Republic Tobacco, L.P.v.Fan Bao

Patent Trial and Appeal Board

Apr 27, 2016

12584110 (P.T.A.B. Apr. 27, 2016)

Trials@uspto.gov Paper 30
571-272-7822 Entered: April 27, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

REPUBLIC TOBACCO, L.P.,
Petitioner,

v.

FAN BAO,
Patent Owner.
____________

Case IPR2015-00072
Patent 8,261,752 B2
____________

Before LORA M. GREEN, KEN B. BARRETT, and
JENNIFER MEYER CHAGNON, Administrative Patent Judges.

CHAGNON, Administrative Patent Judge.

FINAL WRITTEN DECISION
Inter Partes Review
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

I. INTRODUCTION
We have jurisdiction to hear this inter partes review under 35 U.S.C.
§ 6(c). This Final Written Decision is issued pursuant to 35 U.S.C. § 318(a)
and 37 C.F.R. § 42.73. For the reasons discussed herein, we determine that
Petitioner has shown by a preponderance of the evidence that claims 2–24 of
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U.S. Patent No. 8,261,752 B2 (Ex. 1001, “the ’752 patent”) are
unpatentable. Further, claims 1 and 25 of the ’752 patent will be canceled.1
A. Procedural History
Republic Tobacco, L.P. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
seeking inter partes review of claims 1–25 (“the challenged claims”) of
the ’752 patent. Petitioner included a Declaration of Dr. Steven R. Schmid
(Ex. 1009) to support its positions. Fan Bao (“Patent Owner”) filed a
Preliminary Response (Paper 6, “Prelim. Resp.”).
Pursuant to 35 U.S.C. § 314(a), on May 1, 2015, we instituted an inter
partes review of the challenged claims to determine if claims 1–6, 9–13,
16–20, and 25 are unpatentable under 35 U.S.C. § 103 as obvious over
Chen;2 if claims 7, 8, 14, 15, and 21–24 are unpatentable under 35 U.S.C.
§ 103 as obvious over the combination of Chen and Kastner;3 and if claim 1
is unpatentable under 35 U.S.C. § 103 as obvious over the combination of
Kastner and Moser.4 Paper 7 (“Inst. Dec.”).

1 Patent Owner expressly requested cancelation of claims 1 and 25 of
the ’752 patent. PO Resp. 9; see also Tr. 19:7–19 (Patent Owner’s counsel
conceding the unpatentability of claims 1 and 25). Although Patent Owner
did not file a Motion to Amend or statutory disclaimer, we construe Patent
Owner’s statements regarding claims 1 and 25 as an abandonment of the
contest as to these claims and, thus, as a request for entry of adverse
judgment with respect to claims 1 and 25. See 37 C.F.R. § 42.73(b).
Accordingly, claims 1 and 25 will be canceled.
2 CN 201138314Y, published Oct. 22, 2008 (Ex. 1006). Ex. 1006 includes
both a certified English translation, and the original publication in Chinese.
All citations to Ex. 1006 are to the English translation portion of the
document, and refer to the page numbers added by Petitioner at the bottom
right-hand corner of each page.
3 U.S. Patent No. 5,088,506, issued Feb. 18, 1992 (Ex. 1005).
4 U.S. Patent Appl. No. 2006/0096604, published May 11, 2006 (Ex. 1004).
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Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 13, “PO Resp.”), along with a Declaration of Fan Bao
(Ex. 2001) to support its positions. Petitioner filed a Reply (Paper 21,
“Reply”) to the Patent Owner Response, along with a Rebuttal Declaration
of Dr. Schmid (Ex. 1017). An oral hearing was held on January 21, 2016.
A transcript of the hearing is included in the record. Paper 29 (“Tr.”).
B. Related Proceedings
The parties indicate that the ’752 patent has been asserted against
Petitioner in Fan Bao v. Republic Tobacco, L.P., No. 2:14-cv-03655
(C.D. Cal.). Pet. 1; Paper 4, 2. In its initial mandatory notices, Patent
Owner also identified two pending U.S. patent applications that claim
priority to the application that issued as the ’752 patent: U.S. Patent
Application number 13/507,7745 and U.S. Patent Application number
14/224,036.6 Paper 4, 2.
C. The ’752 Patent
The ’752 patent, titled “Crank Type Automatic Cigarette Tube
Injector,” relates to an automatic cigarette tube injector, for injecting tobacco
into hollow cigarette tubes, thereby forming cigarettes. Ex. 1001, 2:26–57.
Embodiments of the ’752 patent also have “a compact size for enhancing the
portability of the cigarette tube injector.” Id. at 1:17–18.

5 The ’774 application has been abandoned for failure to respond to an office
action.
6 The ’036 application is pending, awaiting examination.
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Figures 2 and 5 of the ’752 patent are reproduced below.

Figures 2 and 5 of the ’752 patent are sectional views of a cigarette tube
injector, according to a preferred embodiment. Id. at 3:14–17, 3:25–27.
Tobacco leaves are placed in tobacco cavity 11. Id. at 3:49–50. Arc-shaped
feeding member 32 pushes the tobacco leaves toward arc-shaped retention
member 313 (i.e., in a compression direction). Id. at 5:40–43. When
feeding member 32 couples with retention member 313, the tobacco leaves
form a tobacco cylinder with a uniform compactness within tubular chamber
35 (shown in Fig. 3). Id. at 5:40–43, 6:4–7.
Tobacco feeder 31 includes driving member 311, which is supported
by sliding compartment 13 and is slidable perpendicular to the compression
direction (i.e., in an injection direction). Id. at 4:30–46. Retention member
313 is coupled to driving member 311, and front pusher wall 312 of driving
member 311 pushes the tobacco cylinder into a cigarette paper tube that is
disposed at feeding opening 12. Id. at 3:66–4:9, 4:47–56, 5:59–64. The
inner wall of retention member 313 retains the tobacco leaves within tobacco
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cavity 40 and enters into the cigarette paper tube with the tobacco leaves.
Id. at 4:56–5:4.
Driving member 311 is connected to reciprocating unit 33, which
transmits a rotational power of output shaft 21 to a sliding movement of
driving member 311. Ex. 1001, 5:9–14. Reciprocating unit 33 includes
transmission wheel 331 coaxially coupled with output shaft 21 of electric
motor 20, eccentric shaft 3311 on the edge of transmission wheel 331,
transmission arm 333 including transmitting slot 334 slidably coupled with
eccentric shaft 3311, and connecting arm 332 rotatably connected to both
driving member 331 and transmission arm 333. Id. at 5:14–30. When
transmission wheel 331 is driven to rotate by motor 20, via output shaft 21,
eccentric shaft 3311 drives transmission arm 333 to swing reciprocatingly
through transmitting slot 334. Id. at 5:30–34. In this way, transmission arm
333 drives driving member 311 in a linear fashion, along the injection
direction, causing tobacco feeder 31 to inject the tobacco cylinder into the
cigarette tube. Id. at 5:34–39, 6:30–51.
D. Illustrative Claims
Claims 2–24 remain at issue in this trial. Each of claims 3–24
depends, directly or indirectly, from claim 2, which itself depends from
claim 1. Claims 1 and 2 of the ’752 patent, reproduced below, are
illustrative of the challenged claims:
1. An automatic cigarette tube injector for injecting
tobacco leaves into a hollow cigarette paper tube, comprising:
a housing having a tobacco cavity for said tobacco leaves
disposing thereat, and a feeding opening for said cigarette paper
tube alignedly supporting thereat, wherein a longitudinal length
of said housing is lesser than two cigarette lengths of said
cigarette paper tube;
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an electric motor, having an output shaft, received in said
housing; and
a cigarette filling arrangement, which is driven by said
electric motor via said output shaft for automatically feeding
said tobacco leaves to said cigarette paper tube through said
feeding opening of said housing, wherein said cigarette filling
arrangement comprises:
a tobacco feeder, which is a feeding crank, longitudinally
supported in said housing and driven by said output shaft at a
longitudinal direction which is an injection direction;
a retention member for retaining said tobacco leaves
from said tobacco cavity;
a feeding member sildably supported in said housing
along a direction perpendicularly to said injection direction,
wherein said tobacco feeder is able to be slid to couple with
said retention member to form a tubular chamber for holding
said tobacco leaves therein such that said tobacco feeder is able
to be driven to push towards said feeding opening of said
housing for feeding said tobacco leaves into said cigarette paper
tube; and
a reciprocating unit for transmitting a rotational power of
said output shaft to a sliding movement of said tobacco feeder,
wherein said tobacco feeder is linearly moved at said
longitudinal direction out of said feeding opening for feeding
said tobacco leaves into said cigarette paper tube and is
longitudinally received in said housing to minimize said
longitudinal length of said housing which is lesser than two
cigarette lengths of said cigarette paper tube.
Ex. 1001, 7:66–8:36.
2. The automatic cigarette tube injector, as recited
in claim 1, wherein said tobacco feeder comprises
a driving member, having a front pusher wall,
being reciprocatingly driven by said output shaft of said
electric motor to slide at said housing between a first
position and a second position along said injection
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direction through said feeding opening of said housing,
and
an arc-shaped retention member frontwardly
extended from said front pusher wall of said driving
member for retaining said tobacco leaves at an inner wall
of said retention member from said tobacco cavity;
wherein said feeding member is an arc-shaped feeding
member slidably supported in said housing along said direction
perpendicularly to said injection direction,
wherein said feeding member is slid to couple with said
retention member at said first position to form said tubular
chamber within said inner wall of said retention member and an
inner wall of said feeding member for holding said tobacco
leaves within said tubular chamber, such that when said driving
member is driven to slide at said second position, said front
pusher wall of said driving member is driven to push towards
said feeding opening of said housing for feeding said tobacco
leaves into said cigarette paper tube.
Id. at 8:37–58 (paragraphing added).
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable construction in light of the specification of the
patent in which they appear. See 37 C.F.R. § 42.100(b); In re Cuozzo Speed
Techs., LLC, 793 F.3d 1268, 1275–79 (Fed. Cir. 2015), cert. granted sub
nom. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (2016). Under the
broadest reasonable construction standard, claim terms generally are given
their ordinary and customary meaning, as would be understood by one of
ordinary skill in the art in the context of the entire disclosure. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). The claims,
however, “‘should always be read in light of the specification and teachings
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in the underlying patent,’” and “[e]ven under the broadest reasonable
interpretation, the Board’s construction ‘cannot be divorced from the
specification and the record evidence.’” Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015) (citations omitted).
No issue in this Decision requires explicit construction of any claim
term. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
(Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent
necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am.
Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Accordingly, for
purposes of this Decision, we do not provide explicit construction for any
claim terms.
B. Obviousness in View of Chen, Alone or in Combination with
Kastner
Due to the entry of adverse judgment against claims 1 and 25, the only
grounds remaining in this trial are whether claims 2–6, 9–13, and 16–20 are
unpatentable under 35 U.S.C. § 103 as obvious over Chen and whether
claims 7, 8, 14, 15, and 21–24 are unpatentable under 35 U.S.C. § 103 as
obvious over the combination of Chen and Kastner. We have reviewed the
entire record before us, including the parties’ contentions and supporting
evidence presented during this trial. For the reasons explained below, we
determine that Petitioner has demonstrated, by a preponderance of the
evidence, that claims 2–24 are unpatentable. We begin with a discussion of
the cited references, and then turn to a discussion of the parties’ contentions
and supporting evidence.
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1. Overview of Chen
Chen is a Chinese utility model application titled “Portable Electric
Filtered Cigarette Tube Filling Machine,” and discloses a machine that fills
cigarettes with shredded tobacco. Ex. 1006, 1. In particular, Chen describes
several benefits of the device disclosed therein, including “more uniform
shredded tobacco distribution” and “suitable degree of shredded tobacco
compactness.” Id. at 4.
Figure 2 of Chen is reproduced below.

Figure 2 of Chen is a “schematic diagram illustrating the shredded tobacco
pressing process” of the utility model. Ex. 1006, 4. As seen in Figure 2, the
machine includes housing 15, tongue-shaped pusher 3 having a cigarette
forming slot 2, cigarette tube clamp 5 connected to housing 15, and pressing
block 6. Id. The machine also includes motor 10, having actuation shaft 11
and decelerator 12, and crank wheel 9 disposed on actuation shaft 11. Id.
Crank wheel 9 is connected to connection bar 8 and rocking bar 13. Id.
In operation, cigarette tube 4 is clamped at the front of cigarette
forming slot 2, and shredded tobacco is placed in tobacco storage trough 1.
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Id. at 5. Crank wheel 9 is driven by motor 10, decelerator 12, and actuation
shaft 11, to rotate counterclockwise, causing pressing block 6 to move
downward, pressing the tobacco in tobacco storage trough 1 into cigarette
forming slot 2, where the tobacco forms a cylindrical shape. Id. Crank
wheel 9 is then driven to rotate clockwise, causing pressing block 6 to stop
temporarily, at which time rocking bar 13 moves forward along the axial
direction of cigarette forming slot 2, thus causing tongue-shaped pusher 3 to
push the tobacco into the cigarette tube. Id. at 5, Fig. 3. After the tobacco is
in the cigarette tube, the pressing block 6 and tongue-shaped pusher 3 then
return to their original positions, and the tobacco remains within the
cigarette tube. Id. at 5.
2. Overview of Kastner
Kastner relates to “portable manually operable cigarette making
machines.” Ex. 1005, Abstract. Figures 1 and 3 of Kastner are reproduced
below.

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Figures 1 and 3 of Kastner show an external and a bottom-view internal
appearance, respectively, of an embodiment of the cigarette making machine
of Kastner. Id. at 4:63–68. As can be seen in the figures, machine 10
includes base plate 12, casing 14, cigarette tube nipple 16, tobacco slot 18,
handle 20, and handle drive 22. Id. at 5:15–18. Rotating handle drive 22
urges compactor 32 toward spoon 60, thereby compacting the tobacco. Id. at
5:25–29. Further rotation of handle drive 22 moves tobacco plunger and
spoon 60 toward and through cigarette tube nipple 16, ejecting the tobacco
into cigarette tube. Id. at 5:39–47.
3. Analysis
Petitioner argues that Chen, alone or in combination with Kastner,
teaches or suggests all limitations of claims 2–24. Pet. 36–42, 51–60.
Patent Owner argues that Petitioner’s declarant, Dr. Schmid, is not qualified
to testify as to the knowledge of one of ordinary skill in the art (PO Resp.
11–18), that Chen and Brown7 do not qualify as prior art (id. at 18–31), and
that the cited references do not teach or suggest all features of claims 2, 5,
11, and 18 (id. at 31–43). We address each of these issues in turn.
a. Dr. Schmid’s Qualifications to Testify as to the
Knowledge of One of Ordinary Skill in the Art
Patent Owner asserts that Dr. Schmid is not a person of ordinary skill
in the art, and his testimony, thus, is irrelevant and should be entitled no

7 HENRY T. BROWN, FIVE HUNDRED AND SEVEN MECHANICAL MOVEMENTS
42–43 (18th ed. 1896) (Ex. 1010; Ex. 1020). In our Institution Decision, we
relied on Brown not as an express part of the instituted grounds, but instead
as evidence of the knowledge of one of ordinary skill in the art. Inst. Dec. 6.
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weight.8 PO Resp. 1–2, 11–18. Patent Owner’s argument is based, in part,
on its definition of a person of ordinary skill—namely, a person with “at
least 4 years’ experience in the design of consumer products, including at
least 2 years in the design and operation of cigarette making devices.” Id. at
13 (citing Ex. 2001 ¶ 16). Patent Owner asserts that “merely being a skilled
engineer is not enough to qualify as one of ordinary skill in the art of
the ’752 patent, unless that person has sufficient experience in cigarette
making devices specifically.” Id. at 14 (citing Ex. 2001 ¶ 17).
Patent Owner points to “several specific and unique issues” that must
be addressed by a design for cigarette making devices, including that they
are intended to be operated by unskilled consumers, they are used with
“delicate and easily torn or crushed paper cigarette tubes,” they must make a
cigarette that burns in a reliable and desirable manner, and they are often
used by older people and must be operated easily without significant manual
force. Id. (citing Ex. 2001 ¶ 17). Patent Owner asserts that, absent specific
experience in cigarette making devices, a skilled engineer would be unaware
of and fail to take into account these issues. Id. (citing Ex. 2001 ¶ 17).
Patent Owner asserts that Dr. Schmid does not have any experience in the
design and operation of cigarette making devices. Id. at 14–16 (citing
Ex. 2002 (Schmid Deposition Transcript), 46:11–23, 82:21–84:4, 85:17–24,

8 To the extent Patent Owner argues that Dr. Schmid’s testimony should be
excluded entirely (see, e.g., PO Resp. 12–13), we agree with Petitioner
(Reply 6) that Patent Owner should have objected to the evidence within ten
business days of institution of trial, in accordance with 37 C.F.R.
§ 42.64(b)(1), and subsequently filed a Motion to Exclude in accordance
with 37 C.F.R. § 42.64(c) to preserve any such objection. We, thus, only
consider Patent Owner’s arguments regarding the weight to be given to
Dr. Schmid’s testimony.
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96:11–13, 103:4–16, 104:3–11, 105:2–7, 139:1–21, 148:18–149:22). Thus,
according to Patent Owner, Dr. Schmid is not, nor can he testify to the
knowledge of, a person of ordinary skill in the art of cigarette making
devices.
Petitioner, on the other hand, argues that a person of ordinary skill in
the art would have a Bachelor’s degree in mechanical engineering or
equivalent engineering design experience, as well as “familiarity with
machines to achieve consolidation through compression of loose materials
like tobacco to fill hollow tubes and other receptacles and experience in
designing machines to achieve consolidation through compression.”
Pet. 27–28 (citing Ex. 1009 ¶ 10). While we agree with Patent Owner that
one of skill in the art will have some familiarity or experience in the design
of consumer products, we are not persuaded by Patent Owner’s assertion
that the relevant art should be defined so narrowly as to specifically require
experience in designing cigarette making devices. Patent Owner presents no
evidence beyond the uncorroborated testimony of its declarant (who also
happens to be the inventor of the ’752 patent) that the design of cigarette
making devices is particularly specialized and beyond the skill of a
mechanical engineer. Thus, we disagree with Patent Owner and decline to
insert any specific experience or specialized knowledge of cigarette making
devices into the definition of one of ordinary skill in the art of the ’752
patent.
Patent Owner further argues that Dr. Schmid “himself readily admits
(as he must) that he is not a person of ordinary skill in the art.” PO Resp. 12
(citing Ex. 2002, 176:16–18). Dr. Schmid is an experienced mechanical
engineer and a long-time professor of engineering. Ex. 1009 ¶¶ 3–8;
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Ex. 1017 ¶¶ 2–8; Ex. 1012 (Dr. Schmid’s Curriculum Vitae). Additionally,
beyond the portion of Dr. Schmid’s deposition testimony cited by Patent
Owner regarding his status as one of ordinary skill, Dr. Schmid further
testified, “I have an exceptional background in identifying what an
undergraduate or a bachelor’s degree holder in mechanical engineering is
capable of doing and understands. So I understand what is a person of
ordinary skill in this art.” Ex. 2002, 176:9–14; see Reply 8–10; Ex. 1009
¶ 9; Ex. 1017 ¶¶ 5–8.
Patent Owner argues that “the Federal Circuit [has] excluded the
testimony of [an] expert on the issues of patent invalidity and non-
infringement because he lacked any relevant technical training in the field of
the invention.” PO Resp. 12 (citing Sundance, Inc. v. DeMonte Fabricating
Ltd., 550 F.3d 1356, 1361 (Fed. Cir. 2008)). In Sundance, however, the
expert whose testimony was excluded was a patent attorney with only one
year of experience as an engineer. Sundance, 550 F.3d at 1361. Based on
the evidence presented, we are not persuaded that Dr. Schmid similarly is
lacking in relevant training. Rather, we are persuaded, based on the facts in
this record, that Dr. Schmid is qualified to testify as to the knowledge of a
person of ordinary skill in the art of the ’752 patent.
b. Whether Chen Qualifies as Prior Art
Patent Owner argues that Petitioner “completely omits any discussion
about the operability of . . . Chen, for its intended purpose, which is required
for Chen to qualify as prior art.” PO Resp. 2; see id. at 18–23. In particular,
Patent Owner asserts that the device of Chen is inoperable to make a
cigarette, because “after compressing the tobacco, the pressing block of
Chen does not maintain the tobacco in a compressed state while it is injected
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into the empty cigarette paper tube.” Id. at 19–20 (citing Ex. 1006, Figs. 2,
3). According to Patent Owner, the tobacco, thus, would expand before it
could be injected into the paper tube. Id. at 20–22 (citing Ex. 2001 ¶¶ 49–
50; Ex. 2002, 156:23–157:3, 158:17–23). Patent Owner further asserts that,
because one of ordinary skill would not have reason to expect that Chen
could successfully make a cigarette, such a person of ordinary skill would
not have considered Chen in an obviousness analysis of the ’752 patent
claims. Id. at 22–23.
The express disclosure of Chen, however, contradicts Patent Owner’s
argument and evidence about Chen’s alleged inoperability. Chen describes
the operation of its cigarette filling machine, stating that after pressing
block 6 moves downward to press the shredded tobacco into forming slot 2
to form a cylindrical shape, “shredded tobacco pressing block (6) stops
temporarily . . . , at which time the rocking bar (13) at the rear end of the
tongue-shaped pusher (3) moves forwards . . . to push the cylindrical
shredded tobacco into the filtered cigarette tube, after which the shredded
tobacco pressing block (6) and the tongue-shaped pusher (3) return to their
respective initial positions.” Ex. 1006, 5 (emphases added); see
Reply 14–15; Ex. 1017 ¶¶ 27–31. Further, Chen describes its device as
having several benefits, including “more uniform shredded tobacco
distribution” and “suitable degree of shredded tobacco compactness.”
Ex. 1006, 4; see Reply 14–15; Ex. 1017 ¶¶ 27–31. As noted by Mr. Bao, if
the device of Chen did not maintain the tobacco in a compressed state while
it is injected into the empty cigarette paper tube, these stated benefits would
not be possible. See, e.g., Ex. 2001 ¶ 51.
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Petitioner describes this operation of Chen in its Petition (Pet. 23–24)
and, in response to Patent Owner’s arguments that Chen is inoperable to
form cigarettes, provides additional discussion and testimony supporting its
position in the Reply (Reply 14–16; Ex. 1017 ¶¶ 27–31, 33–37). Based on
the evidence presented in this proceeding, we are not persuaded that one of
skill in the art would have “immediately recognized that Chen was
inoperable to make cigarettes, and would have consequently discarded or
otherwise not considered Chen” (PO Resp. 21–22 (citing Ex. 2001
¶¶ 45–52)), as asserted by Patent Owner. Accordingly, Chen properly is
available as prior art in this proceeding.
c. Whether Brown Qualifies as Prior Art
As previously noted, our Institution Decision relies on Brown as
evidence of the knowledge of one of ordinary skill in the art. Inst. Dec. 6.
Patent Owner argues that Petitioner has not proven Brown is a printed
publication and also that Brown is not analogous art. PO Resp. 23–31.
Regarding whether Brown is a printed publication, Patent Owner
argues that the 1896 date printed on Brown is hearsay and cannot be used to
establish dissemination or public availability. Id. at 24. As noted by
Petitioner, however, “Brown, including the printed date of 1896, falls within
the exception to the rule against hearsay under Federal Rule of Evidence
803(16).”9 Reply 7. Further, Petitioner provides evidence regarding the

9 Patent Owner did not object to the authenticity of Brown. See 37 C.F.R.
§ 42.64(b)(1). Patent Owner only now argues that the date printed thereon is
hearsay as to Brown’s publication date. PO Resp. 24.
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dissemination and public availability of Brown,10 prior to the filing of the
earliest application to which the ’752 patent claims priority (i.e., March 11,
2009 (Ex. 1001, [60])). See Ex. 1017 ¶ 53 (Dr. Schmid attesting that he
purchased Brown from Amazon, and has relied on it since at least 2003);
Ex. 1018 (Dr. Schmid’s Amazon receipt); Ex. 1019 (Library of Congress
letter regarding Brown). Based on the evidence of record, we are persuaded
that Brown is a printed publication available as prior art to the ’752 patent.
Regarding whether Brown is analogous art, Patent Owner argues that
Brown is not in the field of personal cigarette making devices, but is instead
a general engineering reference catalog. PO Resp. 27. Patent Owner also
argues that Brown is not “reasonably pertinent” to the problem faced by the
inventor, i.e., “how to reduce the size of the device housing to below two
cigarette lengths.” Id. (citing Ex. 2001 ¶¶ 19–34). We disagree with Patent
Owner’s characterization of the problem faced by the inventor. As
discussed above, we are not persuaded that the relevant art is limited to
cigarette making devices specifically. The problem of identifying an
appropriate design, including selecting a reciprocating unit for transmitting
rotational power to linear movement, to fit within desired size constraints is
not unique to cigarette making devices. Further, we are persuaded that one
of ordinary skill in the art would have been aware of general engineering

10 Patent Owner objected to this evidence arguing it was untimely-filed
supplemental evidence (Paper 24), but did not file a Motion to Exclude. In
any event, because Patent Owner did not object to Brown under our rules
(which would have provided Petitioner with an opportunity to serve
supplemental evidence), but for the first time raised the issue of the
publication status of Brown in its Patent Owner Response, we determine
Petitioner properly submitted this evidence with its Reply brief in response
to Patent Owner’s arguments.
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principles, such as the various “mechanical movements” disclosed in Brown,
and would have looked to such a general resource in designing cigarette
making devices, as well as many other types of mechanical-based consumer
goods. Reply 23–24; Ex. 1020 (back cover of Brown, identifying it as “[a]
basic source book for anyone interested in . . . ideas for design and
construction”). Accordingly, Patent Owner’s argument that Brown is not
analogous art is unpersuasive.
d. Whether Chen Teaches or Suggests All Limitations of
Claim 2
Claim 2 depends from claim 1, and, thus, includes all limitations
thereof. We first discuss Petitioner’s contentions as to how Chen teaches or
suggests each of the elements of claims 1 and 2. We then turn to Patent
Owner’s opposition presented in its Response.
Petitioner’s Contentions
Claim 1 recites an “automatic cigarette tube injector for injecting
tobacco leaves into a hollow cigarette paper tube.” Ex. 1001, 7:66–67. As
noted above, Chen is a Chinese utility model application titled “Portable
Electric Filtered Cigarette Tube Filling Machine,” and discloses a machine
that fills cigarettes with shredded tobacco. Ex. 1006, 1.
Petitioner relies on housing 15, tobacco storage trough 1, feed opening
and tube support at cigarette tube clamp 5, and motor 10 with actuation
shaft 11 of Chen as teaching the claimed housing, tobacco cavity, feeding
opening, and electric motor with an output shaft, respectively. Pet. 36–37,
40 (citing Ex. 1006, 1, 4–5, Fig. 2; Ex. 1009 ¶¶ 49–50, 53, 61). Petitioner
further relies on tongue-shaped pusher 3, cigarette forming slot 2, pressing
block 6, and rocking bar 13 in combination with actuation shaft 11 of Chen
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as teaching the claimed tobacco feeder, retention member, feeding member,
and reciprocating unit of the claimed cigarette filling arrangement,
respectively. Pet. 38–41 (citing Ex. 1006, 4–5, Fig. 2; Ex. 1009 ¶¶ 55–58,
61).
With respect to the claim 1 requirement that the “cigarette filling
arrangement . . . is driven by said electric motor via said output shaft for
automatically feeding said tobacco leaves to said cigarette paper tube
through said feeding opening of said housing,” Petitioner points to Chen’s
crank wheel 9 and rocking bar 13, which are driven by motor 10, to cause
tobacco to be fed into cigarette tube 4 through the feed opening at cigarette
tube clamp 5. Pet. 38, 40 (citing Ex. 1006, 4–5, Fig. 2; Ex. 1009 ¶ 54).
In Chen, crank wheel 9 is driven to rotate by motor 10 and actuation
shaft 11, causing rocking bar 13 to move tongue-shaped pusher 3 “forward[]
along the axial direction of the cigarette forming slot (2) to push the
cylindrical shredded tobacco into the filtered cigarette tube.” Ex. 1006, 5,
Figs. 2, 3. Petitioner relies on these features as teaching that the tobacco
feeder is “driven by said output shaft at a longitudinal direction which is an
injection direction” and “is linearly moved at said longitudinal direction out
of said feeding opening for feeding said tobacco leaves into said cigarette
paper tube,” as claimed. Pet. 38, 40–41 (citing Ex. 1006, 4–5, Fig. 2;
Ex. 1009 ¶¶ 55, 59, 61). As also can be seen in Figure 2 of Chen, Petitioner
contends that tongue-shaped pusher 3 is “longitudinally supported in said
housing” and “longitudinally received in said housing,” as claimed.
Ex. 1006, Fig. 2; Ex. 1009 ¶¶ 55, 60, 61.
The pressing block 6 of Chen moves perpendicularly to the injection
direction “to press the shredded tobacco in the shredded tobacco storage
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trough (1) into the cigarette forming slot (2) where the shredded tobacco
forms a cylindrical shape” that is then injected into cigarette tube 4, which
Petitioner asserts teaches that the feeding member is “s[li]dably supported in
said housing along a direction perpendicularly to said injection direction,
wherein said tobacco feeder is able to be slid to couple with said retention
member to form a tubular chamber for holding said tobacco leaves therein
such that said tobacco feeder is able to be driven to push towards said
feeding opening of said housing for feeding said tobacco leaves into said
cigarette paper tube,” as claimed. Ex. 1006, 5, Fig. 2 (see downward arrow
on pressing block 6); Pet. 38–39, 41 (citing Ex. 1006, 4–5, Fig. 2; Ex. 1009
¶¶ 57, 61). Petitioner also relies on Dr. Schmid’s testimony that, because
“the shredded tobacco is formed into a cylinder, the pressing block and
pusher must form a tubular chamber to accomplish this.” Pet. 38–39 (citing
Ex. 1009 ¶ 57).
Rocking bar 13 of Chen, connected to crank wheel 9 and tongue-
shaped pusher 3, converts the rotation of actuation shaft 11 to a sliding
movement of tongue-shaped pusher 3, which Petitioner asserts teaches that
the reciprocating unit “transmit[s] a rotational power of said output shaft to a
sliding movement of said tobacco feeder,” as claimed. Id. at 39, 41 (citing
Ex. 1006, 4–5, Fig. 2; Ex. 1009 ¶¶ 58, 61).
Claim 1 further recites that the “longitudinal length of said housing is
lesser than two cigarette lengths of said cigarette paper tube” and “said
tobacco feeder . . . is longitudinally received in said housing to minimize
said longitudinal length of said housing which is lesser than two cigarette
lengths of said cigarette paper tube.” Ex. 1001, 8:4–5, 8:30–36. Petitioner
asserts that the “recitation of relative dimensions in the [’752 patent] claims
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cannot render them patentably distinct from prior art devices like Chen,
[because] the Chen machine performs in the same fashion whatever its
length.” Pet. 37 (citing Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349
(Fed. Cir. 1984); MPEP § 2144.04 IV; Ex. 1009 ¶ 51). Petitioner further
asserts that it would have been obvious to modify the device of Chen in
order to make the housing smaller. Pet. 37.
In particular, Petitioner relies on Dr. Schmid’s testimony that “the
Chen figures, which are schematic diagrams, show a substantial amount of
dead space to the right of crank wheel (9) which would be eliminated by one
of ordinary skill in the art as a routine matter,” that “[i]n such an obvious
modification, the person of ordinary skill would reposition the schematically
depicted restoring spring (14), again as a routine matter,” and that “Chen
also includes additional dead space in the housing on either side of pressing
block (6) which also could be removed as a routine matter.” Id. (citing
Ex. 1009 ¶ 52). Petitioner also relies on Dr. Schmid’s testimony that the
device of Chen “performs in the same fashion whatever its length.” Id.
(citing Ex. 1009 ¶ 51).
In claim 2, the automatic cigarette tube injector of claim 1 is further
defined. Claim 2 further defines the claimed tobacco feeder, reciting that it
includes a “driving member, having a front pusher wall,” and an “arc-shaped
retention member frontwardly extended from said front pusher wall of said
driving member.” According to Petitioner, pusher 3 of Chen, which
includes an unlabeled wall at its back edge, teaches the driving member with
a front pusher wall. Pet. 52 (citing Ex. 1006, 4–5, Fig. 3; Ex. 1009 ¶ 87).
Petitioner relies on the portion of pusher 3 extending forward of the
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unlabeled wall as teaching the arc-shaped retention member. Id. (citing
Ex. 1006, Figs. 2, 3; Ex. 1009 ¶ 87).
The driving member, as claimed, is “reciprocatingly driven by said
output shaft of said electric motor to slide at said housing between a first
position and a second position along said injection direction through said
feeding opening of said housing.” As described by Petitioner, Chen teaches
that pusher 3 is reciprocatingly driven by shaft 11 of motor 10 between first
and second positions, shown in solid and broken lines in Figure 3, and that
the pusher moves through a feeding opening of the housing. Id. (citing
Ex. 1006, 4–5, Fig. 3; Ex. 1009 ¶ 87).
The arc-shaped retention member, as claimed, “retain[s] said tobacco
leaves at an inner wall of said retention member from said tobacco cavity.”
As described by Petitioner, Chen teaches that tobacco leaves in shredded
tobacco storage trough 1 are retained at the inner wall of the retention
member. Id. at 52–53 (citing Ex. 1006, Figs. 2, 3; Ex. 1009 ¶ 87).
Claim 2 further defines the claimed feeding member, reciting that the
“feeding member is an arc-shaped feeding member slidably supported in
said housing along said direction perpendicularly to said injection direction”
and that the “feeding member is slid to couple with said retention member at
said first position to form said tubular chamber within said inner wall of said
retention member and an inner wall of said feeding member for holding said
tobacco leaves within said tubular chamber.” As described by Petitioner,
pressing block 6 of Chen, upon which Petitioner relies for teaching the
claimed feeding member, must be arc-shaped because pressing block 6 and
pusher 3 together form the tobacco into a cylindrical shape. Id. at 53 (citing
Ex. 1006, 4, 5, Figs. 2, 3; Ex. 1009 ¶ 87). As discussed previously with
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respect to claim 1, Chen also describes that pressing block 6 moves
perpendicularly to the injection direction. See Ex. 1006, 5, Fig. 2
(downward arrow on pressing block 6); Pet. 53 (citing Ex. 1006, 4, 5,
Figs. 2, 3; Ex. 1009 ¶ 87).
Finally, claim 2 recites that “when said driving member is driven to
slide at said second position, said front pusher wall of said driving member
is driven to push towards said feeding opening of said housing for feeding
said tobacco leaves into said cigarette paper tube.” As seen in Figure 3 and
the corresponding description of Chen, as pusher 3 moves forward in the
longitudinal direction, the unlabeled wall at its back edge (i.e., the claimed
front pusher wall), pushes the cylindrical shredded tobacco into cigarette
tube 4. Ex. 1006, 5; see Pet. 24.
Patent Owner’s Contentions
Patent Owner argues that Chen does not teach or suggest a “front
pusher wall of said driving member is driven to push towards said feeding
opening of said housing for feeding said tobacco into said cigarette paper
tube,” as recited in claim 2. PO Resp. 32–35. Patent Owner’s arguments in
this regard are premised on the assertion that Chen is inoperable to form
cigarettes, and, thus, the structure identified by Petitioner as teaching the
claimed front pusher wall does not operate to “feed[] said tobacco into said
cigarette paper tube,” as required by the claim. Id. at 33–35. However, as
discussed above (see § II.B.3.b), we are not persuaded that Chen is, in fact,
inoperable, but instead determine that Chen describes a device that one of
skill in the art would understand functions to form cigarettes. Accordingly,
we are not persuaded that Chen does not teach a front pusher wall that feeds
tobacco into said cigarette paper tube.
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Patent Owner also argues that Chen does not teach or suggest the
device housing size is “lesser than two cigarette lengths of said cigarette
paper tube,” as recited in claim 1, from which claim 2 depends. PO
Resp. 35–37. We first note that Patent Owner has conceded the
unpatentability of claim 1. Tr. 19:7–19; PO Resp. 9. However, we also are
not persuaded by Patent Owner’s arguments that Chen does not teach or
suggest this claim feature.
Patent Owner argues that “Republic’s proposed modification [to
remove the dead space and reposition restoring spring 14 of Chen] simply
does not work.” PO Resp. 36. Patent Owner asserts that “no matter how
much ‘dead space’ is removed, the device of Chen still cannot overcome the
minimum size threshold” problem described in the ’752 patent. Id. (citing
Ex. 2001 ¶ 78). Patent Owner further argues that Petitioner does not explain
how its modified version of Chen meets both critical claim features (i.e.,
maintaining compression and minimizing the housing to lesser than two
cigarette paper tube lengths) at the same time. Id. at 37–39. Specifically,
Patent Owner asserts that “Chen cannot remain functional while
simultaneously providing the recited limitations of claim 2.” Id. at 38.
According to Patent Owner, if the housing of Chen is to be less than
two cigarette lengths, the driving shaft of Chen must be shortened. Id.
However, the unlabeled front wall still must travel the length of the chamber
to drive the entire tobacco cylinder into the paper, causing the rightmost end
of the drive shaft to travel into the chamber. Id. at 38–39. Patent Owner
contends that in this situation, rocking bar 13 would run into presser block 6,
preventing further movement of the pusher/drive shaft. Id. at 39.
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We do not find this argument persuasive. Petitioner provides
declaration testimony that “a person of ordinary skill in the art would
recognize that the machine design taught by the[] schematic drawings [of
Chen] could be implemented in many different ways.” Reply 15 (citing
Ex. 1017 ¶¶ 33–37); see Ex. 1009 ¶ 52. According to Petitioner, the device
of Chen “performs in the same fashion whatever its length.” Pet. 37 (citing
Ex. 1009 ¶ 51); see Reply 15 (citing Ex. 1017 ¶¶ 38–43). Further,
Dr. Schmid testifies that a person of ordinary skill “would have learned to
design systems, components and processes to meet desired needs within
realistic constraints (like size constraints), and to select proper springs,
component sizes and structural arrangements to optimize desired mechanical
motion.” Ex. 1017 ¶ 43; see Reply 20 (citing Ex. 1009 ¶ 10). We credit
Dr. Schmid’s testimony in this regard. Given that the disclosure of Chen is
schematic in form, we are persuaded that one of skill in the art would have
been more than capable of appropriately rearranging the components in a
way to make the device smaller, and would have been motivated to do so in
order to make it more portable. See Ex. 1006, 3, 4; Ex. 1017 ¶¶ 38–43;
Ex. 1009 ¶ 52.
Conclusion
Given the evidence on this record, we determine Petitioner has shown,
by a preponderance of the evidence, that Chen renders obvious claim 2.
e. Whether Chen, Alone or in Combination with Kastner,
Renders Obvious Claims 3–24
Petitioner asserts that claims 3–6, 9–13, and 16–20 would have been
obvious in view of Chen, and that claims 7, 8, 14, 15, and 21–24 would have
been obvious in view of Chen and Kastner. Pet. 51–60. Except for claims 5,
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11, and 18, Patent Owner does not substantively discuss these claims, apart
from its discussion of claim 2 and the discussion of the admissibility of
Petitioner’s evidence generally, which we have addressed above.
Obviousness in View of Chen
For each of claims 3–6, 9–13, and 16–20, Petitioner provides
arguments as to how each claim limitation is taught or suggested by Chen,
and relies upon Dr. Schmid’s testimony. Pet. 53–54, 56–60 (citing
Ex. 1006, 4–5, Figs. 2, 3; Ex. 1009 ¶¶ 31, 88–96, 99–106; Ex. 1010, 42–43).
We are persuaded that Petitioner has shown that Chen renders obvious
claims 3, 4, 6, 9, 10, 12, 13, 16, 17, 19, and 20, and adopt Petitioner’s
reasoning as our own.
Each of claims 5, 11, and 18 recites a particular configuration of the
reciprocating unit. Ex. 1001, 9:4–15, 9:54–65, 10:38–49. Petitioner asserts
that this particular claimed design to “convert circular motion into linear
motion by a crank-pin on a rotating disk working in the slot of a bell-crank”
was known in the art since at least 1896. Pet. 54–56 (citing Ex. 1010,
42–43; Ex. 1009 ¶¶ 31, 93). Patent Owner argues that, without undue
experimentation, one of skill in the art would not have chosen the particular
claimed configuration for the claimed reciprocating unit because there are
many, perhaps “infinite,” different ways of converting rotation to linear
motion. PO Resp. 29–30.
We are persuaded, however, that these various ways of converting
rotation to linear motion described in Brown are all well within basic
knowledge of a mechanical engineer designing any product or device,
including personal cigarette making devices. See Reply 23–24 (citing
Ex. 1020). We are further persuaded that the “Brown design would be
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recognized by one of ordinary skill in the art as an efficient and economical
way to convert circular motion into linear motion, because it has been
publicly available and widely used for this purpose since well before the
earliest application for the ’752 patent.” Id. at 23 (citing Ex. 1017 ¶ 57).
We, thus, are persuaded that the use of such a design in the device of Chen
would have been obvious to one of ordinary skill in the art. Pet. 55 (citing
Ex. 1009 ¶¶ 93–94).
Accordingly, we are persuaded that Petitioner has shown, by a
preponderance of the evidence, that Chen renders obvious claims 5, 11, and
18.
Obviousness in View of Chen and Kastner
For each of claims 7, 8, 14, 15, and 21–24, Petitioner provides
arguments as to how each claim limitation is taught or suggested by the cited
references, and relies upon Dr. Schmid’s testimony. Pet. 51, 57–60 (citing
Ex. 1005, 5:18–31, Fig. 5; Ex. 1006, 4–5, Fig. 2; Ex. 1009 ¶¶ 97–100, 103–
106). Each of claims 7, 14, and 21 recites a “manual actuator for actuating
said feeding member being shifted within said tobacco cavity” and specific
details thereof. Ex. 1001, 9:24–35, 10:11–21, 10:63–11:6. Each of claims 8,
15, and 22–24 depends from one of claims 7, 14, and 21.
The cigarette filling machine of Kastner includes handle 20 and
handle drive 22, which when rotated manually cause compactor 32 to slide
within tobacco slot 18 to couple with spoon 60, meeting the language of
claims 7, 14, and 21. Ex. 1005, 5:18–30, Fig. 5. Petitioner also provides
evidence that Chen and Kastner both relate to portable cigarette filling
machines. See Pet. 23–25; Ex. 1005; Ex. 1006. We are persuaded that it
would have been well within the ability of a person of ordinary skill in the
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art to incorporate the manual feeding member actuator of Kastner’s cigarette
filling machine into the cigarette filling machine of Chen. See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 420–21 (2007) (A person with ordinary skill
in the art is “a person of ordinary creativity, not an automaton,” and “in
many cases . . . will be able to fit the teachings of multiple patents together
like pieces of a puzzle.”).
Thus, we are persuaded that Petitioner has shown that the combination
of Chen and Kastner renders obvious claims 7, 14, and 21. We also are
persuaded that Petitioner has shown that the cited combination renders
obvious claims 8, 15, and 22–24, and adopt Petitioner’s reasoning as our
own.
Conclusion
Given the evidence on this record, we determine Petitioner has shown,
by a preponderance of the evidence, that Chen renders obvious claims 3–6,
9–13, and 16–20, and that the combination of Chen and Kastner renders
obvious claims 7, 8, 14, 15, and 21–24.
III. CONCLUSION
For the foregoing reasons, we determine that Petitioner has
demonstrated, by a preponderance of the evidence, that claims 2–6, 9–13,
and 16–20 are unpatentable under 35 U.S.C. § 103 as obvious over Chen,
and that claims 7, 8, 14, 15, and 21–24 are unpatentable under 35 U.S.C.
§ 103 as obvious over the combination of Chen and Kastner.
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IV. ORDER
Accordingly, it is
ORDERED that adverse judgment is entered against Patent Owner
with respect to claims 1 and 25 of U.S. Patent No. 8,261,752 B2, and, thus,
claims 1 and 25 will be canceled;
FURTHER ORDERED that claims 2–24 of U.S. Patent No.
8,261,752 B2 are held 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.
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PETITIONER:
Barry W. Sufrin
Gilberto E. Espinosa
MICHAEL BEST & FRIEDRICH LLP
bwsufrin@michaelbest.com
geespinoza@michaelbest.com
Carrie A. Beyer
DRINKER BIDDLE & REATH LLP
Carrie.Beyer@dbr.com

PATENT OWNER:
Nathaniel L. Dilger
Kainoa Asuega
ONE LLP
ndilger@onellp.com
kasuega@onellp.com
iprdockets@onellp.com