PTAB

IPR2016-01302

Nu Mark LLC v. Fontem Holdings 1 BV

Log In
Key Events
Petition
petition Intelligence

1. Case Identification

2. Patent Overview

  • Title: ELECTRONIC CIGARETTE
  • Brief Description: The ’239 patent relates to an electronic cigarette featuring a light source at one end. The core inventive concept asserted during prosecution is that the light source is configured to gradually change in luminance when a user inhales, thereby simulating the visual effect of a burning conventional cigarette.

3. Grounds for Unpatentability

Ground 1: Claims 1, 2, 9, and 10 are obvious over Janning in view of Hickle.

  • Prior Art Relied Upon: Janning (Patent 3,479,561) and Hickle (Application # 2004/0149282).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Janning, which discloses a "Breath Operated Device" in the form of a simulated cigar, teaches most limitations of the challenged claims, including a housing, a battery, and a light source that activates upon user inhalation. However, Janning’s light source is only on/off. Petitioner asserted that Hickle, a reference describing respiratory monitoring systems, supplies the key missing limitation. Hickle teaches using a differential pressure sensor to detect a user’s breath and a control circuit to vary the brightness of an LED in proportion to the detected inhalation pressure. The combination of Janning's basic device with Hickle's control system was alleged to render the claims obvious. For dependent claims, Janning was shown to disclose a battery (claim 2), a multi-section housing (claim 9), and Hickle was shown to disclose the use of red LEDs, making the limitation of claim 10 an obvious design choice.
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would have been motivated to improve the realism of Janning’s simulated cigar. Janning itself criticized prior simulated devices as being "limited" in their degree of simulation, providing a clear design incentive for improvement. A POSITA would recognize that a key visual characteristic of a real cigarette is the gradual brightening of its ember during a puff. Hickle, as analogous art, provided a known and logical solution for achieving this effect by linking a gradual change in luminance to detected airflow.
    • Expectation of Success: Petitioner contended that a POSITA would have had a reasonable expectation of success in combining the references. The functionality taught in Hickle (e.g., using pulse width modulation to control LED brightness) was a well-known technique. Furthermore, the combination was compatible, as both Janning’s activation mechanism and Hickle’s control system rely on detecting the same physical phenomenon: a pressure differential created by user inhalation.

Ground 2: Claims 1, 2, 9, and 10 are obvious over Hongbin in view of Hickle.

  • Prior Art Relied Upon: Hongbin (Chinese Patent Publication No. CN 1233436A) and Hickle (Application # 2004/0149282).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented an alternative primary reference. Petitioner argued that Hongbin discloses a "liquid odor cigarette" that constitutes a basic electronic cigarette with a housing, a power source, and an indicator lamp that illuminates upon inhalation. As in Ground 1, Hongbin’s light source is only on/off. Hickle was again relied upon to teach the missing elements: a control circuit connected to an airflow sensor configured to provide a gradual change in luminance. The arguments for the dependent claims were analogous to Ground 1, with Hongbin providing the basic platform containing a battery (claim 2), a two-section housing (claim 9), and Hickle teaching the use of a red LED (claim 10).
    • Motivation to Combine: The motivation was substantially the same as in Ground 1. Hongbin expressed a design goal of making its device "more real." A POSITA seeking to achieve this goal would naturally aim to replicate the gradual brightening of a real cigarette ember. Hickle provided a known technical solution directly relevant to this problem by demonstrating how to make a light source responsive to the magnitude of a user's breath.
    • Expectation of Success: Success would have been predictable and expected. The modification involved adding a known control functionality (from Hickle) to an existing device (Hongbin) without altering Hongbin's fundamental operation. The additional functionality taught by Hickle is fully consistent and compatible with Hongbin’s suction-based activation mechanism.

4. Key Claim Construction Positions

  • Petitioner argued that the term "electronic cigarette," which appears in the preambles of all challenged claims (1, 2, 9, and 10), should be construed as non-limiting. The argument was based on the assertion that the claims recite structurally complete inventions without the preamble language and that the preamble does not provide an antecedent basis for any limitations in the claim body. Petitioner also noted that the Patent Owner had taken a similar non-limiting position in related district court litigation.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 9, and 10 of the ’239 patent as unpatentable under 35 U.S.C. §103.