Paper: 7
`Trials@uspto.gov
`571-272-7822 Entered: September 27, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R. J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2018-00626
`Patent 8,375,957 B2
`____________
`
`
`
`
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822 Entered: September 27, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R. J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Case IPR2018-00626
`Patent 8,375,957 B2
`____________
`
`
`
`
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`DECISION
`Denial of Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`Case IPR2018-00626
`Patent 8,375,957 B2
`
`
`I. INTRODUCTION
`R.J. Reynolds Vapor Company (“Petitioner”), filed a Petition (Paper
`2, “Pet.”) requesting an inter partes review of claims 1, 9, 10, 17, and 22 of
`U.S. Patent No. 8,375,957 B2 (Ex. 1001, “the ’957 patent”) pursuant to
`35 U.S.C. § 311(a). Fontem Holdings 1 B.V. (“ Patent Owner”), filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314(a), which provides that an
`inter partes review may not be instituted “unless . . . the information
`presented in the petition . . . shows that there is a reasonable likelihood that
`the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.”
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence of record, we conclude the information presented fails to show
`there is a reasonable likelihood that Petitioner would prevail in establishing
`the unpatentability of claims 1, 9, 10, 17, and 22 of the ’957 patent.
`Additionally, we determine that the Petition presents substantially the
`same art or arguments as those previously presented to the Office.
`Therefore, we also exercise our discretion under 35 U.S.C. § 325(d) to deny
`institution of an inter partes review as to claims 1, 9, 10, 17, and 22 of the
`’957 patent.
`
`A. Related Proceedings
`
`Petitioner identifies Fontem Ventures BV v. R.J. Reynolds Vapor
`Company, 1:17-cv-00175 (M.D.N.C), which has been consolidated with lead
`case Fontem Ventures B.V. v. R.J. Reynolds Vapor Company, 1:16-cv-01255
`(M.D.N.C.), in which Fontem asserted the ’957 patent and six other patents
`(collectively, “the Asserted Patents”) as a related matter. Pet. 2. Petitioner
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`also identifies over twenty district court actions brought by Fontem or its
`predecessors-in-interest that involve the ’957 patent, the Asserted Patents, or
`other patents related to the Asserted Patents, as related matters, including
`Fontem Ventures BV v. Nu Mark LLC, 2:16-cv-04537 (C.D. Cal.). Id. at 2–
`5.
`
`Petitioner also states it filed two petitions for inter partes review of
`U.S. Patent No. 9,370,205, which is related to the ’957 patent (id. at 7)
`(citing IPR2017-01641 and IPR2017-01642), and identifies an additional
`fourteen inter partes review proceedings as related to the present petition
`(id. at 5–7), including three proceedings that involve the ’957 patent (id. at
`6–7) (citing IPR2015–00098, IPR2015-01513, and IPR2016-01037).
`
`B. The ’957 Patent
`
`The ’957 patent is directed to an electronic cigarette comprising, inter
`alia, a battery assembly, an atomizer assembly, and a cigarette bottle.
`Ex. 1001, Abstract. Figures 2A, 3, and 4 of the ’957 patent are reproduced
`below:
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`Figure 2A is a diagram of the battery assembly disclosed in the ’957 patent,
`including external screw thread electrode 209. Id. at 2:27–28, 2:60–65.
`Figure 3 is a diagram of an atomizer assembly disclosed in the ’957 patent,
`including internal screwthread electrode 302. Id. at 2:31–32, 2:33–34.
`Figure 4 is a diagram of a cigarette bottle assembly. Id. at 2:33–34.
`Figure 5A, shown below, is a section view of an assembled electronic
`cigarette described in the ’957 patent. Id. at 2:35–36, 3:57–61.
`
`
`Figure 5A, shown above, is a diagram of an assembled electronic cigarette
`that includes the battery assembly of Figure 2A, the atomizer assembly of
`Figure 3, and the cigarette bottle assembly of Figure 4. Id. at 3:57–61. The
`’957 patent states that the battery assembly is fastened onto the atomizer
`assembly, which is then inserted into the cigarette bottle assembly. Id.
`
`C. Claims
`
`Petitioner challenges claims 1, 9, 10, 17, and 22. Of the challenged
`claims, claims 1 and 10 are independent. Claim 1 is representative and is
`reproduced below.
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`1. An electronic cigarette or cigar comprising:
`a battery assembly comprising a battery assembly
`housing having a first end and a second end, with
`a battery, a micro-controller unit (MCU) and a
`sensor electrically connected to a circuit board
`within the battery assembly housing;
`a primary screwthread electrode located on the first
`end of the battery assembly housing and having
`a hole through its center;
`an atomizer assembly comprising:
`an atomizer assembly housing having a first end and
`a second end;
`an atomizer, and a solution storage area in the
`atomizer assembly housing;
`a secondary screwthread electrode located on the
`second end of the atomizer assembly housing
`and having a hole through its center, the battery
`assembly and the atomizer assembly connected
`through the primary and secondary screwthread
`electrodes; and
`with the atomizer including a heater coil wound
`around a porous component.
`Id. at 5:52–6:5 (emphasis added).
`D. Prior Art Relied Upon
`
`Petitioner applies the following prior art references in the grounds of
`unpatentability asserted in the Petition:
`U.S. Patent No. 2,057,353 (Ex. 1004, “Whittemore”); and
`U.S. Patent No. 4,947,874 (Ex. 1003, “Brooks”).
`E. Asserted Ground of Unpatentability
`Petitioner argues that the challenged claims are unpatentable based
`upon the following ground:
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`
`References
`Brooks and Whittemore
`
`Basis
`§ 103
`
`Challenged Claim(s)
`1, 9, 10, 17, and 22
`
`II. ANALYSIS
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2136 (2016). Claim terms are generally given
`their ordinary and customary meaning, as 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). For purposes of this Decision,
`we determine that no claim term requires an explicit construction. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(stating “only those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy”).
`
`B. Principles of Law
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
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`ordinary skill in the pertinent art.”1 Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966).
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR, 550
`U.S. at 418. An obviousness determination requires finding “both ‘that a
`skilled artisan would have been motivated to combine the teachings of the
`prior art references to achieve the claimed invention, and that the skilled
`artisan would have had a reasonable expectation of success in doing so.’”
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–
`68 (Fed. Cir. 2016) (citation omitted); see also KSR, 550 U.S. at 418 (for an
`obviousness analysis, “it can be important to identify a reason that would
`have prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does”). A motivation to
`combine the teachings of two references can be “found explicitly or
`implicitly in market forces; design incentives; the ‘interrelated teachings of
`multiple patents’; ‘any need or problem known in the field of endeavor at the
`time of invention and addressed by the patent’; and the background
`knowledge, creativity, and common sense of the person of ordinary skill.”
`Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)
`(citation omitted). Further, an assertion of obviousness “cannot be sustained
`by mere conclusory statements; instead, there must be some articulated
`
`
`1 Additionally, secondary considerations, such as “commercial success, long
`felt but unsolved needs, failure of others, etc., might be utilized to give light
`to the circumstances surrounding the origin of the subject matter sought to
`be patented. As indicia of obviousness or nonobviousness, these inquiries
`may have relevancy.” Graham, 383 U.S. at 17–18. Patent Owner, however,
`has not presented any such evidence.
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`reasoning with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)); In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir. 2016)
`(a finding of a motivation to combine “must be supported by a ‘reasoned
`explanation’” (citation omitted)).
`
`C. Asserted Obviousness of Claims 1, 9, 10, 17, and 22
`over Brooks and Whittemore
`Relying upon the Declaration of Robert H. Sturges, Ph.D. (Ex. 1002),
`
`Petitioner contends claims 1, 9, 10, 17, and 22 would have been obvious
`under 35 U.S.C. § 103 over the combination of Brooks and Whittemore.
`Pet. 45–86. Patent Owner makes various arguments in response, relying
`upon the Declaration of Richard Meyst as support. Prelim. Resp. 16–64
`(citing Ex. 2001). For the reasons explained below, we are not persuaded
`that Petitioner has established a reasonable likelihood of prevailing on its
`asserted ground.
`
`Overview of Brooks
`1.
`Brooks, titled “Smoking Articles Utilizing Electrical Energy,”
`discloses a device having two basic parts: a reusable controller and a
`disposable cartridge or “cigarette.” See, e.g., Ex. 1003, 7:15–16.
`Figure 2 of Brooks illustrates an embodiment of the invention and is
`reproduced below:
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`
`Figure 2 is a sectional view of an embodiment of the smoking device
`described in Brooks having reusable controller 14 and disposable cigarette
`12. Ex. 1003, 6:62–63, 7:15–16. To connect disposable cigarette 12 to
`reusable controller 14, the user inserts plug 16 of cigarette 12 into receptacle
`44 of controller 14. See, e.g., id. at 8:33–38, 10:34–35. Both plug 16 and
`receptacle 44 are made from electrically insulative, i.e., nonconductive,
`materials. See, e.g., id. at 8:31–33, 9:41–43. Plug 16 includes two electrical
`connector pins or prongs 38, 39 and receptacle 44 has two electrical
`terminals 42, 43. See, e.g., id. at 8:33–38, 9:41–43. Brooks explains that an
`electrical connection is made by engaging electrical connector pins 38, 39
`with electric terminals 42, 43. See, e.g., id. at 8:36–38, 9:41–43, 10:34–45.
`Receptacle 44 also includes tube 48, which is inserted into
`passageway 46 of plug 16 to be in airflow communication with the internal
`region of the cigarette. Id. at 9:43–46. The other end of tube 48 is in airflow
`communication with pressure sensing switch 28. Id. at 9:46–48. When the
`user draws on the cigarette, switch 28 responds to the change in air pressure,
`permitting current to flow through heating element 18. See id. at 10:42–45.
`When the user stops drawing in the cigarette, switch 28 again responds to
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`the sensed change in air pressure within the cigarette, and further current
`flow though the heating element ceases. Id. at 10:59–63.
`Figure 1A of Brooks is reproduced below.
`
`
`Figure 1A is a sectional view of the smoking article shown in Figure 1
`and illustrates plug 16, tube 48, passageway 46, and electrical connector pins
`38, 39. As shown in Figure 1A, electrical connector “pins 38, 39 and
`passageway 46 are offset with respect to the longitudinal axis of plug 16.”
`Id. at 8:40–42; see also id. at 11:6–9 (stating the embodiment of Fig. 2 is
`generally similar to the embodiment of Fig. 1, expect that the heating
`element is positioned within a heat resistant insulative tube).
`
`2.
`Overview of Whittemore
`Whittemore, titled “Vaporizing Unit for Therapeutic Apparatus,”
`describes a battery-powered device for vaporizing medications. See, e.g.,
`Ex. 1004, 1:5–10. Figure 2 of Whittemore is reproduced below:
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`Figure 2 shows a vaporizing unit described in Whittemore having vessel A,
`for carrying medicine (i.e., medicament x), connected to terminal plug B.
`Ex. 1004, 1:38–41. Terminal plug B has metal shell 7 and center conducting
`button 8. Id. at 1:45–49. Conductor 1 is soldered to the inner surface of
`metal shell 7 plug B and the other conductor (conductor 2) is soldered to the
`inner surface of center conducting button 8. Id. Conductors 1 and 2 and a
`filament or heating element 3 are combined in such a way that when the
`conductors are energized by an electric current, filament 3 will become
`heated. Id. at 1:23–30. The heat from filament 3 can vaporize the
`medicament that has been carried by capillary action through wick D. Id. at
`1:50–2:8. Terminal plug B can be plugged into a terminal socket, such as
`the socket of an ordinary flashlight, forming a part of an electrical circuit.
`Id. at 1:40–45.
`
`Analysis
`3.
`Each of the independent claims of the ’957 patent requires the
`electronic cigarette or cigar to have “a primary screwthread electrode located
`on the first end of the battery assembly housing” and “a secondary
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`screwthread electrode located on the second end of the atomizer assembly
`housing.” Ex. 1001, 5:58–59, 5:66–67, 6:41–42, 6:46–47. The claims
`further require “the battery assembly and the atomizer assembly connected
`through the primary and secondary screwthread electrodes.” Id. at 6:1–3,
`6:47–49.
`Petitioner argues that it would have been obvious to adapt Brooks to
`include Whittemore’s screwthread electrode connection and center
`conducting button 8. See generally Pet. 31–39; see also id. at 37 (stating
`“the center conducting button 8 of Whittemore is used in the circuit along
`with a center contact on the receptacle as shown in Whittemore”) (citing Ex.
`1004, Figs. 1, 2); id. (stating “both [the screwthreads and the center
`conducting button and contact] replace the pin/receptacle connection
`previously provided in Brooks”) (citing Ex. 1002 ¶ 87).
`Petitioner provides an illustration of an exemplary embodiment of
`Brook’s device as modified in view of Whittemore, shown below. Id. at 36.
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`Petitioner’s diagram, titled “Brooks in view of Whittemore” and
`
`reproduced above, illustrates Petitioner’s argument as to how the Brooks
`pin/receptacle connection could be replaced with Whittemore’s screwthread
`electrodes and Whittemore’s center conducting button. See id. at 36–37.
`Petitioner explains the “screwthreads act as an electrode and provide the
`electrical conductivity along with the center conducting button and contact,
`both of which replace the pin/receptacle connection previously provided in
`Brooks.” Id. at 37 (citing Ex. 1002 ¶ 87). Petitioner asserts that Brook’s
`pressure sensing tube (tube 48) would be retained when modifying Brooks to
`include Whittemore’s screwthread electrodes and would “extend[] through
`the screw thread on the battery assembly housing into passageway 46 of the
`disposable portion plug to provide the airflow connection necessary for the
`operation of pressure actuated switch 28.” Id. (citing Ex. 1002 ¶ 88); see
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`also id. at 58 (citing Ex. 1002 ¶¶ 87, 105) (stating “tube 48 and passageway
`46 would be retained when modifying Brooks to include Whittemore’s
`screw thread electrodes”).
`Petitioner also asserts that although passageway 46 shown in Brook’s
`Figure 1A is “offset with respect to the longitudinal axis of plug 16” that it
`would have been a simple design choice to reposition passageway 46 to the
`center of plug 16. Id. at 59–60 (citing Ex. 1002 ¶ 105; Ex. 1003, 8:40–42,
`11:66–12:2).2
`Petitioner provides a number of arguments as to why a person of
`ordinary skill in the art (“POSITA”) would have been motivated to replace
`Brooks’ pin/receptacle connection with Whittemore’s screwthread
`electrodes and center conducting button. Id. at 31–39. Patent Owner
`opposes, asserting, inter alia, Petitioner’s argument is based on hindsight.
`We address these arguments in turn.
`First, Petitioner asserts that analogous art discloses that plug
`connectors can be replaced with screwthread connectors and that a skilled
`artisan “would have recognized that plug connectors (such as in Brooks)
`could be replaced with a screwthread connector (such as in Whittemore).”
`Id. at 31–32 (citing Ex. 1016, 5:26–28, 10:24–30, Fig. 1; Ex. 1002 ¶¶ 82,
`
`
`2 To the extent Petitioner asserts Brooks’ Figs. 2 and 4–6 disclose tube 48
`and passageway 46 as centered on the central longitudinal axis of disposable
`portion 12, we disagree. See, e.g., Pet. 58–60; Ex. 1002 ¶ 105. Each of
`these figures present a longitudinal view of Brooks’ device, and therefore, it
`is not possible to determine where the tube/passageway are relative to the
`center axis. Furthermore, Brooks explicitly states the tube shown in Fig. 1 is
`offset from center and depicts the tube shown in Fig. 1 as located in the
`same position as the tube of Figs. 2 and 4–6. See Ex. 1003, 8:40–42, Figs. 1,
`1A, 2–4, 6.
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`87). Second, Petitioner contends “threaded and mechanical electrical
`connection could be used in Brooks because threaded connections are so
`common place in everyday structures (e.g., light fixtures) that they can be
`considered common knowledge)” and that a POSITA would have
`understood that Brook’s pin/receptacle connection “was a conventional
`fastening means that could easily be replaced with other well-known . . .
`connectors.” Id. at 32–33 (citing Ex 1002 ¶¶ 77–86; Ex. 1009, 1:45–55,
`Figs. 1, 5; Ex. 1010, 1:80–83, Fig. 2; Ex. 1011, 1:30–36, Fig. 2; Ex. 1012,
`2:28–36, Fig. 2; Ex. 1017, 8); see also id. at 33–34 (stating “it would have
`been obvious to try a screw thread electrode” because “a screwthread is one
`of a limited number of basic fastening means”) (citing Ex. 1022, 111;
`Ex. 1002 ¶ 77). Third, Petitioner asserts that a POSITA would have known
`that threaded connections were used to join components of vaporizing
`devices and simulated cigarettes for decades. Id. at 34 (citing Ex. 1002
`¶¶ 78, 82–86; Ex. 1016, 5:26–29; Ex. 1019, 2:45–47; Ex. 1021, 8, Fig. 4a;
`Ex. 1023, 5:48–55).
`We are not persuaded by these arguments because, while the cited
`evidence may show that screw thread electrodes were known in the relevant
`art to connect various components of e-cigarette devices, Petitioner has not
`pointed to evidence that would provide a persuasive reason why a person of
`skill in the art would have modified Brooks to incorporate Whittemore’s
`screw thread electrodes and center button 8. A patent “is not proved obvious
`merely by demonstrating that each element was, independently, known in
`the prior art.” KSR, 550 U.S. at 418. It remains “important to identify a
`reason that would have prompted a person in the relevant field to combine
`the elements in the way the claimed new invention does.” Id. To the extent
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`Petitioner is arguing that it would have been obvious to try modifying
`Brook’s device to include Whittemore’s screwthread electrodes and center
`button, Petitioner has not persuasively shown that there was a design need,
`market pressure to solve a problem, or other reason that would have led a
`skilled artisan to modify Brooks. See KSR, 550 U.S. at 420 (stating that
`“[w]hen there is a design need or market pressure to solve a problem, and
`there are a finite number of identified, predictable solutions, a person of
`orinary skill in the art has good reason to pursue the known options within
`his or her technical grasp”) (emphasis added). Thus, even if there are a
`limited number of fastening means that could be employed, Petitioner has
`not shown that there was a recognized problem or need in the art, such as a
`design need or market pressure to solve a problem, or other reason that one
`of skill in the art would have sought to use an alternate fastening means from
`that disclosed in Brooks.
`We recognize that Petitioner also contends that a skilled artisan would
`have known that “threaded electrical connections are especially appropriate
`for reusable components that require frequent assembly and disassembly,”
`such as Brooks’ disposable portion 12 which “would require frequent
`replacement.” Id. at 34–35 (citing Ex. 1002 ¶¶ 79–81; Ex. 1022, 111;
`Ex. 1024, 230). However, Petitioner has not provided any persuasive
`evidence that these problems were recognized by a POSITA at the relevant
`time frame. See id. As persuasively argued by Patent Owner, Petitioner has
`“created a nonexistent problem based on hindsight to justify its proposed
`combination” and has not provided evidence that Brook’s pin/plug connector
`presented any inconvenience or difficulty. Prelim. Resp. 59–60.
`Petitioner’s expert, Dr. Sturges, testifies that screwthreads are advantageous
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`because “screwthreads are generally easily aligned as compared to a
`pin/plug connection.” Ex. 1002 ¶ 80. We are not persuaded by this
`testimony because it does not address the tube in the combined device that
`must also must be aligned into the center of Whittemore’s center conducting
`button. See, e.g., Pet. 60 (stating that “if the tube and passageway were not
`located in the centers, it would have been impossible to screw the disposable
`portion into the controller as the tube 48 would be stationary, but the
`passageway 46 into which the tube is place[d] would be moving in a circle
`around the center”); id. at 57 (stating “pressure sensing tube 48 is through a
`hole in the center of the first screw thread electrode”) (citing Ex. 1002
`¶ 105); see also id. at 36 (diagram of Brook’s device modified in view of
`Whittemore depicting Brook’s tube 48 passing through Whittermore’s center
`conducting button as well as the contact located on the receptacle). As such,
`we are not persuaded that the Brooks/Whittemore modified device, which
`requires having tube 48 aligned through the center of screwthread
`electrode/center conducting button, would be easier to align than the
`unmodified Brooks device.
`Petitioner also contends that a skilled artisan would have understood
`that the pins of Brooks’ disposable portion could deform (e.g., bend or
`spread) during storage and handling while a screw thread would not. Id. at
`35–36 (citing Ex. 1002 ¶ 81). Again, Petitioner has not provided any
`persuasive evidence that a skilled artisan would have been concerned with
`pin deformation or other persuasive evidence suggesting that Brook’s
`pins/prongs would be susceptible to damage. Dr. Sturges provides no
`persuasive facts or evidence to support his opinion that a skilled artisan
`would have understood that Brook’s pins could be subject to deformation.
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`See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)
`(“[T]he Board is entitled to weigh the declarations and conclude that the lack
`of factual corroboration warrants discounting the opinions expressed in the
`declarations.”).
`Finally, we disagree with Petitioner’s assertion that Petitioner’s
`proposed modification is a mere simple substitution of one known element
`(Whittemore’s screwthread) for another (Brooks’ pin/receptacle). Pet. 37–
`38. Rather, as shown in Petitioner’s exemplary embodiment of Brook’s
`device as modified in view of Whittemore, Whittemore’s center conducting
`button, which is required to complete the electrical circuit, would need to be
`modified so that Brook’s pressure sensing tube 48 could extend through
`Whittemore’s center conducting button. Id. at 36–37, 56–57; see also id. at
`60 (stating having “passage way 46 located in the center of the threaded
`connector would be the logical design choice, such as for Whittemore, where
`the center conducting button is in the center of the screwthread”) (citing Ex.
`1002 ¶ 105). Additionally, Brooks’ tube 48 would need to be positioned on
`the central longitudinal axis of the tubular atomizer assembly. See id. at 56–
`60. Given the requisite modifications, including providing a hole through
`the center of Whittemore’s center conducting button to accommodate
`Brook’s tube, we do not find the present facts present an instance of simple
`substitution.
`On this record, Petitioner fails to articulate a rational reason that
`would have prompted a skilled artisan to modify Brook’s device to include
`Whittemore’s screwthread electrodes. Therefore, on the record presented,
`we are not persuaded that Petitioner has shown a reasonable likelihood of
`
`18
`
`
`
`Case IPR2018-00626
`Patent 8,375,957 B2
`
`prevailing on its assertion that claims 1, 9, 10, 17, and 22 are unpatentable
`over Brooks and Whittemore.
`
`D. 35 U.S.C. § 325(d)
`Institution of inter partes review is discretionary. See 35 U.S.C.
`§ 314(a); 37 C.F.R. § 42.108. Our discretion on whether to institute is
`guided by 35 U.S.C. § 325(d), which states that “the Director may take into
`account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office.”
`Our discretion under § 325(d) involves a balance between competing
`interests. Hospira, Inc. v. Genentech, Inc., Case IPR2017–00739, slip op. at
`8 (PTAB July 27, 2017) (Paper 16) (informative). “On the one hand, there
`are the interests in conserving the resources of the Office and granting patent
`owners repose on issues and prior art that have been considered previously.”
`Id. “On the other hand, there are the interests of giving petitioners the
`opportunity to be heard and correcting any errors by the Office in allowing a
`patent.” Id.
`Patent Owner contends the Petition should be denied under § 325(d)
`because, inter alia, the Examiner has already considered substantially the
`same art during prosecution of the ’957 patent. See Prelim. Resp. 24 (stating
`Whittemore and two references that the Board has twice found to be
`substantially identical to Brooks, namely U.S. Patent 4,947,875 (“’875
`Patent”) and EP0358002 (“EP0002”), were considered by the Examiner
`during prosecution of the ’957 patent); Nu Mark LLC v. Fontem Holdings 1,
`B.V., Case IPR2016–01309, slip op. at 9–11 (PTAB Dec. 15, 2016) (Paper
`11) (determining that “the content of Brooks is the same or substantially the
`
`19
`
`
`
`Case IPR2018-00626
`Patent 8,375,957 B2
`
`same as the disclosures in EP0002 and the ’875 patent” and denying
`institution under Section 325(d) of claims of U.S. Patent No. 8,863,752 over
`Brooks and Whittemore); see also R.J. Reynolds Vapor Co. v. Fontem
`Holdings 1 B.V., Case IPR2017-01642, slip op. at 9–11 (PTAB Jan. 16,
`2018) (Paper 10) (determining that “the content of Brooks is the same or
`substantially the same as the disclosures in the EP0002 and the ’875 patent”
`and denying institution under Section 325(d) of claims of U.S. Patent No.
`9,370,205 over Brooks and Whittemore).
`Petitioner does not dispute that the ’875 Patent and EP0002 are
`substantially similar to Brooks; nor does Petitioner dispute that Whittemore,
`the ’875 patent, and EP0002 were cited to the Examiner on an Information
`Disclosure Statement (“IDS”) are listed on the face of the ’957 patent. See
`Pet. 10–11.
`Petitioner, however, argues that § 325(d) should not apply because
`(1)Whittemore, EP0002, and the ’875 Patent were not used to substantively
`reject the claims of the ’957 patent, and (2) the Petition provides evidence
`that the Examiner did not have available during prosecution of the ’957
`patent, including Dr. Sturges’ testimony and other prior art references
`“showing that screw threads were well-known for both mechanically and
`electrically connecting two parts.” Id. at 10–12.
`Although we acknowledge Petitioner has a direct interest in pursuing
`the instant Petition, we also acknowledge that Petitioner’s unpatentability
`arguments are based on substantially the same prior art already considered
`by the Office. Whittemore as well as EP0002 and the ’875 patent, which are
`substantially the same as Brooks, were cited on an IDS and are listed on the
`face of the ’957 patent as among the “References Cited” and were
`
`20
`
`
`
`Case IPR2018-00626
`Patent 8,375,957 B2
`
`considered by the Examiner during prosecution. See, e.g., Benitec
`Biopharma Ltd. v. Cold Spring Harbor Laboratory, IPR2016-00014, slip op.
`at 10 (PTAB Mar. 23, 2016) (Paper 7) (stating an “Examiner’s initials on an
`IDS form ‘provides . . . a clear record in the application to indicate which
`documents have been considered by the examiner in the application’”). We
`have also considered Petitioner’s argument that it has new evidence showing
`that screw threads were well-known for both mechanically and electrically
`connecting two parts that was not before the Examiner. However, as
`discussed above in Section II.C.3., we are not persuaded that Petitioner’s
`evidence showing that screw threads were well-known for both
`mechanically and electrically connecting two parts is persuasive evidence
`that the challenged claims are unpatentable.
`As such, we are not persuaded that instituting inter partes review to
`consider art already considered by the Examiner during prosecution,
`particularly when Petitioner has not persuasively shown the Examiner erred,
`is an efficient use of Board or party resources.
`Therefore, we exercise our discretion not to institute inter partes
`review of the ’957 patent pursuant to our authority arising under 35 U.S.C.
`§§ 314 and 325(d), and 37 C.F.R. §§ 42.4 and 42.108.
`
`III. CONCLUSION
`After due consideration of the record before and for the foregoing
`reasons, we deny the Petition for inter partes review of claims 1, 9, 10, 17,
`and 22 of the ’957 patent.
`
`
`
`21
`
`
`
`Case IPR2018-00626
`Patent 8,375,957 B2
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that the petition for inter partes review of U.S. Patent No.
`8,375,957 B2 is denied as to all challenged claims, and no trial is instituted.
`
`PETITIONER:
`
`Ralph Gabric
`rgabric@brinksgilson.com
`
`Robert Mallin
`rmallin@brinksgilson.com
`
`Scott Timmerman s
`timmerman@brinksgilson.com
`
`
`PATENT OWNER:
`
`Michael Wise
`mwise@perkinscoie.com
`
`Joseph Hamilton
`jhamilton@perkinscoie.com
`
`Tyler Bowen
`tbowen@perkinscoie.com
`
`
`
`
`
`
`
`
`22
`
`
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