 Application “also depict the claimed ‘a battery assembly and an
`
`atomizer assembly within a housing,”” noting that Figure 1 “shows the
`
`internal components ofthe electronic cigarette, including the battery
`
`assembly and atomizer assembly, located with the housing, whichis
`
`12
`
`
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`IPR2016-01532
`Patent 8,365,742 B2
`
`composed ofshell (a) and shell (b).” Jd. at 16-17. Therefore, according to
`
`Patent Owner, “the ’818 application describes andillustrates the battery
`
`assembly and atomizer assembly located within a housing, which is formed
`
`from shell (a) and (b),” (id. at 18), and “[e]xactly what is claimedis
`
`disclosed in the text and figures of the ’818 application”(id. at 15).
`
`“[A] specification’s focus on one particular embodiment or purpose
`
`cannotlimit the described invention where that specification expressly
`
`contemplates other embodiments or purposes.” ScriptPro LLC v. Innovation
`
`Associates, Inc., 833 F.3d 1336, 1341 (Fed. Cir. 2016). Here, the disclosure
`
`of the °818 Application is similar to the disclosure of the ’°742 patent. Just
`
`like the ’742 patent specification, the °818 Application contemplated
`
`embodiments ofan electronic cigarette in which the battery assembly and
`
`the atomizer assembly are in a housing that is completed when multiple
`
`shells are connected. In particular, the °818 Application discloses that the
`
`electronic cigarette includes a battery assembly connected to an atomizer
`
`assembly within shell (a), and a cigarette bottle assembly that fits with the
`
`atomizer assembly located in a detachable end of the shell. Ex. 1009, 18-19.
`
`The ’818 Application describes an embodiment where“the battery assembly
`
`and atomizer assembly are mutually connected and theninstalled inside the
`
`integrally formed shell (a) to form a onepiece part,” which is plugged into
`
`the cigarette bottle assembly contained within shell (b).
`
`/d. at 20.
`
`In accordance with claims 2 and 3 of the ’742 patent, the ’818
`
`Application discloses that “the battery assembly and the atomizer assembly
`
`are within a housing.” In describing the cigarette bottle assembly as
`
`including “a perforated componentforliquid storage (9) inside the shell.
`
`(b),” and “[o]ne end of cigarette holder shell (b) plugs into the shell (a),” the
`
`13
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`°818 Application also discloses “a liquid storage componentin the housing”
`
`and “a porous componentin contact with a liquid supply in the housing”as
`
`claims 2 and 3, respectively, also require. Moreover, as Patent Ownernotes,
`
`“there is no additional disclosure in the ’742 patent that is not in the 818
`
`application, which is necessary to provide written description support for the
`
`claim limitation, ‘a battery assembly and an atomizer assembly within a
`
`housing.’” Prelim. Resp. 15—16. Thus, we agree with Patent Ownerthat
`
`“the 818 application reasonably conveysto a person ofordinary skill in the
`
`art that the inventor was in possession of the claimed ‘a battery assembly
`
`and an atomizer assembly within a housing”and that “whatis claimed is
`
`disclosed in the text and figures of the ’818 application.” Jd. at 15 (citing
`
`Ex. 2001 F§ 32-36). Claims 2 and 3 only require that the battery assembly
`
`and the atomizer assembly are within a housing, and,as set forth above,
`
`“housing”is not limited to a one-piece shell. Upon review ofthe ’818
`
`Application’s disclosure, we are not persuadedthat the “a battery assembly
`
`and an atomizer assembly within a housing”limitation recited in the
`
`challenged claims lacks written description support in the ’818 Application.
`
`Petitioner also contends that the patentee broadenedthe disclosure,
`
`because the °937 Application was filed with a substitute specification that
`
`removedlimiting language from the ’818 Application. Pet. 44-46.
`
`According to Petitioner, “the Applicant submitted a substitute specification
`
`with substantial revisions, including numerousdeletions that were aimedat
`
`broadening the disclosure to encompassan electronic cigarette in which the
`
`battery assembly and the atomizer assembly are located in separate shells.”
`
`Id. at 44 (citing Ex. 1011, 7-37). We agree with Patent Ownerthat“the
`
`relevant inquiry is whether the ’818 application provides written description
`
`14
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`for the claim limitation ‘a battery assembly and an atomizer assembly within
`
`a housing.’ That analysis requires a comparison of the ’742 patent claims to
`
`the °818 application’s disclosure, not a comparison ofthe specifications.”
`
`Prelim. Resp. 32-33. As discussed above, Petitioner has not sufficiently
`
`persuadedusthat the °818 Application does not convey with reasonable
`
`clarity to those skilled in the art that applicant was in possession of the
`
`invention as ofthe filing date of the ’818 Application, specifically,that
`
`applicant was notin possession of the claimed “a battery assembly and an
`
`atomizer assembly within a housing.” Therefore, on the record before us,
`
`wedetermine that Petitioner fails to establish that the priority date of claims
`
`2 and 3 of the ’742 patentis no earlier than April 5, 2011.
`
`III. CONCLUSION
`
`Based on the argumentsin the Petition and Preliminary Response, and
`
`the evidence of record, we are not persuaded that the ’311 Publication is
`
`prior art to the 742 patent. Therefore, we determine that Petitioner has not
`
`demonstrated a reasonable likelihood that at least one of the challenged
`
`claims of the ’742 patent is unpatentable based on the asserted ground.
`
`IV. ORDER
`
`In consideration of the foregoing,it is hereby
`
`ORDEREDthatthe Petition is denied.
`
`15
`
`
`
`IPR2016-01532
`Patent 8,365,742 B2
`
`PETITIONER:
`
`Ralph J. Gabric
`Robert Mallin
`Yuezhong Feng
`BRINKS GILSON & LIONE
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
`
`PATENT OWNER:
`
`Michael J. Wise
`Joseph P. Hamilton
`PERKINS COIE LLP
`MWise@perkinscoie.com
`JHamilton@perkinscoie.com
`patentprocurement@perkinscoie.com
`
`16
`
`
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