Holt's Cigar Holdings, Inc.v.Boveda, Inc.

Patent Trial and Appeal Board

Mar 9, 2016

08871560 (P.T.A.B. Mar. 9, 2016)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Entered: March 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HOLT’S CIGAR HOLDINGS, INC.,
Petitioner,
v.
BOVEDA INC.,
Patent Owner.

Case IPR2015-01844
Patent 5,936,178

Before BRIAN J. MCNAMARA, HYUN J. JUNG, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.
KAISER, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

IPR2015-01844
Patent 5,936,178
2
INTRODUCTION
A. Background
Holt’s Cigar Holdings, Inc. (“Petitioner”) filed a Petition (Paper 2,
“Pet.”) requesting an inter partes review of claims 12, 13, 15, 19–21, 24–26,
and 31–34 of U.S. Patent No. 5,936,178 (Ex. 1001, “the ’178 patent”).
Boveda, Inc. (“Patent Owner”) filed a Preliminary Response.1 Paper 5
(“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
provides that an inter partes review may not be instituted “unless the
Director determines . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.”
After considering the Petition and the Preliminary Response, we
determine that Petitioner has not demonstrated a reasonable likelihood that it
would prevail in showing that any of the claims it challenges are
unpatentable. Accordingly, we do not institute inter partes review.

1 Patent Owner’s Preliminary Response was accompanied by a motion
seeking acceptance of the Preliminary Response because it was filed by
electronic mail. Paper 6. The submission via electronic mail occurred
because the Patent Review Processing System was unavailable on the date
when the Preliminary Response was due. Id. at 1. Patent Owner’s motion
meets the requirements of 37 C.F.R. § 42.6(b)(2), which governs the
acceptance of submissions made by means other than electronic filing.
Accordingly, we grant the motion and accept Patent Owner’s filing via
electronic mail.
IPR2015-01844
Patent 5,936,178
3
B. Related Matters
Neither party has identified any related matters involving the ’178
patent. Pet. 1; Paper 4. We note that a related patent, U.S. Patent No.
6,921,026, is being challenged in IPR2015-01845.
C. The Asserted Grounds of Unpatentability
Petitioner contends that claims 12, 13, 15, 19–21, 24–26, and 31–34
of the ’178 patent are unpatentable under 35 U.S.C. § 103 based on the
following grounds (Pet. 8–56):2
Statutory
Ground
Basis3 Challenged Claims4
§ 103 St. Charles,
Tolman,
Spruill, and
Harrison
12, 13, 19, 20, 24–26
§ 103 St. Charles and
Harrison
31, 32, 34

2 Petitioner also provides a declaration from Fernando J. Muzzio, Ph.D. Ex.
1003 (“the Muzzio Declaration” or “Muzzio Decl.”).
3 St. Charles, U.K. Patent Application Publication No. GB 2 222 816 A,
published Mar. 21, 1990 (Ex. 1005) (“St. Charles”); Harrison et al.,
European Patent Application Publication No. 0 212 913 A2, published Mar.
4, 1987 (Ex. 1006) (“Harrison”); Tolman et al., U.S. Patent No. 5,130,018,
issued July 14, 1992 (Ex. 1007) (“Tolman”); Spruill et al., U.S. Patent No.
5,035,731, issued July 30, 1991 (Ex. 1008) (“Spruill”); Klett, U.S. Patent
No. 5,773,105, issued June 30, 1998 (Ex. 1009) (“Klett”); Dobson, Jr. et al.,
U.S. Patent No. 4,822,500, issued Apr. 18, 1989 (Ex. 1010) (“Dobson”).
4 The list of challenged claims in the Petition, Pet. 2–3, omits certain claims
for which detailed arguments are presented, Pet. 8–56, and includes some
claims with no detailed arguments. In reciting the claims challenged on each
ground, we rely on the detailed arguments Petitioner presents rather than on
the list of claims.
IPR2015-01844
Patent 5,936,178
4
Statutory
Ground
Basis3 Challenged Claims4
§ 103 St. Charles,
Tolman,
Spruill,
Harrison, and
Klett
15, 20, 21, 33
§ 103 St. Charles,
Tolman,
Spruill, and
Dobson
12, 19, 24–26
§ 103 St. Charles and
Dobson
31, 34
D. The ’178 Patent
The ’178 patent relates to humidity control devices that can maintain a
desired humidity level. Specifically, the ’178 patent describes a humidity
control device that includes
a case with a plurality of openings, a polymeric pouch having
walls sufficiently thin to permit migration of water through the
film in the form of water vapor and yet thick enough to prevent
the escape of liquid water, and a solution including an organic
or an inorganic solute (e.g., salt or sugar), vegetable gum and
water.
Ex. 1001, 5:43–49. The ’178 patent describes the saturated solution as
“contain[ing] excess solute (e.g., salt or sugar crystals) and [as] preferably
made more viscous with a thickening agent.” Id. at 5:50–52. “The case may
be of any suitable size and shape,” id. at 5:55, and the ’178 patent describes
using the humidity control device in various spaces, such as “a violin case,”
id. at 5:56, “a piano,” id. at 5:65, “a bulk package of tobacco products or
confections,” id. at 5:65–66, and a “case . . . for use in conjunction with a
bass violin,” id. at 6:5–6.
IPR2015-01844
Patent 5,936,178
5
E. Illustrative Claim
Of the challenged claims in the ’178 patent, claims 12, 19, and 31 are
independent. Claim 12 is illustrative and recites:
12. A humidity control device for maintaining a desired
humidity,
said device including a protective case, a water vapor
permeable pouch and a thickened saturated salt solution,
said case comprising wall means defining an enclosure, said
wall means including a plurality of openings through which
water vapor may freely move,
said pouch being formed of a thin wall polymer film through
which water vapor may pass,
said thickened saturated salt solution comprising water, salt and
a thickening agent, said thickening agent being present in an
amount sufficient to thicken the salt solution,
said salt solution being contained within the polymeric pouch
and sealed from escape from the pouch,
said pouch containing the thickened salt solution, said pouch
being contained within the protective case to protect the pouch
from rupture.
Ex. 1001, 9:43–57 (paragraphing added for clarity).
ANALYSIS
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b); In
re Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015),
cert. granted sub nom. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 890
IPR2015-01844
Patent 5,936,178
6
(mem.) (2016).5 Claim terms also are 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). Petitioner proposes constructions for “wall means”
and “amount sufficient to thicken the salt solution.” Pet. 4. Patent Owner
disputes both of these proposed constructions. Prelim. Resp. 10–14. In
addition, Patent Owner notes several terms that it contends do not require
construction and for which Petitioner did not propose a construction. Id. at
15–17. Although there are two terms—“wall means” and “amount sufficient
to thicken the salt solution”—whose meanings the parties dispute, neither of
these terms needs to be construed expressly in order to resolve the present
dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999) (“only those terms need be construed that are in
controversy, and only to the extent necessary to resolve the controversy”).
Accordingly, there are no terms that we need to construe expressly.
B. Asserted Obviousness over St. Charles, Tolman, Spruill, and
Harrison
Petitioner argues that claims 12, 13, 19, 20, and 24–26 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of
St. Charles, Tolman, Spruill, and Harrison. Pet. 8–28. Relying on the
testimony of Dr. Muzzio, Petitioner explains how these references allegedly
teach all the limitations of these claims and argues that a person of ordinary
skill in the art would have combined these references. Id.

5 We note that neither party proposes any different claim-construction
standard. Pet. 3; Prelim. Resp. 9.
IPR2015-01844
Patent 5,936,178
7
1. St. Charles
St. Charles is directed to a “storage package for storing moisture-
laden articles such as cigarettes,” including “a moisture control vehicle” that
is “treated with a saturated salt solution . . . to maintain moisture equilibrium
over an extended time period.” Ex. 1005, at [57]. St. Charles teaches a
moisture control vehicle “in the form of a pouch,” in which a “gel, paste,
liquid or powder form” of the humidifying agent is placed, so as “to allow
water vapour to pass readily [through the pouch] but not liquid.” Id. at 10.
The pouches in St. Charles can be made of cellulose acetate film, dialysis
tubing, nylon, or ethylene vinyl acetate copolymers. Id. St. Charles teaches
that “small semi-rigid containers . . . could work as well as pouches.” Id.
2. Tolman
Tolman is directed to a “tethered container of desiccant and a
surrounding protective cage for entry into an enclosed space to extract
moisture.” Ex. 1007, at [57]. Tolman particularly is directed to removing
moisture from “confined spaces in which are stored nonaqueous fluids, such
as gasoline and oil.” Id. at 2:34–35. In particular, Tolman teaches
“protect[ing] the desiccant container . . . from damage or rupture during its
entry into, presence in, or extraction from the confined space from which
moisture is to be extracted.” Id. at 2:39–43; see also id. at 5:53–61,
Figs. 2, 3 (describing protective cage for desiccant container).
3. Spruill
Spruill is directed to an “insert for inclusion in a substantially sealed
container to control the relative humidity within the container.” Ex. 1008, at
[57]. Spruill’s insert is “a packet at least part of the surface of which is a
membrane capable of passing water vapor and which contains a buffering
IPR2015-01844
Patent 5,936,178
8
substance which is a saturated salt solution selected according to the desired
relative humidity.” Id. Spruill teaches that the packet may be “made by heat
sealing a polylaminated foil layer 12 and a microporous or water vapor-
permeable membrane 13 around their edges.” Id. at 4:67–5:2. Spruill’s
membrane “should allow the passage of water vapor while containing the
humidity controlling solution itself” and “can either be inherently water
vapor-permeable” or “can be impermeable but microporous.” Id. at 5:9–18.
4. Harrison
Harrison is directed to “[a]queous compositions containing an organic
peroxyacid . . . for bleaching/washing or disinfection.” Ex. 1006, at [57].
According to Harrison, these compositions can “suffer from loss of available
oxygen . . . during storage.” Id. Accordingly, Harrison teaches “employing
the [peroxyacid] in particulate form and incorporating in the aqueous phase a
water-soluble potassium salt of a non-reducing acid.” Id. Harrison teaches
placing the resulting composition “in pouches, sachets or bottles.” Id. at
6:16–17. Harrison also teaches “incorporating into the composition a small
amount of one or more water-soluble or insoluble thickener[s] whereby the
phase is thickened to a viscous fluid, in which the solid particles can be
suspended.” Id. at 4:35–5:1.
5. Analysis of Obviousness of Claims 12, 13, 19, 20, and 24–26
Petitioner asserts that each of the limitations of claim 12 is taught or
suggested by at least one of the St. Charles, Tolman, Spruill, and Harrison
references. Pet. 8–18. Patent Owner does not dispute the teaching of the
limitations of claim 12 in the prior-art references, except for the limitation
requiring a “protective case,” which Patent Owner argues is not taught in St.
Charles, Spruill, or Harrison. Prelim. Resp. 26–28. Patent Owner concedes
IPR2015-01844
Patent 5,936,178
9
that Tolman teaches a protective case but argues that the person of ordinary
skill in the art would not have combined Tolman’s case with the teachings of
the other references. Id. at 28. Finally, Patent Owner argues that Harrison is
not analogous art to the ’178 patent. Id. at 32.
On this last point, we are persuaded that Petitioner has not shown
sufficiently that Harrison is analogous to the ’178 patent. “To be considered
within the prior art for purposes of the obviousness analysis, a reference
must be . . . from the same field of endeavor or . . . reasonably pertinent to
the particular problem the inventor is trying to solve.” Circuit Check Inc. v.
QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). Petitioner does not argue
either that Harrison is in the same field of endeavor as the ’178 patent or that
it is reasonably pertinent to the problem solved by the ’178 patent’s inventor.
Petitioner’s only argument is that Harrison is “in the same field of endeavor”
as St. Charles. Pet. 9. Even assuming that Petitioner meant that Harrison is
in the same field of endeavor as the ’178 patent, we are not persuaded this is
true. Harrison is directed to the preservation of bleaching solutions from
chemical degradation during storage. Ex. 1005, at [57]. To place this
reference in the same field as the ’178 patent, which is directed to devices
for controlling the humidity in enclosures such as musical instrument cases
and tobacco product packages, would require a broad definition of “field of
endeavor” that Petitioner has supported insufficiently with arguments or
evidence.
As to the second part of the analogous-art test, Petitioner offers no
argument that Harrison is reasonably pertinent to the problem solved by the
inventor of the ’178 patent. It therefore is unclear why Harrison would have
been commended to the attention of a person of ordinary skill in the art
IPR2015-01844
Patent 5,936,178
10
trying to solve the problem of controlling humidity. It may be true, as
Petitioner suggests, Pet. 10, that, in solving the problem of humidity control,
the inventor of the ’178 patent would have been inspired to thicken an
aqueous solution for several reasons and that Harrison teaches or suggests
thickening an aqueous solution. But this does not mean that a reference
about the degradation of peroxyacid solutions “logically would have
commended itself to an inventor’s attention in considering” the problem of
humidity control. See In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Without any evidence or argument explaining why it would have done so,
we are not persuaded that a person of ordinary skill in the art would have
looked to Harrison. Accordingly, Petitioner cannot show obviousness by
relying on Harrison.
For this asserted ground, Petitioner relies on Harrison to show the
obviousness of each claim. In claim 12, Petitioner relies on Harrison to
teach the recited “thickening agent.” Pet. 9 (relying on St. Charles to teach a
“thickened salt solution” but on Harrison to teach a “thickener”), 15–16
(same). The same is true for independent claim 19. Id. at 21, 24–25.
Accordingly, Petitioner has not presented sufficient evidence of obviousness
of either claim 12 or claim 19 to permit us to determine that Petitioner has a
reasonable likelihood of prevailing in showing the unpatentability of those
claims. Because claims 13, 20, and 24–26 depend from claims 12 and 19,
Ex. 1001, 9:58–60, 10:28–29, 10:40–49, Petitioner also has not
demonstrated a reasonable likelihood of prevailing as to those claims.
C. Asserted Obviousness over St. Charles and Harrison
Petitioner asserts that claims 31, 32, and 34 are obvious over the
combination of St. Charles and Harrison. Pet. 28–34. Petitioner relies on
IPR2015-01844
Patent 5,936,178
11
Harrison to show the obviousness of claim 31. Id. at 29, 31–32. As
discussed above, Petitioner has not shown sufficiently that Harrison is
analogous art to the ’178 patent. Accordingly, Petitioner has not
demonstrated a reasonable likelihood of prevailing in showing the
obviousness of claim 31. Claims 32 and 34 depend from claim 31, and
Petitioner relies on Harrison to teach the additional limitation of claim 34.
Ex. 1001, 11:10–15, 12:3–6; Pet. 33–34. Thus, Petitioner has not
demonstrated a reasonable likelihood of prevailing in showing the
obviousness of these claims.
D. Asserted Obviousness over St. Charles, Harrison, Spruill, Tolman,
and Klett
Petitioner asserts that claims 15, 20, 21, and 33 are obvious over the
combination of St. Charles, Harrison, Spruill, Tolman, and Klett. Pet. 34–
38. We are not persuaded that Petitioner has demonstrated a reasonable
likelihood of prevailing in showing the obviousness of these claims, each of
which depends from claims 12, 19, or 31. Petitioner relies on Harrison to
teach the limitations of these independent claims. Id. As discussed above,
Harrison is not analogous art to the ’178 patent.
E. Asserted Obviousness over St. Charles, Spruill, Tolman, and
Dobson
Petitioner argues that claims 12, 19, and 24–26 are obvious over the
combination of St. Charles, Spruill, Tolman, and Dobson. Pet. 38–51.
1. Dobson
Dobson teaches “well treating fluids for use in the drilling and
servicing of wells in subterranean formations.” Ex. 1010, 1:7–9. These
fluids are “saturated brine fluids having suspended therein one or more water
soluble salts which are insoluble in the saturated brine.” Id. at 1:9–11.
IPR2015-01844
Patent 5,936,178
12
Dobson teaches using “an additive to maintain the salt particles in
suspension” and specifically teaches “[x]anthan gum” as an additive that can
“form a viscous fluid.” Id. at 4:14–17, 4:52–54.
2. Analysis of Obviousness of Claims 12, 19, and 24–26
Petitioner asserts that each of the limitations of claim 12 is taught or
suggested by at least one of the St. Charles, Tolman, Spruill, and Dobson
references. Pet. 8–18. Patent Owner does not dispute the teaching of the
limitations of claim 12 in the prior-art references, except for the limitation
requiring a “protective case,” which Patent Owner argues is not taught in St.
Charles or Spruill. Prelim. Resp. 26–28. Patent Owner concedes that
Tolman teaches a protective case but argues that the person of ordinary skill
in the art would not have combined Tolman’s case with the teachings of the
other references. Id. at 28. Finally, Patent Owner argues that Dobson is not
analogous art to the ’178 patent. Id. at 33–34.
On this last point, we are persuaded that Petitioner has not shown
sufficiently that Dobson is analogous to the ’178 patent. As noted above,
“[t]o be considered within the prior art for purposes of the obviousness
analysis, a reference must be . . . from the same field of endeavor or . . .
reasonably pertinent to the particular problem the inventor is trying to
solve.” Circuit Check, 795 F.3d at 1335. Petitioner does not argue either
that Dobson is in the same field of endeavor as the ’178 patent or that it is
reasonably pertinent to the problem solved by the ’178 patent’s inventor.
Petitioner’s only argument is that Dobson is “in the same field of endeavor”
as St. Charles. Pet. 40. Even assuming that Petitioner meant that Dobson is
in the same field of endeavor as the ’178 patent, we are not persuaded this is
true. Dobson is directed to “well treating fluids for use in the drilling and
IPR2015-01844
Patent 5,936,178
13
servicing of wells in subterranean formations,” which fluids “are useful in
various well drilling, workover, and completion operations.” Ex. 1010, 1:7–
13. To place this reference in the same field as the ’178 patent, which is
directed to devices for controlling the humidity in enclosures such as
musical instrument cases and tobacco product packages, would require a
broad definition of “field of endeavor” that Petitioner has supported
insufficiently with arguments or evidence.
As to the second part of the analogous-art test, Petitioner offers no
argument that Dobson is reasonably pertinent to the problem solved by the
inventor of the ’178 patent. It therefore is unclear why Dobson would have
been commended to the attention of a person of ordinary skill in the art
trying to solve the problem of controlling humidity. It may be true, as
Petitioner suggests, Pet. 39–40, that, in solving the problem of humidity
control, the inventor of the ’178 patent would have been inspired to thicken
an aqueous solution for several reasons and that Dobson teaches or suggests
thickening an aqueous solution. But this does not mean that a reference
about improving the efficacy of well drilling and workover fluids “logically
would have commended itself to an inventor’s attention in considering” the
problem of humidity control. See Clay, 966 F.2d at 659. Without any
evidence or argument explaining why it would have done so, we are not
persuaded that a person of ordinary skill in the art would have looked to
Dobson. Accordingly, Petitioner cannot show obviousness by relying on
Dobson.
For this asserted ground, Petitioner relies on Dobson to show the
obviousness of each claim. In claim 12, Petitioner relies on Dobson to teach
the recited “thickening agent.” Pet. 39–40 (relying on St. Charles to teach a
IPR2015-01844
Patent 5,936,178
14
“thickened salt solution” but on Dobson to teach a “thickener”), 43 (same).
The same is true for independent claim 19. Id. at 45, 48–49. Accordingly,
Petitioner has not presented sufficient evidence of obviousness of either
claim 12 or claim 19 to permit us to determine that Petitioner has a
reasonable likelihood of prevailing in showing the unpatentability of those
claims. Because claims 24–26 depend from claim 19, Ex. 1001, 10:40–49,
Petitioner also has not demonstrated a reasonable likelihood of prevailing as
to those claims.
F. Asserted Obviousness over St. Charles and Dobson
Petitioner argues that claims 31 and 34 are obvious over the
combination of St. Charles and Dobson. Pet. 51–56. Petitioner relies on
Dobson to show the obviousness of claim 31. Id. at 52, 55. As discussed
above, Petitioner has not shown sufficiently that Dobson is analogous art to
the ’178 patent. Accordingly, Petitioner has not demonstrated a reasonable
likelihood of prevailing in showing the obviousness of claim 31. Claim 34
depends from claim 31, and Petitioner relies on Dobson to teach the
additional limitation of claim 34. Ex. 1001, 12:3–6; Pet. 56. Thus,
Petitioner has not demonstrated a reasonable likelihood of prevailing in
showing the obviousness of this claim.
CONCLUSION
Upon consideration of the Petition and the Preliminary Response, we
determine that Petitioner has not demonstrated a reasonable likelihood that it
would prevail in showing that any of the claims it challenges are
unpatentable. Accordingly, we do not institute inter partes review of any of
the challenged claims on any of the asserted grounds.

IPR2015-01844
Patent 5,936,178
15
ORDER
It is hereby
ORDERED that Patent Owner’s motion for acceptance of its filing via
electronic mail is granted; and
FURTHER ORDERED that the Petition is denied as to all challenged
claims, and no trial is instituted.

IPR2015-01844
Patent 5,936,178
16
PETITIONER:

Janet M. MacLeod
Ryan N. Miller
FOX ROTHSCHILD LLP
jmacleod@foxrothschild.comrmiller@foxrothschild.com

PATENT OWNER:

Michelle E. Dawson
Jeffrey R. Stone
WINTHROP & WEINSTINE, P.A.
patent@winthrop.com