Philip Morris Products, S.A.

Patent Trials and Appeals Board

Sep 13, 2021

IPR2021-00586 (P.T.A.B. Sep. 13, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: September 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

R.J. REYNOLDS VAPOR COMPANY,
Petitioner,
v.
PHILIP MORRIS PRODUCTS, S.A.,
Patent Owner.

IPR2021-00586
Patent 10,104,911 B2

Before, JAMES J. MAYBERRY, ELIZABETH M. ROESEL, and
SHEILA F. McSHANE, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
I. INTRODUCTION
A. Background and Summary
R.J. Reynolds Vapor Company, (“Petitioner”), filed a Petition (“Pet.”)
requesting inter partes review of claims 1 and 9–13 (the “Challenged
Claims”) of U.S. Patent No. 10,104,911 B2 (Ex. 1001, the “’911 patent”).
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Paper 2. Philip Morris Products S.A. (“Patent Owner”) filed a Preliminary
Response (“Prelim. Resp.”) to the Petition. Paper 7.
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021) (permitting the
Board to institute trial on behalf of the Director). To institute an inter partes
review, we must determine that the information presented in the Petition
shows “a reasonable likelihood that the petitioner would prevail with respect
to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
For the reasons set forth below, upon considering the Petition, Preliminary
Response, and evidence of record, we do not institute an inter partes review.
B. Real Parties-in-Interest
Petitioner identifies itself and RAI Innovations Company,
R.J. Reynolds Tobacco Company, and Reynolds Asia-Pacific Limited as the
real parties-in-interest. Pet. 73.
Patent Owner identifies itself as the sole real party-in-interest.
Paper 5, 1.
C. Related Matters
The parties identify, as a matter related to the ’911 patent, ongoing
litigation in the U.S. District Court for the Eastern District of Virginia, in a
case styled RAI Strategic Holdings, Inc. v. Altria Client Services LLC, No.
1:20-cv-00393-LO-TCB, filed on May 28, 2020. Pet. 73, Paper 5, 1.
D. ‘911 Patent
The ’911 patent, titled “Aerosol Generating System with Prevention
of Condensate Leakage,” issued October 23, 2018, from a Patent
Cooperation Treaty (PCT) application filed December 2, 2011. Ex. 1001,
codes (54), (45), (22). The ’911 patent ultimately claims priority to a
foreign application filed December 3, 2010. Id. at code (30). The ’911
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patent is directed to an aerosol generating system with a leakage prevention
means. Id. at 1:32–37. We reproduce Figure 1 from the ’911 patent below.

Figure 1 depicts an electrically operated smoking system. Ex. 1001,
8:66–67. Smoking system 100 includes aerosol-forming chamber 127. Id.
at 9:15–17. Within the chamber is puff detection system 111, cartridge 113,
which contains liquid 115, capillary wick 117, and heater 119. Id. at 9:3–12.
In use, a user draws on the system at air outlet 125, pulling ambient air into
the system through air inlet 123. Id. at 9:21–23. This action causes puff
detection system 111 to detect the puff and activate heater 119. Id. at 9:23–
27. Heater 119 vaporizes liquid 115, which is pulled onto wick 117 through
capillary action from cartridge 113. Id. at 9:18–21, 27–29. The vaporized
liquid mixes with air to form an aerosol, which is pulled towards air
outlet 125. Id. at 9:32–36.
We reproduce Figures 3–6 of the ’911 patent, below.
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Figure 3 depicts “an enlarged view of the mouthpiece end of an
aerosol generating system,” and Figure 4 depicts “a cross sectional view
along line IV-IV of F[igure] 3.” Ex. 1001, 8:46–50. Figure 5 depicts “an
enlarged view of the mouthpiece end of an alternative aerosol generating
system,” and Figure 6 depicts “a cross sectional view along line VI-VI of
F[igure] 5.” Id. at 8:51–55.
Arrows 301 represent airflow and liquid droplets 303, which are
shown to be accumulating on inside walls, are aerosol condensate.
Ex. 1001, 10:40–42. Aerosol-forming chamber 127 includes cavities, or
recesses, 305, 307, which collect the condensate droplets. Id. at 10:43–45.
Cylindrical cavities 305, 307 are located on opposite sides of air outlet 125.
Id. at 10:45–50. The ’911 patent refers to cavities 305, 307 as “blind holes.”
Id. at 10:50–56. “That is to say, the [cavities do] not extend to the outside of
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the aerosol generating system.” Id. at 10:50–52. Cavities 305, 307 act as
leakage prevention means, collecting liquid condensate droplets 303 and
interrupting the flow route of the droplets to the air outlet. Id. at 10:57–64.
Cavities are further described as follows:
Cavities 305, 307 have a cross sectional dimension “x.”
“Dimension x is preferably 0.5 mm or 1 mm or between 0.5 mm
and 1 mm. This size has been found to be advantageous since it
is large enough to collect a sufficient amount of liquid, but small
enough to trap the liquid in the cavity by capillary action, even if
the aerosol generating system is rotated or vertically aligned.”
Ex. 1001, 11:26–32.
The embodiment of Figure 5 is similar to that of Figure 3, except that
cavity 505 forms an annular groove around air outlet 125. See Ex. 1001,
12:17–33. Similar to cavities 305, 307, cavity 505 is a blind cavity, which is
to say that the cavity does not extend to the outside of the aerosol generating
system. Id. at 12:21–24. Cavity 505 collects liquid condensate droplets 503
and prevents the droplets from leaking out into the air outlet. Id. at 12:25–
31.
E. Challenged Claims
The Petition challenges claims 1 and 3–9. Pet. 11. Claim 1, which we
reproduce below, is the sole independent claim challenged.
1. An aerosol generating system for heating a liquid
aerosol-forming substrate, the system comprising:
an aerosol-forming chamber; and
leakage prevention means configured to prevent or reduce
leakage of liquid aerosol condensate from the aerosol generating
system, wherein the leakage prevention means comprises at least
one cavity in a wall of the aerosol-forming chamber, for
collecting liquid condensate formed from the aerosol-forming
substrate, and
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wherein the at least one cavity is a blind hole recessed in
the wall of the aerosol-forming chamber and has an open end, a
closed end, and a longitudinal direction extending between the
open end and the closed end, and
wherein the at least one cavity has a largest cross-sectional
dimension x taken along a cross-section of the cavity in a
direction perpendicular to the longitudinal direction of the cavity,
where x is 0.5 mm, or 1 mm, or between 0.5 mm and 1 mm.
Ex. 1001, 18:12–30.
F. Prior Art and Asserted Grounds
Petitioner asserts that the Challenged Claims are unpatentable based
on two grounds (Pet. 12):
Claim(s)
Challenged 35 U.S.C. § References/Basis
1, 9–13 103 Xia,
1 Shizumu,2 knowledge of a
person having ordinary skill in the art
1, 9–13 103 Cho,
3 Shizumu, knowledge of a
person having ordinary skill in the art
Petitioner relies on the declaration testimony of Mr. Kelly R. Kodama
(Ex. 1002) in support of these grounds.
The following subsections provide brief descriptions of the asserted
prior art references.

1 Xia, CN 201238610Y, published May 20, 2009 (Ex. 1009, “Xia”). Exhibit
1009 includes the Chinese version of the reference and a certified English
translation.
2 Shizumu, WO 01/39619 A1, published June 7, 2001 (Ex. 1015,
“Shizumu”). Exhibit 1015 includes the Japanese version of the reference
and a certified English translation.
3 Cho, KR 20-2009-0003871, published April 27, 2009 (Ex. 1011, “Cho”).
Exhibit 1011 includes the Korean version of the reference and a certified
English translation.
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1. Xia
Xia, titled “An environment-friendly non-combustible atomized vapor
electronic cigarette with the function of a cigarette substitute,” published
May 20, 2009. Ex. 1009, codes (54), (43). We reproduce Xia’s Figure 5,
below, as annotated by Petitioner.

Pet. 30. Figure 5 depicts a “structural diagram of the air circulation of the
suction nozzle and the soft suction nozzle 13” of Xia’s device. Ex. 1009, 12.
Petitioner adds annotations identifying and colorizing liquid storage
chamber 12, liquid blocking groove 15, and liquid blocking cover 17.
Liquid blocking groove 15, made of soft silicone, “prevent[s] liquid from
being sucked into [the user’s] mouth.” Id. Liquid blocking cover 17, which
fits into the end of suction nozzle 13, also prevents liquid from being sucked
into the user’s mouth. Id. As illustrated by the black arrowed line in the
right portion of the diagram, atomized liquid flows adjacent to liquid storage
chamber 12, past liquid blocking groove 15, and out the opening in liquid
blocking cover 17. Id.
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2. Cho
Cho, titled “Liquid Vaporization Suction Unit,” published April 27,
2009. Ex. 1011, codes (54), (43). We reproduce Cho’s Figure 2, below, as
annotated in the Petition.

Pet. 52. Annotated Figure 2 depicts an exploded view of Cho’s liquid
vaporization suction unit. Ex. 1011 ¶ 63. Petitioner’s annotations enlarge
the components of lid 130, and label and colorize lid 130, through-holes 133,
and recessed groove 134. Lid 130 is attached to Third Member 140. Id.
¶ 47. Vapor from Third Member 140 moves through through-holes 133 to
the user. Id. ¶ 49. Recessed groove 134 surrounds through-holes 133 and
captures liquid concentrate from the vapor before reaching the user. Id.
¶ 50. “Thus, it can minimize the unnecessary waste of nicotine liquid, and
the above nicotine liquid concentration can be prevented from flowing
through the through-holes (133), causing discomfort to the user.” Id.
3. Shizumu
Shizumu, titled “Smokeless Cigarette,” published June 7, 2001.
Ex. 1015, codes (54), (43). We reproduce Shimuzu’s Figure 1, below.
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Figure 1 depicts “a schematic cross-section diagram that illustrates the
structure of the smokeless cigarette described by” Shimuzu. Ex. 1015, 4.4
Body 1 includes fibrous layer 2, lid 3, and cigarette tip 4. Id. at 5. Fibrous
layer 2 holds cigarette perfume solution, with the solution injected into the
fibrous layer. Id. at 7.
To prevent any cigarette perfume solution that may seep from fibrous
layer 2 from leaking from body 1, the device includes outflow prevention
devices—reservoirs 3a, 4a. Ex. 1015, 8. Cylindrical bodies 3c and 4c
extend from air inlet 3b and air outlet 4b, respectively, forming the
reservoirs. Id.
Preferably, Shimuzu’s smokeless cigarette has an outer diameter of
from 7 millimeters and 15 millimeters, and a length of between
15 millimeters and 40 millimeters. Ex. 1015, 10.

4 We refer to the page numbers added by Petitioner when citing to Shimuzu.
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II. ANALYSIS
A. Applicable Law
Petitioner’s asserted grounds of unpatentability are based on
obviousness under 35 U.S.C. § 103.
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) when available, objective evidence, such as
commercial success, long felt but unsolved needs, and failure of others.5
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
“[O]bviousness must be determined in light of all the facts, and . . . a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine” teachings from
multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
absence of a motivation to combine references in an obviousness
determination is a pure question of fact.”).

5 Neither party directs us to any objective evidence for our consideration at
this stage of the proceeding.
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B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having
ordinary skill in the art “would have had a Bachelor’s degree in mechanical
engineering, electrical engineering, industrial design or product design or
product design engineering, chemistry, or physics, or a related field, and
three to four years of industry experience.” Pet. 11. Petitioner further
asserts that only one to two years of experience would be needed if the
person had a Master’s degree in one of the listed disciplines. Id. Petitioner
adds that the hypothetical person of ordinary skill “might also have been
familiar with electrically powered smoking articles and their components
and underlying technologies or similar components and technologies.” Id.
Finally, Petitioner asserts, generally, that “[a] higher level of education may
substitute for a lesser amount of experience, and vice versa.” Id. Petitioner
bases these contentions on declaration testimony from Mr. Kodama. Id.
(referencing Ex. 1002 ¶¶ 18–20).
Patent Owner does not dispute Petitioner’s characterization at this
stage of the proceeding. Prelim. Resp. 7.
For the purposes of this Decision, we apply Petitioner’s definition of
the level of ordinary skill in the art. We determine that this definition is
consistent with the prior art of record and the skill reflected in the
Specification of the ’911 patent, based on our review of the limited record.
C. Claim Construction
In inter partes reviews, we interpret a claim “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). Under this
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standard, we construe the claim “in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id.
Petitioner states that “proposes no claim terms for construction at this
time.” Pet. 12. Petitioner states that, for purposes of its Petition, it applies
several of Patent Owner’s constructions from the parallel litigation without
conceding they are the correct constructions. Id. at 13–17. Petitioner relies
on Patent Owner’s district court constructions for the terms “blind hole,”
“blind hole recessed in the wall of the aerosol-forming chamber,” and
“leakage prevention means.” Id.. Specifically, Petitioner applies a
construction of “blind hole” that encompasses the cavities of both the
embodiment of Figures 3 and 4 of the ’911 patent and the embodiment of
Figures 5 and 6 of the ’911 patent. Id. at 13. Also, Petitioner applies a
construction of “blind hole recessed in the wall of the aerosol-forming
chamber” that encompasses a mouthpiece cap inserted into the space formed
by the interior walls of the aerosol-generating system. Id. at 13–15. Finally,
Petitioner takes the position, consistent with the applicants’ position taken
during the prosecution of the application for the ’911 patent, that the term
“leakage prevention means” is not a means-plus-function term, as the claim
limitation recites adequate structure to overcome the presumption that
35 U.S.C. § 112, paragraph 6 governs the term. Id. at 15–17 (referencing
Ex. 1003, 205–206, 243).
Patent Owner does not dispute Petitioner’s implicit constructions of
these three terms at this time. Prelim. Resp. 7.
For purposes of determining whether to institute an inter partes
review, we apply the undisputed claim constructions relied upon by
Petitioner. Pet. 13–17. We determine that we need not expressly construe
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any other claim terms to resolve the parties’ disputes on the current record.
See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy.’”
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999))). For the three identified terms above, we apply a
construction consistent with Petitioner’s approach.
D. Ground 1: Claims 1 and 3–9 as unpatentable over Xia, Shizumu, and
the knowledge of a person having ordinary skill in the art
Petitioner contends that claims 1 and 3–9 are unpatentable over Xia,
Shizumu, and the knowledge of a person having ordinary skill in the art.
Pet. 12, 26–47. Below, we discuss the scope and content of the prior art and
any differences between the prior art and claimed subject matter.
1. Independent claim 1
a) Aerosol-forming chamber and leakage prevention means
The “aerosol-forming chamber” and “leakage prevention means”
limitations of claim 1 require the claimed apparatus to include:
an aerosol-forming chamber; and
leakage prevention means configured to prevent or reduce
leakage of liquid aerosol condensate from the aerosol generating
system, wherein the leakage prevention means comprises at least
one cavity in a wall of the aerosol-forming chamber, for
collecting liquid condensate formed from the aerosol-forming
substrate.
Ex. 1001, 18:14–21. Petitioner contends that Xia discloses these structures.
Pet. 27–31. Petitioner contends that Xia’s atomizing chamber, airflow
passage gap between suction nozzle 13 and liquid storage chamber 12, and
suction nozzle 13 correspond to the recited aerosol-forming chamber
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between an air inlet and air outlet. Id. at 26–28 (referencing Ex. 1009, 6, 8,
11–13; Ex. 1002 ¶¶ 74–78).
Petitioner contends that Xia’s liquid blocking groove 15 and liquid
blocking cover 17 correspond to the recited leakage prevention means.
Pet. 29 (referencing Ex. 1009, 12). Petitioner contends that Xia discloses
that “the liquid blocking groove 15 and the liquid blocking cover 17 are used
to prevent the liquid medicine from being sucked into the mouth.” Id. at 29–
30 (referencing Ex. 1009, 9, 13–14; Ex. 1002 ¶ 80). We reproduce Xia’s
Figure 5, below, as annotated by Petitioner.

Pet. 30. Figure 5 depicts a “structural diagram of the air circulation of the
suction nozzle and the soft suction nozzle 13” of Xia’s device. Ex. 1009, 12.
Petitioner adds annotations identifying and colorizing liquid storage
chamber 12, liquid blocking groove 15, and liquid blocking cover 17.
Upon review of the information in the Petition and corresponding
evidence, we determine Petitioner has made a sufficient showing, at this
stage of the proceeding, that Xia discloses the subject matter of the “aerosol-
forming chamber” and “leakage prevention means” limitations of claim 1.
Patent Owner does not dispute Petitioner’s contentions with respect to these
limitations.
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b) Blind hole limitation
Claim 1 also recites “wherein the at least one cavity is a blind hole
recessed in the wall of the aerosol-forming chamber and has an open end, a
closed end, and a longitudinal direction extending between the open end and
the closed end.” Ex. 1001, 18:22–25 (the “blind hole” limitation of claim 1).
Petitioner contends that Xia’s liquid blocking groove 15 and liquid blocking
cover 17 satisfy the subject matter of the blind hole limitation of claim 1.
Pet. 32–33. In support if its contention, Petitioner provides an annotated
version of Xia’s Figure 5, which we reproduce below.

Id. at 33. Figure 5 depicts a “structural diagram of the air circulation of the
suction nozzle and the soft suction nozzle 13” of Xia’s device. Ex. 1009, 12.
Petitioner adds annotations identifying and colorizing the open and closed
ends of liquid blocking groove 15 and liquid blocking cover 17.
Upon review of the information in the Petition and corresponding
evidence, we determine Petitioner has made a sufficient showing, at this
stage of the proceeding, that Xia discloses the subject matter of the “blind
hole” limitation of claim 1. Patent Owner does not dispute Petitioner’s
contentions with respect to this subject matter.
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c) Cross-sectional dimension limitation
Finally, claim 1 recites “wherein the at least one cavity has a largest
cross-sectional dimension x taken along a cross-section of the cavity in a
direction perpendicular to the longitudinal direction of the cavity, where x is
0.5 mm, or 1 mm, or between 0.5 mm and 1 mm.” Ex. 1001, 18:26–30 (the
“cross-sectional dimension” limitation of claim 1). Petitioner acknowledges
that Xia does not specify dimensions for the cavities formed by liquid
blocking groove 15 and liquid blocking cover 17. Pet. 34. Petitioner
contends that the subject matter of the “cross-sectional dimension” limitation
would have been obvious under two theories, which we address in turn.
(1) Shizumu
Petitioner contends that Shizumu discloses a smokeless cigarette
having leakage prevention means in the form of an annular groove or blind
cavity—reservoir 3a and reservoir 4a. Pet. 35; see id. (providing an
annotated version of Shizumu’s Figure 1, identifying reservoir 3a and
reservoir 4a). Petitioner explains that Shizumu discloses that its smokeless
cigarette is preferably cylindrical with an outer diameter ranging from 7
millimeters to 15 millimeters. Id. (referencing Ex. 1015, 8; Ex. 1002 ¶ 95).
Petitioner contends that a person having ordinary skill in the art would
understand that, based on the scale of Shizumu’s Figure 1, reservoir 3a and
reservoir 4a have cross-sectional dimensions of approximately 0.7
millimeters for a smokeless cigarette having a diameter of 7 millimeters.
Pet. 36 (referencing Ex. 1015, 8; Ex. 1002 ¶ 95). We reproduce Shizumu’s
Figure 1, as annotated by Petitioner, below.
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Id. at 35. Figure 1 depicts “a schematic cross-section diagram that illustrates
the structure of the smokeless cigarette described by” Shimuzu. Ex. 1015, 4.
Petitioner annotates the figure with dimensions and identifies the air inlet 3b,
reservoirs 3a and 4a, cylindrical bodies 3c and 4c, and air outlet 4b. As seen
in the annotated figure, Petitioner indicates that reservoir 3a has a cross-
sectional dimension of 0.6 millimeters, and reservoir 4a has a cross-sectional
dimension of 0.7 millimeters—both dimensions within the recited range of
the “cross-sectional dimension” limitation of claim 1—based on scaling the
drawing using a diameter of 7 millimeters. Pet. 36 (referencing Ex. 1002
¶ 95 (testifying that he “measured these dimensions of Shizumu’s reservoirs
4a, 3a in FIG. 1 using computer software.”)).
In justifying its reliance on scaling Shizumu’s Figure 1, Petitioner
argues that the applicant made scale-based arguments in distinguishing a
prior art reference during prosecution, and that the Board has made scale-
based findings in another proceeding. Pet. 36 (citing Collabo Innovations,
Inc. v. Sony Corp., 778 F. App’x 954, 960 (Fed. Cir. 2019) (non-
precedential), which Petitioner contends “affirm[s] Board findings based in
part on drawing figures that showed relative dimensions”).
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Patent Owner argues that “it is black-letter law that patent drawings
are not to scale.” Prelim. Resp. 15 (citing Hockerson-Halberstadt, Inc. v.
Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000)). Patent Owner
adds that Petitioner does not direct us to any indication that Shizumu’s
Figure 1 is drawn to scale. Id. at 16. Patent Owner continues that, although
Shizumu provides a preferred diameter range of its smokeless cigarette, the
reference never indicates that Figure 1 is drawn to scale relative to any
preferred diameter in that range. Id. Patent Owner argues that, in a
deposition in the parallel district court litigation, Petitioner’s declarant
admitted that Figure 1 was not to scale. Id. at 16–17 (referencing Ex. 2027,
182–184, 198–199).
Patent Owner also argues that Petitioner’s contention that the drawing
is to scale is not credible, as the mouthpiece would be only 3 millimeters in
diameter, rather than 7 millimeters for a typical mouthpiece. Prelim. Resp.
17–18 (referencing Pet. 37; Ex. 2001 ¶ 42 (Abraham declaration); Ex. 2024,
9:47–51). Similarly, based on Petitioner’s scale, air outlet 4b would be only
about 0.6 millimeters, rather than an appropriate size of 1 millimeter. Id. at
18 (referencing Ex. 2001 ¶¶ 42–43). Patent Owner argues that at a
deposition in the parallel litigation, Mr. Kodama stated that “one would
arrive at smaller or larger numbers ‘depending on the dimensions of some of
the other features’ and assumptions made regarding material thicknesses.”
Id. at 19 (referencing Ex. 2027, 190–193, 196–204).
Also, Patent Owner argues that Petitioner’s identified cross-sectional
dimension in Shizumu represents the smallest, rather than the largest, cross-
sectional dimension, as required by claim 1. Prelim. Resp. 19–24. Patent
Owner concludes that “[e]ven assuming that Shizumu is drawn to scale . . . ,
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the largest cross-sectional dimensions are far beyond the claimed range of
0.5 to 1.0 mm, inclusive.” Id. at 24 (referencing Ex. 2001 ¶¶ 44–50).
We determine, on the current record, that Petitioner fails to
demonstrate sufficiently that Shizumu’s reservoir 3a or reservoir 4a has a
largest cross-sectional dimension “x” between 0.5 mm and 1 mm, inclusive,
as required by claim 1. We agree with Patent Owner that patent drawings
are typically not drawn to scale, and, without some indication that a
particular drawing is to scale, the drawing cannot be used for precise
proportions. See Hockerson-Halberstadt, Inc., 222 F.3d at 956 (“[I]t is well
established that patent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.”). Petitioner fails to direct us
to any persuasive information in Shizumu to support a finding that Figure 1
is drawn to scale or that any information in the drawing provides an
indication of the scale. Cf. Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed.
Cir. 2005) (“Under the principles set forth in our prior cases, the speculative
modeling premised on unstated assumptions in prior art patent drawings
cannot be the basis for challenging the validity of claims reciting specific
dimensions not disclosed directly in such prior art.”).
First, the only disclosure in Shizumu directed to dimensions is the
general statement that “it is preferable for the smokeless cigarettes described
by the present invention to have an outer diameter of 7 to 15 mm and a
length of 50 to 150 mm.” Ex. 1015, 10. This statement is not specifically
directed to Figure 1. Also, the statement provides a range of values, and
Petitioner does not explain adequately why it selected the 7 millimeter value
on which to base its estimate of the dimensions of reservoir 3a and
reservoir 4a.
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Second, Petitioner’s argument that Patent Owner relied on scaling a
prior art reference in distinguishing that reference during prosecution is
inapposite. The argument was not directed to Shizumu. Pet. 36 (noting that
the argument was directed to Miller (Ex. 1008)). Also, as Patent Owner
argues, the Examiner rejected that argument during prosecution. See Prelim.
Resp. 15–16; Ex. 1003, 440 (“[Neither] [a]pplicant nor [e]xaminer may rely
on draw[ing]s of prior art for dimension, unless explicitly show[n] or stated,
because drawings are not to scale.”).
Petitioner’s reference to Collabo Innovations is equally unavailing, as
the facts in Collabo Innovations are distinguishable. See Pet. 36. In Collabo
Innovations, the Federal Circuit, in affirming the Board’s use of relative size
of components shown in a drawing to support a finding, concluded that the
references on which the Board relied were not completely silent as to the
relative sizes of the components. Collabo Innovations, Inc., 778 F. App’x
at 960. Again, Petitioner does not direct us to any persuasive disclosure in
Shizumu that indicates the dimension of reservoir 3a or reservoir 4a or states
that Figure 1 is to scale.
Accordingly, we determine that Petitioner’s reliance on Shizumu fails
to satisfy the cross-sectional dimension limitation of claim 1.
(2) Knowledge of a person having ordinary skill in the art
Petitioner provides an alternative basis that the cross-sectional
dimension limitation of claim 1 would have been obvious—that a person
having ordinary skill in the art “would have known to select appropriate
dimensions . . . as a matter of design choice” to arrive at the claimed
invention. Pet. 36–37. We reproduce an image from the Petition on which
Petitioner relies, below.
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Id. at 37. This image provides a schematic view of the outlet of an
electronic cigarette, with Petitioner’s asserted dimensions for the shown
components. Id.; see also Ex. 1002 ¶ 92 (providing the schematic drawing).
Petitioner bases these dimensions, in part, on certain alleged known material
thicknesses for some materials of construction and Shizumu’s disclosure that
a simulated cigarette’s diameter may be 7 millimeters. See Pet. 36; Ex. 1002
¶ 91 (providing ranges of thicknesses for stainless steel, plastics, and
silicone). Mr. Kodama testifies that, based upon the “known wall thickness
ranges,” a person of ordinary skill would have known to select appropriate
dimensions “as a matter of routine design choice” in view of the amount of
available interior space, which would be limited by the outer diameter and
the wall thicknesses of the component parts. Ex. 1002 ¶ 92.
Petitioner then contends that
For a device with components made of polypropylene or silicone
(as Xia discloses), a [person having ordinary skill in the art]
would have known that the outer, structural walls of the device
housing might consume 2.5 mm of available space (1.25 mm x
2). The two walls forming the air outlet hole might be thinner—
on the order of 1 mm—than the exterior walls forming the outer
housing, and might consume an additional 2 mm (1 mm x 2) of
available space within the device. The space for the air outlet
hole itself would take up an additional 1 mm. That would leave
1.5 mm (or perhaps slightly more or less) of cross-sectional space
within the interior of the device—and, thus, 0.75 mm (or perhaps
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Patent 10,104,911 B2
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slightly more or less) for each individual cavity or groove formed
on either side of the air inlet hole. As this example demonstrates,
it would have been obvious to a [person having ordinary skill in
the art] in December 2010 to size liquid-collecting cavities like
those disclosed in Xia to be within a range of 0.5 mm to 1 mm,
consistent with the teachings of Shizumu.
Pet. 37–38 (referencing Ex. 1002 ¶ 93); see also Ex. 1002 ¶ 93 (providing
verbatim testimony).
Patent Owner argues that Petitioner’s declarant does not provide any
underlying facts to support his asserted range for the thickness of an
injection molded plastic. Prelim. Resp. 25. Patent Owner adds that
Mr. Kodama testified in the parallel litigation that the dimensions for his
schematic view of the outlet of an electronic cigarette “do not reflect any
actual devices, prior art references, or industry standards.” Id. (referencing
Ex. 2027, 188–190, 204–210).
Patent Owner also argues that Petitioner fails to explain why a person
having ordinary skill in the art “would have selected the specific material
thicknesses needed to arrive at the claimed cavity dimensions.” Prelim.
Resp. 26 (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015) (emphasis omitted). Patent Owner concludes that “Petitioner
simply selected thicknesses that would arrive at the desired (i.e., claimed)
result.” Id. (referencing Ex. 2001 ¶¶ 51–55).
Patent Owner also argues that Petitioner’s modified version of Xia
fails to consider that its liquid blocking cover is set inside of Xia’s soft
suction nozzle 13. Prelim. Resp. 27. As such, if a person having ordinary
skill in the art would have started with a seven millimeter diameter cigarette,
the resulting device would not have room for any cavities or outlet holes. Id.
at 27–29 (referencing Ex. 2001 ¶¶ 56–58).
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We determine that Petitioner fails to demonstrate sufficiently that a
person having ordinary skill in the art would have designed Xia’s device to
arrive at the subject matter of the cross-sectional dimension limitation of
claim 1 as a matter of design choice. First, we agree with Patent Owner that
neither Petitioner nor Mr. Kodama adequately explains why a person having
ordinary skill in the art would have selected the specific material thicknesses
used by Petitioner out of the identified range of values. See Pet. 36
(providing “the range of available thicknesses” for different materials);
Ex. 1002 ¶ 91 (providing a range of materials, including plastic and
silicone), ¶ 93 (providing dimensions of the schematic view of the outlet of
an electronic cigarette, based on a specific thickness value). Even if we
credit Mr. Kodama’s testimony with regard to the range of thicknesses for
material that a person having ordinary skill in the art would have considered,
Mr. Kodama fails to provide the underlying basis for selecting the specific
values he used to develop the schematic view of the outlet of an electronic
cigarette. See 37 C.F.R. 42.65(a) (“Expert testimony that does not disclose
the underlying facts or data on which the opinion is based is entitled to little
or no weight.”); cf. Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575,
578 (Fed. Cir. 2016) (non-precedential) (stating that, in an obviousness
analysis, there must be “a reason for why a person of ordinary skill in the art
would have made the specific design choice” (emphasis added)).6

6 Although the selected value used by Mr. Kodama is within the range he
identifies, we do not understand Petitioner’s position to be that, if the range
of values were used, the resulting range of dimensions for Xia’s cavities
would overlap the claimed range. See Pet. 36–37 (contending that, armed
with the material thickness ranges, a person having ordinary skill in the art
would have selected “appropriate dimensions” resulting in cavities within
the claimed range).
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Second, we determine that Petitioner fails to explain sufficiently that
the subject matter of the cross-sectional dimension limitation of claim 1 is
not a critical aspect of the invention of claim 1 or fails to solve a stated
problem, such that it may be a matter of design choice. Cf. In re Kuhle, 526
F.2d 553, 555 (CCPA 1975) (“Use of such a means of electrical connection
in lieu of those used in the references solves no stated problem and would be
an obvious matter of design choice within the skill of the art.”). Petitioner
fails to address the disclosure in the ’911 patent stating that the cross-
sectional dimension of the blind hole or cavity “is preferably 0.5 mm or 1
mm or between 0.5 mm and 1 mm,” and that “[t]his size has been found to
be advantageous since it is large enough to collect a sufficient amount of
liquid, but small enough to trap the liquid in the cavity by capillary action,
even if the aerosol generating system is rotated or vertically aligned.”
Ex. 1001, 11:26–32, 12:41–50. That is, the Specification describes how the
recited cross-sectional dimension is advantageous to both collect and trap
condensate droplets. Petitioner does not persuasively explain why this
disclosure does not indicate that the subject matter of the cross-sectional
dimension limitation of claim 1 solves a problem.
Accordingly, we determine that Petitioner’s reliance on the
knowledge of a person having ordinary skill in the art, in combination with
Shizumu’s teaching of an overall diameter of a simulated cigarette, fails to
demonstrate adequately that the cross-sectional dimension limitation of
claim 1 would have been obvious as a matter of design choice.
d) Conclusion
For the reasons discussed above, we determine, on the current record,
that the information presented in the Petition fails to show a reasonable
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likelihood that claim 1 is unpatentable under 35 U.S.C. § 103 over Xia,
Shizumu, and the knowledge of a person having ordinary skill in the art.
2. Dependent claims 9–13
Petitioner contends that dependent claims 9–13, which depend
directly from claim 1, are unpatentable as obvious over Xia, Shizumu, and
the knowledge of a person having ordinary skill in the art. Because we
determine that the information presented in the Petition fails to show a
reasonable likelihood that independent claim 1 is unpatentable under
35 U.S.C. § 103 as obvious, we also determine that the information
presented in the Petition fails to show a reasonable likelihood that dependent
claims 9–13 are unpatentable under 35 U.S.C. § 103 over Xia, Shizumu, and
the knowledge of a person having ordinary skill in the art.
E. Ground 2: Claims 1 and 9–13 as unpatentable over Cho, Shizumu,
and the knowledge of a person having ordinary skill in the art
Petitioner contends that claims 1 and 9–13 are unpatentable over Cho,
Shizumu, and the knowledge of a person having ordinary skill in the art.
Pet. 12, 47–70. In its contentions with respect to the cross-sectional
dimension limitation of claim 1, Petitioner relies on similar arguments as
made for this limitation for Ground 1. Compare Pet. 57–62 with Pet. 34–39.
Patent Owner references it arguments made for Ground 1 or otherwise
makes similar arguments in disputing Petitioner’s positions. Compare
Prelim. Resp. 32–38 with Prelim. Resp. 13–29.
For the reasons discussed above in connection with our analysis of the
cross-sectional dimension limitation of claim 1, we determine that the
information presented in the Petition fails to show a reasonable likelihood
that claims 1 and 9–13 are unpatentable under 35 U.S.C. § 103 over Cho,
Shizumu, and the knowledge of a person having ordinary skill in the art.
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III. DISCRETIONARY DENIAL
Patent Owner argues that the Board should exercise its discretion to
deny the Petition under 35 U.S.C. § 314(a) or under 35 U.S.C. § 325(d).
Prelim. Resp. 39–57. In view of our determination that Petitioner has not
met the threshold for instituting review on the merits, we need not consider
Patent Owner’s arguments for a discretionary denial of institution.

IV. CONCLUSION
After considering all the evidence and arguments presently before us,
we determine Petitioner has not established a reasonable likelihood that it
would prevail with respect any of the Challenged Claims. Accordingly, we
do not institute an inter partes review.

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, pursuant to 35 U.S.C. § 314(a), the Petition is
denied.
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For PETITIONER:
John Marlott
Carl A. Kukkonen
Stephanie Mishaga
David Cochran
Matthew Johnson
JONES DAY
jamarlott@jonesday.com
ckukkonen@jonesday.com
smishaga@jonesday.com
dcochran@jonesday.com
mwjohnson@jonesday.com

For PATENT OWNER:

Jonathan Strang
Clement Naples
Surendra Ravula
Lawrence Gotts
LATHAM & WATKINS LLP
jonathan.strang@lw.com
clement.naples@lw.com
surendrakumar.ravula@lw.com
Lawrence.gotts@lw.com