Paper No. ___
`Filed: August 17, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`R.J. REYNOLDS VAPOR COMPANY,
`
`Petitioner
`
`v.
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`FONTEM HOLDINGS 1 B.V.
`
`Patent Owner
`
`______________
`
`Case No. IPR2016-01692
`Patent No. 9,326,548
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`PETITIONER REPLY IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
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`

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`TABLE OF CONTENTS
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`PETITIONER’S EXHIBIT LIST ............................................................................. iv
`
`PATENT OWNER’S EXHIBIT LIST ................................................................... vii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`P.O.’S PROPOSED CONSTRUCTION OF “SET ON” IS
`IMPROPERLY NARROW ............................................................................. 3
`
`III. CLAIMS 1-7 ARE OBVIOUS ........................................................................ 5
`
`A.
`
`The PHOSITA would have been motivated to combine
`Hon 043 with Whittemore ..................................................................... 5
`
`1.
`
`2.
`
`3.
`
`Thermal Efficiency Would Have Motivated The
`Proposed Combination ................................................................ 6
`
`Reliable Liquid Delivery Provides Motivation For
`The Proposed Combination....................................................... 11
`
`Supreme Court Endorsed Rationales Support
`Combining Hon 043 and Whittemore ....................................... 12
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
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`Combination of prior art elements according
`to known methods ........................................................... 12
`
`Simple substitution ......................................................... 13
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`Known technique to improve similar devices
`in the same way .............................................................. 14
`
`Known device ready for improvement ........................... 15
`
`Obvious to try ................................................................. 15
`
`B.
`
`The Combination of Hon 043 And Whittemore Teaches
`All The Limitations of Claims 1-7 ...................................................... 16
`
`1.
`
`2.
`
`Hon 043 Teaches a “porous component set on a
`frame” ........................................................................................ 16
`
`Hon 043 Teaches a “frame having a run-through
`hole” .......................................................................................... 21
`
`C.
`
`P.O. Concedes That Hon 043 Meets The “Cylindrical
`Housing” and “Cylindrical Battery” Limitations That Are
`
`
`
`i
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`

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`Also Disclosed By Voges .................................................................... 22
`
`D.
`
`The Combination Teaches The Limitations of Claims 2-7 ................. 23
`
`IV. CLAIMS 8-10 ARE OBVIOUS .................................................................... 23
`
`V.
`
`CLAIMS 11-14 ARE OBVIOUS .................................................................. 24
`
`VI. DR. STURGES’ OPINIONS ARE CONSISTENT AND
`RELIABLE .................................................................................................... 26
`
`VII. CONCLUSION .............................................................................................. 31
`
`
`
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`
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`
`ii
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`

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`TABLE OF AUTHORITIES
`
`CASES
`
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) ............................................................................10
`
`In re Icon Health & Fitness, Inc.,
`496 F.3d 1374 (Fed. Cir. 2007) ............................................................................25
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 12, 14
`
`OTHER AUTHORITIES
`
`Manual of Patent Examining Procedure §2143 ................................................ 14, 16
`
`
`
`
`
`iii
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`

`

`PETITIONER’S EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`Exhibit 1001: U.S. Pat. No. 9,326,548 to Lik Hon
`
`Exhibit 1002: Chinese Pat. No. 2719043Y to Lik Hon
`
`Exhibit 1003:
`
`Certified English translation of Chinese Pat. No.
`2719043Y to Lik Hon
`
`Exhibit 1004: U.S. Pat. No. 2,057,353 to C. L. Whittemore, Jr
`
`Exhibit 1005:
`
`WO 2005/099494, which is the PCT application
`equivalent of Hon (CN 2719043Y) (“Hon ’494”)
`
`Exhibit 1006:
`
`Certified English translation of WO 2005/099494 pursuant
`to 37 C.F.R. 42.63(b)
`
`Exhibit 1007:
`
`Application Data Sheet and Specification of U.S. Pat.
`Appl. No. 14/244,376 Filed April 3, 2014
`
`Exhibit 1008:
`
`Non-Final Office Action of September 4, 2014 in
`14/244,376
`
`Exhibit 1009: Compilation of prosecution papers filed in 14/244,376
`
`Exhibit 1010:
`
`Non-Final Office Action of August 20, 2015 in
`14/244,376
`
`Exhibit 1011: Amendment of November 20, 2015 in 14/244,376
`
`Exhibit 1012: Notice of Allowance of March 15, 2016 in 14/244,376
`
`Exhibit 1013: Board’s Decision Denying Institution in IPR2015-00859
`
`Exhibit 1014: Board's Order Dismissing Petition IPR2015-01587
`
`Exhibit 1015: Declaration of Dr. Robert Sturges
`
`Exhibit 1016: Rohsenow, “Heat, Mass, And Momentum Transfer”
`
`Exhibit 1017: Merriam-Webster Definition of “Set”
`
`Exhibit 1018: U.S. Pat. No. 6,155,268 to Takeuchi
`
`Exhibit 1019: U.S. Pat. No. 4,947,874 to Brooks et al.
`
`Exhibit 1020: U.S. Pat. No. 4,629,665 to Matsuo
`
`iv
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`
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`

`

`Exhibit 1021: U.S. Pat. No. 5,894,841 to Voges
`
`Exhibit 1022: U.S. Pat. Pub. No. 2005/0016550 to Katase
`
`Exhibit 1023: U.S. Pat. No. 5,703,633 to Gehrer et al.
`
`Exhibit 1024: IPR2014-01300, Paper No. 8
`
`Exhibit 1025:
`
`Exhibit 1026:
`
`Exhibit 1027:
`
`Exhibit 1028:
`
`Exhibit 1029:
`
`Exhibit 1030:
`
`Exhibit 1031:
`
`Exhibit 1032:
`
`Exhibit 1033:
`
`Exhibit 1034:
`
`Exhibit 1035:
`
`Exhibit 1036:
`
`Updated translator declaration attached to the Certified
`English translation of Chinese Pat. No. 2719043Y to Lik
`Hon that was previously submitted as Exhibit 1003
`submitted in accordance with PTAB Order in Paper 8
`Supplemental Declaration of Dr. Robert H. Sturges
`submitted in accordance with PTAB Order in Paper 16
`Declaration of Huo Gejun regarding Ex. 1006 submitted
`in accordance with PTAB Order in Paper 16
`IPR2016-01268, Deposition Transcript of Richard P.
`Meyst, June 7, 2017 (“Meyst 742 Dep. Tr.”)
`Deposition Transcript of Richard P. Meyst, July 21, 2017
`(“Meyst 548 Dep. Tr.”)
`IPR2016-01268, Reply Declaration of Dr. Robert Sturges
`(“Sturges 742 Reply Decl.”)
`IPR2016-01268, Supplemental Evidence Declaration of
`Dr. Robert Sturges (“Sturges 742 Suppl. Evidence Decl.”)
`IPR2016-01268, Declaration Of Richard Meyst In Support
`Of Patent Owner’s Preliminary Response To Petition For
`Inter Partes Review (“Meyst 742 Preliminary Decl.”)
`James H. Earle, “Engineering Design Graphics,” Chapter
`16
`Serope Kalpakjian, “Manufacturing Processes for
`Engineering Materials,” Chapter 2
`IPR2015-00859, Patent Owner’s Preliminary Response to
`Petition for Inter Partes Review of U.S. Pat. No.
`8,365,742
`Eugene A. Avallone et al, “Marks’ Standard Handbook for
`Mechanical Engineers,” Chapter 15
`
`Exhibit 1037: U.S. Pat. No. 2,442,004 to J. T. Hayward-Butt
`
`
`
`v
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`

`

`Exhibit 1038:
`
`Ascher H. Shapiro, “Shape and Flow: The Fluid Dynamics
`of Drag,” Chapter VI
`
`Exhibit 1039: Reply Declaration of Dr. Robert Sturges
`
`
`
`
`
`
`
`vi
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`

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`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No.
`
`Description
`
`Exhibit 2001: Declaration of Richard Meyst (“Meyst Decl.”)
`
`Exhibit 2002: U.S. Patent No. 8,365,742 to Hon
`
`Exhibit 2003:
`
`Exhibit 2004:
`
`Exhibit 2005:
`
`Exhibit 2006:
`
`Exhibit 2007:
`
`Exhibit 2008:
`
`Exhibit 2009:
`
`Exhibit 2010:
`
`Exhibit 2011:
`
`Exhibit 2012:
`
`VMR Products LLC v. Fontem Holdings 1 B.V., IPR2015-
`00859, Paper 2, Petition for Inter Partes Review of
`8,365,742, March 10, 2015
`Dominion Dealers Solutions, LLC v. Autoalert, Inc.,
`IPR2013-00220, Paper 13, Decision on Request for
`Rehearing, October 10, 2013
`Nu Mark LLC v. Fontem Holdings 1 B.V., IPR2017-
`00204, Paper 1, Petition for Inter Partes Review of
`9,326,548, November 4, 2016
`Examiner Interview Summary of 12/01/2015 interview
`with Examiner Mayes and Supervisory Examiner Wilson
`in U.S. Patent Application No. 14/244,376 issued as U.S.
`Patent No. 9,326,548 B2
`Statement of Related Applications filed 01/13/2016 in
`U.S. Patent Application No. 14/244,376
`Notice of Allowance in U.S. Patent Application No.
`14/244,376 dated 03/15/2016
`Statement of Related Applications filed 12/22/2015 in
`U.S. Patent Application No. 13/740,011
`Notice of Allowance in U.S. Patent Application No.
`13/740,011 dated 06/21/2016
`Office Action in U.S. Patent Application No. 13/079,937
`dated 07/19/2012
`Examiner Interview Summary in U.S. Patent Application
`No. 13/079,937 dated 08/23/2012
`
`Exhibit 2013: U.S. Patent No. 1,775,947 to Robinson
`
`Exhibit 2014: U.S. Patent No. 5,144,962 to Counts
`
`Exhibit 2015: EP 0 845 220 B1 to Susa
`
`vii
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`
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`

`

`Exhibit 2016: IPR2016-01268, Ex. 1001 (U.S. Patent No. 8,365,742)
`
`Exhibit 2017:
`
`IPR2016-01268, Ex. 1020 (Sturges Supplemental
`Declaration)
`
`Exhibit 2018:
`
`IPR2016-01268, Ex. 2016 (Deposition Transcript of
`Robert Sturges, March 8, 2017)
`
`Exhibit 2019: IPR2016-01268, Ex. 2015 (Second Meyst Declaration)
`
`Exhibit 2020: New Oxford American Dictionary, 2001, selected pages
`
`Exhibit 2021:
`
`Exhibit 2022:
`
`Exhibit 2023:
`
`Exhibit 2024:
`
`Exhibit 2025:
`
`Random House Webster’s Unabridged Dictionary, 2001,
`selected pages
`NJOY, Inc. v. Fontem Holdings 1 B.V., IPR2014-01300,
`Paper 39, Order Terminating Proceeding (PTAB
`November 24, 2015)
`Nu Mark LLC v. Fontem Holdings B.V. 1, IPR2016-
`01285, Paper 10, Decision Denying Inter Partes Review
`(PTAB November 30, 2016)
`Fluent 6.3 Users Guide, Fluent, Inc., Lebanon, NH,
`September 2006 (excerpt)
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V.,
`IPR2016-01527, Paper 10, Decision Denying Inter Partes
`Review, (PTAB January 30, 2017)
`
`Exhibit 2026: RESERVED
`
`Exhibit 2027: RESERVED
`
`Exhibit 2028: Declaration of Peter Sher
`
`Exhibit 2029: IPR2016-01268, Ex. 1015 (Sturges Declaration)
`
`Exhibit 2030: Second Declaration of Richard Meyst
`
`Exhibit 2031: Deposition Transcript of Robert Sturges, May 10, 2017
`
`Exhibit 2032: U.S. Patent No. 1,968,509 to Tiffany
`R. Sabersky and Allan J. Acosta, “Fluid Flow: A First
`Course in Fluid Mechanics,” The Macmillan Company,
`New York, 1964 (excerpt)
`
`Exhibit 2033:
`
`Exhibit 2034: Declaration of Gabriel Flores
`
`
`
`viii
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`

`

`Exhibit 2035:
`
`Exhibit 2036:
`
`Exhibit 2037:
`
`Choe, Heeman et al., “Mechanical properties of oxidation-
`resistant Ni-Cr foams,” Materials Science and Engineering
`A384, pp. 184-193, May 2004
`Xi, Zhengping et al., “Progress of Application Researches
`of Porous Fiber Metals,” Materials, Vol. 4, pp. 816-824,
`April 19, 2011
`Su, Wei-Fang, “Principles of Polymer Design and
`Synthesis,” Springer, Heidelberg, 2013, Chapter 2 -
`Polymer Size and Polymer Solutions
`
`
`
`ix
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`

`

`I.
`
`INTRODUCTION
`
`The conclusion of obviousness is straightforward. Hon 043 discloses the
`
`claimed invention with the exception that Hon 043’s heating wire is not wound on
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`a part of the porous component. However, that teaching is indisputably provided
`
`by Whittemore. Opp., 12. It would have been obvious to include Whittemore’s
`
`wire-wrapped wick in Hon 043 to achieve the predicted result of improved heating
`
`efficiency. The proposed combination is also supported by numerous Supreme
`
`Court endorsed rationales.
`
`Patent Owner (“P.O.”) devotes a majority of its opposition arguing that Hon
`
`043 is allegedly missing the porous component “set on” a frame with a “run-
`
`through hole” limitations. But as illustrated below, Hon 043’s porous body 27 is
`
`“set on” the cavity wall 25 in the same way the 548 patent’s porous component 81
`
`is “set on” a portion of the frame 82. Moreover, Hon 043’s ejection holes 24 are
`
`run-through holes.
`
`Ex. 1003-00016, Fig. 6
`
`
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`
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`Ex. 1001-00010, Fig. 18
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`
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`1
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`
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`Porous
`Body
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`Ejection
`hole
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`Cavity Wall
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`Interfaces
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`

`

`In arguing otherwise, P.O. advocates improperly narrow constructions that
`
`are contrary to both the plain meaning and the intrinsic evidence. Nevertheless,
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`Hon 043 discloses the “set on” and “run-through hole” limitations even under
`
`P.O.’s improperly narrow constructions.
`
`P.O. also argues that atomization efficiency would not have motivated the
`
`PHOSITA to modify Hon 043 to include Whittemore’s wick. But P.O.’s argument
`
`is based on incorrect characterizations of Hon 043’s operation. Hon 043’s relevant
`
`embodiment relies on convection – not direct heating – for atomization. Moreover,
`
`P.O. has no good answer for the numerous other Supreme Court endorsed
`
`rationales that support the proposed combination.
`
`Also without merit are P.O.’s attempts to discredit Petitioner’s expert, Dr.
`
`Sturges. Sturges’ opinions are consistent, factually grounded, and based upon
`
`sound reasoning.
`
`The Board’s initial reaction in granting review was correct. Adding
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`Whittemore’s wick to Hon 043’s e-cigarette is an obvious modification, not a
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`patentable invention. The full record confirms that claims 1-14 should be
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`cancelled.
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`2
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`

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`II.
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`P.O.’S PROPOSED CONSTRUCTION OF “SET ON” IS
`IMPROPERLY NARROW
`
`A “porous component set on a frame” simply means that the porous
`
`component is positioned, i.e., sits, on the frame. The plain and ordinary meaning
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`of “set” is “1: to cause to sit: place in or on a seat,” or “8: to cause to assume a
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`specified posture or position.” Ex. 1017-00004. Consistent with that plain
`
`meaning, the 548 specification illustrates the porous component positioned on the
`
`frame.
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`
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`Ex. 1001, Fig. 18
`
`P.O. counters that “set on” means that the porous component is held in place
`
`by the frame. There are two fundamental problems with P.O.’s proposed
`
`construction. First, P.O. narrowly interprets “set” to mean “held in place.”
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`Second, P.O. interprets “on” to mean “by.” Thus, even if “set” were narrowly
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`construed to mean “held in place” (and it should not), P.O.’s construction further
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`rewrites the limitation to say the porous component is held in place by – rather than
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`
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`3
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`Interfaces
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`

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`on – the frame. But the claim says “set on” – not “set by” – the frame. Ex. 1039,
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`¶¶6-12. P.O. never explains why “on” should be construed to mean “by.”
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`The intrinsic evidence supports Petitioner’s, not P.O.’s, proposed
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`construction. Opp., 16-18. Claims 1 and 8 merely refer to the position of the
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`porous component. The porous component is “set on”, i.e., is positioned on, the
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`frame, and the part wrapped in heating wire coil is positioned in “an airflow path in
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`the atomizer assembly.” Ex. 1001, 5:61-65, Figs. 17-18; Ex. 1039, ¶¶7-8. There is
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`no requirement that the porous component is held in place, by the frame or
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`otherwise.
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`Similarly, “set on” as used in the specification signals the relative position of
`
`two components. The porous component is positioned on (“set on”) the frame as
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`illustrated in Figs. 17 and 18. Ex. 1001, 5:61-65. The restriction component
`
`likewise is positioned on (“set on” or “installed on”) one end of the porous
`
`component. Id., 5:17-27; Ex. 1039, ¶¶7-8, 12. The specification is silent about
`
`how or what holds these components in place.
`
`The dictionary definitions also do not support P.O.’s proposed construction.
`
`Opp., 18. Instead, they confirm that “set” signifies position. See e.g., Ex. 2021,
`
`p.1751 (“set” defined as “1. to put (something or someone) in a particular place . . .
`
`6. to put in the proper position.”); Ex. 2020, p.1559 (“put, lay, or stand (something)
`
`
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`4
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`

`

`in a specific place or position”) (emphasis included). Although “set” may
`
`encompass something that is fixed, it certainly does not require it. Ex. 1039, ¶10.
`
`Nevertheless, the “set on” limitation is met by Petitioner’s proposed
`
`combination under either proposed construction.
`
`III. CLAIMS 1-7 ARE OBVIOUS
`
`A. The PHOSITA would have been motivated to combine Hon
`043 with Whittemore
`
`As illustrated below, it would have been obvious to incorporate
`
`Whittemore’s wire-wrapped wick into the e-cigarette of Hon 043. The predicted
`
`result would be the reliable transport of liquid to the heating wire for atomization
`
`by direct heating, which is thermally more efficient than Hon 043’s indirect,
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`convective heating. Petition, 25-26.
`
`
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`Petition, 25
`
`5
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`

`

`1.
`
`Thermal Efficiency Would Have Motivated The
`Proposed Combination
`
`In an effort to strip the motivation for the proposed combination, P.O.
`
`inflates Hon 043’s purported thermal efficiency.
`
`P.O. incorrectly portrays Hon 043, contending that ejection holes 24 are
`
`“plain orifice” atomizers, which purportedly require no thermal energy. Opp., 21-
`
`23. But ejection holes are not atomizers, so it is irrelevant that they require no
`
`thermal energy. Ex. 1039, ¶¶37, 59-64. Atomization occurs after the liquid
`
`droplets are ejected from holes 24:
`
`The high speed stream passing through the ejection holes [24] drives
`
`the nicotine solution in the porous body 27 to eject into the
`
`atomization cavity 10 in the form of droplet[s], where the nicotine
`
`solution is subjected to the ultrasonic atomization by the first
`
`piezoelectric element 23 and is further atomized by the heating
`
`element 26.” Ex. 1003-00010-11 (emphasis added).
`
`
`
`In an alternative embodiment, Hon 043 teaches that the first piezoelectric
`
`element may be omitted, and atomization is performed exclusively by heating
`
`element:
`
`
`
`6
`
`

`

` [t]o simplify the design, the first piezoelectric element 23 . . . can be
`
`omitted, and the atomization of the nicotine solution will be made
`
`only by the heating element 26.” Ex. 1003-00011 (emphasis added).
`
`Of course, if ejection holes were atomizers, then Hon 043’s statement that
`
`atomization is “only by” heating element in an embodiment that also includes
`
`ejection holes would be nonsensical.
`
`
`
`And although the droplets ejected from Hon 043’s holes 24 may be “small,”
`
`that does not mean they are atomized. Ex. 1039, ¶¶59, 61. Indeed, because the
`
`droplets are not atomized, Hon 043 always requires at least one of heating element
`
`26 or piezoelectric element 35. Id.
`
`P.O. speculates that heating Hon 043’s “pre-formed” liquid droplets “may”
`
`be more thermally efficient than heating the “bulk” liquid in Whittemore’s wick.
`
`Opp., 23. However, most of the “pre-formed” liquid droplets bypass Hon 043’s
`
`heating wire, and thus are heated by convection. In contrast, Whittemore is
`
`thermally more efficient because the liquid comes into direct contact with
`
`Whittemore’s heating element. Ex. 1015, ¶¶62-66, Ex. 1026, ¶¶4-11, Ex. 1039,
`
`¶¶46-49.
`
`P.O. also challenges Sturges’ purported “assumption” that only a small
`
`percentage of droplets strike Hon 043’s heating wire. But P.O. and its expert reach
`
`the same conclusion as Sturges. As they note, replacing Hon 043’s heating wire
`7
`
`
`
`

`

`with a heated sheet would “cause a much larger percentage of droplets” to
`
`directly contact the heating element. Opp., 21, 24 (emphasis added).1 This
`
`statement confirms Sturges’ opinion that only a relatively small percentage of
`
`droplets strike Hon 043’s heating wire. Indeed, this is just plain common sense,
`
`given the relatively small space occupied by Hon 043’s heating wire. Ex. 1039,
`
`¶52; Ex. 1003-00016. 2
`
`And even with respect to droplets “aimed” at Hon 043’s heating wire, the
`
`PHOSITA would have understood that slipstream flow would cause most of those
`
`droplets to bypass the heating wire. Ex. 1026, ¶¶7-11.
`
`
`1 P.O. incorrectly contends that Sturges did not know that Hon 043 disclosed a
`
`heating sheet. Opp., 24. Sturges merely noted that a particular type of heating
`
`sheet was not disclosed, i.e., a sheet that would capture and retain liquid droplets.
`
`Ex. 2018, 162:22-168:14.
`
`2 As the PHOSITA would have understood, in order to prolong battery life, Hon
`
`043’s heating wire is relatively thin, occupying a relatively small space within the
`
`atomization chamber. Ex. 1039, ¶¶51-53.
`
`8
`
`
`
`

`

`Ex. 1026-00007
`
`
`
`Hon 043 implicitly acknowledges the presence of slipstream. The “eddy
`
`flow” referenced by Hon 043 (Ex. 1003-00011) is caused by the heating wire,
`
`which disrupts airflow, resulting in an eddying wake downstream and a boundary
`
`layer upstream of the heating wire. The upstream boundary layer causes a majority
`
`of the droplets to bypass the heating wire. Ex. 1039, ¶¶56-57. The PHOSITA
`
`would have understood that Whittemore’s wick would compensate for slipstream
`
`by transporting liquid directly to Hon 043’s heating wire. Id., ¶49, Ex. 1015, ¶¶
`
`62-66; Ex. 1026, ¶¶ 4-11.
`
`P.O. argues that Whittemore’s wick is unnecessary, because a shape heating
`
`wire would purportedly “mitigate” slipstream. Opp., 25-26.3 But P.O. never
`
`
`3 P.O.’s supporting figure (Opp., 26) is contrived, and in any event does not
`
`accurately reflect fluid flow. Ex. 1039, ¶¶57-58.
`
`
`
`9
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`

`

`explains how a coiled wire addresses slipstream flow, or would otherwise cause
`
`more droplets to strike the heating element. Opp., 25-26; Ex. 1039, ¶¶57-58.4
`
`P.O. also argues that, instead of using Whittemore’s wick, the PHOSITA
`
`would have made other modifications designed to increase the number of droplets
`
`striking the Hon 043’s heating element, such as by adjusting the spray pattern
`
`and/or making the heating element larger. Opp., 26-27. But the PHOSITA would
`
`have appreciated that these solutions had shortcomings. For example, regardless of
`
`the spray pattern, slipstream would nonetheless limit the extent to which droplets
`
`would strike Hon 043’s heating element. Ex. 1039, ¶¶50-56. Significantly
`
`increasing the size of the heating element could interfere with airflow and would
`
`decrease battery life. Id.
`
`Nevertheless, even if the PHOSITA would have considered P.O.’s
`
`alternative solutions, this does not make using Whittemore’s wick non-obvious.
`
`See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
`
`
`4 Sturges never “confirmed” that slipstreams play no role in Hon 043. Opp., 26.
`
`Sturges testified that he lacked sufficient information to determine whether
`
`stacking several cylinders would change the flow pattern shown in Fig. 6-1d of
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`Ex. 1026-00007. Ex. 2031, 106:14-107:10.
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`10
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`

`

`disclosure of more than one alternative does not constitute a teaching away from
`
`any of these alternatives because such disclosure does not criticize, discredit, or
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`otherwise discourage the solution claimed…”).
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`Finally, the POHISTA would have retained the ejection holes because they
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`control airflow through Hon’s device. Ex. 1039, ¶¶45-46, 48.
`
`2.
`
`Reliable Liquid Delivery Provides Motivation For
`The Proposed Combination
`
`Disputing the motivation for incorporating Whittemore’s wick, P.O. argues
`
`that Hon 043’s porous body 27 already transports liquid via capillary action for
`
`atomization at the ejection holes 24 or 30. Opp., 29-30. But Hon 043’s ejection
`
`holes are not atomizers. Rather, droplets are atomized by Hon’s heating element
`
`after they are ejected into Hon 043’s atomization cavity. The PHOSITA would
`
`have been motivated to insert Whittemore’s wick so that liquid is reliably
`
`transported from Hon 043’s porous body to the heating element for atomization by
`
`direct heating.
`
`P.O.’s “teaching away” argument fares no better. The PHOSITA would not
`
`have been concerned about Whittemore’s wick reabsorbing liquid droplets in the
`
`proposed combination. The droplets ejected by Hon 043’s holes 24 are not
`
`atomized. Hon 043 teaches that large droplets are reabsorbed by Hon 043’s porous
`
`body 27 through overflow holes 29. Ex. 1003-00011. That some of these droplets
`
`
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`11
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`

`

`might instead be reabsorbed by Whittemore’s wick would not have caused the
`
`PHOSITA any concern. And even if droplets ejected from holes 24 were
`
`sufficiently small to be considered atomized, the PHOSITA would have
`
`understood that few if any droplets would be reabsorbed by Whittemore’s wick,
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`because Whittemore’s wire-wrapped wick is designed to release vaporized liquid,
`
`not reabsorb atomized liquid droplets. Ex. 1039, ¶¶37-38.
`
`3.
`
`Supreme Court Endorsed Rationales Support
`Combining Hon 043 and Whittemore
`
`There are numerous Supreme Court endorsed rationales that support the
`
`proposed combination, any one of which standing alone is sufficient to support
`
`Petitioner’s obviousness case.5
`
`a.
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`Combination of prior art elements according to
`known methods
`
`In the proposed combination, the heating coil and wick perform the same
`
`functions as they do separately. The wick transports liquid via capillary action.
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`The heating wire vaporizes liquid. See e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 416 (2007) (a combination that “only unites old elements with no change in
`
`their respective functions” is obvious).
`
`
`5 Notwithstanding P.O.’s contention, Petitioner applied these Supreme Court
`
`endorsed rationales to the specific facts of this case. Petition, 27-30.
`
`
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`12
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`

`

`P.O.’s contention that the heating wire performs a different function in the
`
`proposed combination is without merit. Opp., 31-32. Whether it “further
`
`atomizes” (as in one Hon 043 embodiment) or “solely” atomizes (as in the
`
`proposed combination), the heating wire atomizes liquid. P.O. also ignores that
`
`Hon 043 discloses an embodiment in which atomization is “only” by the heating
`
`wire, just as in the proposed combination. Ex. 1003-00011.
`
`b.
`
`Simple substitution
`
`P.O. does not seriously dispute that the proposed combination is the
`
`substitution of one known element (Whittemore’s wire-wrapped wick) for another
`
`(Hon 043’s heating wire) to obtain predictable results.
`
`Instead, P.O. irrelevantly faults Petitioner for failing to explain the fate of
`
`the droplets ejected from Hon 043’s ejection holes in the proposed combination.
`
`They meet the same fate as taught by Hon 043. Atomized droplets are carried
`
`away in an aerosol while un-atomized droplets are reabsorbed by the porous body
`
`27 via the overflow holes. Ex. 1003-0010- 11; Ex. 1039, ¶¶37-38, 46, 48.
`
`Also without merit is P.O.’s alternative “simple” substitution, which
`
`involves substituting Whittemore’s wire-wrapped wick for Hon 043’s wire and
`
`porous body. Opp., 34. But P.O.’s proposed substitution would involve a major
`
`redesign that, as even P.O.’s expert acknowledges, the PHOISTA would not
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`
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`13
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`

`

`consider to be an improvement over Hon 043. Ex. 1028, 128:6-16. Sturges agrees.
`
`Ex. 1039, ¶48.
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`The simplest and most straightforward substitution that the PHOSITA would
`
`have pursued, and the one that poses a minimal impact on airflow through Hon
`
`043’s device, is to substitute Whittemore’s wire-wrapped wick for Hon 043’s
`
`heating wire. Id.
`
`c.
`
`Known technique to improve similar devices in the
`same way
`
`An invention that improves a “base” device in the same way as a
`
`“comparable” device is obvious. See KSR, 550 U.S. at 417 (a claim is obvious “if
`
`a technique has been used to improve one device, and a person of ordinary skill in
`
`the art would recognize that it would improve similar devices in the same way”);
`
`MPEP §2143(I)(C).
`
`Hon 043 is the “base” device and Whittemore is the “comparable” device.
`
`The wick improves the “base” Hon 043 device in the same way as it improves the
`
`“comparable” Whittemore device; it provides for the reliable delivery of liquid to a
`
`heating element for atomization by direct heating. Ex. 1039, ¶47.
`
` P.O. misapplies the analysis, wrongly contending that Petitioner was
`
`obligated to identify a second “base” device that is “comparable” to Hon 043 and
`
`which Whittemore improves upon. Opp., 35-36. But the only base device required
`
`
`
`14
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`

`

`by the analysis is the device that the invention improves upon, which as noted
`
`above is Hon 043.
`
`d. Known device ready for improvement
`
`P.O. argues that Hon 043 was not ready for the improvement taught by
`
`Whittemore. According to P.O., Hon 043 “already makes use” of a porous body to
`
`deliver liquid to ejection holes 24 where the liquid is purportedly atomized. Opp.,
`
`38. But this argument is based upon the same mischaracterization of Hon 043
`
`repeated throughout P.O.’s opposition. Hon 043’s ejection holes are not atomizers.
`
`Ex. 1039, ¶¶37, 59-64. Instead, the droplets ejected from holes 24 are atomized in
`
`the atomization cavity by convective heat from the heating wire.
`
`Thus, the PHOSITA would have recognized that Hon 043 was ready for the
`
`improvement taught by Whittemore. By adding Whittemore’s wick, liquid is
`
`transported from Hon 043’s porous body to the heating wire where it is atomized
`
`by direct heating. Id., ¶¶46-47.
`
`e.
`
`Obvious to try
`
`For an invention to be obvious to try there must have been “a recognized
`
`problem or need in the art” with “a finite number of identified, predictable
`
`solutions.” MPEP §2143(I)(E). As Petitioner explained, Whittemore’s wire-
`
`wrapped wick was one of a finite number of identified, predictable solutions, for
`
`solving Hon 043’s thermal inefficiency problem. Petition, 29-30.
`
`15
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`
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`

`

`P.O. responds that Hon 043’s ejection holes were not a recognized problem
`
`but instead an “atomization method.” But, as already noted, Hon 043’s ejection
`
`holes are not atomizers; they are an inefficient means for delivering liquid to a
`
`heating wire for atomization.
`
`B.
`
`The Combination of Hon 043 And Whittemore Teaches All
`The Limitations of Claims 1-7
`
`P.O. argues that the proposed combination is missing a porous component
`
`“set on a frame” with the frame having a “run-through hole.” Opp., 40. P.O. is
`
`mistaken.
`
`1. Hon 043 Teaches a “porous component set on a
`frame”
`
`Hon 043’s porous body 27 is “set on” cavity wall 25 in essentially the same
`
`manner as the 548 patent’s porous component 81 is “set on” a part of the frame 82.
`
`Hon 043’s porous body and the 548 patent’s porous component, respectively,
`
`envelop the portion of the frame upon which they are set.
`
`
`
`
`
`Ex. 1003, Fig. 6
`
`
`
`
`
`
`
`Ex. 1001, Fig. 18
`
`
`
`16
`
`Porous
`Body
`
`Cavity Wall
`
`Interfaces
`
`

`

`P.O. responds that, because Hon 043’s cavity wall 25 purportedly does not
`
`provide weight-bearing support for porous body 27, the porous body cannot be
`
`sitting on the cavity wall. Opp., 41-42. But the “set on” limitation merely requires
`
`that the porous body is positioned on the cavity wall, regardless of whether the
`
`cavity wall provides actual weight-bearing support.
`
`Nevertheless, Hon 043’s cavity wall provides weight-bearing support in the
`
`same manner as the 548 patent’s frame provides weight-bearing support for the
`
`porous component. The frames of both Hon 043 and the 548 patent support the
`
`weight of the liquid-filled porous body so that it does not sag, impinging upon the
`
`atomization cavity. Ex. 1039, ¶¶20-21; Ex. 2018, 126:12-17, 186:23-187:15; Ex.
`
`1035, ¶45.
`
`
`
`
`
`Ex. 1003, Fig. 6
`
`
`
`
`
`Ex. 1001, Fig. 18
`
`
`
`17
`
`Porous
`Body
`
`Force of
`gravity
`
`Atomization
`Cavity Wall
`
`Frame
`
`Porous
`component
`
`Force of
`gravity
`
`

`

`In arguing otherwise, P.O. relies on the Board’s decision in IPR2015-00859
`
`refusing to institute trial on claims from a different patent. Nonetheless, the record
`
`here is different and more fully developed. As Sturges explains, and P.O.’s expert
`
`agrees, Hon 043’s porous body 27 may be made from relatively compliant
`
`materials. Ex. 1015, ¶77; Ex. 1026, ¶¶12-19; Ex. 1029, 17:8-18:6. As such, Hon
`
`043’s porous body would sag but for the weight-bearing support provided by
`
`cavity wall 25. Ex. 1030, ¶¶21-22; Ex. 2018, 126:12-17, 186:23-187:15. Thus,
`
`even if weight-bearing support is the litmus test, the porous body is “set on” the
`
`frame under P.O.’s proposed construction.
`
`Also without merit are P.O.’s linguistic gymnastics. Pointing to the
`
`annotated figure below, P.O. argues that it shows the cavity wall “sitting in or on
`
`the porous body – not the porous body ‘sitting on’ the cavity wall;” and that the
`
`cavity wall 25 is “placed in” the porous body but the porous body is not “placed
`
`on” the cavity wall. Opp. 42-43. But in this case a picture is worth a thousand
`
`words. Regardless of P.O.’s spin, Hon 043’s porous body sits on the cavity wall;
`
`there is simply no getting around that.6
`
`