Nu Mark LLC v. Fontem Holdings 1 BV

1. Case Identification

• Case #: IPR2016-01641
• Patent #: 9,326,548
• Filed: August 18, 2016
• Petitioner(s): Nu Mark LLC
• Patent Owner(s): Fontem Holdings 1 B.V.
• Challenged Claims: 1-14

2. Patent Overview

• Title: ELECTRONIC CIGARETTE
• Brief Description: The ’548 patent discloses an electronic cigarette comprising a battery assembly, an atomizer assembly, and a liquid storage component within a housing. The atomizer includes a porous component or fiber member set on a frame to wick liquid to a heating wire coil for vaporization.

3. Grounds for Unpatentability

Ground 1: Anticipation Over Intervening Prior Art - Claims 1-14 are unpatentable under 35 U.S.C. § 102(b) as anticipated by Han.

• Prior Art Relied Upon: Han (Application # 2009/0095311).
• Core Argument for this Ground:
  • Priority Date Challenge: Petitioner’s entire argument rested on establishing that the ’548 patent was not entitled to the May 15, 2007 filing date of its parent application. Petitioner argued the parent application’s disclosure was narrowly and consistently limited to an electronic cigarette with a “detachable” cigarette bottle assembly. Every section of the parent application—including the Abstract, Contents of Invention, drawings, and claims—explicitly described the invention as including this detachable feature and touted its benefits for easy replacement. Because the parent application allegedly provided no written description support for a non-detachable liquid storage component, the broadened claims of the ’548 patent (which do not require detachability) could not claim priority to it.
  • During prosecution of a continuing application, the applicant submitted a substitute specification that systematically removed all instances of the words “detachable” and “this invention.” Petitioner contended that these changes, improperly characterized as grammatical corrections, constituted new matter intended to broaden the scope of the original disclosure.
  • Prior Art Mapping: With the priority claim invalidated, Petitioner argued the ’548 patent’s effective filing date was its actual filing date of April 3, 2014. The Han reference, which is the publication of the ’548 patent’s own parent application, was published on April 16, 2009. This publication date made Han an intervening prior art reference under pre-AIA §102(b). Petitioner asserted that because Han’s disclosure is substantively identical to the specification from which the ’548 patent derives, it inherently discloses every limitation of the challenged claims. The only material difference argued was that the parent disclosure was limited to a detachable component, a limitation that was removed from the challenged claims, thereby making the claims a broader, anticipated version of the invention disclosed in Han.

4. Key Claim Construction Positions

• "Frame": Petitioner argued for the construction “rigid structure.” This construction was previously adopted by the Board in a prior inter partes review (IPR) proceeding (IPR2015-00859) involving a related patent and by the U.S. District Court for the Central District of California. Petitioner contended this construction was consistent with the specification and claims, rejecting a narrower interpretation that would require the frame to be designed to hold up another component.
• "Porous Component": Petitioner adopted the Board’s previous construction from IPR2015-00859, defining the term 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.”

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-14 of the ’548 patent as unpatentable.