Trials@uspto.gov
`571.272.7822
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`
`
`
`
` Paper No. 10
` Entered: July 30, 2018
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`
`
`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 IPR 2018-00627
`Patent 8,393,331 B2
`____________
`
`
`Before DONNA M. PRAISS, BRIAN J. MCNAMARA, and
`JEREMY M. PLENZER, Administrative Patent Judges.
`
`
`
`PRAISS, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 10
` Entered: July 30, 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 IPR 2018-00627
`Patent 8,393,331 B2
`____________
`
`
`Before DONNA M. PRAISS, BRIAN J. MCNAMARA, and
`JEREMY M. PLENZER, Administrative Patent Judges.
`
`
`
`PRAISS, Administrative Patent Judge.
`
`
`
`DECISION
`Instituting Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2018-00627
`Patent 8,393,331 B2
`
`
` INTRODUCTION
`
`R.J. Reynolds Vapor Company (“Petitioner”) filed a Petition
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`requesting an inter partes review of claims 1 and 2 of U.S. Patent No.
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`8,393,331 B2 (Ex. 1001, “the ’331 patent”). Paper 2 (“Pet.”). Fontem
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`Holdings 1 B.V. (“Patent Owner”) filed a Preliminary Response to the
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`Petition. Paper 9 (“Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a). Upon considering
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`the Petition and Preliminary Response, we determine that Petitioner has
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`established a reasonable likelihood that it would prevail in showing the
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`unpatentability of claims 1 and 2. Accordingly, we institute an inter partes
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`review of those claims.
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`A.
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`Related Proceedings
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`Petitioner identifies as related matters the following four litigations
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`filed by Patent Owner against Petitioner involving the indicated patents: No.
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`1: 17-cv-00175 (M.D.N.C.) (US 8,393,331 B2, US 8,375,957 B2, US
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`8,863,752 B2, US 9,364,027 B2, US 9,339,062 B2, US 9,326,550 B2, US
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`9,326,551 B2, US 9,456,632 B2); No. 1:16-cv-01255 (M.D.N.C.) (US
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`8,365,742 B2, US 8,490,628 B2, US 8,893,726 B2, US 8,899,239 B2); No.
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`1-16-cv-01257 (M.D.N.C.) (US 9,326,548 B2 and US 9,326,549 B2); and
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`No. 1-16-cv-01258 (M.D.N.C.) (US 9,370,205 B2). Pet. 2–3.
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`Petitioner also identifies as related matters the following cases filed by
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`the Patent Owner in which the ’331 patent was asserted against the indicated
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`defendants in the United States District Court for the Central District of
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`2
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`IPR2018-00627
`Patent 8,393,331 B2
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`California: (i) Ballantyne Brands, LLC, No. 2:14-cv-01652; (ii) VMR
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`Products, LLC, No. 2:14-cv-01655; (iii) Spark Industries, LLC, No. 2:14-cv-
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`01653; (iv) Vapor Corp., No. 2:14-cv-01650; (v) CB Distributors, Inc., No.
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`2:14-cv-01649; (vi) LOEC, Inc., No. 2:14-cv-01648; (vii) Logic Technology
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`Development LLC, No. 2:14-cv-01654; (viii) NJOY, Inc., No. 2:14-cv-
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`01645; (ix) FIN Branding Group, LLC, No. 2:14-cv-01651; and (x) Nu
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`Mark LLC, No. 2:16-cv-02291 (now No. 1:16-cv-01261 M.D.N.C.). Pet. 4.
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`In its Mandatory Notices, Patent Owner identifies the following
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`twelve additional litigations before the United States District Court for the
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`Central District of California involving the ’331 patent, US 7,832,410,
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`which is the priority case to the ’331 patent, and US Patent Nos. 8,490,628,
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`8,893,726, and 9,326,549, which claim priority to the ’331 patent, brought
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`against the indicated first-named defendant by Fontem Ventures B.V. and
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`Fontem Holdings 1 B.V. unless otherwise indicated: (i) NuMark LLC, No.
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`16-CV-4537 (now No. 16-CV-1259 M.D.N.C.); (ii) NJOY, No. 14-CV-
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`8144; (iii) LOEC, Inc., No. 14-CV-8149; (iv) CB Distributors, Inc., No. 14-
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`CV-8154; (v) Vapor Corp., No. 14-CV-8155; (vi) Fin Branding Group,
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`LLC, No. 14-CV-8156; (vii) Ballantyne Brands, LLC, No. 14-CV-8157;
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`(viii) Spark Industries, LLC, No. 14-CV-8158; (ix) Logic Technology
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`Development LLC, No. 14-CV-8160; (x) VMR Products, LLC, No. 14-CV-
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`8161; (xi) Ruyan Investment (Holdings) Limited v. Smoking Everywhere,
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`Inc., No. 11-CV-0637; (xii) Ruyan Investment (Holdings) Limited v. Vapor
`
`Corp., No. 11-CV-6268. Paper 4, 2–6.
`
`Petitioner identifies the following three petitions for inter partes
`
`review of the ’331 patent filed by the indicated parties: IPR2014-01289
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`(NJOY, Inc.); IPR2016-01299 (Nu Mark LLC); IPR2016-01438 (Nu Mark
`
`LLC). Pet. 4–5. Petitioner additionally identifies the following petitions for
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`3
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`IPR2018-00627
`Patent 8,393,331 B2
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`inter partes review of related patents: IPR2014-01300 (US 8,490,628 B2);
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`IPR2015-01302 (US 8,893,726 B2); IPR2016-01283 (US 8,490,628 B2);
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`IPR2016-01285 (US 8,490,628 B2); IPR2016-01288 (US 8,893,726 B2);
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`IPR2016-01297 (US 8,893,726 B2); IPR2016-01270 (US 8,893,726 B2);
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`IPR2016-01527 (US 8,490,628 B2); IPR2016-01664 (US 9,326,549 B2);
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`IPR2016-01859 (US 9,326,549 B2); IPR2017-01117 (US 8,893,726 B2);
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`IPR2017-01118 (US 8,490,628 B2); IPR2017-01119 (US B2); IPR2017-
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`01180 (US 8,893,726 B2); IPR2017-01318 (US 9,326,549 B2); and
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`IPR2017-01319 (US 9,326,549 B2). Pet. 5–6.
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`Petitioner concurrently filed petitions for inter partes review of
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`related patents in IPR2018-00626 (US 8,375,957 B2), IPR2018-00628 (US
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`8,863,752 B2), IPR2018-00629 (US 9,364,027 B2), IPR2018-00630 (US
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`9,364,027 B2), IPR2018-00631 (US 9,339,062 B2), IPR2018-00632 (US
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`9,326,550 B2), IPR2018-00633 (US 9,326,551 B2), and IPR2018-00634
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`(US 9,456,632 B2).
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`B.
`
`The ’331 patent (Ex. 1001)
`
`The ’331 patent relates to an electronic atomization cigarette that
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`functions as a cigarette substitute. Ex. 1001, 1:56–57. The electronic
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`cigarette comprises, among other components, a shell, a mouthpiece, an air
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`inlet, an electronic circuit board, a sensor, an atomizer, and a “liquid-supply”
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`in contact with the atomizer. Id. at 1:58–67. Figures 1, 6, and 11 of the ’331
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`patent are reproduced below.
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`4
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`IPR2018-00627
`Patent 8,393,331 B2
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`Figure 1 is a schematic diagram of an embodiment of the electronic
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`cigarette; Figure 6 is a structural diagram of an atomizer, and Figure 11 is a
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`structural diagram of a mouthpiece and liquid-supplying bottle. Id. at 2:8,
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`2:15, 2:22–23. In Figure 1, the electronic cigarette comprises LED 1, cell 2,
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`electronic circuit board 3, air inlet 4, normal pressure cavity 5, sensor 6,
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`vapor-liquid separator 7, atomizer 9, liquid-supplying bottle 11, and
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`mouthpiece 15, sequentially provided within shell 14. Id. at 2:33–39. In
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`Figure 6, the atomizer (shown as atomizer 9 in Figure 1) comprises heating
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`element 26 and atomization cavity wall 25 surrounded by porous body 27,
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`which includes bulge 36. Id. at 2:48–52, 2:63–64. In Figure 11, solution
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`5
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`IPR2018-00627
`Patent 8,393,331 B2
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`storage porous body 28 is provided in liquid-supplying bottle 11 with gas
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`vent 17 and mouthpiece 15. Id. at 3:8–17. As described in the ’331 patent,
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`“the solution storage porous body 28 in the liquid-supplying bottle 11 is in
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`contact with the bulge 36 on the atomizer 9, thereby achieving the capillary
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`infiltration liquid-supplying.” Id. at 3:64–67.
`
`C.
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`Challenged Claims
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`Independent claims 1 and 2 of the ’331 patent are reproduced
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`below (indentation, paragraph lettering, and emphasis added):
`
`1. An electronic cigarette comprising;
`[A] a housing;
`[B] a mouthpiece on the housing;
`[C] an LED at a first end of the housing;
`[D] an air inlet leading into the housing;
`[E] a battery within the housing;
`[F] an electronic circuit board within the housing;
`[G] a sensor within the housing;
`[H] an atomizer within the housing;
`[I] a stream passage within the housing leading from the
`inlet to the atomizer;
`[J] a cavity arranged in the atomizer;
`[K] a liquid-supply within the housing; and
`[L] an aerosol passage leading from the atomizer to the
`mouthpiece; and
`[M] with the liquid-supply in physical contact with the
`atomizer; and
`[N] a heating element within the cavity.
`
`2. An electronic cigarette, comprising:
`[A] a housing;
`[B] a mouthpiece on the housing;
`[C] an LED at a first end of the housing;
`[D] an air inlet for providing air into the housing;
`[E] a battery and a sensor electrically connected to an
`electronic circuit board within the housing, with the sensor in a
`stream passage in the housing;
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`6
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`IPR2018-00627
`Patent 8,393,331 B2
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`[F] an atomizer within the housing, with the atomizer
`having a heating element within a cavity, and with the atomizer
`making contact with a liquid-supply, to provide for movement
`of liquid to the atomizer via capillary action; and
`[G] an aerosol passage extending from the atomizer to the
`mouthpiece.
`
`Id. at 4:67–6:11.
`
`D.
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`The Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims 1 and 2 of the ’331
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`patent on the following grounds:
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`References
`
`Takeuchi1
`
`Takeuchi
`
`Basis
`
`§ 102
`
`§ 103
`
`Claims
`
`1 and 2
`
`1 and 2
`
`
`
` ANALYSIS
`
`A.
`
`Person of Ordinary Skill in the Art
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`The parties submit slightly different definitions of a person of
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`ordinary skill in the art. Petitioner contends that a person of ordinary skill in
`
`the art would have had a bachelor’s degree in electrical engineering,
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`mechanical engineering, biomedical engineering, or a related field, with at
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`least five years of experience in designing electromechanical devices. Pet.
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`14–15. Patent Owner further includes an industrial design degree or
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`equivalent work experience for the education level of one of ordinary skill
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`the art, but agrees with Petitioner’s degree of practical experience being at
`
`least 5 years. Prelim. Resp. 5–6.
`
`
`
`1 Takeuchi, US 6,155,268, issued Dec. 5, 2000 (Ex. 1001).
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`7
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`Patent 8,393,331 B2
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`For purposes of this Decision, we do not discern an appreciable
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`difference between Petitioner’s and Patent Owner’s proposed levels of
`
`ordinary skill in the art that would impact our ultimate conclusions. We also
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`consider the cited prior art as representative of the level of ordinary skill in
`
`the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
`
`(finding the absence of specific findings on “level of skill in the art does not
`
`give rise to reversible error ‘where the prior art itself reflects an appropriate
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`level and a need for testimony is not shown’”) (quoting Litton Indus. Prods.,
`
`Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
`
`B.
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`Claim Construction
`
`The ’331 patent is a continuation of and subject to a terminal
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`disclaimer over US 7,832,410 B2, which has a filing date of March 18,
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`2005. Ex. 1001; Ex. 1014 at 96. In an inter partes review, the Board
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`interprets claim terms in an unexpired patent according to the broadest
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`reasonable construction in light of the specification of the patent in which
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`they appear. See In re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1278
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`(Fed. Cir. 2015); 37 C.F.R. § 42.100(b). Under that standard, and absent any
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`special definitions, we give claim terms their ordinary and customary
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`meaning, as would be understood by one of ordinary skill in the art at the
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`time of the invention. See In re Translogic Tech., Inc., 504 F.3d 1249, 1257
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`(Fed. Cir. 2007). Any special definitions for claim terms must be set forth
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`with reasonable clarity, deliberateness, and precision. See In re Paulsen, 30
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`F.3d 1475, 1480 (Fed. Cir. 1994).
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`1.
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`“electronic cigarette”
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`Each independent claim recites in its preamble an “electronic
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`cigarette.” Petitioner contends that the preamble language is not used in the
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`body of the claim, that the invention is defined by the limitations that follow
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`8
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`the preamble, and, therefore, should not be treated as a claim limitation. Pet.
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`10 (citing IPR2016-01272, IPR2014-01339, IPR2014-01276, IPR2014-
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`01536 as similar instances where the preamble was not treated as a
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`limitation). If the preamble is interpreted as a limitation, Petitioner
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`alternatively requests that the term be construed consistent with the decision
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`on institution in IPR2014-01289, which also involved the ’331 patent. Pet.
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`21–22; see Ex. 1009, 8 (construing the term to be “a device for generating
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`liquid droplets for inhalation by a user, where the device functions as a
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`substitute for smoking, e.g., by providing ‘nicotine without tar,’ even if the
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`device is not shaped like a traditional slender rolled cigarette.”). Patent
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`Owner does not address the preamble of the claims in the Preliminary
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`Response.
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`The Specification summarizes the invention as “[a]n electronic
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`atomization cigarette that functions as substitutes for quitting smoking and
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`cigarette substitutes . . . .” Ex. 1001, 1:56–57. Components of the device
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`are generically described as including “a shell; a mouthpiece; an air inlet.”
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`Id. at 1:58. The Specification states that nicotine is the active ingredient in a
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`cigarette and that tar is the major harmful substance in tobacco. Id. at 1:31,
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`1:38–39. Prior cigarette substitutes that are free from tar are described in the
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`Specification as a nicotine patch, nicotine mouthwash, nicotine chewing
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`gum, and nicotine drink, which have a major disadvantage of not reaching
`
`an effective peak concentration due to slow absorption of nicotine. Id. at
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`1:44–48. According to the Specification, the prior art substitutes also “can
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`not satisfy habitual smoking actions of a smoker, for example, inhaling
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`action, and thus are not likely to be widely accepted as effective substitutes
`
`for smoking.” Id. at 1:48–51.
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`9
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`IPR2018-00627
`Patent 8,393,331 B2
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`We find that these disclosures of an electronic atomization cigarette
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`and other cigarette substitutes do not limit the shape, size, look, feel, or other
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`sensations of the electronic cigarette of the invention beyond delivering
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`atomization to satisfy the need for a user to experience an inhaling action.
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`Accordingly, on the current record, we determine the broadest reasonable
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`interpretation of the term “electronic cigarette” to be “a device for
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`generating liquid droplets for inhalation by a user, where the device
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`functions as a substitute for smoking, e.g., by providing nicotine without tar”
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`even if the device is not shaped like a traditional slender rolled cigarette.
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`Because the preamble is not essential to understand the limitations or
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`terms in the body of the claim and does not recite additional structure that
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`the Specification deems important, we determine that the preamble does not
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`further limit the claims. See Catalina Marketing Int’l, Inc. v.
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`Coolsavings,com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (“In general, a
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`preamble limits the invention if it recites essential structure or steps, or if it
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`is ‘necessary to give life, meaning, and vitality’ to the claim.”).
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`2.
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`“atomizer”
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`Each of the independent claims recites an “atomizer.” Petitioner
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`asserts that this limitation should be construed as in prior related inter
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`parties review proceeding IPR2016-01299 to mean “at least both the
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`components that cause atomization and the mechanism that transfers liquid
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`from the ‘liquid-supply’ to those components” as adopted in IPR2016-
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`01299. Pet. 18 (citing Ex. 1011, 12–13). Petitioner points to the analysis in
`
`the prior proceeding that the proposed interpretation is consistent with the
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`Specification and with Patent Owner’s position in that proceeding that
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`“atomizer 9 includes a porous body 27 that makes contact with the solution
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`storage porous body 28 inside the liquid-supplying bottle 11, allowing liquid
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`10
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`IPR2018-00627
`Patent 8,393,331 B2
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`to move from the storage body to the atomizer via capillary action.” Id.
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`(quoting Ex. 1011, 12–13; Ex. 1036, 3–4).
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`Patent Owner proposes the term means “component(s) that convert(s)
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`liquid into aerosol or vapor” because it is the same construction proposed
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`and adopted in district court litigation. Prelim. Resp. 7. According to Patent
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`Owner, the “claim language indicates the components that make up the
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`atomizer convert ‘liquid’ into ‘aerosol’” and that includes a heating element
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`within a cavity, but not the “liquid” which moves “to the atomizer” or the
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`“aerosol passage” that leads “from the atomizer.” Id. Referring to the
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`embodiment shown in Figure 6 of the ’331 patent as an example of a
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`collection of components that converts liquid into aerosol, Patent Owner
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`contends porous body 27, which absorbs liquid from the liquid-supply, is not
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`a separate component from the atomizer. Id. at 8–9. Patent Owner argues
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`that Petitioner’s definition of “atomizer” would include the atomizer as well
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`as a tube that transports liquid from a liquid supply to a spaced-apart
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`atomizer. Id. at 9. Such a construction, Patent Owner contends, would be
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`inconsistent with the prosecution history of the ’331 patent, which
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`distinguished Voges2 on the basis that it did not disclose an atomizer making
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`contact with a liquid-supply due to coupling 11 separating atomizer 14 from
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`liquid container 10. Id. at 9–10. Patent Owner’s annotated Figure 2 of
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`Voges is shown below.
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`
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`2 US 6, 196,218 B1, issued Mar. 6, 2001 (Ex. 2006).
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`11
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`Patent 8,393,331 B2
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`Annotated Figure 2 is a schematic of Voges’ inhaler. Ex. 2006, 8.
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`The ’331 patent depicts an “atomizer” embodiment having multiple
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`components, e.g., heating element 26, atomization cavity 10, atomization
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`cavity wall 25, porous body 27, and bulge 36. Ex. 1001, Fig. 6, 2:15, 2:45–
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`3:3. Bulge 36 is a component of atomizer 9 that is in contact with the liquid-
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`supplying bottle and, specifically, solution storage body 28 in liquid
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`supplying bottle 11, to achieve capillary infiltration liquid-supplying. Id. at
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`2:45–46, 3:61–64. The atomizer depicted in Figure 6, also includes first
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`piezoelectric element 23. Id. at 2:66–67. The first piezoelectric element
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`subjects the nicotine solution to ultrasonic atomization and is further
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`atomized by heating element 26. Id. at 3:49–55. The Specification does not
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`12
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`limit an “atomizer” to particular components for converting liquid into a
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`vapor, such as first piezoelectric element 23 and heating element 26, or any
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`particular mechanisms for absorbing liquid from a liquid supply, such as
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`porous body 27 and bulge 36 shown in Figure 6 of the ’331 patent.
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`However, the ’331 patent explains that contact between solution storage
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`body 28 and bulge 36 on porous body 27 transports liquid from the liquid-
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`supply to atomizer 9 via capillary infiltration. Id. at 3:61–64. Thus,
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`components of both the atomizer and the liquid-supply function to transport
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`liquid via capillary infiltration.
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`Statements made during prosecution characterized and distinguished
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`Voges as follows:
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`“[a] liquid is stored in a container 10 which is spaced apart from
`the dispenser head 14 by a spigot shaped outlet and coupling
`11. The dispenser head 14 draws liquid from the inlet port 12
`and moves it to the nozzles 15. The container 10 is not in
`physical contact with the dispenser head 14. Rather, the
`container 10 is essentially connected to the dispenser head 14
`via a tube 11.”
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`Ex. 1014, 68. The claimed device, on the other hand, was said to describe
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`“the liquid-supply in physical contact with the atomizer.” Id. at 69 (citing
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`Ex. 1001, Fig. 1 “which shows the atomizer 9 in physical contact with the
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`liquid supply 11”). The reasons for allowance provided by the Examiner
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`state: “[t]he closest prior art of record neither teaches nor suggests an
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`electronic cigarette having the claimed structural features, including an
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`atomizer making contact with a liquid-supply so as to provide for movement
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`of liquid to the atomizer via capillary action.” Id. at 80–81.3
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`
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`3 The reasons for allowable subject matter were directed to then pending
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`claims 101–104, which correspond to issued claims 2–5 in the ’331 patent.
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`13
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`IPR2018-00627
`Patent 8,393,331 B2
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`Accordingly, based on the record before us, we determine that the
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`broadest reasonable interpretation of the term “atomizer” is “at least both the
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`components that cause atomization and the mechanism that transfers liquid
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`via capillary infiltration from the ‘liquid-supply’ to those components.”
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`3.
`
`“liquid-supply”
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`Each of the independent claims recites “a liquid-supply.” Petitioner
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`asserts that this limitation should be construed as in prior related inter partes
`
`review proceeding IPR2016-01299 to mean “the liquid itself” or “store of
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`liquid.” Pet. 16 (citing Ex. 1011, 7–11).
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`Patent Owner disagrees with Petitioner’s construction because “it
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`would be unreasonable to interpret that term to encompass all the liquid
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`anywhere in the device” and proposes the term “liquid supply” means “a
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`store for liquid” reasoning that “a liquid-supply is something that holds
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`liquid.” Prelim. Resp. 13 (citing Ex. 2001 ¶¶ 31–36), 19. Patent Owner
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`points to claim 2 which uses both the term “liquid” and “liquid-supply” as an
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`indication that the terms are not synonymous. Id. at 15. Patent Owner also
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`contends that “[i]nterpreting ‘liquid-supply’ to mean ‘the liquid itself’
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`without regard to where the liquid is located would render the ‘contact’
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`limitation in claims 1 and 2 essentially meaningless.” Id. at 16. Patent
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`Owner cites the prosecution history of the ’331 patent where Voges was
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`distinguished on the basis of the location of container 10 not being in
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`physical contact with dispenser head 14 as further support for the position
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`
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`Ex. 1014, 80, 66. Issued claim 1 corresponds to then pending claim 93,
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`which was found allowable if rewritten in independent form and
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`subsequently amended. Id. at 80, 85–86.
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`14
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`IPR2018-00627
`Patent 8,393,331 B2
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`that liquid-supply does not mean the liquid itself because the liquid moves
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`from container 10 through coupling tube 11 to make contact with dispenser
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`head 14 in Voges. Id. at 17–18 (citing Ex. 1014 at 68–70, 80–81; Ex. 2006
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`4:5–11; Ex. 2001 ¶ 35). According to Patent Owner, its proposed
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`construction would be consistent with related IPR2016-01859. Id. at 14
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`(citing Ex. 2011, 5–10). Patent Owner also asserts it would be consistent
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`with IPR2016-01299 because the Board determined that a liquid-supply “is
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`not limited to the liquid itself, and may include other things in the liquid.”
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`Id. at 19 (quoting Ex. 1011, 11).
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`The proposed constructions for “liquid-supply” differ only by a
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`preposition: “store of liquid” and “store for liquid.” There are only two
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`instances of “liquid supply” in the Specification and no specific definition of
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`the term. Ex. 1001, Abstr., 1:66. While the Specification does not define
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`this term per se, it does describe that the “liquid-supply is in contact with the
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`atomizer.” Ex. 1001, 1:66–67. The Specification also describes an
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`embodiment where “atomizer 9 is in contact with the liquid-supplying bottle
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`11 via the bulge 36.” Id. at 2:45–47. Patent Owner provides observations in
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`support of the term being different from the liquid alone, but as for the
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`“physical structure” of the “liquid-supply” (Prelim. Resp. 14) or “something
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`that holds liquid” (id. at 19), Patent Owner does not contend that “liquid-
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`supply” means the “liquid-supplying bottle” of the examples. Regarding
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`structure, however, Patent Owner directs us to consider a particular response
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`distinguishing Voges during prosecution for purposes of claim construction.
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`Prelim. Resp. 17. In the response (Ex. 1014, 69), Patent Owner equated the
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`term “liquid supply” with item 11 (“liquid supply bottle”) in Figure 1 of the
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`’331 patent.
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`15
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`IPR2018-00627
`Patent 8,393,331 B2
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`Consistent with the Specification, the prosecution history, and without
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`reading limitations from the Specification into the claim, at this stage in the
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`proceeding we construe this term to require only the liquid itself. However,
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`the liquid-supply is not limited to the liquid itself, but may include other
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`things in and around the liquid, including one or more components that
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`supply liquid to the atomizer.4
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`4.
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`“an LED at a first end of the housing”
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`Each of the independent claims recites “an LED at a first end of the
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`housing.” Petitioner asserts that “a first end of the housing” should be
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`construed as in prior related inter parties review proceeding IPR2016-01299
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`to mean “the outer extent of some portion of the housing.” Pet. 19.
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`Patent Owner contends that Petitioner’s construction is overly broad
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`because the claim limitation “does not encompass an LED anywhere on any
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`device.” Prelim. Resp. 3. According to Patent Owner, convention, the
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`recited “first end,” and Figure 1 of the ’331 patent indicate that “end” should
`
`be interpreted as “tip.” Id. at 20–23. Patent Owner argues that Figure 1
`
`shows the LED at the tip of the housing and that mouthpiece 15 is a second
`
`end, thus the housing has two ends with the LED mimicking the ash tip of a
`
`conventional cigarette. Id. at 22. Patent Owner also contends that the
`
`
`
`4 Our interpretation of this claim element for purposes of this Decision is
`
`consistent with both IPR2016-01859 and IPR2016-001299 cited by the
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`parties, however, we note that IPR2016-01859 involved a different patent
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`and different claims that further defined the liquid supply as having a
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`particular shape and orientation (i.e., “cylindrical and parallel to the . . .
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`cylindrical housing”). Ex. 2011, 4.
`
`16
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`IPR2018-00627
`Patent 8,393,331 B2
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`Specification refers to other portions of the housing as a “side” or “wall”
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`rather than “ends.” Id. at 23–24. In further support of “end” meaning “tip,”
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`Patent Owner cites instances in Takeuchi describing certain elements as
`
`having a first end and a second end that Patent Owner asserts correspond to
`
`two tips. Id. at 24–26. Patent Owner cites additional references as similarly
`
`using the term “end.” Id. at 26–32.
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`While Figure 1 of the ’331 patent illustrates the LED as being
`
`opposite from a mouthpiece and the electronic cigarette having a tip, the
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`Specification itself does not use the term “tip,” “end,” or “first end” when
`
`describing the configuration of the LED. Ex. 1001, 2:33–39, 3:20, 3:44–45.
`
`With respect to the embodiment shown in Figure 1, the LED is described as
`
`being “sequentially provided within the shell” along with the mouthpiece.
`
`Compare Ex. 1001, 2:34–37 with Ex. 1001, 1:56–62. Patent Owner’s
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`proposed construction would have us read into the claim features of the
`
`housing in the embodiment shown in Figure 1 that are omitted from claims 1
`
`and 2, such as a second end of the housing being the recited mouthpiece and
`
`the housing having a particular shape with one or two ends that are “tips.”
`
`Our reviewing court “has repeatedly cautioned against limiting the claimed
`
`invention to preferred embodiments or specific examples in the
`
`specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47
`
`(Fed. Cir. 2015). Therefore, we decline to adopt Patent Owner’s proposed
`
`construction at this stage in the proceeding.
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`Patent Owner’s extrinsic evidence that the use of the term “first end”
`
`implicitly requires a “second end” and assertion that such usage evidences
`
`“end” means “tip” does not compel a different conclusion. Neither claim 1
`
`nor claim 2 identifies a component located on a “second end” of the housing.
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`Therefore, no specific structure or property is imputed to any “second end”
`
`17
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`
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`IPR2018-00627
`Patent 8,393,331 B2
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`based on the context of the claims. In addition, although Patent Owner’s
`
`extrinsic evidence may use “end” to refer to the start and/or stop of a
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`particular component or element, i.e. an outer extent, the term does not
`
`dictate a specific shape such as a “tip.” See, e.g., Takeuchi’s pouring port 58
`
`does not have the same shape as the housing shown in Figure 1 of the ’331
`
`patent even though Takeuchi describes the pouring port as having an “end.”
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`Ex. 1003, 7:22–23, Fig. 1; Prelim. Resp. 38–39.
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`Accordingly, for purposes of this decision, we interpret “a first end of
`
`the housing” to mean “the outer extent of some portion of the housing.”
`
`5.
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` “contact”/“physical contact”
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`Independent claims 1 and 2 require, respectively, “the liquid-supply in
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`physical contact with the atomizer” and “the atomizer making contact with a
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`liquid-supply.” Ex. 1001, 5:14–15, 6:6–7. Petitioner does not propose a
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`construction for these terms, but, rather adopts the interpretation of “physical
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`contact” to mean “direct contact” from IPR2014-01289. Pet. 19. Patent
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`Owner likewise adopts “direct contact” in its analysis of the cited art. See
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`Prelim. Resp. 42 (citing Ex. 2001 ¶ 49).
`
`The Specification does not explicitly state “physical contact,” but uses
`
`the term “contact” when it describes that “[t]he liquid-supply is in contact
`
`with the atomizer,” “[t]he atomizer 9 is in contact with the liquid-supplying
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`bottle 11 via the bulge 36,” and “[t]he solution storage porous body 28 in the
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`liquid-supplying bottle 11 is in contact with the bulge 36 on the atomizer 9,
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`thereby achieving the capillary infiltration liquid-supplying.” Ex. 1001,
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`1:66–67, 2:45–46, 3:61–64. Based on the current record, we determine that
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`“direct contact” is the broadest reasonable interpretation of the terms
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`“contact” and “physical contact” and consistent with the Specification.
`
`18
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`IPR2018-00627
`Patent 8,393,331 B2
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`6.
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` “cavity”
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`Independent claims 1 and 2 recite “a heating element within [the/a]
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`cavity.” Petitioner adopts the construction from IPR2014-01289 to mean “a
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`hollow space.” Pet. 19. Patent Owner does not propose a construction for
`
`this term. Under the broadest reasonable construction in light of the
`
`Specification and the claims themselves, we construe the term “cavity” to
`
`mean “a hollow space,” recognizing that other language in the claims limits
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`the location or other features of the cavity.
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`C.
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`Anticipation over Takeuchi
`
`Petitioner asserts that claims 1 and 2 are unpatentable as anticipated
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`under 35 U.S.C. § 102 by Takeuchi. Pet. 26–72. Petitioner relies on the
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`testimony of its declarant, Robert H. Sturges, Ph.D. (Ex. 1002). Patent
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`Owner opposes Petitioner’s assertions. Prelim. Resp. 32–52. Based on our
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`review of the Petition and the Preliminary Response, we determine that
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`Petitioner has established a reasonable likelihood that it would prevail in
`
`showing the claims are unpatentable as anticipated by Takeuchi.
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`1.
`
`Takeuchi (Ex. 1003)
`
`Takeuchi describes a “flavor-generating device for enjoying
`
`inhalation of flavor or for enjoying simulated smoking.” Ex. 1003, 1:3–6.
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`Takeuchi teaches “where the device is used as a simulated smoking article, it
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`is possible for the liquid flavor source 34 to contain tobacco components
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`19
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`IPR2018-00627
`Patent 8,393,331 B2
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`such as tobacco extracts and a tobacco smoke condensate.” Id. at 5:43–46.
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`One embodiment of the device is shown in Figure 1, reproduced below.
`
`
`
`Figure 1 depicts a sectional view of a flavor-generating device. Id. at 3:55.
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`The device comprises casing 12, gas passageway 20 “for forming a gaseous
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`stream of a flavor which is to be inhaled by a user,” mouth piece 16, lamp 56
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`(such as “a light emitting diode”), air intake port 18, battery 44, control
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`circuit 46, sensor 52, heater 42, capillary tube 36, liquid 34, and liquid
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`container 32. Ex. 1003, 4:29–47, 5:28–35, 6:4–14, 6:55–62, 7:2–9, 7:51–
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`8:15.
`
`Takeuchi teaches the “inner space of the casing 12 is partitioned into
`
`an upper chamber 121 and a lower chamber 122 by a partition wall 13.” Id.
`
`at 4:31–33. In addition, Takeuchi teaches “capillary tube 36 defines a liquid
`
`passageway 37 for the liquid flavor source, and its lower end 36a is
`
`positioned in the vicinity of the bottom of the liquid container 32.” Id. at
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`5:49–52. Capillary tube 36 also includes outlet portion 36b, where “liquid
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`20
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`
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`IPR2018-00627
`Patent 8,393,331 B2
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`flavor source 34 within the outlet port 36[b] is instantly gasified by the heat
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`generated from the heater 42 as shown in FIG. 2B so as to be supplied into
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`the gas passageway 20.” Id. at 7:57–8:4. Takeuchi further teaches that
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`“cooling chamber 21,” in upper chamber 121, constitutes a part of gas
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`passageway 20. Id. at 5:1–7.
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