RJ Reynolds Vapor Co v. Fontem Holdings 1 BV

1. Case Identification

• Case #: IPR2018-00634
• Patent #: 9,456,632
• Filed: March 1, 2018
• Petitioner(s): R.J. Reynolds Vapor Company
• Patent Owner(s): Fontem Holdings 1 B.V.
• Challenged Claims: 14-16 and 18

2. Patent Overview

• Title: Electronic Cigarette
• Brief Description: The ’632 patent relates to an electronic cigarette comprising a power source (battery), an atomizer assembly, and a liquid storage component contained within an elongated housing. The atomizer includes a heating wire wound on a porous component to vaporize liquid for inhalation.

3. Grounds for Unpatentability

Ground 1: Claims 14-16 and 18 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 disclosed all major elements of the challenged claims. Brooks teaches an electronic smoking device with a reusable controller (containing a battery assembly) and a disposable cartridge (atomizer assembly) that fit within an elongated cylindrical housing, as Brooks discloses its controller can take the form of a "reusable cigarette holder." Brooks also discloses a liquid storage component, air inlets, and an atomization chamber with front and back openings for airflow.

  • The key feature allegedly missing from Brooks but supplied by Whittemore is a "heating wire coil wound on a porous component." Brooks discloses a heating element in "intimate contact" with a porous substrate, which Petitioner contended a POSITA would understand as two separate components. Whittemore explicitly teaches a heating filament coiled around a porous wick to vaporize a liquid. Petitioner asserted that combining Whittemore's specific heating element with the device of Brooks would render claim 14 obvious.

  • For the dependent claims, Petitioner argued:

    • Claim 15 (uniform diameter chamber) is met because Brooks describes its atomization chamber components (e.g., tube 66, collar 49) as cylindrical, which implies a uniform diameter.
    • Claim 16 (heating coil outer diameter less than chamber inner diameter) is inherently met because Brooks’s heating element is shown fitting inside the atomization chamber.
    • Claim 18 (restriction component) is met by a "necked portion" of collar 49 in Brooks, which narrows the air passageway, creating a restriction hole smaller than the open front end of the hollow component.

  • Motivation to Combine (for §103 grounds): Petitioner argued a person of ordinary skill in the art (POSITA) would combine Brooks and Whittemore to achieve a predictable result with improved performance. Brooks emphasizes the importance of rapid and efficient heating. A POSITA would have recognized that substituting Brooks’s generalized heating element with Whittemore's well-known and efficient coiled heater/wick design was a simple, known technique to improve heat transfer and vaporization efficiency.

  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because the combination amounted to a simple substitution of one known heating element for another to perform the same function (vaporizing a liquid) in a similar device.

4. Key Claim Construction Positions

• "elongated cylindrical housing": Petitioner did not propose a new construction but instead adopted the Board’s construction from prior related IPRs. In those cases, the Board construed "housing" as not being limited to a single, one-piece shell. This construction is important for Petitioner's argument that the two-part housing in Brooks (a reusable controller housing and a disposable cartridge housing) meets the claim limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• "porous substrate in intimate contact with resistance heating components" (in Brooks): A central contention was that a POSITA would understand this phrase in Brooks to necessarily describe two separate and distinct structures: (1) a porous substrate for holding liquid and (2) a resistance heating component that touches it. Petitioner supported this by arguing that an object cannot be in "contact" with itself and by referencing other prior art (including Whittemore) that consistently used "contact" to describe the relationship between a distinct heating element and a separate porous body or wick. This interpretation was crucial for establishing Brooks as a primary reference that could be modified by Whittemore.

6. Arguments Regarding Discretionary Denial

• Petitioner presented substantial arguments that discretionary denial under §325(d) would be inappropriate. The core reasons were:
  • The invalidity ground was not redundant of grounds previously considered by the PTO during prosecution. The specific combination of Brooks and Whittemore was never considered, as Brooks was not cited by the Examiner. While similar art was cited, Petitioner asserted its arguments and evidence, particularly the expert declaration of Dr. Robert Sturges, were distinct from what was before the Examiner.
  • Petitioner argued that the simple citation of Whittemore in an Information Disclosure Statement (IDS) without substantive discussion by the Examiner is insufficient reason to decline institution.
  • Petitioner noted this was its first and only IPR petition filed against the ’632 patent, preemptively countering any potential arguments regarding serial petitions.

7. Relief Requested

• Petitioner requested that the Board institute an inter partes review and find claims 14-16 and 18 of the ’632 patent unpatentable as obvious.