Trials@uspto.gov
`571-272-7822
`
`Paper 11
`Date: November 9, 2021
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`v.
`PHILIP MORRIS PRODUCTS S.A.,
`Patent Owner.
`
`IPR2021-00826
`Patent 9,814,265 B2
`
`
`
`
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, JAMES J. MAYBERRY, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`571-272-7822
`
`Paper 11
`Date: November 9, 2021
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`v.
`PHILIP MORRIS PRODUCTS S.A.,
`Patent Owner.
`
`IPR2021-00826
`Patent 9,814,265 B2
`
`
`
`
`
`
`
`
`
`Before GRACE KARAFFA OBERMANN, JAMES J. MAYBERRY, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`IPR2021-00826
`Patent 9,814,265 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`R.J. Reynolds Vapor Company (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) seeking an inter partes review of claims 1, 3–5, 8, and 17 (the
`“challenged claims”) of U.S. Patent No. 9,814,265 B2 (Ex. 1001, “the
`’265 Patent”). Philip Morris Products, S.A. (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). An inter
`partes review may not be instituted “unless . . . the information presented in
`the petition . . . and any response . . . shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a). After considering
`the parties’ arguments and evidence, we determine that the reasonable
`likelihood standard is not met. Accordingly, we deny institution of inter
`partes review.
`
`B. Related Matters
`The parties indicate that the ’265 Patent is being asserted in the
`following district court action: RAI Strategic Holdings, Inc. v. Altria Client
`Services LLC, No. 1:20-cv-00393-LO-TCB (E.D. Va. Filed May 28, 2020).
`Pet. 72; Paper 4, 1.
`
`C. The ’265 Patent (Ex. 1001)
`The ’265 Patent is titled, “Permeable electric thermal resistor foil for
`vaporizing fluids from single-use mouthpieces with vaporizer membranes”
`and relates to an electronic cigarette or e-cigarette. Ex. 1001, code (54),
`1:14–16, 4:36–43, 5:38–42.
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`Patent 9,814,265 B2
`The ’265 Patent describes “a vaporizer device for vaporizing
`substances containing active and/or aroma materials.” Ex. 1001, 5:47–50.
`The vaporizer device comprises: (1) a heating device comprising a
`permeable thermal resistor foil configured as a dual coil and/or sinuous line;
`and (2) a permeable vaporizer membrane in large-area contact with the
`thermal resistor. Id. at 4:51–54, 5:50–56. According to the ’265 Patent, the
`large contact area between the thermal resistor foil and the vaporizer
`membrane “achieves not only a very high vaporizing efficiency but also the
`highest possible degree of vaporization uniformity.” Id. at 5:59–64.
`Figure 1 of the ’265 Patent is reproduced below.
`
`
`Figure 1 shows two variants of a heating device that includes thermal
`resistor 1, where the heating device is produced from a single piece of metal
`foil. Ex. 1001, 7:21–25. In Figure 1a, thermal resistor 1 takes the form of
`dual coil 101, and in Figure 1b, thermal resistor 1 takes the form of sinuous
`line 102. Id. at 7:26–28.
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`Patent 9,814,265 B2
`Figure 2 of the ’265 Patent is reproduced below.
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`Patent 9,814,265 B2
`Figure 2 shows a vaporizer device, including thermal resistor 1, insulation
`foil 2, mouthpiece 3, and voltage source 4, among other structures.
`Ex. 1001, 7:29–41, 8:56–9:20 (Table 1). In Figure 2a, mouthpiece 3 is
`shown in an inactive storage condition with voltage source 4 not yet
`attached, and in Figure 2b, mouthpiece 3 is shown in an activated condition
`of use with voltage source 4 attached. Id. at 7:42–47.
`
`D. Illustrative Claim
`Petitioner challenges claims 1, 3–5, 8, and 17 of the ’265 Patent. Pet.
`1, 17. Claims 1 and 17 are independent claim. Claim 1 is reproduced
`below.
`1. A vaporizer device for vaporizing a substance containing at
`least one active and/or aroma material, comprising:
`a mouthpiece, having at least one fluid inlet and at least
`one fluid outlet; and
`a heating device, configured to be connected to the
`mouthpiece, comprising:
`a thermal resistor comprising a metallic foil or a thin
`sheet in a shape of a dual coil and/or sinuous line, having two
`ends and dimensions substantially the same as a cross-section
`of a cigarette or a cigar,
`wherein interspaces of the shape are configured to
`allow a flow of fluid therethrough;
`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, the first contact tab and the second contact tab not
`being in direct contact with each other; 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,
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`IPR2021-00826
`Patent 9,814,265 B2
`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.
`Ex. 1001, 9:23–50.
`Claim 17 is identical to claim 1, except for minor differences in the
`final “wherein” clause. Ex. 1001, 12:20–23; see Pet. 50–51 (side-by-side
`comparison of “wherein” clauses of claims 1 and 17).
`
`E. Asserted Grounds and Evidence
`Petitioner asserts the following grounds of unpatentability under
`35 U.S.C. § 103(a):1
`
`References
`
`Claims Challenged
`1, 4, 5, 8, 17
`1, 3, 5, 17
`
`1, 3, 5, 17
`
`Alarcon, 2 Rabin3
`Alarcon, Harwig4
`
`Alarcon, Johnson5
`
`Pet. 17. Petitioner relies on the Declaration of Jeffrey C. Suhling, Ph.D. to
`support its challenges. Ex. 1010.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the ’265 Patent has an effective filing date before this date,
`the pre-AIA version of § 103 applies. Ex. 1001, code (22).
`2 Ex. 1002, Alarcon et al., US 9,439,455 B2, issued Sept. 13, 2016.
`3 Ex. 1003, Rabin et al., US 7,920, 777 B2, issued Apr. 5, 2011.
`4 Ex. 1004, Harwig et al., US 6,909,840 B2, issued June 21, 2005.
`5 Ex. 1005, Johnson, US 2012/0193343 A1, published Aug. 2, 2012.
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`Patent 9,814,265 B2
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`II. ANALYSIS
`
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied upon).
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when presented, objective evidence of
`nonobviousness, i.e., secondary considerations. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
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`Patent 9,814,265 B2
`obviousness”)). Petitioner cannot satisfy its burden of proving obviousness
`by employing “mere conclusory statements,” but “must instead articulate
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`
`B. Level of Ordinary Skill in the Art
`Relying on Dr. Suhling’s testimony, Petitioner contends that a person
`of ordinary skill in the art (“POSA”) would have had a bachelor of science
`degree in mechanical engineering, electrical engineering, materials science,
`physics, or have completed a similar technical program or coursework, along
`with one to two years of experience designing, developing, or working with
`materials and structures used in electronic products incorporating thermal
`resistors or other types of heaters. Pet. 15 (citing Ex. 1010 ¶ 97). Petitioner
`asserts that a higher level of education could substitute for a lesser amount of
`experience, and vice versa. Id.
`Patent Owner does not dispute Petitioner’s contention regarding the
`level of ordinary skill in the art. Prelim. Resp. 7.
`We find that Petitioner’s definition of a POSA is consistent with the
`scope and content of the ’265 Patent and the asserted prior art, and we apply
`this definition for purposes of this Decision.
`
`C. Claim Construction
`In an inter partes review, we apply the same claim construction
`standard as would be used by a district court to construe a claim in a civil
`action involving the validity or infringement of a patent. 37 C.F.R.
`§ 42.100(b). Under that standard, claim terms are given their ordinary and
`customary meaning, as would have been understood by a person of ordinary
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`Patent 9,814,265 B2
`skill in the art at the time of the invention, in light of the language of the
`claims, the specification, and the prosecution history of record. Id.; Phillips
`v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner
`v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
`For purposes of this proceeding, the parties do not dispute the
`meaning of any claim term. See Pet. 17 (asserting that no terms require
`express construction for purposes of this proceeding and that, in the related
`litigation, the Court held that no claim terms required construction); Prelim.
`Resp. 7 (asserting that, “[f]or purposes of its Preliminary Response [ ],
`Patent Owner accepts Petitioner’s position that no terms require
`construction”). Accordingly, we do not need to resolve any claim
`construction disputes for purposes of this Decision. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those
`terms need be construed that are in controversy, and only to the extent
`necessary to resolve the controversy.”); see also Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(applying Vivid Techs. in the context of inter partes review).
`
`D. Petitioner’s First Obviousness Ground: Alarcon and Rabin
`Petitioner contends that claims 1, 4, 5, 8, and 17 are unpatentable as
`obvious in view of Alarcon and Rabin. Pet. 29–51. Patent Owner opposes
`this challenge. Prelim. Resp. 7–21. We provide an overview of the
`references before turning to the parties’ contentions and our analysis.
`
`1. Alarcon (Ex. 1002)
`Alarcon discloses an electronic smoking device (ESD) having an
`elongated shape similar to a conventional cigarette. Ex. 1002, codes (54),
`(57); 1:15–18, 5:11–14, Fig. 2A.
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`Patent 9,814,265 B2
`Figure 1A of Alarcon is reproduced below.
`
`
`
`Alarcon Figure 1A shows ESD 100, including air inlet 120, air flow
`path 122, vaporizing chamber 124, smoke outlet 126, container 140,
`dispensing control device 141, and heater 146. Ex. 1002, 3:49–51, 5:18–21.
`Heater 146 is a solid state heater and is located in vaporizing chamber 124.
`Id. at 5:39–41. Fig. 5. Container 140 contains smoking liquid and is
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`Patent 9,814,265 B2
`connected to vaporizing chamber 124. Id. at 5:41–42. Dispensing control
`device 141 is connected to container 140 and controls the flow of smoking
`liquid from container 140 to vaporizing chamber 124. Id. at 5:48–50,
`13:12–16.
`According to Alarcon, dispensing control device 141 may be a micro
`liquid screen, such as a micro-etched screen or a micromesh screen having a
`micro aperture pattern that keeps smoking liquid from seeping out when
`ESD 100 is not in use and allows smoking liquid to flow through when the
`user sucks on ESD 100. Ex. 1002, 5:58–6:8, Figs. 3, 4.
`Alarcon discloses that dispensing control device 141 and heater 146
`are “located adjacent to each other with a very small gap therebetween, in
`order to efficiently vaporize the smoking liquid.” Ex. 1002, 6:26–30, Fig. 6.
`When a user’s action for smoking is detected, heater 146 is turned on,
`smoking liquid is dispensed from container 140, and smoking liquid is
`mixed with air from flow path 122 and vaporized by heat from heater 146
`within vaporizing chamber 124. Id. at 6:45–58. “The resultant vapor (i.e.,
`smoke) is pulled out from [ ] vaporizing chamber 144 via smoke outlet 126
`for the user’s oral inhalation.” Id. at 6:58–61, Fig. 1A.
`
`2. Rabin (Ex. 1003)
`Rabin discloses a “capillary force vaporizer for use in vaporizing
`liquids and emitting pressurized vapors.” Ex. 1003, codes (54), (57);
`1:10–11; 2:17–20. According to Rabin, a capillary force vaporizer is a
`device for generating pressurized vapor from unpressurized liquid and for
`releasing vapor at a velocity greater than zero. Id. at 4:8–19; 6:28–38.
`
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`Patent 9,814,265 B2
`Figure 3 of Rabin is reproduced below.
`
`
`Rabin Figure 3 shows capillary force vaporizer 300 including porous
`member 102 and heater component 104. Ex. 1003, 5:58–66. In Figure 3,
`“liquid enters the device at liquid feed surface 302, and vapor is ejected from
`the device at one or more orifices 116.” Id.
`Rabin discloses that the porous member functions both as a vaporizer
`component and an insulation layer to shield heat from reaching the liquid
`feed to the device. Ex. 1003, 2:65–3:1, 3:22–24. According to Rabin, the
`porous member is a plate or tube that allows liquid to enter on one surface
`and vapor to be generated and released from another surface and is made of
`low thermal conductivity ceramic, such as a sintered alumina or zirconia
`powder compact. Id. at 3:32–46.
`Rabin discloses that heater component 104 is “in direct heat-
`exchanging contact with porous member 102.” Ex. 1003, 6:23–25.
`According to Rabin, “[v]aporization of liquid takes place within a region of
`porous member 102 at or near the interface of porous member 102 and
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`Patent 9,814,265 B2
`heater 104.” Id. at 6:26–28. Rabin discloses that heater component 104
`comprises an electric resistance heater comprised of a metal wire or etched
`metal foil in a coiled or zig-zag configuration. Id. at 6:39–40, 7:59–64.
`
`3. Independent claim 1
`Claim element 1b recites: “a heating device, configured to be
`connected to the mouthpiece, comprising: a thermal resistor comprising a
`metallic foil or a thin sheet in a shape of a dual coil and/or sinuous line,
`having two ends and dimensions substantially the same as a cross-section of
`a cigarette or a cigar, wherein interspaces of the shape are configured to
`allow a flow of fluid therethrough.” Pet. 38; Ex. 1001, 9:30–33.
`Addressing claim element 1b, Petitioner contends that Alarcon’s
`heater 146 is “a heating device configured to be connected to the
`mouthpiece.” Pet. 38–39 (citing shown in Ex. 1002, Figs. 2A, 2B, 5).
`Petitioner contends that Alarcon’s heater 146 is “in a shape of a . . . sinuous
`line” and has “two ends,” “dimensions substantially the same as the cross-
`section of a cigarette,” and “interspaces . . . configured to allow a flow of
`fluid therethrough.”6 Id. 39 (citing Ex. 1002, Figs. 1A, 2A, 2B, 5).
`Petitioner contends that, in view of Alarcon and Rabin, it would have been
`
`
`6 Petitioner does not show sufficiently that Alarcon’s solid state heater 146
`has “interspaces . . . configured to allow a flow of fluid therethrough,” as
`recited in claim element 1b. See Ex. 1002, Fig 1A (showing air flowing
`around, not through heater 146); id. at Fig. 5 (showing solid state heater 146
`with no interspaces). In any event, Petitioner does not appear to rely on this
`contention, and instead asserts that it would have been obvious to replace
`Alarcon’s solid state heater with one that allows fluid to flow through the
`heater. Pet. 33–34, 40–41. We address Petitioner’s obviousness contention
`below.
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`obvious for the thermal resistor to comprise a metallic foil. Id. at 40 (citing
`Ex. 1003, 6:23–25, 6:39–40, 7:59–64, Figs. 5A, 5B).
`Claim element 1d recites: “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.” Pet. 43; Ex. 1001, 9:42–46.
`Addressing claim element 1d, Petitioner contends that Alarcon’s
`dispensing control device 141 is a “vaporizer membrane” that is “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.” Pet. 43–44 (citing
`Ex. 1002, 5:18–21, 5:48–50, 5:58–6:5, Figs. 1A, 3, 4). Petitioner contends
`that it would have been obvious to dispose Alarcon’s dispensing control
`device 141 in contact with Alarcon’s heater 146 in view of Rabin.
`Pet. 32–33, 45–46 (citing Ex. 1003, 3:32–37, 7:44–58, 6:23–25, 9:13–14,
`Fig. 3). 7
`Patent Owner argues that a POSA would not have been motivated to
`look to Rabin to improve Alarcon and would not have been motivated to
`modify Alarcon to bring its heater in contact with the dispensing control
`device or to use the Rabin heater. Prelim. Resp. 14–21.
`After considering both parties’ arguments and evidence, we agree
`with Patent Owner that Petitioner has not adequately established a non-
`hindsight biased rationale for combining the teachings of Alarcon and Rabin.
`Alarcon discloses an electronic cigarette that generates a vapor for
`oral inhalation by a user when he sucks on the device. Ex. 1002, 1:20–25,
`
`
`7 Petitioner’s contention that Alarcon discloses the “in contact with”
`limitation of claim element 1d (Pet. 45) is addressed below in Section II.F.2.
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`5:39–39, 5:65–6:5, 6:45–61. Rabin, on the other hand, relates to a capillary
`force vaporizer “designed to vaporize liquids and release the resulting vapor
`under pressure” for “applications in which a pressurized vapor stream is
`desired.” Ex. 1003, 1:10–22. Such devices produce vapor that exits the
`device “as a high velocity jet.” Id. at 1:31–37. Rabin’s capillary force
`vaporizer generates pressurized vapor from unpressurized liquid and releases
`vapor at a velocity greater than zero. Id. at 4:8–19; 6:28–38. Rabin
`discloses exemplary embodiments that use a 200 watt power supply and a
`“maximum exterior surface temperature at top of device” of 69 degrees
`Celsius—over 150 degrees Fahrenheit. Ex. 1003, 15:53-55, 16:23–25
`(Table 1).
`Petitioner’s rationale for combining Alarcon and Rabin does not
`account adequately for these fundamental differences between Alarcon’s
`electronic cigarette and Rabin’s capillary force vaporizer. Petitioner
`contends that Rabin is in the same field as the ’265 Patent—vaporization of
`liquid using a heating element—and addresses the same problem as the ’265
`Patent—providing efficient vaporization. Pet. 32. In our view, however,
`Petitioner’s characterization of the field of the ’265 Patent and the problem
`addressed by the ’265 Patent are overly broad. The ’265 Patent states that
`the invention relates “to a device for optimized smoke-free inhalation of
`nicotine and/or additives with electronic cigarettes.” Ex. 1001, 1:14–16.
`The problems, drawbacks, and disadvantages of the prior art discussed in the
`’265 Patent all relate to electronic cigarettes. Id. at 1:40–4:32. According to
`the ’265 Patent, the object of the invention is to provide an electronic
`cigarette that “guarantees vaporization of nicotine and/or additives without
`reusable components that come into contact with the fluid to be vaporized”
`and to achieve “a substantial reduction of costs and ecological damage by
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`reducing the amount of material used and by optimizing machine
`processability.” Id. at 4:36–43.
`Petitioner asserts that “[i]t would have been obvious to utilize
`techniques for efficient vaporization disclosed in Rabin in an electronic
`cigarette, such as Alarcon’s ESD 100.” Pet. 32. Petitioner does not,
`however, address the pressure and velocity of the vapor generated by
`Rabin’s capillary force vaporizer. Nor does Petitioner adequately address
`the differences between generating a vapor when a user sucks on an
`electronic cigarette to pull vapor (i.e., smoke) out of a vaporizing chamber
`for inhalation, as disclosed in Alarcon, and generating a pressurized vapor
`that is released at a velocity greater than zero, as disclosed in Rabin.
`Ex. 1002, 1:20–25, 6:45–61; Ex. 1003, 4:8–19; 6:28–38.
`Even if a POSA would have considered Rabin as relevant to an
`electronic cigarette, however, Petitioner has not shown sufficiently that it
`would have been obvious in view of Rabin to arrange Alarcon’s heater 146
`“in direct heat-exchanging contact with” Alarcon’s dispensing control
`device 141. Pet. 33 (quoting Ex. 1003, 6:23–25). Petitioner contends that
`its proposed modification would have been motivated by a desire for
`“efficient vaporization.” Pet. 32–33. Petitioner does not, however, make a
`threshold showing that placing Alarcon’s heater 146 in contact with
`Alarcon’s dispensing control device 141 would have made Alarcon’s
`vaporization process more efficient. Instead, Petitioner simply directs us to
`comparative advantages disclosed in Rabin, without explaining adequately
`how or why those advantages, relevant to Rabin’s capillary force vaporizer,
`would have led a POSA to modify Alarcon’s electronic cigarette, which
`relies on the user’s own sucking force and an internal heater to generate a
`vapor. Rabin discloses improvements to a different type of vaporizer than
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`Alarcon. Petitioner ignores these differences and does not show sufficiently
`that Alarcon would be improved in the same way as taught by Rabin.
`First, Petitioner asserts that “Rabin teaches that it is advantageous to
`apply heat directly to porous member 102 because ‘there is minimal heating
`of unnecessary thermal mass.’” Pet. 33 (quoting Ex. 1003, 7:44–49).
`Petitioner does not, however, show that Rabin’s teaching is applicable to
`Alarcon’s electronic cigarette. We agree with Patent Owner, on this record,
`that it is not. Prelim. Resp. 17–18.
`Petitioner selectively quotes from the following disclosure in Rabin:
`Another advantage of the embodiment of the present
`invention illustrated at 300 is that heat is applied directly to
`porous member 102. The result is that there is minimal heating
`of unnecessary thermal mass, with the concomitant effect that
`response times of the device are improved as compared with
`prior art capillary pumps.
`Ex. 1003, 7:44–49 (emphasis added). Rabin’s “thermal mass” advantage
`relied upon by Petitioner (Pet. 33) is “as compared with prior art capillary
`pumps.” Ex. 1003, 7:44–49. Rabin explains that, in prior art capillary pump
`devices, “heat was conducted from outside the device via the device housing
`to the vaporizer component.” Ex. 1003, 7:23–27; see also id. at 1:66–2:9
`(discussing prior art capillary force vaporizers “having an excess mass in
`contact with the vaporization member that must be heated or cooled before a
`change in the vaporization rate can take place”). According to Rabin, these
`devices are improved by situating the heater “in heat-exchange contact with
`the vaporization member” and not in direct contact with the housing. Id.
`at 7:27–29. Rabin discloses that, with this arrangement, the housing “no
`longer needs to act as a heat transfer component,” and fins or posts that
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`Patent 9,814,265 B2
`served to conduct heat from an upper surface of prior art capillary pumps to
`the porous member are “eliminated entirely.” Id. at 7:23–25, 7:30–33.
`Petitioner does not attempt to show that Rabin’s disclosed advantage
`is applicable to Alarcon’s electronic cigarette. Instead, Petitioner selectively
`quotes from Rabin’s disclosure of “minimal heating of unnecessary thermal
`mass” and asserts that it would have been obvious to arrange Alarcon’s
`heater 146 “in direct heat-exchanging contact with” Alarcon’s dispensing
`control device 141. Pet. 33 (quoting Ex. 1003, 6:23–25). That lack of
`explanation appears on this record as a classic exercise of impermissible
`hindsight reconstruction.
`Petitioner does not identify any “unnecessary thermal mass” in
`Alarcon’s electronic cigarette. In contrast to the prior art capillary force
`vaporizers Rabin seeks to improve, Alarcon’s electronic cigarette includes
`no housing or other heat transfer component between heater 146 and
`dispensing control device 141. Alarcon teaches that heater 146 is positioned
`in close proximity to dispensing control device 141, which results in
`efficient vaporization of the dispensed liquid. Ex. 1002, 6:26–30 (“[T]he
`dispensing control device 141 and the heater 146 may be located adjacent to
`each other with a very small gap therebetween, in order to efficiently
`vaporize the smoking liquid.”); id. at 6:54–58 (“When the smoking liquid is
`dispensed from the container 140 and the heater 146 is turned on, the
`smoking liquid may be mixed with the air from the flow path 122 and
`vaporized by the heat from the heater 146 within the vaporizing
`chamber 124.”). Thus, Petitioner does not show sufficiently that Rabin’s
`disclosed advantage of “minimal heating of unnecessary thermal mass”
`would have led a POSA to modify Alarcon’s electronic cigarette.
`
`18
`
`
`
`IPR2021-00826
`Patent 9,814,265 B2
`Next, Petitioner asserts that “Rabin teaches that it is advantageous to
`apply heat directly to porous member 102 . . . because ‘heater 104 is in more
`intimate contact with . . . the liquid held within porous member 102,’ the
`power required is reduced, which ‘improves heater reliability and lifetime,
`and increases overall energy efficiency.’” Pet. 33 (quoting Ex. 1003,
`7:49–57). We agree with Patent Owner that Petitioner has not shown
`sufficiently that Rabin’s disclosure of increased energy efficiency would
`have prompted a POSA to modify Alarcon’s electronic cigarette. Prelim.
`Resp. 19–20.
`Petitioner selectively quotes from the following disclosure in Rabin:
`Another advantage of the embodiment shown at 300 is that heater
`104 is in more intimate contact with the heat sink, that is, the
`liquid held within porous member 102 by capillary force. The
`result is that the maximum heater temperature reached during
`operation of device 300 at a given power density, that is, for a
`given output flow rate, is reduced as compared to prior art
`capillary pumps. This improves heater reliability and lifetime,
`and increases overall energy efficiency of device 300. See the
`comparative Examples and the data in Table 1, below.
`Ex. 1003, 7:49–58 (emphasis added). Rabin’s “energy efficiency”
`advantage relied upon by Petitioner (Pet. 33) is “as compared to prior art
`capillary pumps” in which “heat was conducted from outside the device via
`the device housing to the vaporizer component.” Ex. 1003, 7:23–27,
`7:49–58; see also id. at 1:66–2:9 (discussing prior art capillary force
`vaporizers having “limited energy efficiency” and “undesirable energy loss
`to the surrounding environment” as “a consequence of having to conduct
`heat from a heat source external to the device and far from the vaporization
`zone”). The examples Rabin relies upon to show an increase in energy
`efficiency compare Rabin’s capillary force vaporizer with a prior art
`
`19
`
`
`
`IPR2021-00826
`Patent 9,814,265 B2
`capillary pump in which “[a]n identical heater was used to provide heat
`externally to the comparative prior art device.” Ex. 1003, 7:57–58,
`15:51–52; see also id. at 15:17–16:35 (Example 1 and Table 1).
`Petitioner does not explain how Rabin’s teaching about increased
`energy efficiency as compared to prior art capillary pumps would have led a
`POSA to modify Alarcon’s electronic cigarette. Rabin teaches that
`positioning a heater in “intimate contact with . . . the liquid held within [a]
`porous member” results in increased energy efficiency, as compared with a
`prior art capillary force vaporizer having an external heater. Ex. 1003,
`1:66–2:9, 7:49–58, 15:17–16:35. Alarcon’s heater 146 is not external—it is
`located within vaporization chamber 124. Ex. 1002, 5:39–41, Fig. 1A. Here
`again, we detect the taint of impermissible hindsight reconstruction.
`Moreover, Alarcon teaches that efficient vaporization is achieved by
`locating heater 146 adjacent to dispensing control device 141 “with a very
`small gap therebetween” and by controlling the amount of liquid dispensed
`to vaporizing chamber 124 and heated by heater 146. Ex. 1002, 6:26–30,
`Fig. 6; see also id. at 5:48–50 (“dispensing control device 141 may be
`connected to the container 140 in order to control flow of the smoking liquid
`from the container 140 to the vaporizing chamber 124”); id. at 6:23–26 (“an
`active dispensing device 142 may be connected to the container 140 in order
`to consistently dispense substantially the same amount of smoking liquid to
`the vaporizing chamber 124 each time”); id. at 6:54–58 (“When the smoking
`liquid is dispensed from the container 140 and the heater 146 is turned on,
`the smoking liquid may be mixed with the air from the flow path 122 and
`vaporized by the heat from the heater 146 within the vaporizing
`chamber 124.”). Petitioner does not make a threshold showing that a POSA
`would have expected to increase the energy efficiency of Alarcon’s already
`
`20
`
`
`
`IPR2021-00826
`Patent 9,814,265 B2
`efficient vaporization method by eliminating the deliberate gap between
`heater 146 and dispensing control device 141.
`Next, as support for its contention that it would have been obvious to
`dispose Alarcon’s dispensing control device 141 “in contact” with
`heater 146, Petitioner asserts that “Rabin discloses that advantages of
`applying heat directly to porous member 102 include that: (a) ‘there is
`minimal heating of unnecessary thermal mass, with the concomitant effect
`that response times of the device are improved’ and (b) ‘the maximum
`heater temperature . . . at a given power density . . . is reduced.’” Pet. 45–46
`(quoting Ex. 1003, 7:44–55). Petitioner’s excerpts from Rabin are selected
`from the passages block quoted above. As already discussed, Rabin’s
`disclosed advantages are “as compared with prior art capillary pumps” that
`have an external heater and a thermally conductive housing and fins or posts
`to conduct heat from the external heater to a liquid-containing porous
`member. Ex. 1003, 1:66–2:9, 7:23–48, 7:44–58, 15:17–16:35. In contrast,
`Alarcon’s electronic cigarette has an internal heater located within a
`vaporization chamber with a small gap between the heater and the liquid-
`dispensing membrane. Ex. 1002, 5:39–41, 6:23–30, Figs. 1A, 6. Petitioner
`does not explain how or why eliminating this intentional gap would
`minimize heating of unnecessary thermal mass, improve response times, or
`reduce the maximum heater temperature in a device, such as Alarcon’s, that
`produces vapor by an entirely different mechanism, namely, using the force
`of a user’s sucking action to draw liquid through a membrane and into
`contact with a heater in a vaporization chamber, as compared to Rabin’s
`capillary pump feature.
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