PTAB

IPR2015-00098

Logic Technology Development LLC v. Fontem Holdings 1 BV

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Cigarette
  • Brief Description: The ’957 patent discloses an electronic cigarette designed to substitute for real cigarettes. The device consists of three main parts: a battery assembly, an atomizer assembly, and a solution assembly (cartridge), which connect to form a single unit. Key internal components include a battery, a micro-controller unit, a sensor, an atomizer with a heater coil, and a liquid storage area.

3. Grounds for Unpatentability

Ground 1: Claims 1-4, 6-9, 16, and 21-24 are obvious over Hon in view of Gilbert, Voges, and Whittemore.

  • Prior Art Relied Upon: Hon (China Patent CN 2719043), Gilbert (Patent 3,200,819), Voges (Patent 5,894,841), and Whittemore (Patent 2,057,353).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hon, whose named inventor is the same as the ’957 patent’s inventor, discloses the foundational electronic cigarette structure, including a battery, electronic circuit, sensor, atomizer, and a liquid-supplying bottle. However, Hon does not explicitly teach certain features added during prosecution to overcome rejections. To supply these missing elements, Petitioner asserted that Gilbert teaches the use of separable housings connected by primary and secondary screwthread electrodes, a common method for creating modular, rechargeable devices. Voges was cited to teach the use of a micro-controller unit (MCU) to provide programmable control, an established technique for improving electronic device functionality. Finally, Whittemore, a 1936 patent, was introduced to teach the specific limitation that allowed the ’957 patent claims: a heater coil wound around a porous wicking component (e.g., a thread or string) to efficiently vaporize a liquid via capillary action.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA), starting with the basic e-cigarette design in Hon, would combine these references to create a more commercially viable and functional product. A POSITA would incorporate Gilbert’s separable, screw-threaded assemblies to allow for recharging or replacing the battery without discarding the entire device. It would have been obvious to add an MCU as taught by Voges to provide more sophisticated control over the device’s operation, a conventional upgrade for electronic devices. To improve vaporization, a POSITA would look to known heating methods and find it obvious to implement Whittemore’s efficient design of a heater coil wound directly on a porous wick.
    • Expectation of Success: Combining these known elements for their established purposes would have yielded predictable results. Each modification—modularity, programmable control, and efficient heating—was a well-understood improvement in the respective arts, and a POSITA would have reasonably expected the combination to function as intended.

Ground 2: Claims 10-12, 14, 15, 17, 18, and 22 are obvious over Hon in view of Gilbert and Whittemore.

  • Prior Art Relied Upon: Hon (CN 2719043), Gilbert (Patent 3,200,819), and Whittemore (Patent 2,057,353).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground is similar to Ground 1 but targets a different set of claims, notably independent claim 10, and omits Voges (the MCU reference). Petitioner argued that the combination of Hon, Gilbert, and Whittemore teaches all limitations of these claims. Hon provides the base device. Gilbert provides the primary and secondary screwthread electrodes for connecting a separate battery and atomizer assembly. Whittemore provides the heater coil wound around a porous component. For limitations specific to claim 10, such as the "solution assembly" with a "suction nozzle," Petitioner contended that Hon’s "mouthpiece" and "liquid-supplying bottle" meet these limitations.
    • Motivation to Combine: The motivation is identical to that in Ground 1, absent the rationale for adding an MCU. A POSITA would combine Hon with Gilbert to achieve a separable, rechargeable device and with Whittemore to improve atomization efficiency. These modifications represent the simple substitution of one known element for another or the combination of known elements to obtain predictable results, enhancing the product's commercial appeal and functionality.
    • Expectation of Success: A POSITA would have had a high expectation of success, as the combination merely integrates known, compatible components to improve a known device (Hon's e-cigarette) in a predictable manner.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, arguing claim 13 was obvious over the Ground 2 combination in further view of the TechPowerUp article (teaching the use of a MOSFET circuit board), and claim 21 was obvious over the Ground 2 combination in further view of Connors (EP 0533599A1) (teaching a primary screwthread electrode that connects to a charger).

4. Key Claim Construction Positions

  • "Porous Component": Petitioner argued this term should be construed as "a component of the atomizer assembly in the electronic cigarette that includes pores and is permeable to liquid, such as cigarette solution from the cigarette solution storage area." This construction was critical to mapping the fiber-based wicks of the prior art, like the "thread, string or strand" in Whittemore, to the claimed element.
  • "Solution Storage Area": Petitioner proposed this term means "a contained volume such as a cigarette liquid bottle or container." This construction was based on descriptions in the specification of a "cigarette liquid bottle" and was necessary to map this feature to the "liquid-supplying bottle" disclosed in the primary reference, Hon.

5. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-4, 6-18, and 21-24 of the ’957 patent as unpatentable.