PTAB

IPR2015-01513

JT Intl SA v. Fontem Holdings 1 BV

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Electronic Cigarette
  • Brief Description: The ’957 patent discloses an electronic cigarette comprising a battery assembly and a separate atomizer assembly. The two assemblies are designed to be mechanically and electrically connected by corresponding primary and secondary screwthread electrodes.

3. Grounds for Unpatentability

Ground 1: Claims 1, 3, 5-9, and 23 are obvious over Hon '134 in view of Takeuchi.

  • Prior Art Relied Upon: Hon '134 (Canadian Patent Application No. 2752134) and Takeuchi (Patent 6,155,268).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hon '134 discloses an electronically controlled cigarette with nearly all claimed features, including separate battery and atomizer assemblies connected by screw threads, a microcontroller, and a sensor. The key limitation added during prosecution to achieve allowance—a heater coil wound around a "porous component"—was allegedly missing from Hon '134. However, Petitioner contended that the uncited Takeuchi reference explicitly discloses using a porous component, such as bundled fibers, as a liquid passageway for evaporating flavor material in a simulated smoking device.
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Takeuchi’s porous component with the device in Hon '134 to provide more efficient and uniform heating due to greater surface area contact. This combination would also offer greater ease of manufacturing compared to the pump or valve system suggested in Hon '134.
    • Expectation of Success: The combination involved applying a known wicking and heating element (Takeuchi) to a known electronic cigarette architecture (Hon '134), presenting a predictable outcome.

Ground 2: Claims 1-12, 14-18, and 21-24 are obvious over Cox in view of Pienemann and Whittemore.

  • Prior Art Relied Upon: Cox (Patent 6,234,167), Pienemann (WO 00/28843), and Whittemore (Patent 2,057,353).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Cox teaches a programmable inhaler with many core features of the ’957 patent, such as separable durable (battery, controller) and disposable (heater, material source) components. However, Cox does not explicitly disclose screwthread electrodes for connection. Petitioner argued that both Whittemore (a vaporizing vessel connected via plug and socket) and Pienemann (a cigarette-like device with screw thread electrodes) teach this missing element. Furthermore, Whittemore discloses a heater coil wound around a porous wick, satisfying another key limitation.
    • Motivation to Combine: A POSITA would have been motivated to replace the connection mechanism in Cox with the screwthread electrodes from Whittemore or Pienemann. This modification would make the Cox inhaler more cylindrical and cigarette-like, improve reusability, and create a more robust connection suitable for the consumer market. Market forces would have encouraged adapting the Cox medical inhaler for tobacco applications.
    • Expectation of Success: Using well-known threaded connectors to join two components of an electronic device was a simple and predictable design choice with a high expectation of success.

Ground 3: Claims 1-3, 6-12, 14, 16-18, and 21-24 are obvious over Susa in view of Pienemann.

  • Prior Art Relied Upon: Susa (EP 0 845 220 A1) and Pienemann (WO 00/28843).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued Susa discloses a simulated smoking device with detachable mouth and power portions connected by a mechanical screw connection. However, Susa required a separate electrical cable to connect the portions electrically. Pienemann was cited as disclosing integrated screwthread electrodes that provide both mechanical connection and electrical contact, including an air intake hole through the electrode.
    • Motivation to Combine: A POSITA would combine Pienemann's integrated screwthread electrodes with Susa's device to simplify the design and improve user experience. This combination would obviate the need for Susa's cumbersome external cable by creating a single, integrated mechanical and electrical connection, which was a known and desirable feature for such devices.
    • Expectation of Success: Replacing a separate mechanical fastener and electrical cable with a single, well-understood component that performs both functions (a screwthread electrode) was a routine design choice with predictable results.

  • Additional Grounds: Petitioner asserted numerous additional obviousness challenges based on other combinations, such as using Counts (Patent 5,060,671) as a primary reference for its MOSFET/fiber component and combining it with references like Whittemore and McRae (Application # 2003/0033055) to add screwthread electrodes and microcontroller functionality. Further grounds added references like Hon '043 (CN 2719043) to teach a sensor membrane.

4. Key Claim Construction Positions

  • Screwthread Electrode: Petitioner argued for its plain and ordinary meaning, consistent with its use in the specification, proposing the construction "a helical ridge formed on a fastening body that has an electrical conductor for passing electric current." This construction was central to mapping prior art connectors from Whittemore and Pienemann onto the claims.
  • Porous Component: Petitioner proposed the construction "a part through which matter can pass or be absorbed." This broad construction was important for arguing that fiber materials and wicks disclosed in prior art like Takeuchi and Whittemore met the claim limitation that was added to secure allowance of the ’957 patent.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-18 and 21-24 of Patent 8,375,957 as unpatentable under 35 U.S.C. §103.