Philip Morris Products, S.A.Download PDFPatent Trials and Appeals BoardSep 13, 2021IPR2021-00586 (P.T.A.B. Sep. 13, 2021) Copy Citation 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”). IPR2021-00586 Patent 10,104,911 B2 2 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 IPR2021-00586 Patent 10,104,911 B2 3 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. IPR2021-00586 Patent 10,104,911 B2 4 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 IPR2021-00586 Patent 10,104,911 B2 5 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 IPR2021-00586 Patent 10,104,911 B2 6 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. IPR2021-00586 Patent 10,104,911 B2 7 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. IPR2021-00586 Patent 10,104,911 B2 8 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. IPR2021-00586 Patent 10,104,911 B2 9 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. IPR2021-00586 Patent 10,104,911 B2 10 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. IPR2021-00586 Patent 10,104,911 B2 11 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 IPR2021-00586 Patent 10,104,911 B2 12 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 IPR2021-00586 Patent 10,104,911 B2 13 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 IPR2021-00586 Patent 10,104,911 B2 14 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. IPR2021-00586 Patent 10,104,911 B2 15 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. IPR2021-00586 Patent 10,104,911 B2 16 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. IPR2021-00586 Patent 10,104,911 B2 17 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”). IPR2021-00586 Patent 10,104,911 B2 18 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 . . . , IPR2021-00586 Patent 10,104,911 B2 19 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. IPR2021-00586 Patent 10,104,911 B2 20 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. IPR2021-00586 Patent 10,104,911 B2 21 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 IPR2021-00586 Patent 10,104,911 B2 22 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). IPR2021-00586 Patent 10,104,911 B2 23 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). IPR2021-00586 Patent 10,104,911 B2 24 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 IPR2021-00586 Patent 10,104,911 B2 25 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. IPR2021-00586 Patent 10,104,911 B2 26 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. IPR2021-00586 Patent 10,104,911 B2 27 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 Copy with citationCopy as parenthetical citation