filed on behalf of petitioners paper no. by: james h...

Filed on behalf of Petitioners Paper No. ___

By: James H. Morris

Edmund J. Walsh

WOLF, GREENFIELD & SACKS, P.C.

600 Atlantic Avenue

Boston, MA 02210

Tel: (617) 646-8000

Fax: (617) 646-8646

[email protected]

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

_____________

NJOY, Inc.;

CB Distributors, Inc.; DR Distributors, LLC;

FIN Branding Group, LLC; Electronic Cigarettes International Group, Ltd. f/k/a

Victory Electronic Cigarettes Corporation; and,

Logic Technology Development LLC

Petitioners

v.

FONTEM HOLDINGS 1 B.V.

Patent Owner

_____________

Case No. TBD

Patent No. 8,863,752

_____________

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,863,752

UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.1 et seq.

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TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................... 1

II. MANDATORY NOTICES – 37 C.F.R. § 42.8 ............................................... 2

A. Real Party-In-Interest – § 42.8(b)(1) ....................................................... 2

B. Related Matters – § 42.8(b)(2) ................................................................. 2

C. Counsel and Service Information – § 42.8(b)(3) and (4) ........................ 4

III. NOTICE OF FEES PAID ................................................................................ 4

IV. CERTIFICATION OF GROUNDS FOR STANDING .................................. 4

V. SUMMARY OF THE ’752 PATENT ............................................................. 5

A. Context of the ’752 patent ....................................................................... 5

B. Description related to the challenged claims ........................................... 5

C. Priority date of claims .............................................................................. 6

VI. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b)

AND RELIEF REQUESTED .......................................................................... 6

A. Patents and printed publications upon which Petitioners rely ................. 6

1. Canadian Pat. App. No. 2,752,134 (“Hon ’134”) (Ex. 1003) .......... 6

2. U.S. Pat. No. 3,200,819 (“Gilbert”) (Ex. 1004) ............................... 8

3. U.S. Pat. No. 6,155,268 (“Takeuchi”) (Ex. 1005) ........................... 9

4. The relied-upon prior art is analogous to the ’752 patent .............. 11

B. Level of ordinary skill in the art ............................................................ 11

C. Statutory grounds for challenge ............................................................. 12

D. Claim construction ................................................................................. 12

VII. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW ............ 14

VIII. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR

UNPATENTABILITY .................................................................................. 14

A. Ground 1: Claims 1-3, 6-11, and 13-20 would have been obvious

under 35 U.S.C. § 103 over Hon ’134 and Gilbert. ............................... 14

1. Hon ’134 and Gilbert ..................................................................... 14

2. Claims 1-3 ...................................................................................... 21

3. Claims 6, 16, and 17 ....................................................................... 33

4. Claims 7, 10, 11, 13-15, 18-20 ....................................................... 38

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5. Claims 8 and 9 ................................................................................ 47

B. Ground 2: Claims 4, 5, 12 would have been obvious under 35

U.S.C. § 103 over Hon ’134, Gilbert, and Takeuchi. ............................ 50

1. Hon ’134, Gilbert, and Takeuchi ................................................... 50

2. Claims 4, 5 and 12 .......................................................................... 56

IX. CONCLUSION .............................................................................................. 60

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TABLE OF AUTHORITIES

CASES

Asyst Techs., Inc. v. Emtrak, Inc.,

544 F.3d 1310 (Fed. Cir. 2008) ............................................................................21

CB Distribs., Inc. v. Fontem Holdings 1 B.V.,

IPR2013-00387, Paper 43 (P.T.A.B. Dec. 24, 2014) ...........................................12

In re Translogic Tech., Inc.,

504 F.3d 1249 (Fed. Cir. 2007) ............................................................................20

Inter Partes Review, CB Distribs., Inc. v. Fontem Holdings 1 B.V.,

IPR2014-01529 Paper 6 (P.T.A.B. Mar. 12, 2015) ..............................................13

Inter Partes Review, NJOY, Inc. v. Fontem Holdings 1 B.V.,

IPR2014-01300, Paper 8 (P.T.A.B. Feb. 19, 2015) .............................................13

KSR Int'l Co. v. Teleflex Inc.,

550 U.S. 398 (2007) ...................................................................................... 20, 54

Logic Technology Development, LLC v. Fontem Holdings 1 B.V.,

IPR2015-00098, Paper 8 (P.T.A.B. May 11, 2015) .............................................13

NJOY, Inc. v. Fontem Holdings 1 B.V.,

IPR2014-01289, Paper 8 (P.T.A.B. Feb. 19, 2015) .............................................12

Princeton Biochemical, Inc. v. Beckman Coulter, Inc.,

411 F.3d 1332 (Fed. Cir. 2005) ............................................................................11

STATUTES

35 U.S.C. § 102(b) .......................................................................................... 8, 9, 11

35 U.S.C. § 103 ........................................................................................... 12, 14, 50

35 U.S.C. § 314(a) ...................................................................................................14

35 U.S.C. §§ 311–19 ............................................................................................1, 60

REGULATIONS

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37 C.F.R. § 42.1 ......................................................................................................... 1

37 C.F.R. § 42.100(b) ..............................................................................................12

37 C.F.R. § 42.101 ...................................................................................................60

37 C.F.R. § 42.104(a) ................................................................................................. 4

37 C.F.R. § 42.104(b) ................................................................................................ 6

37 C.F.R. § 42.8 ......................................................................................................... 2

37 C.F.R. § 42.8(b)(1) ................................................................................................ 2

37 C.F.R. § 42.8(b)(2) ................................................................................................ 2

37 C.F.R. § 42.8(b)(3) ................................................................................................ 4

37 C.F.R. § 42.8(b)(4) ................................................................................................ 4

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APPENDIX LISTING OF EXHIBITS

No. Exhibit

1001 U.S. Pat. No. 8,863,752 (“the ’752 patent”)

1002 Declaration Samir Nayfeh, Ph.D. (“Nayfeh Decl.”)

1003 Canadian Pat. App. No. 2,752,134 (“Hon ’134”)

1004 U.S. Pat. No. 3,200,819 (“Gilbert”)

1005 U.S. Pat. No. 6,155,268 (“Takeuchi”)

1006 U.S Pat. No. 1,446,087 (“Griffin”)

1007 Markman Hearing/Claim Construction Order, Fontem Ventures,

B.V. v. NJOY, Inc., No. 14-cv-1645, Dkt. 133 (C.D. Cal. May 7,

2015)

1008

Rulings on Claim Construction, Fontem Ventures, B.V. v. NJOY,

Inc., No. 14-cv-1645, Dkt. 65 (C.D. Cal. Jan. 29, 2015)

1009 Joint Claim Construction and Prehearing Statement, Fontem

Ventures, B.V. v. NJOY, Inc., No. 14-cv-1645, Dkt. 93 (C.D. Cal.

Mar. 19, 2015)

1010 Revised Joint Claim Construction and Prehearing Statement,

Fontem Ventures, B.V. v. NJOY, Inc., No. 14-cv-1645, Dkt. 34 (C.D.

Cal. Sept. 30, 2014)

1011 Curriculum Vitae of Samir Nayfeh, Ph.D.

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Petitioners NJOY, Inc.; CB Distributors, Inc.; DR Distributors, LLC; FIN

Branding Group, LLC; Electronic Cigarettes International Group, Ltd. f/k/a

Victory Electronic Cigarettes Corporation; and Logic Technology Development

LLC (“Petitioners”), pursuant to 35 U.S.C. §§ 311–19 and 37 C.F.R. § 42.1 et seq.,

request inter partes review of claims 1-20 of U.S. Patent No. 8,863,752 (“the ’752

patent”) (Ex. 1001).

I. INTRODUCTION

The ’752 patent is one of nine patents that Fontem Holdings 1 B.V. (“Patent

Owner”) has asserted in twenty-seven cases in the District Court for the Central

District of California, and it is one of dozens of U.S. and foreign patents and

published applications by the same inventor concerning electronic cigarettes.

Among the inventor’s published applications, Can. Pat. App. No. 2,752,134 (“Hon

’134”) (Ex. 1003) is prior art to the ’752 patent and discloses nearly everything that

the ’752 patent claims. Those few remaining elements were well-known in the art

and commonly used in other prior art electronic cigarette patents, including in the

references cited herein. Because the ’752 patent is nothing more than an obvious

variation of the inventor’s earlier work—simply incorporating known concepts in

predictable ways—Petitioners seek cancellation of claims 1-20 of the ’752 patent.

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II. MANDATORY NOTICES – 37 C.F.R. § 42.8

A. Real Party-In-Interest – § 42.8(b)(1)

Petitioners NJOY, Inc.; CB Distributors, Inc.; DR Distributors, LLC; FIN

Branding Group, LLC; Electronic Cigarettes International Group, Ltd. f/k/a

Victory Electronic Cigarettes Corporation; and Logic Technology Development

LLC are the real parties-in-interest.

Petitioners certify that they exercised their sole and absolute discretion in

deciding to file this petition against the ’752 patent. Petitioners further certify that

they controlled every aspect of and all strategy decisions related to this petition,

including which claims to challenge, which prior art to apply, which grounds to

raise, and when to bring the challenge. Petitioners were responsible for paying all

fees and expenses incurred during the preparation of this petition.

Petitioners are therefore the only real-parties-in-interest.

B. Related Matters – § 42.8(b)(2)

This proceeding could affect or be affected by the series of cases the Patent

Owner filed in the U.S. District Court for the Central District of California. The

defendants and case numbers are listed below: (i) Ballantyne Brands, LLC, Nos.

2:14-cv-09269, 2:14-cv-08157, and 2:14-cv-01652; (ii) VMR Products, LLC, Nos.

2:14-cv-09273, 2:14-cv-08161, and 2:14-cv-01655; (iii) Spark Industries, LLC,

Nos. 2:14-cv-09270, 2:14-cv-08158, and 2:14-cv-01653; (iv) Vapor Corp., Nos.

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2:14-cv-09267, 2:14-cv-08155, and 2:14-cv-01650; (v) CB Distributors, Inc. and

DR Distributors, LLC, Nos. 2:14-cv-09266, 2:14-cv-08154, and 2:14-cv-01649;

(vi) LOEC, Inc., Nos. 2:14-cv-09265, 2:14-cv-08149, and 2:14-cv-01648; (vii)

Logic Technology Development LLC, Nos. 2:14-cv-09271, 2:14-cv-08160, and

2:14-cv-01654; (viii) NJOY, Inc., Nos. 2:14-cv-09263, 2:14-cv-08144, and 2:14-

cv-01645; (ix) FIN Branding Group, LLC and Electronic Cigarettes Int’l Group

Ltd., Nos. 2:14-cv-09268, 2:14-cv-08156, and 2:14-cv-01651.

Related IPRs include: IPR2013-00387; IPR2014-01289; IPR2014-01300;

IPR2014-01529; IPR2015-00098; IPR2015-00859; and IPR2015-01027.

Petitioners are concurrently filing petitions to review U.S. Patent Nos.

8,910,641; 8,893,726; and 8,899,239. Due to the related nature of the technology,

and the overlap in parties, the Petitioners request the Board assign these petitions

to the same panel and coordinate scheduling in the interest of administrative

efficiency.

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C. Counsel and Service Information – § 42.8(b)(3) and (4)

Lead Counsel Edmund J. Walsh (Registration No. 32,950)

Backup Counsel James H. Morris (Registration No. 34,681)

Service

Information

Email: [email protected]

[email protected]

Post and hand delivery: Wolf, Greenfield & Sacks, P.C.

600 Atlantic Avenue

Boston, MA 02210-2206

Telephone: 617-646-8000 Facsimile: 617-646-8646

Powers of attorney are submitted with this petition. Counsel for Petitioners

consents to service of all documents via electronic mail.

III. NOTICE OF FEES PAID

Fees are submitted with this Petition. If additional fees are due during the

proceeding, the Office is authorized to charge Deposit Account No. 23/2825.

IV. CERTIFICATION OF GROUNDS FOR STANDING

The ’752 patent was filed after March 16, 2013, but claims priority, as a

continuation, to applications filed before March 16, 2013. Relying on the priority

as asserted by the Patent Owner, Petitioners certify, pursuant to 37 C.F.R. §

42.104(a), that the ’752 patent is available for inter partes review. Petitioners

certify that they are not barred or estopped from requesting inter partes review as

to the ’752 patent claims identified herein.

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V. SUMMARY OF THE ’752 PATENT

A. Context of the ’752 patent

The ’752 patent claims a series of components with little specificity about

the structure of the components or how they operate in relation to each other.

Declaration of Samir Nayfeh, Ph.D. (Ex. 1002) (“Nayfeh Decl.”) at ¶ 13. In

contrast, the ’752 patent’s drawings depict a particular embodiment with a

particular arrangement of the claimed components. Nayfeh Decl. at ¶ 13.

However, the claims are not limited to the embodiments illustrated in the drawings.

B. Description related to the challenged claims

The ’752 patent describes an electronic cigarette with an atomizer assembly.

Ex. 1001 at 1:33-34. The claims require a housing containing a liquid storage in

contact with an atomizer. E.g., id. at claims 1 and 6. The atomizer is electrically

connected to a screw thread with a hole in the center, and a passageway runs

through the atomizer, the hole in the screw thread, and an outlet in the housing.

E.g., id. at claims 1, 2, 8, and 9. The atomizer has a heating wire and is aligned

with the hole in the screw thread. E.g., id. at claims 3, 7, and 10. The heating wire

may be wound around a porous or fibrous material. E.g., id. at claims 4 and 5.

The balance of the claims recite nothing more than other obvious combinations of

the elements found in claims 1-10. See generally Nayfeh Decl. at ¶ 14.

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C. Priority date of claims

The ’752 patent claims priority to a PCT application filed May 15, 2007,

which in turn claims priority to a Chinese application filed May 16, 2006. Without

conceding that the challenged claims are entitled to priority as asserted, the claims

are unpatentable based on patents and printed publications published more than

one year before the filing date of the PCT application and before the foreign

priority date, and are therefore prior art even if the ’752 patent is entitled to the

earliest priority date claimed.

VI. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(b)

AND RELIEF REQUESTED

Petitioners seek cancellation of claims 1-20 of the ’752 patent.

A. Patents and printed publications upon which Petitioners

rely

In seeking cancellation of the claims listed above, Petitioners rely on the

following patents and printed publications:

1. Canadian Pat. App. No. 2,752,134 (“Hon ’134”) (Ex. 1003)

Hon ’134 discloses an “electronic spray cigarette, which is an integrated

assembly.” Ex. 1003 at 2:12-22; Nayfeh Decl. at ¶ 19. The assembly has a liquid

storage (blue in Fig. 1 below) containing a fluid, such as a “nicotine solution.” Ex.

1003 at 2:12-22; Nayfeh Decl. at ¶ 19. The liquid storage is connected to an

atomizer, which includes a “vaporization nozzle and its attachments,” such as an

“electronic valve” to control the flow of fluid, a “metering cavity” to control the

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volume of liquid that reaches the “vaporization nozzle,” and various connecting

tubes (red in Fig. 1 below). Ex. 1003 at Abstract; id. at 9:20-31; Nayfeh Decl. at ¶

19. The atomizer vaporizes the fluid and participates in forming an aerosol for the

user to inhale. Ex. 1003 at 2:30-33; id. at 6:28-30; Nayfeh Decl. at ¶ 19.

Ex. 1003 at Fig. 9 (atomizer (including 317, 311, 320, and connecting tubes)

highlighted in red, liquid storage (313) highlighted in blue, flow passageway

(arrow from end of 317) indicated in green).

Particularly relevant to this petition, the “vaporization nozzle” attaches to the

assembly with a threaded connection. Ex. 1003 at 2:12-19; id. at 8:24; id. at Fig. 3;

Nayfeh Decl. at ¶ 20. The threads (red in Fig. 3 below) surround the tube. Fluid

from the liquid storage passes through the hole in the threaded end of the tube on

the way to being vaporized by the heating wires in the tube. Ex. 1003 at 2:12-19;

id. at 9:25-30; Nayfeh Decl. at ¶ 20. Hon ’134 suggests that the screw thread may

be used as an electrode to conduct electricity to the heating wire. Ex. 1003 at 8:24-

25; id. at Fig. 3; Nayfeh Decl. at ¶ 20.

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Ex. 1003 at Fig. 3 (“thread 403” highlighted in red, through hole (arrow through

the “thread 403” and “nozzle 405”) indicated in green).

Hon ’134 was laid open to public inspection by the Canadian Intellectual

Property Office on November 11, 2004, and is prior art to the ’752 patent under at

least 35 U.S.C. § 102(b) (pre-AIA). Id. at [41].

2. U.S. Pat. No. 3,200,819 (“Gilbert”) (Ex. 1004)

Gilbert discloses a “smokeless non-tobacco cigarette” with a “heating

element so that warm, moist and flavored air is drawn into the mouth.” Ex. 1004 at

1:7-22; Nayfeh Decl. at ¶ 22. The heating element is a lightbulb-like tube with a

“screw plug” at one end to “engage[] with [a] socket.” Ex. 1004 at 2:45-54;

Nayfeh Decl. at ¶ 22. By using this configuration, the electric circuit flows from

the battery, through the threads and the bulb’s filament, and back to the battery.

Ex. 1004 at 2:71-3:2; Nayfeh Decl. at ¶ 22.

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Ex. 1004 at Fig. 2 (“contact strip 35” highlighted in yellow and “screw plug 37”

outlined in red, extraneous markings removed).

Gilbert issued on Aug. 17, 1965, and is prior art to the ’752 patent under at

least 35 U.S.C. § 102(b) (pre-AIA). Ex. 1004.

3. U.S. Pat. No. 6,155,268 (“Takeuchi”) (Ex. 1005)

Takeuchi discloses a “flavor-generating device for enjoying inhalation of

flavor or for enjoying simulated smoking” that creates an aerosol “to be inhaled by

a user by heating a liquid[] flavor source without relying on combustion.” Ex.

1005 at 1:4-10; id. at 5:33-37; Nayfeh Decl. at ¶ 24. When used as a “simulated

smoking article,” the liquid flavor source can “contain tobacco components such as

tobacco extracts and a tobacco smoke condensate.” Ex. 1005 at 5:43-46; Nayfeh

Decl. at ¶ 24.

Takeuchi has a “liquid container for storing [the] liquid flavor source” (blue

in Fig. 1 below) and a “liquid passageway” (red in Fig. 1 below) “in fluid

communication with the liquid flavor source at its first end ... and with the gas

passageway at its second end.” Ex. 1005 at Abstract; Nayfeh Decl. at ¶ 25. Liquid

from the “liquid flavor source” moves through the “liquid passageway” to the “gas

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passageway” “by capillary force.” Ex. 1005 at Abstract; Nayfeh Decl. at ¶ 25.

The “liquid passageway” can be an “intercommunicating pore structure” such as a

“foamed structure” or “bundled fibers.” Ex. 1005 at 3:42-50; Nayfeh Decl. at ¶ 25.

At the upper end of the “liquid passageway,” “[a] heater heats and evaporates the

liquid flavor source” (red in Fig. 1 below). Ex. 1005 at Abstract; id. at Fig. 1;

Nayfeh Decl. at ¶ 25.

Ex. 1005 at Fig. 1 (“liquid container” (32) highlighted in blue, “liquid passageway”

(37) and “heater” (42) highlighted in red).

Takeuchi’s embodiments, including Fig. 1 above, each illustrate various

features. Nayfeh Decl. at ¶ 26. However, Takeuchi’s embodiments do not

illustrate every combination of its features, and a person of ordinary skill in the art

(“POSA”) would have recognized that features identified in one embodiment could

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readily be used with other features in combinations not specifically depicted or

described in any given embodiment. Nayfeh Decl. at ¶ 26.

Takeuchi issued on December 5, 2000, and is prior art to the ’752 patent

under at least 35 U.S.C. § 102(b) (pre-AIA). Id. at [45]. Takeuchi was assigned to

Japan Tobacco Inc. Id. at [73].

4. The relied-upon prior art is analogous to the ’752 patent

All of the foregoing prior art references are in the same field of endeavor as

the ’752 patent. Nayfeh Decl. at ¶ 28. Like the ’752 patent, all three prior art

references describe electronic cigarettes. Ex. 1001 at 1:33-34; Ex. 1003 at 2:9-22;

Ex. 1004 at 1:7-22; Ex. 1005 at 1:4-10; id. at 5:33-46; Nayfeh Decl. at ¶ 28. Hon

’134 has the same sole inventor as the ’752 patent. Ex. 1001 at [72]; Ex. 1003 at

[72]. Therefore, Hon ’134, Takeuchi, and Gilbert are analogous art to the ’752

patent. Princeton Biochemical, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1339

(Fed. Cir. 2005).

B. Level of ordinary skill in the art

The POSA is a person with at least the equivalent of a Bachelor’s degree in

electrical engineering, mechanical engineering or biomedical engineering or

related fields, along with at least two years of experience designing

electromechanical devices, including those involving fluid mechanics and heat

transfer. Nayfeh Decl. at ¶ 18. A POSA would have the ability to read and

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understand the references and make reasonable inferences based on drawings.


C. Statutory grounds for challenge

Petitioners request cancellation of claims 1-20 of the ’752 patent on the

following grounds.

Ground Reference(s) Claims Basis

1 Hon ’134 and Gilbert 1-3, 6-11, 13-20 § 103

2 Hon ’134, Gilbert, and Takeuchi 4, 5, 12 § 103

D. Claim construction

In this proceeding, claim terms should be given their broadest reasonable

interpretation in view of the specification. 37 C.F.R. § 42.100(b). Any claim

terms not expressly discussed below should be given their plain and ordinary

meaning as understood by a POSA.

The ’752 patent is unpatentable under any reasonable construction of its

claim terms. Although not controlling, the Board’s recent constructions during

certain of the Related IPRs are reasonable under the broadest reasonable

interpretation standard.1 In light of these constructions, Petitioners have not

1 Final Written Decision, CB Distribs., Inc. v. Fontem Holdings 1 B.V., IPR2013-

00387, Paper 43 at 7-14 (P.T.A.B. Dec. 24, 2014); Institution of Inter Partes

Review, NJOY, Inc. v. Fontem Holdings 1 B.V., IPR2014-01289, Paper 8 at 6-10

(P.T.A.B. Feb. 19, 2015); Institution of Inter Partes Review, NJOY, Inc. v. Fontem

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presently identified any claim terms in the ’752 patent requiring construction. If

Patent Owner offers an unreasonable construction, Petitioners will request leave to

respond.

In the co-pending litigations, the U.S. District Court for the Central District

of California, applying Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005),

entered an order construing several of the terms at issue in this Petition. Ex. 1007

(Claim Construction Order, May 7, 2015) and Ex. 1008 (Claim Construction

Order, Jan. 29, 2015). The parties also stipulated to the construction of other

terms, including “electronic cigarette” and “atomizer,” under the Phillips standard.

See Ex. 1009 (Joint Statement and Ex. A, Mar. 19, 2015) (showing construction of

“electronic cigarette”) and Ex. 1010 (Joint Statement and Ex. A, Sept. 30, 2014)

(showing construction of “atomizer”). In certain instances, these Phillips-based

constructions are different than those that the Board previously adopted, as

presented below.

Holdings 1 B.V., IPR2014-01300, Paper 8 at 6-11 (P.T.A.B. Feb. 19, 2015);

Institution of Inter Partes Review, CB Distribs., Inc. v. Fontem Holdings 1 B.V.,

IPR2014-01529, Paper 6 at 6-7 (P.T.A.B. Mar. 12, 2015); Decision Denying

Institution of Inter Partes Review, IPR2015-00098, Paper 8 at 7-8 (P.T.A.B. May

11, 2015).

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VII. THRESHOLD REQUIREMENT FOR INTER PARTES REVIEW

This petition meets the threshold requirement for inter partes review

because the relied upon references, applied to the claims as detailed below,

demonstrate “a reasonable likelihood that the petitioner would prevail with respect

to at least one of the claims challenged in the petition.” 35 U.S.C. § 314(a). All

elements of claims 1-20 are taught in the prior art as demonstrated below in

Section VIII, which is supported by the declaration Samir Nayfeh, Ph.D.

VIII. CLAIM-BY-CLAIM EXPLANATION OF GROUNDS FOR

UNPATENTABILITY

A. Ground 1: Claims 1-3, 6-11, and 13-20 would have been

obvious under 35 U.S.C. § 103 over Hon ’134 and Gilbert.

1. Hon ’134 and Gilbert

A POSA would have had reason to combine the teachings of Hon ’134 and

Gilbert. Several of Hon ’134’s embodiments suggest that the “vaporization

nozzle” is connected with a screw thread electrode. Nayfeh Decl. at ¶ 30. First,

when describing the “vaporization nozzle” and related components in Fig. 3

(below), Hon ’134 identifies a single “electrode lead wire 401” attached to the

“heating wire 402.” Ex. 1003 at 8:24-25; id. at 3:33-4:2; id. at Fig. 3; Nayfeh

Decl. at ¶ 30.

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Ex. 1003 at Fig. 3 (“electrode lead wire 401” highlighted in yellow). The two

parallel lines identified as a single “electrode lead wire 401” depict the outline of

the wire, much like the two lines used to depict the outline of the single “heating

wire 402” in Fig. 3 depict a single wire. Nayfeh Decl. at ¶ 30.

A POSA would have known that an electric circuit needs two connections.

Nayfeh Decl. at ¶ 31. The lack of an explicitly illustrated second connection to the

electric circuit means that the circuit is completed either by some structure that is

not depicted, such as some other wire, or the circuit is completed by an existing

point of contact. Nayfeh Decl. at ¶ 32. Although either might be possible, a POSA

would have realized that “thread 403” is a depicted point of contact. Ex. 1003 at

Figs. 3 and 9; Nayfeh Decl. at ¶ 32.

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Ex. 1003 at Fig. 3 (the depicted point of contact between the “vaporization nozzle

317” and the rest of the device enlarged).

Using the “thread 403” would have made sense to a POSA in light of Hon

’134’s schematic diagram in Fig. 2. Many of the electrical components in the

device are connected to a ground. Id. at Fig. 2; Nayfeh Decl. at ¶ 33. While it

would be possible to have a separate ground wire for each, a simpler solution

would be to make the “shell” or portion of the “shell” out of a conductive material

and use it as a common ground. Nayfeh Decl. at ¶ 33. For the “vaporization

nozzle,” a portion the “baffle plate 15” (depicted in Fig. 1) could be part of the

conductive “shell” so that the “thread 403” would be grounded by screwing into it.


A second embodiment in Hon ’134 also suggests that “thread 403” could be

an electrode. Rather than using a heating wire, the vaporization nozzle itself can

be made of a resistant metal and heated with an electric current. Ex. 1003 at 5:33-

6:2 (“The nozzle with high resistance, made of metal, can have no electric heating

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element being attached, and can be directly applied with heating current.”); Nayfeh

Decl. at ¶ 34. Given how the “vaporization nozzle” is depicted in Figs. 3 and 9,

one implementation would be to use the “thread 403” as one of the two electrical

connections for the circuit, allowing the “vaporization nozzle” to be attached and

electrically connected by screwing it into the assembly. Nayfeh Decl. at ¶ 34. A

POSA would have understood that the “thread 403” could be an electrode, even

when using a “heating wire 402.” Nayfeh Decl. at ¶ 34.

One well-known way to use a screw thread as an electrode is to use standard

lightbulb socket ‘technology,’ and Gilbert illustrates how such a socket can be used

in the context of electronic cigarettes. Nayfeh Decl. at ¶ 35. Gilbert discloses an

electronic cigarette with a lightbulb-like heating element connected to the battery

with a screw thread electrode. Ex. 1004 at 1:14-22; id. at 2:41-3:2 (“The heating

element is preferably a vacuum tube or bulb 36 having a screw plug 37 for

detachable engagement with the socket 30. … When the bulb 36 is assembled to

the socket 30 its tip end 38 will engage the inner battery contact 33 and complete

the circuit through the filament of the bulb 36 by the contact strip 35.”);2 Nayfeh

Decl. at ¶ 35.

2 All emphasis added, unless noted.

- 18 -



Id. at Figs. 9 (left) and 6 (right) (“contact strip 35” highlighted or indicated in

yellow and “screw plug 37” outlined in red, extraneous markings removed).

From at least Gilbert, which is almost 50 years old, a POSA would have

known how to use a screw thread as an electrode—and specifically, how to

connect a heating filament inside a tube to screw threads to complete a circuit.

Nayfeh Decl. at ¶ 36. Implementing Hon ’134 and Gilbert together was well

within the ordinary skill of the POSA, as it requires no more than using a well-

known part in a place and in a way that it is suggested to be. Nayfeh Decl. at ¶ 36.

- 19 -

Precedent exists for precisely the configuration that Hon ’134 and Gilbert

suggest and that the ’752 patent claims. Nayfeh Decl. at ¶ 37. U.S. Pat. No.

1,446,087 (“Griffin”) (Ex. 1006), a patent from 1923 related to vaporization of

gasoline in a carburetor, describes a screw thread electrode connecting a spiral

heating wire in a heating nozzle. Ex. 1006 at 1:73-82 (“One end of the insulating

tube 2 is located in a threaded bushing 3 which may be screwed into the gasket l.

It contains a resistance wire 4 that may be made in the form of a spiral which abuts

at its lower end against the bushing 3. The spiral 4 is slightly compressed when the

cap 5 is placed on the upper end of the bushing 2. This causes the spiral 4 to

complete an electric circuit with the cap 5 and the bushing 3.”); Nayfeh Decl. at ¶

37.

Ex. 1006 at Fig. 1. And furthermore, the screw thread has a centered, aligned

through hole, as claimed in the ’752 patent. Id. at 1:95-99 (“A pipe 6 may be

connected with the bushing 3 and also with the source of gasoline supply…”);

- 20 -

Nayfeh Decl. at ¶ 37. Griffin demonstrates that the proposed modification reflects

a configuration that one of skill in the art would have used. Nayfeh Decl. at ¶¶ 37-

38.

Given the disclosure in the art and the simplicity of the issues, a POSA

would have known that Hon ’134’s suggestion that “thread 403” is an electrode

could be implemented with Gilbert’s “screw plug 37” with predictable results.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“A court must ask

whether the improvement is more than the predictable use of prior art elements

according to their established functions.”); Nayfeh Decl. at ¶ 36. To use the screw

thread electrode of Gilbert asks a POSA to merely “implement a predictable

variation” of Hon ’134. KSR, 550 U.S. at 417; Nayfeh Decl. at ¶ 36. The Federal

Circuit has held, following KSR, that when looking for a way to implement a

feature disclosed in one reference, a POSA “would have solved this design need by

pursuing known options within his or her technical grasp.” In re Translogic Tech.,

Inc., 504 F.3d 1249, 1262 (Fed. Cir. 2007) (quotations and alteration omitted)

(citing KSR, 550 U.S. at 421) (finding “a person of ordinary skill in the art at the

time of the invention would have recognized the value of using a known element, a

2:1 TGM, as taught by [first reference], for the 2:1 multiplexers in the series

arrangement of multiplexers in [second reference].”); see also Asyst Techs., Inc. v.

Emtrak, Inc., 544 F.3d 1310, 1314-15 (Fed. Cir. 2008) (finding substitution of

- 21 -

“bus” shown in prior art reference with “multiplexer” known in the art and claimed

in the invention to be an obvious alternative).

Implementing Hon ’134’s “thread 403” as an electrode with Gilbert’s “screw

plug 37” would have led to a configuration similar to, for example, a lightbulb in

an electrified socket. Nayfeh Decl. at ¶ 36. It effectively amounts to the idea that

a POSA would have known to electrically connect the “heating wire 402” to the

“thread 403,” then pass electricity to “thread 403” through the socket. Nayfeh

Decl. at ¶ 36. This configuration is a combination of known elements with

predictable results, and therefore, a POSA would have had reason to combine the

teaching of Hon ’134 and Gilbert in this way. Nayfeh Decl. at ¶ 36.

2. Claims 1-3

Claim 1 is independent and is set forth in the table below. The letters

corresponding to each claim element will be used in the discussion below:

Claim Language

1. An atomizer assembly for an electronic cigarette, comprising:

[A] an atomizer assembly housing containing an atomizer,

[B] liquid storage, and

[C] a screw thread electrode on one end of the atomizer assembly housing,

[D] with the screw thread electrode having a through hole centered on the screw

thread electrode, and

[E] with the atomizer in physical contact with the liquid storage; and

[F] a flow passageway leading from the atomizer to an outlet of the atomizer

assembly housing.

Hon ’134’s “electronic spray cigarette” in “an integrated assembly” is an

atomizer assembly for an electronic cigarette, as recited in the preamble of claim

- 22 -

1. Ex. 1003 at 2:12-22; Nayfeh Decl. at ¶ 41. The atomizer assembly housing has

a housing (including “shell 6” and “baffle plate”) containing the “vaporization

nozzle and attachments,” which in Fig. 9 include the “electro-thermal vaporization

nozzle 317,” the “electronic valve 311,” and the “metering cavity 320.” Ex. 1003

at Abstract; id. at 2:12-22; id. at 9:20-22; id. at 7:16; id. at Figs. 1 and 9; Nayfeh

Decl. at ¶¶ 43 and 44. Those components facilitate atomization and, therefore, are

an atomizer as recited in element A of claim 1. Ex. 1003 at Abstract; id. at 2:12-

22; id. at 9:25-30; id. at Fig. 9; Nayfeh Decl. at ¶ 44. The housing also contains

liquid storage (e.g., “liquid storage container 313”), as recited in element B of

claim 1. Ex. 1003 at 2:12-21; id. at 9:22; id. at Fig. 9; Nayfeh Decl. at ¶ 45.


highlighted in red, liquid storage (313) highlighted in blue).

Hon ’134 and Gilbert disclose a screw thread electrode on one end of the

atomizer assembly housing, as recited in element C of claim 1. Specifically, Hon

’134 describes that the “vaporization nozzle” has “thread 403” at one end of the

“nozzle 405.” Id. at 8:24; id. at Figs. 3 and 9; Nayfeh Decl. at ¶ 46. As discussed

- 23 -

in Part VIII.A.1 above, Hon ’134 suggest that “thread 403” can be an electrode and

Gilbert explains how to complete the electric circuit through the heating filament

and the screw thread. Ex. 1004 at 2:24-50; id. at 2:71-3:2; Nayfeh Decl. at ¶ 47.

The “thread 403” is installed on one end of the atomizer assembly housing in the

“baffle plate 15” to attach the “vaporization nozzle.” Ex. 1003 at Abstract (“The

cigarette includes … an electro-thermal vaporization nozzle installed in the air

suction end of the shell….”); id. at 2:12-19; Nayfeh Decl. at ¶ 48. Therefore, Hon

’134 and Gilbert disclose element C of claim 1. Nayfeh Decl. at ¶ 48

Ex. 1003 at Fig. 3 (“thread 403” highlighted in red).

Id. at Fig. 9 (location of “thread 403” (base of 317) indicated in red).

- 24 -

Hon ’134 and Gilbert also disclose element C of claim 1 with reference to

the corresponding female screw thread electrode on which “thread 403” must

connect. Nayfeh Decl. at ¶ 49. A POSA would have been well-aware of how to

make such a screw thread electrode, and Gilbert provides an example. Nayfeh

Decl. at ¶ 50. Specifically, Gilbert describes a “threaded electric socket 30” that

creates a circuit using “contact strip 35.” Ex. 1004 at 2:41-48; Nayfeh Decl. at ¶

50. Gilbert’s socket is a screw thread electrode, as the term is used in the ’752

patent.



- 25 -

Id. at Figs. 9 (left) and 6 (right) (“contact strip 35” highlighted or indicated in

yellow and “screw plug 37” outlined in red, extraneous markings removed).

A POSA would have been aware of other ways that the female screw thread

electrode on the “baffle plate 15” could be made. Nayfeh Decl. at ¶ 51. For

example, a POSA could have made it to match the structure of “thread 403.”

Nayfeh Decl. at ¶ 51. As illustrated in Griffin from 1927, engineering such a

thread was well within the abilities of a POSA for over 90 years. Ex. 1006;

Nayfeh Decl. at ¶ 51. Therefore, Hon ’134 and Gilbert disclose element C of claim

1. Nayfeh Decl. at ¶ 51. Hon ’134 discloses the screw thread electrode having a

through hole centered on the screw thread electrode (“thread 403” around “nozzle

405” or “electro-thermal vaporization nozzle 317”), as recited in element D of

claim 1. Ex. 1003 at 3:8-14; id. at 5:11-19; id. at 9:25-30; id. at Figs. 3 and 9;

Nayfeh Decl. at ¶¶ 52-53.


“thread 403”) indicated in green).

- 26 -

The atomizer is in physical contact with the liquid storage (“vaporization

nozzle … is connected with a liquid storage container … via … a valve connected

with a metering cavity”), as recited in element E of claim 1. Ex. 1003 at 2:12-21;

id. at 9:20-30; id. at Fig. 9; Nayfeh Decl. at ¶ 54. The atomizer assembly further

includes a flow passageway leading from the atomizer to an outlet of the atomizer

assembly housing (“in the vaporization nozzle, the liquid is rapidly vaporized,

ejected out and then condensed to form a puff of smoke”), as recited in element F

of claim 1. Ex. 1003 at 2:30-33; id. at Fig. 9; Nayfeh Decl. at ¶ 55. Therefore,

Hon ’134 and Gilbert disclose claim 1. Nayfeh Decl. at ¶ 39.


highlighted in red, liquid storage (313) highlighted in blue, physical contact

highlighted in orange (box near 323), flow passageway (arrow from end of 317)

indicated in green).

Claim 2 depends on claim 1 and adds that the atomizer is electrically

connected to the screw thread electrode. For all the reasons discussed above

regarding element C of claim 1 that Hon ’134 and Gilbert disclose a screw thread

- 27 -

electrode, they similarly disclose one electrically connected to the atomizer.

Claim 3 depends on claim 1 and requires the atomizer comprising a heater coil.

Hon ’134 explains that the “heating element … may be made of wires … in the

shape of [a] spiral,” and therefore discloses claim 3. Ex. 1003 at 5:21-25; id. at

Fig. 3; Nayfeh Decl. at ¶ 57.

Ex. 1003 at Fig. 3 (“heating wire 402” highlighted in red).

The claim charts below specifically demonstrate how each and every

element of claims 1-3 is found in Hon ’134 and Gilbert, and how the claims read

on the combination of Hon ’134 and Gilbert.

Claim Language Prior Art Disclosures

1. An atomizer

assembly for an

electronic cigarette,

comprising:

Hon ’134 discloses an atomizer assembly for an electronic

cigarette (“electronic spray cigarette, which is an integrated

assembly”).

Ex. 1003 at Abstract (“The invention relates to a non-

smokable electronic spray cigarette…. The cigarette

includes … a shell, … nicotine solution storage and its

container, … a piezoelectric supersound atomizer, a high

temperature vaporization nozzle and attachments …

installed in the air suction end of the shell….”); id. at 2:12-

22 (“The non-smokable electronic spray cigarette, which is

- 28 -

an integrated assembly resembling a cigarette holder,

includes a shell, … nicotine solution and its container, … a

piezoelectric ultrasonic atomizer, a high temperature

vaporization nozzle and accessories, wherein an electro-

thermal vaporization nozzle arranged within an air suction

end of the shell is connected with a liquid storage container

which contains nicotine solution …; an ultrasonic

piezoelectric element attached on the outside of the

vaporization nozzle….”); id. Fig. 9.

[A] an atomizer

assembly housing

containing an

atomizer,

Hon ’134 discloses an atomizer assembly housing (“shell”)

containing an atomizer (“vaporization nozzle and

attachments”).

Id. at Abstract (“The cigarette includes … a shell, … a

piezoelectric supersound atomizer, a high temperature

vaporization nozzle and attachments installed in … the

shell….”); id. at 2:12-22 (“The non-smokable electronic

spray cigarette, which is an integrated assembly resembling

a cigarette holder, includes a shell, … a piezoelectric

ultrasonic atomizer, a high temperature vaporization nozzle

and accessories, wherein an electro-thermal vaporization

nozzle arranged within … the shell …; an ultrasonic

piezoelectric element attached on the outside of the

vaporization nozzle….”); id. at Fig. 9; id. at 9:20-22

(describing Fig. 9: “electro-thermal vaporization nozzle

317, the electronic valve 311 connected with the metering

cavity 320”); id. at 9:25-30 (describing Fig. 9: “When a

control signal is applied to the electronic valve, the

electronic valve is activated, and the solution with nicotine

enters the metering cavity from the liquid storage container

under pressure and pushes a piston so as to allow a constant

volume of liquid at the other side of the piston to enter the

vaporization nozzle via the electronic valve and be

vaporized and condensed to form aerosols.”); id. at Fig. 1;

id. at 7:16.

- 29 -

Id. at Fig. 3; id. at 8:25 (“nozzle 405”); id. at 3:33-4:1

(“FIG. 3 is a schematic diagram of the structure of the high

temperature vaporization nozzle and the electric-thermal

element….”).

[B] liquid storage,

and

Hon ’134 discloses a liquid storage (“nicotine solution and

its container,” “liquid storage container which contains

nicotine solution,” or “liquid storage container 313”), in the

assembly housing.

Id. at Abstract (“The cigarette includes … nicotine solution

storage and its container, … or … a liquid storage container

which contains nicotine solution....”); id. at 2:12-21 (“The

non-smokable electronic spray cigarette, which is an

integrated assembly resembling a cigarette holder, includes

… nicotine solution and its container, … [or] a liquid

storage container which contains nicotine solution….”);

id. at Fig. 9; id. at 9:22 (describing Fig. 9: “the liquid

storage container 313”).

[C] a screw thread

electrode on one

end of the atomizer

assembly housing,

Hon ’134 and Gilbert disclose a screw thread electrode on

one end of the atomizer assembly housing (“thread 403”

from Hon ’134 as implemented by “screw plug 37” from

Gilbert).

Id. at Abstract (“The cigarette includes … a shell, … a high

temperature vaporization nozzle and attachments …

installed in the air suction end of the shell….”); id. at 2:12-

19 (“The non-smokable electronic spray cigarette, which is

an integrated assembly resembling a cigarette holder,

includes a shell, … wherein an electro-thermal vaporization

nozzle arranged within an air suction end of the shell….”);

- 30 -

id. at Fig. 3; id. at 8:24-25 (“thread 403, … nozzle 405”); id.

at 3:33-4:1 (“FIG. 3 is a schematic diagram of the structure

of the high temperature vaporization nozzle and the electric-

thermal element….”); id. at Fig. 9; id. at 9:20 (“electro-

thermal vaporization nozzle 317”).

Ex. 1004 at 2:41-3:2 (“Within the inner ring 29 is a threaded

electric socket 30 and forwardly thereof a battery cavity 31

for detachably receiving a battery 32 having an inner contact

33 and an outer contact 34 with a contact strip 35 between

the inner contact 33 and the socket 30. The heating

element is preferably a vacuum tube or bulb 36 having a

screw plug 37 for detachable engagement with the socket

30. The screw plug 37 has an end contact 38 adapted to

close against the outer battery contact 34. The bulb or tube

36, similar to a light bulb, is preferably elongated and of a

diameter to fit within the insert 22 in such manner as to

provide an elongated heating passage throughout the length

of the bulb and around the complete circumference of the

bulb 36. … When the bulb 36 is assembled to the socket 30

its tip end 38 will engage the inner battery contact 33 and

complete the circuit through the filament of the bulb 36 by

the contact strip 35.”); id. at Fig. 2; id. at 2:47-3:2 (“screw

plug 37 … contact strip 35”); id. at Fig. 9; id. at 2:71-3:2

(“socket 30 … contact strip 35”); id. at Fig. 6; id. at 1:50-51

(“FIGURE 6 is a similar view taken on the line 6-6 in

FIGURE 2.”); id. at 2:44 (“contact strip 35”).

[D] with the screw

thread electrode

having a through

hole centered on the

screw thread

electrode, and

Hon ’134 discloses the screw thread electrode having a

through hole centered on the screw thread electrode (“thread

403” around “nozzle 405” or “electro-thermal vaporization

nozzle 317”).

Ex. 1003 at 2:28-33 (“The control circuit provides starting

current to the electric heater and the pump within the

vaporization nozzle, so as to pump the nicotine solution in

the solution storage container into the vaporization nozzle.

Under the high temperature and the high frequency

oscillation wave in the vaporization nozzle, the liquid is

rapidly vaporized, ejected out and then condensed to form a

puff of smoke.”); id. at 3:8-14 (“The vaporization nozzle is

- 31 -

connected to an electro-thermal drive pump with a metering

cavity, and further connected to a solution storage container

that is filled with nicotine solution and made of tear-resistant

silicon [sic] gel. Alternatively, the pump with a metering

cavity can be replaced by a meter and an electromagnetic

valve or an electro-thermal valve. With the provision of

compression air or a super elastic member on the solution

storage container, the stored liquid flows out

automatically.”); id. at 5:11-19 (“The nozzle 17 is a

tubule…. An electric heating element is provided within

the nozzle, and the shapes of the electric heating element

and the cavity of the nozzle are designed to facilitate

vaporization and ejection of liquid. … The vaporization

nozzle 17 may be in the shape of straight tube….”); id. at

Fig. 3; id. at 8:24 (“thread 403, … nozzle 405”); id. at 3:33-

4:1.

Id. at Fig. 9; id. at 9:25-30 (describing Fig. 9: “When a

control signal is applied to the electronic valve, the






vaporized and condensed to form aerosols.”); id. at 9:20

(“electro-thermal vaporization nozzle 317”).

[E] with the

atomizer in physical

contact with the

liquid storage; and

Hon ’134 discloses the atomizer in physical contact with the

liquid storage (“vaporization nozzle … is connected with a

liquid storage container which contains nicotine solution …

via … a valve connected with a metering cavity”).

Id. at 2:12-21 (“The non-smokable electronic spray

cigarette, which is an integrated assembly resembling a

cigarette holder, includes …, wherein an electro-thermal

vaporization nozzle … is connected with a liquid storage

container which contains nicotine solution … via … a

valve connected with a metering cavity.”); id. at 3:7-12

(“The cigarette includes an electro-thermal vaporization

nozzle. The vaporization nozzle is connected to an electro-

thermal drive pump with a metering cavity, and further

- 32 -

connected to a solution storage container that is fil1ed with

nicotine solution and made of tear-resistant silicon [sic] gel.

Alternatively, the pump with a metering cavity can be

replaced by a meter and an electromagnetic valve or an

electro-thermal valve.”); id. at Fig. 9; id. at 9:20-30

(describing Fig. 9: “[T]he electro-thermal vaporization

nozzle 317, the electronic valve 311 connected with the

metering cavity 320, and the liquid storage container 313

form a liquid transmission passage. … When a control

signal is applied to the electronic valve, the electronic valve

is activated, and the solution with nicotine enters the

metering cavity from the liquid storage container under

pressure and pushes a piston so as to allow a constant



vaporized and condensed to form aerosols.”).

[F] a flow

passageway leading

from the atomizer to

an outlet of the

atomizer assembly

housing.

Hon ’134 discloses a flow passageway leading from the

atomizer to an outlet of the atomizer assembly housing (“the

liquid is rapidly vaporized, ejected out and then condensed

to form a puff of smoke”).

Id. at 2:30-33 (“Under the high temperature and the high

frequency oscillation wave in the vaporization nozzle, the


to form a puff of smoke.”); id. at 6:18-21 (“The stored

solution is then pumped to the nozzle 17 by the solution

storage container 13. On the electric heating element of the

nozzle 17, the nicotine solution is then vaporized into high

temperature vapor which is subsequently ejected from the

opening end.”); id. at 6:28-30 (“The effect of integrated

atomization will allow the aerosol droplets … to enter into

the alveolus easily and be absorbed.”); id. at 6: 28-30 (“The

effect of integrated atomization will allow the aerosol

droplets with diameters of 0.2-3 um to enter into the 30

alveolus easily and be absorbed.”); id. at Fig. 9; id. at 9:20

(“electro-thermal vaporization nozzle 317”).

2. The atomizer

assembly for an

electronic cigarette

See claim 1 supra.

- 33 -

of claim 1 with

the atomizer

electrically

connected to the

screw thread

electrode.

Hon ’134 and Gilbert disclose the atomizer electrically

connected to the screw thread electrode (“thread 403” from

Hon ’134 as implemented by “screw plug 37” from Gilbert).

Ex. 1003 at Fig. 3; id. at 8:24 (“thread 403, … nozzle 405”);

id. at 3:33-4:1 (“FIG. 3 is a schematic diagram of the

structure of the high temperature vaporization nozzle and

the electric-thermal element….”).

Ex. 1004 at 2:41-3:2 (“When the bulb 36 is assembled to the

socket 30 its tip end 38 will engage the inner battery contact

33 and complete the circuit through the filament of the

bulb 36 by the contact strip 35.”); id. at Figs. 2 and 9.

See element C of claim 1.

3. The atomizer

assembly of claim 2

with

See claim 2 supra.

the atomizer

comprising a heater

coil.

Hon ’134 discloses the atomizer comprising a heater coil

(“[t]he electric heating element … may be made of wires …

and may be in the shape of … [a] single spiral [or] double

spiral”).

Ex. 1003 at 5:21-25 (“The electric heating element

arranged within the vaporization nozzle 17 may be made of

wires of nickel chromium alloy, iron chromium aluminum

alloy, stainless steel, gold, platinum, tungsten molybdenum

alloy, etc., and may be in the shape of straight line, single

spiral, double spiral, cluster or spiral cluster, wherein the

straight line and cluster are preferred.”); id. at Fig. 3; id. at

8:24 (describing Fig. 3: “heating wire 402”).

3. Claims 6, 16, and 17

Claim 6 depends on claim 1 and requires the screw thread electrode on a

first end of the atomizer assembly housing and the liquid storage inserted into a

- 34 -

second end of the atomizer assembly opposite from the first end. In Fig. 9, Hon

’134 shows that the atomizer at one end of the housing and the liquid storage

inserted with a “threaded opening 323” at the other end. Ex. 1003 at 9:20-10:5; id.

at Fig. 9; Nayfeh Decl. at ¶ 60.


highlighted in red, liquid storage (313) highlighted in blue, battery (305)

highlighted in purple, and threaded connection of liquid storage (323) circled in

yellow). Hon ’134 further illustrates in Fig. 1 that the housing can be divided by

“threads 7.” Nayfeh Decl. at ¶ 61.


highlighted in red, liquid storage (313) highlighted in blue, battery (305)

- 35 -

highlighted in purple, and the threaded connection of shell (7) highlighted in

orange).

Implementing “threads 7” in Fig. 9 would allow the user to access and

replace both “pressure vessel 321” containing the liquid storage and “disposable

battery” (305). Ex. 1003 at 7:15-16; id. at 3:3-5; id. at 10:4; id. at Fig. 9; Nayfeh

Decl. at ¶ 62. This combination of features would lead to a configuration similar to

the following, which was created for demonstration purposes only.

Ex. 1003 at Fig. 9 (left portion removed); id. at (“threads 7” excerpted and

positioned as suggested in Fig. 1 (on the left of the remaining device), highlighted

in orange). As depicted, the atomizer and the liquid storage are at opposite ends of

the assembly (or housing). Nayfeh Decl. at ¶ 62.

Claim 16 is independent and adds nothing that distinguishes it from claim 6

plus the preamble and elements A-C, E, F of claim 1, and is therefore disclosed by

Hon ’134 and Gilbert as discussed above. Nayfeh Decl. at ¶¶ 63-69.

- 36 -

Claim 17 depends on claim 16 and adds nothing that distinguishes it from

claim 16 plus element D of claim 1, and is therefore disclosed by Hon ’134 and

Gilbert as discussed above. Nayfeh Decl. at ¶ 70.


element of claims 6, 16, and 17 is found in Hon ’134 and Gilbert, and how the

claims read on the combination of Hon ’134 and Gilbert.


6. The atomizer

assembly for an


claim 1 with

See claim 1 supra.

the screw thread

electrode on a first

end of the atomizer

assembly housing

and the liquid

storage inserted into

a second end of the

atomizer assembly

opposite from the

first end.

Hon ’134 discloses the screw thread electrode on a first end

of the atomizer assembly housing (“vaporization nozzle and

attachments”) and the liquid storage inserted into a second

end of the atomizer assembly opposite from the first end

(“liquid storage container 313” connected with “seal

threaded-opening 323”).

Ex. 1003 at Fig. 9; id. at 9:20-10:5 (describing Fig. 9:

“vaporization nozzle 317, … liquid storage container 313 …

cell 305, pressure vessel 321, … seal threaded-opening

323”); id. at 9:22-25 (“A gas vessel filled with high-pressure

nitrogen is arranged around the periphery of the liquid

storage container to exert pressure thereon to facilitate the

transmission of the liquid.”); id. at Fig. 1; id. at 7:15-16

(describing Fig. 1: “shell 6 … threads 7”); id. at 3:3-5 (“The

cell which provides power … can be a disposable battery or

a rechargeable battery.”).

16. An atomizer

assembly for an


comprising:



assembly”).

Id. at Abstract; id. at 2:12-22; id. Fig. 9. See the preamble to

- 37 -

claim 1 supra.

[A] an atomizer

assembly housing

containing an

atomizer,



attachments”).

Ex. 1003 at Abstract; id. at 2:12-22; id. at 9:20-21; id. at

9:25-30; id. at 8:25; id. at 3:33-4:1; id. at 4:15-16; id. at

10:9-10; id. at Figs. 3, 9, and 10. See also id. Figs. 1, 7, and

8. See element A of claim 1 supra.

[B] liquid storage,

and




assembly housing.

Ex. 1003 at Abstract; id. at 2:12-21; id. at Fig. 9; id. at 9:22.

See element B of claim 1 supra.

[C] a screw thread

electrode on a first

end of the atomizer

assembly housing,

Hon ’134 and Gilbert disclose a screw thread electrode on a

first end of the atomizer assembly housing (“thread 403”

from Hon ’134 as implemented by “screw plug 37” from

Gilbert)

Ex. 1003 at Abstract; id. at 2:12-19; id. at Fig. 3; id. at 8:24-

25; id. at 3:33-4:1; id. at Fig. 9; id. at 9:20.

Ex. 1004 at 2:41-3; id. at Fig. 2; id. at 2:47-3:2; id. at Fig. 9;

id. at 2:71-3:2; id. at Fig. 6; id. at 1:50-51; id. at 2:44.

See element C of claim 1 supra.

[D] the atomizer in

physical contact

with the liquid

storage, and





Ex. 1003 at 2:12-21; id. at 3:7-12; id. at Fig. 9; id. at 9:20-

30. See element E of claim 1 supra.

[E] the liquid

storage inserted into

a second end of the

atomizer assembly

opposite from the

Hon ’134 discloses the liquid storage inserted into a second

end of the atomizer assembly (“liquid storage container

313” connected with “seal threaded-opening 323”) opposite

from the first end (“vaporization nozzle and attachments”).

- 38 -

first end; and Ex. 1003 at Fig. 9; id. at 9:20-10:5; id. at 9:22-25; id. at Fig.

1; id. at 7:15-16; id. at 3:3-5. See claim 6 supra.

[F] a flow

passageway leading


an outlet of the

atomizer assembly

housing.





Ex. 1003 at 2:30-33; id. at 6:18-21; id. at 6:28-30; id. at 6:

28-30; id. at Fig. 9; id. at 9:20. See element F of claim 1

supra.

17. The atomizer

assembly of claim

16 further including

See claim 16 supra.

a through-hole

centered in the

screw thread

electrode.

Hon ’134 discloses a through-hole centered in the screw

thread electrode (“thread 403” around “nozzle 405” or

“electro-thermal vaporization nozzle 317”).

Ex. 1003 at 2:28-33; id. at 3:8-14; id. at 5:11-19; id. at Fig.

3; id. at 8:24; id. at 3:33-4:1; id. at Fig. 9; id. at 9:25-30; id.

at 9:20. See element D of claim 1 supra.

4. Claims 7, 10, 11, 13-15, 18-20

Claim 7 depends on claim 1 and requires the through hole be substantially

aligned with the atomizer. Hon ’134 explains that the “vaporization nozzle” may

be a “straight tube,” which is depicted in Fig. 3 as actually aligned with the through

hole in “thread 403.” Ex. 1003 at 5:18-19; id. at Fig. 3; Nayfeh Decl. at ¶ 75.

- 39 -


the “thread 403” and “nozzle 405”) indicated in green).


claim 7, and is therefore disclosed by Hon ’134 and Gilbert as discussed above.



plus the preamble and elements A-F of claim 1, and is therefore disclosed by Hon

’134 and Gilbert as discussed above. Nayfeh Decl. at ¶¶ 77-83. Claim 13 depends

on claim 11 and adds nothing that distinguishes it from claim 11 plus element D of

claim 1, and is therefore disclosed by Hon ’134 and Gilbert as discussed above.



plus the preamble and elements A-D, and F of claim 1, and is therefore disclosed

by Hon ’134 and Gilbert as discussed above. Nayfeh Decl. at ¶¶ 85-91. Claim 15

depends on claim 14 and adds nothing that distinguishes it from claim 14 plus

- 40 -

element D of claim 1, and is therefore disclosed by Hon ’134 and Gilbert as

discussed above. Nayfeh Decl. at ¶ 92.


claim 16 plus claims 7 and 10, and is therefore disclosed by Hon ’134 and Gilbert

as discussed above. Nayfeh Decl. at ¶ 93.


plus the preamble and elements A-F of claim 1, and is therefore disclosed by Hon

’134 and Gilbert as discussed above. Nayfeh Decl. at ¶¶ 94-100. Claim 20

depends on claim 19 and adds nothing that distinguishes it from claim 19 plus

element D of claim, and is therefore disclosed by Hon ’134 and Gilbert as

discussed above. Nayfeh Decl. at ¶ 101.


element of claims 7, 10, 11, 13-15, 18-20 is found in Hon ’134 and Gilbert, and

how the claims read on the combination of Hon ’134 and Gilbert.


7. The atomizer

assembly for an


of claim 1 with

See claim 1 supra.

the through hole

substantially aligned

with the atomizer.

Hon ’134 discloses the through hole substantially aligned

with the atomizer.

Ex. 1003 at 5:18-19 (“The vaporization nozzle 17 may be in

the shape of [a] straight tube….”); id. at Fig. 3; id. at 8:24-

25 (“thread 403, … nozzle 405”); id. at 3:33-4:1.

- 41 -

10. The atomizer

assembly of claim 1

with

See claim 1 supra.

the through-hole

aligned with the

atomizer.

Hon ’134 discloses the through-hole aligned with the

atomizer.

Ex. 1003 at 5:18-19; id. at Fig. 3; id. at 8:24-25; id. at 3:33-

4:1. See claim 7 supra.

11. An atomizer

assembly for an


comprising:



assembly”).


claim 1 supra.

[A] an atomizer

assembly housing

containing an

atomizer and



attachments”).





[B] liquid storage; Hon ’134 discloses a liquid storage (“nicotine solution and



assembly housing.



[C] a screw thread

electrode on one

end of the atomizer

assembly housing;

Hon ’134 discloses a screw thread electrode on one end of

the atomizer assembly housing (“thread 403” from Hon ’134

as implemented by “screw plug 37” from Gilbert).





- 42 -


[D] a through-hole

in the screw thread

electrode


with the atomizer;

Hon ’134 discloses a through-hole in the screw thread

electrode (“thread 403” around “nozzle 405” or “electro-

thermal vaporization nozzle 317”) substantially aligned with

the atomizer.


3; id. at 8:24-25; id. at 3:33-4:1; id. at Fig. 9; id. at 9:25-30;

id. at 9:20; id. at 5:18-19. See element D of claim 1 and

claim 7 supra.

[E] the atomizer

electrically

connected to the

screw thread

electrode and with

the atomizer in

physical contact

with the liquid

storage; and

Hon ’134 discloses the atomizer electrically connected to

the screw thread electrode (“thread 403” from Hon ’134 as

implemented by “screw plug 37” from Gilbert) and with the

atomizer in physical contact with the liquid storage

(“vaporization nozzle … is connected with a liquid storage

container which contains nicotine solution … via … a valve

connected with a metering cavity”).

Ex. 1003 at Fig. 3; id. at 8:24; id. at 3:33-4:1; id. at 2:12-21;

id. at 3:7-12; id. at Fig. 9; id. at 9:20-30.

Ex. 1004 at 2:41-3:2; id. at Figs. 2 and 9.

See element E of claim 1 and claim 2 supra.

[F] a flow

passageway leading


an outlet of the

atomizer assembly

housing.





Ex. 1003 at 2:30-33; id. at 6:18-21; id. at 6:28-30; id. at

6:28-30; id. at Fig. 9; id. at 9:20. See element F of claim 1

supra.

13. The atomizer

assembly of claim

11 with

See claim 11 supra.

the through-hole

centered in the

screw thread

electrode.




- 43 -




14. An atomizer

assembly for an


comprising:



assembly”).


claim 1 supra.

[A] an atomizer

assembly housing

containing an

atomizer and



attachments”).





[B] liquid storage; Hon ’134 discloses a liquid storage (“nicotine solution and



assembly housing.



[C] a screw thread

electrode on one

end of the atomizer

assembly housing,









[D] with the

atomizer electrically

connected to the

screw thread

Hon ’134 discloses the atomizer electrically connected to

the screw thread electrode (“thread 403” from Hon ’134 as

implemented by “screw plug 37” from Gilbert).

- 44 -

electrode; Ex. 1003 at Fig. 3; id. at 8:24 (“thread 403, … nozzle 405”);

id. at 3:33-4:1 (“FIG. 3 is a schematic diagram of the

structure of the high temperature vaporization nozzle and

the electric-thermal element….”).

Ex. 1004 at 2:41-3:2 (“When the bulb 36 is assembled to the

socket 30 its tip end 38 will engage the inner battery contact

33 and complete the circuit through the filament of the

bulb 36 by the contact strip 35.”); id. at Figs. 2 and 9.

See claim 2 supra.

[E] a through-hole

in the screw thread

electrode


with the atomizer;

and

Hon ’134 discloses a through-hole in the screw thread

electrode (“thread 403” around “nozzle 405” or “electro-


the atomizer.



at 9:20; id. at 5:18-19. See element D of claim 1 and claim

7 supra.

[F] a flow

passageway from

the atomizer to an

outlet of the

atomizer assembly

housing.

Hon ’134 discloses a flow passageway from the atomizer to

an outlet of the atomizer assembly housing (“the liquid is

rapidly vaporized, ejected out and then condensed to form a

puff of smoke”).



supra.

15. The atomizer

assembly of claim

14 with

See claim 14 supra.

the through-hole

centered in the

screw thread

electrode







- 45 -

18. The atomizer

assembly of claim

16 with

See claim 16 supra.

the through-hole

aligned with the

atomizer.

Hon ’134 discloses the through-hole aligned with the

atomizer.

Ex. 1003 at 5:18-19; id. at Fig. 3; id. at 8:24-25; id. at 3:33-

4:1. See claims 7 and 10 supra.

19. An atomizer

assembly for an


comprising:



assembly”).


claim 1 supra.

[A] an atomizer

assembly housing

containing an

atomizer,



attachments”).





[B] liquid storage,

and




assembly housing.



[C] a screw thread

electrode on one

end of the atomizer

assembly housing,








- 46 -


[D] with the screw

thread electrode

having a through

hole substantially

aligned with the

atomizer, and,

Hon ’134 discloses a the screw thread electrode having a

through hole (“thread 403” around “nozzle 405” or “electro-


the atomizer.



at 9:20; id. at 5:18-19. See element D of claim 1 and claim

7 supra.

[E] with the

atomizer in physical

contact with the

liquid storage; and





Ex. 1003 at 2:12-21; id. at 3:7-12; id. at Fig. 9; id. at 9:20-

30. See element E of claim 1 supra.

[F] a flow

passageway leading


an outlet of the

atomizer assembly

housing.







supra.

20. The atomizer

assembly of claim

19 with

See claim 19 supra.

the through-hole

centered in the

screw thread

electrode.

Hon ’134 discloses the through-hole centered in the screw






- 47 -

5. Claims 8 and 9

Claim 8 depends on claim 7 and requires the through hole in the screw

thread electrode, the passageway and the outlet comprising a flow path through the

atomizer assembly housing passing through the atomizer. Hon ’134 discloses how

fluid flows from the liquid storage to the atomizer where it is atomized, then from

the atomizer to an outlet, and on to the user’s mouth. Ex. 1003 at 9:25-30 (“When

a control signal is applied to the electronic valve, … allow[s] a constant volume …

to enter the vaporization nozzle … and be vaporized and condensed to form

aerosols.”); id. at 2:28-33 (“[T]he liquid is rapidly vaporized, ejected out and then

condensed to form a puff of smoke.”); id. at 6:28-30 (“[T]he aerosol droplets …

enter into the alveolus….”); id. at Figs. 3 and 9; Nayfeh Decl. at ¶ 103. Therefore,

Hon ’134 discloses claim 8. Nayfeh Decl. at ¶¶ 102-103.

Claim 9 depends on claim 1 and requires part of the flow passageway

between the liquid storage and an inside wall of the housing. As discussed above

regarding element F of claim 1, the flow passageway leads from the atomizer to an

outlet from the housing. Hon ’134 explains that fluid flows from the liquid

storage, through the atomizer, and up to an outlet—all of which is within the

housing. Ex. 1003 at 9:25-30; id. at 2:12-22; id. at 2:28-33; id. at Figs. 3 and 9;

Nayfeh Decl. at ¶ 104. Therefore, Hon ’134 discloses claim 9.

- 48 -


highlighted in red, liquid storage (313) highlighted in blue, flow passageway

(arrow from end of 317) indicated in green).


element of claims 8 and 9 is found in Hon ’134 and Gilbert, and how the claims

read on the combination of Hon ’134 and Gilbert.


8. The atomizer

assembly for an


of claim 7 with

See claim 7 supra.

the through hole in

the screw thread

electrode, the

passageway and the

outlet comprising a

flow path through

the atomizer

assembly housing

passing through the

atomizer.

Hon ’134 discloses the through hole in the screw thread

electrode (elements C and D of claim1), the passageway and

the outlet (element F of claim 1) comprising a flow path

through the atomizer assembly housing passing through the

atomizer.

Ex. 1003 at Fig. 9; id. at 9:25-30 (describing Fig. 9: “When

a control signal is applied to the electronic valve, the






vaporized and condensed to form aerosols.”); id. at 2:28-33

- 49 -

(“Under the high temperature and the high frequency

oscillation wave in the vaporization nozzle, the liquid is

rapidly vaporized, ejected out and then condensed to form

a puff of smoke.”); id. at 6:28-30 (“The effect of integrated

atomization will allow the aerosol droplets … to enter into

the alveolus easily and be absorbed.”).

See elements C, D, and F of claim 1 supra.

9. The atomizer

assembly of claim 1

with

See claim 1 supra.

part of the flow

passageway

between the liquid

storage and an

inside wall of the

housing.

Hon ’134 discloses part of the flow passageway (element F

of claim 1) between the liquid storage (element B of claim

1) and an inside wall of the housing (“in the vaporization

nozzle, the liquid is rapidly vaporized, ejected out and then

condensed to form a puff of smoke”).

Ex. 1003 at 2:12-33 (“The non-smokable electronic spray

cigarette, which is an integrated assembly resembling a

cigarette holder …, wherein an electro-thermal vaporization

nozzle arranged within an air suction end of the shell is

connected with a liquid storage container which contains

nicotine solution…. Under the high temperature and the

high frequency oscillation wave in the vaporization nozzle,

the liquid is rapidly vaporized, ejected out and then

condensed to form a puff of smoke.”); id. at 5:13-15 (“An

electric heating element is provided within the nozzle, and

the shapes of the electric heating element and the cavity of

the nozzle are designed to facilitate vaporization and

ejection of liquid.”); id. at 6:28-30 (“The effect of integrated

atomization will allow the aerosol droplets with diameters of

0.2-3 um to enter into the alveolus easily and be

absorbed.”); id. at Fig. 9; id. at 9:20 (“electro-thermal

vaporization nozzle 317”); id. at 9:25-30 (describing Fig. 9:

“When a control signal is applied to the electronic valve, the


enters the metering cavity from the liquid storage

container under pressure and pushes a piston so as to

allow a constant volume of liquid at the other side of the

- 50 -

piston to enter the vaporization nozzle via the electronic

valve and be vaporized and condensed to form aerosols.”).

B. Ground 2: Claims 4, 5, 12 would have been obvious under

35 U.S.C. § 103 over Hon ’134, Gilbert, and Takeuchi.

1. Hon ’134, Gilbert, and Takeuchi

A POSA would have had reason to combine the teachings of Hon ’134,

Takeuchi, and Gilbert. Hon ’134’s atomizer controls the flow of fluid to the

“vaporization nozzle” with a series of small electric or mechanical components that

would be complex and expensive to manufacture, would be subject to failure, and

may draw electricity from the battery to operate. E.g., Ex. 1003 at 3:8-15; Nayfeh

Decl. at ¶¶ 105-107. Takeuchi’s design uses capillary movement of fluids through

porous materials. Ex. 1005 at 2:17-27; Nayfeh Decl. at ¶¶ 108-109. A POSA

would have recognized that Hon ’134’s design could have been improved using

Takeuchi’s capillary system. Nayfeh Decl. at ¶¶ 110-114.

Hon ’134’s design requires a variety of small components. Nayfeh Decl. at

¶¶ 105-107. In Fig. 9, for example, the atomizer includes “electronic valve 311

connected with the metering cavity 320, and the liquid storage container 313.” Ex.

1003 at 9:20-22; id. at 4:3-4; id. at 4:15-16; Nayfeh Decl. at ¶ 106.

- 51 -


highlighted in red, liquid storage (313) highlighted in blue). The “electronic valve

311” and “meeting cavity 320” have many parts, and at least the “electric valve

311” requires electricity. Ex. 1003 at 10:7-9 (“The silicon [sic] gel tube 406,

pressure-stopping plate 407, memory alloy wires 408, support 409, electrode lead

wire 410 and pressure spring 411 are shown in Fig. 4.”); id. at 10:9-10 (“The inlet

701, piston 702, micro hole of the piston 703, metering cavity 704, reset spring 705

and outlet 706 are shown in Fig. 10.”); Nayfeh Decl. at ¶ 106.

Ex. 1003 at Fig. 4 (left: “electric valve 311”); id. at Fig. 10 (right: “metering

cavity”). The “liquid storage container 313” is surrounded by a “gas vessel filled

- 52 -

with high pressure nitrogen” to force liquid into the atomizer. Ex. 1003 at 9:22-25;


The embodiments in the other figures have similar complexity. Fig. 1 shows

a “micro pump 11 (shown in Fig. 6),” Fig. 7 shows a “thermal drive pump 111 (see

Fig. 5),” and Fig. 8 shows a “pneumatic valve 220.” Ex. 1003 at 6:17-18; id. at

7:33; id. at 8:32; Nayfeh Decl. at ¶ 107.

Takeuchi offers a simplified way to move fluid from the liquid storage using

porous materials. Nayfeh Decl. at ¶ 108. Takeuchi explains that its “liquid

passageway” can have a heater around one end, like Hon ’134, and a porous

material inside (i.e., the “intercommunicating pore structure,” e.g., “foamed

structure” or “bundled fibers”). Ex. 1005 at 10:54; id. at 5:28-50; id. at 6:4-7; id. at

3:48-49; Nayfeh Decl. at ¶ 108.

- 53 -

One benefit of Takeuchi’s system is that it is much simpler—rather than all

the pumps, valves, and high-pressure gas of Hon ’134’s embodiments, Takeuchi

moves fluid with just a tube filled with a porous material. Nayfeh Decl. at ¶ 109.

The system works because fluid moves through the “intercommunicating pore

structure” by “capillary force,” which can even elevate fluid against the force of

gravity. Ex. 1005 at 3:41-50; Nayfeh Decl. at ¶ 109. In addition to being simpler,

and thus easier and cheaper to manufacture and less prone to breaking, Takeuchi’s

system could be more energy efficient: “[L]iquid … is supplied to the outlet end

portion of the liquid passageway by the capillary force. It follows that the flavor-

generating device of the present invention can be driven as a whole at a low

Ex. 1005 at Fig. 1 (liquid storage (313)

highlighted in blue, atomizer (including 317, 311,

320, and connecting tubes) highlighted in red)

Ex. 1005 at Fig. 3

Ex. 1005 at Fig. 14

- 54 -

energy.” Ex. 1005 at 2:17-27; Nayfeh Decl. at ¶ 109. A POSA would have

recognized at least the following compatibilities between Hon ’134 and Takeuchi:

Hon ’134 and Takeuchi both disclose and are directed to electronic

cigarettes. Ex. 1003 at 2:12-22; Ex. 1005 at 1:4-10; Nayfeh Decl. at ¶ 111.

Hon ’134 and Takeuchi both describe ways to move fluid from a storage

container to a heater. Ex. 1003 at 2:28-33; Ex. 1005 at 2:17-27; Nayfeh

Decl. at ¶ 112.

Hon ’134 and Takeuchi both describe a heater inside a tube to atomize the

fluid. Ex. 1003 at 5:21-25; Ex. 1005 at 8:19-21; Nayfeh Decl. at ¶ 113.

Due at least to these similarities, and to Takeuchi’s benefits, a POSA would

have had reason to use Takeuchi’s simpler, “energy efficient” porous liquid

passageway” in the place of Hon ’134’s connection between the liquid storage and

the “vaporization nozzle” with predictable results. KSR, 550 U.S. at 401; Nayfeh

Decl. at ¶ 114. “[I]f a technique has been used to improve one device, and a

person of ordinary skill in the art would recognize that it would improve similar

devices in the same way, using the technique is obvious unless its actual

application is beyond that person’s skill.” KSR, 550 U.S. at 417. Neither Hon

’134 nor Takeuchi employ any technique that they do not explain or would not

have been well-known to a POSA. Nayfeh Decl. at ¶ 114.

- 55 -

Combining Hon ’134 and Takeuchi in the manner described herein would

lead to a configuration similar to the following, which was created for

demonstration purposes only. Nayfeh Decl. at ¶ 115.

As depicted in Takeuchi’s Fig. 14, the “intercommunicating pore structure 301”

extends to the end of Hon ’134’s “vaporization nozzle.” Nayfeh Decl. at ¶ 115.

When combining Hon ’134 and Takeuchi in the manner described above, a

POSA would still have had reason to implement the screw thread electrode as

suggested in Hon ’134 and described in Gilbert. Nayfeh Decl. at ¶ 116. The

“thread 403” in Hon ’134’s Fig. 3 would remain a viable way to connect the

heating wire to the electric circuit, and Gilbert’s description would be as

applicable. Nayfeh Decl. at ¶ 116. Using Hon ’134’s Fig. 3, the combination of

Hon ’134 and Takeuchi would lead to a configuration similar to the following,

which was created for demonstration purposes only. Nayfeh Decl. at ¶ 116.

Ex. 1005 at Fig. 14 Ex. 1003 at Fig. 9 (modified, liquid storage (313)

highlighted in blue); Ex. 1005 at Fig. 1 (“liquid

passageway” excerpted, highlighted in red/orange)

- 56 -

Ex. 1003 at Fig. 3 (excerpted, “vaporization nozzle” (403, 404, 405) highlighted);

Ex. 1005 at Fig. 14 (repeated in background). Given that nothing in Hon ’134,

Gilbert, or Takeuchi suggests that they cannot be utilized together, and given that a

POSA would have recognized the benefits of doing so, a POSA would have had

reason to combine Hon ’134, Gilbert, and Takeuchi. Nayfeh Decl. at ¶ 116.

2. Claims 4, 5 and 12

Claim 4 depends on claim 1 and adds the atomizer including a heater coil

wound around a porous component. As discussed in Part VIII.B.1 above, Hon

’134 would have given a POSA a reason to design a simpler, more energy efficient

device and Takeuchi offers a simpler way to more efficiently move liquid.

Specifically, Takeuchi discloses a “flavor-generating device for … simulated

smoking” that moves liquid to a heater via “capillary force” using a

“intercommunicating pore structure 302” that extends to the end of the

“vaporization nozzle.” Ex. 1005 at Abstract; id.at 1:4-6; id. at 10:50-59; id. at Fig.

14; Nayfeh Decl. at ¶¶ 24-25. If the coils lie within the “nozzle 405” against its

- 57 -

inner surface, as shown in Hon ’134’s Fig. 3, they encircle the porous material that

fills the central region of the tube. Nayfeh Decl. at ¶ 118. Furthermore, Hon ’134

discloses that the heating wire discussed above regarding claim 3 can be “arranged

outside of the nozzle” as a “spiral.” Ex. 1003 at 5:21-25; id. at 6:2-4; id. at Figs. 3

and 9; Nayfeh Decl. at ¶ 119. As combined, Takeuchi’s “intercommunication pore

structure 301” would fill the space inside Hon ’134’s “vaporization nozzle,” and

can have a wire wound around it. Nayfeh Decl. at ¶ 119. Therefore, Hon ’134 and

Takeuchi disclose the additional requirements of claim 4.

Claim 5 depends on claim 4 and adds that the porous component includes a

fiber material. Takeuchi explains that its “intercommunicating pore structure” can

“include … bundled fibers, but should not be limited thereto.” Ex. 1005 at 3:42-

50; Nayfeh Decl. at ¶ 120. Therefore, Takeuchi discloses the additional

requirements of claim 5. Claim 12 depends on claim 11 and adds nothing that

distinguishes it from claim 11 plus claim 4, and is therefore disclosed by Hon ’134,

Gilbert, and Takeuchi. Nayfeh Decl. at ¶ 121.


element of claims 4, 5,and 12 is found in Hon ’134, Gilbert, or Takeuchi, and how

the claims read on the combination of Hon ’134, Gilbert, and Takeuchi.


4. The atomizer

assembly for an


See claim 1 supra.

- 58 -

of claim 1 with

the atomizer

including a heater

coil wound around a

porous component.

Hon ’134 discloses the atomizer including a heater coil

wound around the atomizer (“heating element … may be

made of wires … in the shape of … single spiral [or] double

spiral,” which can be “arranged outside of the nozzle”).

Ex. 1003 at 5:21-25 (“The electric heating element arranged

within the vaporization nozzle 17 may be made of wires …

and may be in the shape of straight line, single spiral,

double spiral, cluster or spiral cluster, wherein the straight

line and cluster are preferred.”); id. at 6:2-4 (“Alternatively,

the materials mentioned above can be arranged outside of

the nozzle in any of the ways mentioned above”); id. at

5:18-19 (“The vaporization nozzle 17 may be in the shape of

straight tube….”).

Takeuchi discloses that the atomizer may contain a porous

component (“intercommunicating pore structure 302,” such

as an “open-cell foamed structure”).

Ex. 1005 at 1:4-6 (“The present invention relates to a flavor-

generating device for enjoying inhalation of flavor or for

enjoying simulated smoking, and more particularly, to a

flavor-generating device for generating flavor which is to be

inhaled by a user by heating a liquid[] flavor source without

relying on combustion.”); id. at Fig. 1; id. at 5:43-46

(describing Fig. 1: “[W]here the device is used as a

simulated smoking article, it is possible for the liquid flavor

source 34 to contain tobacco components such as tobacco

extracts and a tobacco smoke condensate.”); id. at 2:51-52

(“FIG. 1 is a sectional view of a flavor-generating device

according to one embodiment of the present invention….”);

id. at 4:26-35 (“FIG. 1 show the construction of a flavor-

generating device 10 according to one embodiment of the

present invention. … [T]he upper chamber 121 is used as a

gas passageway 20 for forming a gaseous stream of a flavor

which is to be inhaled by a user. .”); id. at 5:28-50 (“[T]he

liquid container 32 housing a liquid flavor source 34 is fixed

within the lower chamber 122 of the casing 12. … The

capillary tube 36 for transporting the liquid flavor source by

- 59 -

the capillary force is inserted within the liquid container.

The capillary tube 36 defines a liquid passageway 37 for the

liquid flavor source”); id. at Abstract (“The liquid

passageway transports the liquid flavor source therethrough

by capillary force.”); id. at 6:4-7 (“The upper end portion of

the capillary tube 36 protrudes into the upper chamber 121

of the casing 12 … and is equipped with the heater 42

serving to gasify the liquid flavor source 34.”); id. at Fig.

14; id. at 10:50-59 (“FIG. 14 is a cross-sectional view

showing another embodiment of the liquid passageway for

a liquid flavor source used in a flavor-generating device

according to the invention. In this case, a liquid

passageway 372 is constituted by the intercommunicating

pore structure 302 filled in an enclosure 301, as mentioned

earlier. The enclosure 301 may be provided by a tube, or

two plates arranged spaced apart from each other wherein

the both sides are sealed. In this embodiment, a heater or

heaters (not shown) may be arranged as in FIG. 1, 10 or

11.”); id. at 3:41-50 (“The intercommunicating pore

structure refers to a structure having intercommunicating

voids or pores through which the liquid may be elevated

from the inlet of the passageway which is in fluid

communication with the liquid flavor source contained in

the liquid container to the outlet of the passageway by the

capillary force. Representative examples of the structure

include open-cell foamed structure, … but should not be

limited thereto.”).

5. The atomizer

assembly for an


of claim 4 where

See claim 4 supra.

the porous

component includes

a fiber material.

Takeuchi discloses that the porous component includes a

fiber material (“bundled fibers”).

Ex. 1005 at 3:42-50 (“The intercommunicating pore

structure refers to a structure having intercommunicating

voids or pores…. Representative examples of the structure

include … bundled fibers, but should not be limited

thereto.”).

- 60 -

12. The atomizer

assembly for an


of claim 11 with

See claim 11 supra.

the atomizer

including a heater

coil wound around a

porous component.

Hon ’134 discloses the atomizer including a heater coil

wound around the atomizer (“heating element … may be

made of wires … in the shape of … single spiral [or] double

spiral,” which can be “arranged outside of the nozzle”).

Ex. 1003 at 5:21-25; id. at 6:2-4; id. at 5:18-19.

Takeuchi discloses that the atomizer may contain a porous

component (“intercommunicating pore structure 302,” such

as an “open-cell foamed structure”).

Ex. 1005 at 1:4-6; id. at 5:43-46; id. at Fig. 1; id. at 2:51-52;

id. at 4:26-35; id. at 5:28-50; id. at 6:4-7; id. at Fig. 14; id. at

10:50-59; id. at 3:41-50.

See claim 4 supra.

IX. CONCLUSION

For the reasons given above, Petitioners respectfully request inter partes

review of U.S. Patent No. 8,863,752, claims 1-20, under 35 U.S.C. § 311 and 37

C.F.R. § 42.101.

Dated: May 29, 2015 Respectfully submitted,

/James H. Morris/

James H. Morris (Reg. No. 34,681)

Edmund J. Walsh (Reg. No. 32,950)

WOLF, GREENFIELD & SACKS, P.C.

600 Atlantic Ave.

Boston, MA 02210-2206

Tel: 617-646-8000/Fax: 617-646-8646

- 61 -

CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)

I certify that on May 29, 2015, I will cause a copy of the foregoing

document, including any exhibits or appendices referred to therein, to be served via

USPS Priority Express Mail upon the following:

PERKINS COIE LLP - LOS General

POST OFFICE BOX 1247

SEATTLE WA 98111-1247

Date: May 29, 2015 /James H. Morris/

James H. Morris (Reg. No. 34,681)

filed on behalf of petitioners paper no. by: james h...

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