RJ Reynolds Vapor Co v. Fontem Holdings 1 BV

1. Case Identification

• Case #: IPR2016-01268
• Patent #: 8,365,742
• Filed: July 2, 2016
• Petitioner(s): R.J. Reynolds Vapor Company
• Patent Owner(s): Fontem Holdings 1 B.V.
• Challenged Claims: 2-3

2. Patent Overview

• Title: Aerosol Electronic Cigarette
• Brief Description: The ’742 patent discloses an electronic cigarette comprising a housing containing a battery assembly, a liquid storage component, and an atomizer assembly. The atomizer assembly includes a frame with a run-through hole, a porous component for wicking liquid, and a heating wire wound on the porous component to generate an aerosol.

3. Grounds for Unpatentability

Ground 1: Claims 2-3 are obvious over Hon in view of Whittemore.

• Prior Art Relied Upon: Hon (Chinese Patent No. 2719043Y) and Whittemore (Patent 2,057,353).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Hon ’043, an electronic cigarette patent, discloses every element of the challenged claims except for a heating wire wound on a porous component. Hon discloses a complete electronic cigarette with a housing, battery, liquid storage, air inlets, and an atomizer assembly. The atomizer in Hon features a heating element (26) located within an atomization cavity (10), separate from the liquid droplets it heats. To supply the missing element, Petitioner pointed to Whittemore, which discloses a vaporizing unit with a heating filament (3) explicitly wound on a porous wick (D) that is in direct contact with the liquid to be vaporized.
  • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine Hon and Whittemore to improve thermal efficiency. The configuration in Hon, where the heating element is separated from nicotine droplets by air gaps, was described as inefficient due to the poor thermal conductivity of air. A POSITA would recognize that Whittemore’s design—where the heating wire is in direct contact with a liquid-saturated wick—is more thermally efficient. Therefore, a POSITA would be motivated to substitute Whittemore’s wick/heating wire configuration for Hon's heating element to achieve the predictable results of more efficient heating, lower operating temperatures, and improved battery life.
  • Expectation of Success (for §103 grounds): A POSITA would have a reasonable expectation of success because the proposed modification was a simple substitution of one known heating element for another (Whittemore’s wick/heater for Hon’s heater) to obtain the predictable benefit of improved heat transfer.

4. Key Claim Construction Positions

• "frame": Petitioner accepted the Board’s prior construction of "frame" from a related case (IPR2015-00859) as meaning a "rigid structure." This construction was central to Petitioner's argument that the "atomization cavity wall 25" in Hon meets this limitation.
• "porous component substantially surrounded by the liquid storage component": As this term was not explicitly defined in the ’742 patent, Petitioner argued it should be construed to encompass the structure shown in Figure 1 of the patent. In that figure, a protuberance of the atomizer’s porous component is in physical contact with the liquid storage component to facilitate liquid transfer. This construction was vital to mapping the functionally identical structure of Hon's atomizer to this claim limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• Support of Porous Component by Frame in Hon: A central technical argument addressed a deficiency identified by the Board in a prior IPR. Petitioner asserted that a POSITA would understand Hon's "atomization cavity wall 25" (the "frame") provides physical support for the "porous body 27." The argument, supported by an expert declaration, stated that support is provided via a friction fit or bonding to prevent axial displacement during assembly. Further, the wall provides radial support to prevent the porous body from collapsing into the atomization cavity if a user blows into the device.

6. Arguments Regarding Discretionary Denial

• Overcoming Deficiencies of Prior IPR: Petitioner acknowledged that the Board had previously denied institution in IPR2015-00859, which was based on the same prior art combination. Petitioner argued that discretionary denial under §325(d) would be inappropriate because this petition was not substantially the same as the prior one. It contended this petition corrected the prior deficiencies by providing a more fully developed record and rationale, including:
  • A more detailed explanation with rational underpinnings for the motivation to combine Hon and Whittemore, focusing on thermodynamic principles.
  • A new, specific technical argument, supported by expert testimony, explaining how the frame in Hon provides physical support for the porous component, directly addressing a finding of failure of proof in the earlier proceeding.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 2 and 3 of the ’742 patent as unpatentable under 35 U.S.C. §103.