PTAB

IPR2014-01289

NJOY Inc v. Fontem Holdings 1 BV

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Atomization Cigarette
  • Brief Description: The ’331 patent discloses an electronic cigarette comprising a housing containing a battery, control circuitry, a sensor, a liquid supply, and an atomizer. The atomizer includes a heating element within a cavity that vaporizes liquid supplied from the liquid supply via capillary action.

3. Grounds for Unpatentability

Ground 1: Obviousness over Takeuchi, Howell, and Adiga - Claims 3-5 are obvious over Takeuchi in view of Howell and Adiga.

  • Prior Art Relied Upon: Takeuchi (Patent 6,155,268), Howell (Patent 5,743,251), and Adiga (Patent 6,598,607).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Takeuchi, a “flavor-generating device for enjoying simulated smoking,” disclosed the core electronic cigarette architecture of claim 2. This included a housing, power source, sensor, control circuit, and an atomizer that uses a heater to gasify a liquid transported from a container via a capillary tube. To meet the limitations of dependent claims 3-5, Petitioner asserted that a person of ordinary skill in the art (POSITA) would have modified Takeuchi with teachings from Howell and Adiga. Howell was cited for teaching various heating element materials, including a platinum layer, nickel-chromium, and iron-chromium-aluminum with yttria (a rare earth element), as recited in claim 3, and for disclosing a heating wire wrapped in a coil, as recited in claim 4. Adiga was cited for teaching a liquid supply comprising a porous body (e.g., cotton or other fabric materials) to prevent leakage, as recited in claim 5.
    • Motivation to Combine: Petitioner contended a POSITA would combine Takeuchi with Howell to improve the durability and lifespan of the heating element by using known oxidation-resistant materials. A POSITA would combine Takeuchi with Adiga to solve the known problem of liquid leakage from the reservoir—a desirable goal explicitly stated in Takeuchi—by incorporating Adiga’s well-known solution of a porous medium.
    • Expectation of Success: The proposed combinations involved applying known, conventional solutions to predictable problems in the field of aerosol-generating devices, and thus a POSITA would have had a high expectation of success.

Ground 2: Obviousness over Cox and Cox ’02 - Claim 5 is obvious over Cox in view of Cox ’02.

  • Prior Art Relied Upon: Cox (Patent 6,234,167) and Cox ’02 (Patent 6,501,052).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cox disclosed a portable aerosol generator explicitly described as applicable to “electrical smoking systems.” Cox taught all elements of claim 2, including a housing, battery, control circuitry, sensor, and an atomizer that heats a liquid supplied from a source. Petitioner noted Cox incorporates the Howell patent by reference, which discloses a capillary tube, thereby teaching movement of liquid via capillary action. To meet the “porous body” limitation of claim 5, Petitioner relied on Cox ’02. Cox ’02, by the same inventor and in the same field, taught the use of a porous plug to control liquid flow, prevent overheating, and reduce degradation of the aerosolized liquid.
    • Motivation to Combine: A POSITA seeking to improve the performance of the Cox device would have been motivated to prevent the known problem of liquid overheating and degradation. It would have been natural to consult other work by the same inventor, such as Cox ’02, which directly addressed this problem by teaching the beneficial use of a porous plug to regulate liquid flow.
    • Expectation of Success: A POSITA would have had a clear expectation of success in implementing the porous plug of Cox ’02 into the device of Cox, as it was a straightforward application of a known component to achieve a predictable improvement.

Ground 3: Obviousness over Voges, Sekiya, and Baker - Claims 3-5 are obvious over Voges in view of Sekiya and Baker.

  • Prior Art Relied Upon: Voges (Patent 5,894,841), Sekiya (Patent 4,990,939), and Baker (Patent 4,771,295).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Voges disclosed a “cigarette substitute” for nicotine delivery that used thermal bubble jet (inkjet) technology. Voges taught the fundamental structure of claim 2, including a housing, battery, microprocessor, sensor, and an atomizer (droplet ejection device) supplied with liquid via capillary action. Sekiya was cited for its teachings on improving thermal bubble jet devices, including the use of corrosion-resistant heating element materials like platinum, Nichrome, and rare earth element borides (claim 3) and the use of a heating coil (claim 4). Baker was cited for teaching the use of a reticulated polyurethane foam as a porous body in an inkjet reservoir to reduce device size while increasing liquid capacity (claim 5).
    • Motivation to Combine: A POSITA would combine Voges with Sekiya to improve the durability and response time of the thermal bubble jet atomizer, a known area of improvement in the art. A POSITA would combine Voges with Baker to make the device smaller and more cigarette-like while improving liquid storage capacity, addressing a common design goal for such products by using a known space-saving solution from the same technical field.
    • Expectation of Success: The proposed modifications involved integrating known improvements from the specific field of thermal inkjet technology directly into the Voges device, which itself used that same technology. This would have been a routine design choice with a high expectation of success.
  • Additional Grounds: Petitioner asserted additional obviousness challenges based on Takeuchi alone (Claims 1-2), Cox alone (Claims 1-4), and Voges alone (Claims 1-2), but these grounds relied on similar arguments for the base combination of elements.

4. Key Claim Construction Positions

  • Petitioner proposed constructions for several key terms. The construction for “physical contact” (claim 1) was central to distinguishing the invention from prior art during prosecution. Petitioner argued that, for the purpose of the IPR, the term should be construed as “connected so as to allow movement of liquid between the components by capillary action.” This construction was based on arguments the patent applicant made to the Examiner to secure allowance of the claims.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-5 of the ’331 patent as unpatentable under 35 U.S.C. §103.