PTAB

IPR2017-00342

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 ’551 patent discloses an electronic cigarette composed of a battery assembly and an atomizer assembly. The components are joined by a threaded connection that provides both physical and electrical linkage, allowing a liquid to be vaporized by a heating element in the atomizer.

3. Grounds for Unpatentability

Ground 1: Claims 1-7, 9, 11, and 15 are obvious over Brooks in view of Whittemore.

  • Prior Art Relied Upon: Brooks (Patent 4,947,874) and Whittemore (Patent 2,057,353).
  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Brooks, the primary reference, discloses a two-part electronic smoking device with a reusable battery controller and a disposable atomizer cartridge. Brooks’ cartridge contains a heating element, a porous substrate for holding an aerosol-forming liquid, and an airflow path, teaching most limitations of the challenged claims. However, Brooks uses a plug-in connector and does not explicitly disclose concentric electrodes or a heater wire wound perpendicularly to the housing axis. Petitioner asserted that Whittemore, a 1936 patent for a liquid medication vaporizer, remedies these deficiencies. Whittemore taught a threaded electrical connector with concentric inner and outer electrodes (a central conducting button and an outer threaded shell). It also explicitly disclosed a heating filament wire coiled around a porous wick. Petitioner contended that modifying Brooks with these teachings from Whittemore would result in the claimed invention, including an atomizer with concentric electrodes and a heater wire wound on a porous body. For dependent claims, Petitioner argued that features like a fiber material for the porous body (claim 4) and a liquid supply containing nicotine (claim 6) were either disclosed in Brooks or made obvious by other prior art demonstrating well-known options for aerosol-forming liquids.

    • Motivation to Combine: Petitioner presented two primary motivations for the combination. First, a person of ordinary skill in the art (POSITA) would combine the references to improve the device's durability and ease of use. A POSITA would replace Brooks' plug-in connector with Whittemore's threaded connector because threaded connections are a well-known, robust, and reliable method for components requiring frequent assembly and disassembly, such as Brooks' disposable cartridge. Second, a POSITA would adapt Brooks’ heating element to be a wire coiled around the porous substrate, as taught by Whittemore, to improve heating efficiency. Brooks itself emphasized the importance of rapid and efficient heating, and coiled wires were a known technique for promoting effective heat transfer in vaporizing devices.

    • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success because the combination involved the simple substitution of known, interchangeable components to achieve predictable results. Replacing a plug-in connector with a threaded one would predictably create a secure electrical and mechanical connection. Likewise, coiling the heater wire around the porous body would predictably improve the efficiency of vaporizing the liquid, a well-understood principle.

4. Key Claim Construction Positions

  • "with the inner electrode concentric with the outer electrode": Petitioner argued that because the patent specification does not define this term, it should be construed according to its plain meaning. Based on dictionary definitions of "electrode" (an electric conductor) and "concentric" (having a common center), Petitioner proposed the construction: "with an inner electrical conductor sharing a common center with an outer electrical conductor." This construction was critical to Petitioner's argument, as it contended Whittemore explicitly discloses this arrangement, which is absent from Brooks.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 9, 11, and 15 of the ’551 patent as unpatentable.