Altria Client Services LLC

Patent Trials and Appeals Board

Oct 8, 2021

IPR2021-00744 (P.T.A.B. Oct. 8, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Entered: October 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
R.J. REYNOLDS VAPOR COMPANY,
Petitioner,
v.
ALTRIA CLIENT SERVICES LLC,
Patent Owner.
_____________

IPR2021-00744
Patent 10,299,517 B2
____________

Before GRACE KARAFFA OBERMANN, JAMES J. MAYBERRY, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
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I. INTRODUCTION
Petitioner filed a Petition (Paper 2, “Pet.”) requesting inter partes
review of claims 1–3, 5, and 7–10 of U.S. Patent No. 10,299,517 B2
(Ex. 1001, “the ’517 Patent”). Patent Owner filed a Preliminary Response.
Paper 7 (“Prelim. Resp.”). With Board pre-authorization, Petitioner filed a
stipulation entered in Altria Client Services LLC et al. v. R.J. Reynolds
Vapor Company, No. 1:20-cv-00472-NCT-JLW (M.D.N.C. May 28, 2020)
(“the District Court case”). See Paper 8 (“Stipulation”).
The Petition indicates that R.J. Reynolds Vapor Company, RAI
Innovations Company, R.J. Reynolds Tobacco Company, and Reynolds
Asia-Pacific Limited are real parties-in-interest for Petitioner. Pet. 75. Patent
Owner’s Mandatory Notices indicate that Altria Client Services LLC and
Altria Group, Inc. are real parties-in-interest for Patent Owner. Paper 5, 1.
The parties state that the District Court case involves the ’517 patent.
Pet. 76, Paper 5, 1. The parties also identify IPR2021-00745, IPR2021-
00746, and IPR2021-00747 as involving related patents, respectively, U.S.
Patent Nos. 10,485,269, 10,492,541, and 10,588,357. Pet. 75; Paper 5, 1.
II. BACKGROUND
A. The ’517 Patent (Ex. 1001)
The ’517 patent is titled “Pod Assembly, Dispensing Body, and E-
Vapor Apparatus Including the Same.” Ex. 1001, code (54). The challenged
claims pertain to an e-vapor apparatus having a pod assembly that includes a
liquid compartment, a vaporizer compartment, a vapor channel, and a
plurality of electrical contacts. Id. at 18:41–67, 19:31–20:30 (claims 1
and 10, the independent challenged claims). The written description
identifies the liquid compartment as “a vapor precursor compartment,”
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which is “configured to hold a vapor precursor,” such as an “e-liquid” that
“may be transformed into a vapor.” Id. at 2:61–63, 5:12–19.
The claims further require “a vaporizer compartment including a
heater and a wick.” Id. at 18:53–58, 20:3–8. The specified “vaporizer
compartment” is “in fluidic communication with the liquid compartment.”
Id. at 18:53–58, 20:3–8. The written description, by contrast, refers to a
“device compartment in fluidic communication with the vapor precursor
compartment.” Id. at 2:61–67.
In an embodiment depicted in Figure 18, “the internal space of the
pod assembly” is “divided into a plurality of compartments,” including “the
vapor precursor compartment” and “the device compartment,” which “may
include the vaporizer.” Id. at 10:11–22. We reproduce Figure 18 below.

Id. at Fig. 18. Figure 18 illustrates an exploded view of pod assembly 302 of
an e-vapor apparatus according to the invention. Id. at 3:41–42, 3:45–46,
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10:11–13. “[T]he internal space of” pod assembly 302 is “divided into a
plurality of compartments by virtue of the components therein.” Id.
at 10:12–14. A space bounded by first cap 304, vapor channel 308, pod
trim 310, and second cap 314 represents “the vapor precursor compartment.”
Id. at 10:14–19. “Additionally,” the “bounded space under” vapor channel
308 is “the device compartment,” which includes vaporizer 306. Id.
at 10:19–22. The heater “may be a wire coil surrounding a wick.” Id.
at 17:51.
The specified pod assembly further comprises “a plurality of external
surfaces,” including “a front face, a rear face opposite the front face,” and
two “side” faces. Id. at 18:42–45 (claim 1), 19:32–38 (claim 10). A vapor
channel extends “from the vaporizer compartment through a center of the
liquid compartment” such that the vapor channel is “visible through at least
the front face or the rear face.” Id. at 18:59–62, 20:8–12.
B. Challenged Claims
Petitioner challenges claims 1–3, 5, and 7–10 of the ’517 patent.
Pet. 5. Claims 1 and 10 are the independent challenged claims. Claim 1,
reproduced below, illustrates the subject matter of the claimed invention.
1. A pod assembly for an e-vapor apparatus, comprising:
a plurality of external surfaces including a front face, a rear face
opposite the front face, a first side face between the front
face and the rear face, a second side face opposite the first
side face, a downstream end face, and an upstream end face
opposite the downstream end face, a portion of at least the
front face or the rear face being transparent, the downstream
end face defining an outlet;
a liquid compartment configured to hold a liquid formulation
such that the liquid formulation is visible through at least the
front face or the rear face;
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a vaporizer compartment in fluidic communication with the
liquid compartment, the vaporizer compartment being
adjacent to the upstream end face, the vaporizer compartment
configured to heat the liquid formulation, the vaporizer
compartment including a heater and a wick;
a vapor channel extending from the vaporizer compartment,
through a center of the liquid compartment, and to the outlet,
the vapor channel being visible through at least the front face
or the rear face; and
a plurality of electrical contacts having respective planar
surfaces at the upstream end face and electrically connected
to the heater in the vaporizer compartment, the vapor channel
being between the outlet and the plurality of electrical
contacts.
Ex. 1001, 18:41–67.
Independent claim 10, like claim 1 above, specifies a pod assembly
comprising “a liquid compartment,” “a vaporizer compartment,” and “a
plurality of external surfaces” that include “a front face, a rear face opposite
the front face,” and two “side” faces. Id. at 19:32–38. The vaporizer
compartment of claim 10 also is “in fluidic communication with the liquid
compartment” and, further, includes “a heater and a wick.” Id. at 20:3–8.
The other challenged claims, namely, claims 2, 3, 5, and 7–9, depend
directly or indirectly from claim 1 and, thereby, inherit these same
limitations. Id. at 19:1–30.
C. Asserted Grounds of Unpatentability
Petitioner asserts grounds under 35 U.S.C. § 103,1 as follows:

1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (September 16, 2011), includes revisions to Section 103 that
became effective on March 16, 2013. Because the ’517 patent issued from
an application filed after March 16, 2013, we apply the AIA version.
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Ground Claims Challenged Reference(s)
1 1–3, 5, 7–10 Juul 1,2 Juul 2,3 Juul 34
2 1–3, 5, 7–10 Verleur5
Pet. 6.
For purposes of deciding whether to institute review, we accept
Petitioner’s assertions, which Patent Owner does not oppose in the
Preliminary Response, that Juul 1, Juul 2, and Juul 3 “were published and
publicly available on April 21, 2015.” Pet. 6 n.1 (citing Exs. 1015–1018);
see Prelim. Resp. 30 n.4 (Patent Owner, arguing only that none of the Juul
Articles “predate the first public availability of the Juul device” and, further,
averring that the device itself became available after the priority date of
the ’517 patent). We further adopt Patent Owner’s convention of referring to
these references collectively as “the Juul Articles.” Prelim. Resp. 2. When
citing to the Juul Articles, we identify page numbers added by Petitioner.
Petitioner relies on the Declaration of Karl R. Leinsing. Ex. 1005.
Patent Owner relies on the Declaration of Joseph C. McAlexander. Ex. 2001.
Based on their statements of qualifications and curricula vitae, we find both
Mr. Leinsing and Mr. McAlexander qualified to opine about the level of
ordinary skill in the art at the time of the invention and to testify from the

2 This Might Just Be the First Great E-Cig, WIRED (Apr. 21, 2015),
https://www/wired.com/2015/04/pax-juul-ecig/ (Ex. 1011).
3 Startup behind the Lambo of vaporizers just launched an intelligent e-
cigarette, THE VERGE (Apr. 21, 2015) https://www.theverge.com/2015/
4/21/8458629/pax-labs-e-cigarette-juul (Ex. 1012).
4 PAX Labs, Inc. Introduces Revolutionary Technologies with Powerful E-
Cigarette JUUL, BUSINESSWIRE (Apr. 21, 2015) https://www.businesswire
.com/news/home/20150421005219/en/PAX-Labs-Inc.-Introduces-
Revolutionary-Technologies-with-Powerful-E-Cigarette-JUUL (Ex. 1013).
5 US Pub. No. 2015/0128976 A1, pub. May 14, 2015 (Ex. 1014).
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perspective of a person having such skill. See Ex. 1005 ¶¶ 5–8
(Mr. Leinsing’s statement of qualifications), Ex. 1006 (Mr. Leinsing’s
curriculum vitae), Ex. 2001 ¶¶ 12–17 (Mr. McAlexander’s statement of
qualifications), Ex. 2002 (Mr. McAlexander’s curriculum vitae).
III. ANALYSIS
A. Level of Ordinary Skill in the Art
The level of ordinary skill in the art at the time of the invention is a
factual determination that provides a primary guarantee of objectivity in an
obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324
(Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18
(1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).
In Petitioner’s view, an ordinarily skilled artisan “would possess at least a
Bachelor’s degree in mechanical engineering, electrical engineering,
chemistry, or physics, or a related field, and over three years of relevant
industry experience, or a Master’s degree” in such a field as well as “two
years of industry experience.” Pet. 5 (citing Ex. 1005 ¶¶ 18–20).
Additionally, according to Petitioner, an ordinarily skilled artisan “would
have been familiar with electrically powered vaporizing articles and their
components and underlying technologies or similar components and
technologies.” Id. “Patent Owner adopts this level of skill in the art for the
purposes of responding to this Petition.” Prelim. Resp. 23.
On this record, we find the level of ordinary skill is reflected
adequately in the asserted prior art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are
not required “where the prior art itself reflects an appropriate level and a
need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid
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State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent a more
specific definition is required for purposes of this Decision, we adopt
Petitioner’s unopposed definition, which is consistent with the disclosures of
the asserted prior art and the ’517 patent.
B. Claim Construction
Pursuant to the applicable rule, claims “shall be construed using the
same claim construction standard that would be used to construe the claim in
a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2021). Under
that standard, the “words of a claim ‘are generally given their ordinary and
customary meaning,’” which is “the meaning that the term would have to a
person of ordinary skill in the art in question at the time of the invention, i.e.,
as of the effective filing date of the patent application.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
We construe terms in controversy only to the extent necessary to resolve the
controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. &
Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
The parties address the constructions of several claim terms. Pet. 7–9;
Prelim. Resp. 24–25. Specifically, the parties dispute the meaning of the
phrase “plurality of electrical contacts having respective planar surfaces at
the upstream end face” and the terms “front face” and “rear face” but agree
about the meaning of the phrase “adjacent to.” Compare Pet. 7–9, with
Prelim. Resp. 24–25; see Ex. 1001, 18:55, 18:63–64, 20:5, 20:12–13
(appearance of those terms in each independent challenged claim).
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Petitioner relies on Patent Owner’s infringement contentions and the
accused product as providing the meaning of “front face” and “rear face” for
purposes of the Petition. Pet. 8–9. After the filing of the Petition, but before
the filing of the Preliminary Response, a claim construction order issued in
the District Court case. Ex. 2009. The District Court construed the terms
“front face” and “rear face” in the challenged claims. Id. at 24. In particular,
the District Court found, “[A] person of ordinary skill in the art would
understand the terms ‘front face’ and ‘rear face’ to mean: front/rear surface
bounded by one or more edges.” Id. at 26 (emphasis omitted); see Prelim.
Resp. 26 (reciting the construction assigned by the District Court). Patent
Owner adopts the District Court’s construction for purposes of this
proceeding. Prelim. Resp. 21.
We need not assign express constructions to these or any other terms
to resolve whether to institute review. As further discussed below, without
specifically relying on the District Court’s construction that the specified
faces are “bounded by one or more edges” (Ex. 2009, 26), we determine that
Petitioner has not explained adequately how or why the asserted prior art (in
particular, Verleur) would have suggested a pod assembly having faces.
C. Analysis of the Patentability Challenges
We organize our analysis into two parts, addressing first the ground
based on the Juul Articles then the ground based on Verleur. Our analysis of
claim 1 applies equally to each of the other challenged claims, which
specify, or inherit by dependence from claim 1, the same limitations that are
the focus of our analysis below.
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(1) Asserted Obviousness of Claim 1 over the Juul Articles
Claim 1 specifies a pod assembly comprising “a liquid compartment”
and “a vaporizer compartment.” Ex. 1001, 18:53, 18:59. The “vaporizer
compartment” is “in fluidic communication with the liquid compartment”
and further includes “a heater and a wick.” Id. at 18:50–58.
In Petitioner’s view, the subject matter of claim 1 would have been
obvious over the Juul Articles. Pet. 18–28. The Juul Articles discuss the
launch of an e-cigarette product having “a pocket-size vaporizer and nicotine
juice cartridges you swap in and out.” Ex. 1011, 2. Petitioner asserts that an
image from Juul 1, reproduced below, discloses the specified combination of
a liquid compartment, a vaporizer compartment, a heater, and a wick.
Pet. 23–25.

Ex. 1011, 5; see Pet. 23 (annotated version). The above image appears to
show one of the liquid nicotine cartridges or “Juulpods” referenced in the
Juul Articles. Ex. 1011, 2; Ex. 1012, 2; Ex. 1013, 1. Juul 1 does not describe
this image or identify the components visible in the image. See generally
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Ex. 1011. The image reflects a generally rectangular device that includes an
opaque black upper portion and a transparent lower portion. Within the
transparent lower portion, there are three circular or spherical elements,
which appear to be air bubbles floating within a liquid. Id. at 5. Those
bubble-like elements support Petitioner’s view that the lower transparent
portion of the device in this image contains a liquid. Pet. 24 (annotating this
substance as “Liquid”). The asserted liquid is golden yellow in color.
Ex. 1011, 5.
Petitioner directs us to no disclosure in the asserted prior art from
which we can identify, or discern the function of, any other component of
the device depicted in the above image. See Pet. 23–25 (Petitioner’s
arguments pertaining to the image); see generally Exs. 1011–1013 (Juul
Articles, nowhere identifying any feature of any device by reference to this
image). For example, Petitioner addresses the limitation that requires a
vaporizer compartment in fluidic communication with a liquid compartment,
where the vaporizer compartment includes a heater and a wick, by providing
an annotation of the above image from Juul 1. Pet. 23–25. But, as further
discussed below, Petitioner directs us to no disclosure in the Juul Articles
that clarifies whether, much less where, the above image reflects a liquid
compartment, a vaporizer compartment, a heater, or a wick.
We observe an irregularly shaped gold object visible in the above
image within the transparent lower portion near the center bottom of the
device. Ex. 1011, 5. A square shaped area, somewhat lighter in color than
the surrounding golden yellow liquid, frames the gold object. A silver
element, which appears to be cylindrical in shape, traverses the liquid and
terminates at about the midpoint of the upper edge of the square shaped
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frame area. A gap in the frame area is visible between the gold object and
the silver element. A rightward edge of the center left bubble-like element
contacts a leftward edge of the silver element. Id.
Petitioner and its witness, Mr. Leinsing, make assumptions about
these objects, elements, and shapes that are not supported adequately by
disclosures in the prior art. Pet. 23–25 (arguments pertaining to this image,
citing Ex. 1005 ¶¶ 57, 84–86). For example, Petitioner asserts, “Juul
discloses that Juulpod has a heating mechanism and wick.” Pet. 23. By way
of support, however, Petitioner directs us to no disclosure in the Juul
Articles that indicates the location of the heater or the wick within the
Juulpod. Id. (citing Ex. 1011, 4–6; Ex. 1012, 2–3; Ex. 1013, 1). This is
critical because the claims recite that “a heater and a wick” are included in a
“vaporizer compartment,” which is in fluid communication with a separately
recited “liquid compartment.” Ex. 1001, 18:50–58.
Petitioner asserts that an annotated version of the above image from
Juul 1 shows “a vaporizer compartment having the heating mechanism and
wick.” Pet. 23–24. We reproduce below Petitioner’s annotated version of the
image from Juul 1.

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Pet. 24. The above image is Petitioner’s annotated version of the image from
Juul 1, which appears to show a liquid nicotine cartridge or Juulpod.
Petitioner’s annotation is a mirror image of the original image from Juul 1.
The largest bubble-like element, visible on the left in the original image, is
on the right in Petitioner’s annotated version, and two smaller bubble-like
elements, visible on the right in the original image, are visible on the left in
Petitioner’s annotated version. Petitioner adds red annotations to identify a
liquid, a vaporizer compartment, and an upstream end face of the device.
Petitioner superimposes a red dashed line onto the outer edges of the square
shaped frame area surrounding the gold object and labels it “Vaporizer
Compartment.” Id.
Petitioner’s obviousness challenge is based on the Juul Articles, not
the subsequently launched Juulpod device. See Prelim. Resp. 30 n.4 (Patent
Owner, explaining that the Juulpod device became available only after the
critical date of the invention). On this record, we find that the scant
disclosures of the Juul Articles are not sufficient to support Petitioner’s
contentions regarding how the components reflected in the images from the
Juul Articles correspond to components required by the challenged claims.
In an inter partes review, the petitioner has the burden from the outset
to show with particularity why a challenged patent claim is unpatentable.
Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). As
part of that initial burden, the petition must identify “with particularity” the
“evidence that supports the grounds for the challenge to each claim.”
35 U.S.C. § 312(a)(3). Petitioner fails to explain with any particularity how
or why the image reproduced above supports its view that the Juul Articles
disclose a liquid compartment, a vaporizer compartment, a heater, and a
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wick. Pet. 23–25 (and citations to evidence therein). At best, Petitioner
argues that Juul 3 discloses a “liquid-to-wick cartridge system.” Ex. 1013, 1;
Pet. 24. That phrase falls short of establishing adequately the identity,
location, or function of any object, element, or shape in the Juulpod image.
Even if we accept that the device depicted in the above image from
Juul 1 “has a ‘liquid-to-wick’ cartridge system,” as discussed in Juul 3
(Ex. 1013, 1), we find Petitioner does not explain adequately how or why an
ordinarily skilled artisan would have determined which, if any, components
in the Juulpod image correspond to the specified “heater and wick.”
Ex. 1001, 57–58; see Pet. 23–25; Ex. 1005 ¶¶ 57, 84–86 (Mr. Leinsing’s
declaration testimony, failing to identify with particularity the location of the
heater or the wick, for example, in the image from Juul 1 upon which
Petitioner relies to make out this ground). On this record, we agree with
Patent Owner, “[N]othing in any of the Juul Articles describes the
significance of” the irregularly shaped gold object in the image from Juul 1.
Prelim. Resp. 29. Petitioner and Mr. Leinsing “simply assume that this
element is a vaporizer compartment comprising a heater and wick.” Id.
Alternatively, the Petition is deficient for failure to articulate
adequately a reason why the Juul Articles would have suggested to an
ordinarily skilled artisan a vaporizer compartment in fluidic communication
with a liquid compartment. Pet. 23–25. Without sufficient explanation,
analysis, or support in the prior art, Petitioner annotates the image from
Juul 1 to label the square shaped frame area as a vaporizer compartment. Id.
at 24. Neither Petitioner nor Mr. Leinsing explains that annotation. Id. at 23–
25 (citing Ex. 1005 ¶¶ 57, 84–86).
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For example, neither Petitioner nor Mr. Leinsing explains why a
person of ordinary skill in the art would have understood that the Juulpod
includes a vaporizer compartment in addition to a liquid compartment or that
a heater and a wick are located in a vaporizer compartment. Although
Petitioner and Dr. Leinsing attempt to bolster the disclosure of the references
with an annotated image of the Juulpod (id. at 24; Ex. 1005 ¶ 85), their
annotations are missing at least two claim elements (a heater and a wick) and
their identification of a “Vaporizer Component” is not supported sufficiently
by the Juul Articles. We agree with Patent Owner that Petitioner does not
identify adequately any “disclosure of a separate vaporizer compartment or
the location of that compartment” in the Juul Articles. Prelim. Resp. 28.
Given the absence of an alternative explanation, based on the information
presented, we view Petitioner’s annotation, identifying the square shaped
frame area as a vaporizer compartment, as an impermissible exercise of
hindsight reconstruction driven not by any prior art disclosure but, instead,
by the description of the invention provided in the ’517 patent.
Accordingly, on this record, we find that Petitioner does not show
sufficiently, for purposes of instituting review, that the Juul Articles would
have suggested to an ordinarily skilled artisan a vaporizer compartment,
including a heater and a wick, in fluidic communication with a liquid
compartment as specified in claim 1. Ex. 1001, 18:50, 53, 57–58; see
Pet. 23–25 (failing to address adequately these issues); Prelim. Resp. 28–31
(Patent Owner’s counter information on point). Because each challenged
claim specifies, or inherits by dependence on claim 1, those same limitations
pertaining to the vaporizer compartment, we further find that Petitioner is
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not reasonably likely to prevail in showing that the subject matter of any
challenged claim would have been obvious over the Juul Articles.
(2) Asserted Obviousness of Claim 1 over Verleur
Petitioner also asserts that the subject matter of claim 1 would have
been obvious over the disclosure of Verleur. Pet. 42–55. Claim 1 requires a
pod assembly having “a plurality of external surfaces including a front face,
a rear face opposite the front face, a first side face between the front face and
the rear face,” and “a second side face opposite the first side face.” Ex. 1001,
18:41–45; see id. at 19:35–38 (recitation of those same limitations in
independent claim 10).
In Petitioner’s view, Verleur’s cartomizer 200A is a pod assembly
having the specified plurality of external surfaces. Pet. 44–45. We reproduce
below Petitioner’s annotated version of Figure 12 from Verleur.

Pet. 43. Verleur’s Figure 12 “discloses a pod assembly (cartomizer
200/200A) for an e-vapor apparatus (vaporizer 10).” Id.; see Ex. 1014 ¶¶
16–18, 20. Petitioner adds labels to identify a “Cartomizer” on the left and a
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“Vaporizer” on the right in this illustration. Pet. 43. Petitioner adds a blue
dashed line around the surface of cartomizer 200A and, further, adds gray
shading to the vaporizer, that is, electronic cigarette 10. Id. Verleur discloses
that, during normal operation, cartomizer 200A “is inserted into the
chamber” of electronic cigarette 10. Ex. 1014 ¶ 5 (describing “a cartomizer
insertable into a “chamber” located in a “receiving segment” of the vaporizer
“shell”); see id. at Fig. 1A, ¶ 42 (illustrating and describing the “insertable”
cartomizer designed for introduction into chamber 108 of outer shell 106).
Patent Owner, for its part, argues that Petitioner’s own annotated
figures from Verleur establish that cartomizer 200A “has one continuous,
undivided” external surface. Prelim. Resp. 45–47. Patent Owner’s argument
is consistent with the surface of the cartomizer as depicted above in
Figure 12. See supra 16 (blue dashed line added by Petitioner to Figure 12,
emphasizing cartomizer 200A, which appears to have one continuous
cylindrical external surface). Against that backdrop, for reasons that follow,
we agree with Patent Owner that Petitioner does not show sufficiently that
Verleur would have suggested to an ordinarily skilled artisan a cartomizer
having the plurality of external surfaces required by claim 1. Pet. 42–45, 64
(Petitioner’s information on point); see Prelim. Resp. 42, 45–48 (Patent
Owner’s counter information).
For example, referring to Verleur’s Figure 1B, Petitioner selects,
without adequate explanation, two points on a circular cross section of the
cartomizer as establishing first and second side faces of the external surface.
Pet. 64. We reproduce below Petitioner’s annotated version of Figure 1B.
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Pet. 64; see Prelim. Resp. 46 (reproducing this annotated figure). Verleur’s
Figure 1B illustrates a lateral cross sectional view of Verleur’s e-cigarette,
namely, “the end of the inserted cartomizer.” Ex. 1014 ¶ 8. The cross section
is circular in shape. Petitioner adds red labels that, inter alia, identify two
points on the external surface of the circular cross section as first and second
side faces.
Petitioner assigns labels, “First Side Face” and “Second Side Face,” to
two points on the surface of a circle, but that endeavor is ineffective to
explain why Figure 1B would have suggested to an ordinarily skilled artisan
a cartomizer having a plurality of external surfaces. Pet. 64. Petitioner’s
annotations are not supported sufficiently by the disclosure of Verleur,
which illustrates a cartomizer having a single external surface, not a plurality
of external surfaces as recited in claim 1. See, e.g., Pet. 16, 53, 64, 71
(reproducing Verleur’s Figures 1A–1C, which consistently illustrate the
circular cross section of the cartomizer, indicating one external surface).
Petitioner does not explain adequately why the annotations added to
this or any other figure in Verleur are effective to demarcate an asserted
front face, rear face, and two side faces in Verleur’s cartomizer. See Pet. 42–
45, 64; see Prelim. Resp. 46 (pointing out that Petitioner’s annotations are
not explained adequately). For example, Petitioner does not explain where
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one surface ends or another begins (Pet. 42–46, 65) and no explanation is
evident upon review of the figures themselves. See, e.g., Ex. 1014, Figs. 1B–
C, 2A–B (consistently illustrating Verleur’s cartomizer as having a circular
cross section); see also Ex. 1014, Figs. 4, 5, 12, 15 (consistently illustrating
the cartomizer as having one continuous cylindrical external surface).
Petitioner argues that three paragraphs in Verleur support the
proposition that the reference would have suggested a cartomizer having
“sides.” Pet. 44–45 (citing Ex. 1014 ¶¶ 34, 42, 43). The first two paragraphs
cited by Petitioner do not refer to sides at all. Ex. 1014 ¶¶ 34, 42; see Prelim.
Resp. 46–47 and n.7 (providing Patent Owner’s related argument). Petitioner
does not explain adequately why those disclosures would have suggested a
cartomizer having a plurality of external surfaces, and no explanation is
evident upon review of the disclosures themselves. Pet. 43–45; see Ex. 1014
¶¶ 34, 42.
The third paragraph refers to “holes or ducts provided, for instance, in
sides of” an “outer shell” in Verleur’s device. Ex. 1014 ¶ 43; see id. at Fig. 1
(illustrating “outer shell 106”). Petitioner does not explain adequately the
significance of that disclosure. Pet. 42–45. For example, Petitioner argues,
“[T]o the extent the accused product has faces as Patent Owner contends” in
the District Court case, “the cartomizer of Verleur has faces” as well. Id.
at 45. The disclosure of Verleur, however, consistently indicates that
cartomizer 200 has one continuous, undivided cylindrical external surface.
Ex. 1014, Figs. 1A–1C, 2A–B, 4, 5, 12, 15 (illustrating cartomizer 200). It is
not clear on this record, and Petitioner does not explain adequately, how or
why Patent Owner’s extrinsic contentions in the District Court case are
sufficient to support Petitioner’s contention that Verleur’s single continuous
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external surface has four faces as recited in claim 1. Pet. 45. For example,
Petitioner does not compare the shape of the accused product with the shape
of cartomizer 200 as disclosed in Verleur. Even if Petitioner had made such
a comparison, however, the Petition is deficient for failure to explain why
the Board should view Patent Owner’s District Court infringement
contentions as sufficient to show that the claim limitation reads on the prior
art.
We agree with Patent Owner that Petitioner directs us to no disclosure
in Verleur that “makes any mention of multiple surfaces, faces, or even a
front and rear of the device.” Prelim. Resp. 45 (citing, inter alia, Ex. 2001
¶ 110). Petitioner rests instead on Mr. Leinsing’s opinion that an ordinarily
skilled artisan would have viewed Verleur’s cartomizer as having “faces
corresponding to the vaporizer’s sides.” Ex. 1005 ¶ 131; see Pet. 45 (citing
Ex. 1005 ¶¶ 130–131); Ex. 1014, Fig. 1, ¶ 43. For support, however,
Mr. Leinsing directs us to the same three paragraphs in Verleur cited in the
Petition. Ex. 1005 ¶¶ 130–131 (citing Ex. 1014 ¶¶ 34, 42, 43).
These three paragraphs in Verleur relate to Figure 1, which
unambiguously illustrates cartomizer 200/200A as having “a cylindrical
cross section.” Prelim. Resp. 45; see Ex. 1014, Figs. 1A–C, ¶¶ 6–9.
Mr. Leinsing does not explain why an ordinarily skilled artisan would have
interpreted these disclosures as suggesting a plurality of external surfaces.
See Ex. 1005 ¶¶ 130–131. Mr. Leinsing simply repeats conclusory assertions
made in the Petition. Compare Pet. 43–45, with Ex. 1005 ¶¶ 130–131.
Without adequate objective proof, Mr. Leinsing’s bare opinion that Verleur
would have suggested a cartomizer having a plurality of external surfaces is
entitled to little weight. See Ashland Oil, Inc. v. Delta Resins &
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Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual
support” underpinning an expert’s opinion “may render the testimony of
little probative value in a validity determination.”).
Even if we accept that the “outer shell” of Verleur’s vaporizer may
have external “sides,” as arguably suggested by Verleur’s Figure 15,
Mr. Leinsing does not explain adequately why that would have suggested
that the cartomizer, designed for insertion into an internal chamber of that
“outer shell,” also has a plurality of sides. Ex. 1014 ¶ 43; see Ex. 1005 ¶ 131
(Mr. Leinsing’s testimony, citing Ex. 1014 ¶ 43). On the contrary,
Mr. Leinsing, in a single sentence unsupported by a citation to any objective
proof, posits that an ordinarily skilled artisan “would have known that for
the cartomizer to be inserted into and engaged with the vaporizer, the
cartomizer would have faces corresponding to the vaporizer’s sides.”
Ex. 1005 ¶ 131. Patent Owner disagrees, arguing, “Even if the vaporizer has
external ‘sides,’ that does not necessarily mean that the internal surfaces that
mate with the cartomizer must share those sides.” Prelim. Resp. 47 n.8
(emphasis in original).
Patent Owner’s argument, on that crucial point, is consistent with the
disclosure of Verleur. See, e.g., Ex. 1014 ¶¶ 42, 43 (Verleur, explaining that
“outer shell 106” may have “sides,” and “cartomizer 200A is inserted into
chamber 108” “defined by outer shell 106 and electrical connector 120”).
Like Verleur’s Figure 12, Figure 15 illustrates a cartomizer that appears to
have one continuous cylindrical external surface. See Ex. 1014, Fig. 15
(cartomizer 200A–C), ¶¶ 58, 59 (describing Figure 15 and disclosing that
cartomizer 200/200A/200B/200C may be inserted into chamber 108).
Neither Petitioner nor Mr. Leinsing directs us to any disclosure in Verleur
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suggesting that cartomizer 200/200A/200B/200C, as illustrated in Figure 15,
has a different shape from cartomizer 200/200A/200B/200C, as illustrated in
Figure 12. On that point, we note that a single vertical line is visible in the
external surface of cartomizer 200 in one of three views of that element
illustrated in Figure 15. See id. at Fig. 15 (cartomizer 200A). Neither
Petitioner nor Mr. Leinsing, however, addresses that line, much less explains
why it would have suggested a cartomizer having a plurality of external
surfaces. Pet. 43–46; Ex. 1005 ¶¶ 130–131.
Patent Owner identifies additional information that casts doubt on
Mr. Leinsing’s opinion that Verleur discloses a cartomizer having a plurality
of external surfaces. Prelim. Resp. 47 (citing Ex. 2001 ¶¶ 112–113).
Specifically, Patent Owner directs us to Mr. McAlexander’s opinion that
Verleur’s cartomizer “does not have sides” but, rather, has “a circular cross-
section” as demonstrated by Petitioner’s own annotated version of Verleur’s
Figure 1B, reproduced supra 17. Ex. 2001 ¶ 112. In Mr. McAlexander’s
further view, the cylindrical external surface of the cartomizer need not
“change if the cartomizer is inserted into a shell that has sides – e.g., the
shell may have an interior cylindrical hole into which the cartomizer fits.”
Id. ¶ 113.
Mr. McAlexander’s opinion finds express support in Verleur’s
disclosure. In that regard, we find significant that Figures 1 and 2 are cross-
sectional drawings that squarely address the question at hand, namely, the
number of external surfaces on “the end of the inserted cartomizer.”
Ex. 1014 ¶¶ 8, 11; Prelim. Resp. 27. Those figures show that the cartomizer
has a circular cross section, which is consistent with one continuous
cylindrical surface. Id. at Figs. 1A–1B, 2A–2B. Verleur’s other figures
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confirm that point by illustrating the cartomizer as having one smooth and
undivided external surface. Id. at Figs. 4, 5 12, 15.
Based on the information presented, therefore, we find Petitioner does
not show sufficiently that any figure or other disclosure in Verleur would
have suggested a cartomizer having a plurality of external surfaces. Pet. 43–
46 (Petitioner’s information on that issue). Instead, Petitioner directs us to
figures from Verleur that consistently disclose a cartomizer that has “a
circular cross section” and “one continuous, undivided” external surface.
Prelim. Resp. 46–47; see Pet. 16–18, 43–44, 52–53, 60, 64, 68–69, 71
(reproducing figures from Verleur). The annotations added by Petitioner do
not alter the plain import of those disclosures. See, e.g., Pet. 43, 64
(annotated versions of Verleur’s Figure 1B, reproduced supra 17, and
Figure 12, reproduced supra 16).
On this record, we find Petitioner does not show sufficiently that
Verleur discloses a cartomizer having “a plurality of external surfaces” as
specified in claim 1. Ex. 1001, 18:41–45. Because each challenged claim
specifies or inherits that same limitation, Petitioner is not reasonably likely
to prevail at trial in showing that the subject matter of any claim would have
been obvious over Verleur.
IV. CONCLUSION
For the above reasons, we deny the Petition and do not institute an
inter partes review.
V. ORDER
It is
ORDERED that the Petition is denied and no inter partes review is
instituted.
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For PETITIONER:

John Marlott
jamarlott@jonesday.com

Marc Blackman
msblackman@jonesday.com

Timothy Heverin
tjheverin@jonesday.com

David Cochran
dcochran@jonesday.com

Matthew Johnson
mwjohnson@jonesday.com

For PATENT OWNER:

Elizabeth Weiswasser
Elizabeth.weiswasser@weil.com

Brian E. Ferguson
Brian.ferguson@weil.com

William S. Ansley
Sutton.ansley@weil.com

Stephanie Adamakos
Stephanie.adamakos@weil.com

Adrian C. Percer
Adrian.percer@weil.com

Robert S. Magee
Robert.magee@weil.com