UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
`
`
`In the Matter of
`CERTAIN VAPORIZER DEVICES, CARTRIDGES
`USED THEREWITH, AND COMPONENTS
`THEREOF
`
`
`
`
`Inv. No. 337-TA-1368
`
`ORDER NO. 19:
`
`
`
`CONSTRUING DISPUTED CLAIM TERMS
`(March 19, 2024)
`
`I.
`
`BACKGROUND
`
`The Commission instituted this investigation to determine whether certain vaporizer
`
`devices, cartridges used therewith, and components thereof infringe certain claims of U.S. Patent
`
`No. RE49,114; U.S. Patent No. 10,130,123; U.S. Patent No. 10,709,173; U.S. Patent
`
`No. 11,134,722; and U.S. Patent No. 11,606,981. 88 Fed. Reg. 52207 (Aug. 7, 2023). The
`
`complainants are Juul Labs, Inc and VMR Products LLC, collectively JLI. The respondents are
`
`NJOY, LLC, NJOY Holdings, Inc., Altria Group, Inc., Altria Group Distribution Company, and
`
`Altria Client Services LLC, collectively NJOY. The Commission investigative staff is a party to
`
`the investigation.
`
`The parties filed a joint claim construction chart identifying agreed and disputed claim
`
`terms, Joint Chart (EDIS Doc. ID 808018), and filed claim construction briefs. JLI Br. (EDIS Doc.
`
`ID 808809); NJOY Br. (EDIS Doc. ID 808792); Staff Br. (EDIS Doc. ID 808742); JLI Reply
`
`(EDIS Doc. ID 809820); NJOY Reply (EDIS Doc. ID 809816); and Staff Reply (EDIS Doc.
`
`ID 809764). The private parties submitted expert declarations with their initial claim construction
`
`briefs. JLI Br., CMX-002 (Alarcon Decl.) and CMX-0005 (Collins Decl.); and NJOY Br., RMX-
`
`

`

`0004 (Janet Decl.). A claim construction hearing was held. 12/18/2023 Tr. (EDIS Doc.
`
`ID 810933). The private parties filed the demonstrative exhibits they used at the claim construction
`
`hearing. CDMX-0001 (JLI) (EDIS Doc. ID 811385); and RDMX-0001 (NJOY) (EDIS Doc.
`
`ID 811137). After the hearing, the parties filed an amended joint chart of agreed and disputed
`
`terms. Amended Joint Chart (EDIS Doc. ID 810957).
`
`JLI subsequently terminated certain claims from the investigation. Motion No. 1368-011
`
`(EDIS Doc. ID 815544); and Order No. 18 (Mar. 6, 2024) (EDIS Doc. ID 815605). This order
`
`addresses the asserted claims after that termination.
`
`II.
`
`RELEVANT LAW
`
`It is a bedrock principle of patent law that the claims of a patent define the invention to
`
`which the patentee is entitled the right to exclude. Phillips v. AWH Corp., 415 F.3d 1303, 1312
`
`(Fed. Cir. 2005). “[T]here is no magic formula or catechism for conducting claim construction.”
`
`Id. at 1324. Instead, weight may be attached to appropriate sources “in light of the statutes and
`
`policies that inform patent law.” Id.
`
`The terms of a claim are generally given their ordinary and customary meaning, which is
`
`the meaning that the term would have to one of skill in the art at the time of the invention. Id. at
`
`1312–13. The ordinary meaning of a claim term is its meaning to one of skill in the art after reading
`
`the entire patent. Id. at 1321. “There are only two exceptions to this general rule: 1) when a
`
`patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows
`
`the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony
`
`Computer Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`The patent specification “is always highly relevant to the claim construction analysis.
`
`Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” Vitronics
`
`Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`
`2
`
`

`

`In addition to the specification, a court “should also consider the patent’s prosecution
`
`history, if it is in evidence.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir.
`
`1995), aff’d, 517 U.S. 370 (1996). The prosecution history, which is intrinsic evidence, is “the
`
`complete record of the proceedings before the PTO and includes the prior art cited during the
`
`examination of the patent.” Phillips, 415 F.3d at 1317. “[T]he prosecution history can often inform
`
`the meaning of the claim language by demonstrating how the inventor understood the invention
`
`and whether the inventor limited the invention in the course of prosecution, making the claim scope
`
`narrower than it would otherwise be.” Id. “[B]ecause the prosecution history represents an ongoing
`
`negotiation between the PTO and the applicant, rather than the final product of that negotiation, it
`
`often lacks the clarity of the specification and thus is less useful for claim construction purposes.”
`
`Id.
`
`In some situations, a “court will need to look beyond the patent’s intrinsic evidence and to
`
`consult extrinsic evidence in order to understand, for example, the background science or the
`
`meaning of a term in the relevant art during the relevant time period.” Teva Pharmaceuticals USA,
`
`Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). Extrinsic evidence is “all evidence external to the
`
`patent and prosecution history, including expert and inventor testimony, dictionaries, and learned
`
`treatises.” Markman, 52 F.3d at 980.
`
`While expert testimony can be useful “to ensure that the court’s understanding of the
`
`technical aspects of the patent is consistent with that of a person of skill in the art,” such testimony
`
`is “generated at the time of and for the purpose of litigation and thus can suffer from bias that is
`
`not present in intrinsic evidence.” Phillips, 415 F.3d at 1318. “The effect of that bias can be
`
`exacerbated if the expert is not one of skill in the relevant art or if the expert’s opinion is offered
`
`in a form that is not subject to cross-examination.” Id. Further, while extrinsic evidence may be
`
`3
`
`

`

`useful, it is less reliable than intrinsic evidence, and its consideration “is unlikely to result in a
`
`reliable interpretation of patent claim scope unless considered in the context of the intrinsic
`
`evidence.” Id. at 1319. Where the intrinsic record unambiguously describes the scope of the
`
`patented invention, reliance on extrinsic evidence is improper. See Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1308 (Fed. Cir. 1999) (citing Vitronics, 90 F.3d at 1583).
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`JLI contends that for all asserted patents, one of ordinary skill in the art:
`
`would have had a B.S. in mechanical engineering, electrical engineering, or an
`equivalent degree, and either at least two years of experience designing electro-
`mechanical consumer products or an advanced degree in mechanical engineering,
`electrical engineering, or an equivalent field.
`
`JLI Br. at 3 (citing Alarcon Decl. ¶ 26 and Collins Decl. ¶ 25).
`
`NJOY does not address the level of ordinary skill in its briefs. See generally NJOY Br.;
`
`and NJOY Reply. The Staff contends that one of ordinary skill in the art would have “a bachelor’s
`
`degree in mechanical engineering, electrical engineering, chemistry, physics, or a related field, and
`
`three to four years of industry experience.” Staff Br. at 2–3.
`
`The proposals of JLI and the Staff do not appear to materially differ. Nor does any party
`
`contend that the level of ordinary skill in the art affects any of the claim construction issues. For
`
`purposes of claim construction, I adopt JLI’s proposal.
`
`IV. AGREED CONSTRUCTION
`
`The parties agree on the following construction:
`
`Claim Term and Asserted Claims
`sealably separated
`
`’114 patent, claims 43 and 44
`
`Agreed Construction
`separated by a barrier to prevent flooding
`while also allowing liquid to pass from the
`liquid reservoir to the atomizing chamber
`by capillary action of the wick
`
`4
`
`

`

` Amended Joint Chart at 2.
`
`For purposes of this investigation, the agreed construction is adopted.
`
`V.
`
`CONSTRUCTION OF DISPUTED CLAIM TERMS
`
`The parties’ disputed constructions are addressed below.
`
`A.
`
`The ’114 Patent
`
`1.
`
`The ’114 Patent Specification
`
`The ’114 patent is a reissue of U.S. Patent No. 9,596,887, which issued on March 21, 2017,
`
`and is titled “Electronic Cigarette with Liquid Reservoir.” The reissue application was filed on
`
`March 20, 2019, within the two-year window for broadening reissue claims. 35 U.S.C. § 251(d).
`
`The specification states that the “present invention relates to electronic cigarettes” and in particular
`
`to “an electronic cigarette with an internal liquid reservoir.” ’114 patent at 1:15–17. The
`
`specification also states that the “present invention teaches an electronic cigarette apparatus
`
`including an elongated housing that has a mouthpiece with an aerosol outlet, and an atomizer
`
`disposed within an atomizing chamber.” Id. at 1:58–61.
`
`According to the specification, “[t]he atomizer selectively generates an aerosol of the liquid
`
`in response to suction pressure at the aerosol outlet. The atomizing chamber has an air inlet, an
`
`atomizer outlet coupled to the aerosol outlet, and a first wick aperture. A liquid reservoir is
`
`disposed within the elongated housing, which is sealably separated from the atomizing chamber.
`
`A wick disposed through the first wick aperture between the liquid reservoir and the atomizing
`
`chamber and it is configured to transfer the liquid by capillarity from the liquid reservoir to the
`
`atomizer.” Id. at 1:61–2:3.
`
`The ’114 patent describes features of specific embodiments, including one in which “the
`
`atomizer has a tubular form defining an open central passage” and a “refinement to this
`
`embodiment” in which “the wick passes through the open central passage.” Id. at 2:19–22. In
`
`5
`
`

`

`another “specific embodiment,” “the atomizing chamber further includes a second wick aperture,
`
`and the apparatus is arranged such that a first end of the wick passes through the first wick aperture
`
`and a second end of the wick passes through the second wick aperture.” Id. at 2:23–27.
`
`The ’114 patent specification also states:
`
`The present invention advances the art of electronic cigarettes by teaching an
`electronic cigarette that provides a liquid reservoir, which effectively delivers
`liquid at the requisite rates from the reservoir to an atomizer in a [sic] open
`atomizing chamber. This arrangement enables production of aerosol of the liquid
`at desired rates of atomization without excessive liquid transfer during periods of
`non-use. This function is enabled though utilization of a wick aperture through the
`atomizing chamber and a wick disposed between the liquid reservoir and the
`atomizer. The wick enables the transfer of liquid by capillarity in a controlled
`manner without flooding the open atomization chamber.
`
`Id. at 4:1–14.
`
`The specification further discloses that “[i]n a specific embodiment of the foregoing
`
`apparatus, the wick is fabricated as a bundle of heat resistant fibers” and that in a “refinement to
`
`this embodiment, the bundle of heat resistant fibers is fiberglass,” while in another “refinement,”
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`“the bundle of heat resistant fibers is fabricated from a material selected from; aramid,
`
`fluorocarbon, sulfide, melamine, polyimide, carbon, and glass.” Id. at 2:28–34.
`
`2.
`
`The Disputed Terms of the ’114 Patent
`
`a) Wick
`
`The parties propose:
`
`Term and
`Asserted Claims
`wick
`
`claims 43 and 44
`
`Amended Joint Chart at 2.
`
`JLI’s Construction
`
`Plain and ordinary meaning,
`e.g., any material through which
`liquid may be drawn via
`capillary action
`
`NJOY and Staff’s
`Construction
`Fibrous bundle
`
`6
`
`

`

`The parties dispute whether the term “wick” in the ’114 patent should be construed as “any
`
`material through which liquid may be drawn by capillary action,” as JLI proposes, or whether the
`
`term should be construed as “fibrous bundle,” as NJOY and the Staff propose.
`
`JLI contends that NJOY and the Staff seek to improperly limit the claimed wick to a
`
`specific embodiment, while the specification describes the wick functionally as a material that
`
`draws liquid by capillary action. JLI Br. at 5–6. NJOY contends that “the specification consistently
`
`describes a wick as a fibrous bundle (or a ‘bundle of fibers’), and exclusively depicts the wick as
`
`a fibrous bundle in the drawings.” NJOY Br. at 5. The Staff points to disclosure that “[t]he wick
`
`is a fibrous bundle” as an “express definition of ‘wick’ in the specification.” Staff Br. at 12, citing
`
`’114 patent at 7:44–48; and Staff Br. at 14.
`
`Both NJOY and the Staff point to figures in the patent showing wick 37. Fig. 7 shows:
`
`
`
`’114 patent at Fig. 7; NJOY Br. at 6; and Staff Br. at 12–13 (pointing to Figs. 8–10 and identifying
`
`disclosure with respect to Figs. 11a–11d). NJOY contends that “[a] wick 37 is depicted in Figures
`
`7, 8, 9, 10, and 11d, and in each figure, the ‘wick 37’ is shown as a bundle of fibers. No other
`
`embodiments of a wick are depicted or described.” NJOY Br. at 5-6.
`
`Claims 43 and 44 both recite “a wick in contact with the atomization liquid in the liquid
`
`reservoir through the first wick aperture and the second wick aperture, the wick disposed between
`
`7
`
`

`

`the liquid reservoir and the atomizer.” Nothing in the language of the claims requires (or suggests)
`
`that the “wick” is limited to any particular structure. The question, therefore, is whether the
`
`specification or prosecution history support that the inventor specifically defined wick as a fibrous
`
`bundle.
`
`NJOY and the Staff correctly note that the specification states that “the wick is a fibrous
`
`bundle” and lists example materials of such a wick. Staff Br. at 12 (citing ’114 patent at 7:44–48);
`
`see also NJOY Br. at 5–6. The specification does so, however, in describing Figs. 11a through
`
`11d, which are described as various views of “an illustrative embodiment of the present invention.”
`
`’114 patent at 7:28–32. The same is true with respect to Figs. 7, 9, and 10, which illustrate the
`
`wick 37 similar to what is illustrated in Fig. 11d, and which are each also described as illustrative
`
`embodiments. Id. at 6:3–5, 6:66–7:3, 3:1–3 and 3:7–12; see NJOY Br. at 6. Fig. 8, to the extent it
`
`shows the structure of the wick, is also described as an “illustrative embodiment.” Id. at 6:46–47
`
`The claims of a patent will not be read restrictively unless the patentee has demonstrated a
`
`clear intention to limit the claim scope using “words or expressions of manifest exclusion or
`
`restriction.” Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004), quoting
`
`Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002). There is no clear
`
`intent here to limit the scope of the claimed “wick.” The specification does not describe the
`
`invention as limited to the wick being a fibrous bundle. Hill-Rom Services, Inc. v. Stryker Corp.,
`
`755 F.3d 1367, 1372 (Fed. Cir. 2014). Instead, the specification states that the figures depicting
`
`the wick as a fibrous bundle are illustrative embodiments of the invention. Id. at 1373.
`
`The Staff further argues that the wick, as described and shown in Figs. 8–10, must have
`
`ends capable of being urged and constrained. Staff Br. at 12. The Staff points to the disclosure at
`
`column 7, lines 14–19, which states that “[t]he housing 12 is engaged with the atomizer assembly
`
`8
`
`

`

`28, which urges the ends of the wick 37 downwardly and constrains them within the annular cavity
`
`39 formed between the interior of the housing 12 and the exterior of the atomizing chamber 38.
`
`The wick 37 is thusly enabled to absorb the liquid (not shown).” Id. That portion of the
`
`specification addresses Figs. 9 and 10, which are described as “an illustrative embodiment of the
`
`present invention.” ’114 patent at 6:66–7:3; see also 3:7–12. In the embodiment of Figs. 9 and 10,
`
`“[t]he wick 37 passes through the atomizer 32 and extend to the outer periphery of the atomizer
`
`assembly.” Id. at 7:3–5. “The housing 12 is engaged with the atomizer assembly 28, which urges
`
`the ends of the wick downwardly and constrains them within the annular cavity 39 formed between
`
`the interior of the housing 12 and the exterior of the chamber 38. The wick 37 is thusly enabled to
`
`absorb the liquid.” Id. at 7:14–19.
`
`The specification separately describes Fig. 8, another “illustrative embodiment,” in which
`
`the “atomizing chamber 38 includes a pair of opposing wick apertures 40 formed therein, which
`
`provide clearance for the wick 37 to pass into the atomizing chamber 38.” Id. at 6:44–47 and 51–
`
`54. In the embodiment in Fig. 8, the “wick 37 passes through the center of the atomizer 32” and
`
`the “atomizing assembly has a pair of semicircular recesses 30 formed therein which align
`
`cooperatively with the wick apertures” such that when the two units are engaged, “[t]his results in
`
`a circular aperture through which the wick passes with a slightly compressive fit.” Id. at 6:56–62.
`
`This arrangement “enables liquid to pass through by capillarity of the wick 37, but prevents the
`
`liquid from flooding the atomizing chamber 38, which would be detrimental or [sic] atomizer
`
`function.” Id. at 6:62–65. In the embodiment described with respect to Fig. 8, there is no disclosure
`
`that the wick is urged downwardly.
`
`As with Figs. 11a through 11d, the specification states that the embodiment of Figs. 9 and
`
`10 and the embodiment of Fig. 8 are “illustrative embodiments of the present invention” and does
`
`9
`
`

`

`not purport to limit the wick in the ’114 patent to a fibrous bundle, as urged by NJOY and the
`
`Staff. ’114 patent at 6:44–47 (Fig. 8) and 6:66–7:5 (Figs. 9 and 10). Moreover, even if the wick
`
`must be capable of being urged downward, constrained, or forming a compressive fit, as asserted
`
`by the Staff, the Staff does not explain why only a fibrous bundle, and not some other structure,
`
`would have that capability.
`
`NJOY contends that JLI’s “construction is purely fiction and divorced from the intrinsic
`
`evidence” but agrees that “[t]here is no dispute that the ‘wick’ draws liquid via capillary action.”
`
`NJOY Br. at 7. NJOY relies on Eon Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815
`
`F.3d 1314, 1321 (Fed. Cir. 2016) for the proposition that although the claim term “wick” “might
`
`theoretically in the abstract, be given such a broad meaning, [it] cannot be construed that way in
`
`the context of the patent.” Id. In Eon Corp., however, the Federal Circuit considered the meaning
`
`of the claim terms “portable” and “mobile” and concluded, in light of the specification, that this
`
`feature of the invention was consistently described as “the movement of a low-power subscriber
`
`unit across cell boundaries, with good digital synchronous communication contact throughout the
`
`network” and not as “anything that is theoretically capable of being moved,” “which could include
`
`a house, perhaps, but not a mountain.” Eon Corp., 815 F.3d at 1321. As a result, the claims could
`
`not cover structure that was not intended to be moved even if it could be. Id. Unlike in Eon, JLI’s
`
`proposed construction is not “completely untethered to the context of the invention.” Id. Instead,
`
`here, illustrative embodiments describe and show the wick as a fibrous bundle. The specification,
`
`however, does not define or limit the wick to a fibrous bundle. And, as agreed by NJOY, “[t]here
`
`is no dispute that the ‘wick’ draws liquid via capillary action.” NJOY Br. at 7; see also NJOY
`
`Reply at 1–2.
`
`10
`
`

`

`JLI also argues that there “is no evidence that the patentee disclaimed or narrowed the
`
`meaning of ‘wick’ in the prosecution history.” JLI Br. at 6–7. In particular, JLI notes that during
`
`prosecution the applicant did not make arguments distinguishing the prior art based on the structure
`
`of the claimed wick. Id. NJOY does not disagree. NJOY reply at 2–3. Based on the arguments
`
`presented by the parties, I conclude that the prosecution history is not relevant to the construction
`
`of the term “wick.”
`
`Based on the parties’ briefs, the arguments presented at the hearing, and the evidence,
`
`“wick” is construed as having its plain and ordinary meaning. To the extent further clarification is
`
`required, a wick is a material through which liquid may be drawn via capillary action.
`
`b) Wick Aperture
`
`The parties propose:
`
`Term and
`Asserted Claims
`wick aperture
`
`claims 43 and 44
`
`Amended Joint Chart at 2.
`
`JLI’s Construction
`
`Plain and ordinary
`meaning, e.g., an opening
`that allows the wick to
`access a liquid
`
`NJOY and Staff’s
`Construction
`An opening that provides
`clearance for the wick to
`pass through
`
`For “wick aperture,” JLI proposes the plain and ordinary meaning, which it asserts is an
`
`opening that allows the wick to access a liquid, while NJOY and the Staff propose that the “wick
`
`aperture” is an opening that provides clearance for the wick to pass through.
`
`Claims 43 and 44, which were added by reissue, both recite “a wick in contact with the
`
`atomization liquid in the liquid reservoir through the first wick aperture and the second wick
`
`aperture, the wick disposed between the liquid reservoir and the atomizer.” The language of claims
`
`43 and 44 comes directly from the specification, which states:
`
`11
`
`

`

`The present invention advances the art of electronic cigarettes by teaching an
`electronic cigarette that provides a liquid reservoir, which effectively delivers
`liquid at the requisite rates from the reservoir to an atomizer in a [sic] open
`atomizing chamber. This arrangement enables production of aerosol of the liquid
`at desired rates of atomization without excessive liquid transfer during periods of
`non-use. This function is enabled though utilization of a wick aperture through the
`atomizing chamber and a wick disposed between the liquid reservoir and the
`atomizer. The wick enables the transfer of liquid by capillarity in a controlled
`manner without flooding the open atomization chamber.
`
`’114 patent at 4:1–12.
`
`This separate disclosure, addressing “the present invention,” states that there is a wick
`
`aperture through the atomizing chamber and that the wick is disposed between the liquid reservoir
`
`and the atomizer and enables transfer of liquid by capillarity. This disclosure, like the language of
`
`claims 43 and 44, does not state that the wick passes through the wick aperture.
`
`Other portions of the specification state that the wick passes through the wick aperture. In
`
`the “illustrative embodiment” of Fig. 7, “the wick 37 passes through wick apertures in the
`
`atomizing chamber (not shown) on its two ends, and into the annular cavity 39.” Id. at 6:28–31.
`
`“The fluid 44 is stored in the fluid reservoir 43, and is also capable of flowing into the annular
`
`cavity 39 to saturate wick 37.” Id. at 6:23–25. Similarly, in the “illustrative embodiment” of Figs. 9
`
`and 10, the “housing 12 is engaged with the atomizer assembly 28, which urges the ends of the
`
`wick 37 downwardly and constrains them with the annular cavity 39.” “The wick 37 is thusly
`
`enabled to absorb the liquid.” Id. at 7:14–19.
`
`In the “illustrative embodiment” in Fig. 8, the “atomizing chamber 38 includes a pair of
`
`opposing wick apertures 40 formed therein, which provide clearance for the wick 37 to pass into
`
`the atomizing chamber.” Id. at 6:51–54. “The atomizing assembly has a pair of semicircular
`
`recesses 30 formed therein which align cooperatively with the wick apertures 40 in the atomizing
`
`chamber when the two units are engaged. This results in a circular aperture through which the wick
`
`12
`
`

`

`37 passes with a slightly compressive fit. This arrangement enables liquid to pass through by
`
`capillarity of the wick 37 but prevents the liquid from flooding the atomizing chamber 38.” Id. at
`
`6:57–65. Similarly, in the “illustrative embodiment” shown in Figs. 12a–12c, the “atomizing
`
`chamber 38 includes a pair of opposing wick apertures 40 formed therein, which provide clearance
`
`for the wick (not shown) to pass into the atomizing chamber.” Id. at 7:58–61.
`
`The specification thus discloses that in the embodiments shown and described in Figs. 7
`
`and 9, the wick passes through the wick apertures and into the annular cavity 39 to absorb liquid.
`
`In the embodiments shown and described with respect to Figs. 8 and 12, the wick apertures 40
`
`allow the wick to pass into the atomizing chamber 38.
`
`The dispute between the parties is whether what is shown and described with respect to the
`
`illustrative embodiments in Figs. 7–9 and 12a–12c, supporting that the wick passes through the
`
`wick apertures, limits the disclosure at column 4, which states that in the “present invention,”
`
`excessive liquid transfer during periods of non-use is prevented “through utilization of a wick
`
`aperture through the atomizing chamber and wick disposed between the liquid reservoir and the
`
`atomizer.” ’114 patent at 4:1–10. Though not specifically shown in a figure, based on this
`
`disclosure, a wick may be situated between the liquid reservoir and the atomizer without passing
`
`through the aperture. This separately stated disclosure of the “present invention” describes such
`
`an embodiment.
`
`In MBO Labs. v. Becton, Dickinson & Co., the Federal Circuit stated that “patent coverage
`
`is not necessarily limited to inventions that look like the ones in the figures.” 474 F.3d 1323, 1333
`
`(Fed. Cir. 2007). That is true here, where, although illustrative embodiments described with respect
`
`to certain figures disclose that the wick passes through the wick apertures, a separate disclosure
`
`relating to the “present invention” does not state that the wick passes through the aperture. See
`
`13
`
`

`

`also Skedco, Inc. v. Strategic Operations, Inc., 685 Fed. App’x 956, 959 (Fed. Cir. 2017) (“Patents
`
`do not need to include drawings of particular embodiments in order to claim them. For this reason,
`
`a claim is not limited to inventions looking like those in the drawings. This guidance is especially
`
`apt here because the patent refers to the drawings to which StOps points as exemplary
`
`embodiments.”) (citations and internal quotations omitted).
`
`Based on the language of the claims and its supporting disclosure relating to the “present
`
`invention” including a wick aperture and stating that the wick “is disposed between the liquid
`
`reservoir and the atomizer,” which is separate and distinct from the “illustrative embodiments” in
`
`which the wick passes through the wick aperture, I conclude that the claimed “wick aperture” is
`
`not required to be an opening that provides clearance for the wick to pass through, as argued by
`
`NJOY and the Staff.
`
`NJOY also argues that because the claim calls the aperture a “wick aperture,” the wick
`
`must pass through the aperture. NJOY Reply at 4. I disagree. The separate disclosure in column 4
`
`identifies a “wick aperture” but does not require the wick to pass through that aperture, instead
`
`stating that the wick is disposed between the liquid reservoir and the atomizer and that the wick
`
`enables transfer of the liquid. As JLI explained at the hearing, “the fact that it’s called a wick
`
`aperture doesn’t mean that the wick has to pass through it.” The word wick modifies aperture “in
`
`the sense that the wick accesses liquid through that aperture” and there is “not some other
`
`component accessing liquid through the aperture. It’s the wick that’s accessing liquid through the
`
`aperture.” Tr. at 73:4–11.
`
`Based on the parties’ briefs, the arguments presented at the hearing, and the evidence,
`
`“wick aperture” is construed as an aperture through which the wick passes or through which the
`
`wick accesses liquid.
`
`14
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`

`

`c)
`
`A wick in contact with the atomization liquid in the liquid
`reservoir through the first wick aperture and the second
`wick aperture
`
`The parties propose:
`
`Term and Asserted Claims
`
`a wick in contact
`with the atomization
`liquid in the liquid
`reservoir through the
`first wick aperture
`and the second wick
`aperture
`
`claims 43 and 44
`
`Amended Joint Chart at 2.1
`
`JLI’s
`Construction
`Plain and ordinary
`meaning, e.g., a
`wick in contact
`with the liquid in
`the liquid
`reservoir by way
`of said first wick
`aperture and said
`second wick
`aperture
`
`NJOY’s
`Construction
`Fibrous bundle that
`passes through the
`first wick aperture
`and second wick
`aperture to contact
`the atomization
`liquid in the liquid
`reservoir
`
`Staff’s Construction
`
`Fibrous bundle that
`contacts atomization
`liquid by passing
`through the first wick
`aperture and second
`wick aperture and
`into the liquid
`reservoir
`
`The parties dispute how the claimed “contact” occurs in this claim term.2 While their
`
`phrasing differs slightly, both NJOY and Staff contend that the wick extends through the claimed
`
`apertures and into the liquid reservoir to contact the liquid in the reservoir. NJOY Br. at 10–11;
`
`and Staff Br. at 17. JLI argues that the wick need not pass through the wick aperture to contact
`
`liquid in the liquid reservoir. JLI Br. at 12–13; and JLI Reply at 8–9 (“This is broad enough to
`
`encompass embodiments disclosed in the specification in which the wick passes through the wick
`
`apertures, as well as those in which the wick does not.”).
`
`NJOY contends that “the plain language of the claim requires that the wick contacts the
`
`liquid in the liquid reservoir through the first and second wick apertures.” NJOY Br. at 11
`
`
`1 Because claim 1 has been terminated, this term and the parties’ proposed constructions have
`been changed to correspond to the language of claims 43 and 44.
`
`2 Because I have not adopted NJOY and the Staff’s proposed construction of the term “wick” as
`a fibrous bundle, I do not adopt the first portions of their proposed constructions of this term.
`
`15
`
`

`

`(emphasis in original). According to NJOY, because claims 43 and 44 recite “a wick in contact
`
`with the atomization liquid in the liquid reservoir,” the wick must be “in contact with liquid that
`
`is located in the liquid reservoir.” Id. (emphasis in original). JLI contends that because claims 43
`
`and 44 recite that the wick is “disposed between the liquid reservoir and the atomizer,” the wick
`
`does not need to pass through the wick aperture to contact the liquid in the liquid reservoir. JLI Br.
`
`at 12; and JLI Reply at 9.
`
`As NJOY notes, this portion of claims 43 and 44 recites that the wick is in contact with the
`
`atomization liquid in the liquid reservoir. The claims do not recite that the wick is in contact with
`
`the atomization liquid from the liquid reservoir. To the extent that JLI urges such a construction,
`
`that is inconsistent with the express claim language. Nonetheless, as noted with respect to the term
`
`“wick aperture,” the claim language does not require that the wick pass through the wick aperture
`
`into the liquid reservoir because the claims recite that the wick is disposed between the liquid
`
`reservoir and the atomizer. The express claim language therefore does not require that the wick be
`
`disposed in the liquid reservoir.
`
`NJOY and the Staff point to disclosure in the specification in which the wick is disposed
`
`in the liquid reservoir. NJOY Br. at 11–12, citing ’114 patent at 1:67–2:3, id. at 6:28–31, id. at
`
`6:57–63, and id. at figs. 8–10; and Staff Br. at 17–18. JLI notes the disclosure in column 4, which
`
`states that excessive liquid transfer during periods of non-use is avoided through “utilization of a
`
`wick aperture through the atomizing chamber and a wick disposed between the liquid reservoir
`
`and the atomizer. The wick enables the transfer of liquid by capillarity in a controlled manner
`
`without flooding the open atomization chamber.” JLI Reply at 9; and ’114 patent at 4:1–13. JLI
`
`asserts that the language “a wick disposed between the liquid reservoir and the atomizer” is “broad
`
`enough to encompass embodiments disclosed in the specification in which the wick passes through
`
`16
`
`

`

`the wick apertures, as well as those in which the wick does not.” Id. I agree that the specification
`
`supports embodiments in which the wick does not pass through the wick apertures. As noted,
`
`however, the language of claims 43 and 44 requires that “the wick [is] in contact with the
`
`atomization liquid in the liquid reservoir.”
`
`The Staff and NJOY also argue that during prosecution, the Examiner understood the
`
`claims of the ’114 patent to require “a wick having a first wick end extending out of the atomizing
`
`chamber through the first wick aperture into the liquid reservoir and a second wick end extending
`
`out of the atomizing chamber through the second wick aperture into the liquid reservoir.” Staff Br.
`
`at 16 (citing JMX-0006 at 961–62); and NJOY Br. at 12.
`
`In a September 8, 2021 Office Action, the Examiner stated:
`
`claims 1–10, 12–16 and 22–55 as a