RAI Strategic Holdings, Inc.

Patent Trials and Appeals Board

Jan 10, 2022

PGR2020-00071 (P.T.A.B. Jan. 10, 2022)

Trials@uspto.gov Paper 29 571-272-7822 Entered: January 10, 2022 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. ____________ PGR2020-00071 Patent 10,492,542 B1 ____________ Before JEFFREY W. ABRAHAM, ELIZABETH M. ROESEL, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. JUDGMENT Final Written Decision Determining All Challenged Claims Unpatentable 35 U.S.C. § 328(a) PGR2020-00071 Patent 10,492,542 B1 2 I. INTRODUCTION Philip Morris Products, S.A. (“Petitioner”) filed a Petition requesting post-grant review of claims 1-30 of U.S. Patent No. 10,492,542 B1 (“the ’542 patent,” Ex. 1001). Paper 2 (“Pet.”). RAI Strategic Holdings, Inc. (“Patent Owner”) filed a Patent Owner Preliminary Response to the Petition. Paper 6. After receiving authorization from the Board, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 7), Patent Owner filed a Sur-reply (Paper 8), and each party filed a supplemental brief (Papers 9 and 10). Pursuant to 35 U.S.C. § 324, the Board instituted trial on January 13, 2021, after determining, based on the information presented in the papers and evidence before us at that time, it was more likely than not that at least one challenged claim was unpatentable over the cited art. Paper 11 (“Institution Decision” or “Inst. Dec.”). After institution, Patent Owner filed a statutory disclaimer of claims 13-17 of the ’542 patent. Ex. 2010. Patent Owner also filed a Response to the Petition (Paper 15, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s Response (Paper 19, “Reply”), and Patent Owner filed a Sur-reply (Paper 21, “Sur-reply”). On October 27, 2021, the parties presented arguments at an oral hearing for this proceeding. Due to an error, the Board has no transcript of the oral hearing.1 1 Neither 37 C.F.R. § 42.70(a) nor 35 U.S.C. § 326(a)(10) requires that a transcript of the oral arguments be entered in the record. Moreover, the record in this proceeding is complete based on the papers filed and PGR2020-00071 Patent 10,492,542 B1 3 We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision pursuant to 35 U.S.C. § 328(a). Based on the record before us, we conclude that Petitioner has shown, by a preponderance of the evidence, that claims 1-12 and 18-30 of the ’542 patent are unpatentable. II. BACKGROUND A. Related Matters The parties indicate that the ’542 patent is involved in RAI Strategic Holdings, Inc. v. Altria Client Services LLC, No. 1:20-cv-393 (E.D. Va. filed Apr. 9, 2020) (“District Court proceeding”), and was the subject of IPR2020-01188, which Petitioner filed concurrently with this proceeding. Pet. 110-11; Paper 4, 1-2. On January 13, 2021, the Board issued a decision denying institution of IPR2020-01188. See IPR2020-01188, Paper 12. The parties also identify currently pending IPR2020-01094, which involves related U.S. Patent No. 9,930,915. Pet. 111; Paper 4, 1. B. The ’542 Patent The ’542 patent, titled “Smoking Articles and Use Thereof For Yielding Inhalation Materials,” issued on December 3, 2019, from U.S. Patent Application No. 16/564,902 (“the ’902 Application”), filed September 9, 2019. Ex. 1001, codes (54), (45), (21), (22). The ’542 patent claims priority to U.S. Patent Application No. 13/205,841 (“the ’841 Application), filed on August 9, 2011. Ex. 1001, code (60). The ’542 patent is directed to “articles wherein tobacco, a tobacco derived material, or other material is heated, preferably without significant combustion, to provide an inhalable substance, the substance, in the various arguments raised therein, as we did not permit the parties to raise new arguments during the hearing. PGR2020-00071 Patent 10,492,542 B1 4 embodiments, being in a vapor or aerosol form.” Ex. 1001, 1:22-27. The ’542 patent explains that many previous smoking articles have been proposed as improvements upon, or alternatives to, smoking products that combust tobacco. Ex. 1001, 1:31-33. These improvements and alternatives seek to “provide the sensations associated with cigarette, cigar, or pipe smoking, without delivering considerable quantities of incomplete combustion and pyrolysis products.” Ex. 1001, 1:38-41. According to the ’542 patent, previous attempts to “produce the taste and sensation of smoking by electrically heating tobacco have suffered from inconsistent release of flavors or other inhalable materials” and have been limited to the use of an external heating device that “was inconvenient and detracted from the smoking experience.” Ex. 1001, 2:5-11. To overcome the drawbacks of prior art devices, the ’542 patent describes an article that generally includes a cartridge body defining an interior space that can hold an inhalable substance medium and an electrical heating element, and a power source that heats at least a segment of the inhalable substance medium sufficiently to form a vapor comprising the inhalable substance. Ex. 1001, 2:36-55. The inner wall of the cartridge body and the outer wall of the inhalable substance medium define a space, which, together with the “mouth end” of the cartridge body, are configured to allow passage of the vapor comprising the inhalable substance to a consumer. Ex. 1001, 2:36-55, 6:21-39. One embodiment of the article described in the ’542 patent is depicted in Figure 1, reproduced below. PGR2020-00071 Patent 10,492,542 B1 5 Figure 1 of the ’542 patent is a “perspective view of an article according to an embodiment of the invention” comprising cartridge 300 engaging control housing 200, wherein the cartridge is inserted into receiving chamber 210 of control housing 200. Ex. 1001, 7:49-52, 11:64-12:3. Control housing 200 also includes control segment 205. Ex. 1001, 11:67-12:2. Figure 4 of the ’542 patent, reproduced below, shows another embodiment. PGR2020-00071 Patent 10,492,542 B1 6 Figure 4 shows a perspective view of the interior of cartridge 300 and receiving chamber 210 of control housing 200. Ex. 1001, 7:59-67, 12:27- 32. Cartridge 300 comprises cartridge body 305, formed of a wall having an inner and outer surface and a substantially tubular shape. Ex. 1001, 12:32- 34. Cartridge body 305 has opposing terminal ends: engaging end 310 that engages receiving chamber 210, and mouth end 315 configured to allow passage of an inhalable substance to a consumer. Ex. 1001, 12:34-38. The inner wall surface of cartridge body 305 defines an interior cartridge space, which contains inhalable substance medium 350. Ex. 1001, 13:11-13. Inhalable substance medium 350 is also substantially tubular shaped and is formed of wall 352 with an inner surface and an outer surface. Ex. 1001, 16:30-32. PGR2020-00071 Patent 10,492,542 B1 7 Control housing 200 includes electrical energy source 220 that provides power to electrical heating member 400, and projection 225 that extends to the end of receiving chamber 210. Ex. 1001, 23:22-27. In the embodiment depicted in Figure 4, projection [225] is dimensioned to slide inside the interior space defined by the inner surface of the wall 352 of the inhalable substance medium 350. The projection also is dimensioned to provide the electrical heating member in sufficient proximity to the inhalable substance medium (preferably in direct contact therewith) to heat the medium and cause release of the inhalable substance. Thus, the engaging end 310 of the cartridge generally or the cartridge body 305 specifically can be characterized as including an opening that is sufficiently sized and shaped to receive at least one component of the electrical energy source (i.e., the projection 225). Ex. 1001, 23:32-43. The spatial relationship between projection 225 and inhalable substance medium 350 is further shown in Figure 7 of the ’542 patent, reproduced below. PGR2020-00071 Patent 10,492,542 B1 8 Figure 7 shows cartridge 300 “inserted into the receiving chamber 210 the minimum distance necessary such that heating member 400 that is attached to the projection 225 . . . has been positioned inside the central cavity 351 of the tubular inhalable substance medium.” Ex. 1001, 28:14-21. Figure 4a, reproduced below, shows a cross-section of the cartridge depicted in Figures 4 and 7. Ex. 1001, 8:1-5. PGR2020-00071 Patent 10,492,542 B1 9 Figure 4a shows inhalable substance medium 350 having inner cavity 351 (not numbered in the figure) and vapor barrier 375 on the inner surface of its wall. Ex. 1001, 16:40-42. Vapor barrier 375 prevents the release of “vapor or aerosol into the interior volume of the inhalable substance medium and facilitate[s] release of the vapor or aerosol into an annular space 319 defined by the outer surface of the inhalable substance medium wall 352 and the inner surface of the wall of the cartridge body 305.” Ex. 1001, 16:40-48. The ’542 patent explains that When a consumer draws on the mouth end of the cartridge 300, air thus can be drawn into the receiving chamber, pass into the cartridge, be drawn through the segmented and flared second end 354 of the inhalable substance medium 350, enter the annular space 319 between the inhalable substance medium and the cartridge body 305, and pass through the open space in the cartridge frame member 360 for inhalation by the consumer. Ex. 1001, 28:66-29:7. PGR2020-00071 Patent 10,492,542 B1 10 C. Challenged Claims Petitioner challenges claims 1-30 of the ’542 patent.2 Claims 1 and 19 are the only independent claims. Independent claim 1 is illustrative and is reproduced below: 1. A smoking article for receiving a disposable aerosol forming substance, the smoking article comprising: a housing having a proximal end for receiving the disposable aerosol forming substance and an opposite distal end; a power source arranged within the housing adjacent to the distal end; a receiving chamber formed at the proximal end of the housing and having an opening for receiving the disposable aerosol forming substance; a heating projection extending at least partially in the receiving chamber towards the proximal end of the housing and terminating at a free end which is configured to be inserted into the disposable aerosol forming substance for heating the disposable aerosol forming substance, the heating projection comprising: a heating member comprising an electrically resistive metal which is configured to heat the disposable aerosol forming substance; an electrical connector for providing a flow of electricity to the heating member for heating the heating member; and a control circuit positioned within the housing between the power source and the heating projection and connecting the heating member of the heating projection to the power source. Ex. 1001, 42:12-37. 2 As stated above, Patent Owner filed a statutory disclaimer of claims 13-17 of the ’542 patent. Ex. 2010. PGR2020-00071 Patent 10,492,542 B1 11 2. Reviewed Challenges to Patentability In view of Patent Owner’s disclaimer of claims 13-17, we review the following challenges remaining from the Petition: Claim(s) Challenged 35 U.S.C. § References/Basis 1-12, 18-30 § 112 Written Description 1-9, 11, 12, 19-26, 28-30 § 103 Robinson, 3 Greim4 10, 27 § 103 Robinson, Greim, Adams5 18 § 103 Robinson, Greim, Wang6 Petitioner relies on declarations from Dr. Seetharama C. Deevi. Ex. 1004 (“Deevi Declaration”); Ex. 1064 (“Deevi Reply Declaration”). Patent Owner deposed Dr. Deevi, and filed the transcript of the deposition as Exhibit 2012 in this proceeding. Patent Owner relies on a declaration from Charles E. Clemens. Ex. 2011. Petitioner deposed Mr. Clemens twice, and filed transcripts of the depositions as Exhibit 1065 and Exhibit 1066. III. ANALYSIS A. Principles of Law In a post-grant review, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable, and this burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 3 US 7,726,320 B2, issued June 1, 2010 (Ex. 1006). 4 WO 2011/050964 A1, published May 5, 2011 (Ex. 1007). 5 US 2007/0102013 A1, published May 10, 2007 (Ex. 1008). 6 WO 2008/139411 A2, published Nov. 20, 2008 (Ex. 1012). PGR2020-00071 Patent 10,492,542 B1 12 2015); 35 U.S.C. § 322(a)(3) (requiring post-grant review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). A claim is unpatentable under 35 U.S.C. § 103 if “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 presented, objective evidence of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17- 18 (1966). To show obviousness, it is not enough to show merely that the prior art includes separate references disclosing each separate limitation in a challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418-419. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of 7 The parties have not asserted or otherwise directed our attention to any objective evidence of nonobviousness. PGR2020-00071 Patent 10,492,542 B1 13 ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, a petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified the prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). To satisfy the written description requirement under 35 U.S.C. § 112(a), the specification must “reasonably convey[] to those skilled in the art that the inventor had possession” of the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). An adequate written description does not require any particular form of disclosure or that the specification recite the claimed invention in haec verba, but must do more than merely render the claimed invention obvious. Id. at 1352. In evaluating the adequacy of the disclosure, PGR2020-00071 Patent 10,492,542 B1 14 a court may consider “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005) (cited with approval in Ariad, 598 F.3d at 1352); see also Boston Sci. Corp. v. Johnson & Johnson, 647 F.3d 1353, 1366 (Fed. Cir. 2011) (holding that because the assessment for written description is made from the perspective of a person of ordinary skill in the art, in some instances, a patentee can rely on information that is “well- known in the art” to satisfy written description). We analyze the challenges presented in the Petition in accordance with the above-stated principles. B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art for the ’542 patent would have had a Bachelor’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and one to two years of industry experience. Such a POSA would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein. Pet. 14 (citing Ex. 1004 ¶¶ 26-30). Patent Owner states that “[f]or purposes of the trial in this proceeding, [Patent Owner] accepts Petitioner’s proposed education and experience level of the [person of ordinary skill in the art].” PO Resp. 13. In view of the foregoing, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art. The prior art of record reflects this level of ordinary skill. Okajima v. Bourdeau, 261 F.3d PGR2020-00071 Patent 10,492,542 B1 15 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). C. Claim Construction Pursuant to 37 C.F.R. § 42.200(b), we apply the same claim construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent, i.e., the claim construction standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term 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.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that “[t]he challenged claims are unpatentable under any reasonable construction,” and, “for purposes of this proceeding . . . adopts the plain meaning of the claims and submits that no claim term requires construction.” Pet. 14. Patent Owner contends it was improper for Petitioner to adopt the plain meaning of the claims without explaining what it considers the plain meaning of each claim term to be. PO Resp. 13. Patent Owner does not offer a construction for any claim term. PO Resp. 13. After considering the full record developed during trial, we determine that no claim limitations need an express construction for purposes of resolving the controversy. PGR2020-00071 Patent 10,492,542 B1 16 D. Claims 1-9, 11, 12, 19-26, and 28-30 - Alleged Obviousness in view of Robinson and Greim Petitioner contends claims 1-9, 11, 12, 19-26, and 28-30 would have been unpatentable as obvious in view of Robinson and Greim. Pet. 51-101; Reply 18-30. Patent Owner challenges Petitioner’s obviousness arguments. PO Resp. 59-86; Sur-reply 15-27. 1. Overview of References a. Robinson (Ex. 1006) Robinson discloses a tobacco-containing, electrically powered smoking article. Ex. 1006, code (57). Robinson depicts one embodiment of its smoking article in Figure 3, reproduced below: Figure 3 of Robinson is a longitudinal cross-sectional view of an electrically powered, tobacco-containing smoking article. Ex. 1006, 8:4-6. Figure 3 shows smoking article 10 having outer housing 20 with mouth end 15 and distal end 13. Ex. 1006, 26:34-36, 27:63-66. Air is drawn through opening 32 in cap 35 and passes through air passageway 45 that extends the length of power source 36 and control components 50. Ex. 1006, 27:64- PGR2020-00071 Patent 10,492,542 B1 17 28:2. The air continues through an air passageway in heating element 70, through air flow sensing region 60, past or through second heating element 72, through cigarette 150, and into mouthpiece 120. Ex. 1006, 28:2-5. Smoking article 10 contains three heating elements (70, 72, and 300) that act upon the tobacco to volatilize components of the tobacco such that the components are entrained in the drawn air. Ex. 1006, 28:6-9. As shown in Figure 3, second resistance heating element 72 can have an elongated portion that extends into tobacco segment 89 and is “in close contact with a significant amount of substrate and aerosol-forming material within the tobacco.” Ex. 1006, 27:35-39. b. Greim (Ex. 1007) Greim discloses “an electrically heated smoking system including a heater for heating an aerosol-forming substrate.” Ex. 1007, 1. Greim depicts one embodiment of a heater in Figure 4, reproduced below. Figure 4 of Greim shows a “heater for use in an electrically heated smoking system.” Ex. 1007, 9.8 Heater 400 comprises “flat, rigid electrically insulating substrate 401 having thereon electrically conductive tracks 403.” Ex. 1007, 13. Tracks 403 can connect to a power supply through 8 We cite to the original page numbers of the exhibit, not to the page numbers that Petitioner has added. PGR2020-00071 Patent 10,492,542 B1 18 connections 405. Ex. 1007, 13. According to Greim, heater 400 may be inserted directly into plug of aerosol-forming substrate 407. Ex. 1007, 13. 2. Analysis Petitioner asserts that Robinson and Greim teach or suggest all of the limitations of claims 1-9, 11-17, 19-26, and 28-30, and that a person of ordinary skill in the art would have had reason to combine the references and would have had a reasonable expectation of success in achieving the invention recited in the claims. Pet. 55-101; Reply 18-30. In support of its arguments, Petitioner relies on an annotated version of Figure 3 of Robinson, reproduced below. Petitioner’s annotated version of Figure 3 shows a longitudinal cross- sectional view of one embodiment of Robinson’s electrically powered, tobacco-containing smoking article. See Ex. 1006, 8:4-6. Petitioner’s annotations add colored highlights to help identify certain parts of the smoking article, as discussed below. PGR2020-00071 Patent 10,492,542 B1 19 a. Whether Robinson and Greim teach or suggest all limitations of the challenged claims Petitioner directs us to the portions of Robinson and Greim that teach or suggest all the limitations in the challenged claims. Pet. 62-101. We base our findings on the parties’ contentions, as detailed below. Claim 1 recites “[a] smoking article for receiving a disposable aerosol forming substance, the smoking article comprising: a housing having a proximal end for receiving the disposable aerosol forming substance and an opposite distal end.” Ex. 1001, 42:12-16. Petitioner contends that Robinson’s smoking article 10 contains housing 20 that receives tobacco segment 89 (highlighted brown in annotated Figure 3) of cigarette 150, which is a disposable aerosol forming substance. Pet. 62 (citing Ex. 1006, 26:40-44). Petitioner further annotates Figure 3 to show that mouth-end 15 of smoking article 10 corresponds to the proximal end of housing 20, and distal end 13 corresponds to the opposite distal end of housing 20, as claim 1 requires. Pet. 63. Claim 1 next requires “a power source arranged within the housing adjacent to the distal end,” and “a receiving chamber formed at the proximal end of the housing and having an opening for receiving the disposable aerosol forming substance.” Ex. 1001, 42:17-21. Petitioner contends that power source 36 (highlighted green in annotated Figure 3) is within and adjacent to the distal end of housing 20. Pet. 63-64 (citing Ex. 1006, 19:11- 48). Petitioner further contends that Robinson has a receiving chamber inside of the proximal end of its housing that receives cigarette 150 through the opening. Pet. 64-65 (citing Ex. 1006, 28:20-25). Claim 1 further recites “a heating projection extending at least partially in the receiving chamber towards the proximal end of the housing PGR2020-00071 Patent 10,492,542 B1 20 and terminating at a free end which is configured to be inserted into the disposable aerosol forming substance for heating the disposable aerosol forming substance.” Ex. 1001, 42:22-27. Petitioner contends that Greim discloses a heating element that is configured to be inserted into a disposable aerosol forming substance. Pet. 54 (citing Ex. 1007, 7, 13). Claim 1 requires the heating member comprises “an electrically resistive metal which is configured to heat the disposable aerosol forming substance” and “an electrical connector for providing a flow of electricity to the heating member for heating the heating member” (hereinafter referred to as the “electrical connector” limitation). Ex. 1001, 42:28-33. Petitioner contends that Greim’s heating projection includes electrically conductive tracks 403 and “connection pads” or “wiring” between tracks 403 and connections 405 to provide a flow of electricity to heat the heating member, as claim 1 requires. Pet. 54-55, 66-68 (citing Ex. 1007, 1-5, 12, 13, 16). Petitioner contends that it would have been obvious to replace Robinson’s entire heating element with Greim’s entire heater, including the “appropriate mount/base,” and that, according to Mr. Clemens, Patent Owner’s declarant, “making electrical connections is a pretty routine thing for [persons of ordinary skill in the art].” Reply 20 (citing Pet. 57-62, 65-69; quoting Ex. 1066, 73:21-74:1). Petitioner creates a new figure depicting the result of its proposed combination of Robinson and Greim, which is reproduced below. PGR2020-00071 Patent 10,492,542 B1 21 Pet. 69. This figure from the Petition shows the longitudinal cross-sectional view of Robinson’s electrically powered, tobacco-containing smoking article depicted in Figure 3, and includes Greim’s heating element (shown in red) in place of Robinson’s heating element 72. Pet. 69. Petitioner also contends that the combined disclosures of Robinson and Greim teach or suggest “a control circuit positioned within the housing between the power source and the heating projection and connecting the heating member of the heating projection to the power source,” as claim 1 requires. Pet. 68-70 (citing Ex. 1006, 26:54-63, 27:67-28:5, 28:36-41); Ex. 1001, 42:34-37. Referring to Petitioner’s figure above, depicting the proposed combination of Robinson and Greim, Petitioner directs us to control circuit 50 in Robinson (highlighted orange in annotated Figure 3), which is positioned within housing 20 between power source 36 and Greim’s heater (highlighted in red). Pet. 68-69. Petitioner contends that after replacing Robinson’s heater with the heater from Greim, control circuit 50 would be positioned between the power source and the heating projection. Pet. 68-69. Petitioner further contends that Greim and Robinson both disclose using electronic circuitry to power heating elements. Pet. 69 (citing Ex. 1006, 4:67-5:11, 27:10-30, 29:31-31:23; Ex. 1007, 2-3). PGR2020-00071 Patent 10,492,542 B1 22 Petitioner presents similar evidence and arguments regarding independent claim 19, and dependent claims 2-9, 11-17, 20-26, and 28-30. Pet. 70-101. With the exception of the “electrical connector” limitation in independent claims 1 and 19, Patent Owner does not dispute Petitioner’s evidence and arguments that Robinson and Greim teach or suggest the limitations of claims 1-9, 11, 12, 19-26, and 28-30. As to the “electrical connector” limitation in claims 1 and 19, Patent Owner argues that Petitioner maps “(i) connections 405, or (ii) connection pads and/or wiring that are between the heating tracks 403 and the connections 405” in Greim to the electrical connector recited in claim 1. PO Resp. 60. According to Patent Owner, however, “the only portion of Greim’s heater that remains in Petitioner’s proposed combination is the ‘flat, rigid electrically insulating substrate 401 having … electrically conductive tracks 403.’” PO Resp. 61- 62. Patent Owner contends the Petition is deficient because the alleged electrical connecter is not visible in Petitioner’s figures in the Petition, and further argues that Petitioner fails to provide technical details about how a person of ordinary skill in the art would integrate Greim’s electrical connector into Robinson. PO Resp. 62-63; Sur-reply 22-23. We disagree. Petitioner directs us to the portions of Greim’s heater, electrically conductive tracks 403 and/or “connection pads” or “wiring” between tracks 403 and connections 405, corresponding to the “electrical connector” in claims 1 and 19, which Patent Owner does not dispute. Pet. 54-55, 68; see PO Resp. 62 (discussing “[t]he alleged electrical connector of Greim-i.e., connections 405 or parts that connect the connections 405 to the tracks 403”). Petitioner’s combination of Greim and Robinson involves PGR2020-00071 Patent 10,492,542 B1 23 using Greim’s entire heater, including the electrical connector portions, with Robinson’s housing. Pet. 68-69; Reply 20. Furthermore, as Petitioner and Dr. Deevi explain, Robinson indicates that its housing includes a heating projection connected to its power source to heat the tobacco. Pet. 69 (citing Ex. 1006, 29:30-31:23); Ex. 1004 ¶¶ 204-205. Accordingly, the evidence of record persuasively supports Petitioner’s argument that the combined disclosures of Greim and Robinson teach or suggest the “electrical connector” limitation in claims 1 and 19. Although the combined Robinson/Greim figure Petitioner presented in the Petition (Pet. 69) does not show the electrical connector portion of Greim’s heater, the absence of an explicit depiction from Petitioner does not detract from the express, undisputed disclosures of electrical connections in Greim and Robinson. We agree with Petitioner’s undisputed contention that “there is no legal requirement to show such connections in the figure.” Reply 20; Sur-reply 22 (stating only that this argument “misses the point”). Additionally, Mr. Clemens’ testimony that “making electrical connections is a pretty routine thing for [persons of ordinary skill in the art],” undermines Patent Owner’s argument. Ex. 1066, 73:21-74:1. In view of Mr. Clemens’ testimony, we find that Petitioner shows persuasively how a person of ordinary skill in the art would have integrated Greim’s electrical connector into Robinson’s smoking article. Pet. 68; Reply 19-20. We find that the amount of technical detail provided in the Petition is appropriate in view of the level of ordinary skill in the art, the complexity of the technology, and the disclosures of the prior art references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a PGR2020-00071 Patent 10,492,542 B1 24 secondary reference may be bodily incorporated into the structure of the primary reference . . . .”). Based on the foregoing, we determine Petitioner has demonstrated, by a preponderance of evidence, that Greim and Robinson teach or suggest the “electrical connector” limitation in claims 1 and 19. As noted above, Petitioner’s arguments and evidence regarding the disclosure of the remaining limitations in independent claims 1 and 19, and claims 2-9, 11, 12, 20-26, and 28-30, which depend therefrom, remain undisputed. Based on the undisputed information Petitioner presents in the Petition (Pet. 62-101) and Reply (18-20), as well as the relevant portions of the supporting Deevi Declarations (Exs. 1004 and 1064), we determine that Petitioner has demonstrated by a preponderance of evidence that the combined disclosures of Robinson and Greim teach or suggest all of the limitations of claims 1-9, 11, 12, 19-26, and 28-30. b. Whether a person of ordinary skill in the art would have had a reason to combine the teachings of Robinson and Greim, and would have had a reasonable expectation of success Petitioner contends that a person of ordinary skill in the art would have had reason to use Greim’s heating projection in Robinson’s smoking article because Robinson indicates that some or all of its heating element 72 (highlighted red in annotated Figure 3) may extend into tobacco 89, and Robinson directs persons of ordinary skill in the art to apply their knowledge and skill in selecting a heating element. Pet. 55-56. In particular, Petitioner directs us to Robinson’s statements that “the size and shape of the second resistance heating element 72 can be altered” and that the “[s]election of the power source and resistance heating elements can be a matter of design choice, and will be readily apparent to one skilled in the art of design and PGR2020-00071 Patent 10,492,542 B1 25 manufacture of electrical resistance heating systems.” Pet. 55-56 (quoting Ex. 1006, 27:30-39, 28:41-45). Petitioner also directs us to several portions of Greim that discuss the advantages of its heater. Pet. 59-60 (citing Ex. 1007, 2, 3, 14, 15). Petitioner contends that the configuration of Greim’s smoking article is similar to Robinson’s, and that a person of ordinary skill in the art “would have selected Greim’s heater as a natural choice for Robinson’s elongated heater 72,” as Greim teaches “a suitable heater configuration incorporating additional improvements.” Pet. 57-58 (citing Ex. 1004 ¶¶ 160-171). Petitioner also argues that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Robinson and Greim because “Robinson correctly states that ‘[s]election of the . . . resistance heating elements’ for the Robinson device is ‘a matter of design choice, and will be readily apparent’” to a person of ordinary skill in the art. Pet. 60-61 (citing Ex. 1006, 28:41-44). Petitioner also notes that Greim provides a “detailed description of the design, manufacture, and installation of its heaters” in an electrically heated smoking system. Pet. 61-62 (citing Ex. 1004 ¶¶ 160-162, 171-176). This description includes Greim’s explanation that its heater “can be mounted . . . using a special frame, for example a metallic clamp,” or that the heater “may be an integral part of a monolithic ceramic base sitting within the electrically heated smoking system.” Pet. 61 (quoting Ex. 1007, 13). Petitioner also contends that a person of ordinary skill in the art would have used “the commonsense technique of providing air holes” to provide for an adequate flow path for air. Pet. 61 (citing Ex. 1008 ¶¶ 45-46, Figs. 7, 8; Ex. 1004 ¶¶ 173-176). PGR2020-00071 Patent 10,492,542 B1 26 Patent Owner argues that Petitioner fails to articulate any reason why a person of ordinary skill in the art would have been motivated to combine Robinson and Greim. PO Resp. 64; Sur-reply 15-16 (arguing that Petitioner fails to provide “an articulated reasoning” as to why a person of ordinary skill in the art would have modified Robinson). In particular, Patent Owner contends Petitioner: (1) simply recites a “laundry list” of potential advantages of Greim’s heater, but does not explain how any would be achieved in the proposed combination of Greim and Robinson; (2) misinterprets Robinson’s statement that “[s]election of the power source and resistance heating elements can be a matter of design choice;” and (3) fails to provide any analysis showing that Robinson’s smoking articles were problematic or in need of improvement. PO Resp. 70-79, 83-87. Patent Owner also affirmatively argues that a person of ordinary skill in the art would not have been motivated to combine Robinson and Greim because Greim’s heater would destroy Robinson’s tobacco plug, Greim’s heater is incompatible with Robinson, and replacing Robinson’s heating element with Greim’s heater would require “extensive changes to one or both of the references.” PO Resp. 64-70, 79-83. After considering the parties’ arguments and evidence, we determine Petitioner has demonstrated persuasively that a person of ordinary skill in the art would have had reason to combine the teachings of Greim and Robinson, and would have had a reasonable expectation of successfully doing so. Robinson discloses a smoking article that “incorporates at least one electrical resistance heating element 70, 72.” Ex. 1006, 20:25-26. As Petitioner explains, Robinson states that “the size and shape of the second PGR2020-00071 Patent 10,492,542 B1 27 resistance heating element can be altered” (Ex. 1006, 27:31-32) and that “[s]election of the . . . resistance heating elements can be a matter of design choice, and will be readily apparent to one skilled in the art of design and manufacture of electrical resistance heating systems” (Ex. 1006, 28:41-45). We agree with Petitioner that this language in Robinson would have invited a person of ordinary skill in the art to apply their knowledge and skill with regard to selecting a resistance heating element that could be used with Robinson’s housing. Pet. 56; Ex. 1004 ¶ 160. Patent Owner’s argument that Petitioner misinterprets Robinson’s statement that “[s]election of the power source and resistance heating elements can be a matter of design choice” is unavailing. PO Resp. 84. According to Patent Owner, this statement in Robinson “is not a blanket statement that the overall configuration of Robinson’s heater is a matter of design choice,” but instead refers only to choosing the type of material for the heater and the type of battery, as evidenced by the remainder of the paragraph in Robinson that contains the statement regarding design choice. PO Resp. 84 (citing Ex. 1006, 28:28-36); Sur-reply 21. Our review of the relevant portion of Robinson (Ex. 1006, 28:26-44), however, reveals no specific discussion of the type of material used for Robinson’s heater. Instead, Robinson discusses that a person of ordinary skill can select the “amount of electrical current and resistance provided by the various resistance heating elements . . . to provide sufficient power for initial heating.” Ex. 1006, 28:28-31. Although the type of material used may affect the amount of electrical current and resistance the heating element provides, we disagree that this language in Robinson refers only to the type of material for the heater, as Patent Owner argues. Instead, a person PGR2020-00071 Patent 10,492,542 B1 28 of ordinary skill in the art would have understood this discussion to refer to selecting various properties of the heater in general. By way of contrast, we note that Robinson addresses specifically the type of material for the heater elsewhere, stating “[t]ypically, the second resistance element 72 can be formed from relatively high surface area absorbent or wicking-type materials such as graphite yarn, high surface area metallic cloth or screen, or the like.” Ex. 1006, 20:41-44. Furthermore, Robinson states “the size and shape” of the resistance heating element can be altered, which refers to properties of the heater beyond the type of material used to make it. Ex. 1006, 27:31-39. Patent Owner argues that Robinson does not rely on the skill and knowledge of a person of ordinary skill in the art to implement its heating element because Robinson provides “an extensive description of the resistance heating elements of its various embodiments.” PO Resp. 16. But just because Robinson provides information about the heating element used in certain embodiments does not mean we should ignore Robinson’s general statement that “[s]election of the power source and resistance heating elements can be a matter of design choice” and that “the size and shape of the second resistance heating element 72 can be altered.” Ex. 1006, 27:31- 39; 28:41-44; see In re Mouttet, 686 F.3d 1322, 1331 (holding that “[a] reference may be read for all that it teaches”). Furthermore, the evidence of record provides persuasive support for Petitioner’s assertion that, in view of Robinson’s invitation to select a resistance heating element, a person of ordinary skill in the art would have had reason to look to Greim for a heater. Pet. 58. Petitioner directs us to several statements in Greim that describe the advantages of its heaters. Pet. 59-60 (quoting Ex. 1007, 1-4, 14, 15). Patent Owner does not dispute PGR2020-00071 Patent 10,492,542 B1 29 that Greim discloses some advantages over other known heaters in the art, including, inter alia, that Greim provides flexibility in the design to give desired heat distribution and to heat different portions of the tobacco for different durations, at different times, and at different temperatures. Pet. 59- 60; Reply 27-28; PO Resp. 70 (acknowledging that “some of the items in Petitioner’s list may be advantages in the abstract”). Petitioner directs us to Dr. Deevi’s unrebutted declaration testimony that Greim’s flexibility “would facilitate more efficient heating of the tobacco and make it easier for a [person of ordinary skill in the art] to optimize the heating design” (Ex. 1002 ¶ 167), and deposition testimony from Mr. Clemens that a person of ordinary skill in the art would have appreciated “flexibility in their design” (Ex. 1065, 25:19-26:6). Reply 27-28. Patent Owner argues that Petitioner “provides a laundry list of ‘potential advantages’ that are supposedly provided by Greim’s heater, but the Petition does not explain how any of these advantages would be achieved in the proposed combination.” PO Resp. 70. For example, Patent Owner contends that “Greim’s purported advantage of providing ‘flexibility’ by enabling ‘conductive tracks [to] be straightforwardly arranged on the electrically insulating substrate,’ (Ex. 1007 at 16) appears to be relevant only in comparison to heaters that use multiple, individually formed heating elements,” whereas Robinson discloses “a single heating element.” PO Resp. 74-75. Therefore, according to Patent Owner, this purported advantage of flexibility is not relevant to Robinson, and Petitioner fails to provide any articulated reasoning with rational underpinning to support the purported combination. PO Resp. 75. PGR2020-00071 Patent 10,492,542 B1 30 Patent Owner’s arguments are misplaced. Petitioner bases its obviousness challenge on using Greim’s heater with Robinson’s housing. Pet. 58-59. It is undisputed that a person of ordinary skill in the art would have appreciated that Greim’s heaters provide certain advantages, including flexibility in their design. Pet. 59-60; PO Resp. 71. These advantages are the reason why a person of ordinary skill in the art “would consider replacing Robinson’s single heating element with a heater that uses multiple ‘individually formed heating elements.’” PO Resp. 75; Pet. 59-60. As noted above, these advantages include “facilitat[ing] more efficient heating of the tobacco and mak[ing] it easier for a [person of ordinary skill in the art] to optimize the heating design.” Ex. 1002 ¶ 167; see also Ex. 1065, 25:19- 26:6 (deposition testimony from Mr. Clemens that a person of ordinary skill in the art would have appreciated “flexibility in their design”). This is particularly true considering Robinson expressly states that the “[s]election of . . . resisting heating elements can be a matter of design choice.” Ex. 1006, 28:41-44. This statement in Robinson also undermines Patent Owner’s additional arguments. E.g., PO Resp. 74 (arguing that Petitioner does not “provide any analysis or reasoning showing that Robinson’s smoking articles perform poorly or are in need of improvement”); Sur-reply 21 (presenting a similar argument). Although Robinson may not disclose problems with its smoking articles, it expressly invites substitution of a different heater design. Ex. 1006, 28:41-44. Contrary to Patent Owner’s argument, we find that Petitioner provides persuasive analysis and reasoning showing that Robinson’s smoking articles would have benefited from and been improved by substituting Greim’s heater. Pet. 55-60; Reply 19, 27-30; PGR2020-00071 Patent 10,492,542 B1 31 Ex. 1004 ¶¶ 166-170. Furthermore, Petitioner’s arguments and evidence do not rely on impermissible hindsight, as Patent Owner argues. We find that Petitioner appropriately relies on the teachings and suggestions found in the prior art references and the knowledge and skill of a person of ordinary skill in the art. Pet. 55-60; Reply 19, 27-30; Ex. 1004 ¶¶ 166-170. “To determine whether there was an apparent reason to combine the known elements in the way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents . . . and to the background knowledge possessed by a person having ordinary skill in the art.” KSR, 550 U.S. at 401. Here, Petitioner directs us to evidence demonstrating that a person of ordinary skill in the art would have understood Robinson to invite that person to use their own knowledge in selecting a heater, and evidence from Greim explaining that its heaters are advantageous. Pet. 55-61. This evidence demonstrates persuasively that a person of ordinary skill in the art would have had reason to combine the teachings of Greim and Robinson. And, contrary to Patent Owner’s assertions otherwise (PO Resp. 70-79), this evidence shows Petitioner has provided an articulated reasoning with rational underpinning to support its obviousness challenge. Additionally, Robinson’s statement regarding design choice, combined with Greim’s description of the design, manufacture, and installation of its heaters persuasively supports Petitioner’s assertion that a person of ordinary skill in the art would have had a reasonable expectation of success in arriving at the claimed invention. Pet. 60-62 (citing Ex. 1006, 28:41-44; Ex. 1004 ¶¶ 160-162, 171-176); Reply 25 (“Greim’s additional details do not add more work to the design process. They subtract from it.”); Ex. 1064 ¶¶ 49-52. Additionally, testimony from Mr. Clemens suggests that PGR2020-00071 Patent 10,492,542 B1 32 implementing Greim’s heater in Robinson’s housing would not have been beyond the skill of a person of ordinary skill in the art. Ex. 1065, 78:5- 83:21 (stating that a person of ordinary skill in the art would have known how to design and implement heaters, including heaters configured to allow for air flow). We turn next to Patent Owner’s affirmative arguments that a person of ordinary skill in the art would not have had reason to combine Robinson and Greim. Patent Owner first argues that “Greim’s heater has a blunt end, and attempting to insert this blunt end into the tobacco plug of Robinson would destroy the tobacco plug.” PO Resp. 64-69; Ex. 2011 ¶ 120. Patent Owner asserts that Greim describes its heater as “flat” and “rigid,” and shows that it has a “blunt, rectangular shape,” as opposed to being “sharp” or “V-shaped.” PO Resp. 65-66. According to Patent Owner, even though Robinson depicts a heater extending into the tobacco segment without destroying it, the portion of Robinson’s heating element extending into the tobacco segment in Robinson is small, whereas Greim’s heater is much larger, and therefore, using Greim’s “oversized” heater instead of Robinson’s smaller heater would destroy Robinson’s tobacco segment. Sur-reply 23-25. Additionally, Patent Owner contends Dr. Deevi confirmed at his deposition that blunt heaters generally are used in devices that do not require the heaters to pierce the tobacco, whereas sharp V-shaped heaters are used in devices that require the heaters to pierce the tobacco. PO Resp. 66-67 (citing Ex. 2012, 93:8-11, 158:3-8, 158:14-159:25). Patent Owner further contends that “Dr. Deevi testified . . . that ‘blunt projection[s]’ are not suitable for insertion into tobacco plugs and that such blunt projections are PGR2020-00071 Patent 10,492,542 B1 33 only ‘suitable for insertion into a pre-existing cavity, not a mass of tobacco or similar material.’” PO Resp. 67-68 (quoting Ex. 1004 ¶ 105). As Petitioner notes correctly, however, Greim states that its heater “may be inserted directly into a plug of aerosol-forming substrate,” i.e., the tobacco. Ex. 1007, 4, 13. This express disclosure, without qualification as to the size or shape of the heater or the tobacco plug, undermines Patent Owner’s arguments that inserting Greim’s heater into Robinson’s tobacco plug would have destroyed Robinson’s tobacco plug. It also undermines Patent Owner’s argument that Greim’s heater is much larger than the heater shown in Robinson, and therefore, would have torn Robinson’s tobacco plug. Sur-reply 23-25. Additionally, Petitioner directs us to Dr. Deevi’s cross-examination testimony that Greim’s rectangular substrate is “sharp” and “very hard” and “can pierce through the tobacco medium.” Reply 23- 24 (citing Ex. 2012, 198:23-200:16). Furthermore, Dr. Deevi’s testimony regarding blunt projections does not support a determination that Greim’s heater would have destroyed or torn Robinson’s tobacco plug, as the testimony referred to the projection disclosed in the ’542 patent, not Greim. Reply 24 (citing Ex. 2012, 198-200). As Petitioner explains, Patent Owner has taken the position that the ’542 patent describes a projection that is sharp enough to be inserted into a tobacco plug. Reply 24 (citing PO Resp. 54- 55). Patent Owner next argues that Greim’s heater is incompatible with Robinson. PO Resp. 70. Specifically, Patent Owner asserts that Greim’s heater “requires a socket or receiving element for receiving the pins of its connection 405,” but Robinson does not disclose such a socket or receiving element and Petitioner has not argued that a person of ordinary skill in the PGR2020-00071 Patent 10,492,542 B1 34 art would have been motivated to modify Robinson to include such a socket. PO Resp. 69-70. Patent Owner cites to paragraph 123 of the Clemens Declaration and page 14 and Figure 4 of Greim to support this assertion. PO Resp. 69-70. We have reviewed the cited portions of Greim, and could not find any explicit reference to “pins” of connection 405 or a “socket or receiving element” for receiving the pins in Greim’s heater. The testimony from Mr. Clemens adds nothing, as it simply mirrors what appears in Patent Owner’s Response. Compare Ex. 2011 ¶ 123, with PO Resp. 69-70. Accordingly, we disagree that Greim “requires” these elements, as Patent Owner argues. PO Resp. 69-70. Greim, however, does disclose “electrically conductive tracks [that] are connectable to a power supply (not shown) via connections 405.” Reply 25-26 (quoting Ex. 1007, 13). And, as noted above, Mr. Clemens testified that “making electrical connections is a pretty routine thing” for persons of ordinary skill in the art.” Ex. 1066, 73:21-74:1. In view of Greim’s disclosure of electrically conductive tracks that are connectable to a power supply, Robinson’s disclosure of a power supply, and the testimony from Mr. Clemens, the evidence of record does not support Patent Owner’s argument that Greim’s heater is incompatible with Robinson. Patent Owner also argues that replacing Robinson’s heating element with Greim’s heater would have required extensive changes, including the addition of a “special frame” to hold the heater or the integration of Greim’s heater into a “monolithic ceramic base,” as well as modifications to provide adequate air flow. PO Resp. 79-83. Patent Owner asserts that neither Robinson nor Greim provides any details regarding special frames or PGR2020-00071 Patent 10,492,542 B1 35 monolithic ceramic bases, and contends that neither Petitioner nor Dr. Deevi provides any details regarding modifications to provide adequate air flow. PO Resp. 79-82. Petitioner challenges these arguments. Reply 24-26. First, we note that Greim says only that the heater “can be” mounted using a special frame and “may be” integrated into a monolithic ceramic base. Ex. 1007, 13. Accordingly, we disagree with Patent Owner that Petitioner’s proposed combination would have “require[d]” extensive changes to incorporate these features. Next, Petitioner directs us to evidence demonstrating that a person of ordinary skill in the art would have understood that providing air holes would ensure an adequate flow path for air, and that “the number, arrangement, and shape of the openings can vary.” Pet. 61 (citing Ex. 1008 ¶¶ 45-46, Figs. 7, 8). In view of this, Patent Owner’s arguments that Petitioner and Dr. Deevi failed to provide details of modifications to provide adequate airflow, and that a person of ordinary skill in the art would “need to undertake more complicated design efforts,” are unavailing. PO Resp. 82. Additionally, Patent Owner’s arguments appear to be based on the physical incorporation of Greim’s heaters into Robinson’s housing. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” Keller, 642 F.2d at 425. For all of the foregoing reasons, we determine that Petitioner has shown persuasively that a person of ordinary skill in the art would have had reason to combine the references’ teachings in the manner Petitioner proposes and would have had a reasonable expectation of success. PGR2020-00071 Patent 10,492,542 B1 36 c. Conclusion After reviewing the arguments and evidence of record, we find Petitioner has demonstrated, by a preponderance of evidence, that claims 1- 9, 11, 12, 19-26, and 28-30 are unpatentable as obvious in view of Robinson and Greim.9 E. Claim 18 - Alleged Obviousness in view of Robinson, Greim, and Wang Petitioner contends claim 18 would have been unpatentable as obvious in view of Robinson, Greim, and Wang. Pet. 101-108. 1. Wang (Ex. 1012) Wang discloses an alternative smoking device intended to “reduce the negative effects of classic smoking.” Ex. 1012 ¶ 1. Wang teaches that its device can include a rechargeable battery that can store and release enough energy to power the electronics of the device and heat the device. Ex. 1012 ¶ 19. Wang additionally discloses charging means that can also act as a storage device for the smoking article. Ex. 1012 ¶¶ 49-51, Fig. 2. 2. Analysis Claim 18 depends from claim 1, and further requires “a hard case configured to store and charge the smoking article.” Ex. 1001, 43:35-37. In addition to relying on its arguments and evidence for claim 1, Petitioner contends that Wang discloses a hard case that stores and charges an electronic smoking device. Pet. 105-106 (citing Ex. 1012 ¶ 51, Fig. 2). Petitioner explains that Wang states that its hard case “may be used with several types and sizes of the smoking device 10 by attaching the 9 As noted above, the parties have not asserted or otherwise directed our attention to any objective evidence of nonobviousness. PGR2020-00071 Patent 10,492,542 B1 37 appropriate bay 41 having also the appropriate charger contacts 43.” Pet. 106 (quoting Ex. 1012 ¶ 51). Petitioner also contends that a person of ordinary skill in the art would have had reason to look to Wang because (1) Wang teaches that its case allows a consumer to use the device several times without having to be near an electrical outlet, and (2) a person of ordinary skill in the art would have “understood that consumers would desire a case to store and charge the device while carrying it in their pockets, purses, backpacks, etc.” Pet. 107 (citing Ex. 1012 ¶ 52; Ex. 1004 ¶ 353). Petitioner also argues that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Robinson, Greim, and Wang, as the combination achieves the predictable result of using a case to act as a storage mechanism and charging station. Pet. 108 (noting the ’542 patent describes a case that can act as a charging station without describing how to configure the case or smoking article to implement that feature). Patent Owner does not separately argue claim 18. Instead, Patent Owner relies on the same arguments addressed above in our discussion of claims 1 and 19. See PO Resp. 59. As discussed above, we find Petitioner’s arguments and evidence regarding claim 1 to be persuasive. Moreover, we have reviewed the undisputed arguments and evidence Petitioner provides for claim 18, including the relevant portions of Wang and the Deevi Declaration, and agree, for the reasons stated in the Petition, that the combination of Robinson, Greim, and Wang teaches or suggests all of the limitations of claim 18, and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references in the manner set forth PGR2020-00071 Patent 10,492,542 B1 38 in claim 18. Pet. 105-107; Ex. 1012 ¶¶ 50-52, Fig. 2; Ex. 1004 ¶¶ 349-356. For example, Wang discloses a hard case that can be used to store and charge a smoking device. Ex. 1012 ¶ 51. Wang also explains that its device allows the consumer to use it several times without the need to be near an electrical outlet. Ex. 1012 ¶ 52. Accordingly, Petitioner shows persuasively that a person of ordinary skill in the art would have had reason to combine the teachings of the references, and would have had a reasonable expectation of successfully doing so. In view of the foregoing, we find Petitioner has established, by a preponderance of evidence, that claim 18 is unpatentable as obvious in view of Robinson, Greim, and Wang. F. Claims 10 and 27 - Alleged Unpatentability Based on Lack of Written Description Support Claim 10 depends indirectly from claim 1, and recites, “wherein the heating member is present on the heating projection along a segment having a length of about 75% to about 85% of a length of the disposable aerosol forming substance.” Ex. 1001, 42:61-64. Claim 27 contains a similar limitation, but depends from claim 19. Ex. 1001, 44:35-38. Petitioner contends claims 10 and 2710 are unpatentable for lack of written description support because “the claimed range is different from and substantially narrower than the ranges disclosed in the specification.” Pet. 40-43, 50; Reply 17-18. Specifically, Petitioner asserts that the ’542 patent specification describes bulk heating, wherein: 10 Petitioner contends that claims 1-30 are unpatentable for lack of written description support. We, however, address only claims 10 and 27 in this section because Patent Owner has disclaimed claims 13-17, and we have determined that claims 1-9, 11, 12, 18-26, and 28-30 are unpatentable as obvious in view of Robinson, Greim, and Wang, PGR2020-00071 Patent 10,492,542 B1 39 [The] heating member . . . can be present on the projection along a segment is about 75% to about 125% the length of the inhalable substance medium 350. In other embodiments, the segment can be about 80% to about 120%, about 85% to about 115%, or about 90% to about 110% the length of the inhalable substance medium. Ex. 1001, 39:40-51; Pet. 42. Petitioner explains that the ’542 patent specification does not disclose any bulk heating range with an upper limit of 85% - or even anything less than 100%. Pet. 43; Reply 17-18 (arguing that none of the broad ranges in the ’542 patent specification exclude values above 85%). Accordingly, Petitioner argues that the ’542 patent specification “point[s] away” from a range that is entirely under 100%. Pet. 43. Petitioner further argues that the ’542 patent specification contains no “blaze marks” that would have led a person of ordinary skill in the art to arrive at the claimed range of “about 75% to about 85%.” Pet. 43. Patent Owner argues that the ’542 patent specification provides written description support for the claimed range because it teaches bulk- heating embodiments at both ends of the claimed range. PO Resp. 58 (citing Ex. 2011 ¶¶ 109-111); Sur-reply 14-15. Patent Owner directs us to one embodiment using a projection present along a segment that is about 75% to about 125% of the length of the inhalable substance medium, and to a different embodiment using a projection present along a segment that is about 85% to about 110% of the length of the inhalable substance medium. PO Resp. 58 (citing Ex. 1001, 4:46-67, 38:54-57). After considering the parties’ arguments and evidence, we determine that claims 10 and 27 are unpatentable for lack of written description support. Although “it is not necessary that the limitations of a claim be set PGR2020-00071 Patent 10,492,542 B1 40 forth in haec verba” to find adequate written description, “[i]n the case of a claimed range, a skilled artisan must be able to reasonably discern a disclosure of that range.” Indivior UK Ltd. v. Dr. Reddy’s Labs S.A., 18 F.4th 1323, 1328 (Fed. Cir. 2021). Here, claims 10 and 27 require a heating member along a segment having a length of about 75% to about 85% of a length of the disposable aerosol forming substance. The ’542 patent specification discloses heating members having a length that ranges from about 75% to about 125%, and about 85% to about 110%, of the length of the disposable aerosol forming substance. Ex. 1001, 38:54-57. Although Patent Owner is correct that these two ranges include the same values as the endpoints of the claimed range, i.e., about 75% and about 85%, neither range contains an upper limit of about 85%, as claims 10 and 27 require. Instead, the express disclosure of “about 85%” in the ’542 patent specification constitutes a lower limit of the range of acceptable heater lengths, whereas the upper limit of the range is above 100%. These disclosures render it “less clear” that the inventors contemplated a range of “about 75% to about 85%” as part of the invention. Indivior, 18 F.4th at 1329. Additionally, the ’542 patent specification discloses a broad range of heater lengths that includes the claimed range. Ex. 1001, 38:54-57. We, however, discern nothing in the ’542 patent specification that identifies “about 85%” as an upper limit such that the disclosure “clearly allows a person of ordinary skill in the art to recognize” the narrow range of about 75% to about 85% as part of the invention described in the ’542 patent. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); see also Indivior, 18 F.4th at 1329 (“For written description support of a claimed range, more clarity is required.”); In re Baird, 348 F.2d 974, 982 (CCPA PGR2020-00071 Patent 10,492,542 B1 41 1965) (finding claims to about 40°F to 60°F not supported by range of 32°F to 176°F). For all of the foregoing reasons, we find Petitioner has established, by a preponderance of evidence, that claims 10 and 27 lack adequate written description support. G. Remaining Challenges Having determined that Petitioner establishes by a preponderance of the evidence that claims 1-9, 11, 12, 19-26, and 28-30 are unpatentable as obvious over the combined teachings of Robinson and Greim, that claim 18 is unpatentable as obvious in view of the combined teachings of Robinson, Greim, and Wang, and that claims 10 and 27 are unpatentable for lack of adequate written description support, we do not address Petitioner’s additional ground challenging claims 10 and 27 over Robinson, Greim, and Adams, or Petitioner’s arguments challenging claims 1-9, 11, 12, 18-26, and 28-30 based on lack of written description. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (nonprecedential) (“We agree that the Board need not address [alternative grounds] that are not necessary to the resolution of the proceeding.”). IV. CONCLUSION After reviewing the complete record developed during the course of the trial, we conclude that Petitioner has satisfied its burden of PGR2020-00071 Patent 10,492,542 B1 42 demonstrating, by a preponderance of the evidence, that claims 1-12 and 18-30 of the ’542 patent are unpatentable.11 V. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner has established by a preponderance of the evidence that claims 1-12 and 18-30 are unpatentable; 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 Should Patent Owner wish to pursue amendment of these 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). PGR2020-00071 Patent 10,492,542 B1 43 In summary: Claim(s) 35 U.S.C. § References/ Basis Claim(s) Shown Unpatentable Claim(s) Not Shown Unpatentable 1-12, 18-30 112 Written Description12 10, 27 1-9, 11, 12, 19-26, 28-30 103 Robinson, Greim 1-9, 11, 12, 19-26, 28-30 10, 27 103 Robinson, Greim, Adams13 18 103 Robinson, Greim, Wang 18 Overall Outcome 1-12, 18-30 12 As explained above, we do not reach Petitioners arguments challenging claims 1-9, 11, 12, 18-26, and 28-30 based on lack of written description in view of our determination that claims 1-9, 11, 12, 18-26, and 28-30 are unpatentable as obvious over Robinson and Greim, either alone or in combination with Wang. 13 As noted above, we do not reach this ground in view of our determination that claims 10 and 27 are unpatentable for lack of adequate written description. PGR2020-00071 Patent 10,492,542 B1 44 For PETITIONER: Jonathan M. Strang Matthew J. Moore Dale Chang Lawrence J. Gotts LATHAM & WATKINS LLP jonathan.strang@lw.com matthew.moore@lw.com dale.chang@lw.com lawrence.gotts@lw.com For PATENT OWNER: David M. Maiorana Anthony M. Insogna Kenneth S. Luchesi Geoffrey K. Gavin Joshua R. Nightingale George N. Phillips David Cochran JONES DAY dmaiorana@jonesday.com aminsogna@jonesday.com kluchesi@jonesday.com ggavin@jonesday.com jrnightingale@jonesday.com gphillips@jonesday.com dcochran@jonesday.com