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

Patent Trial and Appeal Board

May 11, 2015

12226819 (P.T.A.B. May. 11, 2015)

Trials@uspto.gov Paper: 8
571-272-7822 Entered: May 11, 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 Institution of Inter Partes Review
37 C.F.R. § 42.108
Petitioner requests 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”).
Paper 2 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 7
(“Prelim. Resp.”). Applying the standard set forth in 35 U.S.C. § 314(a),
which requires demonstration of a reasonable likelihood that Petitioner
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would prevail with respect to at least one challenged claim, we decline to
institute an inter partes review of any challenged claim.
I. BACKGROUND
A. Related Proceedings
Petitioner identifies nine district court actions involving the ’957
patent, including one in which Petitioner is the defendant. Pet. 1–2 (citing,
among other lawsuits, Fontem Ventures BV v. Logic Tech. Dev. LLC, No.
CV14-1654 (C.D. Cal.)).
Petitioner also identifies as related an inter partes review that the
Board instituted on December 30, 2013. Id. at 2 (citing CB Distribs., Inc. v.
Fontem Holdings 1 B.V., Case IPR2013-00387, involving U.S. Patent
No. 8,156,944). The Board entered a Final Written Decision in that
proceeding on December 24, 2014. CB Distribs., Inc., Case IPR2013-
00387, Paper 43 (PTAB Dec. 24, 2014).
B. The ’957 Patent (Ex. 1001)
The ’957 patent is directed to an apparatus that may function as an
electronic cigarette, comprising a battery assembly and an atomizer
assembly. Ex. 1001, Abstract. The battery assembly and the atomizer
assembly are housed separately and connected by mated screwthread
electrodes. Id. at claims 1, 10, 23 (independent claims).
Specifically, 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. A cigarette bottle
assembly is inserted into the other end of the atomizer assembly. Id. at
Abstract, 3:9–10, 3:27–28, 3:49–53; see claims 1, 10, 23.

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Those separate components are depicted in Figures 2A, 3, and 4:

Figure 2A is a diagram of a battery assembly including external
screwthread electrode 209.

Figure 3 is a diagram of an atomizer assembly including internal
screwthread electrode 302 and secondary shell 306. Figure 4 is a diagram of
a cigarette bottle assembly.
External screwthread electrode 209 on the battery assembly housing
mates with internal screwthread electrode 302 on the atomizer assembly
housing. The cigarette bottle assembly (Fig. 4) is inserted into secondary
shell 306 on the opposite end of the atomizer. Id. at 3:32–38.
The components may form an integral cigarette-type body, which is
shown in Figure 5A:
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Figure 5A is a diagram of the internal structure of the cigarette-type
body when the battery assembly, atomizer assembly, and cigarette bottle
assembly are in connected arrangement.
The external and internal screwthread electrodes may have holes
through their centers. Id. at 5:59; 6:1 (independent claim 1). The apparatus
may serve as a cigarette substitute or “be loaded with drugs for delivery to
the lung.” Id. at 5:43–44. The external screwthread electrode on the battery
assembly housing may function as a charging interface during the charging
of a lithium ion battery, as shown in Figure 6. Id. at 4:58–61.

Figure 6 is a diagram of a battery charger including
screwthread electrode 601, which mates with external screwthread
electrode 209 on the battery assembly housing.
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C. Illustrative Claim
Claim 1 is illustrative of the subject matter at issue in this proceeding:
1. An electronic cigarette or cigar comprising:

a battery assembly comprising a battery assembly
housing having a first end and a second end, with a
battery, a micro-controller unit (MCU) and a sensor
electrically connected to a circuit board within the battery
assembly housing;

a primary screwthread electrode located on the first end
of the battery assembly housing and having a hole
through its center;

an atomizer assembly comprising:

an atomizer assembly housing having a first end and a
second end;

an atomizer, and a solution storage area in the atomizer
assembly housing;

a secondary screwthread electrode located on the second
end of the atomizer assembly housing and having a hole
through its center, the battery assembly and the
atomizer assembly connected through the primary
and secondary screwthread electrodes; and

with the atomizer including a heater coil wound around
a porous component.

D. Prior Art Relied Upon
Petitioner applies the following prior art references in the grounds of
unpatentability asserted in the Petition:
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Lik Hon, US Patent Pub. No. 2007/026703 A1, published Nov.
22, 2007 (Ex. 1005) (hereinafter “Hon”);1

H.A. Gilbert, US Patent No. 3,200,819, issued Aug. 17, 1965
(Ex. 1007) (hereinafter “Gilbert”);

Robert Martin Voges, US Patent No. 5,894,841, issued Apr. 20,
1999 (Ex. 1009) (hereinafter “Voges”);

Clinton L. Whittemore, Jr., et al., US Patent No. 2,057,353,
issued Oct. 13, 1936 (Ex. 1008) (hereinafter “Whittemore”);

Wizzard, What is a MOSFET, what does it look
like, and how does it work?, Internet Archive Wayback machine,
https://web.archive.org/web/20100305172540/http (2004)
(Ex. 1012) (hereinafter “TechPowerUp”); and

John D. Connors, EP 0533499A1, published May 24, 1993
(Ex. 1011) (hereinafter “Connors”).

E. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of claims 1–4, 6–18, and 21–24
of the ’957 patent on the grounds set forth in the chart below. See Pet. 4–5.
References Basis Claim(s)
Challenged
Hon, Gilbert, Voges, and
Whittemore
§ 103 1–4, 6–9, 16,
23, 24
Hon, Gilbert, and
Whittemore
§ 103 10–12, 14, 15,
17, 18, 22
Hon, Gilbert, Whittemore,
and TechPowerUp
§ 103 13
Hon, Gilbert, Whittemore,
and Connors
§ 103 21

1 Petitioner also refers to a Chinese equivalent of Hon (CN 2719043,
Ex. 1003) and an English translation thereof (Ex. 1004). See, e.g., Pet. 3.
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With the exception of Connors, all of the references stated in those
grounds are identified on the face of the ’957 patent as having been
considered by the Office during patent examination. Ex. 1001 (references
cited). Connors is applied exclusively against dependent claim 21, and does
not bear on our analysis of the grounds asserted against the independent
claims—that is, claims 1, 10, and 23. See Pet. 4–5.
In addition to the prior art references, Petitioner relies on the
Declaration of Gregory Buckner, Ph. D. Ex. 1002.
II. ANALYSIS
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given
their broadest reasonable interpretation in light of the specification of the
patent in which they appear. 37 C.F.R. § 42.100(b); Office Patent Trial
Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012); see In re
Cuozzo Speed Tech., LLC, 778 F.3d 1271, 1278–82 (Fed. Cir. 2015). Claim
terms are given their ordinary and customary meaning, as understood by one
of ordinary skill in the art in the context of the entire disclosure. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
Our analysis centers on whether Petitioner shows sufficiently that it
would have been obvious, at the time of the invention, to provide an
apparatus having a separate battery assembly housing that connects to an
atomizer assembly housing by mated screwthread electrodes, as required by
each of the independent challenged claims. See Ex. 1001 (claims 1, 10, 23).
None of the ’957 patent claim terms requires express construction for the
purposes of this decision.

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B. The Examiner’s Treatment of the
“Mating Threads” Design During Patent Prosecution
Petitioner argues that it would have been obvious to modify Hon “to
provide a separate housing for the battery assembly.” Pet. 23. For support,
Petitioner quotes 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.” Id. at 22
(quoting Ex. 1016, 8). The Examiner cited no objective factual support for
that statement, and neither does Petitioner. Id.
Hon was considered by the Examiner and is raised in every ground
asserted in the Petition. Hon relates to an electronic cigarette, but “does not
disclose a housing for the battery” that is “separate from other components.”
Pet. 22; see Ex. 1005 ¶ 26, Fig. 1 (showing internal structure of Hon’s
electronic cigarette). Figure 1 of Hon is reproduced below.

Figure 1 is a schematic diagram of Hon’s electric cigarette including
battery 2 and shell 14, which houses the other components.
The Examiner considered Hon in the context of a previous version of
the claims and before determining that the claims at issue here, in fact, were
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patentable over Hon and every other reference applied against the
independent claims in the Petition. In that context, the Examiner stated:
[Hon] does fail to teach or suggest that its electronic cigarette is
provided in more than two parts wherein external threads are provided
on the housing where the battery is located, and internal threads are
provided at an end of the housing where the atomizer is located. But,
it is known in many arts to provide devices in several pieces wherein
each piece is connected by mating threads. Therefore, the fact that the
claimed device is in more than two pieces, and the said pieces are
connected by threads does not impart patentability to the claims.
Ex. 1016, 82 (emphasis omitted).
C. Analysis of Grounds of Unpatentability
Each of the challenged claims requires a separate housing for the
battery assembly. 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. Ex. 1001 (claims 1,
10, 23). The placement of the external screwthread electrode on the battery
assembly housing permits that electrode to function as a charging interface
for the battery. Id. at 4:58–61 (battery charger has a “screwthread electrode
that matches the external thread electrode” located on the battery assembly
housing) (internal numbering omitted); see id. at Fig. 6 (showing external
screwthread electrode on the batter assembly housing in mated connection
with charger electrode).
To make out that feature of the claims, Petitioner directs us to the
testimony of Dr. Buckner. Pet. 22–23 (citing Ex. 1002 ¶¶ 71–73).
Dr. Buckner, however, simply agrees with the Examiner’s statement that
connecting “several pieces” of a device with “mating threads” was “known

2 We refer to the exhibit page numbers located in the bottom right-hand
corner of Exhibit 1016.
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in many arts,” without citing any objective support to back it up. Ex. 1002
¶ 71 (citing Ex. 1016, 8). Dr. Buckner’s naked agreement adds no probative
weight to the Examiner’s statement. See 37 C.F.R. § 42.65(a) (opinion
testimony that does not disclose underlying facts or data “is entitled to little
or no weight”); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776
F.2d 281, 294 (Fed. Cir. 1985) (expert opinion lacking objective support is
“of little probative value in a validity determination”).
On this record, we determine that the Examiner’s statement, and
Dr. Buckner’s agreement with it without providing any objective support, is
insufficient to establish that it would have been obvious to modify Hon to
include a separate housing for the battery assembly. See Pet. 21–23. We
acknowledge that the Examiner’s reasoning “may include recourse to logic,
judgment, and common sense available to a person of ordinary skill that
[does] not necessarily require explication in any reference or expert
opinion.” See Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324,
1328–29 (Fed. Cir. 2009); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969)
(an examiner may rely upon “common knowledge and common sense of the
person of ordinary skill in the art without any specific hint or suggestion in a
particular reference”). But recourse to “‘common sense’ without any
support adds nothing to the obviousness equation.” Mintz v. Dietz &
Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012).
We have considered Dr. Buckner’s opinion that one would have been
led to modify Hon “so as to allow the battery assembly to be disconnected
from the rest of the device to allow recharging of a rechargeable battery in
the battery assembly housing.” Ex. 1002 ¶¶ 72–73. That opinion, however,
fails to account for the fact that Hon already discloses a “rechargeable
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battery.” Ex. 1005 ¶ 28. On this record, Petitioner does not establish a
reason with a rational underpinning for the modification proposed by
Dr. Buckner. See Prelim. Resp. 23.
Nor does Dr. Buckner provide a sufficient “reason why some
components are in one housing assembly and others are in another housing
assembly.” Id. at 24. On that point, Petitioner does not direct us to any
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. See Pet. 21–23. On this record, we agree with Patent Owner that
Dr. Buckner appears to use “impermissible hindsight,” based on the
disclosure of the ’957 patent, “to decide which component goes where.”
Prelim. Resp. 24–25; see Ex. 1001, 4:58–61 (the ’957 patent, disclosing a
screwthread electrode on the battery charger that “matches the external
screwthread electrode on the battery assembly”) (internal numbering
omitted); see id. at Fig. 6 (showing utility of external screwthread electrode
as charging interface, when located on the battery assembly housing).
In sum, based on the information presented, we determine that
Petitioner does not show sufficiently that, at the time of the invention, it was
“known in many arts to provide devices in several pieces wherein each piece
is connected by mating threads,” much less that it would have been obvious
to modify Hon’s device to include a separate battery assembly housing
having, on one end, an external screwthread electrode. Pet. 22 (quoting
Ex. 1016, 8). Petitioner does not identify even one prior art reference to
substantiate the allegation about what was known in “many arts.” Id. On
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this record, Petitioner fails to come forward with information sufficient to
establish a reasonable likelihood of prevailing as to any challenged claim.
III. CONCLUSION
Taking into account the arguments presented in the Preliminary
Response, we determine that the information presented in the Petition does
not establish a reasonable likelihood that Petitioner would prevail with
respect to at least one of claims 1–4, 6–18, and 21–24 of the ’957 patent
based on the asserted grounds of unpatentability. Accordingly, we deny the
Petition and decline to institute an inter partes review.
IV. ORDER
It is
ORDERED that the Petition is denied and no inter partes review is
instituted.

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PETITIONER:
Victor de Gyarfas
Paul S. Hunter
FOLEY & LARDNER LLP
vdegyarfas@foley.com
phunter@foley.com
PATENT OWNER:
Michael J. Wise
Joseph P. Hamilton
PERKINS COIE LLP
MWise@perkinscoie.com
JHamilton@perkinscoie.com