NJOY, Inc.v.FONTEM HOLDINGS 1 B.V.

Patent Trial and Appeal Board

Dec 8, 2015

13915427 (P.T.A.B. Dec. 8, 2015)

Trials@uspto.gov Paper 16
571-272-7822 Entered: December 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

NJOY, INC., CB DISTRIBUTORS, INC., DR DISTRIBUTORS, LLC,
FIN BRANDING GROUP, LLC, ELECTRONIC CIGARETTES
INTERNATIONAL GROUP, LTD. F/K/A VICTORY ELECTRONIC
CIGARETTES CORPORATION, AND
LOGIC TECHNOLOGY DEVELOPMENT LLC,
Petitioners,

v.

FONTEM HOLDINGS 1 B.V.,
Patent Owner.
____________

Case IPR2015-01301
Patent 8,863,752 B2
____________

Before JOSIAH C. COCKS, DONNA M. PRAISS, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

KOKOSKI, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
NJOY, Inc., CB Distributors, Inc., DR Distributors, LLC, FIN
Branding Group, LLC, Electronic Cigarettes International Group, Ltd. f/k/a
Victory Electronic Cigarettes Corporation, and Logic Technology
Development LLC (collectively, “Petitioner”) filed a Petition (“Pet.”) to
institute an inter partes review of claims 1– 20 of U.S. Patent No. 8,863,752
B2 (“the ’752 patent,” Ex. 1001). Paper 1. Fontem Holdings 1 B.V.
(“Patent Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 7.
We have jurisdiction under 35 U.S.C. § 314.
Upon consideration of the Petition, Preliminary Response, and the
evidence of record, we determine that Petitioner has not established a
reasonable likelihood of prevailing with respect to the unpatentability of
claims 1–20 of the ’752 patent. Accordingly, we deny the Petition and do
not institute an inter partes review.
A. Related Proceedings
Petitioner identifies multiple cases pending in the Central District of
California that could be affected by this proceeding. Pet. 2–3. Petitioner
also identifies ten related inter partes review proceedings. Id. at 3.
Petitioner additionally identifies four petitions for inter partes review “filed
by JT International S.A. prior to Logic Technology Development LLC’s
acquisition.” Paper 6, 1.
B. The ’752 Patent
The ’752 patent, titled “Electronic Cigarette,” is directed to an
electronic cigarette that includes a battery assembly connected to one end of
an atomizer assembly and a cigarette bottle assembly inserted into the other
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end of the atomizer assembly, forming one cigarette-type body. Ex. 1001,
1:34–38.
Figures 2A, 3, and 4 of the ’752 patent are reproduced below:

Figure 2A is a view of the battery assembly, Figure 3 is a diagram of the
atomizer assembly, and Figure 4 is a diagram of the cigarette bottle
assembly. Id. at 1:45, 47–48. The battery assembly includes primary shell
211, lithium ion battery 203, electric circuit board 205, and primary screw
thread electrode 209. Id. at 2:5–9. Indicator 202 is at one end of primary
shell 211, and external thread electrode 209 is at the other end of primary
shell 211. Id. at 2:9–11. The atomizer assembly includes internal thread
electrode 302, air-liquid separator 303, atomizer 307, and secondary shell
306. Id. at 2:33–35. The cigarette bottle assembly includes cigarette liquid
bottle assembly 401, fiber 402, and suction nozzle 403. Id. at 2:48–50.
Cigarette-liquid-containing fiber 402 is located on the end of cigarette liquid
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bottle 401 that is inserted into secondary shell 306 of the atomizer assembly,
such that it lies against atomizer 307. Id. at 2:50–53.
Figure 5A of the ’752 patent is reproduced below:

Figure 5A is a section view of an electronic cigarette described in the ’752
patent. Id. at 1:49. Figure 5A shows the battery assembly depicted in Figure
2A fastened onto the atomizer assembly depicted in Figure 3, and inserted
into the cigarette bottle assembly depicted in Figure 4. Id. at 2:57–60.
C. Illustrative Claims
Petitioner challenges claims 1–20 of the ’752 patent. Claims 1, 11,
14, 16, and 19 are independent. Claims 1 and 11 are illustrative, and read as
follows:
1. An atomizer assembly for an electronic cigarette,
comprising:
an atomizer assembly housing containing an atomizer, liquid
storage, and a screw thread electrode on one end of the atomizer
assembly housing, with the screw thread electrode having a
through hole centered on the screw thread electrode; and
with the atomizer in physical contact with the liquid storage;
and
a flow passageway leading from the atomizer to an outlet of the
atomizer assembly housing.
Ex. 1001, 4:44–54.
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11. An atomizer assembly for an electronic cigarette,
comprising:
an atomizer assembly housing containing an atomizer and
liquid storage;
a screw thread electrode on one end of the atomizer assembly
housing;
a through-hole in the screw thread electrode substantially
aligned with the atomizer;
the atomizer electrically connected to the screw thread electrode
and with the atomizer in physical contact with the liquid
storage; and
a flow passageway leading from the atomizer to an outlet of the
atomizer assembly housing.
Id. at 5:15–27.
D. The Prior Art
Petitioner relies on the following prior art references:
Reference Description Date Exhibit No.
Gilbert US 3,200,819 Aug. 17, 1965 1004
Takeuchi US 6,155,268 Dec. 5, 2000 1005
Hon ’134 Canadian Patent App.
No. 2,752,134 A1
Nov. 11, 2004 1003

E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–20 of
the ’752 patent on the following grounds:
References Basis Claims Challenged
Hon ’134 and Gilbert § 103 1–3, 6–11, 13–20
Hon ’134, Gilbert, and
Takeuchi § 103 4, 5, 12

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II. ANALYSIS
A. Claim Interpretation
We interpret claims of an unexpired patent using the “broadest
reasonable construction in light of the specification of the patent in which
[the claims] appear[].” 37 C.F.R. § 42.100(b). For purposes of this
Decision, based on the record before us, we determine that none of the claim
terms requires an explicit construction.
B. Obviousness over Hon ’134 and Gilbert
Petitioner contends that the subject matter of claims 1–3, 6–11, and
13–20 would have been obvious under 35 U.S.C. § 103 over the
combination of Hon ’134 and Gilbert. Pet. 14–50. Petitioner provides claim
charts and relies on the Declaration of Samir Nayfeh, Ph.D. (“the Nayfeh
Declaration,” Ex. 1002) in support of its contentions. Id.
1. Overview of Hon ’134
Hon ’134 is directed to a non-smokable electronic spray cigarette.
Ex. 1003, 1:6–7. The Hon ’134 electronic cigarette includes a shell, nicotine
solution and its container, a control circuit, an airflow sensor, and a
vaporization nozzle arranged within the air-suction end of the shell that is
connected with the nicotine solution storage container. Id. at 2:14–20.
Figure 9 of Hon ’134 is reproduced below:

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Figure 9 is a structural diagram of an embodiment of the Hon ’134 electronic
cigarette. Id. at 4:13–14. Vaporization nozzle 317, electronic valve 311
(which is connected to metering cavity 320), and liquid storage container
313 form a liquid transmission passage. Id. at 9:20–22. When electronic
valve 311 is activated, nicotine solution enters metering cavity 320 from
liquid storage container 313 under pressure and pushes a piston that allows a
constant volume of liquid to enter vaporization nozzle 317 to be vaporized
and condensed to form aerosols. Id. at 9:25–30.
Figure 3 of Hon ’134 is reproduced below:

Figure 3 is a schematic diagram of the structure of the high temperature
vaporization nozzle and electric-thermal element described in Hon ’134. Id.
at 3:33–4:2. The depicted vaporization nozzle comprises electrode lead wire
401, heating wire 402, thread 403, base 404, and nozzle 405. Id. at 8:24–25.
2. Overview of Gilbert
Gilbert is directed to a smokeless, non-tobacco cigarette that provides
heated, moist, flavored air. Ex. 1004, 1:7–11. According to Gilbert, the size
and shape of the described device “may approximate the size and shape of a
cigarette” so that “its use will not call undue attention to the user.” Id. at
3:60–63.
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Gilbert describes an outer tube having an inner end portion and an
outer end portion, with internal threads at the inner end portion used to
connect a mouthpiece. Id. at 1:71–2:2. The mouthpiece includes a threaded
electrical socket, and a battery cavity for detachably receiving a battery. Id.
at 2:41–45. A heating element, such as a vacuum tube or bulb with a screw
plug, is detachably engaged with the threaded electrical socket. Id. at 2:46–
48. According to Gilbert, the screw plug has an end contact adapted to close
against the outer battery contact. Id. at 2:48–50. When the vacuum tube or
bulb is assembled to the threaded electrical socket, its tip end engages the
inner battery contact and completes the circuit through the filament of the
vacuum tube or bulb by a contact strip, illuminating or energizing the
vacuum tube or bulb before assembly to the external tube. Id. at 2:71–3:3.
3. Discussion
Petitioner contends that Hon ’134 teaches or suggests a device having
all of the limitations recited in independent claim 1, except the recited
“screw thread electrode on one end of the atomizer assembly housing.”
Pet. 21–32. Petitioner contends that the combination of Hon ’134 and
Gilbert meets this limitation. Id. at 22–25, 29–30. Petitioner contends that
“Hon ’134 describes that the ‘vaporization nozzle’ has ‘thread 403’ at one
end of the ‘nozzle 405” and “suggest[s] that ‘thread 403’ can be an electrode
and Gilbert explains how to complete the electric circuit through the heating
filament and the screw thread.” Id. at 22–23.
Specifically, Petitioner contends that Hon ’134 describes the
vaporization nozzle depicted in Figure 3 as having “a single ‘electrode lead
wire 401’ attached to the ‘heating wire 402’” because “[t]he two parallel
lines identified as a single ‘electrode lead wire 401’ depict the outline of the
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wire, much like the two lines used to depict the outline of the single ‘heating
wire 402’ in Fig. 3 depict a single wire.” Pet. 14. Petitioner contends that a
person having ordinary skill in the art “would have known that an electric
circuit needs two connections,” and that “[t]he lack of an explicitly
illustrated second connection to the electric circuit means that the circuit is
completed either by some structure that is not depicted, such as some other
wire, or the circuit is completed by an existing point of contact.” Id. at 15.
Petitioner further contends that a person having ordinary skill in the art
“would have realized that ‘thread 403’ is a depicted point of contact.” Id.
According to Petitioner, “[g]iven how the ‘vaporization nozzle’ is
depicted in Figs. 3 and 9, one implementation would be to use the ‘thread
403’ as one of the two electrical connections for the circuit, allowing the
‘vaporization nozzle’ to be attached and electrically connected by screwing
it into the assembly.” Id. at 17 (citing Ex. 1002 ¶ 34). Petitioner contends
that “[o]ne well-known way to use a screw thread as an electrode is to use
standard lightbulb socket ‘technology,’ and Gilbert illustrates how such a
socket can be used in the context of electronic cigarettes.” Id. Petitioner
further contends “[i]mplementing Hon ’134 and Gilbert together was well
within the ordinary skill of the POSA [person having ordinary skill in the
art], as it requires no more than using a well-known part in a place and in a
way that it is suggested to be.” Id. at 18.
Patent Owner argues that “Hon ’134 does not disclose the use of
screw thread electrodes in conjunction with its disclosed devices” and that
Petitioner’s “entire argument is based on impermissible hindsight.” Prelim.
Resp. 30. Patent Owner argues that “[t]hreads 403 in Hon ’134 are
presented as a means for mechanically attaching nozzle 405 to baffle 15”
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and that “Hon ’134 never refers to the threads 403 as screw thread
electrodes, and never teaches that these threads be used to create an
electrical connection.” Id. at 33. Patent Owner further argues that, because
“Hon ’134 does not teach or suggest the use of a screw thread electrode,”
Petitioner does not “provide a credible motivation for one of ordinary skill in
the art to replace the wire connections in Hon ’134 with a screw thread
electrode.” Id. at 34.
We agree with Patent Owner. Petitioner’s contention that Hon ’134
suggests that the vaporization nozzle is connected with a screw thread
electrode is premised on Petitioner’s interpretation of Figure 3. See Pet. 14–
16. Petitioner and Dr. Nayfeh assert that the two parallel lines identified as
electrode lead wire 401 in Figure 3 depict the outline of a single wire, but do
not explain adequately why a person having ordinary skill in the art would
interpret Figure 3 in this manner. Although Petitioner and Dr. Nayfeh
suggest that the depiction of heating wire 402 using two lines to form an
outline of the single wire confirms that electrode lead wire 401 is similarly
depicted, it is not apparent from Figure 3 that heating wire 402 is depicted as
Petitioner and Dr. Nayfeh describe. See Pet. 15; Ex. 1002 ¶ 30. Neither
Petitioner nor Dr. Nayfeh direct us to statements in Hon ’134 that support
the assertion that lead electrode wire 401 is a single wire. On the contrary,
as Patent Owner notes, Hon ’134 includes other figures that use two lines to
depict paired wires, such as electrodes 508, 509, and 510 shown in Figure 5.
Prelim. Resp. 30–31; see Ex. 1001, 8:27–28, Fig. 5. We also are persuaded
by Patent Owner’s argument that Hon ’134’s use of the singular form when
referring to “lead electrode wire 401” was not necessarily meant to limit it to
a single wire, as “Hon ’134 uses the singular form for ‘spring 506,’ ‘alloy
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wire 507,’ and ‘pinch roller 602’ in the specification, but Figures 5 and 6
show two or more of each of these elements in the illustrate[d]
embodiments.” Prelim. Resp. 32. For these reasons, we are not persuaded
that Petitioner has established sufficiently that Hon ’134 suggests the use of
a screw thread electrode.
To the extent that Petitioner argues that a person having ordinary skill
in the art would be motivated to combine Hon ’134 and Gilbert because “[t]o
use the screw thread electrode of Gilbert asks a POSA to merely ‘implement
a predictable variation’ of Hon ’134” and “is a combination of known
elements with predictable results” (Pet. 20–21), this argument is equally
unavailing. These conclusory statements are nothing more than a
restatement of basic tests identified by the Supreme Court for determining
whether an invention would have been obvious. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007) (“whether the improvement is more
than the predictable use of prior elements according to their established
functions”). General principles on what may constitute a supporting
rationale cannot substitute for specific application of those principles to the
facts. Petitioner does not provide a persuasive, fact-based analysis to
support the asserted combination of Hon ’134 and Gilbert.
Accordingly, we are not persuaded that the Petition establishes why a
person having ordinary skill in the art would attempt to modify Hon ’134 by
looking to Gilbert. Petitioner and Dr. Nayfeh contend that each element of
the ’752 patent was known in the prior art, but an articulated reasoning with
rational underpinning as to why a person having ordinary skill in the art
would have combined the elements to achieve the claimed invention is
missing. Without such articulated reasoning, Petitioner’s contentions are
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insufficient to establish that the claims of the ’752 patent would have been
obvious based on the combination of Hon ’134 and Gilbert. See Cheese Sys.
Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed.
Cir. 2013) (“Obviousness cannot be based on the hindsight combination of
components selectively culled from the prior art to fit the parameters of the
patented invention.” (internal quotation marks omitted)). As explained in
KSR, “a patent composed of several elements is not proved obvious merely
by demonstrating that each of its elements was, independently, known in the
prior art.” KSR, 550 U.S. at 418.
For these reasons, Petitioner has not established a reasonable
likelihood that it would prevail on the ground that claims 1–3, 6–11, and 13–
20 would have been obvious under 35 U.S.C. § 103 over the combination of
Hon ’134 and Gilbert.
C. Obviousness over Hon ’134, Gilbert, and Takeuchi
Petitioner contends that the subject matter of claims 4, 5, and 12
would have been obvious under 35 U.S.C. § 103 over the combination of
Hon ’134, Gilbert, and Takeuchi. Pet. 50–60. Petitioner provides claim
charts and relies on the Nayfeh Declaration in support of its contentions. Id.
We already have determined that Petitioner did not set forth sufficient
articulated reasoning with rational underpinnings to support the combination
of Hon ’134 and Gilbert. Petitioner does not provide any additional
arguments with respect to the proposed combination of Hon ’134, Gilbert,
and Takeuchi with respect to an ordinarily-skilled artisan’s motivation to
combine the cited references. Accordingly, Petitioner has not established a
reasonable likelihood of prevailing on the ground that claims 4, 5, and 12
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would have been obvious under 35 U.S.C. § 103(a) over the combination of
Hon ’134, Gilbert, and Takeuchi.

III. CONCLUSION
For the foregoing reasons, we conclude that, on the present record,
Petitioner has not established a reasonable likelihood that it would prevail on
its challenge that claims 1–20 of the ’752 patent are unpatentable.

IV. ORDER
In consideration of the foregoing, it is hereby
ORDERED that the Petition is denied.

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PETITIONER:

James H. Morris
Edmund J. Walsh
WOLF, GREENFIELD & SACKS, P.C.
JMorris-PTAB@wolfgreenfield.com
EWalsh-PTAB@wolfgreenfield.com

PATENT OWNER:

Michael J. Wise
Joseph P. Hamilton
PERKINS COIE LLP
patentprocurement@perkinscoie.com
MWise@perkinscoie.com
JHamilton@perkinscoie.com
ACandeloro@perskinscoie.com