Trials@uspto.gov
`571.272.7822
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` Paper No. 45
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` Entered: March 2, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`
`____________
`
`Case IPR2016-01692
`Patent 9,326,548 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`

`

`IPR2016-01692
`Patent 9,326,548 B2
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`
`I. INTRODUCTION
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`R.J. Reynolds Vapor Company (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1–14 of U.S. Patent
`
`No. 9,326,548 B2 (Ex. 1001, “the ’548 patent”). Paper 2 (“Pet.”). Fontem
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`Holdings 1 B.V. (“Patent Owner”) filed a Preliminary Response. Paper 7
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`(“Prelim. Resp.”). We instituted an inter partes review of claims 1–14 on
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`certain grounds of unpatentability alleged in the Petition. Paper 8 (“Dec.”).
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`After institution of trial, Patent Owner filed a Patent Owner Response.
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`Paper 19 (“PO Resp.”). Petitioner filed a corrected Reply. Paper 24
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`(“Reply”). An oral hearing was held on October 26, 2017. A transcript of
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`the hearing is included in the record. Paper 44 (“Tr.”).
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`We have jurisdiction under 35 U.S.C. § 6. This Final Written
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`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
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`For the reasons that follow, we determine that Petitioner has not established
`
`by a preponderance of the evidence that claims 1–14 of the ’548 patent are
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`unpatentable.
`
`A. Related Proceedings
`
`The parties indicate that the ’548 patent is asserted in Fontem
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`Ventures B.V. v. R.J. Reynolds Vapor Co., Civil Action No. 16-CV-1257
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`(M.D.N.C.). Pet. 3; Paper 6, 1.
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`B. The ’548 Patent
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`
`
`The ’548 patent, titled “Electronic Cigarette,” is directed to an
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`electronic cigarette having a battery assembly and an atomizer assembly
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`within a housing, with the battery assembly electrically connected to the
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`atomizer assembly. Ex. 1001, at [54], [57]. A liquid storage component is
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`in contact with a porous component of the atomizer assembly, and a heating
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`2
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`IPR2016-01692
`Patent 9,326,548 B2
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`wire is in an air flow path through a run-through hole. Id. at [57].
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`According to the ’548 patent, prior art devices had various disadvantages,
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`including low atomizing efficiency, being structurally complicated, and not
`
`providing ideal aerosol effects. Id. at 1:36–38.
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`Figure 1 of the ’548 patent is reproduced below:
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`
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`Figure 1 is a side section view of an electronic cigarette. Id. at 1:62.
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`Hollow, integrally-formed shell (a) includes a battery assembly, atomizer
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`assembly, and cigarette bottle assembly. Id. at 2:48–51. The battery
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`assembly connects to the atomizer assembly in shell (a), and the detachable
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`cigarette body assembly (which fits with the atomizer assembly) is located in
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`one end of shell (a). Id. at 2:51–55. The battery assembly includes
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`operating indicator 1, battery 3, electronic circuit board 4, and airflow
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`sensor 5. Id. at 2:57–60. The atomizer assembly is atomizer 8, which
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`includes a porous component and a heating rod. Id. at 3:25–27. The
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`cigarette bottle assembly includes hollow cigarette shell holder (b), and
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`perforated component for liquid storage 9. Id. at 4:2–4. Air channel (b1) is
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`located in the center on the surface of one end of cigarette shell holder (b),
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`and extends inward. Id. at 4:12–14.
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`3
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`IPR2016-01692
`Patent 9,326,548 B2
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`
`Figures 17 and 18 of the ’548 patent are reproduced below:
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`
`
`Figure 17 is a diagram of the axial structure of the atomizer in another
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`embodiment, and Figure 18 is a side section view of the atomizer shown in
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`Figure 17. Id. at 2:29–32. In this embodiment, the atomizer assembly
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`includes “a frame (82), the porous component (81) set on the frame (82), and
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`the heating wire (83) wound on the porous component (81).” Id. at 5:63–65.
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`As described in the ’548 patent, the “frame (82) has a run-through hole (821)
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`on it. The porous component (81) is wound with heating wire (83) in the
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`part that is on the side in the axial direction of the run-through hole (821).
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`One end of the porous component (81) fits with the cigarette bottle
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`assembly.” Id. at 5:65–6:2.
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`C. Challenged Claims
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`Petitioner challenges claims 1–14 of the ’548 patent. Of challenged
`
`claims 1–14, claims 1, 8, and 11 are independent. Claims 2–7 depend,
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`directly or indirectly, from claim 1. Claims 9 and 10 depend directly from
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`claim 8. Claims 12–14 depend directly from claim 11.
`
`Claim 1 is reproduced below:
`
`1. An electronic cigarette, comprising:
`a battery assembly having a cylindrical battery and an operating
`indicator;
`
`4
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`IPR2016-01692
`Patent 9,326,548 B2
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`
`an atomizer assembly in an elongated cylindrical housing, with
`the battery assembly electrically connected to the atomizer
`assembly, and with the cylindrical battery coaxial with the
`atomizer assembly;
`a liquid storage component in the housing;
`the atomizer assembly including a porous component set on a
`frame having a run-through hole;
`a heating wire coil electrically connected to the battery;
`an air flow path in the atomizer assembly parallel to a
`longitudinal axis of the housing, with the air flow path
`through the run-through hole to an outlet, with the heating
`wire coil wound on the porous component and in the air flow
`path and with the heating wire coil oriented perpendicular to
`the longitudinal axis; and
`the porous component in contact with the liquid storage
`component.
`
`Ex. 1001, 6:12–30.
`
`D.
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`Instituted Grounds of Unpatentability
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`We instituted inter partes review of claims 1–14 of the ’548 patent on
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`the following grounds:
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`References
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`Basis Claims Challenged
`
`Hon ’043,1 Whittemore,2 and
`Voges3
`Hon ’043, Whittemore,
`Voges, and Gehrer4
`
`§ 103
`
`1–10
`
`§ 103
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`11–14
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`Petitioner relies on the declarations of Dr. Robert H. Sturges (Ex. 1015;
`
`Ex. 1026; Ex. 1039). Patent Owner relies on the declarations of Richard
`
`Meyst (Ex. 2001; Ex. 2030).
`
`
`1 Chinese Patent No. CN 2719043 Y (Ex. 1002 and 1003 (English
`translation), “Hon ’043”).
`2 U.S. Patent No. 2,057,353 (Ex. 1004, “Whittemore”).
`3 U.S. Patent No. 5,894,841 (Ex. 1021, “Voges”).
`4 U.S. Patent No. 5,703,633 (Ex. 1023, “Gehrer”).
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`5
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`IPR2016-01692
`Patent 9,326,548 B2
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`
`A. Claim Construction
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`II. ANALYSIS
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`In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable constructions in light of
`
`the specification of the patent in which they appear. See 37 C.F.R.
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`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`
`(2016) (upholding the use of the broadest reasonable interpretation
`
`standard). Under the broadest reasonable construction standard, claim terms
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`are presumed to have their ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
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`2007). Only those terms which are in controversy need to be construed, and
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`only to the extent necessary to resolve the controversy. See Nidec Motor
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`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`
`Cir. 2017) (“we need only construe terms ‘that are in controversy, and only
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`to the extent necessary to resolve the controversy’”) (quoting Vivid Techs.,
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`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
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`Petitioner proposes that we construe the term “frame” to mean “rigid
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`structure,” and that we construe “porous component set on a frame having a
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`run-through hole” to mean that the porous component sits on the frame.
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`Pet. 15–17. Patent Owner proposes that we construe “set on” to mean “held
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`in place by.” PO Resp. 16.
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`In our Decision on Institution, we determined, based on the record at
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`the time, that no claim term required express construction. Dec. 8. Because
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`we decide this case on issues unrelated to any of the claim terms the parties
`
`ask us to construe, we need not construe them herein.
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`IPR2016-01692
`Patent 9,326,548 B2
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`B. Level of Ordinary Skill in the Art
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`Petitioner and Patent Owner each propose a particular level of
`
`ordinary skill in the art. Pet. 15; PO Resp. 15. In light of the evidence
`
`before us, we find that the references themselves represent the level of
`
`ordinary skill in the art, and that we need not explicate it further. See
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`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of
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`ordinary skill in the art usually is evidenced by the references themselves);
`
`In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the
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`Board of Patent Appeals and Interferences did not err in concluding that the
`
`level of ordinary skill in the art was best determined by the references of
`
`record).
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`C. Principles of Law
`
`A claim is unpatentable under 35 U.S.C. § 1035 if the differences
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`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
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of ordinary skill in the art; and (4) objective evidence of
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`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). A
`
`
`5 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’548 patent has an
`effective filing date before the effective date of the applicable AIA
`amendments, throughout this Decision we refer to the pre-AIA versions of
`35 U.S.C. § 103.
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`7
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`IPR2016-01692
`Patent 9,326,548 B2
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`decision on the ground of obviousness must include “articulated reasoning
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`with some rational underpinning to support the legal conclusion of
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`obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The
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`obviousness analysis “should be made explicit” and it “can be important to
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`identify a reason that would have prompted a person of ordinary skill in the
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`relevant field to combine the elements in the way the claimed new invention
`
`does.” KSR, 550 U.S. at 418. To prevail on its patentability challenge,
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`Petitioner must establish facts supporting its challenge by a preponderance
`
`of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). We analyze the
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`asserted grounds of unpatentability in accordance with the above-stated
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`principles.
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`D. Overview of the Prior Art
`
`1. Hon ’043
`
`Hon ’043 is directed to an electronic atomization cigarette. Ex. 1003,
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`5. Figure 1 of Hon ’043 is reproduced below:
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`Figure 1 is a schematic diagram of the structure of an electronic cigarette
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`that includes air inlet 4, normal pressure cavity 5, sensor 6, vapor-liquid
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`separator 7, atomizer 9, liquid-supplying bottle 11, and mouthpiece 15
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`
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`within shell 14. Id. at 8–9.
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`Figure 6 of Hon ’043 is reproduced below:
`
`8
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`

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`IPR2016-01692
`Patent 9,326,548 B2
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`
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`Figure 6 is a structural diagram of an atomizer, which includes atomization
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`cavity 10, long stream ejection hole 24, atomization cavity wall 25, heating
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`element 26, porous body 27, and bulge 36. Id. at 9. Hon ’043 states that
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`“atomization cavity wall 25 is surrounded with the porous body 27, which
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`can be made of foam nickel, stainless steel fiber felt, high molecule polymer
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`foam and foam ceramic,” and that “atomization cavity wall 25 can be made
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`of aluminum oxide or ceramic.” Id.
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`Hon ’043 teaches that “[w]hen a smoker smokes, the mouthpiece 15 is
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`under negative pressure, the air pressure difference or high speed stream
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`between the normal pressure cavity 5 and the negative pressure cavity 8 will
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`cause the sensor 6 to output an actuating signal,” which causes the cigarette
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`to begin operating. Id. at 10. Air enters normal pressure cavity 5 through air
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`inlet 4, proceeds through the through hole in vapor-liquid separator 7, and
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`flows into atomization cavity 10 in atomizer 9. Id. “The high speed stream
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`passing through the ejection hole drives the nicotine solution in the porous
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`body 27 to eject into the atomization cavity 10 in the form of droplet,” where
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`the nicotine solution “is subjected to the ultrasonic atomization by the first
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`piezoelectric element 23 and is further atomized by the heating element 26.”
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`9
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`IPR2016-01692
`Patent 9,326,548 B2
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`Id. at 10–11. After the atomization, large-diameter droplets stick to the wall
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`and are reabsorbed by porous body 27 via overflow hole 29, and small-
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`diameter droplets float in stream and form aerosols that are sucked out via
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`aerosol passage 12, gas vent 17, and mouthpiece 15. Id. at 11.
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`2. Whittemore
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`Whittemore is directed to a vaporizing unit for a therapeutic
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`apparatus. Ex. 1004, 1:1–2. Figure 2 of Whittemore is reproduced below:
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`
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`Figure 2 is an enlarged sectional view of a therapeutic apparatus equipped
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`with a vaporizing unit as taught by Whittemore. Id. at 1:15–16. Vaporizing
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`vessel A is a hollow glass container that holds liquid medicament x. Id.
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`at 1:19–23. Conductors 1 and 2 are combined with heating element 3 such
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`that, when conductors 1 and 2 are energized, heating element 3 is heated. Id.
`
`at 1:24–27. Wick D is combined with heating element 3 so that a portion of
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`wick D is always in contact, or in approximate contact, with heating
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`element 3, and a portion of wick D is also in contact with liquid
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`medicament x. Id. at 1:53–2:5.
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`10
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`

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`IPR2016-01692
`Patent 9,326,548 B2
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`According to Whittemore, medicament x is carried on wick D by
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`capillary action to a point where it will be vaporized by the heat from
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`heating element 3. Id. at 2:5–8. Whittemore states that “wick D consists of
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`a thread, string or [strand] of some suitable wick material doubled
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`intermediate its ends so as to form a substantially inverted V-shaped device
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`whose side portions are encased in and surrounded by coiled or looped
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`portions” of heating element 3, with “the lower ends or free ends of the side
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`pieces of the wick projecting downwardly into the medicament and
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`terminating at or in close proximity to the closed bottom 6 of the vessel.” Id.
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`at 2:9–18.
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`3. Voges
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`Voges discloses an electronic cigarette substitute having a “cigarette-
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`shaped hollow tubular body 1 comprising connected body parts 2, 3,”
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`container 10 holding nicotine in a suitable solvent, droplet ejection device
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`14, which can be “of the kind used in a bubble jet printer,” and a “hollow
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`cylindrical battery 17.” Ex. 1021, 5:48–6:1. Voges discloses that the
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`droplet ejection device may be a piezoelectric device of the kind used in ink
`
`jet printing or a thermal “bubble jet” device of the kind used in ink jet
`
`printing. Id. at 3:62–4:5.
`
`4. Gehrer
`
`Gehrer is directed to an ink container with a capillary action member
`
`for use in ink jet printers. Ex. 1023, at [54]. Gehrer’s container includes ink
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`reservoir 8, capillary body 18 connected to porous wick 37, and porous
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`coupling member 20A at the liquid withdrawal port connected to porous
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`wick 38. Id. at 6:14, 8:19–26, Fig. 3. Porous wicks 37 and 38, capillary
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`11
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`IPR2016-01692
`Patent 9,326,548 B2
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`body 18, and coupling member 20A are made from wicking materials such
`
`as fibers. Id. at 2:4–7, 3:7–15, 6:33–36, 10:1–4.
`
`E. Analysis
`
`Petitioner contends that claims 1–14 would have been obvious under
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`35 U.S.C. § 103 over the combination of “Hon ’043 and Whittemore, and, if
`
`necessary, Voges and/or Gehrer.” Pet. 24–77. Petitioner presents arguments
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`and claim charts for each of the challenged independent claims 1, 8, and 11,
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`as well as for the challenged dependent claims. Id. at 34–77.
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`More particularly, Petitioner contends that “Hon ‘043 discloses an
`
`electronic cigarette with every element of claims 1–14 of the ‘548 patent,
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`except that Hon ‘043’s heating wire coil 26 is not wound on the porous
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`body 27.” Pet. 24. Petitioner further contends that “Whittemore is directed
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`to a vaporizing unit with a heating wire coil 3 wound around a porous
`
`wick D.” Id. Petitioner argues that it would have been obvious “to
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`incorporate Whittemore’s wick D into the electronic cigarette of Hon ‘043
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`for transporting liquid via capillary action from the porous body 27 to the
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`heating coil 26” as demonstrated in Petitioner’s annotated Figure 6 from
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`Hon ’043, reproduced below:
`
`
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`12
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`IPR2016-01692
`Patent 9,326,548 B2
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`Id. at 25–26 (citing Ex. 1015 ¶¶ 55–69). Petitioner further argues that it
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`would have been obvious to make the porous wick from fiber material,
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`because Whittemore discloses that the wick can be “made from any suitable
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`material” (citing Ex. 1004, 1:54–2:6), and one of ordinary skill in the art
`
`would have considered using Gehrer’s “inexpensive capillary wicking
`
`materials [such as] fibers, especially linear fiber materials” (citing Ex. 1023,
`
`2:4–7) as a matter of routine design choice. Pet. 26. Petitioner relies on
`
`Voges to support its argument that one of ordinary skill in the art would
`
`have consulted the ink jet printing art. Id. at 26–27 n.4.
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`1. Thermal Efficiency Arguments
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`Petitioner argues that one of ordinary skill in the art readily would
`
`have appreciated that Whittemore’s porous wick/heating coil wire
`
`configuration provides more efficient heating than Hon ’043’s configuration,
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`and that one of ordinary skill in the art “would have immediately appreciated
`
`the thermal inefficiencies associated with the configuration of Hon ‘043.”
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`Pet. 30–31 (citing Ex. 1015 ¶¶ 62–66).
`
`Patent Owner argues that “[t]hermal efficiency would not have
`
`motivated the combination” because “Hon ’043 discloses direct contact of
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`liquid with a heating element such that heating is by conduction, not
`
`convection,” and thus, Petitioner’s “purported motivation to improve the
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`thermal efficiency of Hon ’043 by including direct liquid contact is simply
`
`not present.” PO Resp. 21 (citing Ex. 2030 ¶¶ 90–112). Patent Owner
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`argues: “Atomization in Hon ’043 begins with liquid being forced from
`
`porous body 27 through the ejection holes into the atomization cavity when
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`a user inhales by a high speed stream of air, which converts the liquid into
`
`small droplets.” Id. at 22 (citing Ex. 1003, 10–11; Ex. 2018, 68:3–6). The
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`13
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`IPR2016-01692
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`ejection holes of Hon ’043, argues Patent Owner, “form a simple ‘plain-
`
`orifice atomizer’” requiring no electricity or thermal energy. Id. (citing
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`Ex. 2030 ¶¶ 37, 107; Ex. 2024, 22–47). Patent Owner further argues that
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`Hon ’043’s teachings of (a) atomizing liquid by ejection from ejection holes
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`and (b) (optionally) further atomizing the droplets by the heater are both
`
`more thermally efficient than Whittemore, because step (a) requires no heat
`
`and no electricity, and step (b) only heats pre-formed droplets of liquid,
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`whereas Whittemore heats the “bulk” liquid without the prior benefit of
`
`forming droplets via the ejection holes. Id. at 22–23.
`
`Petitioner replies that Patent Owner “inflates Hon 043’s purported
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`thermal efficiency” and “incorrectly portrays Hon 043.” Reply 6. Petitioner
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`argues that the ejection holes are not atomizers, and that atomization occurs
`
`after the liquid droplets are ejected from holes 24. Id. (citing Ex. 1039
`
`¶¶ 37, 59–64).
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`As a preliminary matter, we are not persuaded that Petitioner
`
`successfully makes its point that the ejection holes of Hon ’043 do not
`
`atomize. Patent Owner presents a dictionary definition of “atomize”—
`
`“convert (a substance) into very fine particles or droplets.” PO Resp. 8
`
`(citing Ex. 2020, 101); see also Ex. 1039 ¶ 59 (Petitioner’s expert referring
`
`to the same definition). In Hon ’043, the “high speed stream passing
`
`through the ejection hole” ejects nicotine solution into the atomization cavity
`
`“in the form of droplet[s]” which are then subject to “ultrasonic atomization”
`
`by piezoelectric element 23 and are “further atomized” by heating
`
`element 26. Ex. 1003, 10–11. Mr. Meyst testifies that the ejection holes are
`
`one of the ways in which Hon ’043 converts the liquid into “small droplets”
`
`by a high speed stream of air passing through ejection holes 24 or 30.
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`14
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`IPR2016-01692
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`Ex. 2030 ¶ 37 (citing Ex. 2024, 22–47). Petitioner does not persuasively
`
`demonstrate that the liquid coming out of the ejection holes of Hon ’043 is
`
`converted only into droplets so large that they disqualify the ejection holes
`
`from “atomizer” status. In support of its assertion that “ejection holes are
`
`not atomizers,” Petitioner relies on the testimony of Dr. Sturges that a person
`
`of ordinary skill in the art would have understood from Hon ’043 that “large
`
`diameter droplets (relative to Hon 043’s small diameter droplets that float in
`
`stream and form an aerosol) are emitted from Hon 043’s ejection holes and
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`then atomized into ‘small diameter droplets’ by at least one of heating
`
`element 26 or second piezoelectric element 35, which are then carried away
`
`as an aerosol to be inhaled by the user.” Ex. 1039 ¶ 37. However, Dr.
`
`Sturges provides no additional support for this assertion, and concedes that
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`Hon ’043 “does not disclose the size of droplets after ejection.” Id. at ¶¶ 37,
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`59; see Ex. 1003, 10–11. Further, in response to the question “So you would
`
`believe that most of the droplets coming out of the ejection holes [of Hon
`
`’043] would be small droplets?” Dr. Sturges replied, “Yes.” Ex. 2018, 68:3–
`
`6. Dr. Sturges also discusses a situation in which “even if some of the
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`droplets emitted by Hon 043’s ejection holes were sufficiently small to be
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`considered atomized . . . .” Ex. 1039 ¶ 37. Thus, we are more persuaded by
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`Patent Owner’s arguments and Mr. Meyst’s testimony, and unpersuaded by
`
`Petitioner’s argument that the ejection holes of Hon ’043 do not function as
`
`atomizers.
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`Overall, Petitioner proposes a combination of references that purports
`
`to show the claimed invention would have been obvious on the basis of
`
`thermal efficiency. In particular, Petitioner argues that one of ordinary skill
`
`in the art would have readily appreciated that “the porous wick/heating coil
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`15
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`IPR2016-01692
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`wire configuration of Whittemore provides more efficient heating than the
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`arrangement disclosed in Hon ‘043” and that “the Hon ‘043 configuration is
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`thermally inefficient.” Pet. 30. Thus, “to compensate for the poor thermal
`
`transfer properties of air,” Petitioner argues, “one of ordinary skill in the art
`
`“would have appreciated that the heating coil wire 26 would need to be at
`
`relatively higher temperatures to vaporize the nicotine droplets than would
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`be required with respect to nicotine solution in direct contact with the
`
`heating element.” Id. at 31. According to Petitioner, in the Whittemore
`
`configuration, “the heating element can be run at lower temperatures” such
`
`that “less energy is required to vaporize the liquid.” Id. at 32.
`
`Patent Owner notes that Petitioner’s arguments regarding the alleged
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`thermal inefficiencies of the Hon ’043 atomizer are based on Dr. Sturges’s
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`hypothesis “that a ‘large majority of the spray would . . . never touch the
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`heating wire,’” noting that Dr. Sturges assumes an insignificant amount of
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`liquid would contact the heating element based on the dimensions of the
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`figures in Hon ’043. PO Resp. 23 (citing Ex. 2015 ¶ 62 n.2). Petitioner,
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`however, does not provide adequate explanation as to why a person having
`
`ordinary skill in the art would think that to be the case. In reaching that
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`determination, we credit Mr. Meyst’s testimony over that of Dr. Sturges.
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`For example, Mr. Meyst identified a number of factors that would affect the
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`determination of the percentage of entrained droplets that contact the wire in
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`the Hon ’043 atomizer, stating that,
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`[w]hile it is true that some liquid droplets will not touch the
`heater, there is no way to know what percentage will come into
`direct contact without knowing a number of other factors, such
`as the heater’s dimensions, the cavity’s dimensions, the size of
`the ejection holes, and the spray pattern. A person of ordinary
`skill would have understood these factors, and would have made
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`Patent 9,326,548 B2
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`selections that would result in most of the liquid coming into
`direct contact with the heating element. For example, Hon ’043
`discloses that the ejection holes may be “long” or [“]short,” may
`employ a “slot structure” or a “circular hole structure” ranging
`from 0.1 mm to 1.3 mm, and that “single” or “multiple” holes
`may be used. A skilled person could have calculated or used
`commercially available Computational Fluid Dynamics software
`such as FLUENT to model the path of droplets ejected from the
`ejection holes and focus them at the heating element.
`
`Ex. 2030 ¶ 99 (internal citations omitted). We are unable to discern, from
`
`any of the portions of Dr. Sturges’s testimony cited by Petitioner, any
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`calculations to determine how factors such as the speed and pressure of the
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`airstream, and the rate of change of pressure of the airstream as it travels
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`through the ejection holes and into the atomization chamber, would affect
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`the dispersion of the droplets ejected from the ejection holes towards the
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`heating wire in Hon ’043. Reply 7–8 (citing Ex. 1026 ¶¶ 7–11; Ex. 1039
`
`¶ 52). Dr. Sturges also presents a slip stream example to argue that the vast
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`majority of the flow slips past the heating wire (Ex. 1026 ¶ 10), but Patent
`
`Owner argues that this example is not applicable to the ejected liquid
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`droplets disclosed in Hon ’043 (citing Ex. 2030 ¶¶102–106), and that Dr.
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`Sturges confirmed this in his deposition (citing Ex. 2031, 106:14–107:10).
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`PO Resp. 26. In light of the variables that can affect how the droplets could
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`disperse upon ejection from the ejection holes, Petitioner has not explained
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`adequately why a person having ordinary skill in the art would understand
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`that only a small amount of droplets would contact Hon ’043’s heating wire
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`and that the atomization described in Hon ’043 is inefficient.
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`Moreover, Petitioner and Dr. Sturges do not identify objective
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`evidence to support Dr. Sturges’s conclusion that one of ordinary skill would
`
`have recognized that the thermal efficiency of Hon ’043 needed
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`improvement. As an initial matter, we note that Petitioner does not direct us
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`to, nor do we discern, any statements in Hon ’043 or Whittemore with
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`respect to the thermal efficiency—or thermal inefficiency—of atomization
`
`within the described articles. Dr. Sturges identifies one page from a
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`thermodynamics textbook listing heat coefficients for convection and
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`conduction (Ex. 1015 ¶ 63 (citing Ex. 1016, 3)), but does not identify any
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`other evidence in the prior art or otherwise that identifies thermal or
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`atomization inefficiency as a generally known problem in the field, or that
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`specifically discusses the thermal efficiency of atomization within electronic
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`cigarettes. While it is true that, when a claimed invention involves a
`
`combination of elements, “any need or problem known in the relevant field
`
`of endeavor at the time of the invention can provide a reason to combine,”
`
`that need or problem must nevertheless be identified sufficiently. Tyco
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`Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 977 (Fed.
`
`Cir. 2014).
`
`Petitioner’s arguments and Dr. Sturges’s testimony with respect to the
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`modification of Hon ’043 leave an analytical gap that does not sufficiently
`
`apprise us of why one of ordinary skill in the art would have modified
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`Hon ’043 with Whittemore’s wire-wrapped wick. Petitioner’s and
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`Dr. Sturges’s assertions that a person having ordinary skill in the art would
`
`have been motivated to modify Hon ’043 based on thermodynamics
`
`principles do not adequately address why a person having ordinary skill
`
`would have wanted to provide more efficient heating in the Hon ’043
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`electronic cigarette.
`
`In an obviousness determination, we must avoid analyzing the prior
`
`art through the prism of hindsight. Instead, we must “cast the mind back to
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`the time the invention was made” and “occupy the mind of one skilled in the
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`art who is presented with only the references, and who is normally guided by
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`then-accepted wisdom in the art.” W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
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`721 F.2d 1540, 1553 (Fed. Cir. 1983); see also Kinetic Concepts, Inc. v.
`
`Smith & Nephew, Inc., 688 F.3d 1342, 1368 (Fed. Cir. 2012) (quoting
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`Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008)
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`(“We must still be careful not to allow hindsight reconstruction of the
`
`references to reach the claimed invention without any explanation as to how
`
`or why the references would be combined to produce the claimed
`
`invention.”)). Here, we interpret Petitioner’s position as an attempt to imbue
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`one of ordinary skill in the art with knowledge of the claimed invention,
`
`without adequately demonstrating that a prior art reference, references of
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`record, or other evidence conveys or suggests that knowledge. Petitioner’s
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`proposed rationale relies upon general and conclusory statements from Dr.
`
`Sturges regarding thermodynamics that are not sufficiently supported in the
`
`record, and instead appear to be based on impermissible use of hindsight
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`after review of the ’548 patent, rather than on a supported reason to modify
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`the heating configuration in Hon ’043’s atomizer. See KSR, 550 U.S. at 421
`
`(stating that the fact finder must be aware “of the distortion caused by
`
`hindsight bias and must be cautious of arguments reliant upon ex post
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`reasoning”). In order to establish a motivation to combine the references,
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`Petitioner needed to explain sufficiently what would have led a person of
`
`ordinary skill in the art at the time of the invention to consider modifying the
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`Hon ’043 atomizer to include a “heating wire coil wound on” the porous
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`component, on the first section of the porous component, or on the fiber
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`member as recited in claims 1–14, and Petitioner failed to provide such an
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`explanation.
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`2. Additional Motivation to Combine Arguments
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`Petitioner presents five arguments based on the “numerous Patent
`
`Office and Supreme Court endorsed rationales for Petitioner’s proposed
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`combination.” Pet. 27–29 (citing MPEP § 2143(I)(A)–(E); KSR, 550 U.S.
`
`at 416).
`
`Patent Owner argues that Petitioner’s five arguments for combining
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`Hon ’043 with Whittemore simply list “unsupported conclusions with scarce
`
`discussion of how each rationale applies to the prior art and the claims.” PO
`
`Resp. 31. We agree with Patent Owner that Petitioner’s discussion is scarce,
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`and the paucity of the argument alone is reason for us to give less weight to
`
`these five arguments. Petitioner cites to one paragraph of Dr. Sturges’s
`
`testimony, respectively, to support each of the five arguments; each
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`corresponding paragraph of Dr. Sturges’s testimony also is characterized by
`
`brevity, as well as being conclusory and duplicative of Petitioner’s
`
`arguments. See Ex. 1015 ¶¶ 57–61. Therefore, we also give little weight to
`
`the testimony supporting Petitioner’s five arguments. Simply because a
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`rationale is “Patent Office and Supreme Court endorsed” does not mean that
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`endorsement necessarily extends to the combination proposed by Petitioner.
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`Petitioner maintains the burden of demonstrating that one of ordinary skill in
`
`the art would have been motivated to combine the references as proposed.
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`We address each of Petitioner’s five arguments in turn, below.
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`a. MPEP § 2143(I)(A)
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`Petitioner argues that the proposed combination is the combinati