inter partes reviews (“ipr’s”)nationaldocketing.org/resources/documents/2014... · inter...

Introduction to DocketingInter Partes Reviews(“IPR’s”)

Ashley CampbellU.S. Filing SpecialistMorrison & Foerster LLP

Agenda

• Inter Partes Review Basics

• Trial Timeline and Docketing

• Exemplar Documents

• Brief PRPS overview

2

Inter Partes Review Basics

3

Post Grant Proceedings

• Inter Partes Review • Post Grant Review• Covered Business Method

4

Key Terms• Inter Partes Review (IPR): ▫ Introduced by AIA on September 16, 2012▫ Procedure to challenge the validity of patent claims

• Parties▫ Petitioner / Patent Owner

• Patent Trial and Appeal Board (PTAB):▫ Governing body of trial process

• Patent Review Processing System (PRPS): ▫ The Board’s e-filing and case management system

(like PACER)

5

Inter Partes Review (IPR) • Intended to be quicker, more efficient, and less

expensive for post-grant patent challenges:• Faster to decide▫ Initial determination of specific grounds within 6

months from date of filing▫ Final decision within 12 months after institution (up to

18 for good cause)• Faster to appeal▫ Appealable to the Federal Circuit

6

Litigation-like Benefits

• “Real-time” interaction with Board during proceeding

• Limited Discovery (pros and cons)• Claim Construction• Depositions • Evidence objections / oppositions• Motions• Oral hearing

7

Trial Timeline and Docketing

8

Exemplar Trial Timeline (Overview)

9

Preliminary Stage

• Filing the Petition• Notice According Filing Date• Defects• Patent Owner Mandatory

Notices• Patent Owner Preliminary

Response• Awaiting Decision on

Petition

10

Notice of Filing DateNote: these have been arriving late (after 21 day due date

below)

Awaiting Notice of Filing Date

Notice of Filing DateIdentifying Defects

Petition

Response to Notice of Defects*5 days*

Patent Owner Mandatory Notices*21 Days from

Petition*

PO Preliminary Response (optional)*3 months from

Notice*

Preliminary Stage

Awaiting PTAB Decision on Petition

*6 Months from Notice*

11

Trial Stage (Instituted)

• Decision to Institute Trial for Inter Partes Review ▫ officially starts the Trial

• Board must complete within 3 months from the date of Patent Owner’s Preliminary Response

• Scheduling Order• Oral Hearing• Final Written Decision

12

Decision on Petition

Trial NOT Instituted

Request for RehearingRe Trial Institution

*30 days*

37 CFR 42.71(d)(2)

Trial Instituted

Conference Call (see Decision)

List of Motions 2 days prior to call

Objection to Evidence 10 business days from Decision

Request for Rehearing for any denied grounds

14 days from Decision

Motion to Submit Supplemental Information

1 month from Decision

Demonstrative Exhibits to be served

5 business days prior to hearing

Demonstrative Exhibits to be filed ‐ no later than day of hearing per CFR 42.70(b)

2 business days(best practice)

prior to hearing

Scheduling Order

Trial Stage

Joint Motion to Terminate Proceedings Judgment

Final Decision on Petition 13

Exemplar Documents

14

The Petition1

“Petition for Inter Partes Review”

• First filing• Begins the review process• Power of Attorney required• Must be filed within one year of the third party

being served with an infringement complaint by the patentee▫ Calendar date

15

Petition for Inter Partes Review

16

Notice According Filing Date andTime for Filing Patent Owner Preliminary Response 2

• Accords filing date • Assigns judge to manage proceeding• Addresses any defects or missing information• If there are defects:▫ Will accord filing date, but require an amended petition within 5

business days ▫ Will not accord filing date

17

Exemplar Notice (front page)

18

Exemplar Notice (page 2)

19

Exemplar Notice (last page)

20

Notice Identifying Defects 3

21

Notice Identifying Defects (c’d)

22

Patent Owner (PO) Mandatory Notices 4

• Due 21 days from the filing of the Petition• The Patent Owner’s first filing• Mandatory Notices (usually one document):▫ Real party of interest▫ Related matters▫ Lead and backup counsel

• Power of Attorney

23

Patent Owner (PO) Mandatory Notices

24


25


26

Preliminary Patent Owner Response(optional)• Due 3 months from date of Notice According

Filing Date• Patent Owner may also file an election to waive

the preliminary response in order to expedite the proceeding

• Or they can take no action at all

27

Decision to Institute Trial for Inter Partes Review 5

• Board must complete within 3 months from the date of Patent Owner’s Preliminary Response

• This officially starts the trial• Schedules the initial conference call for all parties▫ Both parties must submit a List of Motions two days prior

to the call• Additionally, Petitioner may file a Request for Rehearing

within 14 days of Decision for any grounds that were denied

• If Petition is not instituted, Petitioner has 30 days to file a Request for Rehearing on all grounds

28

Decision (front page)

29

Decision (some grounds denied)Petitioner has 14 days from date of Decision to file Request for Rehearing on denied grounds – 37 CFR 42.71(d)

30

Decision (Orders / Conference Call)

31

Scheduling Order 6(accompanies Decision)

• Sets forth 7 dates1. PO post-institution response to petition and motion to amend (default

4 months)2. Petitioner reply to PO response and opposition to amendment (default

2 months)3. PO reply to petitioner opposition (default 1 month)4. Petitioner motion for observation re cross-examination of reply

witness, motion to exclude evidence, request for oral argument (default 3 weeks)

5. PO response to observation, opposition to motion to exclude (default 2 weeks)

6. Reply to opposition to motion to exclude (default 1 week)7. Oral argument (set upon request)

32

Exemplar Scheduling Order (front page)

33

Exemplar Scheduling Order (Due Date Appendix)

34

Discovery, Motions, etc.(additional due dates will be listed in subsequent orders)

35

Evidence – Trial StageTrial Evidence / Exhibits(Declarations, Affidavits, Deposition Transcripts,

etc.)

37 CFR 42.63

Objection*5 business days from

date of service*

37 CFR 42.64(b)(1)

Response to Objection*10 business days from

Objection*

37 CFR 42.64(b)(2)

36

Motions– Trial Stage

Trial Motion(not listed in scheduling

order)

Opposition*1 month from date of

service*

37 CFR 42.25(a)

Reply to Opposition*1 month from Opposition*

37 CFR 42.25(a)

37

PTAB Decisions – Trial Stage

Trial PTAB Decision(any decision other than

“final”)

Request for Rehearing*14 days from date of

Decision*

42.71(d)(1)

38

Final PTAB Decision – Trial Stage

Final PTAB Decision

Request for Rehearing*30 days from date of

Decision*

42.71(d)(2)

39

Appeal to CAFC*63 days from date of

Decision*

How does it all end?

40

Final Decision

• Issued not more than 1 year from institution of trial

• Potentially closes case• Parties have 30 days to file Request for

Rehearing (to PTAB)• Parties have 63 days to file an Appeal (to the

CAFC)

41

Joint Motion to Terminate Proceedings

• Closes case• Most likely, the parties have entered a

settlement agreement

42

Judgment Request for Adverse Judgment• Closes case• Patent owner agrees to disclaim the claims at

issue

43

PRPS

• The Board’s e-filing and case management system (like PACER)

• http://www.uspto.gov/ip/boards/bpai/prps.jsp

44

Direct Link

45

Search by Case Number

46

Select Case

47

Review Documents• Sort by Filing Date or Paper Number from Notice• View Document• Open and docket accordingly

48

Resources• PTAB▫ http://www.uspto.gov/ip/boards/bpai/prps.jsp

• Quick Start Guide▫ http://www.uspto.gov/ip/boards/bpai/quick_start_g

uide_(03.08.13).pdf• Board Trial Rules and Practice Guide▫ http://www.uspto.gov/ip/boards/bpai/board_trial_r

ules_and_practice_guide.jsp

49

Questions?

50

i la-1212389

Patent No. 8,156,944

Petition For Inter Partes Review

UNITED STATES PATENT AND TRADEMARK OFFICE _______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD _____________

CB Distributors, Inc. and DR Distributors, LLC,

Petitioners

v.

Ruyan Investment (Holdings) Limited,

Patent Owner

Patent No. 8,156,944

Issue Date: April 17, 2012

Title: AEROSOL ELECTRONIC CIGARETTE

_______________

Inter Partes Review No. ______

____________________________________________________________

PETITION FOR INTER PARTES REVIEW

UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 et seq.

axc22

Highlight

axc22

Highlight

axc22

Highlight

axc22

Highlight

axc22

Highlight

TABLE OF CONTENTS

Page

ii la-1212389

I. NOTICES AND STATEMENTS ................................................................... 1

II. INTRODUCTION .......................................................................................... 3

III. THE ’944 PATENT ........................................................................................ 4

A. Background .......................................................................................... 4

B. Prosecution History .............................................................................. 7

1. Preliminary Amendments .......................................................................... 7

2. First Office Action and Response .............................................................. 8

3. Second Office Action, Response, and Allowance ..................................... 8

C. Related Inter Partes Reexamination .................................................... 9

1. Request For Reexamination And Office Action ........................................ 9

IV. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY ......... 11

A. Statutory Grounds For The Challenge Of Each Claim ...................... 11

B. Claim Construction............................................................................. 12

1. Broadest Reasonable Construction .......................................................... 12

2. Run-through Atomizing Chamber ........................................................... 12

C. Ground 1 – Anticipation of claims 1, 2, 5-8, 10, 33, and 35, 37,

and 38 By Liu ..................................................................................... 18

D. Ground 2 – Obviousness of Claim 20 Based on Liu .......................... 29

E. Ground 3 – Obviousness of Claims 3, 4, 12, 15, 17, and 26

Based On Liu In View Of Susa .......................................................... 30

F. Ground 4 – Obviousness of Claims 1-4, 8-12, 15-26, 33-34, 36,

and 38 Based on Hon ’494 In View of Liu ........................................ 36

G. Ground 5 – Obviousness of Claims 39-41 Based On Hon ’494

In View of Liu and Susa ..................................................................... 47

V. CONCLUSION ............................................................................................. 54

iii la-1212389

Exhibit List for Inter Partes Review of U.S. Patent No. 8,156,944

Exhibit Description Exhibit #

U.S. Patent No. 8,156,944 to Han 1001

Request for Certificate of Correction dated June 11, 2012 1002

WO 2007/131449 A1 to Hon 1003

CN Patent No. 2719043 1004

CN Patent Application No. 200620090805 1005

Certified English Translation of CN Patent Application No.

200620090805 dated October 6, 2011

1006

WO 2004/095955 A1 to Hon 1007

WO 2005/099494 A1 to Hon 1008

Certified English Translation of WO 2005/099494 A1 to Hon dated

June 17, 2013

1009

Office Action dated February 2, 2011 1010

Response to Office Action dated February 22, 2011 1011

Office Action dated April 12, 2011 1012

Response to Office Action dated October 12, 2011 1013

Inter Partes Reexamination Request dated September 13, 2012 1014

Order Granting Reexamination dated November 27, 2012 1015

axc22

Highlight

iv la-1212389

Office Action dated November 27, 2012 1016

Response to Office Action dated January 28, 2013 1017

Third Party Response dated February 27, 2013 1018

WO 2007/078273 A1 to Liu 1019

EP 0845220 A1 to Susa et al. 1020

1 la-1212389

Petitioners CB Distributors, Inc. and DR Distributors, LLC (“Petitioners”)

respectfully petition for inter partes review of claims 1-12, 15-26, and 33-41 of

U.S. Patent No. 8,156,944 (“the ’944 patent” (Ex. 1001)) in accordance with

35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.

I. NOTICES AND STATEMENTS

Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioners identify CB Distributors, Inc.

and DR Distributors, LLC as the real parties-in-interest.

Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioners identify the following related

inter partes reexamination and litigation involving the ’944 patent.

On September 13, 2012, a Request for Inter Partes Reexamination of the

’944 patent was filed by Fin Branding Group, LLC (“Fin”). On November 27,

2012, the PTO granted the Inter Partes Reexamination Request (Control No.

95/002,235) and issued an Office Action. The patent owner filed a Response to the

Office Action on January 28, 2013 and filed a Supplemental Amendment on

February 5, 2013. On February 27, 2013, Fin filed a Third Party Response. The

Inter Partes Reexamination is discussed in more detail in Section III, Part C,

below.

On June 22, 2012, Ruyan Investment (Holdings) Limited filed nine lawsuits

in the Central District of California asserting infringement of the ’944 patent:

Ruyan Investment (Holdings) Limited v. Sottera, Inc., No. CV12-5454; Ruyan

2 la-1212389

Investment (Holdings) Limited v. LOEC, Inc., No. CV12-5455; Ruyan Investment

(Holdings) Limited v. CB Distributors, Inc. and DR Distributors, LLC, No. CV12-

5456; Ruyan Investment (Holdings) Limited v. The Safe Cig, LLC, No. CV12-5462;

Ruyan Investment (Holdings) Limited v. Vapor Corp., No. CV12-5466; Ruyan

Investment (Holdings) Limited v. Fin Branding Group, LLC, No. CV12-5468;

Ruyan Investment (Holdings) Limited v. Barjan LLC, No. CV12-5470; Ruyan

Investment (Holdings) Limited v. Spark Industries, LLC, No. CV12-5471; Ruyan

Investment (Holdings) Limited v. Nicotek LLC, No. CV12-5477; Ruyan Investment

(Holdings) Limited v. Logic Technology Development LLC, No. CV12-5482.

All cases were consolidated for pre-trial purposes as Ruyan Investment

(Holdings) Limited v. Sottera, Inc., No. CV12-5454 on December 19, 2012. On

February 25, 2013 the Court stayed all proceedings in light of the inter partes

reexamination requested by Fin.

Pursuant to 37 C.F.R. § 42.8(b)(3), Petitioners identify the following counsel

and a power of attorney accompanies this Petition.

Lead Counsel Backup Counsel

David L. Fehrman

[email protected]

Registration No.: 28,600

MORRISON & FOERSTER LLP

707 Wilshire Blvd.

Mehran Arjomand

[email protected]



707 Wilshire Blvd.

3 la-1212389

Los Angeles, California 90017-3543

Tel: (213) 892-5601

Fax: (213) 892-5454

Los Angeles, California 90017

Tel: (213) 892-5630

Fax: (323) 210-1329

Pursuant to 37 C.F.R. § 42.8(b)(4), service information for lead and back-up

counsel is provided above.

Pursuant to 37 C.F.R. § 42.104(a), Petitioners certify that the ’944 patent is

available for inter partes review and that the Petitioners are not barred or estopped

from requesting an inter partes review challenging the patent claims on the

grounds identified in this Petition.

II. INTRODUCTION

The ’944 patent1 is directed to an aerosol electronic cigarette containing a

battery assembly, an atomizer assembly, a cigarette-solution storage area, and a

hollow shell. The atomizer assembly includes a “run-through atomizing chamber”

and an electric heating rod, which includes a cylinder with a heating wire wound

on the wall of the cylinder.

Section III of this Petition summarizes the ’944 patent and its prosecution

history. Section IV sets forth the detailed grounds for invalidity of claims 1-12,

15-26, and 33-41. Accordingly, Petitioners respectfully request a Decision to

institute inter partes review.

1 The ’944 patent is issued to Li Han. On June 11, 2012, Ruyan, assignor of the ’944 patent, filed a request to

correct the name of the inventor of the ’944 from Li Han to Lik Hon. (Ex. 1002.) Lik Hon is the named inventor of

prior art reference WO2005/099494 A1 discussed below.

4 la-1212389

III. THE ’944 PATENT

A. Background

As noted above, the ’944 patent is directed to an aerosol electronic cigarette.

In an embodiment shown in Figures 1 and 22 above, the aerosol electronic cigarette

comprises a hollow shell (a), containing a battery assembly and an atomizer

assembly. A removable cigarette bottle assembly in a hollow cigarette holder shell

and mouthpiece (b) can be inserted into hollow shell (a) to fit into the atomizer

assembly. (Col. 2, ll. 1-2; col. 6, 56-58.) The atomizer assembly includes a porous

2 The drawings from the corresponding published PCT application WO2007/131449 A1 (Ex. 1003) are substituted

in place of the illegible drawings from the ’944 patent.

5 la-1212389

component and a heating rod. Several different atomizer assemblies are disclosed.

One embodiment of the atomizer is shown in Figures 5- 8, reproduced below.

The porous component 81 has a “run-through” atomizing chamber 811 and a

half sphere protuberance 812 at its exit end, which fits into the cigarette bottle

assembly. (Col. 6, ll. 13-34.) The heating rod 82 includes a cylinder 821 with a

heating wire 822 wound on the wall of cylinder 821. The rod extends along the

length of the atomizing chamber 811, as shown in Figures 7 and 8.

The diameter of heating rod 82 is less than the diameter of atomizing

chamber 811, creating a clearance between the heating rod and atomizing chamber,

thus forming a negative pressure cavity 83. (Col. 6, ll. 37-42.) A run-through hole

813 formed in the protruding half sphere 812 is indicated as connecting to the run-

6 la-1212389

through atomizing chamber 811. (Col. 6, ll. 23-28.) However, the precise location

and extent of such hole is unclear, as it is depicted differently in each of Figures 5

and 8. The specification indicates that when the smoker inhales, the cavity of the

cigarette holder shell is in a negative pressure state. (Col. 7, ll. 8-9.)

A second embodiment is shown in Figures 13-16 and includes a similar

structure of a heating rod extending along the length of the run-through chamber.

A third embodiment is shown in Figures 17 and 18, reproduced below. In this

embodiment, a heating wire is wound around a portion of a porous component 81

which extends across a central opening of the porous component and frame 82 to

which it is attached.

Before summarizing the prosecution history and the inter partes

reexamination and presenting the grounds of invalidity, Petitioners provide a table

listing the relevant patents and publications to Hon with accompanying

abbreviations and exhibit numbers for the Board’s benefit.

7 la-1212389

Patent or Publication

Number

Abbreviation Exhibit

US Patent No. 8,156,944 The ’944 patent 1001

WO 2007/131449 A1

(PCT Pub. of the ’944

patent)

Hon ’449 1003

CN Patent No. 2719043 Hon ’043 1004

CN Patent Application. No.

200620090805

Hon ’805 1005

Certified Translation of

Hon ’805

1006

WO 2004/095955 A1 Hon ’955 1007

WO 2005/099494 A1

Hon ’494 1008

Certified Translation of

Hon ’494

1009

B. Prosecution History

1. Preliminary Amendments

The application which ultimately issued as the ’944 patent entered the

national phase on October 29, 2008, from PCT application No.

PCT/CN2007/001575, filed on May 15, 2007 which claimed priority to CN Patent

Application No. 20062009805 (Hon ’805). The application was filed with 29

claims. In an October 29, 2008 Preliminary Amendment, the applicant added three

additional claims. On April 20, 2009, the applicant cancelled all the pending

8 la-1212389

claims in a Second Preliminary Amendment, and replaced them with 27 new

claims (33-59).

2. First Office Action and Response

On February 2, 2011, the Examiner issued a Restriction Requirement noting

that claims 33-36 and 38-59 (Group I) were directed to the embodiment shown in

Figure 5, whereas claim 37 (Group II) was directed to the embodiment shown in

Figure 17. (Ex. 1010 at 2.) On February 22, 2011, the applicant elected Group I

and cancelled claim 37. (Ex. 1011 at 1.)

3. Second Office Action, Response, and Allowance

A second Office Action was mailed on April 12, 2011. In this Office Action

(Ex. 1012), pending claims 34, 36, and 60 were objected to and claims 33, 35, and

38-69 were rejected either as being indefinite under 35 U.S.C. 112, second

paragraph, or obvious over Chinese Patent No. 2719043 to Hon (Hon ’043), or

obvious over Hon ’043 in view of PCT Application No. WO 2004/095955 A1 to

Hon (Hon ’955).

The applicant filed a response on October 12, 2011. (Ex. 1013.) With

regard to claims 35, 38, 42 and 44-45, which were rejected as indefinite, the

applicant argued for certain claims (35, 44, and 45) and amended other claims (38

and 42) to overcome the indefiniteness rejection. (Id. at 14.) With respect to the

obviousness rejections, the applicant argued that Hon ’043 “is not prior art to the

9 la-1212389

present claims” because the application was entitled to the earlier May 16, 2006

filing date of its foreign priority document Hon ’805. This argument was incorrect,

because Hon ’043 is prior art under 35 U.S.C. § 102(b) as it issued on August 24,

2005, more than one year prior to May 15, 2007.3 The applicant further stated that

the priority document “is substantially the same as the current specification and

figures.” This is also incorrect, as the figures and description of the Hon ’805 are

substantially different from those of the application that issued as the Hon ’944

patent, as discussed in more detail below.

Nevertheless, on December 6, 2011, in response to the applicant’s

amendment and response, the Examiner issued a Notice of Allowance.

C. Related Inter Partes Reexamination

1. Request For Reexamination And Office Action

On September 13, 2012, a Request for Inter Partes Reexamination of the

’944 patent (Ex. 1014, “Inter Partes Reexamination Request”) was filed by Fin

stating six proposed grounds for rejections. The first two proposed grounds for

rejection were based on WO 2005/099494 to Hon (“Hon ’494” 4) (anticipation) and

Hon ’494 in view of Hon ’955 (obviousness).

3 May 17, 2007 is the filing date of Hon ’944’s PCT Application, which is the “date of application for patent in the

United States” for purposes of 35 U.S.C. § 102(b). 4 Hon ’043 claims priority to Chinese Application No. 200420031182.0, which is also the Chinese priority

application for Hon ’494. As explained below in § IV, Part C, Hon ’494 is also prior art to the ’944 patent under 35

U.S.C. § 102(b).

10 la-1212389

On November 27, 2012, the PTO granted the Inter Partes Reexamination

Request (Ex. 1015) and issued an Office Action (Ex. 1016). In the Office Action,

with regard to anticipation by Hon ’494, the Examiner adopted the proposed

rejections for claims 1-4, 8-12, 15-26, 33, 34, 36, and 38. (Id. at 5-9.) The

Examiner declined to adopt the proposed rejections for claims 5-7, 35, 37 and 39-

41, stating that Hon ’494 does not disclose a coiled wire (claims 5-7) wound

outside the wall of the cylinder (claims 35 and 37), and does not disclose mandrils

on the walls of both ends of the cylinder (claims 39-41). (Id. at 5, 9-10.)

With regard to obviousness based on Hon ’494 in view of Hon ’955, the

Examiner adopted the proposed rejections for claims 1, 2, 5, 6, 8-12, 15-17, 24, 26,

33-36, and 38 but declined to adopt the proposed rejections for claims 7, 13, 14,

27-32, 37, and 39-41. (Id. at 10-11.) The Examiner stated that the combination

does not disclose a coiled wire on the outer surface of the cylinder (claims 7 and

37) or mandrils on the walls of both ends of the cylinder (claims 39-41). (Id. at 11-

12.)

On January 28, 2013, the Patent Owner filed a Response to the Office

Action. (Ex. 1017.) The Response argued that the Hon ’494 does not disclose a

run-through atomizing chamber or an electric heating rod. (Id., pp. 10-16.) Fin

filed comments in response on February, 27 2013. (Ex. 1018.)

11 la-1212389

IV. DETAILED EXPLANATION OF GROUNDS FOR INVALIDITY

Pursuant to 37 C.F.R. § 42.104(b), Petitioners respectfully request the

cancellation of claims 1-12, 15-26, and 33-41 of the ’944 patent based on the

grounds of invalidity as set forth in this Petition.

A. Statutory Grounds For The Challenge Of Each Claim

Ground 1 – Anticipation under 35 U.S.C. § 102(e) of claims 1, 2, 5-8, 10,

33, 35, 37, and 38 based on WO2007/078273 A1 to Liu (“Liu,”

Ex. 1019);

Ground 2 – Obviousness under 35 U.S.C. § 103(a) of claim 20 based on

Liu;

Ground 3 – Obviousness under 35 U.S.C. § 103(a) of claims 3, 4, 12, 15,

17, and 26 based on Liu in view of EP 0845220 A1 to Susa et

al. (“Susa,” Ex. 1020);

Ground 4 – Obviousness under 35 U.S.C. § 103(a) of claims 1-4, 8-12, 15-

26, 33-34, 36, and 38 based on Hon ’494 in view of Liu; and

Ground 5 – Obviousness under 35 U.S.C. § 103(a) of claims 39-41 based

on Hon ’494 in view of Liu and Susa.

Before addressing these grounds of invalidity, Petitioners set forth how the

challenged claims are to be construed. 37 C.F.R. § 42.104(b)(3). Petitioners then

present a discussion of how the claims are unpatentable under the statutory

12 la-1212389

grounds raised. 37 C.F.R. § 42.104(b)(4). Finally, Petitioners set forth a claim

chart that specifies where each element of a challenged claim is met by the prior

art. 37 C.F.R. § 42.104(b)(4). The showing in these sections establishes a

reasonable likelihood of prevailing as to each ground of invalidity with respect to

the challenged claims as to that ground.

B. Claim Construction

1. Broadest Reasonable Construction

Petitioners note that a claim is given the “broadest reasonable construction in

light of the specification” in inter partes review. See 37 C.F.R. § 42.100(b). In

general, terms should be given their ordinary and accustomed meaning as

understood by one of ordinary skill in the art. It is submitted that the term “run-

through atomizing chamber” requires additional detailed analysis, as discussed

below.

2. Run-through Atomizing Chamber

The term “run-through atomizing chamber” should be interpreted as broadly

as possible in a manner consistent with the specification. It is apparent that the

Patent Owner is attempting to ascribe a narrow meaning to this term in the co-

pending reexamination in its attempts to distinguish prior art. (See Ex. 1017, pp.

10-14.) However, these arguments should be rejected, as they do not in any way

reflect the broadest reasonable construction consistent with the specification.

13 la-1212389

The term “run-through atomizing chamber” is not defined in the

specification. Rather, the term is simply introduced, and it is stated with reference

to Figures 5-8, (Fig. 7 is reproduced below) that the body of the porous component

82 “has a run-through atomizing chamber (811),” the “diameter of the electric

heating rod (82) is less than the diameter of the atomizing chamber (811),” and

“there is a clearance between the electric heating rod (82) and interior wall of the

atomizing chamber (811), which forms a negative pressure cavity (83).” (Ex.

1001, col. 6, ll. 15-21.)

Air flow through the device is described at Col. 7, ll. 22-47. This discussion

indicates that the user’s smoking action causes negative pressure to be created in

the cavity 83, and that small-diameter fine drips are suspended to form gasoloid.

The drips are atomized by the heating rod along the full length of the chamber.

Applying the broadest reasonable construction consistent with the

specification, the term “run-through atomizing chamber” means a chamber having

14 la-1212389

a flow in which atomization occurs along the length thereof. There is no

requirement that the input and output ends of the chamber be unblocked, as argued

by the Patent Owner during reexamination. (Ex. 1017, p. 11-14.) The claim

recites an atomizing chamber, not what may be located at arbitrarily defined ends

of the chamber. Liquid is atomized as it runs through the entire length of the

chamber.

The difference between a run-through atomizing chamber and other

atomizers is apparent from a comparison of the elected embodiment with the non-

elected embodiment illustrated in Figs. 17 and 18 below. An atomizing chamber

having a path in which atomization occurs along its length is shown in Figures 5-8,

the elected embodiment, as well as in the embodiment of Figures 13-16. In

contrast, the atomizer assembly of the non-elected embodiment does not have such

a path.

This embodiment includes a frame 82 and a porous component 81 having a

coiled heating element wrapped around a bar that extends across the space defined

15 la-1212389

by the frame 82. The space is where atomization occurs, and may therefore be

considered an atomizing chamber. Notably, however, in contrast to the other

embodiments it is not referred to as a “run-through” chamber and atomization does

not occur along the length of a run-through path.

The term “run-through atomizing chamber” should not be construed to mean

simply having an unblocked input end and unblocked output end as argued by the

Patent Owner in the reexamination, as such does not relate to the chamber itself.

Moreover, this argument is completely belied by the ‘944 patent itself. In the

reexamination, after arguing that the run-through chamber must have open ends,

the Patent Owner attempted to distinguish Hon ‘494 by submitting the sketch

below showing that the exit end in Hon ‘494 has an arch that restricts flow and

asserting that in Hon ‘494 there is no “open and unrestricted pathway through the

atomizing chamber, i.e., there is no run-through chamber.” (Ex. 1017, p 14)

However, the end of the run-through chamber in the ‘944 patent itself is even more

closed and restricted than in the sketch of Hon ‘494. Specifically, the exit end of

the run-through chamber of Figures 5-8 has the half sphere protuberance 812 and is

16 la-1212389

therefore partially closed and will obstruct flow at least as much as the arch in

Hon’494.

This protruberance is discussed in the very same paragraph of the specification

which introduces the run-through chamber (Ex. 1001, col. 6, ll. 13-34.) Thus, the

Patent Owner’s construction of run-through atomizing chamber would exclude the

very embodiment of the ‘944 patent that describes the chamber.

The term “run-through” must be accorded some meaning, as “[c]laims must

be interpreted with an eye towards giving effect to all terms in the claim.” See e.g.

Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); Elekta

Instrument S.A. v. O.U.R. Scientific Int'l, Inc., 214 F.3d 1302, 1305-07 (Fed. Cir.

2000) (refusing to adopt a claim construction which would render claim language

superfluous). A construction of the term “run-through atomizing chamber” which

includes reference to atomization occurring along the length of the flow path gives

meaning to the term “run-through” while remaining consistent with the

specification.

17 la-1212389

This construction is also consistent with the priority application (Hon ’805).

This application discloses embodiments of an atomizer similar to the atomizer of

Figures 16-17 of the ’944 patent. These are shown in Figures 8-11, reproduced

below.

As is the case with respect to Figures. 16 and 17, these atomizers have

heating elements that extend across the flow path rather than along it. Also, the

description of these atomizers does not refer to them as being run-through

atomizing chambers. Rather, it is stated that “atomizer 307 can be the ones as

shown in figures 8 and 9 being a capillary impregnation type atomizer, or can be

the ones shown in figures 10 and 11 being a spray type atomizer.” (Ex. 1006, at

13.)

In view of the foregoing, “run-through atomizing chamber” should be

construed as a chamber having a flow in which atomization occurs along the length

thereof.

18 la-1212389

C. Ground 1 – Anticipation of claims 1, 2, 5-8, 10, 33, and 35, 37,

and 38 By Liu

PCT Application No. US2005/046546 to Liu was filed on December 22,

2005 and published as WO 2007/078273 A1 (“Liu”) on July 12, 2007. (Ex. 1019.)

Liu was filed in English and designated the United States and therefore is prior art

to the ’944 patent under 35 U.S.C. § 102(e) as of its filing date of December 22,

2005. (Id.)

Liu is entitled “No-Tar Electronic Smoking Utensils.” It is directed to an

aerosol electronic cigarette containing a battery 14, an atomizer 24, a liquid storage

container cigarette-solution storage area 18, and an outer casing 6. (Id., Figs. 1 and

2.) The atomizer (referred to in Liu as a “vapouriser”) includes an electric heating

rod with a spirally wound heating wire mounted on the outside of the heating rod.

(Id. at p. 6, ll. 18-19; 9, ll. 19-20.) The basic structure is illustrated in Figure 2,

reproduced below.

The dividing wall 20, separating the battery chamber 14 and the liquid

container 18, contains a plurality of apertures 28 as shown in Fig. 6 below. (Id., p.

19 la-1212389

6, ll. 2-7.) The cylindrical vapouriser housing also includes a plurality of apertures

28 to allow air and liquid to be drawn into the vapouriser as shown in Fig. 5.

In Figure 2 above, the user of the electronic cigarette draws in air via the

mouthpiece end Y. (Id., p. 4, ll. 6-7, 24-25.) As the user draws on the cigarette

mouthpiece, air is drawn into the cigarette through a plurality of apertures 16 on

the outside shell and into the battery chamber 14. (Id., p. 5-6, ll. 32-2.) The air in

the battery chamber is sucked into the liquid container 18 through apertures 22

where it mixes with the liquid solution. (Id., p. 7, ll. 16-19.) The air and liquid

solution mixture is then drawn into the porous walls of the vapouriser heater

assembly which contain apertures 28. (Id., Fig. 5; p. 6, ll. 20-22; p. 7, ll. 16-19.)

The liquid solution is then vaporized inside the vapouriser before being inhaled via

the mouthpiece. (Id.) The flow of air through the cigarette indicates the space in

between the vapouriser housing 24 and the heating rod 26 forms a negative

pressure cavity as the user inhales.

20 la-1212389

The vapouriser assembly includes a “heater wire 26 spirally wound on a

central ceramic insulating rod.” (Id., p. 6, ll. 18-19; p. 9, ll. 19-20.) As shown in

Figure 2, above, the central rod 26 extends along the length of the vapouriser 24.

Thus, the vapouriser disclosed in Liu is essentially the same as the run-

through atomizer found in the ’944 patent. Liu discloses precisely what the

Examiner had found was missing from the prior art in the inter partes

reexamination, i.e., a cylinder with heating wire wound on the wall of the cylinder

inside an atomizer assembly. It is submitted that Liu anticipates each of claims 1,

2, 5-8, 10, 33, and 35, 37 and 38. The claim charts below specify where each

claim element is found in Liu.

U.S. Patent No. 8,156,944 Liu

1[a]. 5 An aerosol electronic cigarette,

comprising:

Liu discloses an aerosol electronic

cigarette. See, e.g., Fig. 2; p. 2, ll. 6-9.

5 The limitations of certain claims were numbered (e.g., 1[a], 1[b], 1[c], etc.) so that these limitations can be

referenced in other claims.

21 la-1212389


1[b]. a battery assembly, Liu discloses a battery assembly. See,

e.g., Fig. 2; p. 5, ll. 31-32 (“a cylindrical

battery chamber 12 for housing a

battery 14).

1[c]. an atomizer assembly, Liu discloses an atomizer assembly 24.

See, e.g., Fig. 2; p. 6, ll. 15-17

(“cylindrical vapouriser heater

assembly”); p. 8, ll. 5-6.

1[d]. a cigarette-solution storage area, Liu discloses a cigarette-solution

storage area 18. See, e.g., Fig. 2; p. 5,

ll. 9-10, (“the simulated cigarette of the

example is provided with a container

for a liquid mixture”); p. 6, ll. 2-4, 9-15,

29-30 (“a cylindrical liquid container 18

separated from the battery chamber by a

dividing wall 20. … that may contain

any suitable chemicals, and may be

provided with or without nicotine.”).

22 la-1212389


1[e]. and a hollow shell having a

mouthpiece:

Liu discloses a hollow shell 6 having a

mouthpiece 4. See, e.g., Fig. 1; p. 5, ll.

7 (“mouthpiece end”), 14-15 (“outer

casing”).

1[f]. the battery assembly connects

with the atomizer assembly, and both

are located in the shell;

Liu discloses a battery 14 that connects

with the atomizer assembly to provide

current to the heater 26, and both are

located in the shell. See, e.g., Figs. 2

and 7; p. 3, ll. 24-27; p.5, ll. 11-12.

23 la-1212389


1[g]. the cigarette solution storage area

is located in one end of the shell

adjacent to the mouthpiece, and fits with

at least a portion of the said atomizer

assembly inside it;

Liu discloses a container for storing a

liquid mixture 18 located in one end of

the shell adjacent to the mouthpiece end

4 and fits with at least a portion of the

cylindrical vapouriser heater assembly

24 inside it. See, e.g., Fig. 2. The

container 18 surrounds the heater

assembly 24 and extends to the

mouthpiece.

1[h]. the shell has through-air-inlets; Liu discloses a shell 6 with through-air-

inlets. See, e.g., Figs. 1, 2, and 4; pp. 5-

6, ll. 32-2 (“the cigarette outer casing 6,

adjacent to the battery chamber 12 is

provided with a plurality of apertures 16

to permit the entry of air.”).

24 la-1212389


1[i]. the atomizer assembly includes an

atomizer comprising an electric heating

rod and a run-through atomizing

chamber; the electric heating rod

comprises a cylinder and a heating

element provided at the wall of the

cylinder,

Liu discloses an atomizer assembly 24

including an electric heating rod located

in a run-through atomizing chamber.

The electric heating rod is cylindrical

and includes a spirally wound heater

wire 26 provided at the wall of the

cylinder. See e.g., Fig. 2; p. 6, ll. 18-19

(“The vapouriser heater assembly

housing houses a heater wire 26 spirally

wound on a central ceramic insulating

rod.”).

Liu discloses the vapouriser assembly

has a run-through atomization chamber,

i.e., atomization occurs along the length

of the chamber. See, e.g., Figs. 2, 5; p.

7, ll. 16-19 (“As the user draws on the

cigarette mouthpiece, air is drawn into

the battery chamber, into the liquid

container to mix with the liquid

mixture, and into the heater assembly.

The resulting vapor is drawn into the

mouth of the user.”); p. 6, ll. 20-22.

The central rod 26 extends lengthwise

along the vapouriser chamber 24. See

Fig. 2.

25 la-1212389


1[j]. the electric heating rod is in the

said atomizing chamber and

The electric heating rod is in the

atomizing chamber. See, e.g., Fig. 2; p.

6, ll. 18-19 (“The vapouriser heater

assembly housing houses a heater wire

26 spirally wound on a central ceramic

insulating rod.”).

1[k]. there is a negative pressure cavity

in the atomizing chamber.

The space in between the atomizer

housing 24 and the heating rod 26 forms

a negative pressure cavity (as a user

inhales). See, e.g., Fig. 2; p. 4, ll. 6-9;

p. 9, ll. 22-24 (“suction on the

mouthpiece by the user causes air to be

drawn through the porous container for

the liquid, over the heated vapouriser,

into the mouthpiece and into the mouth

of the user.”).

2. An aerosol electronic cigarette

according to claim 1, further comprising

a cigarette solution in the cigarette

solution storage area, the cigarette

solution comprising nicotine.

Liu discloses a cigarette solution in the

cigarette solution storage area, the

cigarette solution including nicotine.

See, e.g., Fig. 2; p. 5, ll. 9-10, (“the

stimulated cigarette of the example is

provided with a container for a liquid

mixture”); p. 6, ll. 2-4, 9-15, 29-30 (“a

cylindrical liquid container 18 separated

from the battery chamber by a dividing

wall 20. … that may contain any

suitable chemicals, and may be

provided with or without nicotine.”).

26 la-1212389



according to claim 1, wherein the

heating element is a coiled wire.

Liu discloses the heating element 26 is a

coiled wire. See, e.g., Fig. 2; p. 3, ll. 6-

8 (“In a preferred arrangement the

heater means include an electrical

heater mounted on an electrical

insulating support, for example a

spirally wound heater wire”).


according to claim 5, wherein the coiled

wire extends along the length of the

cylinder.

Liu discloses the coiled wire 26 extends

along the longitudinal length of the

supporting rod 26 as shown in fig. 2.

See, e.g., Fig. 2; p. 9, ll. 19-20 (“a

spirally wound electrical heater

mounted on an electrical insulating

support”).


according to claim 5, wherein the coiled

wire is on the outer surface of the

cylinder.

Liu discloses the spirally wound heating

wire is mounted on the outside of the

heating rod. See, e.g., Figs. 2 and 4;

p.6, ll. 18-19 (“The vapouriser heater

housing assembly houses a heater wire

26 spirally wound on a central ceramic

insulating rod.”); p. 9, ll. 19-20 (“a

spirally wound electrical heater

mounted on an electrical insulating

support”).



cylinder is inside the run through

chamber.

Liu discloses the electric heating rod is

inside the run-through chamber. See,

e.g., Fig. 2; p. 6, ll. 18-19 (“The

vapouriser heater assembly housing

houses a heater wire 26 spirally wound

on a central ceramic insulating rod.”).

10[a]. An aerosol electronic cigarette,

comprising:

See claim 1[a].

10[b]. a battery assembly, See claim 1[b].

10[c]. an atomizer assembly, See claim 1[c].

10[d]. a cigarette solution storage area, See claim 1[d].

10[e]. and a shell that is hollow and

comprises a mouthpiece:

See claim 1[e].

27 la-1212389


10[f]. the said battery assembly

connects with the said atomizer

assembly, and both are located in the

said shell;

See claim 1[f].

10[g]. the said cigarette solution storage

area is located in one end of the shell

proximal to the mouthpiece, and fits

with at least a portion of the said

atomizer assembly inside it;

Liu discloses the cigarette solution

storage area 18 is located in one end of

the shell proximal to the mouthpiece 4,

and fits with at least a portion of the

said atomizer assembly 24 inside it.

See, e.g., Figs. 1, 2; p. 6, ll. 16-18 (“A

cylindrical vapouriser heater assembly

housing 24 is mounted within a central

bore provided in the mouthpiece end of

the liquid container 18.”). Substantially

the entire heater assembly fits inside the

solution storage area.

10[h]. the said shell has through-air-

inlets;

See claim 1[h].

28 la-1212389


10[i]. the atomizer assembly is an

atomizer, which includes a porous

component and

Liu discloses the atomizer assembly is

an atomizer 24, which includes a porous

component. See e.g. Fig. 5; p. 6, ll. 20-

22 (“The walls of heater housing 24 are

provided with a plurality of apertures 28

to permit entry of the liquid/air from the

liquid container 18 into the heater

housing 24.”). Section A-A in Fig. 5

shows apertures at the end of the

housing as well as around the

circumference.

10[j]. an electric heating rod; wherein

the electric heating rod comprises a

cylinder and a heating element provided

at the wall of the cylinder,

See claim 1[i].

10[k]. the said porous component has a

run-through atomizing chamber;

Liu discloses the atomizer assembly

includes a porous component. See

claim 10[i]. Liu discloses the atomizer

assembly includes a run-through

chamber. See claim 1[i].

10[l]. the electric heating rod is in the


See claim 1[j].

10[m]. there is a negative pressure

cavity in the atomizing chamber.

See claim 1[k].

33. An aerosol electronic cigarette of

claim 10, wherein the heating element

comprises a heating wire.

Liu discloses the heating element 26 is a

heating wire. See, e.g., Fig. 2; p. 3, ll.

6-8 (“In a preferred arrangement the

heater means includes an electrical

heater mounted on an electrical

insulating support, for example a

spirally wound heater wire.”).

29 la-1212389




comprises a coiled heating wire, which

is wound at the wall of the cylinder.

See claim 6.


claim 10, wherein the electric heating

element is provided outside the wall of

the cylinder.

See claim 7.


claim 10, further comprising a cigarette


See claim 2.

D. Ground 2 – Obviousness of Claim 20 Based on Liu

Liu does not disclose the materials of the heater assembly housing but does

disclose materials for the container. However, Liu discloses that “at least a portion

of the container [18] is formed of a porous material to facilitate distribution of

liquid through the container, prior to being fed to the heater means.” (Ex. 1019, p.

3, ll. 1-3.) This porous material can be made of “foamed metal, foamed ceramic or

special fibre.” (Id., p. 3, ll. 3-4.) It would have been obvious to also make the

heater housing assembly out of one of these materials in view of the similar

requirement to distribute liquid into the heater means.



claim 10, wherein the said porous

component is made of foamed nickel,

stainless steel fiber felt, polymer or

ceramics.

See claim 10 of Liu anticipation chart.

It would be obvious for a heater housing

assembly to have a porous component

made of any of the claimed materials.

See, e.g., p. 3, ll. 3-4 (“Suitable

materials include, for example, foamed

metal, foamed ceramic, or special

fibre.”).

30 la-1212389

E. Ground 3 – Obviousness of Claims 3, 4, 12, 15, 17, and 26 Based

On Liu In View Of Susa

Susa issued on June 3, 1998 and therefore qualifies as prior art to the ’944

patent under 35 U.S.C. § 102(b) as it was published more than one year prior to

May 15, 2007. (Ex. 1020.) Susa is entitled “Flavor Producing Article.” The basic

structure is illustrated in Fig. 1, reproduced below.

Susa is directed to a simulated smoking flavor producing article. The

embodiment in Fig. 1 discloses a flavor producing article consisting of detachable

parts (12a and 12b), a rechargeable battery 62, a container of liquid material 36, a

ceramic heater 42, and supporting means for the heater 44. (Ex. 1020, at col 10, ll.

2-8; 24-30.)

As shown above in Figure 1, Susa discloses a shell (casing 12) that includes

first and second detachable sections 12a and 12b. (Id., col. 13, ll. 5-6.) The first

detachable section 12a includes the mouthpiece 16. (Id.) It would have been

obvious to one of ordinary skill in the art in view of Susa to provide detachable

31 la-1212389

sections (as recited in claims 3 and 4) to allow the battery disclosed in Liu to be

replaced. This combination is obvious because it uses a known technique

(detachable parts of an electronic cigarette to allow for replacement of a battery) to

improve a similar device (the electronic cigarette of Liu) in the same way. In

addition, allowing for the replacement of the battery would enhance commercial

opportunities and make the product more desirable by reducing the need to replace

the entire device when the battery is depleted.

With respect to claims 15 and 25, Susa discloses a rechargeable battery 66.

(Id., col. 8, ll.43-45.) It would have been obvious to one of ordinary skill in the art

in view of Susa to replace the battery disclosed in Liu with a rechargeable one

having a slot for charging in order to provide means for continued use of the

electronic cigarette after the battery’s initial charge has been depleted. The

rationale supporting such a combination is that it is simply using a known

technique (a rechargeable battery having a charging slot) to improve a similar

device (the electronic cigarette of Liu) and the results are predictable. Using a

rechargeable battery (and providing ability for the rechargeable battery to be

recharged) would enhance commercial opportunities and make the product more

desirable by reducing the need to replace the entire device when the battery is

depleted.

32 la-1212389

With respect to claim 12, Susa discloses an operating indicator, an electronic

circuit board, and an airflow sensor connected to a battery where the signal output

of the airflow sensor is connected with the electronic circuit board. (Id., col. 8. ll.

43-45, col. 14, ll. 11-20, col. 16, ll. 11-26.) It would have been obvious to one of

ordinary skill in the art in view of Susa to connect the air flow sensor and control

circuit board to the battery and LED operating indicator disclosed in Liu in order to

provide means to indicate to the user of the electronic cigarette when the device is

operational. This combination is obvious because it simply applies a known

technique (use of an airflow sensor connected to an electronic circuit board) to a

known device (the operating indicator and battery of Liu) to yield predictable

results.

With respect to claim 17, Susa discloses that the electronic circuit board

includes an electronic switch circuit. (Id., col. 16, ll. 37-38.) It would have been

obvious to one of ordinary skill in the art in view of Susa to add a switch to the

electronic cigarette disclosed in Liu. This combination is simply applying a known

technique (an electronic circuit board with an electronic circuit switch) to a known

device (the electronic cigarette of Liu) to yield predictable results. In addition,

electronic switches are well known in the art and a person skilled in the art would

merely be using such a familiar element for its well-known purpose.

33 la-1212389

Each element of claims 3, 4, 12, 15, 17, and 26 is disclosed in Liu and Susa

as set forth in the claim chart below. The obviousness of the combination is

discussed above.

U.S. Patent No. 8,156,944 Liu in view of Susa


according to claim 1, wherein the shell

comprises first and second detachable

sections.


Susa discloses a shell (casing 12) that

includes first and second detachable

sections 12a and 12b. See, e.g., Fig. 1;

col. 3, ll. 11-18.


claim 3, wherein the first detachable

section comprises the mouthpiece.

Susa discloses the first detachable

section 12a includes the mouthpiece 16.

See, e.g., Fig. 1; col. 13, ll. 5-6.


claim 10, wherein the said battery

assembly includes a battery, and an

operating indicator, an electronic circuit

board, and an airflow sensor, which are

connected with the said battery; the

signal output of the said airflow sensor

is connected with the said electronic

Re: limitations of claim 10, see Liu

anticipation chart, claim 10. Liu

discloses a battery assembly. See, e.g.,

Fig 2; col. 8, ll. 43-45. Liu discloses an

operating indicator 8. See, e.g., Fig. 2;

p. 5, ll. 22-26 (“[M]ounted on the

cigarette casing 6 is a light emitting

diode (LED) 8. The LED is for the

34 la-1212389


circuit board.

purpose of monitoring/indicating.”); p.

3, ll. 15-18 (“Indicating/monitoring

means may be included for the purpose

of indicating a range of activities”).

Susa also discloses wherein the battery

assembly includes a battery. See, e.g.,

col 8, ll. 43-45 (“The power supply 62

is preferably a DC power supply, e.g., a

commercially available dry cell or

rechargeable cell.”). Susa discloses an

operating indicator. See., e.g., col. 14,

ll. 11-20 (“an electric display means can

be sued to monitor the remaining

amount in the material container 32, and

an example of the electric display

means includes a means for using a

light-emitting diode disposed on the

outer surface of the casing main

body.”).

Susa discloses an airflow sensor

connected to an electronic circuit board.

See, e.g., Fig. 14; col. 16, ll. 11-26

(“[W]hen the user starts an inhaling

operation, the gas flow, the flow

velocity of which is increased by the

orifice 112, pivots the vane clockwise in

Fig. 14, so that the lever 104 and

contact 108 come into contact with each

other. The inhaling operation signal of

the user which is detected in this

manner by the swing vane type sensor is

transmitted to a control circuit 72.”).

35 la-1212389


15[a]. An aerosol electronic cigarette

of claim 12, wherein the said battery is a

rechargeable battery, which has a

charging slot on it;

Susa discloses the battery is 62 a

rechargeable battery stored in a power

supply holder 62. See, e.g., Fig. 14;

col. 8, ll. 43-45 (The power supply 62 is

preferably a DC power supply, e.g., a

commercially available dry cell or

rechargeable cell.”); col. 14, ll. 25-26

(“power supply 62 is stored in a power

supply holder 66.”). It would be

obvious to one of ordinary skill of the

art that if a rechargeable battery was

used it could be a conventional type

having a charging slot.

15[b]. the said operating indicator

comprises a LED.

Liu discloses the operating indicator is

an LED. See, e.g., p. 5, ll. 22-26

(“Adjacent and inner the tip end 2 of the

cigarette and mounted on the cigarette

casing 6 is a light emitting diode (LED)

8. The LED is for the purpose of

monitoring/indicating”).

Susa also discloses the operating

indicator comprises an LED. See, e.g.,

col. 14, ll. 11-20 (“an electric display

means can be used to monitor the

remaining amount in the material

container 32 … and an example of the

electric display means includes a means

for using a light-emitting diode

disposed on the outer surface of the

casing main body.”).

36 la-1212389



claim 12, wherein the said electronic

circuit board includes an electronic

switch circuit.

Susa discloses that the electronic circuit

board includes an electronic switch

circuit. See, e.g., col. 16, ll. 37-38

(“The electric contacts 122 and 124

constitute the switch of a sensor

circuit.”)


claim 10, wherein the said aerosol

electronic cigarette is configured to

connect to a charging device; the said

battery is a rechargeable battery.

Re: limitations of claim 10, see Liu

anticipation chart, claim 10. Susa

discloses a rechargeable battery as

discussed above at claim 15[a]. It is

well known to charge electronic devices

(such as electric toothbrushes and

wireless telephones) by connecting

them to a charging device.

F. Ground 4 – Obviousness of Claims 1-4, 8-12, 15-26, 33-34, 36, and

38 Based on Hon ’494 In View of Liu

Hon ’494 was published on October 27, 2005 and therefore qualifies as prior

art to the ’944 patent under 35 U.S.C. § 102(b) because Hon ’494 was published

more than one year prior to May 15, 2007.6 (Ex. 1008.) A certified English

translation of Hon ’494 is provided. (Ex. 1009.)

Hon ’494 is entitled “Electronic Atomization Cigarette.” It is directed to an

aerosol electronic cigarette containing a battery assembly, an atomizer assembly, a 6 May 17, 2007 is the filing date of Hon ’944’s PCT Application, which is the “date of application for patent in the

United States” for purposes of 35 U.S.C. § 102(b).

37 la-1212389

cigarette-solution storage area, and a hollow shell. (Id., Fig. 1; p. 3, ll. 14-19; p. 4,

l. 21.) As shown in Figure 1 below, the aerosol electronic cigarette comprises a

hollow shell 14, containing a battery assembly 2 and an atomizer assembly 9.

A mouthpiece 15 can be detached to allow for the replacement of the liquid-

supply bottle 11, which is inserted into the hollow shell 14. (Id., p. 4, ll. 34-37.)

The detachable mouthpiece is illustrated in Figure 11 below.

The atomizer assembly is an atomizer, which includes a porous component

27 and a heating element RL. (Id., p. 3, ll. 24-38.) One embodiment of the

atomizer assembly is shown in Figure 6 below. (Id.) The porous component 27

has an atomizing chamber and a bulge 36 (the “arch” as argued by the Patent

Owner), which fits into the cigarette bottle assembly. (Id.)

38 la-1212389

Hon ’494 discloses a LED 1 and a rechargeable battery 2 that appears to be

removable. (Id., Fig. 1; p. 4, l. 21.) It would have been obvious to one of ordinary

skill to use a known rechargeable battery having a slot as the battery in Hon ’494.

Such is merely the simple substitution of one known type of battery for another. In

this regard, it is noted that the ’944 patent does not in any way indicate that the

battery 3 is a new type of battery.

Liu discloses a vapouriser assembly including a spirally wound heater wire

26 mounted on the outside of a central ceramic insulating rod. (Id., p. 6, ll. 18-19;

p. 9, ll. 19-20.) As shown in Figure 2, the central rod 26 extends lengthwise along

the vapouriser 24.

39 la-1212389

The vapouriser assembly therefore has a run-through chamber in which

atomization occurs along the flow path.

It would have been obvious to employ a vapouriser assembly as disclosed by

Liu (including the central rod extending lengthwise along the vapouriser with a

spirally wound heater wire inside the vapouriser assembly) in the electronic

cigarette of Hon ’494. This combination is simply applying a known technique (a

run-through atomization chamber) to a known device (the electronic cigarette of

Hon ’494) to yield predictable results.

It is submitted that the elements of claims 1-4, 8-12, 15-26, 33-34, 36, and

38 are disclosed in Hon ’494 and Liu as set forth in the claim chart below. The

obviousness of the combination is discussed above.

U.S. Patent No. 8,156,944 Hon ’494 and Liu


comprising:

Hon ’494 discloses an aerosol electronic

cigarette. See, e.g., Abstract.

1[b]. a battery assembly, Hon ’494 discloses a rechargeable

battery 2. See, e.g., Fig. 1; p. 4, l. 21.

1[c]. an atomizer assembly, Hon ’494 discloses an atomizer 9 with

an atomization cavity 10. See, e.g., Fig.

1; p. 3, ll. 24-26.

40 la-1212389


1[d]. a cigarette-solution storage area, Hon ’494 discloses a liquid-supplying

bottle 11, which can contain nicotine

solution. See, e.g., Fig. 1; p. 3, 17; p.4,

ll. 34-37.

1[e]. and a hollow shell having a

mouthpiece:

Hon ’494 discloses a shell 14 having a

mouthpiece 15. See, e.g., p. 1, l. 39; p.

4, ll. 17-18.

1[f]. the battery assembly connects

with the atomizer assembly, and both

are located in the shell;

Hon ’494 discloses a battery that is

connected to the atomizer and both are

located in the shell. See, e.g., Fig. 1.

1[g]. the cigarette solution storage

area is located in one end of the shell

adjacent to the mouthpiece, and fits with

at least a portion of the said atomizer

assembly inside it;

Hon ’494 discloses a liquid supplying

bottle 11 located on one end of the shell

that is in contact with a portion of the

atomizer 9. See, e.g., Figs. 1, 6; p. 1, l.

39; p. 4, ll. 17-18, 24-26.

1[h]. the shell has through-air-inlets; Hon ’494 discloses a shell 14 with air

inlets 4. See, e.g., Fig. 1; p.1, l. 39-40,

p.3, l. 15.

1[i]. the atomizer assembly includes

an atomizer comprising an electric

heating rod and a run-through atomizing

chamber; the electric heating rod



cylinder,

See claim 1[i] of Liu anticipation chart.

1[j]. the electric heating rod is in the


See claim 1[j] of Liu anticipation chart.

1[k]. there is a negative pressure


See claim 1[k] of Liu anticipation chart.

41 la-1212389



according to claim 1, further comprising

a cigarette solution in the cigarette

solution storage area, the cigarette


Hon ’494 discloses a liquid-supplying

bottle 11 containing nicotine solution.

See, e.g., p. 4, ll. 34-37.


according to claim 1, wherein the shell

comprises first and second detachable

sections.

Hon ’494 discloses a mouthpiece 15

that is provided in the shell 14. See,

e.g., p. 3, ll. 17-18. The mouthpiece is

threaded and can be detached. See, e.g.,

p. 4, ll. 34-37.


claim 3, wherein the first detachable

section comprises the mouthpiece.

See claim 3.



cylinder is inside the run through

chamber.



claim 1, wherein the solution storage

area comprises a cigarette-bottle

assembly.

Hon ’494 discloses a liquid-supplying

bottle 11 containing nicotine solution.

See, e.g., p. 4, ll. 34-37.


comprising:

See claim 1[a].

10[b]. a battery assembly, See claim 1[b].

10[c]. an atomizer assembly, See claim 1[c].

10[d]. a cigarette solution storage area, See claim 1[d].

10[e]. and a shell that is hollow and

comprises a mouthpiece:

See claim 1[e].




said shell;

See claim 1[f].

10[g]. the said cigarette solution

storage area is located in one end of the

shell proximal to the mouthpiece, and

fits with at least a portion of the said


See claim 1[g].

42 la-1212389



inlets;

See claim 1[h].



component and

See claim 10[i] of Liu anticipation

chart.

10[j]. an electric heating rod; wherein

the electric heating rod comprises a

cylinder and a heating element provided

at the wall of the cylinder,




See claim 10[k] of Liu anticipation

chart.








claim 10, wherein a restriction

component is detachably set on one end

of the said porous component; there is a

restriction hole on the principal part of

the said restriction component; the said

restriction hole corresponds to the said

atomizing chamber; the diameter of the

said restriction hole is less than the

inner diameter of the atomizing

chamber.

Hon ’494 discloses a “through hole

[that] is provided on the vapor-liquid

separator 7, [which] can be made of

plastic or silicon rubber.” See, e.g.,

Figs. 1, 2, 9; p. 3, ll. 38-40. The

diameter of the through hole is less than

the inner diameter of the atomizing

chamber. See, e.g., Figs. 1, 2.


claim 10, wherein the said battery

assembly includes a battery, and an

operating indicator, an electronic circuit

board, and an airflow sensor, which are

connected with the said battery; the

signal output of the said airflow sensor

is connected with the said electronic

circuit board.

Hon ’494 discloses a LED 1, a

rechargeable battery 2, an electronic

circuit board 3, and a sensor 6. See,

e.g., Fig. 1; p. 3, ll. 15-16; p. 4, l. 21.

“When a smoker smokes … the air

pressure difference … will cause the

sensor 6 to output an actuating signal,

the electronic circuit board 3 connected

therewith goes into operation . . . and

the LED 1 can be lit under the supply of

the rechargeable battery 2.” See, e.g., p.

4, ll. 1-14, 21.

43 la-1212389


15[a]. An aerosol electronic cigarette of

claim 12, wherein the said battery is a

rechargeable battery, which has a

charging slot on it;

Hon ’494 discloses a rechargeable

battery 2. See, e.g., Fig. 1; p. 1, ll. 15-

16; p. 4, l. 21.

15[b]. the said operating indicator

comprises a LED.

Hon ’494 discloses a LED 1 that “can

be lit under the supply of the

rechargeable battery 2” to indicate

operation. See, e.g., Fig. 1; p. 4, l. 21.


claim 12, wherein the said airflow

sensor comprises a semiconductor

force-sensitive chip capacitance sensor

or an inductance sensor.

Hon ’494 discloses an inductance

sensor 6 with a Reed switch K1 within

the sensor. See, e.g., Fig. 4; p. 3, ll. 21-

24; p. 4, ll. 11-18.


claim 12, wherein the said electronic

circuit board includes an electronic

switch circuit.

The electronic circuit board disclosed in

Hon ’494 includes an “electronic

switching circuit.” See, e.g., Abstract;

p. 1, ll. 45-46.

44 la-1212389




sensor has a silica gel corrugated

membrane, which connects with

magnetic steel with a reed relay on one

of its ends; both ends of the said reed

relay correspond to relay electrodes

respectively.

Hon ’494 discloses an inductance

sensor 6 with a silicon gel check valve

31 and a Reed switch K1 outside the

valve. See, e.g., Figs. 4,10; p. 2, ll. 4-9.

The silicon gel check valve is connected

with a “third magnetic steel” with the

Reed switch on one of its ends. See id.

Both ends of the Reed switch are

connected to replay electrodes. See,

e.g., Fig. 4.

45 la-1212389




sensor has a silica gel corrugated

membrane, which connects with

magnetic steel with a Hall element or a

magneto-diode or a magneto-triode on

one of its ends.

Hon ’494 discloses that the silicon gel

check valve 31 is connected with a

“third magnetic steel” with the Reed

switch K1 on one of its ends. See, e.g.,

Fig. 4; Fig. 10; p. 2, ll. 4-9. The “Reed

switch K1 can also be made of Hall

device or magneto diode or magneto

triode instead.” See, e.g., p. 5, ll. 9-10.


claim 10, wherein the said porous

component is made of foamed nickel,

stainless steel fiber felt, polymer or

ceramics.

Hon ’494 discloses that “the porous

body 27, which can be made of foam

nickel, stainless steel fiber felt, high

molecule polymer foam and foam

ceramic.” See, e.g., p. 3, ll. 35-37.


claim 10, wherein the said cigarette

solution storage area includes a hollow

mouthpiece-shell, and a perforated

component for liquid storage inside the

shell; one end of the said mouthpiece

shell plugs into the said shell.

Hon ’494 discloses a “liquid-supplying

bottle 11 and a mouthpiece 15 are

sequentially provided within the shell

14.” See, e.g., Fig. 11; p. 3, ll. 17-18,

The solution storage porous body 28 is

provided inside the shell. See, e.g., Fig.

11; p. 3, ll. 17-18; p. 4, ll. 34-37. One

end of the mouthpiece shell plugs into

the shell. See id.

46 la-1212389



claim 21, wherein the said air channel is

located in the center of one end surface

of the said cigarette holder shell.

Hon ’494 discloses the air channel is

located in the center of one end surface

of the cigarette holder shell. See, e.g.,

Fig. 5; p. 5, ll. 4-10.


claim 21, wherein one end of the said

porous component lies against one end

surface of the said perforated

component for liquid storage, and

contacts the perforated component for

liquid storage.

See claim 21.


claim 21, wherein the said perforated

component for liquid storage comprises

PLA fiber, terylene fiber or nylon fiber.

Hon ’494 discloses that the “solution

storage porous body 28 is provided in

the liquid-supplying bottle, and can be

filled with polypropylene fiber, terylene

fiber or nylon fiber.” See, e.g., p. 3, ll.

43-44.


claim 21, wherein the said perforated

component for liquid storage comprises

plastic foam molding, or column of

multi-layer plates made through plastic

injection with PVC, PP or PC.

Hon ’494 discloses that the “solution

storage porous body 28 is provided in

the liquid-supplying bottle, and can be .

. . made of a column formed by molding

polyvinyl chloride, polypropylene,

polycarbonate into a stack of laminated

layers.” See, e.g., p. 3, ll. 43-47.

47 la-1212389



claim 10, wherein the said aerosol

electronic cigarette is configured to

connect to a charging device; the said

battery is a rechargeable battery.

See claim 15[a].



comprises a heating wire.

Hon ’494 discloses a “heating element

[that] can be made of platinum wire.”

See, e.g., p. 2, ll. 16-17; p. 3, ll. 27-28.


claim 33, wherein the said heating wire

is made of platinum wire, nickel-

chromium alloy wire or iron-chromium

alloy wire containing rare earth, or is

flaked.

Hon ’494 discloses a “heating element

[that] can be made of platinum wire,

nickel chromium alloy or iron

chromium aluminum alloy wire with

rare earth element, or may be made into

a sheet form with conductive ceramics

or PTC ceramics” See, e.g., p. 2, ll. 16-

18.


claim 10, wherein the solution storage

area comprises a cigarette-bottle

assembly.

See claim 9.


claim 10, further comprising a cigarette


See claim 2.

G. Ground 5 – Obviousness of Claims 39-41 Based On Hon ’494 In

View of Liu and Susa

As discussed above, in the inter partes reexamination, the Examiner noted

that with regard to claim 41, Hon ’494 does not disclose mandrils on the walls of

the heating element to support the heating element. However, Susa discloses

mandrils (referred to as supporting members) 44 to support a heating element as

shown in Fig. 9 below. (Ex. 1020, col. 7, ll. 30-32.)

48 la-1212389

As seen in Figure 9 above, the supporting members are on the wall of both

ends of the heating element in Susa. Thus, Susa discloses precisely what the

Examiner had found was missing from the prior art in the inter partes

reexamination: mandrils for supporting a heating element.

Liu discloses a spirally wound heater wire mounted on the outside of a

central ceramic insulating rod inside a vapouriser (Ex. 1019, p. 6, ll. 18-19; p. 9, ll.

19-20) and Susa discloses mandrils (referred to as supporting members) 44 to

support the heating element on the wall of both ends of the heating element (Ex.

1020, Figs. 1, 13; col. 7, ll. 30-32). It would have been obvious to add the

mandrils disclosed in Susa to the heating rod disclosed in Liu because it is simply

applying a known technique (mandrils to support a heating element) to a known

device (the heating rod of Liu inside the atomizer disclosed in’494) to yield

predictable results. The rationale on why it would have been obvious to one of

ordinary skill in the art to use the atomizer disclosed in Liu in the electronic

cigarette disclosed in Hon ’494 is discussed above. (See Section IV, Part F.)

Hon ’494 discloses an atomizer 9 containing a porous body 27 with a bulge

36 on one end that is in contact with the liquid supplying bottle 11 via the bulge.

49 la-1212389

(Ex. 1009, p. 3, ll. 24-25; p. 4, ll. 31-33.) The bulge 36 is a protruding half sphere

on the side of which there is a run-through hole (vapor-liquid separator 7)

connecting to the atomizing chamber as shown in Figures 2 and 6 below. (Id., p. 2,

ll. 8-9; p. 5, ll. 12-14.)

It is submitted that claims 39, 40 and 41 are obvious based on Liu in view

Hon ’494 and Susa as set forth in the claim chart below.

U.S. Patent No. 8,156,944 Hon ’494 in view of Liu and Susa


comprising:

See claim 1[a] of Hon ’494 and Liu

chart.

39[b]. a battery assembly, See claim 1[b] of Hon ’494 and Liu

chart.

39[c]. an atomizer assembly, See claim 1[c] of Hon ’494 and Liu

chart.

39[d]. a cigarette-solution storage area, See claim 1[d] of Hon ’494 and Liu

chart.

39[e]. and a shell that is hollow: See claim 1[e] of Hon ’494 and Liu

chart.




said shell;

See claim 1[f] of Hon ’494 and Liu

chart.

50 la-1212389


39[g]. the said cigarette solution storage

area is located in one end of the shell,

and fits with at least a portion of the

said atomizer assembly inside it;

See claim 1[g] of Hon ’494 and Liu

chart.


inlets;

See claim 1[h] of Hon ’494 and Liu

chart.



component and an electric heating rod;

See claims 1[i] and 10[i] of Liu

anticipation chart.

39[j]. wherein the electric heating rod



cylinder,





chart.





cavity in the atomizing chamber,


39[n]. wherein said heating element is

heating wire, which is wound on the

wall of the cylinder;


51 la-1212389


39[o]. on the wall of both ends of the

cylinder, there are mandrils

respectively;

Susa discloses mandrils to support a

heating element. See, e.g., Fig. 9; col.

7, ll. 30-32 (“The ceramic heater 42 is

fixed on the inner surface of the casing

main body 14 through a support

member 44.”). As shown in Fig 9

below, Susa discloses mandrils on the

wall of both ends of the heating

element.

52 la-1212389


39[p]. the said porous component has a

protuberance on one end, and the

protuberance fits with the cigarette

solution storage area;

Hon ’494 discloses a porous body 27

with a bulge 36 on one end that “is in

contact with the liquid supplying bottle

11 via the bulge.” See, e.g., Figs. 1, 6;

p. 3, ll. 24-25; p. 4, ll. 31-33.

39[q]. the said protuberance is a

protruding half sphere, on the side of

which there is a run-through hole

connecting to the atomizing chamber.

The bulge 36 is a protruding half sphere

on the side of which there is a run-

through hole (vapor-liquid separator 7)

connecting to the atomizing chamber.

See, e.g., Figs. 2, 6; p. 2, l. 8-9; p. 5, ll.

12-14.).


claim 39, wherein the said heating wire

is made of platinum wire, nickel-

chromium alloy wire or iron-chromium

alloy wire containing rare earth, or is

flaked.

See claim 34 of Hon ’494 and Liu chart.

See, e.g., Figs. 2, 6; p. 2, ll. 8-9; p. 5, ll.

12-14.).

53 la-1212389


41. An aerosol electronic cigarette,

comprising:

See claim 1[a] of Hon ’494 chart and

Liu chart.

a battery assembly, See claim 1[b] of Hon ’494 and Liu

chart.

an atomizer assembly, See claim 1[c] of Hon ’494 and Liu

chart.

a cigarette-solution storage area, and See claim 1[d] of Hon ’494 and Liu

chart.

a shell that is hollow: See claim 1[e] of Hon ’494 and Liu

chart.

the said battery assembly connects with

the said atomizer assembly, and both are

located in the said shell;

See claim 1[f] of Hon ’494 and Liu

chart.

the said cigarette solution storage area is

located in one end of the shell, and fits

with at least a portion of the said


See claim 1[g] of Hon ’494 and Liu

chart.

the said shell has through-air-inlets; See claim 1[h] of Hon ’494 and Liu

chart.

the atomizer assembly is an atomizer,

which includes a porous component and

an electric heating rod;

See claims 1[i] and 10[i] of Liu

anticipation chart.

wherein the electric heating rod



cylinder,

See claim 1 [i] of Liu anticipation chart.

the said porous component has a run-

through atomizing chamber;


chart.

the electric heating rod is in the said

atomizing chamber and


there is a negative pressure cavity in the

atomizing chamber,


wherein said heating element is made of

electrically conductive ceramic PTC

material; the said heating element is set

on the wall of the said cylinder;

See claim 34 of Hon ’494 and Liu chart.

54 la-1212389


on the wall of both ends of the said

cylinder, there are mandrils

respectively;

See claim 39[o].

the said porous component has a

protuberance on one end, and the said

protuberance fits with the said cigarette

solution storage area;

See claim 39[p].

the said protuberance is a half sphere,

on the side of which there is a run-

through hole connecting to the said

atomizing chamber.

See claim 39[q].

V. CONCLUSION

For the reasons described above, there is a reasonable likelihood that

Petitioners will prevail as to each of claims 1-12, 15-26, and 33-41 of the

’944 patent. Accordingly, inter partes review of claims 1-12, 15-26, and 33-41 of

the ’944 patent is respectfully requested.

55 la-1212389

The USPTO is authorized to charge any required fees, including the fee as

set forth in 37 C.F.R. § 42.15(a) and any excess claim fees, to Deposit Account No.

03-1952 referencing Docket No. 71076-0000001.

Dated: June 27, 2013 Respectfully submitted,

By__/David L. Fehrman /_______

David L. Fehrman


MORRISION & FOERSTER LLP

707 Wilshire Blvd., Suite 6000


(213) 892-5601

By___/Mehran Arjomand/_______

Mehran Arjomand



707 Wilshire Blvd., Suite 6000


(213)892-5630

axc22

Highlight

56 la-1212389

Certificate of Service (37 C.F.R. § 42.6(e)(4))

I hereby certify that the attached Petition for Inter Partes Review and

supporting materials were served as of the below date by U.S. Express Mail on the

Patent Owner at the correspondence address(es) indicated for U.S. Patent

No. 8,156,944:

PERKINS COIE LLP – LOS General

P.O. Box 1247

Seattle, WA 98111-1247

Dated: June 27, 2013 ___/David L. Fehrman /________

David L. Fehrman

axc22

Highlight

axc22

Highlight

[email protected] 571-272-7822 Paper No. 5

UNITED STATES PATENT AND TRADEMARK OFFICE ____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

WAVELOCK ADVANCED TECHNOLOGY CO., LTD. Petitioner

v.

TEXTRON INNOVATIONS INC. Patent Owner

____________

Case IPR2013-00149 Patent 6,455,138 ____________

Mailed: February 21, 2013

Before LAWRENCE J. BANKS, Trial Paralegal.

NOTICE OF FILING DATE ACCORDED TO PETITION AND

TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE

The petition for inter partes review in the above proceeding has been

accorded the filing date of February 15, 2013.

Administrative Patent Judge Sally C. Medley has been designated to

manage the proceeding. 37 C.F.R. § 42.5.

axc22

Highlight

axc22

Rectangle

axc22

Rectangle

axc22

Rectangle

Case IPR2013-00149 Patent 6,455,138

2

Patent Owner may file a preliminary response to the petition no later

than three months from the date of this notice. The preliminary response is

limited to setting forth the reasons why the requested review should not be

instituted. Patent Owner may also file an election to waive the preliminary

response to expedite the proceeding. For more information, please consult

the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),

which is available on the Board Web site at http://www.uspto.gov/PTAB.

Patent Owner is advised of the requirement to submit mandatory

notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of

the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of

counsel pro hac vice requires a showing of good cause. The parties are

authorized to file motions for pro hac vice admission under 37 C.F.R. §

42.10(c). Such motions shall be filed in accordance with the “Order --

Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00010

(MPT), a copy of which is available on the Board Web site under

“Representative Orders, Decisions, and Notices.”

The parties are reminded that unless otherwise permitted by 37 C.F.R.

§ 42.6(b)(2), all filings in this proceeding must be made electronically in the

Patent Review Processing System (PRPS), accessible from the Board Web

site at http://www.uspto.gov/PTAB. To file documents, users must first

obtain a user ID and password by registering with PRPS. Information

regarding how to register with and use PRPS is available at the Board Web

site.

If there are any questions pertaining to this notice, please contact

Lawrence J. Banks at 571-272-3450 or the Patent Trial and Appeal Board at

571-272-7822.

axc22

Highlight

axc22

Highlight

axc22

Highlight

axc22

Highlight

axc22

Line

axc22

Line

axc22

Line

Case IPR2013-00149 Patent 6,455,138

3

PETITIONER:

Mehran Arjomand MORRISON & FOERSTER LLP 555 West Fifth Street Los Angeles, CA 90013-1024 Tel: 213.892.5630 Fax: 323.210.1329 [email protected] Jonathan Bockman MORRISON & FOERSTER LLP 1650 Tysons Blvd., Suite 400 McLean, VA 22102-4220 Tel: 703.760.7769 Fax: 703.760.7777 [email protected]

PATENT OWNER:

TEXTRON SYSTEMS CORPORATION 201 Lowell Street Wilmington MA 01887-2941

axc22

Highlight

axc22

Highlight

[email protected] Paper 7

571-272-7822 Entered: January 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE

____________


____________

KYOCERA CORPORATION.

Petitioner,

v.

ADC TECHNOLOGY INC.

Patent Owner.

____________

Case IPR2013-00107

Patent 8,103,313

____________

Before Andrew Kellogg, Trial Paralegal

NOTICE OF FILING DATE ACCORDED TO PETITION

AND

TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE

The petition for inter partes review in the above proceeding has been

accorded the filing date of January 11, 2013.

Administrative Patent Judge Brian J. McNamara has been designated to

manage the proceeding. 37 C.F.R. § 42.5.

A review of the petition identified the following defect(s):

axc22

Rectangle

axc22

Highlight

axc22

Line

axc22

Line

axc22

Highlight

axc22

Highlight

axc22

Rectangle

Case IPR2013-00107

Patent 8,103,313

2

Improper usages of claim charts: The rules require that a petition identify

how the challenged claims are to be construed and how the claims are unpatentable

under the statutory grounds raised. This information is to be provided pursuant to

the page limit requirements, which require double spacing. Additionally, the rules

require that the petition specify where each element of a challenged claim is to be

found in the prior art. The element by element showing may be provided in a

claim chart, which is permitted to be written with single spacing. See 37 C.F.R

§42.6(a)(2)(iii).

Excess Pages: A petition for inter partes review is limited to 60 pages. 37

C.F.R §42.24(a)(i). While the page limit does not apply to “a table of contents, a

table of authorities, a certificate of service, or appendix of exhibits,” it is applicable

to “any statement of material facts to be admitted or denied in support of the

petition or motion.” 37 C.F.R §42.24(a). Therefore, in this Petition, both the title

page containing related matters and the claim charts containing analysis count

against the 60 page limit.

Petitioner must correct the defect(s) within FIVE BUSINESS DAYS from

this notice. Failure to correct the defect(s) may result in an order to show cause as

to why the Board should institute the trial. No substantive changes (e.g., new

grounds) may be made to the petition.

Patent Owner may file a preliminary response to the petition no later than

three months from the date of this notice. The preliminary response is limited to

setting forth the reasons why the requested review should not be instituted. Patent

Owner may also file an election to waive the preliminary response to expedite the

proceeding. For more information, please consult the Office Patent Trial Practice

Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web

site at http://www.uspto.gov/PTAB.

http://www.uspto.gov/PTAB

axc22

Line

axc22

Line

axc22

Highlight

axc22

Rectangle

axc22

Rectangle

axc22

Highlight

axc22

Highlight

Case IPR2013-00107

Patent 8,103,313

3

Patent Owner is advised of the requirement to submit mandatory notice

information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.

The parties are advised that under 37 C.F.R. § 42.10(c), recognition of

counsel pro hac vice requires a showing of good cause. The parties are authorized

to file motions for pro hac vice admission under 37 C.F.R. § 42.10(c). Such

motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro

Hac Vice Admission” in Case IPR2013-00010 (MPT), a copy of which is available

on the Board Web site under “Representative Orders, Decisions, and Notices.”

The parties are reminded that unless otherwise permitted by 37 C.F.R.

§ 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent

Review Processing System (PRPS), accessible from the Board Web site at

http://www.uspto.gov/PTAB.

If there are any questions pertaining to this notice, please contact Andrew Kellogg

at 571-272-5366 or the Patent Trial and Appeal Board at 571-272-7822.

PETITIONER:

Richard Bauer

and

Michael S. Tomsa

KATTEN MUCHIN ROSENMAN LLP

2900 K Street NW - Suite 200

Washington, DC 20007-5118

PATENT OWNER:

DAVIS & BUJOLD, P.L.L.C.

112 Pleasant Street

Concord, NH 03301

http://www.uspto.gov/PTAB

axc22

Highlight

axc22

Highlight

LEGAL27290455.1


__________________


__________________

CB DISTRIBUTORS, INC. and DR DISTRIBUTORS, LLC

Petitioner

v.

RUYAN INVESTMENT (HOLDINGS) LIMITED Patent Owner

__________________

Case IPR2013-00387 Patent 8,156,944

__________________

PATENT OWNER’S MANDATORY NOTICES

ksg4

Processed

ksg4

Docketed

gxm7

Typewritten Text

/gxm

gxm7

Typewritten Text

gxm7

Typewritten Text

gxm7

Typewritten Text

71076-28001.00

axc22

Highlight

axc22

Rectangle

Case IPR2013-00387 Patent 8,156,944

Attorney Docket No. 76320-0010

2 LEGAL27290455.1

Mail Stop PATENT BOARD Patent Trial and Appeal Board U.S. Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

Pursuant to 37 C.F.R. § 42.8, Patent Owner, Ruyan Investment (Holdings) Limited,

submits the following Mandatory Notices in response to the Petition for Inter Partes Review

on U.S. Patent No. 8,156,944.

1. Real Party-In-Interest

In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies the real party-

in interest as Ruyan Investment (Holdings) Limited; formerly doing business as SBT

Investment (Holdings) Limited, formerly doing business as Best Partners Worldwide

Limited. Ruyan Investment (Holdings) Limited is a wholly owned subsidiary of

Dragonite International Limited; formerly doing business as Ruyan Group (Holdings)

Limited.

2. Related Matters

In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the following

related judicial proceedings:

a. Ruyan Investment (Holdings) Limited v. Sottera Inc, Civil Action No. 2:12-cv-05454-GAF-FFM, U.S. District Court for the Central District of California (following litigation matters b through j) are currently consolidated under this lead case);

b. Ruyan Investment (Holdings) Limited v. LOEC Inc, Civil Action No. 2:12-cv-05455-GAF-FFM, U.S. District Court for the Central District of California;

c. Ruyan Investment (Holdings) Limited v. CB Distributors Inc et al, Civil Action No. 2:12-cv-05456-GAF-FFM, U.S. District Court for the Central District of California;

d. Ruyan Investment (Holdings) Limited v. The Safe Cig LLC, Civil Action No 2:12-cv-05462-GAF-FFM, U.S. District Court for the Central District of California;

e. Ruyan Investment (Holdings) Limited v. Vapor Corp, Civil Action No, 2:12-cv-05466-GAF-FFM, U.S. District Court for the Central District of California;

axc22

Highlight

axc22

Highlight

Case IPR2013-00387 Patent 8,156,944


3 LEGAL27290455.1

f. Ruyan Investment (Holdings) Limited v. Finiti Branding Group LLC, Civil Action No. 2:12-cv-05468-GAF-FFM, U.S. District Court for the Central District of California;

g. Ruyan Investment (Holdings) Limited v. Barjan LLC et al, Civil Action No. 2:12-cv-05470-GAF-FFM, U.S. District Court for the Central District of California;

h. Ruyan Investment (Holdings) Limited v. Spark Industries LLC, Civil Action No. 2:12-cv-05472-GAF-FFM, U.S. District Court for the Central District of California;

i. Ruyan Investment (Holdings) Limited v. Nicotek LLC, Civil Action No. 2:12-cv-05477-GAF-FFM, U.S. District Court for the Central District of California; and

j. Ruyan Investment (Holdings) Limited v. Logic Technology Development LLC, Civil Action No. 2:12-cv-05482-GAF-FFM, U.S. District Court for the Central District of California.

In addition, Patent Owner identified the following related administrative matters:

k. Inter Partes Reexamination No. 95/002,235 of U.S. Patent No. 8,156,944 before the U.S. Patent Office, filed by FIN Branding Group, LLC;

l. U.S. Patent No. 8,365,742, issued February 5, 2013 to Lik Hon, filed April 5, 2011 as U.S. Patent Application No. 13/079,937; and

m. U.S. Application Pub. No. US2013-0125906A1 to Lik Hon, filed May 23, 2013 as U.S. Patent Application No. 13/740,011.

3. Lead and Back-Up Counsel

In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner identifies Michael J.

Wise as lead counsel and Kenneth H. Ohriner as back-up counsel:

Michael J. Wise, Lead Counsel USPTO Reg. No. 34,047

PERKINS COIE LLP 1888 Century Park East, Suite 1700 Los Angeles, CA 90067 Phone: 310-788-3210 Facsimile: 310-788-3399 Email: [email protected] Kenneth H. Ohriner, Back-up Counsel

axc22

Highlight

Case IPR2013-00387 Patent 8,156,944


4 LEGAL27290455.1

USPTO Reg. No. 31,646

PERKINS COIE LLP 1888 Century Park East, Suite 1700 Los Angeles, CA 90067 Phone: 310-788-3267 Facsimile: 310-788-3399 Email: [email protected]

4. Service Information

In accordance with 37 C.F.R. § 42.8(b)(4), Patent Owner identifies the following

service information:

Patent Docketing PERKINS COIE LLP P.O. Box 1247 Seattle, WA 98111-1247 Phone: 206-359-8248 Facsimile: 206-359-9248 Email: [email protected]

Respectfully submitted,

Date: July 17, 2013 By: /Michael J. Wise/ Michael J. Wise, Reg. No. 34,047 Perkins Coie LLP 1888 Century Park East, Suite 1700 Los Angeles, CA 90067 Phone: 310-788-3210 Facsimile: 310-788-3399

Case IPR2013-00387 Patent 8,156,944


-5- LEGAL27290455.1

CERTIFICATE OF SERVICE

I hereby certify that on this 17th day of July, 2013, a true and correct copy of the

foregoing PATENT OWNER’S MANDATORY NOTICES was served via electronic

mail and First-Class U.S. Mail upon the following counsel of record for Petitioners CB

DISTRIBUTORS, INC. And DR DISTRIBUTORS, LLC:

David L. Fehrman, Lead Counsel Mehran Arjomand, Back-up Counsel

Morrison & Foerster LLP 707 Wilshire Blvd.

Los Angeles, CA 90017-3543 [email protected]

[email protected]

/Amy Candeloro/

Amy Candeloro Paralegal Perkins Coie LLP


Tel: 571-272-7822 Entered: December 30, 2013


_______________


_______________

CB DISTRIBUTORS, INC. and

DR DISTRIBUTORS, LLC

Petitioner

v.

RUYAN INVESTMENT (HOLDINGS) LIMITED

Patent Owner

____________

Case IPR2013-00387

Patent 8,156,944 B2

_______________

Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAMARA, and

TRENTON A. WARD, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION

Institution of Inter Partes Review

37 C.F.R. § 42.108

mailto:[email protected]

axc22

Rectangle

axc22

Highlight

axc22

Rectangle

IPR2013-00387

Patent 8,156,944 B2

2

I. INTRODUCTION

CB Distributors, Inc. and DR Distributors, LLC (collectively “CB

Distributors”) filed a petition (Paper 1, “Pet.”) to institute an inter partes review of

claims 1-12, 15-26, and 33-41 of U.S. Patent No. 8,156,944 B2 (Ex. 1001) (“the

’944 patent”) pursuant to 35 U.S.C. § 311 et seq. Ruyan Investment (Holdings)

Limited (“Ruyan”) did not file a preliminary response. We have jurisdiction under

35 U.S.C. § 314.

The standard for instituting an inter partes review is set forth in 35 U.S.C.

§ 314(a), which provides:

THRESHOLD—The Director may not authorize an inter partes

review to be instituted unless the Director determines that the

information presented in the petition filed under section 311 and any

response filed under section 313 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.

For the reasons set forth below, we conclude that CB Distributors has

established a reasonable likelihood that it will prevail in showing the

unpatentability of at least one challenged claim. Pursuant to 35 U.S.C. § 314, we

institute an inter partes review of claims 1-12, 15-26, and 33-38, but not claims 39-

41, of the ’944 patent.

A. Related Matters

CB Distributors indicates that a third party, Fin Branding Group, LLC

(“Fin”), requested inter partes reexamination of the ’944 patent, i.e., reexamination

proceeding 95/002,235. Pet. 1. In an Order entered July 24, 2013, the Board

stayed that reexamination in view of this inter partes review. Paper 6.

CB Distributors also indicates that Ruyan filed lawsuits asserting

infringement of the ’944 patent against nine different defendants in U.S. District

IPR2013-00387

Patent 8,156,944 B2

3

Court for the Central District of California, including Ruyan Investment (Holdings)

Limited v. CB Distributors, Inc. and DR Distributors, LLC, No. CV12-5456, and

Ruyan Investment (Holdings) Limited v. Fin Branding Group, LLC, No. CV12-

5468. Pet. 1-2. The district court consolidated all nine cases for pre-trial purposes

as Ruyan Investment (Holdings) Limited v. Sottera, Inc., No. CV12-5454. Id. at 2.

On February 25, 2013, the district court stayed all proceedings in light of the inter

partes reexamination requested by Fin. Id.

B. The ’944 Patent (Ex. 1001)

The ’944 patent relates generally to an aerosol electronic cigarette that

contains nicotine, but not tar, and “substitutes for cigarettes and helps the smokers

to quit smoking.” Ex. 1001, 1: 5-7, 57-60. Figure 1 of the ’944 patent, as

reproduced in better quality in the petition, is reproduced below.

Pet. 4; Ex. 1001, Fig. 1. Figure 1 depicts a side section view of an aerosol

electronic cigarette comprising a battery assembly, an atomizer assembly, a

cigarette bottle assembly, and shell a. Id. at 5:38-42; 1:62-65. The battery

assembly includes battery 3, operating indicator 1, electronic circuit board 4, and

airflow sensor 5. The atomizer assembly is atomizer 8. Id. at 6:13-15. The

cigarette bottle assembly includes a perforated component for liquid storage 9

inside hollow cigarette holder shell b. Id. at 6:56-58.

IPR2013-00387

Patent 8,156,944 B2

4

Figures 5-8 of the ’944 patent, as reproduced in better quality in the petition,

are reproduced below.

Pet. 5; Ex. 1001, Figs. 5-8. Figure 5 depicts a side section view of porous

component 81 and run-through atomizing chamber 811 of atomizer 8 (shown in

Figure 1). Figure 6 depicts electric heating rod 82 of atomizer 8. Figure 7 depicts

a side section of atomizer 8, including porous component 81, electric heating rod

82 (shown in Figure 6), and negative pressure cavity 83. Figure 8 depicts a cubic

structure of atomizer 8. Ex. 1001, 4:44-55; 6:13-42.

C. Illustrative Claims

Claims 1, 10, 39, and 41 are independent. Claims 2-9 depend, directly or

indirectly, on claim 1, which is reproduced below:

1. An aerosol electronic cigarette, comprising:

a battery assembly, an atomizer assembly, a cigarette-solution

storage area, and a hollow shell having a mouthpiece;

IPR2013-00387

Patent 8,156,944 B2

5

the battery assembly connects with the atomizer assembly, and

both are located in the shell;

the cigarette solution storage area is located in one end of the

shell adjacent to the mouthpiece, and fits with at least a portion of the

said atomizer assembly inside it;

the shell has through-air-inlets;

the atomizer assembly includes an atomizer comprising an

electric heating rod and a run-through atomizing chamber;

the electric heating rod comprises a cylinder and a heating

element provided at the wall of the cylinder,

the electric heating rod is in the said atomizing chamber and

there is a negative pressure cavity in the atomizing chamber.

Id. at 9:2-16 (emphasis and indentation added).

Claims 11, 12, 15-26, and 33-38 depend, directly or indirectly, on claim 10,

which is reproduced below:

10. An aerosol electronic cigarette, comprising:

a battery assembly, an atomizer assembly, a cigarette solution

storage area, and a shell that is hollow and comprises a mouthpiece;

the said battery assembly connects with the said atomizer

assembly, and both are located in the said shell;

the said cigarette solution storage area is located in one end of

the shell proximal to the mouthpiece, and fits with at least a portion of

the said atomizer assembly inside it;

the said shell has through-air-inlets;

the atomizer assembly is an atomizer, which includes a porous

component and an electric heating rod;

wherein the electric heating rod comprises a cylinder and a

heating element provided at the wall of the cylinder, the said porous

component has a run-through atomizing chamber;

the electric heating rod is in the said atomizing chamber and

there is a negative pressure cavity in the atomizing chamber.

IPR2013-00387

Patent 8,156,944 B2

6

Id. at 9:36-52 (emphasis and indentation added). Independent claims 39 and 41 are

similar to claim 10, but further recite elements relating to the heating element, as

well as additional elements relating to “a protuberance on one end” of the porous

component. Id. at 11:23-12-37. Claim 40 depends on claim 39. Id. at 12:9-12.

D. Prior Art Relied Upon

CB Distributors relies upon the following prior art references:

Liu WO 2007/078273 A1 July 12, 2007 Ex. 1019

Susa EP 0 845 220 A1 June 3, 1998 Ex. 1020

Hon ’494 WO 2005/099494 A1 Oct. 27, 2005 Ex. 1008

(English translation Ex. 1009)

E. Alleged Grounds of Unpatentability

CB Distributors contends that claims 1-12, 15-26, and 33-41 of the

’944 patent are unpatentable under 35 U.S.C. §§ 102(b) and 103(a) based on the

following five grounds. Pet. 11.

Reference(s) Basis Claims Challenged

Liu § 102 1, 2, 5-8, 10, 33, 35, 37, and 38

Liu § 103 20

Liu and Susa § 103 3, 4, 12, 15, 17, and 26

Hon ’494 and Liu § 103 1-4, 8-12, 15-26, 33, 34, 36, and 38

Hon ’494, Liu, and Susa § 103 39-41

II. ANALYSIS

A. Claim Construction

Consistent with the statute and legislative history of the Leahy-Smith

America Invents Act, Pub. L. 112-29, 125 Stat. 284, 329 (2011), the Board

IPR2013-00387

Patent 8,156,944 B2

7

construes claims in an unexpired patent by applying the broadest reasonable

interpretation in light of the specification. 37 C.F.R. § 42.100(b); see also Office

Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Claim

terms are also given their ordinary and customary meaning as would be understood

by one of ordinary skill in the art in the context of the entire disclosure. In re

Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).

1. “Run-through atomizing chamber”

All challenged independent claims recite an atomizer assembly that

“includes an atomizer comprising an electric heating rod and a run-through

atomizing chamber.” CB Distributors contends that “run-through atomizing

chamber” means “a chamber having a flow in which atomization occurs along the

length thereof,” and does not require “that the input and output ends of the

chamber be unblocked.” Pet. 13-14. For the purposes of this decision, we adopt

that claim construction, which is logical when reading each challenged claim as a

whole, and is consistent with disclosures in the Specification of the ’944 patent.

For example, one embodiment of the atomizing chamber is “run-through

atomizing chamber (811),” as described in the Specification and shown in

Figures 5, 7, and 8 of the ’944 patent. Ex. 1001, 6:13-16; Figs. 5, 7, 8. The

Specification discloses that the “diameter of the electric heating rod (82) is less

than the diameter of the atomizing chamber (811),” and that “electric heating rod

(82) enters into the atomizing chamber (811), and there is a clearance between the

electric heating rod (82) and interior wall of the atomizing chamber (811), which

forms a negative pressure cavity (83).” Id. at 6:16-21. Independent claims 1 and

10, and the Specification, indicate that the electric heating rod includes “a cylinder

and a heating element provided at the wall of the cylinder.” Id. at 2:44-46.

IPR2013-00387

Patent 8,156,944 B2

8

Consistently, a “run-through atomizing chamber” in the challenged claims

refers to a chamber inside an atomizer, where that chamber is defined by an

interior wall of a component in the atomizer creating the chamber, e.g., the interior

wall of cylindrical porous component 81, as shown in Figures 5 and 7 of the

’944 patent. Although the Specification does not define “run-through” per se, a

reading of independent claim 1, 10, 39, or 41, in view of the Specification,

indicates that this phrase means that the atomizing chamber runs through, i.e.,

inside and along the length of, the atomizer and its electric heating rod, and

atomization occurs along (i.e., runs through) the length of the chamber.

2. “Negative pressure cavity in the atomizing chamber”

All challenged independent claims recite an atomizer assembly where “there

is a negative pressure cavity in the atomizing chamber.” As noted above, the

’944 patent Specification discloses that a clearance exists between the heating rod

and an interior wall of a component in the atomizer that defines the run-through

atomizing chamber. Id. at 2:40-42; 6:13-21, 40-41. The Specification also

discloses that the “clearance forms a negative pressure cavity.” Id. The

Specification describes that when a person inhales, within shell b, “one end of the

airflow sensor (5) forms a normal pressure cavity, while the other end forms a

negative pressure cavity.” Id. at 7:8-11. As further described in the Specification,

and shown in Figure 1, “air enters the normal pressure cavity through the air inlet

(a1), passes the check valve (7) via the airflow passage in the airflow sensor (5),

and flows to the negative pressure cavity (83) in the atomizer (8).” Id. at 7:22-25;

Fig. 1.

In addition, the Specification discloses that because “negative pressure

cavity (83) provides the negative pressure compared with the outside, the air flow

sprays into it, bringing the cigarette liquid from the porous component (81) to

IPR2013-00387

Patent 8,156,944 B2

9

spray into the negative pressure cavity (83) in the form of fine drips.” Id. at 7:25-

29. After the fine drips enter into the negative pressure cavity, the heating rod

heats the drips for atomization. Id. at 7:30-32. After atomization, the drips form a

“gasoloid, which is discharged through the negative pressure cavity (83) and run-

through hole (813),” and into shell b, and absorbed by air channel b1. Id. at 7:32-

43.

In other words, negative pressure in cavity 83 causes an air and liquid

mixture to form fine drips as the mixture leaves the porous component and enters

cavity 83. The above-mentioned disclosures in the Specification, as a whole,

indicate that cavity 83 has a negative pressure compared to pressure outside that

cavity, i.e., outside the run-through atomizing chamber, e.g., outside porous

component 81, as depicted in Figures 5 and 7 of the Specification.

For the purposes of this decision, consistent with each independent claim as

a whole, an ordinary meaning of the phrase “negative pressure”1 in relation to a

distinct cavity, as well as disclosures in the Specification, we interpret “negative

pressure cavity” to refer to a cavity within the run-through atomizing chamber of

the atomizer, where pressure inside that cavity is negative compared to pressure

outside the cavity. For example, pressure inside the negative pressure cavity is

negative compared to pressure outside the atomizer assembly, within the recited

shell of the electronic cigarette.

1 See, e.g., OXFORD DICTIONARY OF SCIENCE 633 (4th ed. 1999) (defining

“pressure” as the “force normally acting on unit area of a surface or the ratio of

force to area”).

IPR2013-00387

Patent 8,156,944 B2

10

3. “Cigarette solution storage area”

All challenged independent claims recite a “cigarette solution storage area”

that is “located in one end of the shell” and “fits with at least a portion of the said

atomizer assembly inside it.”

An example of the recited “cigarette solution storage area” is “perforated

component for liquid storage (9),” located inside shell b, as shown in Figure 1 and

described in the ’944 patent Specification. Id. at 6:56-58. Dependent claim 2, for

instance, recites “a cigarette solution in the cigarette solution storage area, the

cigarette solution comprising nicotine.” Id. at 9:34-36. Such claim language

indicates that the cigarette solution storage area is capable of storing a cigarette

solution, such as one comprising nicotine. See also id. at 11:21-23 (claim 38,

reciting “a cigarette solution comprising nicotine”).

As depicted in Figures 1, 5, and 7, and described in the Specification, porous

component 81 of atomizer 8 (part of the atomizer assembly) “has a protuberance

on one end,” i.e., protuberance 812, that fits inside perforated component for liquid

storage 9. Id. at 2:46-50; 4:44-45; 6:23-30; see Figure 1 (depicting a protuberance

on atomizer 8 fitting inside perforated component for liquid storage 9).

For the purposes of this decision, consistent with each claim as a whole, as

well as disclosures in the Specification, a “cigarette solution storage area” that “fits

with at least a portion of the said atomizer assembly inside it” means that at least a

part of an atomizer, such as a protuberance on a component of an atomizer, is

located inside the cigarette solution storage area, which is capable of storing a

cigarette solution, such as one comprising nicotine. See also, Ex. 1001, claim 2,

9:17-19.

IPR2013-00387

Patent 8,156,944 B2

11

4. “Porous component”

Independent claims 10, 39, and 41 recite an atomizer that “includes a porous

component.” Claim 20, which depends on claim 10, recites that the “porous

component is made of foamed nickel, stainless steel fiber felt, polymer or

ceramics.”

An example of the porous component is porous component 81, shown in

Figures 5, 7, and 8 of the Specification of the ’944 patent (reproduced above).

Pet. 5; Ex. 1001, Figs. 5, 7, 8. The Specification describes that “porous component

(81) is made of foamed nickel, stainless steel fiber felt, macromolecular polymer

foam or foamed ceramics, providing the remarkable capabilities in liquid

absorption and diffusion, and the ability to absorb the liquid stored in the cigarette

bottle assembly.” Ex. 1001, 6:30-34. The Specification also states that porous

component 81 “absorbs the cigarette liquid from the perforated component for

liquid storage (9).” Id. at 7:3-7. The Specification further describes that “[a]fter

atomization, the big-diameter fine drips are re-absorbed by the porous component

(81) under the action of vortex.” Id. at 7:32-37.

For the purposes of this decision, consistent with disclosures in the

Specification as well as an ordinary meaning of the phrase “porous,”2 we interpret

a “porous component” to be a component of the atomizer assembly in the

electronic cigarette that includes pores and is permeable to liquid, such as cigarette

solution from the cigarette solution storage area.

2 See, e.g., Random House Webster’s College Dictionary 1051 (1995) (defining

“porous” as “permeable by water, air, etc.” or “full of pores”).

IPR2013-00387

Patent 8,156,944 B2

12

B. Discussion

1. 35 U.S.C. § 102(b) Ground Based on Liu

CB Distributors contends that Liu anticipates 1, 2, 5-8, 10, 33, 35, 37, and

38. Pet. 11, 18-29. CB Distributors uses claim charts to explain how the reference

allegedly discloses the claimed subject matter. Id.

a. Liu (Ex. 1019)

Liu relates generally to a no-tar electronic smoking utensil. Ex. 1019, 1:6-7.

Figures 1-6 in Liu illustrate an embodiment described in this reference. Figures 1-

6 are reproduced below.

Figure 1 depicts a side view of a “simulated cigarette,” including outer casing 6.

Id. at 4:15-16; 5:14-15. Figures 2-6 present different sectional viewpoints of the

simulated cigarette of Figure 1. Id. at 4:18-31. Figure 3 depicts a tip end view,

IPR2013-00387

Patent 8,156,944 B2

13

looking in the direction of arrow X in Figure 2. Figure 4 depicts mouthpiece end 4

(as shown in Figure 1), looking at the direction of arrow Y in Figure 2. As

depicted in Figures 2 and 6, the simulated cigarette comprises battery chamber 12

including a plurality of apertures 16, and cylinder liquid container 18 separated

from the battery chamber by dividing wall 20 that comprises a plurality of

apertures 22. Liquid container 18 “is formed of porous inorganic material,” which

“facilitates the distribution and the mixing of the air and liquid mixture.” Id. at

6:11-14.

As shown in Figures 2 and 5, the simulated cigarette also comprises

cylindrical vapouriser heater assembly housing 24, which is “mounted within a

central bore provided in the mouthpiece end of the liquid container 18.” Id. at

6:16-18. Housing 24 houses heater wire 26 spirally wound on a central ceramic

insulating rod. Id. at 6: 18-19. As described in Liu, “walls of the heater housing

24 are provided with a plurality of apertures 28 to permit entry of the liquid/air

from the liquid container 18 into the heater housing 24.” Id. at 6:20-22.

Liu describes that as “the user draws on the cigarette mouthpiece, air is

drawn into the battery chamber [12], into the liquid container [18] to mix with the

liquid mixture, and into the heater assembly [24],” and the “resulting vapour is

drawn into the mouth of the user.” Id. at 7:16-19. Liu further describes that “in

use, suction on the mouthpiece by the user causes air to be drawn through the

porous container for liquid [18], over the heated vapouriser, into the mouthpiece

and into the mouth of the user.” Id. at 4:6-8; see also 9:21-24.

b. Analysis

As noted above, CB Distributors uses claim charts to explain how Liu

allegedly discloses every element recited in each of claims 1, 2, 5-8, 10, 33, 35, 37,

and 38. Pet. 11, 18-29.

IPR2013-00387

Patent 8,156,944 B2

14

For example, CB Distributors points to disclosure in Liu as corresponding to

certain elements recited in independent claims 1 and 10 as follows:

’944 patent claim element Disclosure in Liu

“an atomizer assembly” Vapouriser heater assembly housing 24

“a cigarette solution storage area” Liquid container 18

“negative pressure cavity in the

atomizing chamber”

“suction on the mouthpiece by the user

causes air to be drawn through the porous

container for liquid, over the heated

vapouriser, into the mouthpiece and into

the mouth of the user” (citing Ex 1019,

4:6-9; 9:22-24, Fig. 2)

“porous component” (claim 10) Walls of heater assembly housing 24

“provided with a plurality of apertures 28

to permit entry of the liquid/air from the

liquid container 18 into the heater housing

24” (citing Ex. 1019, 6:20-11, Fig. 5)

Pet. 21, 25, 26, and 28.

As stated in Liu, a portion of liquid container 18 “is formed of a porous

material to facilitate distribution of the liquid through the container, prior to being

fed to the heater means.” Ex. 1019, 3:1-3; Pet. 21. That liquid mixture may

contain nicotine. Id. at 3:10-13. Thus, CB Distributors argues that Liu discloses

that “liquid container 18” stores a cigarette solution. Pet. 21. Liu also discloses

that “vapouriser heater assembly housing 24” houses an electric heating rod (i.e.,

“heater wire 26 spirally wound on a central ceramic insulating rod”), which is

capable of vaporizing for inhalation, i.e., atomizing, a cigarette solution. Id. at

6:16-22; 7:16-19; Pet. 21, 24. As shown in Figure 1 of Liu, housing 24 (an

atomizer assembly) fits inside liquid container 18 (a cigarette-solution storage

IPR2013-00387

Patent 8,156,944 B2

15

area), as recited in the challenged independent claims. Id. at Fig. 1; Pet. 23. CB

Distributors argues that Figure 1 of Liu identifies these components and depicts a

“run-through atomizing chamber,” i.e., a chamber inside housing 24 that contains

the heating rod, which runs along the length of housing 24. Id.

In relation to the “negative pressure cavity in the atomizing chamber” recited

in independent claims 1 and 10, CB Distributors argues that Liu discloses that after

a user draws on a cigarette mouthpiece, air goes into battery chamber 14, and “air

in the battery chamber is sucked into the liquid container 18 through apertures 22

where it mixes with the liquid solution.” Pet. 19 (citing Ex. 1019, 7:16-19).

According to CB Distributors, “air and liquid solution mixture is then drawn into

the porous walls of the vapouriser heater assembly [24] which contain apertures

28.” Id. (citing Ex. 1019, Fig. 5; 6:20-22; 7:16-19). CB Distributors also contends

that “flow of air through the cigarette indicates the space in between the vapouriser

housing 24 and the heating rod 26 forms a negative pressure cavity as the user

inhales.” Id.

As discussed above, we interpret this “negative pressure cavity” element as

referring to a cavity within a run-through atomizing chamber of an atomizer, where

pressure inside that cavity is negative compared to pressure outside the cavity.

CB Distributors contends this cavity in Liu, as shown in Fig. 2 of that reference, is

located between the inner wall of heater assembly housing 24 and heater wire 26.

Pet. 25; Ex. 1019, Fig. 2. Consistent with CB Distributors’s arguments, in a claim

chart, CB Distributors points to disclosure in Liu stating that “suction on the

mouthpiece by the user causes air to be drawn through the porous container for the

liquid, over the heated vapouriser, into the mouthpiece and into the mouth of the

user.” Pet. 25, 28 (citing Ex 1019, 4:6-9; 9:22-24). Along these lines, we note that

Liu describes that “the flow of fluids through the cigarette is caused solely or

IPR2013-00387

Patent 8,156,944 B2

16

principally by the suction of the user.” Ex. 1019, 2:24-26. In addition, as

CB Distributors points out, Liu discloses that “walls of the heater housing 24 are

provided with a plurality of apertures 28 to permit entry of the liquid/air from the

liquid container 18 into the heater housing 24.” Id. at 6:20-22; Pet. 28.

In other words, Liu indicates that when a user inhales, liquid from container

18 moves into the atomizing chamber inside housing 24. See, e.g., Ex. 1019, 7:16-

19. CB Distributors argues that negative pressure, via suction on the mouthpiece,

exists necessarily inside vapouriser housing 24 relative to pressure outside housing

24 in order for liquid to move in that direction. Pet. 25. Thus, while Liu does not

mention “negative pressure” per se, by virtue of its discussion of suction and how

liquid flows inside the cigarette, Liu discloses inherently (necessarily) that pressure

in the cavity between the inner wall of heater assembly housing 24 and heater wire

26 is negative as compared to pressure existing inside liquid container 18. We are

persuaded that CB Distributors has shown a reasonable a likelihood that it will

prevail on its contention that Liu anticipates independent claim 1.

In addition, we are persuaded likewise that CB Distributors has shown a

reasonable likelihood that it will prevail on its contention that Liu anticipates

independent claim 10. For example, as discussed above, the “porous component”

of claim 10 refers to a component in the electronic cigarette that includes pores and

is permeable to liquid, i.e., allows liquid to pass through it. CB Distributors

contends that Liu discloses that an “air and liquid solution mixture is [] drawn into

the porous walls of the vapouriser heater assembly which contain apertures 28.”

Pet. 19 (citing Ex. 1019, Fig. 5; 6:20-22; 7:16-19). In other words, apertures 28 in

the walls housing 24 correspond to pores, and therefore the “walls of heater

housing 24” correspond to a porous component. Id. at 28.

IPR2013-00387

Patent 8,156,944 B2

17

Based on the record before us, CB Distributors has demonstrated a

reasonable likelihood of prevailing on its assertion that Liu anticipates independent

claims 1 and 10.

In addition, CB Distributors argues that Liu discloses the claimed subject

matter recited in dependent claims 2, 5-8, 33, 35, 37, and 38, as presented in the

petition and claim charts. Liu describes that the liquid in container 18 may contain

nicotine, as recited in claims 2 and 38. Pet. 25, 29; Ex. 1019, 6:29-30. Liu also

describes a “heater wire 26 spirally wound on a central ceramic insulating rod” that

corresponds to a “coiled wire” that “extends along the length of” and “on the outer

surface of,” or “on the outside of,” a cylinder, as recited in dependent claims 5-8,

33, 35, and 37. Pet. 26, 28-29; Ex. 1019, 6:18-19. We are persuaded that CB

Distributors has demonstrated a reasonable likelihood of prevailing on its assertion

that Liu anticipates dependent claims 2, 5-8, 33, 35, 37, and 38.

2. 35 U.S.C. § 103(a) Ground Based on Hon ’494 and Liu

CB Distributors contends that claims 1-4, 8-12, 15-26, 33-34, 36, and 38 of

the ’944 patent would have been obvious over Hon ’494 and Liu. Pet. 11, 36-47.

Again, CB Distributors uses claim charts to explain how the references allegedly

teach or suggest the claimed subject matter. Id. We discuss Liu above.

a. Hon ’494 (Ex. 1009)

Hon ’494 relates to an aerosol electronic cigarette. Ex. 1009, 1:35-37.

Figures 1 and 6 in Hon ’494 are reproduced below.

IPR2013-00387

Patent 8,156,944 B2

18

Figure 1 depicts the structure of an electronic cigarette, which includes air inlet 4,

normal pressure cavity 5, sensor 6, negative pressure cavity 8, vapor-liquid

separator 7, atomizer 9, liquid-supplying bottle 11, mouthpiece 15, and shell 14.

Ex. 1009, Fig. 1, 3:14-21. Figure 6 depicts a structural diagram of the atomizer,

which includes atomization cavity 10, heating element RL, first piezoelectric

element M1, atomization cavity wall 25, and porous body 27. Id. at 2:48, 3:26-29,

35-38.

As described in Hon ’494, “solution storage porous body 28 in the liquid-

supplying bottle 11 will be in contact with the bulge 36 on the atomizer 9, thereby

achieving the capillary infiltration liquid-supplying.” Id. at 4:31-33; 3:24-25;

Figs. 1, 6, and 11. Hon ’494 further discloses that heating element RL “can be

made of platinum wire, nickel chromium alloy or iron chromium aluminum alloy

IPR2013-00387

Patent 8,156,944 B2

19

wire with rare earth element” and “can also be made into a sheet form.” Id. at

3:27-29. Porous body 27 in atomizer 9 “can be made of foam nickel, stainless steel

fiber felt, high molecular polymer foam and foam ceramic,” and that “atomization

cavity wall 25 can be made of aluminum oxide or ceramic.” Id. at 3:35-38; Fig. 6.

In addition, Hon ’494 describes that “[w]hen a smoker smokes, the

mouthpiece 15 is under negative pressure, the air pressure difference or high speed

stream between the normal pressure cavity 5 and the negative pressure cavity 8

will cause the sensor 6 to output and actuating signal,” which causes the cigarette

to go into operation. Id. at 4:11-14. Hon ’494 teaches that air enters normal

pressure cavity 5 through air inlet 4, goes through a hole in vapor-liquid separator

7, and flows into atomization cavity 10 of atomizer 9. Id. at 4:21-24. A “high

speed stream passing through the ejection hold drives the nicotine solution in the

porous body 27 to eject into the atomization cavity 10 in the form of droplet,”

where the nicotine solution is atomized by element M1 and further atomized by

heating element RL. Id. at 4:24-27. After atomization, larger diameter droplets are

reabsorbed by porous body 27, and smaller diameter droplets form aerosols, which

are sucked out via passage 12, gas vent 17 and mouthpiece 15. Id. at 4:28-31.

b. Analysis

As noted above, CB Distributors uses claim charts to explain how Hon ’494,

in view of Liu, allegedly teaches or suggests every element recited in each of

claims 1-4, 8-12, 15-26, 33-34, 36, and 38. Pet. 11, 36-47.

For example, CB Distributors points to disclosure in Hon ’494 as

corresponding to certain elements recited in independent claims 1 and 10 as

follows:

IPR2013-00387

Patent 8,156,944 B2

20

’944 patent claim element Disclosure in Hon ’494

“an atomizer assembly” Atomizer 9 with atomization cavity 10

and heating element RL

“a cigarette solution storage area”

that “fits with at least a portion of

the said atomizer assembly inside

it”

Liquid-supplying bottle 11 that fits with

bulge 36 of atomizer 9 inside it

“porous component” (claim 10) Porous component 27

Pet. 37, 39-42.

Hon ’494 also indicates that inhalation (“smoking”) by a user causes a “high

speed stream,” which leads to liquid (“nicotine solution”) flowing from porous

body 27 into atomization cavity 10 of atomizer 9. Ex. 1009, 4:11-27. In other

words, it is a reasonable position that a “negative pressure cavity” exists

necessarily in atomization cavity 10 in relation to pressure outside that cavity.

CB Distributors recognizes, however, that Hon ’494 does not describe a run-

through atomizing chamber or electric heating rod comprising a cylinder, and

therefore, does not disclose a negative pressure cavity in that atomizing chamber,

as required in claims 1 and 10. Pet. 40-42. CB Distributors points to Liu for such

disclosures, as discussed above. Id.

CB Distributors contends that it “would have been obvious to employ a

vapouriser assembly as disclosed by Liu (including the central rod extending

lengthwise along the vapouriser with a spirally wound heater wire inside the

vapouriser assembly) in the electronic cigarette of Hon ’494.” Id. at 39.

According to CB Distributors, the “combination is simply applying a known

technique (a run-through atomization chamber) to a known device (the electronic

cigarette of Hon ’494) to yield predictable results.” Id.

IPR2013-00387

Patent 8,156,944 B2

21

Based on the record before us, we are persuaded by CB Distributor’s

arguments. Liu and Hon ’494 describe similar electronic cigarettes. Atomizer 9 in

Hon ’494 uses a differently shaped heating element, located in a different place in

atomizing chamber 10, as compared to the location of such elements in Liu’s

atomizer (housing 24). Atomizer 9 (comprising porous body 27) in Hon ’494 does

not have a “run-through atomizing chamber” as construed above, because, for

example, heating element RL does not run along the length of cavity 10, but rather

is perpendicular to it. See Ex. 1009, Figs. 1, 6. Liu, on the other hand, discloses an

atomizer assembly (housing 24) including a cylinder electric heating rod (“heater

wire 26 spirally wound on a central ceramic insulating rod”) that runs along a run-

through atomizing chamber, as discussed previously.

As stated in KSR, the “combination of familiar elements according to known

methods is likely to be obvious when it does no more than yield predictable

results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Based on the

record before us, we are persuaded that CB Distributors provides an articulated

reasoning to substitute a cylinder electric heating rod (as taught in Liu) that runs

along the length of atomizing chamber 10 for the heating element RL (as taught in

Hon ’494), because such a substitution appears to be merely a “predictable use of

prior art elements according to their established functions.” KSR, 550 U.S. at 417.

Based on the record before us, CB Distributors has demonstrated a

reasonable likelihood of prevailing on its assertion that independent claims 1 and

10 would have been obvious over Hon ’494 in view of Liu.

In addition, CB Distributors argues that Hon ’494 and Liu teach the claimed

subject matter recited in dependent claims 2-4, 8, 9, 11, 12, 15-26, 33-34, 36, and

38, as presented in the petition and claim charts. For instance, in relation to claim

18, as noted by CB Distributors, Hon ’494 discloses a first magnetic steel, a second

IPR2013-00387

Patent 8,156,944 B2

22

magnetic steel, and a Reed switch between them, as well as a silicon gel check

valve, within sensor 6. Ex. 1009, 2:4-9; Figs. 1, 4, 10; Pet. 44. In addition, Hon

’494 describes a third magnetic steel in the silicon gel check valve, and a Reed

switch outside the valve. Id. In relation to claim 20, Hon ’494 discloses that

porous body 27 in atomizer 9 “can be made of foam nickel, stainless steel fiber

felt, high molecular polymer foam and foam ceramic.” Id. at 3:35-38; Fig. 6; Pet.

45. CB Distributors has demonstrated a reasonable likelihood of prevailing on its

assertion that dependent claims 18 and 20, as well as dependent claims 2-4, 8, 9,

11, 12, 15-17, 19, 21-26, 33-34, 36, and 38, would have been obvious over Hon

’494 in view of Liu.

3. 35 U.S.C. § 103(a) Ground Based on Hon ’494, Liu and Susa

CB Distributors contends that claims 39-41 of the ’944 patent would have

been obvious over Hon ’494 in view of Liu and Susa. Pet. 11, 47-54. CB

Distributors uses claim charts to explain how the references allegedly teach or

suggest the claimed subject matter. Id. We discuss Liu and Hon ’494 above.

c. Susa (Ex. 1020)

Susa describes a simulated smoking article, or “flavor generation article.”

Ex. 1009, 1:14-17; 2:13-21. Figure 1 in Susa is reproduced below.

IPR2013-00387

Patent 8,156,944 B2

23

Figure 1 depicts a schematic view of a flavor generation article that includes casing

12 comprising portion 12a held by a user’s mouth, suction port 22, gas flow path

26 defined in casing 12 as between air intake ports 24 and suction port 22, material

container 32 for storing a liquid material 36, and ceramic heater 42 including

“liquid-absorbing porous layer 46” on its surface. Id. at 5:12-57; 6: 21-25; 7:29-

8:5.

Figure 9 in Susa is reproduced below.

Figure 9 depicts another embodiment of a flavor generation article including liquid

material 36, discharge head 34, ceramic heater 42, inter alia, incorporated in one

casing main body 14. Id. at 12:54-13:5. Relevant to both Figures 1 and 9, Susa

discloses that “ceramic heater 42 is fixed on the inner surface of the casing main

body 14 through a support member 44.” Id. at 7:30-44.

b. Analysis

Independent claims 39 and 41 are similar to independent claim 10, except

both further recite, inter alia, that “on the wall of both ends of the [said] cylinder,

there are mandrils respectively,” and that the porous component of the atomizer

“has a protuberance” that “fits with the [said] cigarette solution storage area” and is

“a half sphere, on the side of which there is a run-through hole connecting to the

[said] atomizing chamber.”

IPR2013-00387

Patent 8,156,944 B2

24

CB Distributors contends that most elements of claims 39-41 are disclosed

in Hon ’494 and/or Liu. For example, above and beyond the elements discussed

above, CB Distributors contends that that Hon ’494 discloses atomizer 9 including

porous body 27 with bulge 36 on one end that is in contact with liquid supplying

bottle 11. Pet. 48. CB Distributors contends that Susa discloses the “mandrils”

element of the challenged claims. Id.

Notably, CB Distributors further contends that Hon ’494 describes a relevant

protuberance that is a half sphere, “on the side of which there is a run-through hole

connecting to the atomizing chamber,” as recited in claims 39 (“39[q]”) and 41.

Pet. 52, 54 (citing Ex. 1009, Figs. 2, 6; 2:8-9; 5:12-14). As argued by CB

Distributors, Hon ’494 discloses that “bulge 36 is a protruding half sphere on the

side of which there is a run-through hole (vapor-liquid separator 7) connecting to

the atomizing chamber.” Id.; see also id. at 49 (citing Ex. 1009, 2:8-9; 5:12-14).

As indicated by CB Distributors, Hon ’494 describes, and depicts in Figures

1 and 6, porous body 27 (i.e., a “porous component”) of atomizer 9 having a

protruding half sphere that fits with liquid supplying bottle 11 (i.e., a “cigarette

solution storage area”). We are not persuaded, however, that CB Distributors

establishes reasonably that Hon ’494 describes or suggests a “protruding half

sphere, on the side of which there is a run-through hole connecting to the [said]

atomizing chamber,” as recited in independent claims 39 and 41 (emphasis added).

The ’944 patent Specification depicts an example of the “run-through hole”

in Figure 8, and states that “protuberance (812) is a protruding half sphere, on the

side of which there is a run-through hole (813) connecting to the atomizing

chamber (811).” Ex. 1001, 6:23-28. By contrast, CB Distributors contends that

vapor-liquid separator 7 in Hon ’494 corresponds to the recited “run-through hole.”

Pet. 49, 52, 54.

IPR2013-00387

Patent 8,156,944 B2

25

Hon ’494 discloses that “air enters the normal pressure cavity 5 through the

air inlet 4, passes through the air passage 18 of the sensor and then the through

hole in the vapor-liquid separator 7, and flows into the atomization cavity 10 in the

atomizer 9.” Ex. 1009, 4:21-24. As described in Hon ’494 and depicted in its

figures, however, the “through hole in the vapor-liquid separator 7” is not located

on the side of the protruding half sphere of porous body 27 on atomizer 9. Rather,

the through hole of vapor-liquid separator 7 is located on the opposite end of the

atomizer. See, e.g., Ex. 1009, Figs. 1 and 9. CB Distributors does not explain

adequately, nor cite evidence of record explaining, how Hon ’494, or other cited

reference, discloses or suggests a run-through hole connecting to a run-through

atomizing chamber, where that hole is located on the side of a protruding half

sphere of the porous component of an atomizer.

Thus, we are not persuaded that CB Distributors has demonstrated a

reasonable likelihood of prevailing on its assertion that independent claims 39 and

41, and therefore claim 40, which depends on claim 39, would have been obvious

over Hon ’494 in view of Liu and Susa.

4. Remaining § 103(a) Grounds of Unpatentability

CB Distributors asserts two other grounds, contending that claim 20 would

have been obvious over Liu, and that claims 3, 4, 12, 15, 17, and 26 would have

been obvious over Liu in view of Susa. Pet. 11, 29-36. Those grounds of

unpatentability are redundant in light of the obviousness ground discussed above,

and on the basis of which we institute inter partes review of the same claims. We

do not authorize an inter partes review on the redundant grounds. See 37 C.F.R.

§ 42.108(a).

IPR2013-00387

Patent 8,156,944 B2

26

III. CONCLUSION

For the foregoing reasons, we are persuaded that CB Distributors has

demonstrated that there is a reasonable likelihood of its proving unpatentability of

claims 1-12, 15-26, and 33-38, but not claims 39-41, of the ’944 patent by a

preponderance of the evidence. CB Distributors also challenges dependent claims

3, 4, 12, 15, 17, 20, and 26 on additional obviousness grounds. We consider these

additional grounds to be redundant to the ones listed above, and deny the petition

as to them. The Board has not made a final determination on the patentability of

the challenged claims.

IV. ORDER

For the reasons given, it is

ORDERED that the Petition is granted as to claims 1-12, 15-26, and

33-38 of the ’944 patent with respect to the following alleged grounds:

1. Claims 1, 2, 5-8, 10, 33, 35, 37, and 38 under 35 U.S.C. § 102 as

anticipated by Liu; and

2. Claims 1-4, 8-12, 15-26, 33, 34, 36, and 38 under 35 U.S.C. § 103

as obvious over Hon ’494 in view of Liu;

FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter

partes review of the ʼ944 patent is hereby instituted commencing on the entry date

of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is

hereby given of the institution of a trial;

FURTHER ORDERED that all other grounds presented in CB

Distributors’s petition are denied, and no ground other than those specifically

axc22

Highlight

axc22

Line

IPR2013-00387

Patent 8,156,944 B2

27

granted above is authorized for the inter partes review as to claims 1-12, 15-26,

and 33-38; and

FURTHER ORDERED that an initial conference call with the Board

is scheduled for 11 AM Eastern Time on January 31, 2014. The parties are

directed to the Office Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug.

14, 2012) for guidance in preparing for the initial conference call, and should be

prepared to discuss any proposed changes to the Scheduling Order entered

herewith and any motions the parties anticipate filing during the trial.

For PETITIONER:

David L. Fehrman

Mehran Arjomand

Morrison & Foerester, LLP

[email protected]

[email protected]

For PATENT OWNER:

Michael J. Wise

Kenneth H. Ohriner

Perkins Coie, LLP

[email protected]

[email protected]



axc22

Highlight

axc22

Highlight


Tel: 571-272-7822 Entered: December 30, 2013


_____________


____________

CB DISTRIBUTORS, INC. and

DR DISTRIBUTORS, LLC

Petitioner

v.

RUYAN INVESTMENT (HOLDINGS) LIMITED

Patent Owner

____________

Case IPR2013-00387

Patent 8,156,944 B2

_______________

Before JACQUELINE WRIGHT BONILLA, BRIAN J. McNAMARA, and

TRENTON A. WARD, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

SCHEDULING ORDER

axc22

Highlight

axc22

Rectangle

axc22

Rectangle

IPR2013-00387

Patent 8,156,944 B2

2

A. INITIAL CONFERENCE CALL

An initial conference call with the Board is scheduled for 11:00 a.m. Eastern

Time on January 31, 2014.

B. DUE DATES

This order sets due dates for the parties to take action in this trial. The

parties may stipulate to different dates for DUE DATES 1 through 3 (earlier or

later, but no later than DUE DATE 4). A notice of the stipulation, specifically

identifying the changed due dates, must be promptly filed. The parties may not

stipulate to an extension of DUE DATES 4-7.

In stipulating to difference times, the parties should consider the effect of the

stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to supplement

evidence (37 C.F.R. § 42.64(b)(2)), to conduct cross-examination (37 C.F.R.

§ 42.53(d)(2)), and to file papers relying on the evidence and cross-examination

testimony (see section B, below).

The parties are reminded that the Testimony Guidelines appended to the

Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48772 (Aug. 14, 2012)

(Appendix D), apply to this proceeding. The Board may impose an appropriate

sanction for failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For

example, reasonable expenses and attorney fees incurred by a party may be levied

on a person who impedes, delays, or frustrates the fair examination of a witness.

1. DUE DATE 1

The patent owner may file—

a. A response to the petition (37 C.F.R. § 42.120), and

b. A motion to amend the patent (37 C.F.R. § 42.121).

axc22

Highlight

IPR2013-00387

Patent 8,156,944 B2

3

Any such response or motion to amend by the patent owner must be filed by

DUE DATE 1. If the patent owner elects not to file anything, the patent owner

must arrange a conference call with the parties and the Board. The patent owner is

cautioned that any argument for patentability not raised and fully briefed in the

response will be deemed waived.

2. DUE DATE 2

The petitioner may file a reply to the patent owner’s response and an

opposition to the patent owner’s motion to amend. Any such filing must be made

by DUE DATE 2.

3. DUE DATE 3

The patent owner may file a reply to the petitioner’s opposition to patent

owner’s motion to amend. Any such filing must be made by DUE DATE 3.

4. DUE DATE 4

a. The petitioner may file a motion for an observation on the cross-

examination testimony of a reply witness. (See section C, below). Any such filing

must be made by DUE DATE 4.

b. Each party may file a motion to exclude evidence (37 C.F.R. § 42.64(c))

and a request for oral argument (37 C.F.R. § 42.70(a)). Any such filing must be

made by DUE DATE 4.

5. DUE DATE 5

a. The patent owner may file a reply to a petitioner’s observation on cross-

examination testimony. Any such filing must be made by DUE DATE 5.

IPR2013-00387

Patent 8,156,944 B2

4

b. Each party may file an opposition to a motion to exclude evidence. Any

such filing must be made by DUE DATE 5.

6. DUE DATE 6

Each party may file a reply to an opposition to a motion to exclude evidence.

Any such filing must be made by DUE DATE 6.

7. DUE DATE 7

The oral argument (if requested by either party) is set for DUE DATE 7.

C. CROSS-EXAMINATION

Except as the parties might otherwise agree, for each due date –

1. Cross-examination begins after any supplemental evidence is due.

37 C.F.R. § 42.53(d)(2).

2. Cross-examination ends no later than a week before the filing date

for any paper in which the cross-examination testimony is expected to be

used. Id.

D. MOTION FOR OBSERVATION ON CROSS-EXAMINATION

A motion for observation on cross-examination provides the petitioner with

a mechanism to draw the Board’s attention to relevant cross-examination

testimony of a reply witness, since no further substantive paper is permitted after

the reply. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768

(Aug. 14, 2012). The observation should not exceed a single, short paragraph.

The patent owner may respond to the observation. Any response must be equally

concise and specific.

IPR2013-00387

Patent 8,156,944 B2

5

DUE DATE APPENDIX

DUE DATE 1…………………………………………..…………...March 17, 2014

Patent owner’s response to the petition

Patent owner’s motion to amend the patent

DUE DATE 2……………………………………………….......……...June 2, 2014

Petitioner’s reply to Patent Owner’s response to petition

Petitioner’s opposition to Patent Owner’s motion to amend

DUE DATE 3……………………………………………..………..….July 2, 2014

Patent Owner’s reply to Petitioner’s opposition

to Patent Owner’s motion to amend

DUE DATE 4……………………………………………....……….…July 28, 2014

Petitioner’s motion for observation regarding

cross-examination of reply witness

Motion to exclude evidence

Request for oral argument

DUE DATE 5………………………………………….………………Aug. 7, 2014

Patent Owner’s response to observation

Opposition to motion to exclude evidence

DUE DATE 6………………………………………………...…….August 14, 2014

Reply to opposition to motion to exclude evidence

DUE DATE 7…………………………………………………..September 18, 2014

Oral argument (if requested)

axc22

Rectangle

axc22

Highlight

axc22

Highlight

axc22

Highlight

axc22

Highlight

axc22

Highlight

axc22

Highlight

axc22

Highlight

IPR2013-00387

Patent 8,156,944 B2

6

For PETITIONER:

David L. Fehrman

Mehran Arjomand

Morrison & Foerester, LLP

[email protected]

[email protected]

For PATENT OWNER:

Michael J. Wise

Kenneth H. Ohriner

Perkins Coie, LLP

[email protected]

[email protected]



axc22

Highlight

axc22

Highlight