Paper No. __
`Filed: November 23, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`NU MARK, LLC,
`Petitioners
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner
`______________
`
`Case IPR2016-01668
`Patent No. 9,364,027
`
`______________________________________________________________
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW
`
`
`
`
`
`

`
`TABLE OF CONTENTS
`
`Case IPR2016-01668
`Patent No. 9,364,027
`
`Page
`INTRODUCTION .......................................................................................... 1
`BACKGROUND ............................................................................................ 3
`A.
`The ’027 Patent’s Priority Claim ......................................................... 3
`B. A Person Of Ordinary Skill In The Art ................................................ 4
`C.
`Claim Construction .............................................................................. 5
`III. PETITIONER’S EXPERT’S CONCLUSORY OPINIONS SHOULD
`BE ACCORDED NO WEIGHT..................................................................... 6
`IV. THE PETITION FAILS TO SHOW A REASONABLE
`LIKELIHOOD THAT ANY CLAIM OF THE ’027 PATENT IS
`UNPATENTABLE ......................................................................................... 8
`A.
`The ’027 Patent Is Entitled To The Benefit Of At Least The
`Filing Date Of The ’244 Application ................................................... 9
`1.
`Requirements for a priority claim under 35 U.S.C. § 120 ......... 9
`B. Unclaimed Features Of The Invention Are Not Relevant to
`Whether The ’244 Application Provides Written Description
`Support for the ’027 Patent Claims .................................................... 11
`1.
`Petitioner admits the ’027 patent claims are supported by
`the ’244 application .................................................................. 14
`The ’027 patent claims need not recite every aspect
`disclosed in the ’244 application’s specification ..................... 15
`The ’244 Application Is Not Limited To An Electronic
`Cigarette Having A Liquid Storage Container And A Pump Or
`Valve ................................................................................................... 24
`1.
`The terms “the invention” or “the present invention” and
`applicant’s subsequent amendments do not demonstrate
`that the ’244 application is limited to a device comprising
`a liquid storage container and a valve or pump ....................... 24
`a.
`Use of the phrase “the invention” or “the present
`invention” ...................................................................... 24
`Amendments to the ’244 application ............................. 28
`
`I.
`II.
`
`2.
`
`C.
`
`b.
`
`
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`
`TABLE OF CONTENTS
`(continued)
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`Case IPR2016-01668
`Patent No. 9,364,027
`
`Page
`
`2.
`
`3.
`
`Patent Owner’s statements in IPR2015-01301, IPR2015-
`01604, and IPR2015-01513 do not limit the ’244
`application’s written description to a liquid storage
`container and a valve or pump ................................................. 30
`The District Court’s tentative ruling did not limit the
`specification of the ’641 patent to a device utilizing a
`liquid storage container ............................................................ 34
`CONCLUSION ............................................................................................. 35
`V.
`CERTIFICATE OF COMPLIANCE ...................................................................... 36
`
`
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`Case IPR2016-01668
`Patent No. 9,364,027
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Abbott Labs. v. Dey L.P.,
`287 F.3d 1097 (Fed. Cir. 2002) .......................................................................... 33
`
`Absolute Software, Inc. v. Stealth Signal, Inc.,
`659 F.3d 1121 (Fed. Cir. 2011) .......................................................................... 24
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) ............................................................................ 8
`
`Anascape, Ltd. v. Nintendo of Am. Inc.,
`601 F.3d 1333 (Fed. Cir. 2010) .................................................................... 22, 23
`
`Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00457, Paper 9
`(Decision Denying Institution of Inter Partes Review, June 30,
`2015) (Ex. 2004) ..................................................................................... 16, 17, 29
`
`Carl Zeiss Stiftung v. Renishaw PLC,
`945 F.2d 1173 (Fed. Cir. 1991) .......................................................................... 17
`
`Cordis Corp. v. Boston Sci. Corp.,
`188 F. App’x 984 (Fed. Cir. 2006) ..............................................................passim
`
`Crown Packaging Tech., Inc. v. Ball Metal Beverage Container
`Corp.,
`635 F.3d 1373 (Fed. Cir. 2011) ........................................................ 15, 16, 20, 21
`
`Fontem Ventures, B.V., et al. v. NJOY, Inc. et al.,
`Case No. 2:14-cv-1645-GW(MRWx) ................................................................ 34
`
`Goldenberg v. Cytogen, Inc.,
`373 F.3d 1158 (Fed. Cir. 2004) .................................................................... 32, 33
`
`Golight, Inc. v. Wal-Mart Stores, Inc.,
`355 F.3d 1327 (Fed. Cir. 2004) .............................................................. 15, 25, 26
`
`Greene’s Energy Grp., LLC v. Oil States Energy Services,
`IPR2014-00364, 2015 WL 2089119 (PTAB May 1, 2015) ............................... 16
`
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`Case IPR2016-01668
`Patent No. 9,364,027
`
`ICU Med., Inc. v. Alaris Med. Sys.,
`558 F.3d 1368 (Fed. Cir. 2009) .................................................................... 21, 22
`
`Pfizer, Inc. v. Ranbaxy Labs. Ltd.,
`457 F.3d 1284 (Fed. Cir. 2006) .......................................................................... 32
`
`Research Corp. Techs. v. Microsoft Corp.,
`627 F.3d 859 (Fed. Cir. 2010) ...................................................................... 22, 23
`
`Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.,
`563 F.3d 1358 (Fed. Cir. 2009) ...................................................................passim
`
`ScriptPro LLC v. Innovation Associates, Inc.,
`833 F.3d 1336 (Fed. Cir. 2016) .................................................................... 22, 23
`
`SRI Int’l v. Matsushita Elec. Corp. of Am.,
`775 F.2d 1107 (Fed. Cir. 1985) ............................................................................ 2
`
`Ventana Med. Sys., Inc. v. Biogenex Labs, Inc.,
`473 F.3d 1173 (Fed. Cir. 2006) .......................................................................... 16
`
`STATUTES
`
`35 U.S.C. § 102 .......................................................................................................... 8
`
`35 U.S.C. § 112 .................................................................................................passim
`
`35 U.S.C. § 120 .......................................................................................................... 9
`
`OTHER AUTHORITIES
`
`M.P.E.P. § 1893.03(b) ............................................................................................... 4
`
`
`
`
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`Case IPR2016-01668
`Patent No. 9,364,027
`
`LIST OF EXHIBITS
`
`Petitioners’ Exhibits
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Patent No. 9,364,027 (the “027 Patent”)
`
`Ex. 1002 File History for U.S. Patent No. 9,364,027
`
`Ex. 1003 Declaration of John M. Collins, Ph.D.
`
`Ex. 1004 Curriculum Vitae of Dr. John M. Collins
`
`Ex. 1005 U.S. Pat. App. Pub. No. 2006/0196518 A1 (“Hon 518”)
`
`Ex. 1006 File History for App. No. 13/088,276 (issued as U.S. 8,511,318)
`
`Ex. 1007 Blackline Specification filed in 10/547,244 on January 20, 2012
`
`Ex. 1008 Canadian Patent Appl. No. 2,752,134 (“Hon 134”)
`Ex. 1009 Fontem Ventures, B.V., et al. v. NJOY, Inc. et al., Case 2:14-cv-01645-
`GW(MRWx), Dkt. 358 (C.D. Cal. Oct. 22, 2015)
`Ex. 1010 Originally filed Abstract, Specification, Drawings, and Claims of App.
`No. 10/547,244 (submitted August 26, 2005)
`
`Ex. 1011 Certified Translation of WO 2004/095955
`
`Ex. 1012 U.S. Patent No. 8,910,641
`
`Ex. 1013 Patent Owner Preliminary Response in IPR2015-01604
`
`Ex. 1014 Patent Owner Preliminary Response in IPR2015-01301
`
`Ex. 1015 Patent Owner Preliminary Response in IPR2015-01513
`Ex. 1016 Originally filed Abstract, Specification, Drawings, and Claims of App.
`No. 13/548,659
`Ex. 1017 Originally filed Abstract, Specification, Drawings, and Claims of App.
`No. 13/921,582
`
`
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`Case IPR2016-01668
`Patent No. 9,364,027
`Ex. 1018 Originally filed Abstract, Specification, Drawings, and Claims of App.
`No. 14/289,366
`
`Patent Owner’s Exhibits
`
`Exhibit Description
`
`Ex. 2001 Declaration of Richard Meyst
`
`Ex. 2002 U.S. Patent No. 8,511,318
`Ex. 2003 Claim Chart – Written Description in Priority Application for U.S.
`Patent No. 9,364,027 Claims 1-17
`
`Ex. 2004
`
`Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00457, Paper 9,
`Decision Denying Institution of Inter Partes Review (PTAB, June 30,
`2015)
`
`Ex. 2005 File History for U.S. Patent Application No. 10/547,244
`
`
`
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`Case IPR2016-01668
`Patent No. 9,364,027
`
`I.
`
`INTRODUCTION
`
`Petitioner requests Inter Partes Review (“Petition”) of U.S. Patent No.
`
`9,364,027 (the “’027 patent”) on the ground that a published priority application of
`
`the ’027 patent is allegedly anticipatory prior art. Petitioner asserts that the earliest
`
`U.S. priority application does not provide written description for the claims and is
`
`thus prior art because certain embodiments of the priority application are not
`
`recited in the claims. Fontem requests that the Petition be denied because, as
`
`Petitioner and its expert concede, the published priority application “discloses each
`
`and every limitation of claims 1-17” of the ’027 patent. Petition at 19; Ex. 1003,
`
`¶¶27-28.
`
`Instead of asserting that the limitations actually recited in the claims are not
`
`described in the priority application, Petitioner asserts that the claims are invalid
`
`because they do not recite other unclaimed features disclosed in the priority
`
`application. In other words, Petitioner asserts that certain unclaimed features of
`
`the preferred embodiments must nonetheless be claimed to satisfy the written
`
`description requirement. Specifically, Petitioner asserts that claims directed to an
`
`electronic cigarette including “a wire coil in a tube” or “a heating wire in a tube”
`
`are invalid under the written description requirement because those claims do not
`
`also recite both a container for storing liquid and either a pump or valve for
`
`transporting liquid.
`
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`Patent No. 9,364,027
`But, the Federal Circuit has rejected that a patent’s claims should be limited
`
`to preferred embodiments or to certain features of preferred embodiments, whether
`
`through claim construction or written description. As the court explained in SRI
`
`Int’l v. Matsushita Elec. Corp. of Am., “[i]f everything in the specification were
`
`required to be read into the claims, or if structural claims were to be limited to
`
`devices operated precisely as a specification-described embodiment is operated,
`
`there would be no need for claims.” 775 F.2d 1107, 1121 (Fed. Cir. 1985). The
`
`court continued, “[n]or could an applicant, regardless of the prior art, claim more
`
`broadly than that embodiment. Nor would a basis remain for the statutory necessity
`
`that an applicant conclude his specification with ‘claims particularly pointing out
`
`and distinctly claiming the subject matter which the applicant regards as his
`
`invention.’” Id.
`
`As such, the Federal Circuit has rejected attempts, like Petitioner’s here, to
`
`write limitations into claims using the written description requirement. For
`
`example, in Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., the Federal Circuit
`
`applied the reasoning from the Court’s “claim construction cases” to reject the
`
`assertion that a claim must include different inventive features from the
`
`specification that address two separate problems identified in the prior art. 563
`
`F.3d 1358, 1367 (Fed. Cir. 2009). The court found that “it is unnecessary for each
`
`and every claim in the patent to address both problems.” In other words, the
`
`
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`Patent No. 9,364,027
`applicant was free to claim either “invention” in a single claim and that claim was
`
`not invalid under the written description requirement. As the Court summarized,
`
`“[i]nventors can frame their claims to address one problem or several, and the
`
`written description requirement will be satisfied as to each claim as long as the
`
`description conveys that the inventor was in possession of the invention recited in
`
`that claim.” Id. See also Cordis Corp. v. Boston Sci. Corp., 188 F. App’x 984,
`
`990 (Fed. Cir. 2006) (“when a patent includes two inventive components,
`
`particular claims may be directed to one of those inventive components and not to
`
`the other.”). There is no requirement that every claim must include address every
`
`problem identified or every inventive feature disclosed in the specification.
`
`Accordingly, because the ’027 patent’s priority application “discloses each
`
`and every limitation of claims 1-17,” Patent Owner requests that the Petition be
`
`denied.
`
`II. BACKGROUND
`
`A. The ’027 Patent’s Priority Claim
`
`The ’027 patent issued on June 14, 2016 from U.S. Application No.
`
`14/328,561 (“the ’561 application”), which was filed on July 10, 2014. Ex. 1001 at
`
`1. The ’561 application is a continuation of U.S. Application No. 13/921,582, filed
`
`on June 19, 2013 (“the U.S. ’582 application”), now U.S. Patent No. 8,910,641
`
`(“the ’641 patent”), which is a continuation of U.S. Application No. 13/088,276
`
`
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`-3-
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`Case IPR2016-01668
`Patent No. 9,364,027
`(“the ’276 application”), now U.S. Patent No. 8,511,318 (“the ’318 patent”), which
`
`is a divisional of the “published priority application,” U.S. Application No.
`
`10/547,244 (“the ’244 application”)—the national phase of International
`
`Application No. PCT/CN2004/000182—filed on February 27, 2006, now
`
`abandoned,1 which claims the benefit of priority to Chinese Application No.
`
`03111582 (“CN ’582”) filed on April 29, 2003.2 Id.
`
`Because the ’244 application is the national phase of International
`
`Application No. PCT/CN2004/000182, the ’244 application’s actual filing date is
`
`the date the PCT was filed on March 8, 2004. M.P.E.P. § 1893.03(b). In this
`
`response, Patent Owner refers to the translation of the PCT application provided
`
`with the national phase filing of the ’244 application.
`
`B. A Person Of Ordinary Skill In The Art
`
`A person of skill in the art at the time of the invention would have had a
`
`mechanical or electrical engineering degree, industrial design degree, or a similar
`
`technical degree or equivalent work experience, and 5-10 years of working in the
`
`area of electromechanical devices, including medical devices. Ex. 2001 at ¶ 18.
`
`As used herein, a person of ordinary skill in the art, one skilled in the art, or similar
`
`1
`The ’244 application published as U.S. Patent Application Publication No.
`
`2006/0196518 (“Hon ’518”; Ex. 1005).
`
`2
`
`
`
`Petitioner omits the ’027 patent’s priority claim to CN ’582.
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`Patent No. 9,364,027
`phrases refers to a person of ordinary skill in the art at the time of the filing of the
`
`’244 application on March 8, 2004.
`
`Petitioner’s definition of a person of ordinary skill in the art differs in
`
`experience. Petitioner asserts that a person of ordinary skill would have “a
`
`Bachelor of Science degree in mechanical engineering, or a similar technical
`
`degree, along with at least 3-5 years of experience in designing and developing
`
`handheld devices with thermal management and fluid handling technologies.
`
`Petition at 19. The dispute between Patent Owner and Petitioner’s definition of a
`
`person of ordinary skill in the art does not affect the result of the Petition. Under
`
`either definition, one of ordinary skill in the art would find that the ’244
`
`application meets the written description requirement.
`
`C. Claim Construction
`
`Here, Petitioner states that no “construction of any claim term is required.”
`
`Petition at 19. Indeed, no claim construction is required because Petitioner does
`
`not dispute that every claim limitation actually recited in the ’027 patent is
`
`disclosed in the ’027 patent and its priority applications. In fact, Petitioner
`
`provides a claim chart demonstrating that each limitation of the ‘027 patent claims
`
`is fully supported by the published priority application. Petition at 19-39. As set
`
`forth above, the Petition is premised on Petitioner’s attempt to require additional
`
`unclaimed limitations through the written description requirement.
`
`
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`Patent No. 9,364,027
`III. PETITIONER’S EXPERT’S CONCLUSORY OPINIONS SHOULD
`BE ACCORDED NO WEIGHT
`
`In support of its Petition for Inter Partes Review, Petitioner submits the
`
`supporting declaration of Dr. John M. Collins. Ex. 1003. Dr. Collins’ opinion
`
`related to why the ’027 patent claims are not entitled to claim the benefit of
`
`the ’244 application consists of the following three conclusory statements in
`
`paragraphs 105, 113, and 114 of his report:
`
`105. In my opinion, the 027 Patent’s parent application (the
`“Parent Application”) does not convey (and would not have
`conveyed) to one of ordinary skill in the art that the inventor was in
`possession, at the time of the Parent Application, of an electronic
`cigarette lacking a liquid storage container and a valve/pump for
`moving the liquid, for the reasons I explain below. In other words, the
`disclosure of the Parent Application is limited to an electronic spray
`cigarette that includes a liquid storage container and a pump or valve
`for moving the liquid.
`113. This is no disclosure in the Parent Application of an
`electronic cigarette that does not include a liquid storage container and
`a pump or valve for moving the liquid.
`114. For at least the aforementioned reasons, in my opinion, the
`Parent Application does not convey to one of ordinary skill in the art
`that the inventor was in possession, at the time of the Parent
`Application, of an electronic cigarette lacking a container for storing
`the liquid and a pump/valve for moving the liquid.
`
`
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`Case IPR2016-01668
`Patent No. 9,364,027
`Ex. 1003, ¶¶ 105, 113, 114. Outside of the statements in the three paragraphs
`
`recited above, Collins offers no explanation or analysis as to why the remaining
`
`one-hundred-eleven (111) paragraphs of his report would lead him to conclude that
`
`the ’027 patent claims are not entitled to claim the benefit of the ’244 application.
`
`In contrast, the vast majority of the Collins report consists of seventy-seven
`
`(77) paragraphs detailing why Hon ’518—which is the publication of the ’244
`
`application—“discloses each and every element of claims 1-17 of the 027 Patent”
`
`(see Ex. 1003, ¶¶ 26-103). In other words, Collins spends most of his report
`
`proving why the ’244 application provides written description support for the ’027
`
`patent.
`
`The remainder of the Collins report includes Collins’ introduction,
`
`background, and qualifications (see Ex. 1003, ¶¶ 1-14); a summary of the ’027
`
`patent (see Ex. 1003, ¶¶ 15-16); a summary of the level of ordinary skill in the art
`
`(see Ex. 1003, ¶¶ 17-19); a summary of his understanding of certain legal standards
`
`related to claim construction, anticipation, priority dates, and written description
`
`(see Ex. 1003, ¶¶ 20-25); a statement acknowledging that the ’027 patent claims do
`
`not include a liquid storage container or a pump or valve (see Ex. 1003, ¶ 104); and
`
`a recitation of several excerpts from the specification of the ’244 application (see
`
`Ex. 1003, ¶¶106-112).
`
`
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`Patent No. 9,364,027
`Collins’ discussion of why the ’244 application allegedly does not support
`
`“container-less” and “valve-less/pump-less” claims recites the same excerpts of
`
`the ’244 application that are recited in the Petition. (compare, e.g., ¶¶ 106-111 of
`
`the Collins declaration (Ex. 1003) to pages 47-54 of the Petition, respectively). As
`
`such, Collins’ conclusory declaration adds nothing over the Petition, and thus does
`
`not provide probative value. ActiveVideo Networks, Inc. v. Verizon Commc’ns,
`
`Inc., 694 F.3d 1312, 1327 (Fed. Cir. 2012) (rejecting “conclusory and factually
`
`unsupported” expert testimony regarding obviousness). Thus, the Board should
`
`accord the Collins declaration no weight.
`
`IV. THE PETITION FAILS TO SHOW A REASONABLE LIKELIHOOD
`THAT ANY CLAIM OF THE ’027 PATENT IS UNPATENTABLE
`
`The Petitioner proposes one ground of unpatentability, that “[c]laims 1-17 of
`
`the ’027 patent (“the Challenged Claims”) are unpatentable under (pre-AIA) 35
`
`U.S.C. § 102 as anticipated by U.S. Patent Application Publication No.
`
`2006/0196518.” Petition at 18. Petitioner’s purported ground is based on its
`
`argument that the disclosure in the published priority application of the ’027 patent
`
`(the ’244 application) does not meet the written description requirement for the
`
`claims recited in the ’027 patent claims. So, Petitioner concludes that the
`
`publication of that same priority application, Hon ’518 (Ex. 1005), anticipates
`
`
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`Patent No. 9,364,027
`the ’027 patent claims. Id. For the reasons set forth herein, the ’027 patent claims
`
`are entitled to priority to the ’244 application.
`
`A. The ’027 Patent Is Entitled To The Benefit Of At Least The Filing
`Date Of The ’244 Application
`
`The ’244 application conveys with reasonable clarity to one skilled in the art
`
`that, as of the filing date of the ’244 application, the inventor was in possession of
`
`each and every limitation recited in the ’027 patent claims. Thus, the claims of
`
`the ’027 patent should be afforded the benefit of the filing date of the ’244
`
`application.
`
`1.
`
`Requirements for a priority claim under 35 U.S.C. § 120
`
`The effective filing date for a patent claim is the filing date of an earlier filed
`
`patent application if four conditions are met. First, the earlier filed patent
`
`application must have at least one inventor in common with the later filed patent
`
`application. 35 U.S.C. § 120 (pre-AIA). Second, the patent must contain a
`
`specific reference to the earlier filed application. Id. Third, the later filed
`
`application must be “filed before the patenting or abandonment of . . . the first
`
`application or on an application similarly entitled to the benefit of the filing date of
`
`the first application.” Id. And fourth, the claim must be described and enabled
`
`under 35 U.S.C. § 112 by the earlier filed patent application. Id.
`
`
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`Patent No. 9,364,027
`Here, the ’027 patent claims are entitled to priority to the ’244 application
`
`through the U.S. ’582 application and the ’276 application. Petitioner does not
`
`dispute that the ’027 patent claims are entitled to the filing date of the ’582 or ’276
`
`applications or that the first three conditions are met regarding the priority claim to
`
`the ’244 application. Instead, Petitioner disputes whether the ’027 patent is
`
`entitled to the filing date of the ’244 application because, according to Petitioner,
`
`claims 1-17 of the ’027 patent do not recite unclaimed elements—specifically, a
`
`liquid storage container and a pump or valve for moving the liquid—even though
`
`Petitioner and its expert state that the published specification of the ’244
`
`application (i.e., Hon ’518) discloses every limitation of the ‘027 patent claims.
`
`Petition at 39-40, 63-64.
`
`Patent Owner first demonstrates that the ’027 patent claims are entitled to
`
`priority to the ’244 application for the uncontested requirements. First, the earlier
`
`filed patent applications have the same inventor as the later filed patent application.
`
`Lik Hon, the sole inventor of the ’027 patent, is also the inventor of the ’244
`
`application, the ’276 application, and the U.S. ’582 application. Exs. 1001, 1005,
`
`1012, 2002.
`
`Second, the ’027 patent includes a specific reference to the earlier filed
`
`applications, specifically to the ’244 application, the ’276 application, and the
`
`U.S. ’582 application. Ex. 1001 at 1.
`
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`Patent No. 9,364,027
`Third, the ’027 patent was filed as the ’561 application on July 10, 2014,
`
`before the U.S. ’582 application issued as the ’641 patent on December 16, 2014.
`
`Exs. 1001, 1012. And, the U.S. ’582 application was filed on June 19, 2013,
`
`before the ’276 application issued as the ’318 patent on August 20, 2013. Exs.
`
`1012, 2002. And the ’276 application was filed on April 15, 2011, before the ’244
`
`application was abandoned on December 5, 2012. Exs. 2002, 2005.
`
`Finally, the ’244 application, the intervening ’276 and ’582 applications, and
`
`the ’561 application as originally filed describe and enable all the limitations of
`
`the ’027 patent claims as shown in the claim chart provided as Exhibit 2003. Ex.
`
`2001 at ¶26. Petitioner does not challenge any of the above requirements for the
`
`priority claim.
`
`Patent Owner now addresses Petitioner’s arguments regarding the ’244
`
`application’s written description of the ’027 patent claims.
`
`B. Unclaimed Features Of The Invention Are Not Relevant to
`Whether The ’244 Application Provides Written Description
`Support for the ’027 Patent Claims
`
`The independent claims of the ‘027 patent recite, in part:
`
`1.
`
`An electronic smoking device, comprising:
`
`***
`a wire coil in a tube, with the tube within the housing,
`and the wire coil configured to vaporize liquid
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`8.
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`Case IPR2016-01668
`Patent No. 9,364,027
`moving from outside of the tube into the tube and
`contacting the wire coil . . . .
`An electronic smoking device, comprising:
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`***
`a wire coil in a tube comprising a fiber material, with the
`tube in the housing and attached to a base in the
`housing, and with liquid in the housing moving
`from a location outside of the tube into contact
`with the wire coil in the tube to create vapor in the
`tube . . . .
`12. An electronic smoking device, comprising:
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`***
`a wire coil in a tube, with the tube in the housing and
`attached to a base in the housing . . . .
`16. An electronic cigarette, comprising:
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`***
`a wire heating coil in a tube in the second section of the
`housing . . . .
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`In the reasons for allowance, the examiner explained one distinction between
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`the claims of the ’027 patent and the prior art, stating that “the prior art of record
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`neither teaches nor reasonably suggests an electronic smoking device having the
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`claimed structure including a wire coil within a tube, both of which are inside a
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`housing of the electronic smoking device.” Ex. 1002 at 1329. As shown above,
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`Case IPR2016-01668
`Patent No. 9,364,027
`each of the independent claims include that same patentable subject matter, i.e.,
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`“the wire [heating] coil in a tube” component.
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`The claims include several other features. Claim 1 is illustrative:
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`1.
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`An electronic smoking device, comprising:
`a tubular housing having a first end and a second end;
`an outlet on the second end of the tubular housing;
`a wire coil in a tube, with the tube within the housing,
`and the wire coil configured to vaporize liquid
`moving from outside of the tube into the tube and
`contacting the wire coil;
`a control circuit in the tubular housing electrically
`connected to the wire coil and to a sensor;
`at least one air opening leading into the tubular housing,
`with the wire coil in between the at least one air
`opening and the second end of the tubular
`housing; and
`an LED at the first end of the tubular housing, with the
`LED electrically connected to the control circuit,
`and the LED configured to provide a gradual
`change in luminance to imitate a conventional
`cigarette.
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`None of the ’027 patent claims recite or require a “liquid storage container”
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`or a “pump” or a “valve.” That is not disputed. See Petition at 63. Because those
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`Case IPR2016-01668
`Patent No. 9,364,027
`components are unclaimed elements of a preferred embodiment, they are not
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`relevant to a written description inquiry.
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`1.
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`Petitioner admits the ’027 patent claims are supported by
`the ’244 application
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`Petitioner correctly states that “[t]he relevant § 112 analysis in determining
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`entitlement to an earlier filing date is between the later-filed claims and the
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`originally filed written description of the Parent Application to which priority is
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`being claimed.” Petition at 44 (emphasis added). Thus, the relevant inquiry here is
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`whether the ’027 patent claims are supported by the specification of the ’244
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`application. The answer is yes. Petitioner and its expert explain in detail how
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`Hon ’518, which has the same specification as the ’244 application, “discloses
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`each and every limitation of claims 1-17” of the ’027 patent. Petition at 19-39; Ex.
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`1003 ¶ 27-103. Patent Owner and its expert also provide a claim chart showing
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`that the ’561 application and all of the related priority applications—the ’244
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`application, the ’276 application, and the U.S. ’582 application—provide written
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`description support for the ’027 patent claims. Ex. 2001 at ¶ 26; Ex. 2003.
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`Having shown that the ’027 patent claims are fully supported by the
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`originally filed written description, the written description inquiry should end here,
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`and the Board should find that the ’027 patent claims are entitled to claim the
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`benefit of the filing date of the ’244 application.
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`Case IPR2016-01668
`Patent No. 9,364,027
`The ’027 patent claims need not recite every aspect
`disclosed in the ’244 application’s specification
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`2.
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`Petitioner argues that the ’027 patent claims are not supported by the ’244
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`application because the specification of the ’244 application is purportedly limited
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`to an electronic cigarette that includes liquid stored in a liquid storage container
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`and moved by a pump or valve—even though the claims do not include any
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`components for storing or moving liquid. Petition at 63-64.
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`But, it is well established that a claim does not need to recite every feature or
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`achieve every purpose disclosed in the specification. In Golight, Inc. v. Wal-Mart
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`Stores, Inc., the Federal Circuit held that “patentees [are] not required to include
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`within each of their claims all of [the] advantages or features described as
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`significant or important in the written description.” 355 F.3d 1327, 1331 (Fed. Cir.
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`2004).
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`Similarly, in Revolution Eyewear, the Federal Circuit held that “[i]nventors
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`can frame their claims to address one problem or several, and the written
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`description requirement will be satisfied as to each claim as long as the description
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`conveys that the inventor was in possession of the invention recited in the claim.”
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`563 F.3d at 1366-67. In Crown Packaging Tech., Inc. v. Ball Metal Beverage
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`Container Corp., the court rejected an argument that the written description
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`requirement is not met if the claims do not include limitations that address every
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`Case IPR2016-01668
`Patent No. 9,364,027
`advantage set forth in the specification for the same reasons set forth in Revolution
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`Eyewear. 635 F.3d 1373, 1381 (Fed. Cir. 2011). See also Greene’s Energy
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`Group, LLC v. Oil States Energy Services, IPR2014-00364, 2015 WL 2089119, *7
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`(PTAB May 1, 2015) (“It is well-settled that each claim does not necessarily cover
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`every feature disclosed in the specification”); Ventana Med. Sys., Inc. v. Biogenex
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`Labs, Inc., 473 F.3d 1173, 1181 (Fed. Cir. 2006) (“When the claim addresses only
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`some of the features disclosed in the specification, it is improper to limit the claim
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`to other, unclaimed features.”).
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`And, similarly, in Cordis, the Federal Circuit held that “when a patent
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`includes two inventive components, particular claims may be directed to one of
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`those inventive components and not to the other.” Cordis, 188 F. App’x at 990.
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`That principle was applied by the Board in Apple Inc., v. Contentguard
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`Holdings, Inc. to deny institution of Inter Partes review. IPR2015-00457, Paper 9
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`(Decision Denying Institution of Inter Partes Review, June 30, 2015) (Ex. 2004).