RAI Strategic Holdings, Inc.

Patent Trials and Appeals Board

Nov 15, 2021

IPR2020-00920 (P.T.A.B. Nov. 15, 2021)

Trials@uspto.gov Paper 21
571-272-7822 Date: November 15, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

PHILIP MORRIS PRODUCTS, S.A.,
Petitioner,
v.
RAI STRATEGIC HOLDINGS, INC.,
Patent Owner.

IPR2020-00920
Patent 8,314,591 B2

Before JO-ANNE M. KOKOSKI, ELIZABETH M. ROESEL, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
KOKOSKI, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
We have jurisdiction to conduct this inter partes review under
35 U.S.C. § 6, and issue this Final Written Decision pursuant to 35 U.S.C.
§ 318(a). For the reasons that follow, we determine that Philip Morris
Products, S.A. (“Petitioner”) has shown by a preponderance of the evidence
that claims 1–14 (“the challenged claims”) of U.S. Patent No. 8,314,591 B2
(“the ’591 patent,” Ex. 1001) are unpatentable.
A. Procedural Background
Petitioner filed a Petition to institute an inter partes review of
claims 1–14 of the ’591 patent. Paper 2 (“Pet.”). RAI Strategic Holdings,
Inc. (“Patent Owner”) did not file a Preliminary Response. Pursuant to
35 U.S.C. § 314(a), we instituted a inter partes review of claims 1–14 on the
grounds advanced in the Petition. Paper 6, 4–5, 13.
After institution of trial, Patent Owner filed a Patent Owner Response
(“PO Resp.,” Paper 8), Petitioner filed a Reply (“Pet. Reply,” Paper 10), and
Patent Owner filed a Sur-reply (“PO Sur-reply,” Paper 12). We held an oral
hearing on August 18, 2021, and a transcript is included in the record.
Paper 20.
B. Real Parties-in-Interest
Petitioner identifies Philip Morris Products, S.A., Philip Morris
International, Inc., Altria Client Services LLC, and Philip Morris USA as the
real parties-in-interest. Pet. 4. Patent Owner identifies RAI Strategic
Holding, Inc., R.J. Reynolds Vapor Company, RAI Innovations Company,
and R.J. Reynolds Tobacco Company as the real parties-in-interest.
Paper 5, 1.
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C. Related Matters
Petitioner identifies as related matters several U.S. patent applications
it asserts are related to the ’591 patent. Pet. 5; see also Paper 9, 2 (Patent
Owner stating that the ’591 patent “is no longer involved in any litigation.”).
D. The ’591 Patent
The ’591 patent, titled “Charging Case for a Personal Vaporizing
Inhaler,” relates to “an active case for an electronic flameless inhaler unit
that may simulate a cigarette or deliver nicotine and other medications to the
oral mucosa, pharyngeal mucosa, tracheal, and pulmonary membranes.”
Ex. 1001, code (57), 1:25–28. The ’591 patent explains that the “case
comprises a cradle adapted to hold a personal vaporizing unit” and includes
“a battery and at least two contacts.” Id. at 5:1–4. “The two contacts may
form an electrical contact with the personal vaporizer unit when the personal
vaporizer unit is in the cradle” and “may conduct charge from the battery to
the personal vaporizer unit to charge the personal vaporizer unit.” Id.
at 5:4–8. When docked in the case, the personal vaporizer unit emits a light
that is visible from outside the case in order to provide a visual indication of
the personal vaporizer unit’s charge state. Id. at 15:14–19.
The ’591 patent further explains that “[t]he case may also download
and store data retrieved from the personnel [sic] vaporizing unit . . . and
store this data via the at least two contacts.” Id. at 5:8–11. “The case may
send this data to a computer via wired or wireless links.” Id. at 5:11–12.
The wireless interface can “comprise an infrared (IR) transmitter, a
BLUETOOTHTM (i.e., 802.15 specified) interface, an 802.11 specified
interface, and/or communicate with a cellular telephone network.” Id.
at 15:1–4. The ’591 patent states that the data from the personal vaporizer
unit also can be associated with an identification number stored by the unit,
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and the data “may be transmitted via the wireless interface in association
with the identification number.” Id. at 15:4–9.
E. Illustrative Claims
Petitioner challenges claims 1–14 of the ’591 patent. Claim 4, which
depends from claim 3, which in turn depends from claim 1, is illustrative of
the claimed subject matter. Claims 1, 3, and 4 are reproduced below:
1. A case, comprising:
a first cradle adapted to hold a personal vaporizing unit,
said personal vaporizing unit having dimensions
approximating a smoking article;
a battery;
a first contact and a second contact, said first contact and
said second contact forming an electrical contact with
said personal vaporizing unit when said personal
vaporizing unit is held by said first cradle, said first
contact and said second contact conducting charge from
said battery to said personal vaporizing unit to charge
said personal vaporizing unit.
Ex. 1001, 17:14–25.
3. The case of claim 1, further comprising:
a connector to interface to a computer, the case
transferring data from said personal vaporizing unit to
said computer via said connecter.
Id. at 17:29–32.
4. The case of claim 3, wherein said connecter also conducts
charge to recharge said battery.
Id. at 18:1–2.
F. Prior Art and Asserted Grounds
Petitioner asserts that the challenged claims are unpatentable on the
following grounds:
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Claim(s) Challenged 35 U.S.C. § Reference(s)
1, 3, 4, 6, 7 102(b) Wang1
2–5 103(a) Wang, Voges2
8–14 103(a) Wang, Voges, Nielsen3
1–4 102(b) Voges
1–6, 8–14 103(a) Voges, Nielsen
7 103(a) Voges, Nielsen, Counts4
Pet. 6–7. Petitioner relies on the Declaration of Samir Nayfeh, Ph.D.
(“Nayfeh Declaration,” Ex. 1003) and the Supplemental Declaration of
Dr. Nayfeh (“Supplemental Nayfeh Declaration,” Ex. 1046).
II. ANALYSIS
A. Legal Standards
Petitioner bears the burden of proving unpatentability of the
challenged claims, and the burden of persuasion never shifts to Patent
Owner, except in limited circumstances not present here. Dynamic
Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015). To prevail in this proceeding, Petitioner must support its challenge
by a preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R.
§ 42.1(d).
A claim is anticipated if a single prior art reference either expressly or
inherently discloses every limitation of the claim. Orion IP, LLC v. Hyundai
Motor Am., 605 F.3d 967, 975 (Fed. Cir. 2010). Although the elements must
be arranged or combined the same way as in the claim, “the reference need
not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not

1 International Patent Pub. No. WO 2008/139411 A2, published Nov. 20,
2008 (Ex. 1005).
2 U.S. Patent No. 6,637,430 B1, issued Oct. 28, 2003 (Ex. 1006).
3 U.S. Patent App. Pub. No. 2009/0283103 A1, published Nov. 19, 2009
(Ex. 1007).
4 U.S. Patent No. 5,144,962, issued Sept. 8, 1992 (Ex. 1008).
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required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2019) (citing In re
Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).
A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
the differences between the claimed subject matter 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 skill in the art; and (4) where in evidence, objective
indicia of nonobviousness, i.e., secondary considerations.5 Graham v. John
Deere Co., 383 U.S. 1, 17–18 (1966). The obviousness inquiry further
requires an analysis of “whether there was an apparent reason to combine
the known elements in the fashion claimed by the patent at issue.” KSR,
550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(requiring “articulated reasoning with some rational underpinning to support
the legal conclusion as to obviousness”)).
B. Level of Ordinary Skill in the Art
Factors pertinent to a determination of the level of ordinary skill in the
art include “(1) the educational level of the inventor; (2) type of problems
encountered in the art; (3) prior art solutions to those problems; (4) rapidity
with which innovations are made; (5) sophistication of the technology; and
(6) education level of workers active in the field.” Envtl. Designs, Ltd. v.

5 Patent Owner did not introduce any evidence of objective indicia of
nonobviousness in this proceeding.
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Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic
Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed.
Cir. 1983)). Not all such factors may be present in every case, and one or
more of these or other factors may predominate in a particular case. Id.
Moreover, “[t]hese factors are not exhaustive but are merely a guide to
determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v.
Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining the level
of ordinary skill, we may also look to the prior art, which may reflect an
appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
Cir. 2001). Additionally, “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
Petitioner contends that a person having ordinary skill in the art
(“POSA”) “would have had a Bachelor’s degree in mechanical engineering,
electrical engineering, or a related field, and three to four years of
experience,” or a Master’s degree in the same fields with “one to two years
of experience.” Pet. 9. Petitioner also contends that “[s]uch a POSA would
have been familiar with charging devices used in commercial electronics
and/or the components and underlying technology used therein.” Id. Patent
Owner does not dispute Petitioner’s contentions. PO Resp. 8 (stating that,
“[f]or the purposes of this IPR,” Patent Owner does not dispute Petitioner’s
proposed definition of a POSA). Accordingly, we adopt Petitioner’s
assessment of the level of ordinary skill in the art, which is undisputed on
this record and consistent with the level of ordinary skill in the art at the time
of the invention as reflected in the prior art in this proceeding.
C. Claim Construction
We apply the claim construction standard articulated in Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R.
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§ 42.100(b) (2019). Under Phillips, the “words of a claim ‘are generally
given their ordinary and customary meaning,’” which is “the meaning that
the term would have to a person of ordinary skill in the art in question at the
time of the invention, i.e., as of the effective filing date of the patent
application.” Phillips, 415 F.3d at 1312–13. “[W]e need only construe
terms ‘that are in controversy, and only to the extent necessary to resolve the
controversy.” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Tecs., Inc. v. Am. Sci.
& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).
On the full record now before us, we determine it is not necessary to
construe any claim term expressly to resolve the parties’ dispute. Nidec
Motor, 868 F.3d at 1017; see also Pet. 10 (Petitioner stating that “[n]o
claims require a specific construction.”); PO Resp. 8 (Patent Owner stating
that it “does not believe that any terms in the claims of the ’591 patent
require explicit construction.”).
D. Anticipation by Wang
Petitioner contends that claims 1, 3, 4, 6, and 7 of the ’591 patent are
anticipated by Wang. Pet. 18–25.
1. Overview of Wang
Wang “relates to an alternative smoking device, to be used to reduce
the negative effects of classic smoking” and its “related auxiliary devices.”
Ex. 1005 ¶¶ 2, 7. In particular, Wang describes “charging means” to be used
with the smoking device that “also acts as a storage device for the smoking
device.” Id. ¶ 49.
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Figure 1C of Wang is reproduced below.

Figure 1C is a perspective view of one embodiment of the smoking device
described in Wang, with part of the housing removed to show several
internal parts of the smoking device. Ex. 1005 ¶ 11. Smoking device 10
includes first housing part 20.1, main part 30, accumulator 21, heating
device 22, charging interface 28, and control electronics 23. Id. ¶ 18. Wang
explains that accumulator 21 can be a lightweight, high capacity
rechargeable battery that releases enough energy to power control
electronics 23 and heating device 22. Id. ¶ 19. Wang teaches that charging
interface 28 further comprises first contact 28.1 and second contact 28.2 (not
pictured), which are provided to charge accumulator 21 using Wang’s
charging means. Id. ¶ 32. Wang also teaches that “interface 28 is a
standardized interface connectable to a standard charging device 40, such as
the charger of a mobile phone or a mini USB port for example.” Id.
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Wang’s Figure 2 is reproduced below.

Figure 2 is a “see-through perspective view of the charging means”
described by Wang. Ex. 1005 ¶ 11. Figure 2 depicts charging means 40
having housing 49, which also acts as a storage device for smoking
device 10. Id. ¶ 49. Charging means 40 includes bay 41 for receiving at
least a part of smoking device 10, with accumulator 42 and charger
contacts 43 arranged in or at bay 41 in order to establish electrical contacts
between accumulator 42 and the corresponding contacts of charging
interface 28 of smoking device 10. Id. ¶ 50. Accumulator 42 stores
electrical energy sufficient to charge accumulator 21 in smoking device 10
several times while smoking device 10 is in bay 41. Id. ¶ 52.
Charging means 40 also includes electronic circuit 44 to control the
charging of smoking device 10. Id. ¶ 54. Electronic circuit 44 “may also be
capable of keeping a record and generally usage data related to the smoking
device.” Id. ¶ 55. In order to do so, charging means 40 further includes
interface 45, such as a USB interface, for providing a contact between
electronic circuit 44 and an external computing device. Id. Wang teaches
that interface 45 can also enable charging of accumulator 42 by connecting
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interface 45 to an external computing device and transferring electrical
energy from it, “or by connecting an AC or DC charger having a
corresponding interface.” Id. ¶ 56.
2. Claims 1, 6, and 7
Petitioner asserts that Wang discloses all elements of independent
claim 1, and claims 6 and 7 that directly depend therefrom. Pet. 18–22, 24–
25. Patent Owner does not address whether or not Wang discloses the
limitations of claim 1, 6, and 7. See PO Resp. 1 (“In order to streamline
these proceedings, [Patent Owner] focuses its Patent Owner Response on
claims 4, 5, and 8–14.”). We are persuaded by Petitioner’s arguments and
evidence for claims 1, 6, and 7, as summarized below.
Petitioner asserts that Wang discloses “a first cradle adapted to hold a
personal vaporizing unit, said personal vaporizing unit having dimensions
approximating a smoking article” because Wang’s personal vaporizer unit
(smoking device 10) “provide[s] an alternative means for smoking, which
significantly reduces the negative side effects of smoking” and also
“provide[s] the consumer a very similar experience to smoking a regular
cigarette.” Id. at 19–20 (citing Ex. 1005 ¶¶ 6, 7, 46–47). Petitioner further
asserts that Wang describes charging means 40 as giving “the consumer a
similar experience to having a pack of regular cigarettes at his disposal.”
Id. at 20 (quoting Ex. 1005 ¶ 52). Petitioner also asserts that bay 41 in
Wang’s charging means 40 is designed to accommodate at least one end of a
smoking device, and therefore is the claimed “first cradle.” Id. at 20 (citing
Ex. 1005 ¶ 51). Petitioner asserts that Wang’s “high capacity accumulator
42,” which is preferably “a 7.4 V, 400mAh battery,” is the claimed
“battery.” Id. at 21 (citing Ex. 1005 ¶ 52).
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With respect to the final limitation of claim 1, which requires “a first
contact and a second contact,” Petitioner asserts that “Wang charges the
battery of its smoking article (its personal vaporizing unit) via ‘charger
contacts 43’ (first and second contacts), which establish electrical contact
with the smoking article when it is properly inserted in a bay (cradle).”
Pet. 21–22 (citing Ex. 1005 ¶¶ 50, 52).
Claim 6 depends from claim 1 and further requires “a second cradle.”
Ex. 1001, 18:8. Petitioner contends that Wang teaches a case with two sets
of bays (“cradles”). Pet. 24–25 (citing Ex. 1005 ¶ 59, Fig. 3B,
claims 20–22; Ex. 1003 ¶¶ 92–94).
Claim 7 also depends from claim 1, and further requires “a charge
controller to control charge conducted from said battery to said personal
vaporizing unit.” Ex. 1001, 18:9–11. Petitioner contends that Wang
discloses the claimed controller because electronic circuit 44 of charging
means 40 has the main role to control charging smoking device 10 so that
charging means 40 can provide at least minimum power to keep smoking
device 10 functional over an extended period of time. Pet. 25 (citing
Ex. 1005 ¶¶ 54–55, claims 14–18; Ex. 1003 ¶¶ 95–97).
Based on Petitioner’s arguments and unrebutted evidence regarding
claims 1, 6, and 7, we determine that Petitioner has established, by a
preponderance of the evidence, that Wang anticipates claims 1, 6, and 7 of
the ’591 patent. Pet. 18–22, 24–25; Ex. 1003 ¶¶ 71–82, 92–97.
3. Claims 3 and 4
Claim 3 depends from claim 1, and further recites “a connector to
interface to a computer, the case transferring data from said personal
vaporizing unit to said computer via said connecter.” Ex. 1001, 17:29–32.
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Claim 4 depends from claim 3, and further recites “said connector also
conducts charge to recharge said battery.” Id. at 18:1–2.
Petitioner asserts that Wang discloses all elements of claims 3 and 4.
Pet. 23–24. Patent Owner disputes Petitioner’s contention as to claim 4.
PO Resp. 20–24. For the reasons discussed below, we are persuaded by
Petitioner’s arguments and evidence.
With respect to claim 3, Petitioner contends that Wang discloses “a
connector interface to a computer” because it “includes ‘interface 45’
between the charger and an external computing device,” and “[i]interface 45
is preferably a standard interface, such as a USB interface, which has the
added advantage that it can be used for recharging the charger.” Pet. 23
(citing Ex. 1005 ¶¶ 55–57, claims 14–18; Ex. 1003 ¶¶ 83–88). Petitioner
contends that Wang discloses “transferring data from said personal
vaporizing device unit to said computer via said connecter” because “Wang
teaches the transfer of ‘general[] usage data related to smoking device 10’ to
the external computer via interface 45.” Id. (citing Ex. 1003 ¶¶ 83–88;
Ex. 1005 ¶ 55). According to Petitioner, a POSA “would have understood
that Wang obtains this usage data from the smoking device, e.g., over
‘interface 28,’ which may be a mini-USB or cellphone connection for
charging and data transfer.” Id. (citing Ex. 1005 ¶ 32; Ex. 1003 ¶¶ 83–88).
With respect to claim 4, Petitioner contends that Wang discloses “said
connecter also conducts charge to recharge said battery” because Wang
“explains that its charging means can be recharged ‘by connecting the
interface 45 to a computing device and transferring electrical energy from
it.’” Pet. 24 (citing Ex. 1005 ¶ 56, claims 14–18). Petitioner contends that it
was well known that USB interfaces, such as that Wang uses for interface
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45, conduct charge and transfer data. Id. (citing Ex. 1005 ¶ 55; Ex. 1003
¶¶ 89–91).
Patent Owner responds that Wang does not describe a case that is
configured for transferring data from a personal vaporizing unit to a
computer via a connector as required by claim 4, which includes the
limitations of claim 3 from which it depends. PO Resp. 20–21. Patent
Owner argues that “Wang never describes that its case (charging means 40)
is capable of transferring data from Wang’s personal vaporizing unit
(smoking device 10) to a computer via interface 45.” Id. at 22. Patent
Owner acknowledges Wang’s disclosure that charging means 40 may be
capable of keeping a record of the number of charges and general usage
data, but argues that “the data being stored, and potentially transferred to a
computer via interface 45 is data from charging means 40—i.e., Wang’s
case—not from Wang’s smoking article.” Id. (citing Ex. 1005 ¶ 55).
Patent Owner further argues that Petitioner does not point to any
disclosure that Wang’s smoking article 10 transfers usage data at all.
PO Resp. 22 (citing Pet. 23; Ex. 1003 ¶¶ 83–88). Patent Owner argues that
Wang “never describes or suggests that interface 28 in smoking article 10 is
for data transfer,” and only describes interface 28 as a charging interface
that, in alternative embodiments, “could be a standardized interface
connectable to a mobile phone charger or mini-USB port.” Id. (citing
Ex. 1005 ¶ 32) According to Patent Owner, “[n]othing in Wang suggests to a
POSA that Wang’s charging means 40 obtains data from smoking article 10
via charging interface 28.” Id. at 23.
We agree with Petitioner that Wang teaches “a connector to interface
to a computer, the case transferring data from said personal vaporizing unit
to said computer via said connecter” as claims 3 and 4 require. Pet. 23–24;
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Pet. Reply 1–5; Ex. 1003 ¶¶ 83–90; Ex. 1046 ¶¶ 7–14. In particular, Wang
teaches that electronic circuit 44 in charging means 40 can both control the
charging of smoking device 10 and keep a record of the number of charges
and general usage data relating to smoking device 10. Ex. 1005 ¶¶ 54–55.
Wang also teaches that the usage data electronic circuit 44 records can be
transferred from charging means 40 to an external computing device via
interface 45, which can be a standard interface such as a USB. Id. ¶ 55.
Wang explains that
[t]he data recorded gives the possibility to analyze ones
smoking habits or in case an agent 33 with medicine
compounds is used, to analyze results and dosages. In a further
embodiment the computing device which is connected to the
interface 45 is capable of transmitting the recorded data to a
central database. In this case a more general statistical analysis
can be drawn up using the data transmitted to said central
database. These analyses can serve health, commercial or
sociological purposes for example.
Id. Wang also teaches that, when a user inserts smoking device 10 into bay
41 of charging means 40, interface 28 of smoking device 10 establishes
electrical contact with charger contacts 43 arranged in bay 41. Id. ¶ 50.
We find persuasive Dr. Nayfeh’s testimony that a POSA would have
understood that Wang’s usage data includes “a variety of data, such as
frequency of use, length of use, time of each use, number of puffs per use,
[and] dosage and type of medications/chemicals expended per use.”
Ex. 1046 ¶ 8. Dr. Nayfeh explains that a skilled artisan “would have
understood that this information could not come from the charging case
because that case would have no way of monitoring the smoking device
while it was in use.” Id.
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Dr. Nayfeh’s testimony is unrebutted, as Patent Owner did not submit
expert testimony in support of its Patent Owner Response and did not cross-
examine Dr. Nayfeh. See Pet. Reply 1. Furthermore, Patent Owner provides
no counter to Dr. Nayfeh’s description of the “general usage data relating to
smoking device 10” that Wang discloses is transferred from the case from to
an external computing device via interface 45. Ex. 1005 ¶ 55.
On this record, we also find persuasive Dr. Nayfeh’s testimony that
while the charging case could detect the frequency or size of the
recharges, that information would only be accurate if that
particular charging case were used every time a particular
smoking device were charged. But a POSA would have
understood that this would not always be true, therefore an
accurate representation of the charging data must also come
from the smoking device: if the device were charged in another
case or elsewhere, those charges would not be recorded by the
charging case. Therefore, Wang’s teaching in paragraph 55 that
that electronic circuit 44 of the case is capable of keeping a
record of “general[] usage data related to the smoking
device 10” and that the interface 45 is capable of “transmitting
[that] recorded data to a central database” teaches that the case
transfers data from the smoking device (vaporizing unit) to the
computer via interface 45 (the connector).
Id. ¶ 9. Dr. Nayfeh’s testimony on this issues is unrebutted by any evidence
submitted by Patent Owner.
We further credit Dr. Nayfeh’s testimony that a skilled artisan “would
have understood that usage data related to the smoking device 10 is obtained
from smoking device 10, over interface 28, which may be a mini-USB or
cellphone connection for charging and data transfer.” Ex. 1003 ¶ 88 (citing
Ex. 1005 ¶ 32); see also Ex. 1046 ¶ 8 (“A POSA would have understood that
this [usage data] must come from the smoking device itself and must be
transferred to electronic circuit 44 from the smoking device.”). Dr. Nayfeh
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also testifies that “POSAs at the relevant time would have understood that
mini USBs could transfer both data and charge,” and that connecting
interface 28 to a mini-USB port “would have enabled the system of Wang to
transfer the necessary usage and charging data from the smoking device to
the charging case.” Ex. 1046 ¶¶ 11–12. Dr. Nayfeh’s testimony in this
regard is consistent with the state of the art as the evidence of record cited in
his testimony reflects. See, e.g., Ex. 1047, 6:8–11 (describing a USB cable
connected through a USB port “for transfer of data from a source such as a
computer or the Internet to a device 12 and also for battery charging”); Ex.
1048, 5:55–57 (describing a USB port that provides a mobile device “with a
serial port for linking directly with other computers to exchange data and/or
to receive power”); Ex. 1049, 5:41–46 (describing USB data cable 250 that
“is used to supply electric power from the terminal adapter 300 to the
portable terminal 100 to recharge the battery, and also to transmit signals
between the portable terminal 100 and the headset 200 during the data
communication”).
On this record, we disagree with Patent Owner that Wang teaches that
it is only in “embodiments where the smoking article 10 is connectable to a
‘standard charging device,’ not charging means 40” where “charging
interface 28 may be connectable to a mini-USB port.” PO Resp. 25 (citing
Ex. 1005 ¶ 32) (emphasis omitted). Wang specifically states that “[i]n the
depicted embodiment” contacts 28.1 and 28.2 are arranged as two concentric
circles, “but in different embodiments these contacts may be arranged
differently.” Ex. 1005 ¶ 32. Wang goes on to state that “[i]n further
embodiments, the charging interface 28 is a standardized interface
connectable to a standard charging device 40, such as the charger of a
mobile phone or a mini USB port for example.” Id. There is no indication
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in Wang that “charging means 40” and “charging device 40” refer to
different devices or structures. See also Ex. 1046 ¶ 10 (Dr. Nayfeh
testifying that “a POSA would have understood that [Wang] teaches that the
smoking device could transfer data and charge between the smoking device
and charging case, for example, through a mini-USB port or through two
electrical contacts.” (citing Ex. 1005 ¶ 32)). In any event, Patent Owner
does not present any evidence supporting this contention beyond attorney
argument, which, on this record, is not sufficient to rebut Dr. Nayfeh’s
credible testimony to the contrary. See Elbit Sys. of Am., LLC v. Thales
Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (rejecting attorney
argument as to the alleged understanding of one of skill in the art on an issue
when no evidence was presented).
We are also not persuaded by Patent Owner’s argument that Petitioner
and Dr. Nayfeh are improperly “proposing to combine a charging interface
that is for use with a ‘standard charging device’ in one alternative
embodiment of Wang (Ex. 1005 ¶ 32) with the charging means 40 (case) of
a different embodiment of Wang (id. at ¶55) that has a different charging
interface.” PO Sur-reply 4 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008). As set forth above, we disagree with
Patent Owner’s premise that Wang describes using smoking device 10 with
a mini USB as interface 28 with something other than charging means 40.
Moreover, Wang teaches that charging means 40 is “intended to be used
with the smoking device 10.” Ex. 1005 ¶ 49. Because Wang teaches that
smoking device 10 with a mini USB as interface 28 is connectable to
charging means 40, we are persuaded, on this record, that Wang shows all of
the elements of claim 3 arranged in the same way as recited in the claim.
See Net MoneyIN, 545 F.3d at 1371 (“[U]nless a reference discloses within
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the four corners of the document not only all of the limitations claimed but
also all of the limitations arranged or combined in the same way as recited in
the claim, it cannot be said to prove prior invention of the thing claimed and,
thus, cannot anticipate under 35 U.S.C. § 102.”).
Patent Owner also asserts Dr. Nayfeh’s testimony in the Supplemental
Nayfeh Declaration, and Petitioner’s corresponding arguments in the Reply,
that Wang’s smoking device 10 stores and transmits data to Wang’s case
should have been made in the Petition, and, accordingly, are untimely.
PO Sur-reply 4. Specifically, Patent Owner asserts that Dr. Nayfeh provides
two conclusory paragraphs on this issue in the Nayfeh Declaration, but the
Supplemental Nayfeh Declaration “spends five pages trying to support
Petitioner’s assertion that Wang discloses a case configured for ‘transferring
data from said personal vaporizing unit to said computer via said
connector.’” Id. at 3–4 (citing Ex. 1003 ¶¶ 87–88; Ex. 1046 ¶¶ 7–14)
(emphasis omitted).
Our rules provide that a petitioner must include “[a] full statement of
the reasons for the relief requested, including a detailed explanation of the
significance of the evidence including material facts, and the governing
laws, rules, and precedent.” 37 C.F.R. § 42.22(a). Our rules also state that
“[a] reply may only respond to arguments raised in the corresponding . . .
patent owner response.” Id. § 42.23(b). “‘Respond,’ in the context of
37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new
approach as compared to the positions taken in a prior filing.” Consolidated
Trial Practice Guide (“Practice Guide”), 74 (Nov. 2019), available at
https://go.usa.gov/xpvPF. Our Practice Guide explains that it is “improper
for a reply to present new evidence (including new expert testimony) that
could have been presented in a prior filing, for example, newly cited prior art
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references intended to ‘gap-fill’ by teaching a claim element that was not
present in the prior art presented with the petition.” Id. at 74–75. We
evaluate Petitioner’s Reply and Patent Owner’s Sur-reply arguments in light
of this guidance.
In our judgment, Petitioner’s arguments and evidence in the Reply are
responsive to arguments made by Patent Owner in the Patent Owner
Response and are not outside the scope of a proper reply. In the Patent
Owner Response, Patent Owner argues that when Wang states that electric
circuit 44 in charging means 40 is capable of keeping certain data relating to
smoking device 10, that data is from charging means 40, not from smoking
article 10. PO Resp. 22. Patent Owner also argues in the Patent Owner
Response that Wang does not describe or suggest that interface 28 in
smoking article 10 is for data transfer at all. Id. at 23. In the Reply,
Petitioner responds to Patent Owner’s argument without straying from the
case it presented in the Petition. The case presented in the Petition, as
supported with the Nayfeh Declaration, is that Wang teaches the transfer of
general usage data related to smoking device 10 to an external computer via
interface 45, and that a POSA would have understood that Wang obtains this
usage data from smoking device 10 over interface 28, which can be a mini
USB. Pet. 23; Ex. 1003 ¶¶ 85–88. Petitioner makes this same argument in
the Reply, and provides additional evidence and testimony from Dr. Nayfeh
to rebut Patent Owner’s assertions regarding Wang’s disclosures. Pet. Reply
2–5; Ex. 1046 ¶¶ 7–14. This is not an attempt to argue a new case or to
provide new evidence necessary to make out a prima facie case of
unpatentability. Instead, Petitioner’s reply arguments and evidence respond
to arguments in the Patent Owner Response, without proceeding in a new
direction or taking a new approach. Petitioner confirms and reinforces the
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arguments made in the Petition, which is a fair reply to the Patent Owner
Response. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1078–1079
(Fed. Cir. 2015).
Patent Owner further asserts that even if we consider the
Supplemental Nayfeh Declaration, we should give it little weight or no
weight because it is not based on objective evidence from Wang’s
disclosure. PO Sur-reply 4–5. As set forth above, however, we determine
that Wang supports Dr. Nayfeh’s testimony that a POSA would have
understood that the usage data electronic circuit 44 keeps must come from
smoking device 10. See Ex. 1046 ¶¶ 8–10 (citing Ex. 1005 ¶¶ 32, 55).
Dr. Nayfeh’s testimony in the Supplemental Nayfeh Declaration is also
supported with other objective evidence of record that shows that a POSA
would have understood that usage data is stored by the smoking device and
transferred from that device to the charging case. See, e.g., id. ¶¶ 11, 12, 14;
Ex. 1006, 5:66–6:27 (Voges describing that data from a personal inhaler can
be downloaded from the personal inhaler to the memory of a recharging unit,
and then to an external computer, via appropriate data ports); Ex. 1047, 6:8–
11 (describing a USB cable connected through a USB port “for transfer of
data from a source such as a computer or the Internet to a device 12 and also
for battery charging”); Ex. 1048, 5:55–57 (describing a USB port that
provides a mobile device “with a serial port for linking directly with other
computers to exchange data and/or to receive power”); Ex. 1049, 5:41–46
(describing USB data cable 250 that “is used to supply electric power from
the terminal adapter 300 to the portable terminal 100 to recharge the battery,
and also to transmit signals between the portable terminal 100 and the
headset 200 during the data communication”). We further note that, despite
Patent Owner’s concerns regarding Dr. Nayfeh’s testimony, Patent Owner
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chose not to cross-examine Dr. Nayfeh regarding his opinions. See
Pet. Reply 1 (stating that Patent Owner did not take Dr. Nayfeh’s
deposition).
It is within our discretion to assign the appropriate weight to
Dr. Nayfeh’s testimony. See, e.g., Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (holding that the Board has discretion to give more weight
to one item of evidence over another “unless no reasonable trier of fact could
have done so”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed.
Cir. 2004) (“[T]he Board is entitled to weigh the declaration and conclude
that the lack of factual corroboration warrants discounting the opinions
expressed in the declarations.”). Patent Owner’s contentions do not
persuade us that we should disregard Dr. Nayfeh’s testimony. Thus, we give
substantial weight to Dr. Nayfeh’s testimony because Wang and other
objective evidence support it and it is unrebutted by any expert testimony
from Patent Owner.
Accordingly, we determine that Petitioner shows, by a preponderance
of the evidence, that Wang discloses a case comprising “a connector to
interface to a computer, the case transferring data from said personal
vaporizing unit to said computer via said connecter” as claims 3 and 4 of
the ’591 patent require. Pet. 23–24; Pet. Reply 1–5; Ex. 1003 ¶¶ 83–91;
Ex. 1046 ¶¶ 7–14. Having reviewed all of the parties’ evidence and
arguments, we determine that Petitioner has established by a preponderance
of the evidence that Wang anticipates claims 3 and 4 of the ’591 patent.
E. Obviousness over Wang and Voges
Petitioner contends that claims 2–5 of the ’591 patent would have
been obvious over the combined teachings of Wang and Voges. Pet. 25–33.
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1. Overview of Voges
Voges is directed to “a respiratory delivery system which includes a
portable inhaler and a recharging unit which may be used to recharge both
the power and medicament supply of the portable inhaler.” Ex. 1006, 1:18–
21. Voges teaches that the housing of the portable inhaler “may be
configured to at least generally approximate the configuration and size of a
cigarette.” Id. at 2:50–52.
Voges describes a recharging unit wherein the housing thereof is
“configured/sized at least generally in the manner of the conventional
package of cigarettes.” Id. at 12:1–4. The recharging unit includes an
inhaler docking station within the housing, which includes an elongated
recess or aperture that is configured to generally approximate the perimeter
of the housing of the personal inhaler. Id. at 12:17–20. Voges explains that
when the inhaler is docked in the recharging unit, the power contacts of the
recharging system located therein “will be in appropriate electrical contact
with the recharging contacts” on the inhaler. Id. at 14:25–29. Voges further
explains that the existing energy levels within the power supply “may be
monitored through some type of power indicator” that is associated with the
recharging unit housing, such as a light. Id. at 14:47–54. Voges also
teaches that data from the personal inhaler can be transferred to an external
computer when the inhaler is docked in the recharging unit. Id. at 14:60–
15:2.
2. Claim 2
Claim 2 depends from claim 1, and further requires “a light source
visible on the exterior of the case to indicate a charge level of said battery.”
Ex. 1001, 17:26–28. Petitioner contends that Wang does not disclose such
an indicator light, but Voges “expressly teaches this commonplace feature.”
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Pet. 26. In particular, Petitioner contends that “Voges teaches monitoring
the remaining battery power to tell the user when the recharger itself needs
recharging by including a ‘power indicator 172’ on the recharger housing,”
and that “Voges explains that the power indicator could be as simple as a
light that is on or off depending on whether the recharger’s battery needed
recharging.” Id. (citing Ex. 1006, 14:39–59, Fig. 1; Ex. 1003 ¶¶ 98–105).
Petitioner also contends that a POSA “would have been motivated to
use Voges’ power indicator on Wang’s charging means” because they
“would have recognized the importance and utility of a power indicator
gauging charge level.” Pet. 27 (citing Ex. 1003 ¶¶ 98–105). Petitioner
contends that “both Voges and Wang emphasize the importance of
managing the power level of the portable inhaler (Voges) or smoking device
(Wang).” Id. (citing Ex. 1006, 11:41–62; Ex. 1005 ¶ 22; Ex. 1003 ¶¶ 98–
105). Petitioner further contends that “this was a feature commonly found
on battery-powered rechargers.” Id. at 27–28 (citing Ex. 1012, 4; Ex. 1003
¶ 104; Ex. 1019 ¶¶ 6–25; Ex. 1020, 16:28–34).
Patent Owner does not address whether or not the combined teachings
of Wang and Voges teach the limitations of claim 2. See PO Resp. 1 (“In
order to streamline these proceedings, [Patent Owner] focuses its Patent
Owner Response on claims 4, 5, and 8–14.”). Having reviewed all of
Petitioner’s assertions regarding claim 2, as well as the supporting evidence,
we determine that Petitioner has established, by a preponderance of the
evidence, that claim 2 of the ’591 patent would have been obvious over the
combined teachings of Wang and Voges and that Petitioner has established
an evidence-supported rationale for combining the teachings. Pet. 26–28;
Ex. 1003 ¶¶ 98–105.
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3. Claims 3 and 4
Petitioner contends that claims 3 and 4 would have been obvious over
Wang alone, or the combined teachings of Wang and Voges. Pet. 28–31.
Because Petitioner has shown that claims 3 and 4 are unpatentable under
35 U.S.C. § 102(b) as anticipated by Wang, we do not reach these additional
contentions with respect to claims 3 and 4. See Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984) (“The Commission . . . is at perfect
liberty to reach a ‘no violation’ determination on a single dispositive
issue.”); Boston Sci. Scimed, Inc. v. Cook Grp., Inc., 809 F. App’x 984, 990
(Fed. Cir. 2020) (recognizing that “[t]he Board has the discretion to decline
to decide additional instituted grounds once the petitioner has prevailed on
all its challenged claims”).
4. Claim 5
Claim 5 depends from claim 1, and further recites that “at least a
portion of personal vaporizing unit is visible from the outside of said case to
allow a light source comprising said personal vaporizing unit to indicate a
state of said personal vaporizing unit outside of said case.” Ex. 1001, 18:3–
7. Petitioner contends that “Voges discloses having an indicator light
(‘power indicator 90’) on a personal vaporizer,” which “could be as simple
as a light that turns on or off to indicate whether the smoking device
(personal vaporizer) has sufficient power remaining or could display the
actual amount of power remaining.” Pet. 32 (citing Ex. 1006, 11:40–62,
Fig. 1).
Petitioner contends that a POSA would have been motivated to
modify Wang’s smoking device to include Voges’ power indicator light
“because the consumer needs to know when the personal vaporizer needs to
be recharged.” Id. (citing Ex. 1006, 11:40–62; Ex. 1003 ¶¶ 27, 37, 113–
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118). Petitioner further contends that a POSA “would have been motivated
to leave at least a portion of the personal vaporizer visible while docked and
recharging so that the consumer could receive an indication of the smoking
article’s battery charging state from outside the charging device.” Id. at 32–
33 (citing Ex. 1003 ¶¶ 113–118).
Patent Owner responds that “Wang does not describe any need to
provide a power indication to the user of its smoking device” because
“Wang describes that charging means 40 provides a ‘minimum power’ in
order to keep smoking device 10 ‘functional during an extended period of
time, while the smoking device 10 resides in it.’” PO Resp. 30–31 (quoting
Ex. 1005 ¶ 54). Patent Owner also argues Wang teaches that smoking
device 10 has an indicating element that informs the user of the number of
draws that accumulator 21 is able to provide. Id. at 31 (citing Ex. 1005
¶ 20). According to Patent Owner, a POSA would not have been motivated
to add Voges’ power indicator light to Wang’s smoking device because
“Wang’s smoking device provides more specific information to the user on
the number of available draws.” Id.
Patent Owner further argues that even if Voges’ power indicator light
were added to Wang’s smoking article, it would not be visible from outside
of the case as required by claim 5. PO Resp. 32. Patent Owner asserts that
“the Voges power indicator 90 is clearly not visible from outside the case
(recharging unit 100) when charging.” Id. (citing Ex. 1006, Fig. 1). Patent
Owner also argues that when Wang’s smoking article 10 is inserted into
charging means 40, “cover 46 is closed and the smoking device is not visible
from outside of charging means 40 when the smoking device is inserted into
the case.” Id. at 28–29 (citing Ex. 1005, Fig. 2).
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Based on our review of the record, we find persuasive Petitioner’s
argument that the combined teachings of Wang and Voges disclose “at least
a portion of personal vaporizing unit is visible from outside of said case to
allow a light source comprising said personal vaporizing unit to indicate a
state of said personal vaporizing unit outside of said case” as recited in
claim 5. Pet. 31–33; Pet. Reply 9–12; Ex. 1003 ¶¶ 113–118; Ex. 1046
¶¶ 22–26. Wang teaches that smoking device 10 can comprise “an
indicating element which is meant to indicate the user of the smoking device
10 the number of draws (puffs) the accumulator 21 is currently able to
provide or / and the number of draws of the agent 33 in the second device 30
is enough for.” Ex. 1005 ¶ 20. Similarly, Voges teaches monitoring the
energy levels within the power supply of its portable inhaler (personal
vaporizing device) “through some type of power indicator 90 of the
dispensing assembly 16 (FIG. 1),” such as “provid[ing] one type of
indication when sufficient power existed within the power supply 74 (e.g., a
‘light on’ or ‘light off’ condition) and [providing] another type of indication
when insufficient power existed within the power supply 74 (e.g., the
converse).” Ex. 1006, 11:43–53. Voges also teaches that at least a part of
the portable inhaler housing can extend beyond the recharging unit housing
when the portable inhaler is docked in the recharging unit. Id. at 12:22–28.
Noting that “Voges explains that a user needs to know when a
personal vaporizer’s battery is depleted to ensure proper operation,”
Dr. Nayfeh credibly testifies that a POSA “would have understood that
providing the user with the ability to monitor the personal vaporizer battery
was essential to ensuring that the device could be properly managed and
used.” Id. ¶ 116. Additionally, Dr. Nayfeh credibly testifies that a POSA
“would have been motivated to implement a power indicator on the portion
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of a personal vaporizer that remains visible while docked and recharging”
because doing so “would allow a user to receive an indication of the status
of the smoking article’s battery while it is charging.” Ex. 1003 ¶ 117.
Dr. Nayfeh explains that “[a] POSA would have understood that this would
also allow the user to determine when the device might be sufficiently
charged for use, even if not yet fully charged.” Id. Moreover, Dr. Nayfeh’s
testimony that a visible power indicator was a common configuration for
charging devices at the time of the invention is supported with objective
evidence of record. Id. ¶ 118 (citing Ex. 1021; Ex. 1022; Ex. 1023;
Ex. 1040; Ex. 1041; Ex. 1043; Ex. 1044); Ex. 1046 ¶ 22. Patent Owner does
not submit any expert testimony to rebut Dr. Neyfah’s testimony about what
a POSA would have understood from the prior art.
We have considered Patent Owner’s arguments to the contrary and do
not agree with them for the following reasons. Patent Owner contends that
Wang does not describe a need to provide a power indication to the user of
its smoking device. PO Resp. 30–31. Petitioner, however, does not argue
that Wang provides the reason for adding a visible power indicator, and, in
any event, the motivation to modify a reference need not come from the
reference itself. See DyStar Textilfarben Gmbh & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“Because of the
desire to enhance commercial opportunities by improving a product or
process is universal—and even common-sensical—we have held that there
exists in these situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.”); see also
Perfect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (A reason to combine or modify the prior art may be found explicitly
or implicitly in market forces, design incentives, the “interrelated teachings
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of multiple patents,” “any need or problem known in the field of endeavor at
the time of the invention and addressed by the patent,” and “the background
knowledge, creativity, and common sense of the person of ordinary skill in
the art.” (quoting KSR, 550 U.S. at 418–421)).
We also disagree with Patent Owner’s argument that a POSA would
not have added a power indicator light to Wang’s smoking device because,
according to Patent Owner, Wang teaches charging means 40 provides
minimum power to keep smoking device 10 functional for an extended
period of time,. PO Resp. 30–31 (citing Ex. 1005 ¶ 54). In this regard, we
credit Dr. Nayfeh’s testimony that
[a] minimum amount of charge to the device does not mean that
the device’s charge would not be depleted during use, and the
power indicator light would inform users [of] the status of the
battery. Further, even if the charging case provides a minimum
power level, users would benefit from an indication of the
charging state of the smoking device while it is charging. For
instance, a POSA would have understood that users may prefer
that the smoking device is fully charged, not charged to a
minimum power level, before removing from the charging case.
Moreover, users would benefit from an indication of the power
level and whether the smoking device has achieved that
minimum power level during charging.
Ex. 1046 ¶ 23. Patent Owner’s unsupported attorney argument is not
sufficient to rebut Dr. Nayfeh’s credible testimony on this issue. See Elbit,
881 F.3d at 1359.
Furthermore, we have considered Patent Owner’s argument that
Petitioner improperly “resorts to references outside of Wang and Voges” to
show that a POSA would have been motivated to leave at least a portion of
the personal vaporizing unit visible while docked and recharging.
PO Resp. 32–36. Here, Petitioner and Dr. Nayfeh provide background
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references to illustrate the state of the art at the time of the invention,
namely, that configuring a display indicator that is visible when a device is
docked in a charging station was a common way to inform a user of the
battery’s state while charging. Pet. 32–33; Pet. Reply 12; Ex. 1003 ¶¶ 113–
118; Ex. 1046 ¶ 22. Petitioner does not argue that these background
references disclose a case as recited in the challenged claims, and does not
rely on any of these references to supply a missing limitation as Patent
Owner suggests. See PO Sur-reply 10. Instead, Petitioner asserts, and we
agree, that the references “are reasonably pertinent because they deal with
the same problem: how to indicate the state of a portable device while
charging.” Pet. Reply 11. Dr. Nayfeh explains that
[e]ach of the background references I cited in my opening
declaration are portable charging devices for a portable device.
Ex. 1003 ¶ 118. Each of these references is directed to solving
the same problem: how to indicate the charging status of a
portable device while it is in the process of being charged. And
to be clear, these references are not obscure documents, but
instead illustrate the design of many products that a POSA
would have encountered often before the time of the alleged
invention. Like the ’591 patent, each of these references
discloses a charging device in which the device being charged
is not completely encompassed within the charger during
charging. A POSA would have had reason to look to these
references, and references like them, in designing a charge case
for smoking device.
Ex. 1043 ¶ 25. For the reasons discussed below, we credit Dr. Nayfeh’s
unrebutted testimony regarding what a POSA would have considered when
designing a charging case for a smoking device. Dr. Nayfeh’s opinions are
logical and supported by the prior art references cited in his testimony.
As set forth above in Section II.B, we adopted Petitioner’s undisputed
assessment of the level of ordinary skill in the art, which includes familiarity
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“with charging devices used in commercial electronics and/or the
components and underlying technology used therein.” Pet. 9. The
background references Petitioner and Dr. Nayfeh illustrate such charging
devices, and the components and underlying technology used therein, and
provide objective evidentiary support for Dr. Nayfeh’s testimony regarding
how a POSA would have been motivated to modify Wang and Voges based
on their knowledge at the time of the invention. Patent Owner, on the other
hand, does not present any expert testimony or objective evidence
supporting its contention that a POSA would not have been motivated to
modify Wang and Voges. Instead, Patent Owner relies on unsupported
attorney argument, which is not sufficient to rebut Dr. Nayfeh’s credible
testimony on the issue. See Elbit, 881 F.3d at 1359 (rejecting attorney
argument as to the alleged understanding of one of skill in the art on an issue
when no evidence was presented).
Accordingly, after considering Petitioner’s and Patent Owner’s
positions, as well as the supporting evidence, we determine that Petitioner
has shown by a preponderance of the evidence that claim 5 would have been
obvious over the combined teachings of Wang and Voges, and that
Petitioner has established an evidence-supported rationale for combining the
teachings.
F. Obviousness over Wang, Voges, and Nielsen
Petitioner contends that claims 8–14 of the ’591 patent would have
been obvious over the combined teachings of Wang, Voges, and Nielsen.
Pet. 34–39.
1. Overview of Nielsen
Nielsen relates to “improved electronic vaporizing devices (EVD) and
docking stations that provide a heated or non-heated vapor for inhalation
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utilizing liquid substances.” Ex. 1007 ¶ 2. Nielsen describes a docking
station that includes a housing with a dedicated charging slot for engaging
the EVD to charge the EVD’s battery. Id. ¶ 5. Nielsen teaches that “[t]he
docking station may store data relative to consumption” that may be viewed
“on a user’s personal computer in electrical communication contact with the
docking station.” Id. ¶ 29. In that regard, Nielsen teaches that a data port
“may be configured to accept external memory devices, data transfer cables
(i.e., universal serial bus (USB), firewire, etc.), or wireless data transfer
adaptors (i.e., Bluetooth, WiFi, IEEE 811 standards, etc.).” Id. ¶ 42.
2. Claims 8–11
Claim 8 depends from claim 1, and further recites “a wireless
interface, the case transferring data from said personal vaporizing unit to a
computer via said wireless interface.” Ex. 1001, 18:12–15. Claims 9, 10,
and 11 depend from claim 8, and further recite that the wireless interface
comprises an infrared transmitter (claim 9), an 802.15 specified interface
(claim 10), and an 802.11 specified interface (claim 11).6 Id. at 18:16–21.
Petitioner asserts that “Wang discloses transferring data from its
smoking device (personal vaporizer) to an external computer over standard
interfaces, such as miniUSB (from smoking device to recharger) and USB
(from recharger to external computer),” and, “[f]urther, such data transfers
would have been obvious in view of Voges.” Pet. 34–35 (citing Ex. 1003
¶¶ 119–126). Petitioner asserts that transferring the same data via a wireless
interface, as claims 8–11 require, “would have been an obvious variation”
because, at the time of the invention, “it was well known that available

6 Petitioner explains that a POSA would have understood claims 10 and 11
“to be referring to IEEE 802.15 (i.e., Bluetooth) and IEEE 802.11 (i.e.,
common WiFi),” respectively. Pet. 34 (citing Ex. 1003 ¶ 119–126).
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USB/WiFi (IEEE 802.11), USB/Bluetooth (IEEE 802.15), or USB/infrared
adapters could be used to incorporate such wireless capability.” Id. at 35
(citing Ex. 1003 ¶¶ 119–126; Exs. 1013–1018, 1029–1031, 1033–1036).
Petitioner further asserts that “Nielsen expressly disclosed a recharging
device using wireless data transfer protocols, and specifically identifies
IEEE 802.15 (Bluetooth) and WiFi (including 802.11).” Id. at 35 (citing
Ex. 1007 ¶¶ 32, 43). According to Petitioner, “[a] POSA would have been
motivated to make this simple modification for the same reasons wireless
networking became ubiquitous—users enjoy the convenience of wireless
and prefer to avoid cables that can be lost, get tangled, restrict movement,
and cause clutter.” Id. (citing Ex. 1003 ¶¶ 119–126).
Patent Owner responds that “Petitioner’s obviousness argument is
built on the foundation of its erroneous assertion that Wang discloses the
subject matter in claims 3 and 4 of the ’591 patent,” and “Wang does not
disclose transferring data from its smoking device 10 to an external
computer or transferring data from its smoking device 10 to its charging
means 40.” PO Resp. 37. Patent Owner also argues that “[n]one of the
references Petitioner points to describe a case with a wireless interface.” Id.
at 38. Patent Owner argues that Petitioner cites to a number of documents
other than Wang, Voges, and Nielsen “for the proposition that available
external USB-to-wireless adapters could be used to add wireless capability
to Wang (alone or combined with Voges),” but that such external adapters
are separate devices that are not part of a case. Id. (citing Pet. 35;
Exs. 1013–1018, 1029–1031, 1033–1036). Patent Owner further argues that
“Nielsen just discloses the same type of external adapters that are capable of
plugging into a port provided in Nielsen’s NPAK case 102.” Id. at 39 (citing
Ex. 1007 ¶ 32). Patent Owner argues that “an external wireless adapter
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would be just another external component that plugs into the case (like a
data transfer cable) that causes clutter and could be lost,” and, in any event,
“Wang and Voges describe using an external cord or cable to charge the
batteries in their respective cases.” Id. at 39–40. Patent Owner argues that,
even if a POSA would have been motivated to plug an external wireless data
transfer adapter into Wang’s charging means 40, “this does not show that a
POSA would have had reason to modify Wang’s charging means 40 to add a
wireless interface as part of the case itself.” Id. at 40. According to Patent
Owner, “the alleged ubiquity of external wireless data transfer adapters
suggests the opposite—a POSA would have simply used such an external
adapter if she desired wireless capability rather than modifying Wang’s case
to add a wireless interface to the internal electronics in the case.” Id.
Based on our review of the record, we find that the combined
teachings of Wang, Voges, and Nielsen disclose a case comprising a
wireless interface, the case transferring data from the personal vaporizing
unit to a computer via the wireless interface as claims 8–11 require. Pet. 34–
35; Pet. Reply 12–16; Ex. 1003 ¶¶ 119–126. For the reasons set forth in
Section II.D.3 above, we determined that Wang discloses a case that
transfers data from the personal vaporizing unit to a computer via a
connector as claim 3 requires. As Petitioner notes, claims 8–11 “require
transferring the same data via a wireless interface rather than a wired one.”
Pet. 35. Dr. Nayfeh’s testimony supports Petitioner’s contention that
transferring the data wirelessly was an obvious variation. In particular,
Dr. Nayfeh testifies that “[t]he use of such wireless interfaces would have
been obvious to a POSA in May 2010” because it was known at the time
“that USB or WiFi (IEEE 802.11), USB/Bluetooth (IEEE 802.15), or
USB/infrared adapters could be used to incorporate wireless capabilities.”
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Ex. 1003 ¶ 122. Dr. Nayfeh also testifies, with supporting evidence, that
USB/WiFi, USB/Bluetooth, and USB/infrared adapters were well-known
before May 2010. Id. ¶ 123. Dr. Nayfeh testifies that “[b]y May 2010, it
was known that wireless data transfers had numerous advantages,” including
“that users tend to prefer to avoid cables that could be lost, tangled, restrict
movement, and cause clutter.” Id. ¶ 124.
Moreover, Nielsen teaches a docking station that, in addition to
storing and charging an electronic vaporizing device, “may store data
relative to consumption” that may be viewed “on a user’s personal computer
in electrical communication contact with the docking station.” Ex. 1007
¶29. Nielsen further teaches that the docking station can have a data port
configured to accept wireless data transfer adaptors, such as Bluetooth and
WiFi. Id. ¶ 32. Nielsen’s teachings provide compelling support for
Petitioner’s contention that substituting a wireless interface for Wang’s USB
interface would have been obvious to a POSA.
Patent Owner argues that neither Wang, Voges, nor Nielsen discloses
a case with a wireless interface. PO Resp. 38. Wang, however, describes a
case that transfers data from a smoking device to an external computer.
Ex. 1005 ¶¶ 32, 54–55. Nielsen describes transferring data from an
electronic vaporizing device that is stored in a docking station to an external
computer via a wireless interface. Ex. 1007 ¶¶ 29, 32. Petitioner
persuasively establishes, with supporting testimony from Dr. Nayfeh, that a
POSA would have been motivated to modify Wang’s case to transfer data
using a wireless interface (as was known in the art and described in Nielsen)
because wireless connectivity is more convenient for users by avoiding
cables that can restrict movement, get lost or tangled, and cause clutter.
Ex. 1003 ¶¶ 119–126. Therefore, Patent Owner’s argument that neither
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Wang, Voges, nor Nielsen discloses a case with a wireless interface attacks
the references individually, rather than as part of the asserted combination.
Nonobviousness cannot be established by attacking the references
individually when the ground of unpatentability is predicated upon a
combination of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986); see also In re Keller, 642 F.2d 413, 426 (CCPA
1981) (“But one cannot show non-obviousness by attacking references
individually where, as here, the [the grounds of unpatentability] are based on
combinations of references.”).
Furthermore, we are persuaded, on this record, that Petitioner
sufficiently establishes that a POSA would have been motivated to integrate
a wireless interface into Wang’s case. Pet. 35; Pet. Reply 14–15; Ex. 1003
¶¶ 124–126; Ex. 1046 ¶¶ 31–33. Petitioner relies on Nielsen as evidence
that recharging devices using wireless transfer protocols were well known to
a POSA. See Pet. 35; Ex. 1003 ¶ 125. Petitioner and Dr. Nayfeh also point
to several other references that illustrate integrated wireless interfaces in
things like key fobs and camera cases. Pet. 35–36 (citing Ex. 1009 ¶ 138);
Pet. Reply 14–15 (citing Ex. 1009 ¶¶ 39, 89, 134, 138, 190, Figs. 36, 37, 42;
Ex. 1018, 8:41–43, 9:14–25, Figs. 4–5; Ex. 1031, 2:14–34, 11:3–19, Fig. 7);
Ex. 1046 ¶ 32 (citing Ex. 1009 ¶¶ 39, 89, 138, 190, Figs. 36, 42; Ex. 1018,
8:41–43, 9:14–25, Figs. 4–5; Ex. 1031, 2:14–45, 11:3–19, Fig. 7).
In light of this supporting evidence, we credit Dr. Nayfeh’s testimony
that
[a] POSA would have understood that a wireless interface could
be added to the case either using an adapter or by integrating
the interface into the case. A POSA would have known how to
do so—both of these types of wireless interfaces were well
known before the time of the alleged invention—and would
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have had a reasonable expectation of success in doing so.
Because there were only two options for including a wireless
interface (either using an adapter or by integrating the interface
into the case), both options would have been obvious for a
POSA to implement. However, a POSA would have
understood that integrating a wireless interface into the case
itself could be advantageous because it would have avoided an
additional component that could be lost, and resulted in a more
compact, robust, and low-cost device.
Ex. 1046 ¶ 33; see also Ex. 1003 ¶ 124 (Dr. Nayfeh testifying that a “POSA
would have been motivated to use wireless interfaces rather than a wired
connections” because “it was understood that users tend to prefer to avoid
cables that could be lost, tangled, restrict movement, and cause clutter”).
Because the record establishes that a POSA would have been motivated to
integrate a wireless interface into Wang’s case, we need not reach Patent
Owner’s argument that the claims do not encompass a case with an external
wireless adapter. See PO Sur-reply 13–14.
Accordingly, after considering Petitioner’s and Patent Owner’s
positions, as well as the supporting evidence, we determine that Petitioner
has shown by a preponderance of the evidence that claim 8, and claims 9–11
that depend directly therefrom, would have been obvious over the combined
teachings of Wang, Voges, and Nielsen.
3. Claims 12–14
Claim 12 depends from claim 8 and further recites that “said wireless
interface communicates with a cellular telephone network.” Ex. 1001,
18:22–23. Petitioner contends that “[b]y the time of the purported invention
(around the year 2010), it was a well-known practice to use a USB cellular
modem to facilitate remote wireless communications.” Pet. 36 (citing
Ex. 1003 ¶¶ 127–131; Ex. 1024, 2:40–43; Ex. 1025, 5:14–18; Ex. 1026
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¶ 16). Petitioner contends that a POSA “would have been motivated to
make this simple modification to Wang to enable a user to communicate
with a computer or other remote monitoring station, which would greatly
extend the user’s geographic freedom and increase data transfer flexibility.”
Id. at 37 (citing Ex. 1003 ¶¶ 127–131).
Claim 13 depends from claim 8 and further recites “said data from
said personal vaporizing unit is associated with an identification number
stored by said personal vaporizing unit.” Ex. 1001, 18:24–26. Claim 14
depends from claim 13 and also requires that “said data from said personal
vaporizing unit is transmitted via said wireless interface in association with
said identification number stored by said personal vaporizing unit.” Id.
at 18:27–30.
Petitioner contends that a POSA “would have been motivated to
incorporate Voges’ data storage capability into Wang’s smoking device,”
and “Voges further teaches using an ‘identification code’ ‘so as to
specifically identify’ a portable inhaler (personal vaporizing unit) ‘where
more than one portable inhaler maybe used with the recharging unit,’ to
track how each unit is used.” Pet. 38 (quoting Ex. 1006, 6:30–40).
Petitioner contends that a POSA
would have understood that recorded usage data—including
data downloaded to Wang’s recharger from a smoking device
(as in claim 13) and data transmitted from that charging means
to an external computer (as in claim 14)—could be, and should
be, associated with such identifying information, including an
“identification code” like that disclosed by Voges. See [Ex.
1003] ¶¶ 132–135. Such identifying information would
advance the “health, commercial or sociological purposes”
served by the recordation and analysis of usage data, see Wang
¶ 55, because the retention and transfer of such information
results in more granularity in collected data, which supports, for
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example, more robust analyses of correlated data, such as usage
data matched to particular devices, users, and user grounds, see
[Ex. 1003] ¶¶ 132–135.
Pet. 38.
Patent Owner does not address whether or not the combined teachings
of Wang, Voges, and Nielsen teach the additional limitations of
claims 12–14. Having reviewed all of Petitioner’s assertions regarding
claims 12–14, as well as the supporting evidence, we determine that
Petitioner has established, by a preponderance of the evidence, that claims
12–14 of the ’591 patent would have been obvious over the combined
teachings of Wang, Voges, and Nielsen. Pet. 36–38; Ex. 1003 ¶¶ 127–135.
G. Remaining Grounds
Petitioner also contends that (1) claims 1–4 are anticipated by Voges;
(2) claims 1–6 and 8–14 would have been obvious over the combined
teachings of Voges and Nielsen; and (3) claim 7 would have been obvious
over the combined teachings of Voges, Nielsen, and Counts. Pet. 39–64.
Because Petitioner has shown that claims 1–14 are unpatentable as discussed
above, we do not reach these additional asserted grounds. See Beloit, 742
F.2d at 1423 (“The Commission . . . is at perfect liberty to reach a ‘no
violation’ determination on a single dispositive issue.”); Boston Sci. Scimed,
809 F. App’x at 990 (recognizing that “[t]he Board has the discretion to
decline to decide additional instituted grounds once the petitioner has
prevailed on all its challenged claims”).
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III. CONCLUSION7
For the reasons given, we determine that Petitioner has shown by a
preponderance of the evidence that claims 1–14 of the ’591 patent are
unpatentable.
In summary:

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
8 As explained above, we do not reach this ground with respect to claims 3
and 4 because Petitioner has shown that claims 3 and 4 are anticipated by
Wang.
9 As explained above, we do not reach this ground because Petitioner has
shown that claims 1, 3, and 4 are anticipated by Wang, and claim 2 would
have been obvious over the combined teachings of Wang and Voges.
10 As explained above, we do not reach this ground because Petitioner has
shown that claims 1, 3, 4, and 6 are anticipated by Wang, claim 5 would
have been obvious over the combined teachings of Wang and Voges, and
claims 8–14 would have been obvious over the combined teachings of
Wang, Voges, and Nielsen.
Claim(s)

35 U.S.C.
§
Reference(s) Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 3, 4, 6, 7 102(b) Wang 1, 3, 4, 6, 7
2–5 103(a) Wang, Voges 2, 58
8–14 103(a) Wang, Voges,
Nielsen
8–14
1–4 102(b)9 Voges
1–6, 8–14 103(a)10 Voges, Nielsen
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has shown by a preponderance of the
evidence that claims 1–14 of the ’591 patent are unpatentable; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

11 As explained above, we do not reach this ground because Petitioner has
shown that claim 7 is anticipated by Wang.
7 103(a)11 Voges,
Nielsen,
Counts

Overall
Outcome
1–14
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For PETITIONER:
Jonathan M. Strang
Matthew J. Moore
Lawrence J. Gotts
Inge A. Osman
Dale Chang
LATHAM & WATKINS LLP
jonathan.strang@lw.com
matthew.moore@lw.com
lawrence.gotts@lw.com
inge.osman@lw.com
dale.chang@lw.com

For PATENT OWNER:

David M. Maiorana
Anthony M. Insogna
Kenneth S. Luchesi
Geoffrey K. Gavin
Joshua R. Nightingale
JONES DAY
dmaiorana@jonesday.com
aminsogna@jonesday.com
kluchesi@jonesday.com
ggavin@jonesday.com
jrnightingale@jonesday.com