Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 24
`Entered: February 27, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PUZHEN LIFE USA, LLC,
`Petitioner,
`v.
`ESIP SERIES 2, LLC,
`Patent Owner.
`
`Case IPR2017-02197
`Patent 9,415,130 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318; 37 C.F.R. § 42.73
`
`
`
`
`
`
`

`

`IPR2017-02197
`Patent 9,415,130 B2
`
`INTRODUCTION
`
`A. Background
`Puzhen Life USA, LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
`requesting an inter partes review of claims 1, 3, and 17 of U.S. Patent No.
`9,415,130 B2 (Ex. 1001, “the ’130 patent”). ESIP Series 2, LLC (“Patent
`Owner”)1 filed a Preliminary Response (Paper 5, “Prelim. Resp.”). On
`March 9, 2018, we instituted trial on all challenged claims and all grounds
`asserted in the Petition. Paper 10 (“Inst. Dec.”). During the trial, Patent
`Owner filed a Response (Paper 15, “PO Resp.”), and Petitioner filed a Reply
`(Paper 17). In addition, Patent Owner filed a motion to exclude certain
`evidence and pleadings (Paper 19), to which Petitioner filed an Opposition
`(Paper 20) and Patent Owner filed a Reply (Paper 22). We held a hearing,
`the transcript of which has been entered into the record. Paper 23 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6, and we issue this Final
`Written Decision pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. We
`conclude that Petitioner has established by a preponderance of the evidence
`that claims 1, 3, and 17 of the ’130 patent are unpatentable.
`
`
`1 The Petition names Earl Sevy, the inventor of the ’130 patent, as the Patent
`Owner. Pet. 1. Patent Owner made of record in this proceeding an
`instrument purporting to assign “[t]he entire right, title and interest in” all
`“Patents granted” on the application that issued as the ’130 patent.
`Ex. 2004, 1. The assignee named in that assignment is “ESIP, LLC, Series
`No. 2,” which Patent Owner consistently refers to as “ESIP Series 2, LLC.”
`Id.; Prelim. Resp. 1; PO Resp. 1. We assume, without deciding, that Patent
`Owner’s nomenclature is correct.
`
`2
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`IPR2017-02197
`Patent 9,415,130 B2
`B. Related Matters
`The parties note that the ’130 patent is at issue in ESIP Series 1, LLC
`v. doTERRA Int’l, LLC, Case No. 2:16-cv-01011 (D. Utah). Pet. 3; Paper 4,
`2.
`
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1, 3, and 17 of the ’130 patent are
`unpatentable based on the following grounds (Pet. 17–60):2
`Statutory
`Basis
`Challenged Claims
`Ground
`§ 103
`§ 103
`§ 103
`§ 103
`
`Sevy3 and Cronenberg4
`Sevy and Giroux5
`Sevy and Kato6
`Sevy and Stroia7
`
`1, 3, and 17
`1, 3, and 17
`1, 3, and 17
`1, 3, and 17
`
`D. The ’130 Patent
`The ’130 patent, titled “Industrial, Germicidal, Diffuser Apparatus
`and Method,” issued on August 16, 2016. Ex. 1001, at [45], [54]. The ’130
`patent relates to “[a] modular, integrated, combination air purification and
`aroma diffuser” that makes use of “a micro-cyclone for quiet, well diffused
`flow of ultra-fine droplets.” Ex. 1001, at [57].
`
`
`2 Petitioner also relies on a declaration from Fred P. Smith, P.E., CSP.
`Ex. 1007.
`3 Sevy, U.S. Patent No. 7,878,418 B2, issued Feb. 1, 2011 (Ex. 1003,
`“Sevy”).
`4 Cronenberg, U.S. Patent No. 4,243,396, issued Jan. 6, 1981 (Ex. 1004,
`“Cronenberg”).
`5 Giroux, U.S. Patent No. 8,001,963 B2, issued Aug. 23, 2011 (Ex. 1005,
`“Giroux”).
`6 Kato et al., U.S. Patent No. 6,236,042 B1, issued May 22, 2001 (Ex. 1006,
`“Kato”).
`7 Stroia et al., U.S. Patent No. 6,029,913, issued Feb. 29, 2000 (Ex. 1009,
`“Stroia”).
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`IPR2017-02197
`Patent 9,415,130 B2
`The diffusion of “[o]verly large particles” poses “a number of
`problems,” including wasting the aromatic product and causing the particles
`to settle out of the air too quickly. Id. at 4:15–28. To avoid these problems,
`the ’130 patent describes using a “micro-cyclone” to separate “the
`comparatively larger particles from the flow” of air containing atomized
`droplets of the liquid product to be diffused. Id. at 4:3–14. This micro-
`cyclone “contains a spiral channel” that “begins below a central plane” that
`is “defined by a plate.” Id. at 16:65–17:4. The channel spirals along a
`“circular route . . . from below the plate” to above it. Id. at 17:18–20. In
`use, this micro-cyclone causes “the comparatively larger particles in the
`stream of air . . . to smash and coalesce against the inside of the outer wall of
`the channel,” leaving only “the comparatively smallest range of droplets [to
`be] passed out to the nozzle.” Id. at 17:26–31. After coalescing, the larger
`droplets “drip back into the atomizer . . . to be re-atomized.” Id. at 17:28–
`29.
`
`E. Illustrative Claim
`Claims 1 and 17 of the ’130 patent are independent, and claim 1 is
`illustrative; it recites:
`1. A method for introducing a scent into breathable air, the
`method comprising;
`providing a system comprising a reservoir, eductor, and
`separator operably connected to one another;
`providing a liquid constituting an aromatic substance selected
`by an operator for the scent to be introduced into the breathable
`air;
`drawing a first portion of the liquid from the reservoir by the
`eductor passing a flow of air;
`entraining the first portion of the liquid into the flow;
`
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`IPR2017-02197
`Patent 9,415,130 B2
`forming droplets of the first portion by at least one of restricting
`an area through which the flow passes and the entraining;
`separating out a second distribution of the droplets by passing
`the flow through a wall between a first chamber and a second
`chamber, the flow path spiraling axially and circumferentially,
`simultaneously and continuously, through an arcuate channel
`formed through the wall; and
`passing a first distribution of the droplets out of the separator
`into the breathable air.
`Ex. 1001, 23:22–41.
`
`ANALYSIS
`A. Real Parties in Interest
`A petition for inter partes review “may be considered only if . . . the
`petition identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). Here,
`the Petition identifies Petitioner and Puzhen, LLC as real parties in interest
`(“RPIs”). Pet. 3. Patent Owner argues that this identification is incomplete
`and that both Puzhen Life Co., Ltd. (“Puzhen Life HK”) and doTERRA
`International, LLC (“doTERRA”) should have been identified as RPIs as
`well. PO Resp. 1–6.
`
`1. Legal Principles
`Petitioner bears the overall burden to prove that all real parties in
`interest have been identified. Worlds Inc. v. Bungie, Inc., 903 F.3d 1237,
`1242 (Fed. Cir. 2018) (applying this rule in the context of 35 U.S.C.
`§ 315(b)). Thus, we evaluate the evidence adduced at trial to determine
`whether Petitioner has borne its burden. In doing so, although there are
`many ways in which a non-party can become a real party in interest, we need
`only focus on the arguments raised by Patent Owner. Id. (“an IPR
`petitioner’s initial identification of the real parties in interest should be
`
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`IPR2017-02197
`Patent 9,415,130 B2
`accepted unless and until disputed by a patent owner” by “produc[ing] some
`evidence to support its argument that a particular third party should be
`named a real party in interest”); Wi-Fi One, LLC v. Broadcom Corp., 887
`F.3d 1329, 1338 n.3 (Fed. Cir. 2018) (“the Board properly focused on the
`factors [the patent owner] raised in its argument”).
`“[A]t a general level, the ‘real party-in-interest’ is the party that
`desires review of the patent.” Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”). “Whether a
`party who is not a named participant in a given proceeding nonetheless
`constitutes a ‘real party-in-interest’ . . . to that proceeding is a highly fact-
`dependent question” with no “bright line test,” and is assessed “on a case-
`by-case basis.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor
`v. Sturgell, 553 U.S. 880, 893–95 (2008)). “Determining whether a non-
`party is a ‘real party in interest’ demands a flexible approach that takes into
`account both equitable and practical considerations, with an eye toward
`determining whether the non-party is a clear beneficiary that has a
`preexisting, established relationship with the petitioner.” Applications in
`Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018).
`Not just any relationship will be sufficient. Instead, Congress intended the
`term “real party in interest” to have its “common-law meaning,” id., and,
`“when it comes to evaluating the relationship between a party bringing a suit
`and a non-party, the common law seeks to ascertain who, from a ‘practical
`and equitable’ standpoint, will benefit from the redress that the chosen
`tribunal might provide.” Applications, 897 F.3d at 1349 (quoting Trial
`Practice Guide, 77 Fed. Reg. at 48,759).
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`IPR2017-02197
`Patent 9,415,130 B2
`2. Application to Puzhen Life HK
`Patent Owner argues that Puzhen Life HK should have been named as
`“a real party-in-interest because [it] is a parent company controlling
`[Petitioner] and owning the substantive, U.S. intellectual property rights.”
`PO Resp. 2.8 The record developed at trial establishes the following facts.
`Puzhen Life HK is a Chinese company with two directors, Song BaoJie and
`Li DongSheng. Ex. 2005, 2, 5, 9. Petitioner is a New York limited liability
`company. Ex. 2006, 7. From its founding on March 24, 2011, until 2013,
`Petitioner’s sole member was Song BaoJie, one of the directors of Puzhen
`Life HK. Ex. 2009, 15 (Response to Interrogatory No. 10). Since then,
`Petitioner’s sole member has been Li DongSheng. Id. A website exists for
`Puzhen in general. Ex. 2008. That website was registered by a third entity
`altogether, Puzhen Life LLC. Ex. 2007. The contact information on the
`website lists Petitioner and Puzhen Life HK as the United States and Hong
`Kong offices, respectively, of Puzhen generally. Ex. 2008, 2. A power of
`attorney for Petitioner in this proceeding was signed by Bao Jie Song, who is
`a director of Puzhen Life HK and who identifies herself on the power of
`attorney as the chief executive officer of Petitioner. Paper 8. Petitioner is
`not the assignee of any United States patents or trademarks, but Puzhen Life
`
`
`8 Patent Owner’s only argument on the trial record is contained in the Patent
`Owner Response. The Preliminary Response forms no part of the record of
`the trial in this proceeding. Paper 11, 3 (“any arguments . . . not raised in the
`response will be waived,” with no exclusion from this rule for arguments
`raised in the preliminary response); see Cook Group Inc. v. Boston Sci.
`Scimed, Inc., Case IPR2017-00135, slip op. at 49 (PTAB Nov. 15, 2018)
`(Paper 82) (“we generally do not allow Patent Owner to carry over
`arguments from the Preliminary Response”). In any case, the argument
`Patent Owner presented in the Preliminary Response was identical to the
`argument it presented during trial. Compare Paper 5, 3, with PO Resp. 2.
`
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`IPR2017-02197
`Patent 9,415,130 B2
`HK is. Ex. 2010; Ex. 2011. Finally, during an appeal to the Federal Circuit,
`Petitioner filed a Certificate of Interest identifying Puzhen Life HK among
`its “[p]arent corporations and publicly held companies that own 10% or
`more of stock in the party.” Ex. 2022.
`As Patent Owner argues, these facts at most establish that Puzhen Life
`HK is a parent company of Petitioner. Some of the individual facts,
`however, are not consistent with a finding that Puzhen Life HK is the parent
`company of Petitioner. For example, Puzhen’s website appears to identify
`Petitioner and Puzhen Life HK as sister companies operating in different
`countries. Ex. 2008, 2. And the sole owners—referred to as members in the
`context of a limited liability company—of Petitioner are and always have
`been individual people, not Puzhen Life HK. Ex. 2009, 16. Nevertheless,
`given the other established facts, particularly Petitioner’s identification of
`Puzhen Life HK as a parent company of Petitioner in the Federal Circuit
`Certificate of Interest, we find that the evidence as a whole establishes that
`Puzhen Life HK is a parent company of Petitioner. Ex. 2022.
`Without more, we generally have not treated a non-party who is the
`parent company of the petitioner as a real party in interest who must be
`named under 35 U.S.C. § 312(a)(2). Par Pharm., Inc. v. Jazz Pharms., Inc.,
`Case IPR2015-00546, slip op. at 13–19 (PTAB July 28, 2015) (Paper 25).
`We do not interpret Applications as having changed this rule such that all
`parent companies of petitioners for inter partes reviews are per se RPIs.
`First, the traditional rule is that mere status as a corporate parent is
`insufficient to render an entity a real party in interest (or even as falling
`within the broader category of a privy), and Applications preserved the
`common-law meaning of “real party in interest.” 897 F.3d at 1351; see
`
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`IPR2017-02197
`Patent 9,415,130 B2
`Taylor v. Sturgell, 553 U.S. 880, 893–95 (2008) (summarizing the common-
`law rule as recognizing six types of relationships that constitute privity, but
`not including a parent-child corporate relationship among them); Trial
`Practice Guide, 77 Fed. Reg. at 48,759 (even some parties qualifying as
`privies do not need to be identified as real parties in interest). Second,
`Applications did not involve a corporate parent who was unnamed as an RPI.
`897 F.3d at 1339 (describing the unnamed, alleged RPI as “one of [the
`petitioner’s] clients”). Thus, we are not persuaded that Puzhen Life HK’s
`status as the parent company of Petitioner, by itself, is sufficient to render
`Puzhen Life HK an RPI in this proceeding. Something more is required.
`Under Applications, relevant factors for determining whether a non-
`party is an RPI include the non-party’s relationship with the petitioner, the
`non-party’s relationship to the petition, and the nature of the entity filing the
`petition. 897 F.3d at 1351. Here, none of these factors suggests that Puzhen
`Life HK is a “clear beneficiary” with a sufficient “preexisting, established
`relationship with the petitioner.” Id.
`As discussed above, the relationship between Puzhen Life HK and
`Petitioner is that of parent and subsidiary companies. Although it could be
`argued that the parent company of the petitioner always “has a preexisting,
`established relationship with the petitioner” and is likely to benefit when and
`to the degree that its subsidiary benefits, the preservation of the common-
`law meaning of RPI in Applications suggests that the mere establishment of
`parent-company status is insufficient to render a non-party an RPI. As the
`Federal Circuit has held in the context of privity, “control of a party . . .
`through stock ownership or corporate officership is not enough to create
`privity, absent a showing that the corporate form has been ignored.” Gillig
`
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`IPR2017-02197
`Patent 9,415,130 B2
`v. Nike, Inc., 602 F.3d 1354, 1362 (Fed. Cir. 2010). We see no reason why
`this rationale does not apply equally to the determination of whether a
`relationship is sufficient to give rise to an RPI. As there is no evidence
`before us that Petitioner and Puzhen Life HK have ignored the corporate
`form, we do not conclude that the mere parent-subsidiary relationship
`alleged here is sufficient to make Puzhen Life HK an RPI.
`We have been directed to no evidence of record relating to Puzhen
`Life HK’s relationship to the present Petition. PO Resp. 2–5. Accordingly,
`there is no evidence that Puzhen Life HK directed or assisted in the
`preparation and filing of the Petition.9 Absent such evidence, we do not
`presume that Puzhen Life HK’s status as a parent of Petitioner means that
`Puzhen Life HK was involved in preparing or filing the Petition.
`Finally, we note that this is not a case in which, even if it had been
`established that Puzhen Life HK sought to use Petitioner as a proxy to file
`and litigate what should be Puzhen Life HK’s Petition, Puzhen Life HK has
`achieved any clear benefit it would not have achieved by filing and litigating
`the Petition itself. In some cases, the non-party is barred by 35 U.S.C.
`§ 315(b) from filing a Petition for inter partes review because it has waited
`too long after being served with an infringement complaint, and the non-
`party seeks to file a petition through a proxy. This is not one of those cases.
`Puzhen Life HK has never been accused of infringing the challenged patent,
`but Petitioner has. Ex. 1030, 23 (identifying doTERRA, Petitioner, and
`Puzhen, LLC as “Defendants”), 33–34 (accusing only “Defendants” of
`
`
`9 Patent Owner did not seek any additional discovery into the question of
`what role, if any, Puzhen Life HK may have played in preparing or filing the
`Petition.
`
`10
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`IPR2017-02197
`Patent 9,415,130 B2
`infringing the ’130 patent). On this record, it does not appear that Puzhen
`Life HK would have had anything to gain by hiding behind Petitioner as a
`proxy.
`Because the relationships Puzhen Life HK has to Petitioner, to the
`Petition, and to this proceeding are not sufficiently close, and because the
`benefits of this proceeding to Puzhen Life HK are not sufficiently great, we
`conclude that the record supports a conclusion that Petitioner’s RPI
`identification is not incomplete for failure to identify Puzhen Life HK.
`
`3. Application to doTERRA
`Patent Owner argues that doTERRA should have been named as a real
`party in interest because it has “agree[d] to be bound by the determination of
`issues in an action between others.” PO Resp. 5. Specifically, Patent Owner
`argues that doTERRA and Petitioner “are co-defendants in an underlying,
`related [piece of] litigation,” in which doTERRA has “stipulated to the same
`estoppel applicable to Petitioner [arising] from this proceeding.” Id. at 6.
`Patent Owner also notes that, at the time the present Petition was filed, only
`doTERRA, not Petitioner, was accused of infringing the ’130 patent. Id.
`Patent Owner cites Taylor as supporting a conclusion that
`doTERRA’s agreement to be bound by the estoppel arising from the present
`proceeding renders it a real party in interest. Id. at 5 (citing Taylor, 128 S.
`Ct. at 2164). But the rule established in Taylor is not that anyone who
`agrees to be bound by the determination of issues in an action between
`others is an RPI. Instead, the rule is that “[a] person who agrees to be bound
`by the determination of issues in an action between others is bound in
`accordance with the terms of his agreement.” Taylor, 553 U.S. at 893
`(quoting 1 Restatement (Second) of Judgments § 40, p. 390 (1980)). Here,
`
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`IPR2017-02197
`Patent 9,415,130 B2
`under the agreement in question, doTERRA stated that it was “willing to be
`bound by the same estoppel that would apply [to] Puzhen based on the final
`result (after all appeals) of the [present] IPR.” PO Resp. 6 (quoting Ex.
`2013, 7). Under Taylor, doTERRA is bound by the terms of this agreement,
`meaning that it is bound by any estoppel applicable to Petitioner, and a later
`tribunal may preclude doTERRA from pursuing similar challenges in a
`subsequent proceeding. The terms of the agreement, however, do not apply
`to the present proceeding, because no estoppel has yet attached to Petitioner
`(and none will until the entry of this Decision). See 35 U.S.C. § 315(e).
`Under Applications, relevant factors for determining whether a non-
`party is an RPI include the non-party’s relationship with the petitioner, the
`non-party’s relationship to the petition, and the nature of the entity filing the
`petition. 897 F.3d at 1351. Here, none of these factors suggests that
`doTERRA is a “clear beneficiary” with a sufficient “preexisting, established
`relationship with the petitioner.” Id.
`According to Patent Owner, the relationship between doTERRA and
`Petitioner is that of customer and supplier. Ex. 1030, 27. A standard
`customer-supplier relationship does not render the absent member of the
`relationship an RPI. WesternGeco LLC v. ION Geophysical Corp., 889 F.3d
`1308, 1321 (Fed. Cir. 2018) (“ION and PGS had a contractual and fairly
`standard customer-manufacturer relationship regarding the accused
`product,” which “does not necessarily suggest that the relationship is
`sufficiently close . . . that the parties were litigating . . . the IPRs as proxies
`for the other.”). Thus, the customer-supplier relationship between
`doTERRA and Petitioner does not render doTERRA an RPI.
`
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`IPR2017-02197
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`The case is similar with respect to the relationship of doTERRA and
`Petitioner as co-defendants in an infringement lawsuit. Without more, mere
`status as a co-defendant is insufficient to render a non-party an RPI per se.
`Panties Plus, Inc. v. Bragel Int’l, Inc., Case IPR2017-00044, slip op. at 7
`(PTAB Apr. 12, 2017) (Paper 6).
`We have been directed to no evidence of record relating to
`doTERRA’s relationship to the present Petition. PO Resp. 5–6.
`Accordingly, there is no evidence that doTERRA directed or assisted in the
`preparation and filing of the Petition.10 Absent such evidence, we do not
`presume that doTERRA’s status as a co-defendant in the related
`infringement lawsuit means that doTERRA was involved in preparing or
`filing the Petition.
`Finally, as was the case with Puzhen Life HK, there is no evidence
`that doTERRA has achieved any clear benefit from Petitioner filing the
`Petition that doTERRA would not have achieved by filing and litigating the
`Petition itself. The complaint asserting infringement of the ’130 patent was
`dated September 29, 2016, so it could have been served no earlier than that
`date. Ex. 1030, 37. The Petition in the present proceeding was filed
`September 28, 2017, which was less than one year later, at which time no
`party served with the infringement complaint would have been barred by
`§ 315(b). Pet. 61. Additionally, doTERRA has agreed to be bound by
`whatever estoppel arises against Petitioner from this proceeding, so, to the
`
`
`10 Patent Owner did not seek any additional discovery into the question of
`what role, if any, doTERRA may have played in preparing or filing the
`Petition.
`
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`extent that doTERRA sought to use Petitioner as a proxy, doTERRA did not
`avoid becoming subject to the consequences of this proceeding. Ex. 2013, 7.
`Because the relationships doTERRA has to Petitioner, to the Petition,
`and to this proceeding are not sufficiently close, and because the benefits of
`this proceeding to doTERRA are not sufficiently great, we conclude that the
`record supports a conclusion that Petitioner’s RPI identification is not
`incomplete for failure to identify doTERRA.11
`
`B. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear.12 37 C.F.R. § 42.100(b)
`(2016). Claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`
`
`11 Because there is no allegation of a time bar under 35 U.S.C. § 315(b), it
`may be that Petitioner would be permitted to correct its Petition to remedy
`any incomplete identification of RPIs under 35 U.S.C. § 312(a)(2). See
`Lumentum Holdings, Inc. v. Capella Photonics, Inc., Case IPR2015-00739,
`slip op. at 3–6 (PTAB Mar. 4, 2016) (Paper 38) (precedential) (holding that
`“§ 312(a) is not jurisdictional” and that a petitioner therefore may have an
`opportunity to correct a failure to comply with § 312(a)(2)). Because we
`decide that Petitioner’s RPI identification is not incomplete for failure to
`identify either Puzhen Life HK or doTERRA as an RPI, however, we need
`not reach the question of whether such correction is permitted here.
`12 A recent amendment to this rule does not apply here, because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
`
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`Petitioner proposes construing two terms: “wall” and “included
`circumferential angle.” Pet. 10–11. Patent Owner disagrees with
`Petitioner’s proposed construction of “wall” but does not dispute the
`construction of “included circumferential angle.” PO Resp. 14–16.
`
`1. “Wall”
`The term “wall” appears in all three challenged claims. Specifically,
`claims 1 and 3 require “separating out a second distribution of the droplets
`by passing the flow through a wall between a first chamber and a second
`chamber, the flow path spiraling axially and circumferentially,
`simultaneously and continuously, through an arcuate channel formed
`through the wall,” and claim 17 requires “providing a separator” by
`“creating a flow path for the flow spiraling axially while passing in a
`circumferential direction at a substantially constant radius around an
`included angle through a wall traversed by a spiral channel.” Ex. 1001,
`23:22–41, 23:44–45, 24:39–64. Petitioner argues that “wall” should be
`interpreted as “a barrier substantially separating two spaces.” Pet. 10–11.
`Patent Owner argues instead that “wall” should be interpreted as “‘wall,’ or
`perhaps ‘wall or plate.’” PO Resp. 14–16.
`Both parties agree that the term “wall” includes the structure
`described in the Specification of the ’130 patent as flange, plate, or plane 96
`of Figure 12. Pet. 11; PO Resp. 14–15. The difference in the parties’
`positions relates to how far beyond the structure of Figure 12 the term “wall”
`may reach. Patent Owner argues that “wall” should be limited to “a
`structure equivalent to the plate 96 described in the Specification.” PO
`Resp. 15. There are two problems with this argument. First, it asks us to
`import limitations from the Specification of the ’130 patent. Although
`
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`“understanding the claim language may be aided by explanations contained
`in the written description, it is important not to import into a claim
`limitations that are not a part of the claim,” so we decline the invitation to do
`so here. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875
`(Fed. Cir. 2004). In addition, even if it were proper to import limitations
`from the Specification, it would not be appropriate to limit the claim term
`“wall” to a “plate” on the basis of the description of plate 96 in Figure 12
`and the accompanying portion of the Specification of the ’130 patent,
`because the Specification does not describe structure 96 solely as a “plate.”
`Instead, the Specification describes this structure sometimes as a “plate,”
`sometimes as a “plane,” and sometimes as a “flange.” Ex. 1001, 16:65–
`17:17, 18:13–21. Accordingly, if a “wall” is “a structure equivalent to the
`plate 96,” as Patent Owner argues it is, “wall” must be interpreted at least
`broadly enough to encompass a “plane” or a “flange” in addition to a
`“plate.”
`Patent Owner also argues that a wall cannot be Petitioner’s proposed
`“barrier substantially separating two spaces,” because claim 1 requires the
`wall to be “between a first chamber and a second chamber.” PO Resp. 15.
`Patent Owner is correct that, in claim 1, the wall must be located between
`two chambers, rather than two spaces. Ex. 1001, 23:22–41. Independent
`claim 17, on the other hand, does not specify what type of spaces the wall
`separates. Id. at 24:39–64. Accordingly, to the extent that “chamber” is
`narrower than “space,” construing “wall” as incorporating all the limitations
`of claim 1 would result in an impermissibly narrow interpretation of the
`scope of claim 17. Instead, the proper approach is to acknowledge that, as
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`Petitioner argues, a wall may separate any two spaces, but that claim 1 is not
`satisfied unless those two spaces are both chambers.
`Patent Owner also argues that a wall cannot “substantially separate
`two spaces in just any manner,” because claim 17 requires “a wall traversed
`by a spiral channel.” PO Resp. 15–16. Patent Owner is correct that
`claim 17 recites “a wall traversed by a spiral channel.” Ex. 1001, 24:39–64.
`Claim 1, on the other hand, requires “an arcuate channel formed through the
`wall.” Id. at 23:22–41. To the extent there is any difference between the
`“spiral channel” of claim 17 and the “arcuate channel” of claim 1, it would
`be error to limit a wall to only structures that contain one or the other type of
`channel. The better course is to treat a wall as a barrier that can be traversed
`by a channel, with claim 1 satisfied only if there is an arcuate channel
`traversing the wall and claim 17 satisfied only if there is a spiral channel
`traversing the wall.
`Petitioner’s proposed construction is supported by the language of the
`claims and written description of the ’130 patent. Whatever form the
`structure labeled 96 in Figure 12 takes (flange, plate, or plane), the purpose
`of that structure is to define a space below and a separate space above, with
`the flow passing from one space to the other via a channel passing through
`the structure. Ex. 1001, 17:15–20 (discussing flow passing “from below the
`plate 96 to above the plate 96”), Fig. 12. Claim 1 makes this purpose clear,
`specifying that the wall separates “a first chamber and a second chamber.”
`Id. at 23:22–41. For these reasons, we adopt the construction of “wall”
`proposed by Petitioner, and we interpret “wall” as “a barrier substantially
`separating two spaces.”
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`2. “Included Circumferential Angle”
`The term “included circumferential angle” appears in the challenged
`claims only in claim 3. Specifically, claim 3 recites a limitation requiring
`that “the included circumferential angle [be] from 90 degrees to 360
`degrees.” Ex. 1001, 23:44–45. Petitioner argues that we should construe
`“included circumferential angle” as “a measure of degree of revolution
`around a longitudinal axis from the beginning to the end of the channel
`disclosed in claim 1.” Pet. 10. Patent Owner makes no argument regarding
`how to construe this term. PO Resp. 14–16. The parties do not disagree
`about the scope of claim 3 with respect to the term “included circumferential
`angle.” Accordingly, we conclude that this term does not require express
`construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`
`C. Obviousness over Sevy and Cronenberg
`Petitioner argues that the subject matter of claims 1, 3, and 17 would
`have been obvious to a person of ordinary skill in the art given the teachings
`of Sevy and Cronenberg. Pet. 17–35.
`
`Sevy
`1.
`Sevy “relates to . . . novel systems and methods for integrating air
`supplies, reservoirs and atomizers into an integrated system.” Ex. 1003,
`1:6–8. According to Sevy, “it would be an advance in the art to provide an
`atomizer that provides a better atomization or a smaller mean or average size
`of droplet in the distribution of atomized droplets compared with prior art
`devices capable of atomizing.” Id. at 1:66–2:3. Sevy discloses
`accomplishing this by “rel[ying] on direction change and momentum of
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`impact to further comminute the droplets into a more finely atomized mist,
`while separating out comparatively larger droplets in a comparatively very
`short distance.” Id. at 2:13–19. In particular, Sevy discloses that large
`droplets “cannot move with the air flow, typically because they . . . will not
`be able to quickly turn to follow the flow of air,” causing them to “strike the
`walls of the opening.” Id. at 8:64–9:4. Sevy’s disclosed separator is part of
`a large