Logic Technology Development, LLCv.Fontem Holdings 1 B.V.

Patent Trial and Appeal Board

Jul 7, 2015

12226819 (P.T.A.B. Jul. 7, 2015)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: July 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
LOGIC TECHNOLOGY DEVELOPMENT, LLC,
Petitioner,
v.
FONTEM HOLDINGS 1 B.V.,
Patent Owner.
__________________
Case IPR2015-00098
Patent 8,375,957 B2
__________________

Before GRACE KARAFFA OBERMANN, DONNA M. PRAISS, and
JO-ANNE M. KOKOSKI, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION

Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

IPR2015-00098
Patent 8,375,957 B2

2

On June 10, 2015, Petitioner filed a Request for Rehearing (Paper 9,
“Rehearing Request” or “Rehearing Req.”) of a Decision on Institution (Paper 8,
“Dec. on Inst.”) wherein the Board declined to institute an inter partes review of
claims 1–4, 6–18, and 21–24 of U.S. Patent No. 8,375,957 B2 (Ex. 1001, “the ’957
patent”) based on challenges raised in the Petition (Paper 2, “Pet.”). For reasons
discussed below, we deny Petitioner’s Rehearing Request.
ANALYSIS
When considering a request for rehearing, the Board reviews its decision for
an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if
the decision is based on an erroneous interpretation of law, if a factual finding is
not supported by substantial evidence, or if an unreasonable judgment is made in
weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277,
1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir.
2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The party
requesting rehearing bears the burden of showing that the decision should be
modified, and “[t]he request must specifically identify all matters the party
believes the Board misapprehended or overlooked.” 37 C.F.R. § 42.71(d).
The challenged claims relate to an apparatus that may function as an
electronic cigarette, and require a battery assembly and an atomizer assembly,
which are housed separately and connected by mated screwthread electrodes.
Ex. 1001, Abstract, claims 1, 20, 23 (independent claims). An external
screwthread electrode, located on one end of the battery assembly housing, mates
with an internal screwthread electrode, located on one end of the atomizer
assembly housing. Id. at Abstract, 3:9–10, 3:27–28, 3:49–53; see claims 1, 10, 23.
IPR2015-00098
Patent 8,375,957 B2

3

The thrust of the Rehearing Request is that the Board misapprehended or
overlooked information sufficient to show that Gilbert
1
suggests modifying Hon
2
to
include a separate housing for the battery assembly, using screwthread electrodes
to mate the battery assembly to the atomizer assembly. Rehearing Req. 3–12. The
Petition cited Gilbert as evidence that “the use of threaded electric sockets was
well known in the art.” Pet. 29.
Petitioner identifies argument, set forth in the Petition, that Gilbert discloses
a structure that “allows two separate housings to be electrically connected via
screwthread electrodes.” Rehearing Req. 8 (quoting Pet. 29–30). The Petition,
however, did not direct us to a disclosure in Gilbert that would have led one to
modify Hon to include a separate battery housing having on one end an external
screwthread that is an electrode. Pet. 21–22, 28–30; see Patent Owner’s
Preliminary Response (Paper 7, “Prelim. Resp.”) 30–31 (explaining why Gilbert
does not disclose an external screwthread that is an electrode).
On the contrary, in support of the contention that such a modification would
have been obvious, the Petition cited a statement, made by the Examiner during
patent prosecution, that “it is known in many arts to provide devices in several
pieces wherein each piece is connected by mating threads.” Pet. 22 (quoting
Ex. 1016, 7). For reasons stated in our Decision, we remain unpersuaded that the
Petition identifies adequate objective support for that statement. Dec. on Inst. 8;
see Pet. 21–23. Critically lacking in the Petition, moreover, is information
sufficient to show that one having ordinary skill in the art would have been led to

1
H.A. Gilbert, US Patent No. 3,200,819, issued Aug. 17, 1965 (Ex. 1007).

2
Lik Hon, US Patent Pub. No. 2007/0267031 A1, published Nov. 22, 2007
(Ex. 1005).
IPR2015-00098
Patent 8,375,957 B2

4

modify Hon by placing an external screwthread electrode on a battery assembly
that is separate from an atomizer assembly. See Prelim. Resp. 30–31 (explaining
why Gilbert does not disclose an external screwthread that is an electrode).
Nothing in the Rehearing Request persuades us of error on this critical point:
The Petition fails to identify information adequate to show “why some components
are in one housing assembly and others are in another housing assembly” in the
proposed modified apparatus of Hon. Dec. on Inst. 11 (quoting Prelim. Resp. 24).
In that regard, the Petition identifies no “disclosure in the prior art that would have
led to the particular arrangement of elements specified in the claims, including a
battery assembly housing having, on one end, an external screwthread electrode;
and an atomizer assembly housing having, on one end, a mating internal
screwthread electrode.” Dec. on Inst. 11.
On this record, we are not persuaded that our Decision constitutes an abuse
of discretion.
CONCLUSION
We deny Petitioner’s request for rehearing.

IPR2015-00098
Patent 8,375,957 B2

5

PETITIONER:
Victor de Gyarfas
vdegyarfas@foley.com

Paul Hunter
phunter@foley.com

PATENT OWNER:
Michael Wise
mwise@perkinscoie.com

Joseph Hamilton
jhamilton@perkinscoie.com