PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In the Inter Partes Review of U.S. Patent No. 9,814,265
`Trial No.: Not Yet Assigned
`Issued:
`November 14, 2017
`Filed:
`March 10, 2014
`Inventors: Arno Rinker and Philipp Litzenberger
`Assignee: Philip Morris Products S.A.
`Title:
`PERMEABLE ELECTRIC THERMAL RESISTOR FOIL FOR
`VAPORIZING FLUIDS FROM SINGLE-USE MOUTHPIECES
`WITH VAPORIZER MEMBRANES
`
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 37 C.F.R. § 42.100
`On behalf of R.J. Reynolds Vapor Company (“RJRV” or “Petitioner”) and in
`
`accordance with 35 U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes review (“IPR”)
`
`is respectfully requested for claims 1, 3-5, 8, and 17 of U.S. Patent No. 9,814,265
`
`(“’265 patent”) (EX1001).
`
`The undersigned representative of Petitioner authorizes the Office to charge the
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`$41,500 petition and post-institution fees, and any additional fees, to deposit account
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`503013, ref: 629000-850001.
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`

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`TABLE OF CONTENTS
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`Page
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`IV.
`
`
`Introduction ....................................................................................................... 1
`I.
`II. Grounds for Standing (37 C.F.R. § 42.104(a)) ................................................. 3
`III. The ’265 Patent ................................................................................................. 3
`A.
`Prior Art Electronic Cigarettes ............................................................... 3
`B.
`The Alleged Invention ............................................................................ 7
`1.
`“Mouthpiece” ............................................................................... 9
`2.
`“Thermal Resistor,” “Vaporizer Membrane,” and “Contact
`Tabs” .......................................................................................... 11
`Prosecution History .............................................................................. 13
`C.
`Level of Skill in the Art ........................................................................ 15
`D.
`Identification of Challenge (37 C.F.R. § 42.104(b)) ...................................... 15
`A.
`37 C.F.R. § 42.104(b)(1): Claims for Which IPR is Requested ......... 15
`B.
`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds on
`Which the Challenge to the Claims is Based ....................................... 16
`37 C.F.R. § 42.104(b)(3): Claim Construction ................................... 17
`C.
`37 C.F.R. § 42.104(b)(5): Supporting Evidence ................................. 17
`D.
`Claims 1, 3-5, 8, and 17 of the ’265 Patent are Unpatentable ........................ 18
`A.
`The Prior Art ........................................................................................ 18
`1.
`Alarcon ....................................................................................... 18
`2.
`Rabin .......................................................................................... 22
`3.
`Harwig ........................................................................................ 24
`4.
`Johnson ....................................................................................... 27
`B. Ground 1: Claims 1, 4-5, 8, and 17 are Obvious in View of
`Alarcon and Rabin ................................................................................ 29
`1. Motivation to Combine .............................................................. 31
`2.
`Claim 1 ....................................................................................... 34
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`V.
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`-i-
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
`
`3.
`
`4.
`
`Claim 4: “The vaporizer device according to claim 1,
`wherein the thermal resistor and the at least one contact tab
`are formed of different materials.” ............................................. 49
`Claim 5: “The vaporizer device according claim 1,
`wherein the thermal resistor and the at least one contact tab
`are formed of a same material.” ................................................. 50
`Claim 8: “The vaporizer device according to claim 1,
`wherein the metallic foil or the thin sheet, or the metallic
`foil and the thin sheet, are aluminum, an aluminum-
`manganese alloy, or a stainless steel, or a combination
`thereof.” ...................................................................................... 50
`Claim 17 ..................................................................................... 50
`6.
`C. Ground 2: Claims 1, 3, 5, and 17 are Obvious in View of
`Alarcon and Harwig ............................................................................. 51
`1. Motivation To Combine ............................................................. 52
`2.
`Claim 1 ....................................................................................... 54
`3.
`Claim 3: “The vaporizer device according to claim 1,
`wherein the thermal resistor and the at least one contact tab
`are formed of at least one piece of the metallic foil or the
`thin sheet.” ................................................................................. 60
`Claim 5 ....................................................................................... 60
`4.
`Claim 17 ..................................................................................... 61
`5.
`D. Ground 3: Claims 1, 3, 5, and 17 are Obvious in View of
`Alarcon and Johnson ............................................................................ 61
`1. Motivation to Combine .............................................................. 62
`2.
`Claim 1 ....................................................................................... 64
`3.
`Claim 3 ....................................................................................... 68
`4.
`Claim 5 ....................................................................................... 68
`5.
`Claim 17 ..................................................................................... 69
`VI. Fintiv Favors Institution ................................................................................. 69
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`5.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`VII. Mandatory Notices Pursuant (37 C.F.R. § 42.8(a)(1)) ................................... 71
`A.
`37 C.F.R. § 42.8(b)(1): Real Parties-In-Interest.................................. 71
`B.
`37 C.F.R. § 42.8(b)(2): Related Matters ............................................. 72
`C.
`37 C.F.R. § 42.8(b)(3), (4): Lead and Back-Up Counsel and
`Service Information .............................................................................. 72
`VIII. Conclusion ...................................................................................................... 73
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
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`I.
`
`Introduction
`Petitioner requests review and cancellation of claims 1, 3-5, 8, and 17 of U.S.
`
`Patent No. 9,814,265 (“’265 patent”). The ’265 patent relates to an electronic
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`cigarette “vaporizer device.” Its broadest claims recite a “heating device” comprising
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`“a thermal resistor” and “at least one vaporizer membrane disposed in contact with the
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`thermal resistor.” Both are arranged “orthogonally or at an angle to a direction of the
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`flow of fluid.” When activated, the “thermal resistor foil will heat and vaporize the
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`fluid from the vaporizer membrane.” EX1001, 5:43-46.
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`
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`Annotated Fig. 2 above highlights the location of the electronic cigarette’s
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`“fluid inlet” (311), “hollow cylinder”/“flow channel” (31), “thermal resistor” (1),
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`“vaporizer membrane” (32), and “fluid outlet” (312). Id., Fig. 2, Table 1.
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`All of these features are disclosed by U.S. Patent No. 9,439,455 (“Alarcon”),
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`-1-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`which predates the ’265 patent.
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`
`
`Alarcon’s Fig. 1A (annotated above) shows an “electronic smoking device
`
`(ESD) 100.” EX1002, 4:60-62. “When a user sucks the second end 104 of the ESD
`
`100, air outside the air inlet 120 may be pulled in and moved to the vaporizing
`
`chamber 124 via air flow path 122, as indicated by the dotted arrows in FIG. 1A.” Id.,
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`5:35-39. The air flows through a dispensing control device 141 containing smoking
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`liquid, thus drawing the smoking liquid into the vaporizing chamber 124 where it is
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`vaporized by a heater 146 “located adjacent” to the dispensing control device 141.
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`See id., 2:39-42, 2:44-48, 5:28-32, 5:35-39, 5:41-42, 5:48-50, 5:58-6:5, 6:26-30, 6:54-
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`58. “The resultant vapor (i.e., smoke) may be pulled out … via smoke outlet 126 for
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`the user’s oral inhalation, as indicated by the solid arrows in FIG. 1A.” Id., 6:58-61.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`While Alarcon discloses that “the dispensing control device 141 and the heater
`
`146 may be located adjacent to each other,” there may be “a very small gap
`
`therebetween.” Id., 6:26-30. As demonstrated below, the prior art includes many
`
`references teaching the benefits of direct contact between a “thermal resistor” and a
`
`surface containing liquid to be vaporized. And any other differences between Alarcon
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`and the “vaporizer device” recited in the claims were matters of trivial design choice.
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`Because all the features of the challenged claims were well-known in the art
`
`and their combination would have been obvious, trial should be instituted, and the
`
`challenged claims should be cancelled.
`
`II. Grounds for Standing (37 C.F.R. § 42.104(a))
`Petitioner certifies that the ’265 patent is available for IPR and Petitioner is not
`
`barred or estopped from requesting IPR challenging the patent claims on the grounds
`
`identified herein.
`
`III. The ’265 Patent
`A.
`Prior Art Electronic Cigarettes
`The ’265 patent relates to electronic cigarettes. EX1001, 1:14-16. However,
`
`the ’265 patent discloses that the “basic principles” of electronic-cigarette design were
`
`“developed to marketability and optimized” over a two-decade period predating the
`
`’265 patent. EX1001, 1:62-64. The ’265 patent describes a prior-art approach,
`
`“which dates back to 1990” and had “become accepted in view of its comparatively
`
`easy technical realizability in combination with its convincing functionality.” Id.,
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`1:44-49.
`
`According to the ’265 patent, the accepted prior-art approach utilized an
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`“electric heating element in thermal contact with [a] flavor-generating medium” and
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`application of “electrical energy to the heating element,” which “caus[es] the heating
`
`element to heat said flavor-generating medium and to release flavor components.”
`
`Id., 1:49-61. The “main components” of prior-art electronic cigarettes are:
`
`the battery unit with vacuum switch or vacuum governor and LED for
`optically stimulating the glowing end of a lit cigarette, the vaporizer unit
`(atomizer) with heating coil and capillaries as well as the mouthpiece
`with the fluid reservoir.
`
`Id., 2:4-9.
`
`The three components are normally cylindrical and, when assembled,
`their shape imitates a cigarette. In the interior of these components a
`flow channel is formed, which extends through all three components.
`When a puff is taken from the electronic cigarette, an air current is
`sucked into the battery unit, whereby the vacuum switch or vacuum
`governor is operated. This has the effect that the heating coil provided in
`the downstream vaporizer unit is activated.
`
`Id., 2:10-18. The ’265 patent also describes a prior art “helical heating coil,” which
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`“is wound around a fiber strand” connected to a fluid reservoir and “impregnated with
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`fluid.” Id., 2:19-22. “Due to the activation of the heating coil, fluid is vaporized and
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`transferred to the air current.” Id., 2:24-25. “The air current, which has added thereto
`
`the vaporized liquid, flows into the consumer’s oral cavity through [an] air outlet” in
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`the mouthpiece. Id., 2:34-38.
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`According to the ’265 patent, the three prior-art components—the battery unit,
`
`vaporizer unit, and mouthpiece—are arranged such that “[t]he battery unit and the
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`vaporizer unit are releasably connected to one another via thread,” and “[t]he
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`mouthpiece is attached via a cylindrical flange to the vaporizer unit end located
`
`opposite the thread.” Id., 2:39-40, 2:49-50. The ’265 patent identifies disadvantages
`
`to this approach. The “separate, reusable vaporizer unit … will get increasingly
`
`contaminated during its service life.” Id., 2:54-3:3. “Another disadvantageous aspect
`
`is that fluid leaks out when the mouthpieces attached to the vaporizer are being
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`exchanged.” Id., 3:4-9. A third disadvantage of “this tripartite design” is that the
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`length cannot be reduced. Id., 3:10-13. The ’265 patent acknowledges that
`
`integrating the vaporizer unit in the mouthpiece addresses fluid leaks and the length of
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`the electronic cigarette, but asserts that this second prior-art approach has its own
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`drawbacks, such as being “inconvenient to handle” and creating “waste disposal
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`problems.” Id., 3:14-29.
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`The ’265 patent describes further disadvantages of the two prior-art variants,
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`“i.e. the variant comprising a separate vaporizer as well as the variant having the
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`vaporizer integrated in the mouthpiece.” Id., 3:30-32. First, the reservoirs are
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`refillable, which entails “potential risks” related to handling “fluids containing
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`nicotine” and can nullify the “alleged hygienic advantage of … a vaporizer that is
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`integrated in the mouthpiece.” Id., 3:32-37. Second, the ’265 patent asserts that it can
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`be impossible to mass produce the prior-art systems comprising “a vaporizer
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`integrated in the mouthpiece.” Id., 3:44-54.
`
`The ’265 patent describes another prior art method and device “for volatilizing
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`active and/or aroma materials,” which provides “an optimum vaporization of
`
`substances containing active and or aroma materials, without the above-mentioned
`
`drawbacks.” Id., 3:55-4:7. In these devices:
`
`a fluid acted upon by thermal energy flows through a flow channel in a
`preferably cylindrical hollow body and … the fluid in this flow channel
`entirely or in part flows through at least one vaporizer membrane,
`[which] has been and/or is wetted with a substance containing active
`and/or aroma materials to be vaporized and wherein the fluid
`additionally contain[s] thermal energy, i.e. [is] acted upon by thermal
`energy, [which] vaporizes [the substance or substances containing the
`active and/or aroma materials] on flowing through the vaporizer
`membrane and supplies [the substance or substances] to the fluid stream.
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`Id., 3:55-67. This design “is, in principle, ideal for use as a mouthpiece of a smoke-
`
`free cigarette,” but is supposedly problematic because it “makes use of a fluid stream
`
`which has already been acted upon by heat due to the combustion of liquefied gas.”
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`Id., 4:7-12. The ’265 patent states that “it is not possible to accomplish a purely
`
`electrical generation of an adequately hot fluid stream in the space available in a
`
`cigarette or a small cigar because there is not enough space for a heat exchanger.” Id.,
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`4:12-15.
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`-6-
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`B.
`The Alleged Invention
`The ’265 patent allegedly overcomes the disadvantages of prior-art electronic-
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`cigarette designs by utilizing “a heating device of the type described in claim 1, and a
`
`vaporizer device used for vaporizing fluids from permeable vaporizer membranes”
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`similar to the prior-art device discussed above, which the ’265 patent describes as
`
`“ideal for use as a mouthpiece of a smoke-free cigarette” but for its “use of a fluid
`
`stream which has already been acted upon by heat due to the combustion of liquefied
`
`gas.” Id., 3:55-15, 4:36-52, 7:52-62.
`
`Claim 1 of the ’265 patent recites a “vaporizer device for vaporizing a
`
`substance containing at least one active and/or aroma material.” Id., 9:23-24. The
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`“vaporizer device” comprises “a mouthpiece” and “a heating device, configured to be
`
`connected to the mouthpiece.” Id., 9:25-29. The “mouthpiece” has “at least one fluid
`
`inlet and at least one fluid outlet.” Id., 9:25-27. The “heating device” comprises “a
`
`thermal resistor comprising a metallic foil or a thin sheet in a shape of a dual coil
`
`and/or sinuous line,” “at least one contact tab including a first contact tab and a
`
`second contact tab being connected to respective opposed ends of the dual coil and/or
`
`sinuous line of the thermal resistor,” and “at least one vaporizer membrane disposed
`
`in contact with the thermal resistor and being permeable to the flow of fluid, and
`
`which is wetted or can be wetted with the substance containing the at least one active
`
`and/or aroma material.” Id., 9:28-46. “[T]he thermal resistor and the at least one
`
`vaporizer membrane are arranged orthogonally or at an angle to a direction of the flow
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`of fluid in the mouthpiece.” Id., 9:47-50.
`
`
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`The ’265 patent includes two figures. “FIG. 2 shows how a mouthpiece 3 … is
`
`connected to a voltage source 4 ….” Id., 7:29-31. Variant a (on the left) in Fig. 2
`
`shows the mouthpiece 3 in an “inactive storage condition with … voltage source 4 not
`
`yet attached,” and variant b (on the right) shows the mouthpiece 3 in an “activated
`
`condition of use with … attached voltage source 4.” Id., 7:42-47. Fig. 2 also shows
`
`the “thermal resistor 1,” “contact tabs 13,” and “vaporizer membranes 32,” which are
`
`identified in the annotated Fig. 2 above. Id., 7:29-41; EX1010 ¶ 39.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`
`
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`“FIG. 1 shows two variants of a preferred embodiment of the heating device
`
`….” EX1001, 7:21-22. Fig. 1 shows the “thermal resistor 1” and “contact tabs 13.”
`
`Id., 7:23. Variant a (on the left) of Fig. 1 shows “[a] dual coil 101 as the thermal
`
`resistor 1,” and variant b (on the right) shows “[a] sinuous line 102 as a thermal
`
`resistor 1.” Id., 7:26-27. These features are identified in the annotated Fig. 1 above.
`
`EX1010 ¶ 40.
`
`1.
`“Mouthpiece”
`The ’265 patent discloses that “a vaporizer device” is “preferably configured as
`
`a mouthpiece in the form of a hollow cylinder with a fluid inlet and a fluid outlet.”
`
`EX1001, 5:47-50.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
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`
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`Fig. 2 shows the “mouthpiece” (3), “hollow cylinder” (31), “fluid inlet” (311),
`
`and “fluid outlet” (312). Id., 7:29-41, Table 1. Table 1 discloses that the “hollow
`
`cylinder” is also known as a “flow channel.” Id., 7:36, Table 1. Fig. 2 shows that
`
`“voltage source 4” is hollow and has “an air discharge opening which is located on the
`
`end face of the flange 33 and through which the fluid stream flows into the
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`mouthpiece 3.” Id., 8:44-54; EX1010 ¶ 42.
`
`The ’265 patent discloses that electronic cigarettes are “normally cylindrical”
`
`with a “flow channel” formed in their interior. EX1001, 2:10-15. “When a puff is
`
`taken from the electronic cigarette, an air current is sucked into the battery unit,” and
`
`it flows through the flow channel of the electronic cigarette until ultimately it exits
`
`from an air outlet in the mouthpiece into the user’s mouth. Id., 2:10-38; see also id.,
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`3:55-67, 4:47-51, 7:52-62 (describing a prior art device, on which the design of the
`
`’265 patent is based in part, which has a “flow channel in a preferably cylindrical
`
`hollow body”). These features are shown in annotated Fig. 2 above. EX1010 ¶ 43.
`
`2.
`
`“Thermal Resistor,” “Vaporizer Membrane,” and “Contact
`Tabs”
`The ’265 patent discloses that “[t]he vaporizer device comprises … at least one
`
`vaporizer membrane which is in large-area contact with the thermal resistor.”
`
`EX1001, 5:50-53. It includes “a permeable thermal resistor foil,” which “consists of
`
`an electrically conductive foil, which is preferably subjected to punching or laser
`
`cutting so as to obtain a dual coil or a sinuous line shape or a combination of dual coil
`
`and sinuous line shapes.” Id., 5:4-8. The “permeable thermal resistor [has]
`
`dimensions of the cross-section of a cigarette or a small cigar, wherein the interspaces
`
`of the dual coil and/or sinuous line of the thermal resistor (1) are open (permeable)
`
`and allow thus a flow of fluid therethrough.” Id., 4:53-58. “The vaporizer membrane
`
`is also permeable to flowing fluids and is either wetted or can be wetted with a
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`substance containing active and/or aroma materials to be vaporized.” Id., 5:53-56.
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`The ’265 patent teaches that, “[i]n the sense of the present invention, the term
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`permeable means for the thermal resistor foil as well as for the vaporizer membranes
`
`that they allow gas to pass therethrough (permeable to gas) in the direction of their
`
`surface normal.” Id., 4:66-5:3.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`
`
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` “[F]luid flows through at least one vaporizer membrane 32 in a flow channel
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`31, wherein the … vaporizer membrane 32 has been and/or is wetted with a substance
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`containing active and/or aroma materials to be vaporized.” Id., 7:55-59. The device
`
`“suppli[es] thermal energy to the substance … whereby this substance is vaporized
`
`and supplied to the fluid stream.” Id., 7:59-62. Specifically, when a circuit in the
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`electronic cigarette is closed, “the thermal resistor will heat and vaporize the fluid
`
`from the vaporizer membrane.” Id., 5:43-46. The thermal resistor has “at least two
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`electric contacts (contact tabs) which are fixedly connected to [its] respective opposed
`
`end[s] …, which allows them to be releasably connected to a controlled or regulated
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`voltage source.” Id., 4:59-64, 6:27-33. “The thermal resistor and the vaporizer
`
`membrane(s) are preferably arranged orthogonally or at an angle to the direction of
`
`fluids passing through the mouthpiece.” Id., 5:56-59. Annotated Fig. 2 above shows
`
`thermal resistor 1, contact tabs 13, hollow cylinder 31 (i.e., the “flow channel”),
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`vaporizer membrane 32, as well as the arrangement of thermal resistor 1 and vaporizer
`
`membrane 32 in relation to the flow of fluid in mouthpiece 3. EX1010 ¶ 45.
`
`
`
`The annotated version of ’265 patent Fig. 1 above shows the thermal resistor 1
`
`in the shape of a “dual coil 101” (variant a) and a “sinuous line 102” (variant b).
`
`EX1001, 7:26-27; EX1010 ¶ 46.
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`C.
`Prosecution History
`The Applicants filed a Preliminary Amendment cancelling claims 1-13 and
`
`substituting claims 14-30 at the beginning of the U.S. phase of the application for the
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`’265 patent. EX1009, at 11-16. The Examiner then rejected claims 14-24 and 30. Id.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`at 555-60. The § 112 rejection was based on “substantially perpendicular” rendering
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`claim 30 indefinite. Id. at 555. The § 102 and § 103 rejections were based on U.S.
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`Patent No. 5,649,554 (“Sprinkel”) (EX1006) (claims 14-16, 18, 21, 24, and 30 under
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`§ 102; claim 17 under § 103), Sprinkel in view of U.S. Publication No. 2002/0078951
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`(“Nichols”) (EX1007) (claims 19-20 under § 103), and Sprinkel in view of U.S.
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`Publication No. 2011/0155153 (“Thorens”) (EX1008) (claims 22-23 under § 103). Id.
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`at 555-60.
`
`In response, the Applicants amended claim 30 to remove “substantially
`
`perpendicular,” id. at 581, and argued that the identified prior art failed to disclose all
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`claim limitations, id. at 583-86.
`
`Sprinkel fails to disclose within its four corners at least the
`following features recited in independent claim 14 (and similarly in
`independent claim 30): “a heating device … comprising … at least one
`vaporizer membrane disposed in contact with the thermal resistor and
`being permeable to the flow of fluid, and which is wetted or can be
`wetted with the substance containing the at least one active and/or aroma
`material…”; and “wherein the thermal resistor and the at least one
`vaporizer membrane are arranged orthogonally or at an angle to a
`direction of the flow of fluid in the mouthpiece.”
`
`Id. at 583 (alteration in original). The Applicants argued that “a disc or spiral shape,
`
`on which tobacco is provided or which comprises tobacco” was “neither a membrane
`
`nor permeable to flowing fluids.” Id. at 583-84; see EX1006, 3:40-64, 6:21-29. The
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`Applicants also argued that Sprinkel’s “heater 30 is arranged parallel to the flow from
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`the air ports or openings 22 to the mouthpiece 132,” and that “air flow is effected over
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`and parallel to a surface,” as opposed to the claims’ recitation of “the thermal resistor
`
`and the at least one vaporizer membrane [being] arranged orthogonally or at an angle
`
`to the direction of flow of fluid in the mouthpiece.” EX1009, at 584; see EX1006,
`
`6:14-20, Figs. 1, 9. The Applicants also criticized Nichols and Thorens for failing to
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`disclose a membrane. EX1009, at 585-86; see EX1007 ¶ [0044]; EX1008 ¶ [0098].
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`Claims 14-30 were then allowed (’265 patent claims 1-17). The Examiner
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`stated that the primary reason for allowance was the limitation identified by the
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`Applicants and quoted above. Id. at 620.
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`D. Level of Skill in the Art
`A person of ordinary skill in the art (“POSITA”) of the ’265 patent would have
`
`had a bachelor of science degree in mechanical engineering, electrical engineering,
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`materials science, physics, or have completed a similar technical program or
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`coursework, along with one to two years of experience designing, developing, or
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`working with materials and structures used in electronic products incorporating
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`thermal resistors or other types of heaters. EX1010 ¶ 97. A higher level of education
`
`could substitute for a lesser amount of experience, and vice versa. Id.
`
`IV.
`
`Identification of Challenge (37 C.F.R. § 42.104(b))
`A.
`37 C.F.R. § 42.104(b)(1): Claims for Which IPR is Requested
`IPR is requested for claims 1, 3-5, 8 and 17 of the ’265 patent.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`B.
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`37 C.F.R. § 42.104(b)(2): The Prior Art and Specific Grounds on
`Which the Challenge to the Claims is Based
`The ’265 patent was filed as a PCT application on September 27, 2012, and
`
`asserts a priority claim to Europe application 11183197 filed on September 28, 2011.1
`
`The ’265 patent is subject to the pre-AIA provisions of 35 U.S.C. §§ 102, 103. IPR is
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`requested in view of the following references:
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` U.S. Patent No. 9,439,455 (“Alarcon”) (EX1002) was filed on May 2, 2011,
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`claims priority to provisional application no. 61/330,140 filed on April 30, 2010, was
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`published (U.S. Publication No. 2011/0265806) on November 3, 2011, issued on
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`September 13, 2016, and is prior art under 35 U.S.C. § 102(a) and (e). Alarcon was
`
`not before the Examiner.
`
` U.S. Patent No. 7,920,777 (“Rabin”) (EX1003) was filed as a PCT application
`
`on May 15, 2006, was published on November 23, 2006 (WO2006/124757) and
`
`September 3, 2009 (U.S. Publication No. 2009/0220222), issued on April 5, 2011, and
`
`is prior art under 35 U.S.C. § 102(a), (b), and (e). Rabin was not before the Examiner.
`
` U.S. Patent No. 6,909,840 (“Harwig”) (EX1004) was filed on June 5, 2003,
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`claims priority to provisional application no. 60/386,998 filed on June 6, 2002,
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`
`
` 1
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` Petitioner does not concede that the ’265 patent is entitled to claim priority to the
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`earlier-filed application.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`published on February 26, 2004 (U.S. Publication No. 2004/0035409), issued on June
`
`21, 2005, and is prior art under 35 U.S.C. § 102(a), (b), and (e). Harwig was not
`
`before the Examiner.
`
` U.S. Publication No. 2012/0193343 (“Johnson”) (EX1005) was filed as a PCT
`
`application on July 13, 2011, claims priority to provisional application no. 61/363,651
`
`filed on July 13, 2010, was published on August 2, 2012, and is prior art under 35
`
`U.S.C. § 102(a) and (e). Johnson’s PCT application was published on January 19,
`
`2012, in English, and designates the U.S. See generally EX1028. Johnson was
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`identified on an IDS (EX1009, 42), but was not discussed in any Examiner–Applicant
`
`communications during prosecution.
`
`The specific statutory grounds on which the challenge to the claims is based,
`
`and prior art relied upon for each ground, are as follows:
`
`Basis
`Ground Claims
`1
`1, 4-5, 8, 17 35 U.S.C. § 103(a) based on Alarcon in view of Rabin
`2
`1, 3, 5, 17
`35 U.S.C. § 103(a) based on Alarcon in view of Harwig
`3
`1, 3, 5, 17
`35 U.S.C. § 103(a) based on Alarcon in view of Johnson
`
`C.
`37 C.F.R. § 42.104(b)(3): Claim Construction
`No terms require express construction to determine that the challenged claims
`
`
`
`are unpatentable in view of the prior art discussed in this Petition. In related litigation,
`
`the Court held that no claim terms required construction. EX1020, at 1.
`
`D.
`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`An Appendix of Exhibits is attached.
`
`
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
`V. Claims 1, 3-5, 8, and 17 of the ’265 Patent are Unpatentable.
`A. The Prior Art
`1.
`Alarcon
`Alarcon discloses “an electronic smoking device” comprising:
`
`a first sensor for detecting a user’s action for smoking, an air inlet, an air
`flow path extending from the air inlet, a liquid compartment storing a
`smoking liquid, a vaporizing compartment connected to the air flow
`path, a micro liquid screen connected to the liquid compartment to
`selectively dispense the smoking liquid from the liquid compartment to
`the vaporizing compartment, [and] a heater located at the vaporizing
`compartment.
`
`EX1002, 2:30-39. A controller “activate[s] the heater to vaporize the smoking liquid
`
`dispensed from the liquid compartment when the user’s action for smoking is detected
`
`by the first sensor.” Id., 2:39-42.
`
` “FIG. 1A shows a structural overview of an electronic smoking device (ESD)
`
`100.” Id., 4:61-62. “The ESD 100 may have multi-body construction including two
`
`or more bodies” (e.g., “a first body 100A and a second body 100B”), as shown in Fig.
`
`1A, or “ESD 100 may have single body construction, as shown in FIG. 2A.” Id.,
`
`4:63-5:1, 5:9-11. “Regardless of the construction type, the ESD 100 may have an
`
`elongated shape with a first end 102 and a second end 104, as shown in FIG. 2A,
`
`which may be similar to a conventional cigarette shape.” Id., 5:11-14.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
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`
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`Alarcon’s Figs. 1A and 2A above show ESD 100’s “air inlet 120,” “air flow
`
`
`
`path 122,” “vaporizing chamber 124,” “smoke outlet 126,” “dispensing control device
`
`141,” and “heater 146.” Id., 5:18-21. “The air inlet 120 may extend from … an
`
`exterior surface,” and “[t]he air flow path 122 may be connected to the air inlet 120
`
`and extend to the vaporizing chamber 124.” Id., 5:28-32. “When a user sucks the
`
`second end 104 of the ESD 100, air outside the air inlet 120 may be pulled in and
`
`moved to the vaporizing chamber 124 via air flow path 122, as indicated by the dotted
`
`arrows in FIG. 1A.” Id., 5:35-39.
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`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,814,265
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`
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`Alarcon discloses that “heater 146 may be a solid state heater [as] shown in
`
`FIG. 5 or the like, and located in the vaporizing chamber 124.” Id., 5:39-41. Alarcon
`
`also discloses a “dispensing control device 141,” which is connected to “container
`
`140,” which “contain[s] the smoking liquid.” Id., 5:41-42, 5:48-49.
`
`“[D]ispensing control device 141 … control[s] flow of the smoking liquid from
`
`the container 140 to the vaporizing chamber 124.” Id., 5:48-50.
`
`
`
`[T]he dispensing control device 141 may be a micro liquid screen 141,
`such as, e.g., micro-etched screen, micro