Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: September 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VMR PRODUCTS LLC,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2015-00859
`Patent 8,365,742 B2
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAMARA, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 1 of 32
`
`
`571-272-7822
`
`Paper 9
`Entered: September 16, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VMR PRODUCTS LLC,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2015-00859
`Patent 8,365,742 B2
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAMARA, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 1 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`I. INTRODUCTION
`VMR Products LLC (“Petitioner”) filed a Petition (“Pet.”) to institute
`an inter partes review of claims 1–3 of U.S. Patent No. 8,365,742 B2 (“the
`’742 patent,” Ex. 1001). Paper 2. Fontem Holdings 1 B.V. (“Patent
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 5. We have
`jurisdiction under 35 U.S.C. § 314.
`Upon consideration of the Petition and Preliminary Response, we
`determine that Petitioner has not established a reasonable likelihood of
`prevailing with respect to claims 1–3 of the ’742 patent. Accordingly, we
`deny the Petition, and do not institute an inter partes review.
`A.
`Related Proceedings
`Petitioner indicates that the ’742 patent is asserted in numerous cases
`pending in the Central District of California, including Fontem Ventures
`B.V. v. VMR Products LLC, Case No. 2:14-cv-01655 (“the District Court
`Action”). Pet. 1–2. Patent Owner states that the ’742 patent is also the
`subject of IPR2015-01587, filed by JT International SA on July 14, 2015.
`Paper 7, 1.
`B.
`The ’742 Patent (Ex. 1001)
`The ’742 patent, titled “Electronic Cigarette,” is directed to an aerosol
`electronic cigarette having a battery assembly, an atomizer assembly, a
`cigarette bottle assembly, and a hollow, integrally-formed shell. Ex. 1001,
`Abstract. According to the ’742 patent, prior art devices had various
`disadvantages, including low atomizing efficiency, being structurally
`complicated, and not providing ideal aerosol effects. Id. at 1:21–24.
`
`
`
`
`2
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 2 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`Figure 1 of the ’742 patent is reproduced below:
`
`
`
`Figure 1 is a side section view of an electronic cigarette. Id. at 1:45.
`Hollow, integrally-formed shell “a” includes a battery assembly, atomizer
`assembly, and cigarette bottle assembly. Id. at 2:30–33. The battery
`assembly connects to the atomizer assembly in shell “a,” and the detachable
`cigarette body assembly (which fits with the atomizer assembly) is located in
`one end of shell “a.” Id. at 2:33–37. Shell “a” also includes through-air-
`inlets a1. Id. at 2:37–38. The battery assembly includes operating indicator
`1, battery 3, electronic circuit board 4, and airflow sensor 5. Id. at 2:39–45.
`The atomizer assembly is atomizer 8, which includes a porous component
`and a heating rod. Id. at 3:6–8. The cigarette bottle assembly includes
`hollow cigarette shell holder “b,” and perforated component for liquid
`storage 9. Id. at 3:49–51. Air channel b1 is located in the center on the
`surface of one end of cigarette shell holder “b,” and extends inward. Id. at
`3:59–62.
`Figures 5, 6, and 7 of the ’742 patent are reproduced below:
`
`
`
`
`3
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 3 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`
`
`
`Figure 5 is a side-section view of the porous component of atomizer 8,
`Figure 6 is a diagram of the structure of a heating rod in atomizer 8, and
`Figure 7 is a side-section view of atomizer 8. Id. at 1:53–59. Atomizer 8
`includes porous component 81 and heating rod 82. Id. at 3:6–8. Heating rod
`82 includes heating wire 822 wound on the wall of cylinder 821. Id. at
`3:28–30. Porous component 81 contains run-through atomizing chamber
`811. Id. at 3:8–9. Heating rod 82 enters run-through atomizing chamber
`811, and the space between heating rod 82 and the interior wall of run-
`through atomizing chamber 811 creates negative pressure cavity 83. Id. at
`3:11–15. One end of porous component 81 fits with the cigarette bottle
`assembly, with protuberance 812 at the other end connecting to atomizing
`chamber 811 with run-through hole 813. Id. at 3:16–19.
`C.
`Illustrative Claim
`Petitioner challenges claims 1–3 of the ’742 patent. Each of claims 1–
`3 is independent. Claim 1 is illustrative, and recites as follows:
`1.
`An aerosol electronic cigarette, comprising:
`4
`
`
`
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 4 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`a battery assembly, an atomizer assembly and a cigarette bottle
`assembly, and a shell that is hollow and integrally
`formed;
`the battery assembly electrically connected with the atomizer
`assembly, and both are located in the shell;
`the cigarette bottle assembly is detachably located in one end of
`the shell, and fits with the atomizer assembly inside of it;
`the shell has through-air-inlets;
`the atomizer assembly is an atomizer, which includes a porous
`component and a heating body;
`the heating body is a heating wire;
`the atomizer includes a frame;
`the porous component is supported by the frame;
`the heating wire is wound on the porous component;
`the frame has a run-through hole;
`a heating wire wound on a part of the porous component that is
`substantially aligned with the run-through hole; and with
`the porous component also positioned substantially
`within the cigarette bottle assembly.
`The Prior Art
`Petitioner relies on the following prior art references:
`Reference
`Patent
`Date
`Exhibit No.
`Whittemore
`US 2,057,353
`Sept. 27, 1935 1013
`Counts
`US 5,144,962
`Sept. 8, 1992
`1011
`Susa
`EP 0 845 220 A1
`June 3, 1998
`1010
`Abhulimen WO 03/034847 A1 May 1, 2003
`1012
`Hon ’043
`Chinese Patent No.
`Aug. 24, 2005 1004 and
`CN 2719043 Y
`1005 (English
`translation)
`
`D.
`
`
`
`
`5
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 5 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`Reference
`Hon ’4941
`
`Date
`Patent
`WO 2005/099494 A1 Oct. 27. 2005
`
`Exhibit No.
`1006 and
`1007 (English
`translation
`
`
`E.
`
`The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–3 of the ’742 patent
`on the following grounds:
`Reference(s)
`Hon and Susa
`
`Basis
`§ 103(a)
`
`Claims Challenged
`1–3
`
`Hon and Abhulimen
`
`Hon and Whittemore
`
`Hon and Counts
`
`Susa
`
`Susa and Abhulimen
`
`Susa and Whittemore
`
`
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`§ 103(a)
`
`1–3
`
`
`1 Hon ’494 is the PCT application equivalent of Hon ’043. Pet. 15. When
`referring to Hon ’043 in the Petition, Petitioner cites the English translation
`of Hon ’494 “because the translation [of Hon ’043] does not have paragraph
`numbers or line numbers.” Id. at n. 2. Petitioner also uses Hon ’043 and
`Hon ’494 interchangeably throughout the Petition. For clarity, we will refer
`to Hon ’494 and Hon ’043 collectively as “Hon,” and we will cite to the
`English translation of Hon ’494 (Ex. 1007) when referring to Hon.
`
`6
`
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 6 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`II. ANALYSIS
`
`A.
`
`Claim Interpretation
`We interpret claims of an unexpired patent using the “broadest
`reasonable construction in light of the specification of the patent in which
`[the claims] appear[].” 37 C.F.R. § 42.100(b). For purposes of this
`Decision, based on the record before us, we make explicit the interpretation
`of the claim terms “frame” and “porous component,” as set forth in claims
`1–3.
`
`“frame”
`1.
`Petitioner proposes that we construe “frame” to mean “rigid
`structure.” Pet. 8. In support of its construction, Petitioner relies on the
`district court’s ruling on claim construction in the District Court Action. Id.
`at 7–8 (citing Ex. 1014, 5–7). Patent Owner proposes that we construe the
`term to mean “a firm structure designed to hold up another component.”
`Prelim. Resp. 10. Patent Owner cites the Specification’s description of the
`fifth preferred embodiment, which includes a frame with a run-through hole
`on it, and a porous component set on the frame, in support of its
`construction. Id. at 10. (citing Ex. 1001. 5:42–47). According to Patent
`Owner, “[i]n the context of the ’742 patent, this is the better interpretation,
`particularly because ‘supported by’ means ‘held up.’” Id. at 11.
`Based on the record before us, we are persuaded that Petitioner’s
`interpretation is the broadest reasonable interpretation in light of the
`Specification. The only mention of “frame” in the Specification is in the
`discussion of the fifth preferred embodiment, where it states, with reference
`to Figures 17 and 18, that “the atomizer assembly is an atomizer (8), which
`includes a frame (82), the porous component is set on the frame (82),” and
`
`
`
`
`7
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 7 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`“[t]he frame (82) has a run-through hole (821) on it.” Ex. 1001, 5:42–47.
`That the porous component is set on the frame in one embodiment, however,
`is not enough to limit “frame” to a structure that is designed to hold up
`another component, as suggested by Patent Owner. The language of the
`claims further indicates that a frame need not necessarily “hold up another
`component.” Claims 1 and 2 require that the porous component be
`“supported by” the frame, but claim 3 only requires that there is “a porous
`component between the frame and the outlet.” Petitioner’s proposed
`interpretation of “frame” as “a rigid structure” is consistent with the use of
`the term in the Specification and the claims.
`For purposes of this Decision, consistent with the disclosures in the
`Specification and its ordinary meaning, we interpret “frame” to be “a rigid
`structure.”
`2.
`“porous component”
`Petitioner proposes that we construe “porous component” to mean “a
`component of the atomizer assembly in the electronic cigarette that includes
`pores and is permeable to liquid, such as cigarette solution from the cigarette
`solution storage area.” Pet. 7. In support of this construction, Petitioner
`relies on the Board’s interpretation of “porous component” in the Decision
`to Institute Inter Partes Review in IPR2013-00387, relating to U.S. Patent
`No. 8,156,944 (“the ’944 patent”), because “[t]he ’742 Patent is a divisional
`of the application that led to the ’944 Patent, and therefore both patents share
`the same specification.” Id.; see CB Distributors, Inc. v. Ruyan Investment
`(Holdings) Limited, Case IPR2013-00387, slip op. at 11 (PTAB Dec. 30,
`2013) (Paper 7).
`
`
`
`
`8
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 8 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`Patent Owner proposes that we construe the term to mean “a
`component of the atomizer assembly having pores or interstices and
`providing for absorption or diffusion of liquid.” Prelim. Resp. 6–7. As
`support for this construction, Patent Owner states that the claims of the ’742
`patent include a number of recitations relating to the porous component,
`including that “the atomizer includes a porous component and a heating
`wire,” “the porous component is supported by the atomizer frame having a
`run-through hole,” “the porous component is positioned substantially within
`the cigarette bottle assembly,” and “the porous component is substantially
`surrounded by the liquid storage component.” Id. at 7–8. Patent Owner also
`cites to the Specification’s statements that “the porous component provides
`‘liquid absorption and diffusion, and the ability to absorb liquid stored in the
`cigarette bottle assembly’ . . . [a]nd that it ‘absorbs the cigarette liquid from
`the perforated component for liquid storage.’” Id. at 8 (citing Ex. 1001,
`3:25–26, 66–67). According to Patent Owner, “Petitioner offers no analysis
`why [the construction from IPR2013-00387] is proper for the claims of the
`’742 patent,” because, “based upon the claims and the disclosure of the ’742
`patent, a porous component is something more than a component that simply
`has holes.” Id. at 8–9.
`Based on the record before us, we are persuaded that Petitioner’s
`proposed interpretation is the broadest reasonable interpretation in light of
`the Specification. Petitioner’s proposed interpretation is consistent with the
`Specification, which describes the porous component as being “made of
`foamed nickel, stainless steel fiber felt, macromolecular polymer foam or
`foamed ceramics, providing the remarkable capabilities in liquid absorption
`and diffusion, and the ability to absorb the liquid stored in the cigarette
`
`
`
`
`9
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 9 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`bottle assembly.” Ex. 1001, 3:23–27. The Specification further states that
`the porous component “absorbs the cigarette liquid from the perforated
`component for liquid storage,” and, “[a]fter atomization, the big-diameter
`fine drips are re-absorbed by the porous component.” Id. at 4:25–27.
`Therefore, for purposes of this Decision and in accordance with the
`broadest reasonable interpretation in light of the Specification, we interpret
`“porous component” to mean “a component of the atomizer assembly in the
`electronic cigarette that includes pores and is permeable to liquid, such as
`cigarette solution from the cigarette solution storage area.”
`B.
`Obviousness over Hon and Susa
`Petitioner contends that claims 1–3 would have been obvious under 35
`U.S.C. § 103(a) over the combination of Hon and Susa. Pet. 15–32.
`Petitioner relies on a Declaration by Gregory Buckner, Ph.D. (“the Buckner
`Declaration,” Ex. 1002) in support of the contentions. Id.
`1.
`Overview of Hon
`Hon is directed to an electronic atomization cigarette. Ex. 1007, 1:4–
`5. Figures 1 and 6 of Hon are reproduced below:
`
`
`
`
`
`10
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 10 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`
`Figure 1 is a schematic diagram of the structure of an electronic cigarette
`that includes air inlet 4, normal pressure cavity 5, sensor 6, vapor-liquid
`separator 7, atomizer 9, liquid-supplying bottle 11, and mouthpiece 15
`within shell 16. Id. at 2:40, 3:14–18. Figure 6 is a structural diagram of an
`atomizer, which includes atomization cavity 10, heating element RL, first
`piezoelectric element M1, atomization cavity wall 25, porous body 27, and
`bulge 36. Id. at 2:48, 3:24–29, 35–38.
`Hon states that heating element RL “can be made of platinum wire,
`nickel chromium alloy or iron chromium aluminum alloy wire with rare
`earth element” and “can also be made into a sheet form.” Id. at 3:27–29.
`Hon also states that “atomization cavity wall 25 is surrounded with the
`porous body 27, which can be made of foam nickel, stainless steel fiber felt,
`high molecule polymer foam and foam ceramic,” and that “atomization
`cavity wall 25 can be made of aluminum oxide or ceramic.” Id. at 3:35–38.
`
`
`
`
`11
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 11 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
` Hon further states that “[w]hen a smoker smokes, the mouthpiece 15
`is under negative pressure, the air pressure difference or high speed stream
`between the normal pressure cavity 5 and the negative pressure cavity 8 will
`cause the sensor 6 to output an actuating signal,” which causes the cigarette
`to begin operating. Id. at 4:11–14. Hon describes that air enters normal
`pressure cavity 5 through air inlet 4, proceeds through the through hole in
`vapor-liquid separator 7, and flows into atomization cavity 10 in atomizer 9.
`Id. at 4:21–24. The nicotine solution in porous body 27 is driven by the high
`speed stream passing through the ejection hole into atomization cavity 10 in
`the form of a droplet, where it “is subjected to the ultrasonic atomization by
`the first piezoelectric element M1 and is further atomized by the heating
`element RL.” Id. at 4:26–27. After atomization, large-diameter droplets
`stick to the wall and are reabsorbed by porous body 27 via overflow hole 20,
`and small-diameter droplets form aerosols that are sucked out via aerosol
`passage 12, gas vent 17, and mouthpiece 15. Id. at 4:28–31.
`2.
`Overview of Susa
`
`Susa is directed to a flavor generation article used for simulated
`smoking. Ex. 1010, 1:5–7. Susa Figure 1 is reproduced below:
`
`
`
`
`
`
`12
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 12 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`Figure 1 is a schematic diagram of a flavor generation article described by
`Susa. Id. at 4:20–22. Casing 12 includes “first portion 12a to be held by the
`user’s mouth” and “second portion 12b for incorporating a power supply and
`the like.” Id. at 5:17–20. Portions 12a and 12b are detachably connected by
`connecting portion 13 formed on casing main body 14, and “are electrically
`connected to each other through a cable 15 stored in a space formed in the
`casing main body 14 to correspond to the connecting portion 13.” Id. at
`5:20–26. Gas flow path 26 is formed in casing 12 between air intake ports
`24 and suction port 22. Id. at 5:36–37.
`Throttle hole 20, in the center of throttle plate 21, is located in gas
`flow path 26 and directs air from air intake ports 24 to flow along the surface
`of ceramic heater 42. Id. at 5:46–50. Ceramic heater 42 is fixed on the inner
`surface of casing main body 14 by support member 44. Id. at 7:30–32. Air
`from throttle hole 20 flows through gap 27 between discharge ports 35 and
`ceramic heater 42. Id. at 7:35–38. Liquid-absorbing porous layer 46 is
`formed on the surface of ceramic heater 42, and can be made of an organic
`compound (such as natural cellulose, a cellulose derivative, or an aramid
`resin), or an inorganic compound (such as carbon, alumina, or silicon
`carbide). Id. at 7:50–8:5.
`When a user inhales through suction port 22, sensor 73 outputs an
`operation signal to control circuit 72, which energizes ceramic heater 42. Id.
`at 9:41–50. After a predetermined time, discharge drive portion 38 is
`triggered, liquid material 36 is discharged from discharge ports 35, and is
`gasified with heating by ceramic heater 42. Id. at 9:50–55. As the user
`inhales, the gasified material is mixed with the suctioned air from air intake
`ports 24, passed through the throttle hole 20, passes between the discharge
`
`
`
`
`13
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 13 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`ports 35 and ceramic heater 42, and is guided to suction port 22. Id. at 9:55–
`10:2.
`
`Figure 13 of Susa is reproduced below:
`
`
`Figure 13 is a schematic view of another embodiment of Susa’s flavor
`generation article. Id. at 15:28–30. Formed body 92 consists “of a solid
`material that generates a flavor or the like to be inhaled by the user” and is
`detachably disposed in gas flow path 26 between ceramic heater 42 and
`cooling chamber 52. Id. at 14:57–15:4. Susa states that when formed body
`92 is sized such that there is no gap between it and the inner surface of
`casing main body 14, formed body 92 consists of a solid material that has
`good air permeability, and gas flow path 26 is formed to extend through
`formed body 92. Id. at 15:13–19. When there is a gap between formed
`body 92 and the inner surface of casing main body 14, formed body 92 can
`have little or no air permeability, and gas flow path 26 is formed to extend
`through that gap. Id. at 15:19–27. Coil heater 94 “is disposed around”
`formed body 92, and “may be arranged in a hole formed in” formed body
`92. Id. at 15:34–36.
`3.
`Analysis
`
`a.
`Claims 1 and 2
`Petitioner contends that Hon describes porous component 27
`supported by atomization cavity wall 25, and therefore teaches “the atomizer
`
`
`
`
`14
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 14 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`includes a frame; the porous component is supported by the frame”
`limitations recited in claim 1, and “the atomizer assembly including a porous
`component supported by a frame having a run-through hole” limitation in
`claim 2. Pet. 21, 28. In particular, Petitioner contends that, in Hon, “[t]he
`porous component is ‘arranged around the atomization cavity wall’ which
`‘can be made of aluminum oxide or ceramic.’” Id. at 21 (citing Ex. 1007,
`2:12, 3:38). Thus, according to Petitioner, Hon’s atomization cavity wall 25
`is a “frame” as recited in the challenged claims.
`Patent Owner argues that Hon does not disclose a frame or any
`element that supports the porous body. Prelim. Resp. 23. Patent Owner
`argues that Hon’s cylindrical atomization cavity wall 25 “is supported from
`below and laterally by porous body 27” and “is a liner within the porous
`body which forms the atomization cavity 10.” Id. at 24. According to
`Patent Owner, atomization cavity wall 25 “that is entirely within porous
`body 27 does not support the porous body,” and, instead, “the porous body
`27 supports the wall 25 as the porous body will hold the wall in place.” Id.
`As discussed above, we interpret “frame” to mean “a rigid structure.”
`See supra Section II.A.1. Petitioner contends Hon’s atomization cavity wall
`25 is this frame, at least because it can be made of aluminum oxide or
`ceramic. Pet. 21. We are persuaded that atomization cavity wall 25 is a
`rigid structure, and is therefore a frame as recited in claims 1 and 2.
`We are not persuaded, however, that Petitioner has established that
`Hon teaches a frame that supports a porous component, as also required by
`claims 1 and 2. Petitioner points to Hon’s description of porous component
`27 as being “arranged around the atomization cavity wall” to show that
`porous component 27 is supported by atomization cavity wall 25. Id. The
`
`
`
`
`15
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 15 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`ordinary meaning of “support” is “bear all or part of the weight of: hold
`up.” Prelim. Resp. 12 (citing Ex. 2005, 1708). Petitioner does not explain
`adequately, nor cite to sufficient evidence of record explaining, how porous
`component 27 is held up by atomization cavity wall 25. The teachings in
`Hon on which Petitioner relies describe porous component 27 surrounding
`atomization cavity wall 25, but do not indicate that atomization cavity wall
`25 is bearing the weight of, or holding up, porous cavity 27. Petitioner does
`not rely on Susa to teach this limitation.
`Petitioner alternatively argues that Hon “discloses that the atomizer
`includes a vapor-liquid separator (7), which also constitutes a frame that
`supports the porous component” because it “is ‘sequentially interconnected’
`with the atomizer and ‘can be made of plastic or silicon rubber.’” Pet. 21.
`This argument is not persuasive.
`Even if Hon’s vapor-liquid separator 7 is a frame, which we need not
`determine for purposes of this Decision, it is not located in the atomizer as is
`required by claims 1 and 2. Hon consistently describes vapor-liquid
`separator 7 as an element separate from the atomizer. See, e.g., Ex. 1007,
`3:16–18 (“a vapor-liquid separator 7, an atomizer 9, a liquid-supplying
`bottle 11 and a mouthpiece 15 are sequentially provided within the shell
`14”); 4:23–24 (air passes through “the through hole in the vapor-liquid
`separator 7, and flows into the atomization cavity 10 in the atomizer 9”);
`5:12–14 (describing an embodiment where “the atomizer 9 is postposed
`within the shell 14, and the liquid-supplying bottle 11 is arranged between
`the vapor-liquid separator 7 and the atomizer 9”). Furthermore, the
`statement in Hon on which Petitioner relies regarding vapor-liquid separator
`7 being “sequentially interconnected” to atomizer 9, when read in context,
`
`
`
`
`16
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 16 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`describes the order in which the elements are arranged within the body of the
`electronic cigarette: “[T]he air inlet, normal pressure cavity, vapor-liquid
`separator, atomizer, aerosol passage, gas vent and mouthpiece are
`sequentially interconnected.” Ex. 1007, 1:47–49.
`Accordingly, we are not persuaded that Petitioner has established a
`reasonable likelihood of showing that claims 1 and 2 would have been
`obvious over the combination of Hon and Susa.
`
`b.
`Claims 1-3
`Claim 1 recites “the heating wire is wound on the porous component,”
`and claims 2 and 3 recite “a heating wire wound on a part of the porous
`component.” Petitioner contends that Susa describes that “coil heater 94 ‘is
`disposed around the formed body 92,’ which is adjacent to ceramic heater 42
`and porous layer 46,” and that “[f]ormed body 92 has qualities and functions
`similar to the porous layer.” Pet. 22. According to Petitioner, because
`Susa’s coil heater 94 envelops formed body 92, “[i]t would have been
`obvious to one of ordinary skill in the art to wind the coil heater of Susa
`around the porous layer in [Hon] in order to provide [the heating wire is
`wound on the porous component] limitation” of claims 1–3. Id. at 23, 28–
`29, 31–32. Petitioner contends that this modification of the Hon electronic
`cigarette “is motivated by the interest of providing more efficient, uniform
`heating” and “would enhance commercial opportunities and make the
`product more desirable by increasing the efficiency of atomization.” Id. at
`23.
`
`Patent Owner argues that Susa’s coil heater 94 is not wound on porous
`layer 46, “which the Petition asserts discloses the claimed porous
`component.” Prelim. Resp. 29. Patent Owner further argues that “[t]he
`
`
`
`
`17
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 17 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`embodiment in Fig. 13 gasifies liquid in the same way as Fig. 1 discussed
`above, that is via liquid projected from the discharge head 34 onto a now
`vertical porous layer 46 on the ceramic heater 42,” and that “coil heater 94
`together with the formed body 92 generate flavor by heating, but
`presumptively without gasifying where liquid contacts a heated surface, as in
`Fig. 1.” Id. at 29–30.
`We are not persuaded by Petitioner’s arguments. As set forth above,
`we interpret “porous component” to mean “a component of the atomizer
`assembly in the electronic cigarette that includes pores and is permeable to
`liquid, such as cigarette solution from the cigarette solution storage area.”
`See supra Section II.A.2. Petitioner contends that Susa’s formed body 92
`“has qualities and functions similar to the porous layer,” but does not explain
`sufficiently, nor direct us to adequate evidence of record indicating, that a
`person having ordinary skill in the art would have understood the formed
`body 92 to include pores and be permeable to liquid. See Pet. 22.
`Susa describes formed body 92 as “a solid material that generates
`flavor or the like,” that, depending on its size, can have good air
`permeability, or poor to no air permeability. Ex. 1010, 14:57–15:2, 15:13–
`27. The embodiment shown in Susa Figure 13 that shows coil heater 94
`disposed around formed body 92 also includes liquid-absorbing porous layer
`46 that “is formed on a surface of the ceramic heater 42 that receives the
`liquid splash of the material” and “stabiliz[es] gasification of the splash of
`material.” Id. at 7:50–8:1. Consequently, we are not persuaded that that
`formed body 92 in Susa is a “porous component” as recited in the challenged
`claims, or that Petitioner has demonstrated that Susa teaches a heating wire
`wound on a porous component, as is required by claims 1–3.
`
`
`
`
`18
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 18 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`A showing of obviousness must be supported by an articulated
`reasoning with rational underpinning to support a motivation to combine the
`prior art teachings. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Petitioner asserts
`that a person having ordinary skill in the art would be motivated to modify
`the Hon electronic cigarette to include a heating wire wound on a porous
`component “by the interest of providing more efficient, uniform heating”
`that “would enhance commercial opportunities and make the product more
`desirable by increasing the efficiency of atomization.” Pet. 23. Petitioner
`does not provide sufficient explanation as to why a person having ordinary
`skill in the art would have wanted to provide “more efficient, uniform
`heating” in the Hon cigarette. Petitioner does not direct us to, nor do we
`discern, statements in Hon or Susa with respect to the efficiency—or
`inefficiency—of atomization within the described articles. Petitioner’s
`unsupported, conclusory statements do not constitute articulated reasoning
`with rational underpinnings as to why one of ordinary skill in the art would
`modify Hon in view of Susa’s teachings to arrive at the claimed invention.
`For these reasons, Petitioner has not established a reasonable
`likelihood that it would prevail on the ground that claims 1–3 of the ’742
`patent would have been obvious over the combination of Hon and Susa.
`C. Obviousness over Hon and Abhulimen
`Petitioner contends that claims 1–3 would have been obvious under 35
`U.S.C. § 103(a) over the combination of Hon and Abhulimen. Pet. 32–34.
`Petitioner relies on the Buckner Declaration (Ex. 1002) in support of its
`contentions. Id.
`
`
`
`
`19
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 19 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`
`Overview of Abhulimen
`1.
`Abhulimen is directed to a simulated smoking article, with a fuel
`element physically separated from an aerosol-generating element. Ex. 1012,
`1. Figures 1 and 2 of Abhulimen are reproduced below:
`
`
`Figure 1 is partially-fragmented perspective view of a simulated smoking
`device as described by Abhulimen, and Figure 2 is a longitudinal view of the
`device shown in Figure 1. Id. at 3–4. Simulated smoking device 10 includes
`fuel element 11, flavor-generating material 13 disposed within tubular
`wrapper 26, and tobacco rod 14 attached to filter 12. Id. at 4. Fuel element
`11 includes fuel tank 20, which is non-permeable and non-combustible, and
`fuel cartridge 24 comprising a porous medium. Id. Fuel element 11 also
`includes extended wick 22 and glow element 16. Id. Fuel tank 20 is open-
`ended at its upstream end, where ceramic tube 32 surrounds wick 22. Id.
`Glow element 16 is a coil comprised of copper wire filament, or other heat-
`conducting or glowing materials such as brass, platinum, or metallic alloy.
`Id. Heat diffuser 30 is positioned within tubular wrapper 26 between the
`distal end of flavor-generating material 13 and glow element 16. Id. Heat
`diffuser 30 delivers hot gas and hot air coming into tubular member 26
`through puffing air inlets 18 to vapor-generating material of tobacco rod 14,
`
`20
`
`
`Fontem Ex. 2005
`R.J. Reynolds Vapor Company v. Fontem Holdings 1 B.V. IPR2018-00626
`Page 20 of 32
`
`
`
`IPR2015-00859
`Patent 8,365,742 B2
`
`and also blocks the flame from contact with flavor-generating material 13
`when a user inhales. Id.
`Abhulimen describes that smoking device 10 is started by lighting the
`metal filament of glow element 16, using a lighter placed under the article in
`the region of puffing air inlets 18. Id. Wick 22 draws fuel to the region of
`the metal filament, and the flame causes the fuel to vaporize. Id. When the
`user inhales, air is pulled through puffing air inlets 18 and across the metal
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
